Dan Foam ApS (“Dan Foam”), the owner of the +TEMPUR-PEDIC mark and registration, which includes a design featuring a silhouette of a sleeping person, sought cancellation of Sleep Innovations, Inc.’s (“Sleep Innovations”) registrations for BODIPEDIC for mattress toppers, pillows, and mattresses, one of which includes a similar silhouette, on likelihood-of-confusion grounds.
Click here to view images.
The parties filed cross-motions for summary judgment on the issue of likelihood of confusion. Dan Foam moved for summary judgment, contending there was no genuine issue of material fact that consumers were likely to confuse Sleep Innovations’ BODIPEDIC design mark with the +TEMPUR-PEDIC design mark. In support thereof, Dan Foam cited evidence of actual confusion in the form of undated transcripts of live online chats and telephone conversations between Overstock.com representatives and unidentified customers. Conversely, Sleep Innovations moved for summary judgment, contending there was no genuine issue of material fact that confusion was unlikely, citing, among other things, over ninety third-party registrations for similar goods incorporating the -PEDIC formative, and over fifteen registrations for third-party marks featuring designs with reclining human shapes. Before addressing the parties’ motions for summary judgment, however, the TTAB ruled on two procedural matters involving the admissibility of third-party evidence.
The TTAB found that Dan Foam violated Fed. R. Civ. P. 45(b)(1) by failing to provide notice to Sleep Innovations before serving a subpoena on third party Overstock.com, but denied Sleep Innovations’ evidentiary motions to exclude the subpoenaed documents. The TTAB concluded that Sleep Innovations was not prejudiced by the violation, and admitted subpoenaed documents from Overstock.com that, according to Dan Foam, demonstrated evidence of consumers’ actual confusion between the +TEMPUR-PEDIC and BODIPEDIC marks, including undated transcripts of live online chats and telephone conversations between Overstock.com representatives and unidentified customers. Next, the TTAB addressed Sleep Innovations’ objection that the Overstock.com documents constituted inadmissible hearsay. Following its analysis of the nature of the undated transcripts and telephone conversation records, the TTAB concluded that such evidence should be admitted under two exceptions to the hearsay rule. Specifically, the TTAB cited Fed. R. Evid. 803(1) in support of admitting the documents, concluding that the evidence reflected the “present-sense impressions” of customers. The TTAB further concluded that such evidence should be admitted under Fed. R. Evid. 803(3) because “statements of customer confusion in the trademark context” are “state of mind” exceptions to the hearsay rule. However, the TTAB observed that the documents were of little probative value without corroborative customer testimony regarding confusion.
The TTAB then denied the parties’ cross-motions for summary judgment. Despite its acknowledgement that both parties engaged in “common use” of marks containing the -PEDIC formative and designs featuring reclining human shapes on “overlapping goods,” the TTAB determined that, even assuming that Dan Foam’s +TEMPUR-PEDIC mark is famous and that some actual confusion had occurred, a material dispute existed over the similarity of the overall commercial impressions of the marks, the extent of third-party use of similar marks on related goods, and the appropriate scope of protection for each mark. The TTAB explained that, given the overlap in the parties’ goods, the outcome of the case would likely turn on the similarity of the marks and the strength of the marks. Given the narrowness of the issues remaining in the case, the TTAB encouraged the parties to participate in Accelerated Case Resolution (“ACR”), in which the parties stipulate that the TTAB can decide disputed issues without the more time-consuming process of full discovery, trial, and briefing. The parties were given thirty days to decide whether to have the proceeding decided by ACR.
This decision underscores the TTAB’s increasing emphasis on the benefits of ACR in cases where issues can be narrowed by stipulation. It also confirms that evidence of actual confusion may be admissible through hearsay exceptions under the Federal Rules of Evidence.