Fredman Bros. Furniture Co., Inc.

Trademark Trial and Appeal Board

Sep 27, 2018

No. 87318302 (T.T.A.B. Sep. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fredman Bros. Furniture Co., Inc.
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Serial No. 87318302
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David H. Chervitz Esq.,
for Fredman Bros. Furniture Co., Inc.
Brittney Cogan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Cataldo, Lykos and Heasley,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Fredman Bros. Furniture Co., Inc. (“Applicant”) seeks to register on the Principal
Register the composite mark displayed below (with BASE disclaimed) for “adjustable
beds” in International Class 20.1

1 Application Serial No. 87318302, filed January 30, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The description of the mark is as follows: “The mark consists of the stylized wording
‘COMFORT BASE’ above which are two overlapping triangular shapes having curved edges;
below the foregoing appears the term ‘ECOFLEX’ wherein the letter ‘O’ is represented by a
gear, and the letters ‘EC’ appear in different font than ‘FLEX’ all of which has a line above
and a line below.” Color is not claimed as a feature of the mark. Applicant claims ownership
of Registration No. 4618020.
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Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered standard character mark ECO-FLEX on the Principal Register for
“mattresses featuring foam toppers” in International Class 20,2 that it is likely to
cause confusion or mistake or to deceive.
When the refusal was made final, Applicant filed a notice of appeal which is now
fully briefed. For the reasons explained below, we affirm the refusal.
I. Evidentiary Issues
Before discussing the substance of this appeal, we shall address three evidentiary
issues. We begin with the Examining Attorney’s objection to Applicant’s reference to
its search results of third-party registrations from the Trademark Electronic Search
System (“TESS”) USPTO database for marks containing the words “ECO” or “FLEX”
or “ECOFLEX” as support for the proposition that the cited mark is weak or diluted.
The Examining Attorney objects on the basis that this was an improper way to make

2 Registration No. 3987660, registered on July 5, 2011; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” filed February 1, 2017, and accepted on March 31,
2017.
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the third-party registrations of record.3 We agree. This mere reference to third-party
registrations or search results is insufficient. See In re 1st USA Realty Prof’ls Inc., 84
USPQ2d 1581, 1583 (TTAB 2007); In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925
n.3 (TTAB 2002). To properly make a third-party registration of record, a copy of the
registration from the electronic records of the Office showing the current status and
title of the registration must be submitted. See TBMP § 1208.02 and cases cited
therein. Furthermore, as the Examining Attorney correctly points out, the Board does
not take judicial notice of third-party registrations. In re Olin, 124 USPQ2d 1327,
1335 n.22 (TTAB 2017) (citing In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11
(TTAB 2011)). We hasten to add that Applicant’s attempt to make the evidence of
record with its appeal brief is untimely. See Trademark Rule 2.142(d), 37 C.F.R. §
2.142(d) (“[t]he record in the application should be complete prior to the filing of an
appeal. Evidence should not be filed with the Board after the filing of a notice of
appeal.”). In view thereof, the Examining Attorney’s objection is sustained; the
evidence discussed in Applicant’s appeal brief with regard to its TESS search results
and third-party registrations has been given no consideration.
Next, we note that Applicant, in its August 25, 2017 Response to Office Action and
in its brief, points out that it owns two prior registrations for the mark COMFORT
BASE and that it is the owner of a pending trademark application incorporating this

3 The Examining Attorney’s reference to the evidence in her brief made in the context of
interposing the objection, with the qualifying statement that even if the evidence were
considered it fails to support Applicant’s position, does not mean that she treated the evidence
as if it were of record. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 1207.03 (2018).
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term. Again, none of these items are part of the record. However, in this instance, the
Examining Attorney failed to interpose a formal objection in the subsequent and final
office action, and addressed Applicant’s arguments pertaining to this evidence in her
appeal brief. As such, we deem her failure to timely object and her discussion of the
evidence as a waiver of the right to object. See TBMP § 1207.03.
Last, Applicant in its brief points to the specimen in the file history of the cited
registration as evidence that Registrant’s goods are relatively expensive.4 The
Examining Attorney, however, counters that “the record is devoid of evidence
regarding the cost of Registrant’s specific goods.”5 In an ex parte appeal, while the
prosecution file history of the involved application is automatically of record, the
same does not hold true for the file history of the cited registration. In re Sela Prods.
LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (“there is no equivalent rule for ex parte
proceedings that makes the file of a cited registration of record”). Rather, for the
prosecution file history of a cited registration or a portion thereof to be considered, it
must be timely introduced as evidence. Id. Because Applicant failed to properly make
Registrant’s specimen of record, and the Examining Attorney has objected thereto,
we have not considered Registrant’s specimen.6
II. Likelihood of Confusion
We turn our attention now to the substantive refusal before us. Our determination

4 Applicant’s Brief, p. 13, 4 TTABVUE 14.
5 Examining Attorney’s Brief, unnumbered page, 6 TTABVUE 9.
6 Consideration of any of the excluded evidence would not have altered our decision.
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under Section 2(d) is based on an analysis of all of the probative evidence of record
bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the similarities between the
marks and the similarities between the goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the
other relevant du Pont factors, are discussed below.
A. The Marks

First we consider “the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.” Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a
side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citation omitted). Our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
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dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”).
Applicant argues that the Examining Attorney improperly focuses on the wording
ECOFLEX in the applied-for mark without giving due consideration to the additional
wording and appearance. In Applicant’s view, the design elements as well as the
wording COMFORT BASE provide meaningful distinctions in look and sound with
Registrant’s word mark ECO-FLEX. In addition, Applicant asserts that because the
initial element of its applied-for mark incorporates its house mark COMFORT BASE
as evidenced by its prior registrations, Applicant’s mark projects a different
connotation and commercial impression.
We acknowledge the specific differences in sight and sound pointed out by
Applicant. However, we disagree with Applicant’s contention that the Examining
Attorney has improperly dissected the marks and that they are overall different in
sight, sound, meaning and commercial impression. In reaching a conclusion on the
issue of likelihood of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014) (citing In re Nat’l Data Corp., 224 USPQ at 751).
ECOFLEX, as centrally positioned in relatively larger sized lettering, attracts the
consumer’s attention, and as such is the dominant element of Applicant’s proposed
mark. The stylized representation of the letter “O” as a gear further calls the
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consumer’s attention to this portion of the mark and reinforces the suggestive
meaning of the coined term ECOFLEX in relation to adjustable beds. The banner
design and relatively smaller sized wording COMFORT BASE, which appear above,
are ancillary in nature. Thus, the additional wording and graphics in the applied-for
mark fail to mitigate the similarities in sound and appearance.
With regard to connotation and commercial impression, the dominant element in
Applicant’s mark is, again, the coined term ECOFLEX, which comprises the entirety
of Registrant’s word mark ECO-FLEX. Contrary to Applicant’s assertion, the addition
of the hyphen to Registrant’s mark is of little significance. See Mag Instrument Inc.
v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (finding that hyphen does
not distinguish MAG-NUM from MAGNUM), aff’d mem., ___ Fed. Appx. ___, 2011
WL 5400095 (Fed. Cir. Nov. 9, 2011). As such, the marks engender a similar meaning
and commercial impression. Cf. Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48,
51 (TTAB 1984) (SEAGUARD and SEA GUARD “are, in contemplation of law,
identical”). Although the additional wording and design elements in Applicant’s
proposed mark present dissimilarities, they are not sufficient to overcome the
similarities in connotation and overall commercial impression that the marks share
due to the near identity of the dominant element, ECOFLEX.
We find the similarities outweigh the dissimilarities. Thus, when comparing the
marks overall, they are similar in sight, sound, connotation and commercial
impression. This du Pont factor weighs in favor of finding a likelihood of confusion.
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B. The Goods
Next, we compare the goods as they are identified in the involved application and
cited registration. See Stone Lion, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). The goods need not be identical or even competitive to find a likelihood of
confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). Evidence of relatedness may include news articles and/or evidence from
computer databases showing that the relevant goods are used together or used by the
same purchasers; advertisements showing that the relevant goods are advertised
together or sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both applicant’s goods and the goods listed in the
cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the products
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at the same time and in the same stores).
As noted above, Applicant’s goods are identified as “adjustable beds” and
Registrant’s as “mattresses featuring foam toppers.” From the identifications alone,
we can conclude that Applicant’s and Registrant’s goods are used together and
therefore constitute complementary products. Registrant’s foam topper mattresses
are unrestricted as to type, meaning that they could encompass mattresses designed
for use with adjustable beds. Consumers in the market to purchase an adjustable bed
are likely to also be looking for a compatible mattress, which could potentially include
Registrant’s mattresses.
In addition, the Examining Attorney submitted nine use-based, valid and
subsisting, third-party registrations identifying under the same trademark “beds”
and “mattresses.”7 See Registration Nos. 5124644, 5128020, 5140483, 5128135,
5128244, 5137354, 5133742, 5129116, and 5145967.8 As a general proposition,
although third-party registrations alone are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nonetheless may have
probative value to the extent they are based on use in commerce and may serve to
suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &

7 Applicant’s more narrowly defined “adjustable beds” are the legal equivalent of “beds;”
likewise, Registrant’s “mattresses featuring foam toppers” fall within the penumbra of
“mattresses.” Cf. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134 (TTAB 2015)
(“Applicant’s broadly worded identification of “furniture” necessarily encompasses
Registrant’s narrowly identified “residential and commercial furniture.”).
8 See February 27, 2017 Office Action.
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Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
As further support, the evidence submitted from online/brick-and-mortar home
furnishing stores Ashley Homestore,9 Bob’s Discount Furniture,10 and Furniture of
America,11 as well as the excerpts from the e-commerce websites sponsored by
industry manufacturers such as Riveree,12 Sealy,13 and Sleepnumber also show that
it is not uncommon for “adjustable beds” and “mattresses featuring foam toppers” to
be offered under the same house mark.14 This constitutes evidence that consumers
may expect to find both Applicant’s and Registrant’s goods as identified in the
involved application and cited registration as emanating from a common source under
a single brand name. The aforementioned evidence is not from brick and mortar
department stores or “big box” online retailers selling a wide variety of goods but
rather from stores specializing in home furnishings or manufacturer direct-to-
consumer sales websites. This targeted type of retailing is narrower in scope, and as
such is entitled to a higher degree of probative weight. And while this evidence does
involve house marks, it remains probative to the extent that the house marks do not

9 September 14, 2017 Office Action pp. 6-12 (https://ashleyfurniturehomestore.com). Page
citations to the prosecution history are to the USPTO’s downloadable .pdf version of the
TSDR database. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4
(TTAB 2018).
10 Id. at 12-17 (www.mybobs.com).
11 Id. at 18-22 (www.foagroup.com).
12 Id. at 23-28 (www.reverie.com).
13 Id. at 29-38 (www.sealy.com).
14 Id. at 38-51 (www.sleepnumber.com).
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identify a wide variety of goods, but rather are limited to furniture or beds and
mattresses. That is to say, the evidence is relevant inasmuch as it demonstrates that
both Applicant’s and Registrant’s identified goods may originate from the same
source.
Thus, based on the identifications themselves as well as the evidentiary record
herein, we find that the goods identified in the application and registration are
related and complementary in nature. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has
long been recognized as a relevant consideration in determining a likelihood of
confusion.”). This du Pont factor also favors a finding of likelihood of confusion.
C. Established, likely-to-continue channels of trade

We direct our attention to the established, likely-to-continue channels of trade.
Because the application and cited registration contain no limitation of the sale of the
goods to a particular outlet, we must assume that the goods are offered in all normal
channels of trade. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56
USPQ2d 1351, 1354 (Fed. Cir. 2000) See also In re Elbaum, 211 USPQ 639, 640
(TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ
139 (CCPA 1958)). The record shows that Applicant’s and Registrant’s products
typically are offered in brick-and-mortar home furnishing stores.15 Hence, the du
Pont factor regarding the similarity or dissimilarity of established, likely to continue

15 Id. at 6-22 (excerpts from the Ashley Homestore, Bob’s Discount Furniture, and
Furniture of America websites).
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trade channels also favors a finding of likelihood of confusion.
D. Conditions of Sale
We consider now the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
“Adjustable beds” and “mattresses featuring foam toppers” are home goods sold to
the general public. Due to the intrinsic nature of the goods, consumers are more likely
to exercise a relatively higher degree of care when making purchasing decisions. This
is borne out by the evidence of record showing a relatively high cost for the goods with
for example, one adjustable bed retailing for $ 4299.9716 and a mattress featuring a
foam topper retailing for $ 1049.17 This du Pont factor of the conditions of sale weighs
against finding a likelihood of confusion.
That being said, with similar marks and related complementary goods likely to be
purchased together and marketed in the same trade channels, even a careful
consumer is not likely to understand that the goods emanate from different sources.
See Stone Lion, 110 USPQ2d at 1163-64 (“Substantial evidence supports the Board’s
finding that such ordinary consumers ‘will exercise care when making financial

16 Id. at 44 (excerpt from the Sleepnumber website),
17 Id. at 14 (excerpt from Bob’s Discount Furniture website).
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decisions,’ but ‘are not immune from source confusion where similar marks are used
in connection with related services.’”) (internal citation omitted).
III. Balancing the Factors
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto, including any evidence and arguments not specifically
discussed in this opinion. To the extent a du Pont factor has not been discussed, it is
treated as neutral. The similarity of the marks, coupled with the related,
complementary nature of the goods, marketed in the same trade channels, leads us
to the conclusion that prospective consumers are likely to confuse the involved goods
as originating from or associated with or sponsored by the same entity. These factors
outweigh any careful decision-making by consumers purchasing relatively expensive
goods.
Decision: The Section 2(d) refusal is affirmed.