Sound Sleep Products, Inc.

Trademark Trial and Appeal Board

Aug 25, 2016

No. 85646871 (T.T.A.B. Aug. 25, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sound Sleep Products, Inc.
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Application Serial No. 85646871
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Mary M. Lee of Mary M. Lee PC for Sound Sleep Products, Inc.

Anne C. Gustason, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Taylor, Bergsman, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Sound Sleep Products, Inc. (“Applicant”) seeks a Principal Register registration
for the mark GEL TECH, in standard characters, for “mattresses” in International
Class 20.1

1 Application Serial No. 85646871 was filed on June 8, 2012, and is based on an allegation of
first use anywhere and in commerce in May 2012, pursuant to Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
Serial Nos. 85646871
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The Examining Attorney has refused registration of Applicant’s proposed mark on
the ground that it is merely descriptive of the goods under Section 2(e)(1) of the
Trademark Act (“the Act”), 15 U.S.C. § 1052(e)(1).
After the refusal became final, Applicant filed a request for reconsideration that
was denied by the Examining Attorney.2 Applicant then appealed. The appeal has
been briefed.
The Record
The Examining Attorney submitted the following materials during the
prosecution of the application to support of her contention that GEL TECH is merely
descriptive of mattresses:
• Definition for the term “gel” meaning “1. A jelly-like substance, especially
one used in cosmetic or medicinal products … a semi-solid colloidal
suspension of a solid dispersed in a liquid … 2. A semi-rigid slab or cylinder
of an organic polymer used as a medium for the separation of
macromolecules.”3

• Definitions for the terms “tech” meaning “abbreviation for 1. technical 2.
technology,” and “technology” meaning “the application of practical sciences
to industry or commerce.”4

• Printouts from a website (www.nicholascase.net) offering a “Lady
Americana … Gel Tech” collection of mattresses and mattresses with a “Sta-
Cool Gel” feature.5

2 With its request for reconsideration (filed on September 11, 2015), Applicant “acknowledges
the descriptive nature of the term ‘gel,’” and provided a disclaimer of the term GEL, but
argued that the mark, considered as a whole, is not merely descriptive. We further note that
Applicant filed a second request for reconsideration on October 29, 2015.
3 Attached to Office Action issued on September 25, 2012. The provided definition was
obtained from the website Oxford Dictionaries (www.oxforddictionaries.com).
4 Attached to Office Action issued on September 25, 2012. The provided definitions were
obtained from the website Collins Dictionaries (www.oxforddictionaries.com).
5 Attached to Office Action issued on May 25, 2015.
Serial Nos. 85646871
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• Printouts from The Mattress Store website
(www.coronamattressstore.com) advertising a “MBC Gel-Tech” mattress
with “Gel Vicomemory foam.”6

• Printouts from Amazon website (www.amazon.com) featuring a “Memory
Foam with Cool Gel Full Size Mattress and Box Spring Set.”7 The mattress
is also described as having “3” gel memory foam sleep cool technology …
made with advanced memory foam technology and new generation memory
foam cooling gel.” Other mattresses advertised at the bottom of the
printouts describe mattresses with “Memory Foam Gel.”

• Printouts from Mattress Ranch website (www.mattressranch.com) listing
“Gel Memory Foam” as a feature of mattresses and “Gel Tech” mattresses
with “cooling gel” and “Gel infused memory foam.”8 The website also offers
an “AGT” mattress with “Advanced Gel Technology, the newest and most
advanced materials and manufacturing techniques are used to craft the
AGT collection.”

• Printouts from Maui Bed Store website (www.mauibedstore.com) listing a
“Lady Americana Gel-Tech Mattress,” described as having “Liquid Gel
infused memory foam.”9

• Printouts from Furniture Helpers website (www.furniturehelpers.com)
offering a “Gel Tech Mattress/Set” with “Gel Visco Memory Foam” and
“Active Support Technology®.”10

• Printouts from Barrs Furniture Riverside website
(www.barrsfurnitureriverside.com) offering a “Gel Tech Mattress” with
“Exceptional hybrid technology” and “Active Support Technology®.”11

• Printouts from H&H Furniture website (www.hhfurnitureerto.com) listing
a “QUEEN Gel Tech Memory Foam Mattress.”12

6 Id. Printouts were also attached to the October 5, 2015 Office action.
7 Id.
8 Id. Printouts were also attached to the October 5, 2015 Office action.
9 Attached to October 5, 2015 Office action.
10 Id.
11 Id.
12 Id.
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Applicant, for its part and in rebuttal to the Examining Attorney’s evidence,
submitted the declaration of Tom Anderson, Applicant’s Director of Marketing, with
attachments.13 Mr. Anderson avers that the “Gel Tech” mattresses identified in the
website evidence submitted by the Examining Attorney and associated with Lady
Americana, Maui Bed Store and Mattress Ranch are actually Applicant’s products
being sold by these retailers. With respect to the “Gel Tech” mattresses identified in
The Mattress Store and Furniture Helpers websites, Mr. Anderson states that these
are mattresses manufactured by an unrelated third party, MBC Mattress Company,
and without the consent of Applicant. Although Applicant acknowledges that a
competitor also uses the term “Gel Tech” for mattresses without its permission,
Applicant asserts the competitor is “clearly using the term as a trademark and not
descriptively, as the Examiner contends.”14 Applicant also relies on the existence of
four third-party registrations for the marks: GEL TEK for fish food (Reg. No.
3657809, GEL is disclaimed), GEL-TECH for footwear (Reg. No. 2741510), GEL-
TECH for batteries (Reg. No. 2041305), and GELTECH for bicycle saddles (Reg. No.
1559743).15 Applicant notes that these registrations issued without a claim of

13 Submitted with Applicant’s (second) request for reconsideration filed on October 29, 2015.
14 Applicant’s brief, p. 4 (4 TTABVUE 8).
15 Applicant merely referenced these registrations in its response to an Office action, filed on
March 22, 2013 and only provided actual copies of the registrations with its appeal brief.
Applicant argues that the Examining Attorney “did not advise Applicant that this listing was
insufficient to make the registrations of record. Thus, the Examiner has waived any objection
to the Board’s consideration of the prior registrations here on appeal.” 4 TTABVUE 10 (note
2). In her appeal brief, the Examining Attorney did not object to the introduction and
consideration of the registrations, but argues the relevance of their existence. Under these
circumstances, we have considered the registrations to be of record.
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acquired distinctiveness and asserts that its mark is “no more descriptive of
mattresses than any of these of these registered marks is descriptive of their
respective goods.”16
Applicable Law
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987)); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each and every specific
feature of the goods in order to be considered merely descriptive; rather, it is sufficient
that the mark describes one significant attribute, function or property of the goods or
services. In re Chamber of Commerce of the United States of America, 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358, 359
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is
merely descriptive is determined not in the abstract, but in relation to the goods for
which registration is sought and the context in which it is being used on or in
connection with the goods. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new, non-descriptive commercial

16 Id. at p. 6 (4 TTABVUE 10).
Serial Nos. 85646871
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impression. If each component retains its merely descriptive significance in relation
to the goods, the combination results in a composite that is itself merely descriptive.
See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004) (PATENTS.COM merely descriptive of computer software for managing a
database of records that could include patents, and for tracking the status of the
records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services); In re
Tower Tech, 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
Analysis
As discussed further below, we find that Applicant’s mark, GEL TECH, is
composed of two merely descriptive terms and their combination does not result in
new, non-descriptive meaning.
There is little question that “gel” is a descriptive term in the context of mattresses.
Indeed, Applicant admits this much and has offered to disclaim the term (see footnote
2 supra). In any event, the evidence clearly shows that “gel” padding or “gel” memory
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foam may be used as a component and touted as a feature of mattresses by increasing
comfort (e.g., “contours to the body and relieves pressure points … reduces heat by
pulling it wary from the body, so you stay cooler at night”).17
With respect to the term “tech,” it is a recognized abbreviation for “technology”
and is also merely descriptive of mattresses. Mattress retailers and manufacturers
advertise the use of technology in the composition of their mattresses to make them
more comfortable. For example, the Mattress Ranch website references a mattress
with “Advanced Gel Technology, the newest and most advanced materials and
manufacturing techniques are used to craft the AGT collection.”18 Likewise, the
Furniture Helpers website describes a mattress with “Active Support Technology®
[that] relaxes your muscles during natural sleep movements …”19 and the Barrs
Furniture Riverside sells a mattress advertised as having “Exceptional hybrid
technology … foam encased innerspring and two types of memory foam work together
with body aligning ‘pocketed nano coils to combine for superior comfort.”20 This
evidence shows that “tech” or “technology,” meaning “the application of practical
sciences to industry or commerce,” is used in the manufacture of mattresses and that
third parties need to use this term to describe the composition or features of
mattresses.

17 The Mattress Store website, page 3 of Office action issued on May 25, 2015.
18 Page 7 of Office action issued on October 5, 2015.
19 Id. at p. 10.
20 Id. at p. 14.
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In sum, the record establishes that GEL TECH, when considered in relation to
mattresses, immediately informs consumers that the mattresses have a gel
component and involve the use of technology, either a gel-based technology or some
other technological feature. Moreover, the combination of the two terms, GEL and
TECH, does not create a new non-descriptive meaning nor does it diminish the
descriptive nature of the individual terms. While Applicant and one other party may
be the only users of GEL TECH in connection with mattresses, other competitors in
this field should be free to use the descriptive language GEL TECH. As noted in the
seminal case of In re Abcor, 200 USPQ at 217:
The major reasons for not protecting such marks are: (1) to prevent the
owner of a mark from inhibiting competition in the sale of particular goods;
and (2) to maintain freedom of the public to use the language involved, thus
avoiding the possibility of harassing infringement suits by the registrant
against others who use the mark when advertising or describing their own
products.

Applicant’s reliance on the third-party registrations for the same or very similar
marks on goods that are quite different from mattresses is misplaced. Whether or not
registered trademarks are merely descriptive in connection with goods such as fish
food, batteries and footwear is not relevant, let alone determinative, in this case.
Rather, our focus is on whether GEL TECH is merely descriptive of mattresses and
we make this determination of registrability on its own merits, based upon the record
before us. Likewise, previous decisions cited by Applicant that involve very different
marks that were found not merely descriptive have no bearing in this matter.
Finally, Applicant is correct that, to the extent that there is any doubt whether
the term GEL TECH is merely descriptive of involved goods, we should resolve the
Serial Nos. 85646871
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matter in favor of Applicant. However, in this case and contrary to Applicant’s
contention, the record supports our aforementioned findings and we have no doubt in
this regard.
Decision: The refusal to register the mark is affirmed