Intrafitt, Inc.

Trademark Trial and Appeal Board

Jul 22, 2011

No. 77644949 (T.T.A.B. Jul. 22, 2011)

Mailed: July 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Intrafitt, Inc.
________

Serial No. 77644949
_______

Intrafitt, Inc., pro se.

Kim Teresa Moninghoff, Trademark Examining Attorney,
Law Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Holtzman and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Intrafitt, Inc. to
register in standard characters on the Principal Register
the mark INTRAFITT INDIVIDUALIZED NUTRITION AND EXERCISE
PROGRAMS for the following services: “weight reduction
diet planning and supervision and physical fitness
consultation” in International Class 44.1

1 Application Serial No. 77644949 was filed on January 7, 2009,
based upon applicant’s assertion of November 12, 1992 as a date
of first use of the mark in commerce in connection with both
classes of services (see amended identification, infra). In
response to a requirement by the trademark examining attorney,
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77644949
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark INTERFIT, previously registered on
the Principal Register in typed or standard characters for
“health spa services for corporate employees” in
International Class 422, as to be likely to cause confusion.
In addition the examining attorney, inter alia, required
applicant to amend its application to reclassify “physical
fitness consultation” in International Class 41. Applicant
complied with this requirement; however, with its request
for reconsideration of the Section 2(d) refusal, applicant
submitted the following amendment to its recitation of
services:
individualized exercise programs include [sic] a
wide variety of physical conditioning services
including[:] physical fitness consultation;
personal fitness training services featuring
aerobic and anaerobic activities combined with
resistance and flexibility training; personal
trainer services; personal training services,
namely, strength and conditioning training;
physical fitness conditioning classes; physical
fitness instruction; physical fitness studio
services, namely, providing group exercise
instruction, equipment, and facilities; physical
fitness training services; physical fitness
training of individuals and groups

applicant disclaimed the exclusive right to use “INDIVIDUALIZED
NUTRITION AND EXERCISE PROGRAMS” apart from the mark as shown.
2 Registration No. 1623043 issued on November 13, 1990. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
Ser. No. 77644949
3
in International Class 41; and

individualized nutrition programs include [sic] a
wide variety of nutrition and dietary services
including[:] weight reduction diet planning and
supervision; dietary and nutritional guidance;
nutrition counseling; nutritional therapy
services; weight management services and/or
weight maintenance programs; clinical and sports
nutrition programs and counseling

in International Class 44.

The examining attorney rejected applicant’s proposed
amendment as falling outside the scope of the original
recitation of services and issued a requirement that
applicant either submit an acceptable amendment or revert
to its original recitation of services. The examining
attorney also continued the refusal to register under
Section 2(d). When both the refusal and requirement were
made final, applicant appealed. Applicant and the
examining attorney filed briefs on the issue under appeal.
Evidentiary Matters
Before turning to the substantive grounds for refusal,
we note that applicant has submitted for the first time as
an exhibit to its brief the filing receipt from its
September 25, 2010 communication to the examining attorney,
as well as other materials previously made of record.
Materials already of record should not be resubmitted with
a brief on appeal. See TBMP §§ 1203.02(e) and 1207.01 (3d
Ser. No. 77644949
4
ed. 2010). With regard to the filing receipt that was not
previously made of record, Trademark Rule 2.142(d), 37
C.F.R. §2.142(d), provides that the record in an ex parte
proceeding should be complete prior to appeal, and exhibits
submitted for the first time with an appeal brief are
untimely and generally will not be considered. See TBMP §
1207.01.
Accordingly, applicant’s exhibit consisting of its
September 25, 2010 filing receipt will be given no
consideration. We note nonetheless that had we considered
this exhibit in our determination, the result would be the
same inasmuch as the filing receipt no probative value on
the issues before us.
Proposed Amendment to Recitation of Services
We turn first to our determination with regard to
applicant’s proposed amendment to its recitation of
services. Section 7(c) of the Trademark Act provides, in
part, as follows:
Contingent on the registration of a mark on the
principal register provided by this Act, the
filing of the application to register such mark
shall constitute constructive use of the mark,
conferring a right of priority, nationwide in
effect, on or in connection with the goods or
services specified in the registration….

15 U.S.C. § 1057. Thus, the identification of goods or
services in an application defines the scope of those
Ser. No. 77644949
5
rights established by the filing of an application for
registration on the Principal Register. See TMEP §1402.06
(7th ed. 2010). An applicant may not expand those rights
through amendment of the identification of goods or
services. See TMEP §1402.06(b) (7th ed. 2010).
In accordance therewith, amendments to the
identification of goods or services are governed by
Trademark Rule 2.71(a), which provides as follows: “The
applicant may amend the application to clarify or limit,
but not to broaden, the identification of goods and/or
services.” 37 C.F.R. §2.71(a). Accordingly, an applicant
may not amend an identification of goods or services to add
or substitute a term that is not logically included within
the scope of the terms originally identified or that is
otherwise qualitatively different from the goods and
services as originally identified. See TMEP §1402.06(a)
(7th ed. 2010). In addition, TMEP §1402.07(d) (7th ed.
2010) provides, in part, as follows:
If the applicant proposes an amendment to the
identification of goods and services, and the
examining attorney determines that the amendment
is unacceptable, the examining attorney should
refer to the identification of goods before the
proposed amendment to determine whether any later
amendment is within the scope of the
identification. In such a case, the applicant is
not bound by the scope of the language in the
proposed amendment but, rather, by the language
Ser. No. 77644949
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of the identification before the proposed
amendment.

Thus, the scope of the goods or services as originally
identified or as amended by an express amendment,
establishes the outer limit for any later amendments. See
Id.
In this case, applicant’s services originally were
identified in its application as “physical fitness
consultation” in Class 41 and “weight reduction diet
planning and supervision” in Class 44. In accordance with
the above authorities, applicant is limited in any proposed
amendment to its recitation of services solely to narrowing
or clarifying those services as originally recited.
Applicant’s proffered amendment of its recitation of
services retains the original services recited in both
Classes; however, the proposed amendment also recites
numerous additional services that fall outside the scope of
the original. As discussed above, it is settled that once
the extent of an identification has been established, it
cannot be expanded later. See In re Swen Sonic Corp., 21
USPQ2d 1794 (TTAB 1991); and In re M.V Et Associes, 21
USPQ2d 1628 (Comm'r Pats. 1991). Applicant therefore is
limited in any amendment solely to narrowing or clarifying
the nature and type of the applied-for “physical fitness
Ser. No. 77644949
7
consultation” and “weight reduction diet planning and
supervision” with greater particularity. See TMEP
§1402.03(a), supra. Inasmuch as the proposed recitation of
services neither narrows nor clarifies the original, it was
unacceptable and properly rejected.
In view thereof, the “physical fitness consultation”
and “weight reduction diet planning and supervision”
originally recited in the application are the operative
services herein.
Likelihood of Confusion
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 re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
Ser. No. 77644949
8
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s INTRAFITT INDIVIDUALIZED NUTRITION AND EXERCISE
PROGRAMS mark and registrant’s INTERFIT mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the services offered under the respective marks
is likely to result.
In this case, applicant’s mark, INTRAFITT
INDIVIDUALIZED NUTRITION AND EXERCISE PROGRAMS, consists of
the distinctive term INTRAFITT and the highly descriptive,
disclaimed wording INDIVIDUALIZED NUTRITION AND EXERCISE
PROGRAMS. For this reason we find that INTRAFITT is the
dominant portion of applicant’s mark. It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
Ser. No. 77644949
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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. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). In view of the
descriptive, if not generic, nature of INDIVIDUALIZED
NUTRITION AND EXERCISE PROGRAMS, this wording has little,
if any, source-indicating significance, and is entitled to
less weight in the likelihood of confusion analysis.
Moreover, the significance of INTRAFITT in applicant’s
mark INTRAFITT INDIVIDUALIZED NUTRITION AND EXERCISE
PROGRAMS is reinforced by its location as the first word in
the mark. Presto Products Inc. v. Nice-Pak Products, Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed in the
mind of a purchaser and remembered”). See also Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers must first notice the identical lead
word).
In comparing the marks we find that registrant’s
INTERFIT mark is highly similar to INTRAFITT, which as
discussed above is the distinctive and dominant portion of
applicant’s mark. INTERFIT and INTRAFITT are highly
Ser. No. 77644949
10
similar in appearance and sound and, to the extent the
terms convey any meaning, both may suggest fitness within
or among members of a group or organization. We further
observe that the similarities between the marks are
enhanced because consumers are often known to use shortened
forms of names, and it is foreseeable that applicant’s
services will be referred to as INTRAFITT. Cf. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978) [Rich, J., concurring: “the users of language have a
universal habit of shortening full names – from haste or
laziness or just economy of words”].
Finally, we note that both applicant and registrant
display their marks in typed or standard character form.
Thus, we are not concerned with the possibility that either
may present its mark in stylized form or as part of a logo
inasmuch as both may display their marks in any stylized
font or format, including an identical manner. See
Trademark Rule 2.52(a). See also, e.g., In re Melville
Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); and In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
As a result, we find that, taken as a whole,
applicant’s INTRAFITT INDIVIDUALIZED NUTRITION AND EXERCISE
PROGRAMS mark and registrant’s INTERFIT mark are more
similar than dissimilar in appearance, sound and
Ser. No. 77644949
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connotation and that, taken as a whole, the marks convey
highly similar overall commercial impressions.
The Services
Turning now to our consideration of the identified
services, we note that it is not necessary that the
services at issue be the same, or even similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s services are identified as
“physical fitness consultation” and “weight reduction diet
planning and supervision” and registrant’s services are
“health spa services for corporate employees.” We hereby
grant the examining attorney’s request to take judicial
notice of the following definition of “health spa:” “a
commercial establishment without accommodations that offers
Ser. No. 77644949
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facilities for health and fitness” or “a commercial
establishment similar to a hotel, usually rural, that
offers ways of improving health and fitness such as a
controlled diet, exercise, and massage.”3 Thus,
registrant’s spa services offer to corporate employees
fitness and diet services of the kind offered by applicant.
Put another way, applicant’s recited services are included
among those registrant provides to corporate employees. As
such, there appears to be significant overlap between the
services as identified.
In addition, the examining attorney has made of record
a number of use-based, third-party registrations which show
that various entities have adopted a single mark for
services of the type that are identified in both
applicant’s application and the cited registration. See,
for example:
Registration No. 2684176 for, inter alia, health
spa and medical clinic services, namely, physical
fitness consultation; weight management and diet
planning and supervision;

Registration No. 3422681 for, inter alia, health
spa services for health and wellness of the body

3 Encarta.msn.com. The Board may take judicial notice
of online dictionaries available in printed format or online
dictionaries that are readily available and capable of being
verified, e.g., dictionaries that are available in specifically
denoted editions via the Internet and CD-ROM. See 37 C.F.R.
§2.122(a); In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828 (Fed.
Cir. 2007); and In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB
2006).
Ser. No. 77644949
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and spirit offered at a health facility; weight
reduction diet planning and supervision;
providing assistance, namely, one on one group
personal training and physical fitness
consultation…;

Registration No. 3504495 for, inter alia,
providing assistance, personal training and
physical fitness consultation to corporate
clients and individuals…; weight reduction diet
planning and supervision; health spa services for
health and wellness of the mind, body and spirit
offered in or from a remote, mobile or temporary
on-site location; and

Registration No. 3035624 for, inter alia, health
spa services…; weight reduction diet planning and
supervision; physical fitness consultation.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
In addition, the examining attorney submitted evidence
from informational and commercial Internet web sites
suggesting that the same entities provide both applicant’s
and registrant’s types of services. The following samples
are illustrative:
Regency Health Spa offers a variety of diet and
fitness programs
(pr.com/press-release/79459);

FitPath health spa offers diet and weight loss
supervision and fitness consultation
Ser. No. 77644949
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(weight-loss-spa.com); and

Fit Tours offers spa vacations featuring diet
supervision and fitness consultation
(fitnesstouring.com).
Based upon the foregoing, we find that applicant’s
services are related to those provided by registrant, and
further are of a type that may be marketed under the same
marks.
Channels of Trade
It is settled that in making our determination
regarding the relatedness of the parties’ services, we must
look to the services as identified in the involved
application and cited registration. See 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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
Ser. No. 77644949
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respective descriptions of goods.”) Thus, while registrant
offers its services solely to corporate employees,
applicant’s recitation of services contains no such
limitations. Accordingly, applicant’s services are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers, including
the corporate employees who utilize registrant’s services.
See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, the
same consumers, namely, corporate employees, may use both
registrant’s spa services and applicant’s fitness and
dietary services.
Decision of Prior Examining Attorney and Lack of
Actual Confusion

Applicant argues that its applied-for mark was
previously registered in stylized form for the same
services and inadvertently cancelled. We appreciate
applicant’s frustration over the inconsistent examination
given to its two essentially identical applications.
Although consistency in examination and the register are
commendable goals, we are not bound by the prior actions of
examining attorneys. Thus, we are not bound by the
previous examining attorney who apparently did not view
applicant’s mark as confusingly similar to the mark in the
registration cited herein. See In re Davey Products Pty
Ser. No. 77644949
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Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009) (“applicant is not
automatically entitled to a return to the status quo...the
Board is not bound by the decision of the prior trademark
examining attorney”); In re Ginc UK Ltd., 90 USPQ2d 1472,
1480 (TTAB 2007); and In re Outdoor Recreation Group, 81
USPQ2d 1392, 1399 (TTAB 2006). Further, we do not see the
Office’s earlier view of applicant’s mark as raising a
doubt about likelihood of confusion. See also In re Nett
Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“Even if prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”). Further, any suggestion that
there has been no actual confusion between the marks, based
on the coexistence of applicant’s previously issued
registration and the cited registration, is entitled to
little probative value in the context of this ex parte
appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at
1205.
Decision: The refusal of registration on both grounds
is affirmed.