Sleepy-heads.com Inc

Trademark Trial and Appeal Board

Oct 4, 2005

No. 78326944 (T.T.A.B. Oct. 4, 2005)

Mailed:
Oct. 4, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sleepyheads.com Inc.
________

Serial No. 78326944
_______

Scott Q. Vidas of Vidas, Arrett & Steinkraus, P.A. for
Sleepyheads.com Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Grendel, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark SLEEPYHEADS.COM (in standard character form)
for services recited in the application as “on-line retail
store services featuring clothing.”1

1 Serial No. 78326944, filed November 12, 2003. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). September 25, 2000 is alleged as the date of
first use anywhere and the date of first use in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78326944

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The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant’s
mark, as applied to the services recited in the
application, so resembles the mark SLEEPY-HEAD HOUSE,
previously registered (in standard character form) for
“retail store services specializing in furniture and
bedding,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d). Applicant has appealed the final refusal.
Applicant and the Trademark Examining Attorney filed
main appeal briefs. After careful consideration of their
arguments and the evidence of record, we reverse the
refusal to register.
The evidence of record consists of the application
file, printouts of certain third-party registrations and
applications made of record by the Trademark Examining
Attorney, and printouts of certain Internet web pages made
of record by the Trademark Examining Attorney. We have not
considered the listing of alleged third-party registrations
contained in applicant’s brief, because applicant has not
provided copies of the registrations and the Board does not

2 Registration No. 1459671, issued September 29, 1987.
Affidavits under Trademark Act Sections 8 and 15 accepted and
acknowledged.

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3
take judicial notice of such material. See In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Duofold
Inc., 184 USPQ 638 (TTAB 1974).
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Under the first du Pont factor, the issue is whether
applicant’s mark, SLEEPYHEADS.COM, and the cited registered
mark, SLEEPY-HEAD HOUSE, are similar or dissimilar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
Ser. No. 78326944

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impression that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In terms of appearance and sound, we find that the
marks are similar to the extent that they both include the
term SLEEPYHEADS or SLEEPY-HEAD. The fact that applicant’s
mark is in the plural, and that registrant’s mark is in the
singular and includes a hyphen, are insufficient to
distinguish this feature of both marks. However, the marks
are dissimilar in terms of sound and appearance to the
extent that registrant’s mark, but not applicant’s mark,
includes the word HOUSE, while applicant’s mark, but not
registrant’s mark, includes the suffix “.com.”
In terms of connotation, we find that the marks are
dissimilar because registrant’s mark, but not applicant’s
mark, includes the word HOUSE, which gives registrant’s
mark the connotation of a “house for sleepyheads.” No such
connotation is presented by applicant’s mark. Likewise,
applicant’s mark, but not registrant’s mark, includes the
suffix “.com,” which in applicant’s mark connotes that
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applicant’s services are provided via the Internet.
Registrant’s mark has no such connotation.
In terms of overall commercial impression, we find
that the sole point of similarity between the marks, i.e.,
the presence in both marks of the term SLEEPYHEADS or
SLEEPY-HEAD, is outweighed by the points of dissimilarity
between the marks, i.e., the presence in registrant’s mark
of the word HOUSE and the absence of that word from
applicant’s mark, and the presence of the suffix “.com” in
applicant’s mark and the absence of that term from
registrant’s mark. In this regard, we take judicial notice
that “sleepyhead” is defined as “a sleepy person.”
Webster’s II New Riverside University Dictionary (1988) at
1094.3 We find that this term is highly suggestive as
applied to the goods the parties offer under their
respective marks, i.e., registrant’s “bedding” and
applicant’s “clothing” (which, as is evident from
applicant’s specimen of use, includes sleepwear). The
highly suggestive nature of this sole point of similarity
between the marks renders it less significant, in our

3 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

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comparison of the marks, than would be the case if the term
common to the marks was more distinctive.
Viewing the marks in their entireties as to
appearance, sound, connotation and commercial impression,
we find that the marks are dissimilar rather than similar
for the reasons discussed above. The first du Pont factor
thus weighs in applicant’s favor.
We turn next to the second du Pont factor, which
requires us to consider the similarity or dissimilarity of
applicant’s and registrant’s respective services. It is
not necessary that these services be identical or even
competitive in order to support a finding likelihood of
confusion. Rather, it is sufficient that the services be
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
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and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
In this case, the Trademark Examining Attorney argues
that applicant’s and registrant’s respective services are
related because both applicant and registrant are
retailers. We disagree. The mere fact that both applicant
and registrant are retailers is not sufficient to establish
the requisite connection between the respective services.
We also disagree with the Trademark Examining Attorney’s
contention that the words “retail store services” in
registrant’s recitation of services necessarily encompass
applicant’s “on-line retail store services.” As discussed
below, there is insufficient evidence in the record to
support a finding that “retail store services” also
encompasses “on-line retail store services” such as those
recited in applicant’s application. Moreover, this is not
a fact of which we can or will take judicial notice.
The Trademark Examining Attorney has submitted
printouts of twelve third-party registrations and
applications which, she argues, support her contention that
applicant’s and registrant’s services are related.
Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
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extent that they serve to suggest that the goods or
services listed therein are of a kind which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
However, of the twelve printouts submitted by the
Trademark Examining Attorney in this case, three are
applications, not use-based registrations, and thus are of
no probative value under Trostel. Five of the
registrations are for house marks, each of which lists a
very wide variety of goods and services; these
registrations likewise are of little probative value under
Trostel. Of the remaining four registrations, none
includes online retailing in its recitation of services,
and one does not even include clothing. We find that the
third-party registration evidence submitted by the
Trademark Examining Attorney is de minimis at best, and of
little probative value.
The Trademark Examining Attorney also has submitted
printouts of several webpages in support of her refusal.
We find that this evidence, like the third-party
registration evidence, is de minimis and of little
probative value. The only Internet material specifically
mentioned by the Trademark Examining Attorney in her brief
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deals with the Laura Ashley company. But this website is a
website from the United Kingdom that refers primarily to
Laura Ashley’s operations in Europe; the only reference to
the company’s presence in the United States is that the
company plans to close numerous retail stores in this
country. The four other website printouts submitted by the
Trademark Examining Attorney demonstrate that bedding is
sold online, but it is not clear that the sources of such
bedding also sell clothing, either online or at bricks-and-
mortar stores.
We conclude that the Trademark Examining Attorney has
failed to submit evidence sufficient to establish that
applicant’s and registrant’s respective services are
related, such that purchasers are likely to assume the
existence of a source or other connection. The second du
Pont factor weighs in applicant’s favor.
Under the third du Pont factor, we find that
registrant’s “retail store services” and applicant’s
“online retail store services” are offered in different
trade channels, i.e., bricks-and-mortar stores versus the
Internet. However, under the fourth du Pont factor, we
find that the purchasers of the respective goods are the
same, and that they are ordinary consumers. The third du
Pont factor weighs in applicant’s favor, but the fourth
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factor weighs in favor of a finding of likelihood of
confusion.
Balancing all of the du Pont factors for which there
is evidence of record, we conclude that there is no
likelihood of confusion. The marks are dissimilar when
viewed in their entireties. The services recited in the
registration and application, respectively, have not been
shown to be related. The services are marketed and
rendered to the same classes of purchasers, but in
different trade channels. We simply cannot conclude, on
this record, that purchasers and prospective purchasers are
likely to assume that a bricks-and-mortar retail store
selling bedding and furniture under the mark SLEEPY-HEAD
HOUSE also is or would be a source of clothing which is
retailed online under the mark SLEEPYHEADS.COM.
Decision: The refusal to register is reversed.