American Sleep

256053

Super Night Star 2000 LTD filed Israel Trademark Application Number 256053 for American Sleep as shown. The application covers Mattresses and garden and home furniture; all included in class 20.

On 26 August 2014 the Trademark Department sent an Office Action claiming that the mark could not be registered under Sections 11(6) and 11(6a) of the Ordinance since the mark included the geographical region American and the mattresses do not originate in America.

The Applicant responded on 17 November 2014 and claimed that the mark was not misleading as America does not have a reputation regarding mattresses. The Applicant went on to explain that customers would not consider that the mattresses were from America but that they enabled an American standard sleep quality, and the geographical indication was random.

Since America does not have a mattress reputation, section 11(6a) is not applicable. To support this argument he referred to Israel Trademark No. 235163 “Spirit of Jerusalem” to Ein Gedi Cosmetics. The Applicant’s response was unsuccessful and he requested a hearing before the Registrar. Applicants are entitled a hearing and on 5 July 2015, the Deputy Commissioner Ms Jacqueline Bracha held a hearing and the applicant went over his arguments and also noted that the term ‘American’ does not imply the United States specifically. (The applicant did not, however claim that the mattresses originated in Latin America or in Central America).

The Applicant claimed that unlike a perfect noun that is a specific place name and might lead a consumer to believe that the goods originated in a place, the term American is an adjective which does not imply a connection with the place (no, I don’t understand this either – MF). The Applicant then went on to claim that the term American was at best, a laudatory term.

The Ruling

Section 11(6a) states that:

A mark may not include a place name used for goods not originating in a specific area if it could lead to confusion regarding the source of the goods.

The main issue is whether the term American when applied to mattresses would lead the consumer to conclude that the goods originate in the States.

Section 11(6a) was added to the Trademark Ordinance when Israel joined TRIPS in 1999. The standard for excluding the mark is likelihood of confusion and not actual confusion.

Not all marks including a place name are prohibited. Some will be seen by the consumer as being random. It is only marks that are likely to cause confusion regarding the origin of goods that are forbidden.

McCarthy in McCarthy on Trademarks and unfair Competition, chapter 14:34 suggests three questions should be addressed:

”       1. Is the mark the name of the place or region from which the goods actually come? If the answer is yes, then the geographic term is probably used in a descriptive sense, and secondary meaning is required for protection. If the answer is no, then the geographic term is probably being used either in an arbitrary sense or in a misdescriptive or deceptive sense, depending upon the probable reaction of customers…

       2. Is the geographic term likely to denote to reasonable buyers that the goods come from the region or place named? If the answer is no, then this is evidence of an arbitrary usage…  

       3. Is the place or region named noted for these particular goods? If buyers don’t really care whether the goods come from the place named (and in fact they do not come from the place named) then this is evidence that the mark is being used in an arbitrary sense. But if the geographic term is likely to lead buyers to think that the goods come from that place, and the place is well known for these goods such that this is an important inducement to purchase, then the mark is probably deceptive and cannot be registered or protected.”

Since there are American made mattresses available in Israel that have a local reputation, one can conclude that customers are not indifferent to whether a mattress is made locally or in the States. One cannot exclude the possibility that someone seeing a mattress branded as American would conclude that it originates in the United States.

The Applicant alleges that the combination with sleep indicates that the term is being used arbitrarily but Ms Bracha does not consider this argument convincing. In RE CALIFORNIA INNOVATIONS, INC 329 F.3d 1334; 2003 U.S. App. LEXIS 10240; 66 U.S.P.Q.2D (BNA) 1853 the US Federal Court concluded that bags and storage devices including the term California indicates to the public that the  bags and storage devices originate in that State.

“In this case, we agree with the Examining Attorney that applicant’s mark CALIFORNIA INNOVATIONS and design is primarily geographically deceptively misdescriptive of applicant’s goods.

… Clearly, consumers viewing the word CALIFORNIA would understand it to refer the state of California. Moreover, although the design element in applicant’s mark does not have a geographical connotation such that it reinforces the primary significance of CALIFORNIA as geographical, we do not find the design to be so unique or distinctive as to detract from the geographical significance of CALIFORNIA. Also, the word INNOVATIONS does not detract from the primary significance of CALIFORNIA as geographical, but rather suggests innovative products originating from California.

… There can be no doubt that California is a major producer of a wide variety of goods, and in particular, goods of the type involved in this appeal. Thus, there is a reasonable basis for concluding that the purchasing public would make a goods/place association.”

Although the Applicant claims that the US does not have a reputation in mattresses. However, an Internet search reveals that there are US mattress manufacturers that are active in Israel, including Sealy, Active Coil and Serta. Sealy i a world leader and has a significant share of the Israel market.

The Monopolies Commission objected to Aminach and Night Sleep Center 2000 LTD joining forces as it would have a negative impact on the market, and noted that consumers place a high value of mattresses as impacting health and sleep, but not having external indications that enable the consumer to ascertain quality and to make an informed decision. The choice of mattress is heavily influenced by the sales person.

In such conditions, the assumed origin is a significant factor and the pending mark is misleading in this matter. This also indicates that the choice of place is not arbitrary.

Although the Applicant claims that the mark has a history of use, he has not provided evidence that this indeed is the case. It is also not clear that acquired distinctiveness could help overcome allegations that a mark is misleading as to the source of goods.

The mark was rejected.

COMMENT

I would have thought that using a place name as an adjective rather than a noun would be more confusing. There are mattresses and reclining armchairs sold in Israel as American Comfort, American Highrise, etc. I have found American beds very large and very comfortable, but when I’ve been to the US, I’ve stayed in hotels.

Does it matter where flooping mattresses are harvested?

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