Athlete’s Foot Marketing Associates, Inc.

Trademark Trial and Appeal Board

Mar 18, 2003

No. 76008431 (T.T.A.B. Mar. 18, 2003)

Mailed: 18 MAR 2003
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Athlete’s Foot Marketing Associates, Inc.
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Serial No. 76/008,431
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Kathryn E. Swint of Arnall Golden Gregory LLP for Athlete’s
Foot Marketing Associates, Inc.
William H. Dawe, III, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hohein and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 23, 2000, Athlete’s Foot Marketing
Associates, Inc. (applicant) filed an application to
register the mark GET FIT (in typed form) on the Principal
Register for services ultimately identified as “retail
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/008,431
2
store services featuring athletic footwear and clothing,
excluding sweaters” in International Class 35.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark GETFIT (in typed form) for “men’s and women’s
sweaters” in International Class 25.2
When the refusal was made final, applicant filed this
appeal.
The examining attorney argues that the “marks are
virtually identical in appearance and overall commercial
impression.” Brief at 4. Specifically, the examining
attorney found that applicant’s spelling of its mark as a
single compound word “does not change the overall
commercial impression of the marks because the modification
does not alter the manner in which these letters are viewed
or pronounced.” Id. The examining attorney also found
that the goods and services are related because “there is
every indication that the same customer would encounter the
registrant’s goods or advertising therefore [sic], in the
same trade channels as the applicant’s services.” Brief at
1 Serial No. 76/008,431. The application contains an allegation
of a date of first use and a date of first use in commerce of
June 1999.
2 Registration No. 2,419,577, issued January 9, 2001.
Ser No. 76/008,431
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9-10. To support his position, the examining attorney
submitted numerous use-based, third-party registrations to
suggest that the same marks have been registered by the
same entities for sweaters and retail store services. As a
result, the examining attorney concluded that there is a
likelihood of confusion when applicant’s and registrant’s
marks are used on the identified goods and services.
On the other hand, applicant argues that the examining
attorney “unduly expands the protection to which
registrant’s mark is entitled” and that the description of
its services “expressly excludes services pertaining to
sweaters.” Reply Br. at 1-2 (emphasis in original).
Furthermore, applicant asserts that the examining
attorney’s evidence “does not contain a registration for
both retail store services featuring a single niche type of
clothing and one unrelated type of clothing.” Reply Br. at
4 (underlining in original). In addition, applicant claims
that the purchasers are sophisticated and that it “is
unlikely that consumers would patronize Applicant’s
specialty retail stores looking for registrant’s sweaters.”
Brief at 6. According to applicant, these factors
demonstrate that confusion between the marks is unlikely.
We affirm.
Ser No. 76/008,431
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In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by discussing the similarities
and dissimilarities of the marks in the application and
registrations. In this case, the marks are virtually
identical, GET FIT and GETFIT. Both marks are depicted in
typed form. The marks would be pronounced identically and
they would have the same meaning and commercial impression.
The absence of the space does not significantly change the
appearance of the marks. Stockpot, Inc. v. Stock Pot
Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737
F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no
question that the marks of the parties [STOCKPOT and STOCK
Ser No. 76/008,431
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POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical”); In
re Best Western Family Steak House, Inc., 222 USPQ 827, 827
(TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”).
Because the only difference between these marks is that one
contains a space, the virtually identical nature of the
marks is a significant factor in our likelihood of
confusion analysis. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without a doubt the
word portions of the two marks are identical, have the same
connotation, and give the same commercial impression. The
identity of the words, connotation, and commercial
impression weighs heavily against the applicant”).
Applicant suggests that its “mark is a double
entendre, since GET FIT, when used with services related to
athletic footwear, means both ‘get in shape’ and ‘get well-
fitting’ athletic shoes and athletic apparel. In contrast,
the Registrant’s mark suggests no connection to physical
fitness.” Brief at 7. However, it is not clear why
registrant’s sweaters would not convey the same “get fit”
message that the mark would have when used with applicant’s
services, particularly if registrant’s sweaters are those
designed for cold-weather, outdoor fitness and athletic
Ser No. 76/008,431
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activities. Furthermore, applicant’s argument that
registrant’s mark “suggests ‘getting’ a sweater that
‘fits’” (Reply Br. at 3) is similar to its assertion that
its mark could mean “‘get well-fitting’ … apparel.” Brief
at 7. Therefore, there does not appear to be any
significant differences between the meanings created by
registrant’s and applicant’s marks.
Next, we look at the goods and services to determine
if there is a relationship between them. We must consider
the goods and services as they are described in the
identification of goods and services in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). The cited
registration contains no limitations so we must assume that
registrant’s sweaters travel through all normal channels of
trade. Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since there are
Ser No. 76/008,431
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no restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade for those alcoholic beverages”). We also
do not read limitations into the identification of goods.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”). Therefore, we must
assume that these sweaters would be sold through retail
stores featuring athletic clothing and that registrant’s
sweaters would include those designed for outdoor fitness
and sporting activities.
Furthermore, it is not necessary for the examining
attorney to establish that the registrant and applicant are
competitors.
[G]oods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such
that they would be likely to be seen by the same
persons under circumstances which could give rise,
because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
Ser No. 76/008,431
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association between the producers of each parties'
goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Shell Oil, 25 USPQ2d at 1689 (“[E]ven when goods
or services are not competitive or intrinsically related,
the use of identical marks can lead to the assumption that
there is a common source”).
In this case, the examining attorney has included
numerous registrations in which the mark is registered for
sweaters and retail clothing store services. See, e.g.,
Registration No. 2,332,482 (“Girl’s and women’s sports
clothing, namely, … sweaters” and “retail store services …
featuring girl’s and women’s sports clothing and
equipment”); No. 2,472,275 (Sweaters and retail store
services); No. 2,461,030 (“Clothing and sports-related
apparel, namely, … sweaters” and “retail store services
featuring golf-related sporting goods equipment and
clothing”); No. 2,483,278 (Sweaters and retail clothing
store services); and No. 2,424,375 (Sweaters and retail
clothing store services). These registrations provide some
support for the examining attorney’s position that sweaters
and retail store services featuring athletic footwear and
clothing are related because they show that these goods and
services have been registered by the same source under the
Ser No. 76/008,431
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same mark. See In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993).
Here, however, the question is whether consumers would
believe that there is some relationship between
registrant’s GETFIT sweaters and applicant’s GET FIT retail
stores featuring athletic clothing but excluding sweaters.
We hold that the answer would be in the affirmative. The
Federal Circuit faced a similar question in a case
involving the mark “bigg’s”(stylized) for “retail grocery
and general merchandise store services” and BIGGS and
design for furniture.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance.
Ser No. 76/008,431
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In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988). See also MSI Data Corp. v.
Microprocessor Systems, Inc., 220 USPQ 655, 658 (TTAB 1983)
(“[I]t is well established that a ‘relatedness’ which
speaks to a likelihood of confusion may occur not only
where goods are involved but can exist between products on
one hand and services dealing with or related to those
products on the other hand”).
We recognize that applicant’s amended identification
of goods specifically excludes sweaters as an item sold in
its stores. This limitation does not mean that the
services are no longer related to the goods. A potential
customer familiar with GETFIT sweaters would likely believe
that GET FIT retail stores featuring athletic clothing
emanate from the same source even though the store does not
sell sweaters. We can perceive of no significant
difference in the consumers of retail store services
featuring athletic clothing and of retail store services
featuring athletic clothing excluding sweaters. Shell Oil,
26 USPQ2d at 1689 (It is relevant to consider the degree of
overlap of consumers exposed to the [goods and] services”).
The fact that, unlike most retailers of athletic clothing,
there are no sweaters in applicant’s stores would most
likely be considered by purchasers to be a seasonal
Ser No. 76/008,431
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occurrence or a store preference, rather than a significant
difference in the goods and services that they would
ascribe to a difference in the source of the goods and
services. Therefore, the purchasers of registrant's
sweaters are likely to assume that they emanate from the
same source as applicant's retail store services featuring
athletic clothing, regardless of the presence or absence of
sweaters in the stores. When purchasers encounter
virtually the same mark for sweaters and for retail
athletic clothing store services, even for athletic
clothing stores that do not sell sweaters, they are likely
to assume that there is an association or relationship
between the goods and services.
Applicant also argues, without any evidentiary
support, that consumers of registrant’s goods “make careful
purchasing decisions” and that “neither the Applicant’s
services nor the Registrant’s goods are typically purchased
on impulse.” Brief at 7. We do not agree that customers
of the identified goods and services would routinely make
careful purchasing decisions or that these goods and
services are not purchased on impulse; however, even if
they were, when the marks are virtually identical and the
services and goods so closely related, confusion would
still be likely. In re Total Quality Group Inc., 51 USPQ2d
Ser No. 76/008,431
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1474, 1477 (TTAB 1999) (“We recognize applicant's
attorney's point that its software is expensive and that
purchasers of it are likely to be sophisticated. Suffice
it to say that no evidence in support of these assertions
was submitted. In any event, even careful purchasers are
not immune from source confusion”). See also In re Hester
Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we
do not doubt that these institutional purchasing agents are
for the most part sophisticated buyers, even sophisticated
purchasers are not immune from confusion as to source
where, as here, substantially identical marks are applied
to related products”).
Therefore, when we consider that the goods and
services are related and the marks are virtually identical,
we conclude that, on the record in this case, confusion is
likely.
Decision: The Examining Attorney’s refusal to
register applicant’s mark GET FIT for the identified
services because of a prior registration for the mark
GETFIT for sweaters on the ground that it is likely to
cause confusion is affirmed.