From: Patel, Sheena
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`Sent: 7/28/2022 10:59:16 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 90164867 - PURCOOL - 84915-325685 - EXAMINER
`BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 90164867.doc
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 90164867
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`Mark: PURCOOL
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`Correspondence Address:
` Jerry C. Harris, Jr.
` BARNES & THORNBURG LLP
` 2121 NORTH PEARL STREET
` SUITE 700
` DALLAS, TX 75201
`Applicant: Future Foam, Inc.
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`Reference/Docket No. 84915-325685
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`Correspondence Email Address:
` jerry.harris@btlaw.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Introduction
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`Future Foam, Inc. (hereinafter referred to as the “Applicant”) has appealed the
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`examining attorney’s refusal to register the mark “PURCOOL” in U.S. Trademark Application No.
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`90164867 because of a likelihood of confusion with the mark “PURECOOL+” in U.S. Registration
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`No. 6000501 and “PURE COOL” in U.S. Registration No. 5312301. Trademark Act Section 2(d),
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`15 U.S.C. §1052(d). This refusal is the only issue on appeal.
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`Recitation of the Facts
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`On September 8, 2020, Applicant filed U.S. Trademark Application Serial No.
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`90164867 for the mark “PURCOOL”, in standard characters, for “[m]attresses; Mattress toppers;
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`Pillows”, in International Class 20 and “foam for use in Mattresses; Mattress toppers, and Pillows”,
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`in International Class 17.
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`On December 16, 2020, a Letter of Protest Memorandum was issued with respect
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`to U.S. Trademark Registration No. 6000501 for the mark “PURECOOL+”.
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`On January 22, 2021, trademark examining attorney issued an Office action setting
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`forth a refusal for a likelihood of confusion pursuant to Trademark Act Section 2(d), 15 U.S.C.
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`§1052(d), for the mark “PURECOOL+” (U.S. Trademark Registration Nos. 6000501), for
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`“[m]attress component, namely, phase change material located in the top upholstery layer of
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`mattresses sold as an integral component of the mattress” and “PURE COOL” (U.S. Trademark
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`Registration No. 5312301), for “[m]aterial sold as an integral component of matresses”. The cited
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`marks are owned by the same registrant. Applicant was also required to satisfy an amendment to
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`the identification of goods.
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`On July 19, 2021, Applicant filed a response to the Office action refusing
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`registration, arguing that there was no likelihood of confusion with the registered marks and
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`Applicant amended the identification of goods, as required. On September 3, 2021, the trademark
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`examining attorney issued a final Office action for the Section 2(d) likelihood of confusion refusal.
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`The trademark examining attorney acknowledged that the requirement to amend the identification
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`of goods had been satisfied. On March 3, 2022, the Applicant submitted a request for
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`reconsideration, pursuant to which the Applicant deleted International Class 20 from its application
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`and again argued that there was no likelihood of confusion with respect to the two cited marks.
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`On June 6, 2022 the Applicant filed an appeal brief, which was forwarded to the
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`trademark examining attorney on June 7, 2022.
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`Argument
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`Trademark Act Section 2(d) bars registration of an applied-for mark that is so
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`similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as
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`to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d).
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`Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in
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`In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)
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`(called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744,
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`1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered;
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`however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re
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`Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re
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`Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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`Although not all du Pont factors may be relevant, there are generally two key
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`considerations in any likelihood of confusion analysis: (1) the similarities between the compared
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`marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc,
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`866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
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`1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
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`Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry
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`mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential
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`characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
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`A.
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` The Proposed Mark is Highly Similar to the Registered Marks
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`Marks are compared in their entireties for similarities in appearance, sound,
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`connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP,
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`746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v.
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`Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691
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`(Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be
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`sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
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`1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam,
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`777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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`When comparing marks, “[t]he proper test is not a side-by-side comparison of the
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`marks, but instead whether the marks are sufficiently similar in terms of their commercial
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`impression such that [consumers] who encounter the marks would be likely to assume a connection
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`between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801
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`(Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101
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`USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection
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`of the average purchaser, who retains a general rather than specific impression of trademarks. In re
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`Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4 (TTAB 2020) (citing In re Bay State Brewing
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`Co., 117 USPQ2d 1958, 1960 (TTAB 2016)); In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
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`1746 (TTAB 2018); TMEP §1207.01(b); see In re St. Helena Hosp., 774 F.3d 747, 750-51, 113
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`USPQ2d 1082, 1085 (Fed. Cir. 2014).
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`In the present case, both applicant’s mark and the registered marks consist of or
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`begin with the term “PURE” or a novel spelling thereof, followed by the word “COOL”. The
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`applied-for mark only differs from registration U.S. Registration No. 5312301 by a single letter
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`added to the cited mark, being the letter “e” and the applied-for mark is a compound mark. The
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`applied for mark only differs from the mark in registration U.S. Registration No. 6000501 because
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`the cited mark also adds the letter “e” to the wording and it includes a “+” at the end of the mark.
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`The addition of the wording “+” does not change the meaning of the mark. The previously attached
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`online evidence from Merriam Webster Dictionary shows that the wording “+”, which is
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`equivalent to the wording “plus” as demonstrated from the previously attached online evidence
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`from Bullet Point Symbol, means “having, receiving, or being in addition to what is anticipated”.
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`Therefore, the addition of “+” merely means that it is additionally or extra “cool”. In addition, like
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`applicant’s mark, the phrase “PURE COOL” in the registered marks also suggests a cooling feature
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`in the context of the goods in the cited registrations. The previously attached online evidence from
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`Good Housekeeping shows that a common feature of both pillows and mattresses is a cooling
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`feature, demonstrating that consumers are likely to perceive “PURCOOL” as describing the
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`identified goods as “pure cool”. Thus, applicant’s mark and the registered marks are highly similar
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`in appearance and sound, and convey a similar connotation and create a highly similar overall
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`commercial impression.
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`Therefore, the applicant’s mark and the cited marks create an overall similar
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`commercial impression.
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`B. The Goods of the Respective Parties are Closely Related
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`The goods and/or services are compared to determine whether they are similar,
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`commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph
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`Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko
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`Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002);
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`TMEP §§1207.01, 1207.01(a)(vi).
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`The compared goods and/or services need not be identical or even competitive to
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`find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086,
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`56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d
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`1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner
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`and/or if the circumstances surrounding their marketing are such that they could give rise to the
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`mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc.
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`v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
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`(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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`The applicant argues that the registrant and the applicant share no consumers and
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`therefore, there can be no likelihood of confusion. However, the trademark examining attorney
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`respectfully disagrees. Consumers are accustomed to being informed of the components of
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`mattresses by the manufacturer of such mattresses. Please see the previously attached online
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`evidence from Casper, Texas Mattress Makers and CNET, showing mattress manufacturers discuss
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`the components used in their mattresses. Further, a consumer researching mattresses can easily
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`obtain information about cooling components/technologies targeted to mattress manufacturers, as
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`demonstrated by the previously attached online evidence from Bedtimes Magazine. The
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`information about mattress components that a manufacturer might seek out can often also be
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`accessed by an end consumer. Further, the overriding concern is not only to prevent buyer
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`confusion as to the source of the goods services, but to protect the registrant from adverse
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`commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d
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`1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood
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`of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see
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`Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed.
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`Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed.
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`Cir. 1988).
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` Additionally, Applicant provides “polyurethane foam for the use in the
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`manufacture of mattresses, mattress toppers, and pillows” and the registrant’s goods consist of
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`mattress components sold as an integral component of mattresses. As noted above, the goods do
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`not need to be identical or even competitive to find a likelihood of confusion. In the present case,
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`the applicant initially included “mattress; mattress toppers; pillows” in International Class 20, as
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`part of its identification of goods. The applicant also provides “Polyurethane foam for use in the
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`manufacture of Mattresses, Mattress toppers, and Pillows”, in International Class 17. Further, as
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`shown by the previously attached evidence from the UPSTO’s X-Search database, third-parties
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`commonly provide the same or similar goods as those of both applicant and the registrant. Thus,
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`such parties will market such goods under the same mark, and, therefore, consumers are
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`accustomed to seeing the goods marketed together and they would assume that they are from a
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`related source.
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`Further, generally, the greater the degree of similarity between the applied-for
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`mark and the registered mark, the lesser the degree of similarity between the goods and/or services
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`of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co.,
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`116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815
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`(TTAB 2001)); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015) (citing In re Shell
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`Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); Time Warner Ent. Co. v.
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`Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); In re Opus One Inc., 60 USPQ2d at 1815); TMEP
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`§1207.01(a). In the present case, the cited marks are highly similar to the applied-for mark, and,
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`therefor, the lesser the degree of similarity between the goods of the parties is required to support a
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`finding of likelihood of confusion.
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`The applicant also argues that if the “goods or services in question are not related
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`or marketed in such a way that they would be encountered by the same persons in situations that
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`would create the incorrect assumption that they originate from the same source, then, even if the
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`marks are identical, confusion is not likely”. However, the goods are related and marketed in such
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`a way that would be encountered by the same persons in situations that would create the incorrect
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`assumption that they originate from the same source. The previously attached online evidence
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`from Saatva, US-Mattress and FactoryOutletStore shows that when manufacturers of mattresses
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`market their goods, they also refer to the mattress components and features. Thus, the goods are
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`related and are marketed in such a way that consumers would assume they originate from the same
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`source.
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`Finally, the applicant argues that mattress manufacturers are “sophisticated
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`purchasers” and, therefore, there would be no likelihood of confusion between the marks in U.S.
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`Registration Nos. 6000501 and 5312301 and the applied-for mark. The fact that purchasers are
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`sophisticated or knowledgeable in a particular field does not necessarily mean that they are
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`sophisticated or knowledgeable in the field of trademarks or immune from source confusion.
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`TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d.
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`1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating
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`Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both
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`professionals and the public, the standard of care for purchasing the goods is that of the least
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`sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018)
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`(citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at
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`1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
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`Therefore, the applicant’s goods are related to the registrant’s goods.
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`Conclusion:
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`In the present case, there is a likelihood of confusion among consumers since the overall
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`commercial impression of the marks are similar and the goods are commercially related. For the
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`aforementioned reasons, the examining attorney respectfully requests that the refusal to register on
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`the basis of Trademark Action Section 2(d), 15 U.S.C. §1052(d) because of a likelihood of
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`confusion be affirmed.
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`Respectfully submitted,
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`/Sheena Kapoor Patel/
`Sheena Kapoor Patel
`Trademark Examining Attorney
`Law Office 106, USPTO
`571-272-4972
`Sheena.Patel@uspto.gov
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`Mary I. Sparrow
`Managing Attorney
`Law Office 106
`571-272-9332
`Mary.sparrow@uspto.gov
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