Evolve Fitness, Inc.

Trademark Trial and Appeal Board

Jun 18, 2009

No. 77457695 (T.T.A.B. Jun. 18, 2009)

Mailed:
June 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Evolve Fitness, Inc.
________

Serial No. 77457695
_______

Daniel N. Smith of New England Patent & Trademark for
Evolve Fitness, Inc.

Ronald DelGizzi, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).1
_______

Before Walters, Walsh and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Evolve Fitness, Inc. (applicant) seeks registration on
the Principal Register of the mark depicted below for
“Providing fitness and exercise facilities; Health club
services, namely, providing instruction and equipment in
the field of physical exercise; Providing assistance,

1 The identified examining attorney assumed responsibility for
this application subsequent to the filing of the appeal.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77457695
2
personal training and physical fitness consultation to
individuals to help them make physical fitness, strength,
conditioning, and exercise improvement in their daily
living; Providing information in the field of exercise
training; Physical fitness conditioning classes; Physical
fitness instruction” in International Class 41.2

The application includes the following “description of
mark” statement: “mark consists of the letter ‘e’ in
orange, dark blue and light blue over the words
EVOLVEFITNESS, with the word ‘evolve’ in dark blue colored
lettering and the word ‘fitness’ in orange colored
lettering.” The application also states that the colors
dark blue, light blue and gold are claimed as features of
the mark. The application also contains a disclaimer of
the word “Fitness” apart from the mark as shown

2 Serial No. 77208873, filed on June 18, 2007. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). February 27, 2007 is alleged in the application
to be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.

Serial No. 77457695
3
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the services recited in the
application, so resembles the mark depicted below,
previously registered on the Principal Register for
services recited in the registration as “Coed fitness and
nutrition center services, namely, providing fitness and
exercise facilities and providing fitness instruction and
consultation” in International Class 41 and “Coed fitness
center services, namely, providing information about
nutrition” in International Class 443 as to be likely to
cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).

The cited registration includes the following
“description of mark” statement: “The mark consists of a
gold abstract figure in a black box, with the word "EVOLVE"
and "FITNESS & NUTRITION CENTER" in black,” and the colors
gold and black are claimed as a feature of the mark. The

3 Registration No. 3014626, issued on July 2, 2004.
Serial No. 77457695
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cited registration also includes a disclaimer of “Fitness &
Nutrition Center” apart from the mark as shown.
Applicant has appealed the final refusal. The appeal
is fully briefed. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin our likelihood of confusion analysis with the
second du Pont factor, which requires us to determine the
similarity or dissimilarity of the services. We initially
note that the services are, in part, identical inasmuch as
both applicant and registrant are “providing fitness and
exercise facilities” as well as “fitness consultation”
services. Applicant’s other recited services in
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International Class 41, e.g., “providing assistance...
training to individuals to help them make physical fitness,
strength, conditioning, and exercise improvement in their
daily living,” are also highly related, if not also
somewhat overlapping, to registrant’s “fitness instruction
and consultation” services. In view thereof, we conclude
that applicant’s and registrant’s services include
overlapping and closely related services. “When marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).
Furthermore, because the respective services, as
identified in the application and in the cited
registration, are overlapping, we must assume that the
purchasers and channels of trade for such services would
also overlap. See Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
Serial No. 77457695
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USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). In this case, the providing fitness and
exercise facilities and fitness consultation services would
be encountered by the same consumers.
Accordingly, the du Pont factors involving the
similarity of services, trade channels and classes of
purchasers all weigh in favor of finding a likelihood of
confusion.
Under the fourth du Pont factor, we consider the
conditions of purchase. Applicant argues that because the
“markets have become saturated with new health and fitness
facilities... prospective purchasers have developed a
careful, sophisticated level of differentiating between
these facilities.” Brief, p. 6. According to applicant,
purchasing such services usually involves membership fees
and long-term contracts and purchasers will therefore
“carefully choose and differentiate between these
facilities before choosing a service that will not be
replace for a significant period of time.” Id. Even if we
were to take notice that fitness and exercise facility
services are not casual purchases and ignore applicant’s
failure to submit evidence supporting applicant’s
Serial No. 77457695
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assertions, we cannot agree that these purchasers are
necessarily sophisticated. The identified services are not
limited to those that are purchased by sophisticated
purchasers; rather, purchasers of fitness and exercise
facility services would include the general public who
would be ordinary purchasers. To the extent that services
may involve a term contract, one may be expected to
exercise a higher degree of attention, but even careful
purchasers are likely to be confused by similar marks. In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) [Even if “the relevant class of buyers
may exercise care [that] does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods.”] Thus, assuming
that the purchasers exercise some care before purchasing
these services, this does not mean there can be no
likelihood of confusion.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Serial No. 77457695
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but rather whether the marks are sufficiently similar in
terms of their overall commercial impression 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). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
the marks are overall very similar. First, we find that
the dominant feature in the commercial impressions of both
applicant’s mark and the cited, registered mark is the term
EVOLVE. In registrant’s mark, “Evolve” appears first in
larger lettering above the other literal portion of the
mark. In applicant’s mark, “Evolve” appears first as part
of a compound term, but it is prominently displayed in both
marks. Moreover, even though EVOLVE and FITNESS are joined
Serial No. 77457695
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in applicant’s mark as a compound term, as the examining
attorney correctly noted, the two words are easily viewed
and perceived separately because they appear in two
different colors, respectively, blue and gold. The
additional literal elements in applicant’s mark, i.e.,
“FITNESS”, and registrant’s mark, i.e., “Fitness &
Nutrition Center”, when viewed in connection with the
recited services, are generic and contribute little or
nothing to the source-indicating significance of the marks.
Ultimately, it is the term EVOLVE that will be used by
consumers in referring to and recalling the marks.
We do not disregard the design elements in each of the
marks, but we find that they contribute little for source-
indicating purposes. Applicant’s stylized letter “e” will
most likely be perceived as accentuating the first letter
of the dominant element of the mark, i.e., “Evolve”, which
also happens to be the dominant element of registrant’s
mark. Likewise, registrant’s fanciful human character
appears to be in motion and may suggest a fitness activity.
Nevertheless, we find that EVOLVE dominates each of the
marks, and we therefore accord more weight to this dominant
feature of the marks in our comparison of the marks under
the first du Pont factor. As we have often held, where a
mark consists of words as well as a design, the words are
Serial No. 77457695
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usually considered dominant since they will be used to call
for, or refer to the goods or services. CBS Inc. v.
Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re
Dakin's Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001);
In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554
(TTAB 1987).
Comparing the marks in their entireties, we find that
they are much more similar than not. Even allowing for the
obvious differences in appearance based on the designs and
color features in the marks, we find that the term EVOLVE
dominates both marks in sound, connotation and commercial
impression. Accordingly, the first du Pont factor also
weighs in favor of a finding of likelihood of confusion.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that when
persons familiar with the registered mark EVOLVE FITNESS &
NUTRITION CENTER (stylized with a design) for providing
fitness and exercise facilities and other related services,
encounter the substantially similar mark E EVOLVEFITNESS
(stylized with a design) for identical services as well as
other closely related services, that they are likely to
believe that the sources of said sources are in some way
related or associated. As a result, there is likelihood of
confusion.
Serial No. 77457695
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Decision: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 3014626 is affirmed.