On November 12, 2010, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (“TTAB”) issued a decision denying a motion for summary judgment cancellation of a federal registration for COMFORT ZONE (Stylized) for portable heaters and fans.
Earthwise Technologies, Inc. and Mr. Bruce Searle (“Petitioners”) instituted a cancellation proceeding against Kramer Levin client Howard Berger Co., Inc’s (“Registrant”) registration for COMFORT ZONE (Stylized) on the grounds that the mark was generic for heaters or descriptive of a function or purpose of heating, ventilating and air conditioning devices. On June 8, 2010, Petitioners moved for summary judgment, arguing that the term “comfort zone” is widely used in the HVAC field to mean “the range of atmospheric temperature and humidity considered comfortable for most people”, and that it is generic in that it “directly names the most important aspect or purpose of applicant’s goods”. Opinion at 3. In support of its motion Petitioners submitted thousands of pages of materials, including scientific publications, patents and dictionary definitions, to show use of “comfort zone” in connection with HVAC-related goods and services.
In opposition to the motion, Registrant argued that the term “comfort zone” is a double entendre for both “a situation where one feels at ease” and a physical “place that feels comfortable,” and that it is suggestive, rather than descriptive, of a goal, result or condition that may be produced by using a portable heater or fan.
The TTAB concluded that, at a minimum, genuine issues of material fact exist as to (1) whether the relevant purchasing public would perceive “comfort zone” as the name of the most important aspect of Registrant’s goods, or as identifying an ingredient, quality, characteristic or feature of the goods, and (2) whether the wording would be perceived as merely describing a result or goal of using the goods. Accordingly, the TTAB held that Petitioners were not entitled to summary judgment that COMFORT ZONE is generic or merely descriptive.
The Kramer Levin team consisted of Intellectual Property partner William Spatz and associates Carole Klinger, Heather J. Chase and Ashley B. Roberts.