No. 86297450 (T.T.A.B. Jun. 16, 2016)

DDSG Gym LLC

Trademark Trial and Appeal BoardJun 16, 2016

No. 86297450 (T.T.A.B. Jun. 16, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 16, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DDSG Gym LLC _____ Serial No. 86297450 _____ Howard N. Aronson and Renée L. Duff of Lackenbach Siegel, for DDSG Gym LLC. Roger T. McDorman, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Shaw, Gorowitz and Goodman, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: DDSG Gym LLC (“Applicant”) seeks registration on the Principal Register of the mark RUNWAY (in standard characters) for Health club services, namely, providing instruction and equipment in the field of physical exercise in International Class 41.1 1 Application Serial No. 86297450 was filed on June 2, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 86297450 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark THEFITNESSRUNWAY (in standard characters) for entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring fitness advice, fitness tips, fitness fashions, fitness fashion reviews, fitness beauty advice, fitness beauty tips, active wear reviews; on-line journals, namely, blogs featuring fitness advice, fitness tips, fitness fashions, fitness fashion reviews, fitness beauty advice, fitness beauty tips, active wear reviews; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field(s) of fitness advice, fitness tips, fitness fashions, fitness fashion reviews, fitness beauty advice, fitness beauty tips, active wear reviews; providing a website featuring information on exercise and fitness; providing an interactive website featuring information and links relating to fitness; providing on-line magazines in the field of fitness advice, fitness tips, fitness fashions, fitness fashion reviews, fitness beauty advice, fitness beauty tips, active wear reviews in International Class 41 as to be likely to cause confusion, mistake or deception.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Discussion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In 2 Registration No. 4190222, registered August 14, 2014. Serial No. 86297450 - 3 - re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). A. Similarity or dissimilarity of the services. We start with an analysis of the second du Pont factor the similarity or dissimilarity of the services. To determine whether the services are related, we compare Applicant’s and Registrant’s respective services as they are identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the services themselves, but rather whether they would be confused as to the source of the services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the Serial No. 86297450 - 4 - mistaken belief that [the services] emanate from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Applicant’s services are identified as: “health club services, namely, providing instruction and equipment in the field of physical exercise.”3 The recitation of Registrant’s services includes: “providing a website featuring information on exercise and fitness; providing an interactive website featuring information and links relating to fitness.”4 The Examining Attorney argues that these services are closely related because “it is common practice for the same entity to provide both parties’ services and market such services under the same mark.” Examining Attorney’s Brief, 9 TTABVUE 16. In support of his position, the Examining Attorney submitted copies of fifteen use- based third-party registrations, each of which includes both Applicant’s and 3 “Exercise” is defined in as to “engage in physical activity to sustain or improve health and fitness; take exercise.” Oxford Dictionaries, www.oxforddictionaries.com/us/definition/americanenglish/exercise, Exhibit to Office Action dated September 15, 2014, TSDR p. 16. TSDR is the Trademark Status and Document Retrieval, which is the source of all documents filed during the prosecution of an application, i.e. Office actions and responses. 4 “Fitness” is defined as “good health, especially good physical condition resulting from exercise and proper nutrition.” –The American Heritage Dictionary of the English Language, www.ahdicitionary.com/word/search.html?q=fitness, Exhibit to Office Action Denying Request for Reconsideration dated September 28, 2015 TSDR p. 6. Serial No. 86297450 - 5 - Registrant’s types of services and which serves to suggest that the goods are of a kind that may emanate from a single source. Third-party registrations which individually cover a number of different items and which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.6 (TTAB 2015); See also In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). These registrations were attached to the Office Action dated September 15, 2014. For example, • Registration No. 4040735 for the mark GAPARI NUTRITION for providing a web site featuring information on exercise and fitness; online newsletters featuring information on exercise and fitness; online non-downloadable videos featuring information on exercise and fitness; blogs featuring information on exercise and fitness; fitness consulting services; fitness training services (TSDR pp 85-86); • Registration No. 4552595 for the mark SECOND FIT for services including providing assistance, personal training and physical fitness instruction and consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; providing a web site featuring information on exercise and fitness; educational and entertainment services, namely, providing motivational and educational speakers in the field of self and personal improvement, physical fitness and spiritual growth; on-line journals, namely, blogs featuring information and motivational counseling in the field of self and Serial No. 86297450 - 6 - personal improvement, physical fitness and spiritual growth (TSDR pp 91-92); • Registration No. 4602977 for the mark OM DOME for providing fitness and exercise facilities; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; personal fitness training services and consultancy; providing classes, workshops, seminars and camps in the fields of fitness, essential oils, massage, nutrition, exercise, yoga, and Pilates; yoga instruction and training; rental of yoga equipment; providing a web site featuring information on yoga, exercise and fitness; on-line journals, namely, blogs featuring information on yoga, exercise and fitness (TSDR p 101); • Registration No. 4524970 for the mark B3 for services including health club services, namely, providing instruction and equipment in the field of physical exercise; providing fitness and exercise studio services, namely, Pilates instruction and training; providing a website featuring online sports training and training advice and the recording of training and workouts; providing on-line newsletters in the field of exercise and fitness; providing a website featuring non-downloadable videos in the field of exercise and fitness instruction; on-line journals, namely, blogs featuring exercise, fitness and nutrition (TSDR pp 104-105); and • Registration No. 4579712 for the mark CITY ATHLETE for physical fitness training services; physical fitness conditioning classes; physical fitness instruction and consultation; providing classes in the fields of fitness and exercise; providing fitness and exercise facilities; providing a web site featuring information on exercise and physical fitness accessible through a global computer network and mobile devices; on-line journals, namely, blogs featuring the topics regarding local community, exercise, fitness, wellness and personal development (TSDR pp 124-125). • Serial No. 86297450 - 7 - In addition, the Examining Attorney established that the same entities provide both health club services and blogs/on-line articles about fitness, by submission of various webpages, such as, • Anytime Fitness Kansas City – fitnessclub kansascitywordpress.com (Office Action dated September 15, 2014, TSDR pp 19-31); • Galaxy Fitness Club – www.galaxyfitclub.com (Office Action dated September 15, 2014, TSDR pp 44-67); • Cheshire Fitness Club – cheshirefitnessclub.com (Office Action dated September 15, 2014, TSDR pp 68-84); • Genesis Health Clubs – www.genesishealth clubs.com (Office Action dated March 6, 2015, TSDR pp 11-35); and • Riverside Health Club - www.riversidehealth club.com (Office Action dated March 6, 2015, TSDR pp 36-45). Applicant argues that its health club services are distinguishable from the services in the registration, because the services in the registration involve both fitness and fashion. Applicant is incorrect. The relationship between Applicant’s health club services and Registrant’s blogs and on-line articles about fitness is sufficient to establish that Applicant’s and Registrant’s services are related. Cf. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (Likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any item in the identification of goods or services.). Moreover, all of Registrant’s services that pertain to “fashion,” are also “fitness related.” For example, Registrant offers blogs and websites featuring “fitness Serial No. 86297450 - 8 - advice and fitness tips” as well as “fitness fashions, fitness fashion reviews, fitness beauty advice, fitness beauty tips, active wear reviews.” The Examining Attorney has submitted evidence that fitness clothing is offered by health clubs in their blogs and on their websites. See attachments to the Office Action dated March 6, 2015, TSDR pp 55 and 60: • LA Fitness blog posted on December 8, 2014 (LaFitness.com): and Serial No. 86297450 - 9 - • Gold’s Gym website, which offers “GOLD’S GEAR,” (www.goldsgym.com): Based on the evidence of record, we find that the services are related and thus, the second du Pont factor favors a finding of likelihood of confusion. B. Channels of trade and class of customer. Next, we look at the third du Pont factor, the channels of trade and class of customers. In this case because there are no “limitations in the identification of [services] in either the application or the cited registration, we must presume that the [services] travel through all of the usual channels of trade and are offered to all normal potential purchasers.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1412 (TTAB 2015) quoting In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As discussed above, the Examining Attorney has established that health clubs offer both fitness services and blogs relating to fitness and other matters. Accordingly, the services travel in the same channel of trade to the same purchasers and the third du Pont factor favors a finding of likelihood of confusion. Serial No. 86297450 - 10 - C. Sophistication of purchasers. Applicant argues that the fourth du Pont factor, sophistication of purchasers favors Applicant because “purchasers of health club services are sophisticated, as the services can be expensive, are very personal and thus are carefully considered.” Reply Brief, 10 TTABVUE 4. There is no evidence that all health club services are expensive or that they are purchased by sophisticated purchasers. To the contrary, as set forth below, the Examining Attorney introduced evidence that health clubs may be inexpensive, which could appeal to ordinary consumers, for example, Genesis Health Clubs offers a membership, which costs $6 to join and includes six months free (attachment to the Office Action dated March 6, 2015, TSDR p 32): Serial No. 86297450 - 11 - Accordingly, we find that while health club services may be purchased by sophisticated purchasers, they may also be purchased by ordinary purchasers and thus, this du Pont factor is neutral. D. The number and nature of similar marks in use on similar goods. Applicant also argues that the term “runway” is weak for education or entertainment services because “others have adopted the term ‘runway’ as portions of their marks.” Appeal Brief, 7 TTABVUE 18. In support of its position, Applicant references three live registrations for marks containing the word “RUNWAY” (or RUNWAYS). Three registrations are insufficient to establish that the term “RUNWAY” is weak for either health club services or blogs relating to fitness. Accordingly, we find the sixth du Pont factor to be neutral. E. Similarity or dissimilarity of the marks. We finish with an analysis of the first du Pont factor the similarity or dissimilarity of the marks. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. While “the similarity or dissimilarity of the marks is determined based on the marks in their entireties … there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Serial No. 86297450 - 12 - The cited mark, THEFITNESSRUNWAY consists of the phrase “THEFITNESS” combined with the word “RUNWAY.” The term “The” at the beginning of the cited mark does not have any trademark significance.”). In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). As defined above, fitness means “good health, especially good physical condition resulting from exercise and proper nutrition.”5 As such, fitness describes the subject matter of Registrant’s services.6 “Runway” is defined as “a long road used by planes when they land and take off, usually at an airport; a long narrow stage at a fashion show or in a theater.”7 Thus, RUNWAY is arbitrary as applied to either health club services or blogs relating to fitness. Accordingly, RUNWAY is the dominant portion of the mark THEFITNESSRUNWAY. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (In considering the similarity of the marks STONE LION CAPITAL and LION CAPTAL, the Board “reasoned that ‘LION’ was ‘dominant’ in both parties’ marks … [and the Board correctly accorded] little weight to the adjective ‘STONE’ on the ground that it did not ‘distinguish the marks in the context of the parties’ services.’”). Applicant argues that “inclusion of the word FITNESS at the beginning of the cited registration immediately informs the consumer that Registrant provides some type of fitness and fashion related services … The descriptiveness of the cited 5 See fn. 4. 6 Fitness also describes the purpose of Applicant’s services. 7 www.macmillandictionary, Exhibit to Request for Reconsideration dated September 8, 2015, TSDR p. 16. Serial No. 86297450 - 13 - registration neatly telegraphs its commercial impression of the intersection of fitness – THEFITNESS-and fashion-RUNWAY.” Appeal Brief, 7 TTABVUE 14. The registrant’s ownership of a certificate of registration is prima facie evidence of the validity of the registration8 and Applicant’s assertion that the cited registration is descriptive constitutes an impermissible collateral attack on the cited registration. Such evidence and argument are not relevant in the context of an ex parte appeal. Dixie Rests., 41 USPQ2d at 1534-35. Further, since the word RUNWAY is arbitrary when used in connection with both health club services and blogs regarding exercise and fitness, the word RUNWAY may convey a connection with a fashion runway in either mark. Applicant also argues that “[w]hen compared side-by-side … each of the marks at issue here clearly convey[s] a distinct impression.” Appeal Brief, 7 TTABVUE 12. This argument is not persuasive. The proper test is not a side-by-side comparison of the marks, but instead “whether the marks are sufficiently similar in terms of their commercial impression” such that persons who encounter the marks would be likely to assume a connection between the parties. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ 2d 1901, 1905 (TTAB 2007). Given the arbitrary nature of the term RUNWAY as used in connection with health club services and blogs regarding fitness and the suggestive nature of the term THE FITNESS in registrant’s mark, we find that persons encountering the marks would be likely to assume a connection between the parties. 8 Section 7 of the Trademark Act, 15 U.S.C. §1057(b). Serial No. 86297450 - 14 - Accordingly, we find that the marks RUNWAY and THEFITNESSRUNWAY convey similar commercial impressions and that taken in their entireties the marks are more similar than dissimilar. Thus, we find that the first du Pont factor favors a finding of likelihood of confusion. F. Conclusion. Having considered all the evidence and argument on the relevant du Pont factors, whether discussed herein or not, we find that Applicant’s mark, RUNWAY for “health club services, namely, providing instruction and equipment in the field of physical exercise is likely to cause confusion with the mark in the cited registration, THEFITNESSRUNWAY for services including providing a website featuring information on exercise and fitness; providing an interactive website featuring information and links relating to fitness. Decision: The refusal to register Applicant’s mark RUNWAY is affirmed.