Astilean

Trademark Trial and Appeal Board

Dec 11, 2008

No. 76674766 (T.T.A.B. Dec. 11, 2008)

Mailed:
December 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Astilean
________

Serial No. 76674766
_______

Myron Amer of Myron Amer, P.C. for Aurel A. Astilean.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Kuhlke, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Aurel A. Astilean (“applicant”) filed a use-based
application for the term FITNESS SHRINK (in standard
character format) for “health, fitness and exercise
instruction; ongoing media programs in the nature of
health, fitness and exercise instruction,” in Class 41.
(Emphasis added). Applicant submitted the webpage shown
below as his specimen of use.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76674766
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1

The Examining Attorney refused registration on two
grounds:
1. Applicant’s failure to comply with the final
requirement to specify the field in which
applicant renders his television programming
services; and,
2. The specimen does not show applicant’s mark used
to identify applicant’s health club services or
television programs.

1 Although it does not show up clearly in the copy of
applicant’s webpage reproduced in this decision, the terms “The
Speedfit Foundation,” “Fitness Shrink™ - ask Alex!,” and
“Licensing” are underlined in the manner of a link.
Serial No. 76674766
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A. Whether the description of services is acceptable?
As indicated above, applicant originally identified
his services as “health, fitness and exercise instruction;
ongoing media programs in the nature of health, fitness and
exercise instruction,” in Class 41. (Emphasis added).
Pursuant to a recommendation by the Examining Attorney,
applicant amended the identification of services to read as
follows:
Health club services, namely providing
instruction and equipment in the field
of physical exercise; entertainment in
the nature of on-going television
programs via television, satellite,
film, audio, video, internet, and
3-D virtual reality media.

Upon realizing that the amended identification of
services was not limited to the field of health, fitness
and exercise instruction, the Examining Attorney required
applicant to amend his description of services to insert
the field in which the services were rendered.
Accordingly, the Examining Attorney required applicant to
amend the identification of services to read as follows:
Health club services, namely providing
instruction and equipment in the field
of physical exercise; entertainment in
the nature of on-going television
programs via television, satellite,
film, audio, video, internet, and
3-D virtual reality media in the field
of health, fitness and exercise
instruction.
Serial No. 76674766
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(Emphasis added).

Despite having originally limited his ongoing media
programs to the field of health, fitness and exercise
instruction, applicant refused to so limit the amended
identification of services for the reasons set forth below:
It is applicant’s contrary contention
however, that the subject matter of the
programs is “health, fitness and
exercise” which follows “in the nature
of.”

It is respectfully requested that the
Board take official notice of the
RANDOMHOUSE WEBSTER’S College
Dictionary in which the word “nature”
is defined as “the particular
combination of qualities belonging to a
. . . thing.” Thus, “health, fitness
and exercise” is the subject matter of
the “programs” and therefore the
Trademark Examining Attorney’s
contention that the recitation of the
services lacks specificity of the
television programs is without merit.2

Trademark Rule 2.71(a) provides that “[t]he applicant
may amend the application to clarify or limit, but not to
broaden, the description of goods and/or services.” See
also In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In
re M.V. Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).
Here applicant’s amendment to
entertainment in the nature of on-going
television programs via television,

2 Applicant’s June 9, 2008 Brief, p. 2.
Serial No. 76674766
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satellite, film, audio, video,
internet, and 3-D virtual reality media

from

ongoing media programs in the nature of
health, fitness and exercise
instruction

clearly exceeds the scope of the original identification of
services because the amended identification of services is
not limited to the field of health, fitness and exercise
instruction.
Accordingly, the refusal to register applicant’s mark
because the proposed amendment to the identification of
services impermissibly broadens the scope of the
identification of services is affirmed.
B. Whether applicant’s specimen is acceptable?
An applicant for registration must submit a specimen
showing the mark as used in commerce. Section 1(a) of the
Trademark Act of 1946, 15 U.S.C. 1052(a); Trademark Rule
2.34(a)(1)(iv), 37 CFR §2.34(a)(1)(iv). A service mark
specimen “must show the mark as actually used in the sale
or advertising of the services.” Trademark Rule
2.56(b)(2), 37 CFR §2.56(b)(2). A service mark specimen
must show an association between the mark and the services
for which registration is sought. In re Adair, 45 USPQ2d
1211, 1214 (TTAB 1997) (the mark must be used in such a
Serial No. 76674766
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manner that it would be readily perceived as identifying
the source of the services); TMEP §1301.04 (5th ed. 2007).
The Examining Attorney argues that the webpage does
not display the term FITNESS SHRINK in connection with any
identifiable services, let alone the health club services
and television programming services for which registration
is sought. On the other hand, applicant contends that
there is a direct association between the mark and health
club services because the webpage displays the mark in
close proximity to an individual “engaged in an exercise
routine on a treadmill, attired in shorts and a top, and
apparently walking or running on the treadmill, all of
which is known from common experience denotes a
participation in ‘HEALTH CLUB SERVICES.’” (Emphasis in the
original).3
The issue before us is whether the term FITNESS
SHRINK, as displayed in the webpage, is used as a service
mark to identify health club services and/or television
programming services.4 In determining whether FITNESS
SHRINK is used as a service mark to identify health club

3 Applicant’s February 7, 2008 Brief, p. 2.
4 While we have some doubts whether applicant even uses FITNESS
SHRINK as a service mark, that issue is not before us.
Serial No. 76674766
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services and/or television programming services, we must
review the specimen (webpage) to determine whether
consumers will associate FITNESS SHRINK with health club
services and/or television programming services. In re
Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989)
(“Aaa,” as used on the specimen, found to identify the
applicant’s ratings instead of its rating services); In re
McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE
did not function as mark for restaurant services, where the
specimen showed use of mark only to identify one character
in a procession of characters, and the proposed mark was no
more prominent than anything else on specimen); Intermed
Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977)
(business progress reports directed to potential investors
do not show service mark use for medical services); In re
Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970)
(technical bulletins and data sheets on which mark was used
merely to advertise chemicals do not show use as a service
mark for consulting services). Unfortunately, there is no
evidence bearing on the reaction of the purchasing public
to applicant’s use of FITNESS SHRINK. Accordingly, we must
rely on our own analysis of the webpage to determine
whether consumers would perceive FITNESS SHRINK as a
service mark identifying applicant’s health club services
Serial No. 76674766
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and/or television programming services. In re The Signal
Companies, Inc., 228 USPQ 956, 957 (TTAB 1986); In re
Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984).
The primary purpose of the webpage is to promote the
SPEEDFIT fitness system. The information on the webpage
states that SPEEDFIT, not FITNESS SHRINK, “is the most
satisfying and exhilarating workout for mankind based on
speed.” It appears that SPEEDFIT is a workout system
comprising a treadmill and associated software. Thus, the
consumer’s attention is focused on the SPEEDFIT system.
The focus of the webpage on the SPEEDFIT system is
important because the webpage is providing information
about a fitness system, not health club services or
television programming services. In fact, there are no
references to health club services or television
programming services on the webpage.
The term FITNESS SHRINK is displayed on the right-hand
side of the webpage, above the woman on a treadmill, as one
of three informational terms shown below.
THE SPEEDFIT FOUNDATION
FITNESS SHRINK™ - ask ALEX!
LICENSING
Because the informational terms are underlined, they are
probably webpage hyperlinks connecting to another section
Serial No. 76674766
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of applicant’s website or another document that may or may
not be part of applicant’s website. Even assuming
consumers perceive FITNESS SHRINK to be a service mark, it
is not in any way associated with health club services or
television programming services. As indicated above, there
is no hint of a reference to health club services or
television programming services displayed in the webpage.
Based on the way in which FITNESS SHRINK is used, consumers
might associate it with some sort of fitness consulting
services.5
In view of the foregoing, we are of the opinion that
the term FITNESS SHRINK, as used by applicant, does not
identify and distinguish health club services or television
programming services.
Decision: The refusal to register is affirmed.

5 Because the word “shrink” is slang for a psychiatrist or a
psychoanalyst, consumers will see FITNESS SHRINK as identifying a
fitness expert who may provide fitness consulting services. The
Random House Dictionary of the English Language (Unabridged), p.
1773 (2nd ed. 1987). The Board may take judicial notice of
dictionary evidence. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).