Cybex International, Inc.

Trademark Trial and Appeal Board

May 5, 2008

No. 77051068 (T.T.A.B. May. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cybex International, Inc.
________

Serial No. 77051068
_______

Mark J. Sever, Jr. and John F. Letchford of Archer &
Greiner for Cybex International, Inc.

Dezmona Mizelle-Howard, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Grendel, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Cybex International, Inc.1 has filed an application to
register on the Principal Register the mark LEGACY (in
standard character format) for goods ultimately identified
as “treadmills” in Class 28.2

1 Cybex International, Inc. (Cybex) referred to itself
throughout the brief as “Appellant.” For consistency of
discussion, we will refer to Cybex as “applicant” unless we are
directly quoting material from the brief.

2 Serial No. 77051068 filed on November 27, 2006, and based on
an allegation of a bona fide intention to use the mark in
commerce on the identified goods.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 77051068
2
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark is likely to be confused
with the registered mark LEGACY REFORMER (in standard
character format) for “physical therapy equipment, namely,
floor supported platforms having [a] movable portion
intended for exercise and treatment [of] all muscles of the
body” in Class 10 and “manually operated exercise
equipment, namely, floor supported platforms having [a]
movable portion intended for exercise and treatment [of]
all muscles of the body” in Class 28.3
After the refusal was made final, applicant appealed.
Both applicant and the examining attorney filed briefs. We
affirm the refusal to register.
As a preliminary matter, we note that both applicant
and the examining attorney have attached to their
respective appeal briefs evidentiary materials that were
not made of record during the prosecution of the
application.4 These submissions are untimely. 37 C.F.R. §
2.142(d) provides, in part, that “[t]he record in the
application should be complete prior to the filing of an

3 Registration No. 2928009, registered February 22, 2005.

4 In addition, applicant’s submission included materials that
had been previously made of record during prosecution of the
application, and need not have been resubmitted.
Serial No. 77051068
3
appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal
is filed.” Accordingly, these materials have not been
considered in reaching our decision herein.5
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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 (CCPA 1973). See also, In re Majestic
Distilling Company, 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).
We consider first the similarity of the marks. In
determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test under

5 We hasten to add that even if we had considered them, the
decision would be the same.
Serial No. 77051068
4
this 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 impressions that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant maintains that the marks are dissimilar when
viewed in their entireties. Applicant particularly argues
that:
Appellant’s application is for the single-
word mark “LEGACY.” As such, it has no
“dominant” portion. In contrast, in the
two-word registration “LEGACY REFORMER”
cited against Appellant’s mark, there
clearly is a dominant portion and that
portion is the term “REFORMER.” This is so
because … the term “reformer” has
essentially become synonymous with a multi-
station exercise machine for performing
Pilates exercises. That is, when a consumer
of such goods is confronted with the term
“reformer,” he or she would naturally think
of Pilates multi-station exercise machines.
As a practical matter, therefore, the term
“LEGACY’ [sic] (or any other modifier term,
for that matter) would assume a secondary
significance to the term “reformer.”

Serial No. 77051068
5
(Brief, p. 8). As support for its position that the term
“reformer” is synonymous with a multi-station exercise
machine, applicant has made of record copies of web pages
from the website www.pilates.com (allegedly owned by
registrant) showing that, in addition to the LEGACY
REFORMER, other “reformers,” for example, the Pilates
Studio Reformer, the Allegro Pilates Reformer, the Clinical
Reformer, the IQ Reformer, the Allegro Sport Reformer and
the Fletcher Reformer are available. One such page reads,
in part: “Select the Pilates Reformers that are right for
you.” Applicant also made of record results from a search
of the Google® search engine for the phrase “pilates
reformer.” The results show for example, at the web site
www.peakpilates.com/store/, one can obtain the Classic
Reformer with Leather. It is described as follows:
A great reformer for the purist. Super-
strong with a timeless look and flawless
function. Critical dimensions combine with
exacting design specifications result in
superior performance and a more effective
workout.

The examining attorney argues, by contrast, that the
marks are, on the whole, similar in appearance, sound,
meaning and commercial impression. She particularly argues
that applicant’s mark and the registered mark are
identical, in part, except for the absence of REFORMER from
Serial No. 77051068
6
applicant’s mark; and that “if ‘reformer’ is approaching
the status of a generic term, as applicant states, then
REFORMER would be even less significant when seen in
connection with LEGACY.” (Brief, p. 4).
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 rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985).
We find in this case, that the dominant and
distinguishing portion of the registered mark LEGACY
REFORMER is the term “LEGACY,” and not REFORMER as
applicant contends. It is dominant because it has no
apparent meaning for exercise equipment, such as
registrant’s exercise platforms, and is the first term in
registrant’s mark. See 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 upon the mind of a purchaser and remembered”).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
Serial No. 77051068
7
(“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label). Moreover, as the
record demonstrates, the term “reformer” appears to be
rather suggestive of registrant’s floor supported exercise
platforms and, as such, is entitled to less weight in our
determination of the source-indicating significance of the
mark.
Applicant’s applied-for mark LEGACY is identical to
the dominant portion of registrant’s mark. Thus, while not
present in applicant’s mark, the somewhat suggestive term
REFORMER does not significantly distinguish applicant’s and
registrant’s marks. See In re Dixie Restaurants, 105 F.3d
at 1407, 41 USPQ2d at 1533-34.
Accordingly, and while differences admittedly exist
between the respective marks when viewed on the basis of a
side-by side comparison, we find that in their entireties,
the marks are not only substantially similar in appearance
due to the shared term LEGACY but, in light thereof, they
are substantially similar in connotation and convey a
substantially similar commercial impression. The factor of
the similarity of the marks thus favors a finding of
likelihood of confusion.
Serial No. 77051068
8
We now turn to a consideration of the goods identified
in the application and the cited registration. Applicant,
citing Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 (2d
Cir. 1995); Fisons Horticulture, Inc. v. Vigoro Indus., 30
F.3d 466, 472 (3d Cir. 1994); and du Pont, 476 F.2d at
1362, contends that “[t]he requirement that goods or
services be in competition is especially well entrenched in
trademark law.” (Brief, p. 8). While this may be true in
certain situations, the cases cited by applicant in support
of this position can be distinguished. Arrow Faster and
Fisons Horticulture were infringement actions. In du Pont,
unlike this case, the applicant and registrant agreed to
restrict themselves to different markets, i.e., the general
purpose cleaning market (registrant) and the automobile
market (du Pont). Because each party could be sued for
breach of the agreement, the Court found the fact that the
goods of one party “could be used” in the field of the
other too conjectural given that they had agreed to avoid
such cross-use.
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
Serial No. 77051068
9
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that the goods or services are related in some manner or
that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which would give rise, because
of the marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein.
The examining attorney argues that the goods are
related. To support her position, the examining attorney
made of record with her final office action copies of
third-party registrations to show that various trademark
owners provide both treadmills and exercise platforms.6 The

6 The examining attorney also submitted a copy of an application
and an additional registration. The third-party application has
no probative value because applications are evidence only that an
application has been filed. See Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003). The registration
likewise is of no probative value because it does not cover both
treadmills and exercise platforms.
Serial No. 77051068
10
third-party registrations may serve to suggest that the
types of goods involved herein are related. 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
nonetheless have some probative value to the extent that
they may serve to suggest that such goods or services are
of a type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993).
These registrations include:
Registration No. 2640887 for, inter alia, “treadmills”
and power stands, namely, exercise platforms, abdominal
benches and dumbbell racks;

Registration No. 2803335 for “treadmills” and “exercise
platforms”;

Registration No. 3030425 for inter alia “exercise
treadmills” and “exercise platforms”; and

Registration No. 3124926 for, inter alia, “exercise
platforms” and “treadmills.”

Based on the evidence of record, we find the third-
party registrations are sufficient to demonstrate that
applicant’s treadmills and registrant’s floor supported
platforms having a movable portion intended for exercise
Serial No. 77051068
11
and treatment of all muscles of the body are related
fitness equipment.
Applicant argues that the goods are dissimilar because
“it is using its mark LEGACY solely in connection with
treadmills … [which] exercise only a user’s legs, not ‘all
muscles of the body’ as specified by the descriptions of
goods set forth in the ‘LEGACY REFORMER’ registrations….”
(emphasis in original) (Brief, p. 9). Further, applicant,
by its arguments, seems to suggest that registrant’s goods
are limited to Pilates use.
We find these arguments unavailing. Simply because
registrant’s exercise platforms are more versatile than
applicant’s treadmills, in that they exercise additional
parts of the body, does not alter the fact that both
applicant’s and registrant’s goods perform the same
function, i.e., they exercise the body. Moreover, it is
common knowledge that walking and running, exercises
routinely performed on a treadmill, have significant
cardiovascular benefits.
In addition, an applicant may not restrict the scope
of the goods covered in the cited registration by argument
or extrinsic evidence. In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986). Because the goods in the cited
registration are not limited as to intended use, we may not
Serial No. 77051068
12
presume that they are sold only for use with Pilates
exercises. Similarly, because the identifications of goods
in the application and the cited registration are not
restricted as to channels of trade or classes of
purchasers, we must presume that both applicant’s
treadmills and registrant’s exercise platforms will be
offered in the same channels of trade, such as general
merchandise stores, fitness equipment centers and via the
Internet, and will be offered to the same consumers, namely
ordinary purchasers, seeking exercise equipment. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In view thereof, the du Pont factors of the similarity
of the goods, channels of trade and classes of purchasers
strongly favor a finding of likelihood of confusion as to
the cited registration.
Finally, with respect to the conditions of sale,
applicant argues that:
The treadmills offered by Appellant under
the “LEGACY” mark and the multi-station
“REFORMER” exercise machines (including the
“LEGACY REFORMER” and other “reformers”)
sold by BBI [registrant] and others cost
many hundreds to several thousands of
dollars. … Consequently, purchases of these
products are surely not “impulse buys.” It
is respectfully submitted that consumers of
such products are sophisticated and would
not lightly undertake a purchase of such
magnitude. That is to say, consumers
contemplating the purchase of such costly
Serial No. 77051068
13
equipment would be fully aware of not only
the type of equipment that they are buying
but also the source of the equipment before
a purchase is made.

We find this argument unpersuasive. The record is devoid
of any information regarding the pricing of either
applicant’s treadmills or registrant’s floor supported
platforms for exercise and treatment of the muscles. In
the absence of such limitations to the identification of
goods, we must presume that applicant’s treadmills and
applicant’s exercise platforms are available in a range of
prices, including lesser expensive models that would be
attractive to ordinary consumers looking to purchase a
piece of exercise equipment for home use. However, even
assuming that purchasers of applicant’s treadmills and
registrant’s exercise platforms may need to exercise a
degree of care or thought in choosing such goods, even
careful purchasers of goods can be confused as to source
under circumstances where substantially similar marks are
used on substantially related goods. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986) citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
("Human memories even of discriminating purchasers … are
not infallible.").
Serial No. 77051068
14
In view of the foregoing, we conclude that prospective
purchasers familiar with the registered mark LEGACY
REFORMER for floor supported platforms having movable
portion intended for exercise and treatment [of] all
muscles of the body would be likely to believe, upon
encountering applicant’s substantially similar mark LEGACY
for treadmills, that such goods emanate from, or are
sponsored by or affiliated with the same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.