Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA294216
`ESTTA Tracking number:
`07/08/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185706
`Defendant
`FKA DISTRIBUTING CO.
`MATTHEW R. MOWERS
`BROOKS KUSHMAN P.C.
`1000 TOWN CENTER, FL 22
`SOUTHFIELD, MI 48075-1183
`UNITED STATES
`hshovein@brookskushman.com
`Motion for Summary Judgment
`Hope V. Shovein
`hshovein@brookskushman.com, mmowers@brookskushman.com,
`ejbrooks@brookskushman.com
`/hope v shovein/
`07/08/2009
`SJ Brief and Affidavit.pdf ( 28 pages )(225524 bytes )
`TEMP-RITE SJ Exhibits July 8.pdf ( 179 pages )(7378671 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`TEMPUR-PEDIC MANAGEMENT, INC.
`and DAN FOAM APS
`Opposer
`
`v.
`
`FKA DISTRIBUTING CO.
`d/b/a HOMEDICS, INC.
`
`Applicant.
` /
`
`Opposition No. 91185706
`Application No. 77/288,137
`
`APPLICANT’S AMENDED
`MOTION FOR SUMMARY JUDGMENT
`
`

`
`TABLE OF CONTENTS
`
`I. CONCISE STATEMENT OF THE ISSUE PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . . . . iii
`
`II. INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
`
`A.
`
`B.
`
`C.
`
`HoMedics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
`
`Dan-Foam ApS and Tempur-Pedic Management, Inc.
`
`. . . . . . . . . . . . . . . . . . . . . 3
`
`Procedural History . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`III. MATERIAL FACTS NOT IN DISPUTE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
`
`IV. ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`A.
`
`B.
`
`C.
`
`The Standard For Summary Judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Opposers Cannot Rely on a Family of TEMPUR-Formative Marks
`to Prevent Registration of a TEMP-Formative Mark . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Under the duPont Analysis,
`A Likelihood Of Confusion Does Not Exist
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
`
`1.
`
`2.
`
`3.
`
`The Dissimilarity of the Marks
`Weighs Heavily in Favor of Applicant
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`Third-Party Use and Registration
`of TEMPER- and TEMP- Formative Marks
`Establishes No Likelihood of Confusion . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`Applicant’s Right to Exclude
`Based on Prior Rights in the Identical Mark . . . . . . . . . . . . . . . . . . . . . . 16
`
`D.
`
`HoMedics’ TEMP-RITE Mark Is Not
`Likely To Dilute The TEMPUR-PEDIC Mark . . . . . . . . . . . . . . . . . . . . . . . . . . 17
`
`V. CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
`
`-i-
`
`

`
`TABLE OF CASES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Carefirst of Maryland v. FirstHealth of the Carolinas Inc.,
`77 USPQ 1492 (TTAB 2005)
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (U.S., 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Champagne Louis Roederer S.A. v. Delicato Vineyards,
`148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`Hewlett-Packard Co. v. Packard Press, Inc.,
`281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`In re Nat’l Data Corp.,
`735 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`In re E.I. duPont de Nemours & Co.,
`476 F.2d 1357, 177 USPQ 563 (CCPA 1973) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9-13, 16
`
`Interbank Card Ass'n v. United States National Bank of Oregon,
`197 USPQ 123 (TTAB 1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`Playboy Enters. v. Netscape Communicatins Corp.,
`354 F.3d 1020, 69 USPQ2d 1417 (9th Cir. 2004)
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`Recot, Inc. v. M.C. Becton,
`214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . 9-10
`
`Spraying Systems Co. v. Delavan, Inc.,
`975 F.2d 387, 19 USPQ2d 1121 (7th Cir. 1992)
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
`
`Spraying Systems Co. v. Delavan, Inc.,
`Cancellation No. 16,950 (TTAB Sept. 14, 1989)
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . 12, 16
`
`Sweats Fashions Inc. v. Pannill Knitting Co. Inc.,
`833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`Tempur World LLC,et al v. Imperial Bedding Company,
`Opposition No. 91176091 (TTAB March 27, 2009) . . . . . . . . . . . . . . . . . . . . . . . . . 4-5, 8
`
`-ii-
`
`

`
`CONCISE STATEMENT OF THE ISSUES PRESENTED
`
`Should the Board grant summary judgment to Applicant, on all claims,
`when the parties’ marks are dissimilar and Opposers are not entitled
`to exclusive rights in TEMP?
`
`HoMedics answers: Yes.
`
`-iii-
`
`

`
`I. INTRODUCTION
`
`Applicant, FKA Distributing Co. d/b/a HoMedics, Inc. (“Applicant” or “HoMedics”),
`
`hereby moves for summary judgment under Fed. R. Civ. P. 56(c) in this opposition proceeding
`
`brought by Dan-Foam ApS and Tempur-Pedic Management, Inc. (collectively referred to herein as
`
`“Opposers”), on the basis that there is no genuine issue of disputed material fact and that HoMedics
`
`is entitled to judgment as a matter of law.
`
`Opposers instituted this proceeding to prevent HoMedics’ registration of TEMP-
`
`RITE for pillows, cushions, mattresses, and related goods. Opposers base this opposition proceeding
`
`on their TEMPUR-PEDIC trademark and an alleged TEMPUR- family of marks. However,
`
`Opposers’ rights are not so broad as to encompass all TEMP-formative marks. In particular, the
`
`subject mark, TEMP-RITE, functions as a distinctive source indicator for HoMedics and is
`
`sufficiently dissimilar from any mark relied on by Opposers, such that confusion is far from likely.
`
`Opposers will not be adversely affected by registration of HoMedics’ application for TEMP-RITE,
`
`just as Opposers do not appear to claim adverse affect from coexisting third-party use and
`
`registration of TEMP-formative marks, including TEMPER-FOAM (incontestable), TEMPSOMA
`
`(incontestable) and TEMPSMART, for related goods.
`
`For the reasons set forth below, Applicant respectfully requests that the Board grant
`
`this Motion for Summary Judgment in Applicant’s favor on 1) the Section 2(d) claim that the
`
`proposed mark, TEMP-RITE, is likely to cause confusion with Opposers’ TEMPUR-PEDIC and
`
`alleged TEMPUR- family of marks, and 2) on Opposers’ claim that registration of the TEMP-RITE
`
`trademark will dilute Opposers’ TEMPUR-PEDIC mark and alleged TEMPUR- family of marks.1
`
`1Opposers’ e-filed Notice of Opposition, ESTTA Tracking No. ESTTA229355, indicated
`that “priority and likelihood of confusion” were the only grounds for opposition, although the
`pleading attached to the e-filed notice included a dilution claim.
`
`-1-
`
`

`
`A.
`
`HoMedics
`
`Applicant HoMedics is a world-famous provider of personal health and wellness
`
`products, including massagers, spa products, blood pressure monitors, thermometers, scales, body
`
`fat analyzers and bedding products. On September 25, 2007, HoMedics filed Application Serial No.
`
`77/288,137 for the mark TEMP-RITE, which published June 10, 2008 for the following goods:
`
`“foam rubber materials for use in stuffing pillows and cushions” in International Class 17, “pillows
`
`and cushions; mattresses; mattress toppers; mattress cushions” in International Class 20, “polymers,
`
`namely, woven polymeric fibers and non-woven polymeric fibers for use in stuffing pillows and
`
`cushions” in International Class 22 and “pillow accessories, namely, cases, covers, slips; mattress
`
`pads; mattress covers” in International Class 24. Notably, the U.S. Patent and Trademark Office did
`
`not refuse registration of HoMedics’ TEMP-RITE application based on the existence of any similar
`
`registered or pending marks.
`
`HoMedics is also the owner of U.S. Registration No. 3,610,060 for the TEMPRITE
`
`trademark for “electric and non-electric massage apparatus; massaging apparatus for personal use”
`
`in International Class 10. A copy of the registration certificate for Registration No. 3,610,060 is
`
`attached hereto as Exhibit 1. In addition, HoMedics’ related entity, Taylor Precision Products, LLC
`
`(“Taylor”), a leading manufacturer of thermometers, scales and other consumer measurement
`
`products, is the owner of U.S. Registration Nos. 198,350 and 3,090,305 for the mark TEMPRITE
`
`for “thermometers” in International Class 9, which claim use from a date at least as early as March
`
`of 1917. Copies of the registration certificates for Registration Nos. 198,350 and 3,090,305 are
`
`attached hereto as Exhibits 2 and 3.
`
`-2-
`
`

`
`B.
`
` Dan-Foam ApS and Tempur-Pedic Management, Inc.
`
`Opposers represent a mattress company whose products utilize a memory foam
`
`material originally developed by NASA under the TEMPER-FOAM trademark, which is identified
`
`in U.S. Registration No. 2,687,719 for “foamed plastic sheet material that disburses pressure
`
`evenly... .” A copy of Registration No. 2,687,719 is attached hereto as Exhibit 42; see also
`
`Opposers’ Responses to Applicant’s Requests for Admission (“Opposers’ Admissions”), No. 3,
`
`attached hereto as Exhibit 5. The rights for NASA’s original TEMPER FOAM were acquired by
`
`Temper Foam, Inc., a joint venture owned by Kees Goebel Medical Specialties, Inc., and AliMed,
`
`Inc. – the original owners of Registration 2,687,719. See Exhibits 5 (Opposers’ Admissions, No.
`
`18), 6 (TEMPER-FOAM Assignment), and 7 (NASA’s Spinoff Magazine, 1988 Issue).
`
`All of Opposers’ products bear the TEMPUR-PEDIC house mark and are made out
`
`of a material derived from the original TEMPER-FOAM, which mark is owned and used by a third-
`
`party. See Exhibit 5 (Opposers’ Admissions, Nos. 15 and 19).
`
`C.
`
`Procedural History
`
`Opposers instituted this proceeding on August 8, 2008 to prevent HoMedics’
`
`registration of the TEMP-RITE trademark for all goods identified in the subject application, as
`
`published. As grounds for this opposition, Opposers have alleged priority and likelihood of
`
`confusion under Section 2(d) of the Trademark Act, based on the following registrations3:
`
`•
`
`Registration No. 1,853,088 for TEMPUR-PEDIC for “mattresses, cushions and
`furniture pads made of viscous foam” in International Class 20.
`
`2 See Interbank Card Ass'n v. United States National Bank of Oregon, 197 USPQ 123
`(TTAB 1977) (third-party registrations may be plain copies).
`
`3Opposers have failed to establish that each of its pleaded registrations are subsisting
`pursuant to the requirements of Trademark Rule 2.122(d)(1). For the sake of argument, Applicant
`will address each of the marks identified in the pleaded registrations in this brief, though
`Applicant does not accept them as valid and subsisting.
`
`-3-
`
`

`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Registration No. 1,924,637 for TEMPUR MED for “mattresses, cushions and
`furniture pads made of elastic viscous foam,” in International Class 20.
`
`Registration No. 1,926,469 for TEMPUR for “mattresses, cushions and furniture
`pads made of elastic viscous foam,” in International Class 20.
`
`, without a Standard Character
`Registration No. 2,495,299 for
`claim, for “mattresses, cushions and pillows made of elastic viscous foam” in
`International Class 20.
`
`Registration No. 2,823,185 for TEMPURAIR for “mattresses and pillows for
`medical purposes” in International Class 10. Section 8 coming due in May 2010.
`
`Registration No. 2,840,686 for TEMPUR-PLUS3 for “mattresses” in International
`Class 20.
`
`Registration No. 2,840,687 for TEMPURAP for “mattresses” in International Class
`20.
`
`, without a Standard Character claim,
`Registration No. 3,180,320 for
`for “seating and couching mats in the nature of a pillow or seat liner, pillows,
`cushions, mattresses, top mattresses, bolsters and chair pads” in International Class
`20.
`
`Opposers have not alleged common law rights in any marks as basis for this
`
`opposition. Furthermore, Opposers narrow their claim in the Notice of Opposition to an allegation
`
`of likelihood of confusion with Opposers’ alleged “TEMPUR-family of marks”: “Specifically, the
`
`mark is so confusingly similar to Opposers’ TEMPUR-family of marks that it differs from those
`
`marks by only a single letter.” Notice of Opposition ¶ 15. Not only is this statement inaccurate, but
`
`this Board held on March 27, 2009, that Opposers failed to establish ownership of a family of
`
`TEMPUR marks. Tempur World LLC, Tempur-Pedic International Inc., and Dan Foam ApS v.
`
`Imperial Bedding Company, Opposition No. 91176091 (TTAB March 27, 2009). A copy of the
`
`Board’s March 27, 2009 Opinion is attached as Exhibit 8.
`
`-4-
`
`

`
`•
`
`•
`
`•
`
`•
`
`•
`
`II. MATERIAL FACTS NOT IN DISPUTE
`
`Pursuant to T.B.M.P. § 528.01, the following material facts are not in dispute:
`
`This Board has held that Opposers do not own a family of TEMPUR marks. See
`
`Exhibit 8, Tempur World LLC, Tempur-Pedic International Inc., and Dan Foam ApS
`
`v. Imperial Bedding Company, Opposition No. 91176091 (TTAB March 27, 2009).
`
`All of Opposers’ products are marked with Opposers’ house mark, TEMPUR-PEDIC
`
`and Design. See Opposers’ Main Trial Brief in Opposition No. 91176091, a copy of
`
`which is attached as Exhibit 9.
`
`Opposers pronounce “tempur” the same as the English word “temper.” See Exhibit
`
`5 (Opposers’ Admissions, No. 5).
`
`“Temper” is a word in the English language. See Exhibit 5 (Opposers’ Admissions,
`
`No. 4).
`
`Patterson Medical Holdings, Inc., is the registered owner of United States Trademark
`
`Registration No. 2,687,719 (Sections 8 &15 accepted and acknowledged March 16,
`
`2009) for TEMPER FOAM for “foamed plastic sheet material that disburses pressure
`
`evenly, and is used in various industries and technical fields, including the medical
`
`field and physical therapy field, in athletic equipment, automotive equipment, space
`
`equipment, aircraft equipment including helicopters, sound control equipment, hiking
`
`equipment, furniture, and other industries requiring foamed plastic materials that
`
`disburses pressure evenly” in International Class 17. See Exhibits 4 (Certificate of
`
`Registration No. 2,687,719) and 5 (Opposers’ Admissions, No. 3).
`
`-5-
`
`

`
`•
`
`Sleep Innovations Inc., is the registered owner of United States Trademark
`
`Registration No. 2,640,891 (Sections 8 &15 accepted and acknowledged March 16,
`
`2009) for TEMPSOMA for “pillows and cushions” in International Class 20 and
`
`“bedding, namely, mattress pads” in International Class 24. See Exhibit 4 (Opposers’
`
`Admissions, No. 12). A copy of Registration No. 2,640,891 is attached hereto as
`
`Exhibit 10.
`
`•
`
` Zinus, Inc., is the registered owner of United States Trademark Registration No.
`
`3,083,803 for TEMPSMART for “foam, namely, foam cores for mattreses, pillows,
`
`cushions and sitting wedges” in International Class 17, and “pillow cases and covers,
`
`mattress pads and covers” in International Class 24. See Exhibit 5 (Opposers’
`
`Admissions, No. 11). A copy of Registration No. 3,083,803 is attached hereto as
`
`Exhibit 11.
`
`•
`
`•
`
`Applicant is the owner of United States Registration No. 3,610,060 for TEMPRITE
`
`for “electric and non-electric massage apparatus; massaging apparatus for personal
`
`use” in International Class 10. See Exhibit 1.
`
`Applicant’s related entity, Taylor Precision Products, LLC, is the owner of United
`
`States Trademark Registration Nos. 198,350 and 3,090,305 for TEMPRITE for
`
`“thermometers” in International Class 26. See Exhibits 2 and 3.
`
`-6-
`
`

`
`III. ARGUMENT
`
`A.
`
`The Standard for
`Summary Judgment
`
`Summary judgment is appropriate when there are no genuine issues of material fact
`
`in dispute and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
`
`An issue is material when its resolution would affect the outcome of the proceeding under governing
`
`law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is genuinely in dispute if the
`
`evidence of record is such that a reasonable factfinder could return a verdict in favor of the
`
`nonmoving party. Id.
`
`The moving party’s burden may also be met by showing an absence of evidence to
`
`support the nonmoving party’s case. T.B.M.P. §528.01 (citing Celotex Corp. v. Catrett, 477 U.S.
`
`317 (1986)). “One of the principal purposes of the summary judgment rule is to isolate and dispose
`
`of factually unsupported claims or defenses.” Celotex Corp. v. Catrett, 477 U.S. 317, 323-324 (U.S.,
`
`1986).
`
`Applicant submits that summary judgment is appropriate on the issues presented,
`
`namely, that the proposed mark, TEMP-RITE, is likely to cause confusion with Opposers’
`
`TEMPUR- family of marks, and that registration of the TEMP-RITE trademark will dilute
`
`Opposers’ TEMPUR-PEDIC mark and alleged TEMPUR- family of marks.
`
`B.
`
`Opposers Cannot Rely on
`a Family of TEMPUR-Formative Marks
`to Prevent Registration of a TEMP-Formative Mark
`
`As a preliminary matter, we must address Opposers’ attempt to assert a family of
`
`TEMPUR-formative marks.
`
`-7-
`
`

`
`This Board recently held that Opposers do not own a family of TEMPUR marks. See
`
`Tempur World LLC, Tempur-Pedic International Inc., and Dan Foam ApS v. Imperial Bedding
`
`Company, Opposition No. 91176091 (TTAB March 27, 2009) (hereinafter referred to as Imperial
`
`Bedding Opinion). On March 9, 2007, Opposers filed a seemingly identical Notice of Opposition
`
`against Imperial Bedding Company’s application for TEMPERCOIL for “mattresses,” to that which
`
`was filed against the subject application on August 9, 2008.4
`
`In the March 27, 2009 opinion, the Board explained: “[I]n order to establish a family
`
`of marks, it must be demonstrated that the marks asserted to comprise the family, or a number of
`
`them, have been used and advertised in promotional material or used in everyday sales activities in
`
`such a manner as to create common exposure and thereafter recognition of common ownership based
`
`upon a feature common to each mark.” Imperial Bedding Opinion, p. 8 (citing J & J Snack Foods
`
`Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991)). The record in the
`
`Imperial Bedding opposition included the same eight registrations relied on in the present
`
`opposition, as well as advertising samples, which the Board found did not establish a family of
`
`TEMPUR- marks:
`
`[O]pposers have submitted many examples of their product literature,
`promotional flyers and advertising. None of these materials,
`however, shows use of all or even a significant number of the
`registered marks together. Rather, there is evidence of, at most, use
`of two or three TEMPUR marks (i.e., TEMPUR-PEDICS, TEMPUR-
`PEDIC and design and/or TEMPUR) in the same product brochure,
`flyer or advertisement. Furthermore, although these materials
`generally show TEMPUR-PEDIC and TEMPUR-PEDIC and design
`prominently, the uses of TEMPUR are buried in text and are not
`prominent or easily noticeable to customers. As a result, consumers
`
`4Neither the parties’ nor the Board addressed Opposers’ dilution claim against Imperial
`Bedding Company’s TEMPERCOIL application.
`
`-8-
`
`

`
`who view these materials will not recognize the two noticeable
`marks, which are essentially the single term TEMPUR-PEDIC, as
`indicating a family based on the element TEMPUR. The record,
`therefore, fails to show that opposers have widely used and promoted
`together their registered marks in such a manner as to create public
`recognition coupled with an association of common origin predicated
`on the term TEMPUR.
`
`Id.
`
`It logically follows that Opposers cannot claim exclusive rights in all TEMP-
`
`formative marks, where they are not entitled to claim ownership of a TEMPUR- family of marks.
`
`In fact, not only do the terms “temp” and “temper” have different meanings, but Opposers also
`
`acknowledge that TEMP-formative marks have historically coexisted. See Exhibits 5 (Opposers’
`
`Admissions, Nos. 11 and 12) and 12 (Opposers’ Responses to Applicant’s Interrogatories, No. 8).
`
`A family of marks cannot be found where the asserted family element is a descriptive or common
`
`term that does not function as a distinguishing feature of the marks in question. See Spraying
`
`Systems Co. v. Delavan, Inc., 975 F.2d 387, 19 USPQ2d 1121 (7th Cir. 1992) (rejecting family of
`
`marks claim where the asserted family characteristic was weak and the subject of widespread third-
`
`party use and registration).
`
`C.
`
`Under the duPont Analysis,
`a Likelihood of Confusion Does Not Exist
`
`The likelihood of confusion determination is a question of law, based on underlying
`
`factual determinations. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1326, 54 USPQ2d 1894, 1896
`
`(Fed. Cir. 2000). In determining whether there is any genuine issue of material fact regarding
`
`likelihood of confusion, the Board must consider the factors set forth in In re E.I. duPont de
`
`Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). The DuPont factors are:
`
`-9-
`
`

`
`(1) the similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression;
`
`(2) the similarity or dissimilarity and nature of the goods or services
`as described in an application or registration or in connection with
`which a prior mark is in use;
`
`(3) the similarity or dissimilarity of established, likely-to-continue
`trade channels;
`
`(4) the conditions under which and buyers to whom sales are made,
`i.e., “impulse” vs. careful, sophisticated purchasing;
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`(5) the fame of the prior mark (sales, advertising, length of use);
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`(6) the number and nature of similar marks in use on similar goods;
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`(7) the nature and extent of any actual confusion;
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`(8) the length of time during and conditions under which there has
`been concurrent use without evidence of actual confusion;
`
`(9) the variety of goods on which a mark is or is not used (house
`mark, “family” mark, product mark);
`
`(10) the market interface between applicant and the owner of a prior
`mark;
`
`(11) the extent to which applicant has a right to exclude others from
`use of its mark on its goods;
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`(12) the extent of potential confusion (de minimis or substantial); and
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`(13) any other established fact probative of the effect of use.
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`Recot, 214 F.3d at 1326, 54 USPQ2d at 1896.
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`It is well-established that a single DuPont factor may be dispositive in a likelihood
`
`of confusion analysis, and that where the marks are sufficiently dissimilar, there may be no
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`likelihood of confusion despite the presence of overlapping goods and trade channels. See
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`-10-
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`

`
`Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375, 47 USPQ2d 1459,
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`1460-61 (Fed. Cir. 1998) (Board, in finding no likelihood of confusion between mark CRYSTAL
`
`CREEK for wine and marks CRISTAL for wine and CRISTAL CHAMPAGNE for champagne, did
`
`not err in relying solely on dissimilarity of marks in evaluating likelihood of confusion and failing
`
`to give surpassing weight to other DuPont factors, all of which favored a likelihood of confusion;
`
`court noted that “we have previously upheld Board determinations that one DuPont factor may be
`
`dispositive in a likelihood of confusion analysis, especially when that single factor is the
`
`dissimilarity of the marks”).
`
`Therefore, the following DuPont analysis focuses on the most significant factor in
`
`this proceeding, namely, the dissimilarity of the marks, while also addressing other relevant DuPont
`
`factors.
`
`1.
`
`The Dissimilarity of the Marks
`Weighs Heavily in Favor of Applicant
`
`DuPont factor 1 is: “The similarity or dissimilarity of the marks in their entireties
`
`as to appearance, sound, connotation and commercial impression.” The Federal Circuit stated that
`
`the first DuPont factor “is a predominant inquiry.” Hewlett-Packard Co. v. Packard Press, Inc., 281
`
`F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002). Consistent with the Board’s recent
`
`opinion, only Opposers’ TEMPUR-PEDIC- formative marks should be considered in evaluating the
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`dissimilarity of the parties’ marks.
`
`The parties’ relevant marks are reproduced below:
`
`TEMP-RITE TEMPUR-PEDIC
`
`-11-
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`

`
`The parties’ marks are clearly dissimilar in sound, appearance, connotation and
`
`commercial impression. The only commonality between the marks are the four letters “temp”, and
`
`the remaining elements of the marks are sufficiently different to avoid confusion.
`
`Furthermore, there is a distinction between the terms “temp” and “temper”. Whereas
`
`“temp” is defined as either “temperature” or an abbreviation for “temporary”, “temper” is defined
`
`as “the state of a substance with respect to certain desired qualities (as hardness, elasticity, or
`
`workability).” See Exhibit 13 (Merriam-Webster Online Dictionary, definitions of “temp” and
`
`“temper” (retrieved June 22, 2009, from www.merriam-webster.com/dictionary/temp and
`
`www.merriam-webster.com/dictionary/temper)). “Because marks must be considered in their
`
`entireties, the use of a common, highly suggestive or descriptive portion is usually not enough to
`
`support a finding that there is a likelihood of confusion. Rather, there must be similarity in the
`
`marks as a whole to support such a holding.” Spraying Systems Co. v. Delavan, Inc., Cancellation
`
`No. 16,950, at p. 12-13 (TTAB Sept. 14, 1989) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
`
`915 (CCPA 1976)). In this case, Opposers’ use of “temper” is highly suggestive for Opposers’
`
`mattress products, which use body heat and mass to “conform to any body shape or size.” See
`
`Exhibit 14 (TPM001260). Opposers’ mattresses are made of a viscoelastic material that is
`
`temperature and weight sensitive: “Visco – resistant to change of shape; elastic – able to return to
`
`its original shape after being forced to change.” Id. Given that the only similarity between the
`
`parties’ marks is also highly suggestive of the qualities of Opposers’ goods, and the marks as a
`
`whole are dissimilar, the first and most significant DuPont factor weights heavily in Applicant’s
`
`favor.
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`-12-
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`

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`Applicant further submits that relevant consumers do not and could not think of
`
`Opposers upon hearing the term “temp” apart from the TEMPUR-PEDIC trademark in its entirety.
`
`In fact, consumers would be more likely to associate TEMP-RITE with Applicant, given that
`
`Applicant and its related entity, Taylor Precision Products, LLC, are the owners of the TEMPRITE
`
`trademark for “electric and non-electric massage apparatus; massaging apparatus for personal use,”
`
`and “thermometers,” which Taylor Precision Products first used in 1917 – eighty (80) years prior
`
`to Opposers’ earliest date of first use in the United States.
`
`2.
`
`Third-Party Use and Registration
`of TEMPER- and TEMP- Formative Marks
`Establishes No Likelihood of Confusion
`
`The sixth DuPont factor focuses on the number and nature of similar marks in use
`
`on similar goods. Where consumers are exposed to various usages of a term in connection with a
`
`given product or service, they tend to distinguish between these usages and to rely on other, more
`
`distinctive features of marks in identifying source. In re Nat’l Data Corp., 735 F.2d 1056, 1060, 224
`
`USPQ 749, 752 (Fed. Cir. 1985). Furthermore, the Federal Circuit has noted that third-party
`
`registrations incorporating a particular term can serve to negate a claim of exclusive rights in the
`
`term. See Sweats Fashions Inc. V. Pannill Knitting Co. Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793,
`
`1797 n.1 (Fed. Cir. 1987).
`
`Perhaps of greatest relevance, Patterson Medical Holdings, Inc.’s TEMPER FOAM
`
`trademark, registered on the Principal Register as Registration No. 2,687,719 and incontestable, was
`
`first used in connection with a memory foam material in the 1970s. See Exhibits 4 (Registration No.
`
`2,687,719 ), 5 (Opposers’ Admissions, No. 3) and 7 (NASA’s Spinoff Magazine, 1988 Issue). The
`
`TEMPER FOAM registration covers “foamed plastic sheet material that disburses pressure evenly,
`
`-13-
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`

`
`and is used in various industries and technical fields, including the medical field and physical
`
`therapy field, in athletic equipment, automotive equipment, space equipment, aircraft equipment
`
`including helicopters, sound control equipment, hiking equipment, furniture, and other industries
`
`requiring foamed plastic materials that disburses pressure evenly” in International Class 17.
`
`Attached as Exhibit 15 are printouts from various websites, including the current registrant’s site,
`
`offering TEMPER FOAM products for sale. The TEMPER FOAM products identified in the
`
`attached exhibit evidence current use of TEMPER FOAM on products comparable to those of
`
`Opposers, such as sheets of TEMPER FOAM padding material described as, “[o]pen-cell, slow
`
`recovery padding... [b]ody heat helps mold foam...,” which is reminiscent of Opposers’ product
`
`description. Indeed, TEMPER FOAM and TEMPUR-PEDIC have greater similarities in sound,
`
`appearance and commercial impression than TEMPUR-PEDIC has with the opposed mark, TEMP-
`
`RITE. Such similar third-party usage on product in the same field as Opposers tends to prove the
`
`weakness of Opposers’ marks. Playboy Enters. v. Netscape Communicatins Corp., 354 F.3d 1020,
`
`1027 n.33, 69 USPQ2d 1417, 1422 n.33 (9th Cir. 2004) (“Evidence of third-party use in markets
`
`similar to the markholder’s is more compelling that evidence of third-party use in unrelated
`
`markets”).
`
`Quilts of Denmark is the owner TEMPRAKON, which is registered on the Principal
`
`Register as Registration No. 2,986,150 for “pillows” in International Class 20 and “duvets” in
`
`International Class 24. A copy of Registration No. 2,986,150 is attached as Exhibit 16. Attached
`
`as Exhibit 17 are printouts from various websites, including the Quilts of Denmark site, which
`
`advertises TEMPRAKON as “active temperature control ability” and helpfully explains that “[t]he
`
`name emphasizes the unique ability to perform temperature (Tempra) control (KON).” Such use
`
`-14-
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`

`
`clearly indicates that “temp” is highly suggestive when used in connection with this type of bedding,
`
`namely, temperature sensitive or controlled. Spraying Systems Co. at p. 12-13 (“Because marks
`
`must be considered in their entireties, the use of a common, highly suggestive or descriptive portion
`
`is usually not enough to support a finding that there is a likelihood of confusion. Rather, there must
`
`be similarity in the marks as a whole to support such a holding”).
`
`Sleep Innovations Inc.’s TEMPSOMA is also registered on the Principal Register,
`
`Registration No. 2,640,891, and incontestable. See Exhibits 5 (Opposers’ Admissions, No. 12) and
`
`10 (Registration No. 2,640,891). The TEMPSOMA registration covers “pillows and cushions” in
`
`International Class 20 and “bedding, namely, mattress pads” in International Class 24. Attached as
`
`Exhibit 18 are printouts from various websites, including the current registrant’s site, offering
`
`TEMPSOMA products for sale, including mattress toppers and bed pillows utilizing memory foam.
`
`The TEMPSOMA products are described as having “technologically advanced foam that
`
`distinguishes individual body weight and temperature, molding to your unique contours, and
`
`ensuring a better nights sleep,” which sounds quite similar to the touted attributes of Opposers’ foam
`
`bedding products.
`
`In addition, Zinus, Inc., is the owner of Registration No. 3,083,803 for
`
`TEMPSMART for “foam, namely, foam cores for mattreses, pillows, cushions and sitting wedges”
`
`in International Class 17, and “pillow cases and covers, mattress pads and covers” in International
`
`Class 24. See Exhibits 5 (Opposers’ Admissions, No. 11) and 11 (Registration No. 3,083,803).
`
`Attached as Exhibit 19 is a printout from the registrant’s website, advertising “[n]ew temperature
`
`regulating Tempsmart, absorbs, stores, and releases heat as needed for top of the bed products,”
`
`which evidences current use of TEMPSMART.
`
`-15-
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`

`
`In light of the above-mentioned use and registration of TEMP- formative marks, the
`
`inclus