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Enough to Distinguish More Than One CUSHION COMFORT

Posted by James Juo | Dec 08, 2022 | 0 Comments

An intent-to-use trademark application filed by Boot Royalty Company for the CUSHION COMFORT mark initially identified “Footwear; clothing; headwear” as the goods.

During prosecution, however, the identification of goods was amended to expressly exclude socks (i.e., “all of the foregoing excluding socks”). The application also was amended to allege use so that it also could be amended to the Supplemental Register in view of a refusal that “cushion comfort” was merely descriptive.

Nonetheless, the Examining Attorney at the USPTO refused registration under Section 2(d), citing U.S. Reg. No. 5852797 for the DIAMOND CUSHION COMFORT mark for socks (where “cushion comfort” was disclaimed).

TTAB Appeal

On appeal, the TTAB found the disclaimed term CUSHION COMFORT to be descriptive of the goods, so “the scope of protection to which that portion of the mark in the cited registration is entitled is quite limited.” In re Boot Royalty Co., L.P., Ser. No. 88787993 (TTAB Dec. 5, 2022). “Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”

The lead word, DIAMOND, was found to be the dominant element of the cited mark. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (consumers will first notice the lead word of a mark).

The TTAB also pointed out that “there is no express rule that we must find marks similar where the Registrant's mark encompasses Applicant's entire mark although, under such circumstances, we often have found marks to be similar,” citing Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6-7 (TTAB 2019) (quoting Hunter Indus., Inc. v. Toro Corp., 110 USPQ2d 1651, 1660 (TTAB 2014)).

Because of the descriptive nature of the term “Cushion Comfort,” customers and prospective customers will perceive DIAMOND as the source indicating part of Registrant's mark and, therefore, distinguish it from Applicant's CUSHION COMFORT mark.

            In comparing the marks in their entireties, CUSHION COMFORT versus DIAMOND CUSHION COMFORT, the common element is the descriptive term “Cushion Comfort.” We find that the presence of the additional word “Diamond” in the cited registration is enough to distinguish the marks. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356- 57 (Fed. Cir. 2004); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010); Bass Pro Trademarks, L.L.C. v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008).

Accordingly, the TTAB reversed the refusal to register.

Thomas P. Howard, LLC handles trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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