A November 13, 2015 TTAB decision (Dan Foam ApS v. Innocor, Inc., Cancellation No. 92054201 resulted in the cancellation of the Bodipedic and design trademark based on a likelihood of confusion with the petitioner’s Temper-pedic design mark.
The Bodipedic mark had been in use since 2008, but the Tempur-pedic mark was found to be “famous” by virtue of its sales data and advertising expenditures. (This is a different standard for “famous” than is used for determining likelihood of dilution.) This finding of fame provides for broader protection and that is what Tempur-pedic got.
Bodipedic cited numerous other marks for similar products that ended with “pedic,” (see the decision for pictures of these marks) but the Board was not convinced. Even though the Bodipedic mark had been in use since 2008, The Board laid it to rest.
Importantly (to me) was the fact that neither side submitted survey evidence to support their case. According to the decision, it appears that the judges themselves (warning: small sample) looked at the two marks and focused on the line drawing of a (presumably) sleeping person lying on the mark. It was their conclusion that the drawings were similar enough to cause confusion.
Would a survey have made a difference? It’s always dangerous to predict how a survey will turn out and what it will show. And surveys are not cheap. But losing a trademark you have used for almost 10 years is expensive. Bodipedic may have been asleep on this one.