Seattle Trademark Lawyer

In a mammoth 73-page opinion, the Southern District of New York May 4 decided a trademark case involving grey-market TEMPUR-PEDIC mattresses. The summary judgment order in Dan-Foam A/S v. Brand Named Beds, LLC, is chock full of trademark law. In fact, it’s so chock full I’ll only summarize the dilution portion of the opinion.

Plaintiffs Dan-Foam A/S and Tempur-Pedic, Inc., manufacture and distribute TEMPUR-PEDIC mattresses. They sued defendant Brand Name Beds (“BNB”), an unauthorized seller of TEMPUR-PEDIC mattresses.

In a typical grey-market goods trademark case, a cause of action for dilution arises when (1) “material differences” exist between the goods sold by the owner of a famous trademark and its authorized or licensed dealers and those sold by the unauthorized dealer, and (2) the unauthorized dealer sells the materially different trademarked goods in a manner that would be likely to dilute the strength of the trademark owner’s famous mark.

Here, the court found that a reasonable juror could find actual dilution and, therefore, likelihood of dilution, resulting from BNB’s unauthorized sales of TEMPUR-PEDIC mattresses. Therefore, it denied BNB’s motion for summary judgment.

Actual Dilution. The court found “BNB sells TEMPUR-PEDIC® mattresses under the identical TEMPUR-PEDIC® mark used by Tempur-Pedic. This ‘identity of marks creates a presumption of actual dilution.’”

Fame. Drawing all inferences in favor of Tempur-Pedic, the court found “a reasonable juror could find that the TEMPUR-PEDIC® mark is ‘widely recognized by the general consuming public of the United States as a designation of source of the goods … of the trademark owner.’ A consideration of the factors suggested by the TDRA could reasonably support a finding of famousness. The TEMPUR-PEDIC® trademark has been registered on the Principal Register of the United States Patent and Trademark Office since 1994. Since then, ‘the duration, extent, and geographic reach of advertising and publicity of the mark’ has been considerable. Tempur-Pedic advertises through newspaper and magazine ads, mailings, television commercials, infomercials, and on the internet. Tempur-Pedic ‘actively’ and ‘continuously’ advertises and promotes its products ‘on a national level.’ As a result, ‘[t]he brand is a highly regarded, distinctive, and widely known identifier of high quality, therapeutic mattresses, pillows, pads, cushions, slippers and other similar products….”

The court added: “Even though the parties have not yet offered consumer surveys relating to the ‘extent of actual recognition of the mark,’ based on the evidence currently in the record, a reasonable juror could find that the mark ‘posses[es] the requisite degree of recognition’ necessary to maintain an action for trademark dilution.’ BNB has certainly not met its burden to prove that no genuine factual dispute exists as to the issue of famousness.”

Tarnishment. The court found: “A question of material fact remains as to whether BNB’s actions in selling mattresses bearing the TEMPUR-PEDIC® mark have created an ‘association’ between the mattresses that it sells bearing the TEMPUR-PEDIC® mark and those sold by Tempur-Pedic so as to ‘harm[] the reputation’ of the TEMPUR-PEDIC® trademark. As described earlier, BNB’s repackaging and shipping procedures, as well as the likely unavailability of the Tempur-Pedic Warranty to BNB consumers — either because of those procedures or because BNB is not an authorized Tempur-Pedic dealer — could support a finding of material differences between the mattresses sold by BNB and those sold  by Tempur-Pedic and its authorized dealers.

The case cite is Dan-Foam A/S v. Brand Named Beds, LLC, No. 06-6350, 2007 WL 1346609 (S.D.N.Y.).