Massage Heights IP LLCv.TruCore Distributors

Trademark Trial and Appeal Board

Mar 25, 2021

91249495 (T.T.A.B. Mar. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Massage Heights IP LLC
v.
TruCore Distributors
_____

Opposition No. 91249495
_____

Charles A. Wallace and James H. Creedon of Creedon PLLC,
for Massage Heights IP LLC.
Margaret M. Anderson, Esq. for TruCore Distributors.
_____

Before Taylor, Mermelstein and Goodman,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
TruCore Distributors (“Applicant”) has filed an application seeking registration
on the Principal Register of the standard character mark LIVE LIFE. BETTER. for
the following goods:
“Blood pressure monitors; Massage apparatus; Massage
chairs with built-in massage apparatus; Massaging
apparatus for personal use; Nerve stimulator apparatus;
Electronic stimulation apparatus for skin, muscles, and
Opposition No. 91249495
- 2 -
nerves for physical therapy purposes; Foot massage
apparatus,” in Class 32.1
Massage Heights IP LLC (“Opposer”) has opposed registration of Applicant’s mark
on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), alleging ownership of its previously used and registered mark
LIVE. LIFE. BETTER. (in standard characters) for “massage therapy services” in
International Class 44.2 The pleaded registration issued on April 3, 2012, and a
Section 8 Affidavit was accepted. Opposer submitted with its Notice of Opposition an
electronic copy thereof from the Trademark Status Document Retrieval (“TSDR”)
database of the USPTO showing current status of and title to the registration.3
Opposer also alleges that Applicant is making improper use of the Trademark
Registration Symbol in contravention of 15 U.S.C. §1111. Not. of Opp. ¶¶ 11-13.4
Applicant, in its answer, denies the salient allegations in the notice of opposition.5

1 Application Serial No. 88312570 was filed on February 22, 2019, and is based upon
Applicant’s claim of first use anywhere and in commerce as of February 22, 2019, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 1 TTABVUE. TTABVUE refers to the Board’s electronic docket. Citations in this opinion
are to the TTABVUE docket entry number and, where applicable, the electronic page number
where the document appears.
3 1 TTABVUE 11-12. Opposer also attached to its notice of opposition an electronic copy of
the involved application and copies of various third-party registrations, all taken from the
TSDR database, and webpages from Applicant’s website. Except for a pleaded registration,
an exhibit to a pleading is not evidence on behalf of the party to whose pleading the exhibit
is attached unless it is identified and introduced in evidence as an exhibit during the period
for the taking of testimony. Trademark Rules 2.122(c) and 2.122(d)(1), 37 C.F.R. §§ 2.122(c)
and 2.122(d)(1). Accordingly, we only give consideration to the attached copy of Opposer’s
pleaded registration, unless the other materials were properly introduced during Opposer’s
testimony period.
4 Id. at 6.
5 5 TTABVUE.
Opposition No. 91249495
- 3 -
I. The Record
The record in this case consists of the pleadings and, by rule, the file of Applicant’s
application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). As noted above, also
of record is a copy of Opposer’s pleaded registrations obtained from the TSDR
database submitted with Opposer’s Notice of Opposition.
During its assigned testimony period, Opposer filed a Notice of Reliance on:
(1) Copies of portions of Applicant’s application6 and the file of the underlying
application that matured into Opposer’s pleaded registration; (2) third-party
registrations to show that the USPTO has registered trademarks with services
similar or identical to Opposer’s services and with goods similar to those in the
involved application; and (3) various discovery requests and responses.7
Applicant did not take any testimony or introduce other evidence during its
testimony period.
Both Opposer and Applicant submitted briefs.
II. Entitlement to Statutory Cause of Action8
Entitlement to a statutory cause of action must be established in every inter
partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d

6 As
stated, Applicant’s application is of record by operation of Trademark Rule 2.122(b)(1).
7 6 TTAVUE.
8 Our decisions have previously analyzed the requirements of Section 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite
Opposition No. 91249495
- 4 -
1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark v. Static Control
109 USPQ2d at 2067 n.4). A party in the position of plaintiff may oppose registration
of a mark when it demonstrates an interest falling within the zone of interests
protected by the statute, 15 U.S.C. § 1063, and a reasonable belief in damage that is
proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978
F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020). Opposer’s entitlement to
oppose registration of Applicant’s mark is established by its pleaded registration,
properly made of record with its Notice of Opposition, which the record shows to be
valid and subsisting, and owned by Opposer. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods.
& Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
III. Priority
Contrary to Applicant’s contention, in view of Opposer’s submission into evidence
a valid and subsisting registration for its pleaded mark, and in the absence of a
counterclaim to cancel that registration, priority is not in issue with respect to the
mark and the services listed therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d. 1400, 182 USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont

the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting
Sections 13 and 14 remain equally applicable.
Opposition No. 91249495
- 5 -
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019) (Board considers each DuPont factor for which there is evidence
and argument). When analyzing these factors, the overriding concern is not only to
prevent buyer confusion as to the source of the goods and services, but also to protect
the registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). These factors, and the other DuPont factors for which there is evidence
and argument, are discussed below.
A. The Marks
We first address the DuPont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay v. Veuve Clicquot, 73 USPQ2d at
1692 (citing DuPont, 177 USPQ at 567). “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
Opposition No. 91249495
- 6 -
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Applicant argues that its mark LIVE LIFE. BETTER is not similar to Opposer’s
mark LIVE. LIFE. BETTER. in appearance, sound and connotation because
“Applicant’s mark includes a sentence ‘Live life.’ followed by the word ‘Better,’” “[t]he
sentence ‘Live Life.’ Is [sic] not a part of Massage Heights mark,” and “the period
after “Live” [in the cited mark] cannot be ignored as it generates a totally different
connotation.”
We disagree and find Applicant’s mark virtually identical to the cited mark in
appearance, sound, connotation and commercial impression. The periods between the
words in both Applicant’s mark and the cited mark do not distinguish them and
merely serve to separate the words. Moreover, the periods would not be spoken when
referring to either Applicant’s goods or Registrant’s services, and are more likely to
go unnoticed than to evoke any connotative differences. See, e.g., In re Lyphomed Inc.,
1 USPQ2d 1430 (TTAB 1986) (addition of periods following the letters is not enough
to distinguish between “PTE” and “P.T.E.”); cf. In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988) (when the same words are used in marks, the presence or
absence of hyphens or other punctuation marks generally will be of little
significance); In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (presence of
punctuation does not significantly change commercial impression of mark).
The DuPont factor of the similarity of the marks thus strongly favors a finding of
Opposition No. 91249495
- 7 -
likelihood of confusion.
B. Relatedness of the Goods
We now consider the second DuPont factor which “considers ‘[t]he similarity or
dissimilarity and nature of the goods or services as described in an application or
registration.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed.
Cir. 2018) (quoting DuPont, 177 USPQ at 567); Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). It is
not necessary that the goods and services be identical or competitive, or even that
they move in the same channels of trade, to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods and services are related in some
manner, or that the circumstances surrounding their marketing are such that they
would or could be encountered by the same persons in situations that would give rise,
because of the similarity of the marks, to a mistaken belief that they originate from
the same source or that there is an association or connection between the sources of
the goods and services. Coach Servs., 101 USPQ2d at 1721; In re Thor Tech, 90
USPQ2d 1634, 1635 (TTAB 2009); Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978). Here, we look to determine the relationship, if any, between
Applicant’s “blood pressure monitors; massage apparatus; massage chairs with built-
in massage apparatus; massaging apparatus for personal use; nerve stimulator
apparatus; electronic stimulation apparatus for skin, muscles, and nerves for
physical therapy purposes; foot massage apparatus” with Opposer’s “massage
therapy services.”
Opposition No. 91249495
- 8 -
To show that the respective goods and services are related, Opposer introduced
eleven use-based, third-party registrations (or pairs of commonly owned
registrations) registered for one or more of the goods of the types identified in
Applicant’s application and massage or massage therapy services. Opposer’s Not. of
Rel., Exh. C.9 Third-party registrations based on use in commerce that individually
cover a number of different goods and services may have probative value to the extent
that they serve to suggest that the listed goods and services are a type that may
emanate from the same source. In re Country Oven, Inc., 2019 USPQ2d 443903, *8
(TTAB 2019); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d
mem. 864 F.2d 149 (Fed. Cir. 1988). The registrations are listed below:
Registration No(s). Mark Goods/Services10
5773040
5673508

massage therapy services
massage apparatus
5398203
5542779
YUGUANG ENERGY
THERAPY
massage therapy services
massage apparatus
4303012

4303010
IHEALTH massage therapy services
and
blood pressure
measuring apparatus;
massage apparatus
3909091 EMPOWERING
WELLNESS
massage therapy and
electric and non-electric
massage apparatus
5714492
5714496

massage
massage apparatus

9 6 TTABVUE 31-81.
10 The registrations may include additional goods or services.
Opposition No. 91249495
- 9 -
Registration No(s). Mark Goods/Services10
4694712
4694713

massage
massage apparatus
3166548
5073317
CANYON RANCH massage
massage apparatus
5272038
5272037
massage
massage apparatus
5165668

massage and
massage apparatus
5788431 MOMODA massage and
massage apparatus
5795410 GOLDWEB Massage and
massage apparatus and
instruments

We initially find on the face of the respective identifications that Applicant’s goods
and Opposer’s services are complementary in that Applicant’s massage apparatus
may be used in the rendering of massage therapy services, or the respective goods
and services may be used and rendered independently for the same purpose, namely
to reduce stress, relax muscles and tissue and to increase the flow of blood and oxygen
throughout the body. See Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71
(TTAB 2007) (goods may be found intrinsically related without further evidence). We
further find the third-party evidence supports our finding that Applicant’s massage
apparatus is commercially related to Opposer’s massage therapy services in that the
respective goods and services are often offered or rendered by the same entity under
the same mark. In fact, Applicant admitted that:
Opposition No. 91249495
- 10 -
massage therapy-related goods are similar to massage
therapy-related services;11
massage therapy-related goods under the Challenged
Mark are similar to the massage therapy-related services
under Opposer’s Mark;12 and
massage therapy-related goods under the Challenged
Mark are competitive with the massage therapy-related
services under Opposer’s Mark.13
We thus find that the DuPont factor of the relatedness of the goods and services
favors a finding of likelihood of confusion.
C. Channels of Trade/Classes of Consumers
While Applicant admits that the goods and services are similar, it nonetheless
argues that:
it cannot be ignored that Massage Heights has a SERVICE
mark for a massage SERVICE. TruCore Distributors sells
massage GOODS via a website. The channels of trade are
completely different. The end users are completely
different as well. For example, comparing massagers to
those who want a masseuse is like comparing toilet users
to those who purchase toilets. One is a service, one is a good
… the goods sold by TruCore Distributors are commonly
people who are purchasing gift products to be delivered,
typically over Amazon. The end user of a service for
massage is someone that wants a massage. The end user
for a purchase of goods that includes a massager is
someone that wants to purchase goods without undressing,
i.e., a different channel of trade.
Applicant’s brief, pp. 5-6.14

11 Request for Admission No. 21, Answer No. 21; 6 TTABVUE 89 and 110.
12 Request for Admission No. 22, Answer No. 22; Id. at 89 and 111.
13 Request for Admission No. 22, Answer No. 22; Id.
14 8 TTABVUE 7-8.
Opposition No. 91249495
- 11 -
The flaw in this argument is that since neither Applicant’s application nor
Opposer’s pleaded registration provides any limitations on the channels of trade and
classes of purchasers, we must presume that Opposer’s services and Applicant’s goods
are rendered/sold through all the normal and usual trade channels for such goods and
services and that they are offered to all usual purchasers of such goods and services.
See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); Hewlett-Packard Co .v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d1001, 1005 (Fed. Cir. 2002); In re Jump Designs LLC, 80 USPQ2d 1370, 1374
(TTAB 2006). That Applicant seeks registration of its mark for goods and the pleaded
mark covers services is irrelevant. As previously stated, the question is whether the
respective goods and services are related in such a manner that consumers would be
confused as to source if they were sold under the same or similar mark. See Coach
Servs., 101 USPQ2d at 1721. Here, Applicant has admitted that “when providing
goods under the Challenged Mark, [Applicant] target[s] consumers of massage
therapy-related services.”15 Moreover, as noted above, Applicant’s massage apparatus
and Opposer’s massage therapy services perform the same or very similar functions,
and thus would be directed to the same consumers seeking relief or relaxation
provided by massage. We accordingly find that, at a minimum, the classes of
consumers overlap.16

15 Request for Admission No. 32, Answer No. 32; 6 TTABVUE 98 and 119.
16 The record is devoid of information concerning the usual trade channels for massage
apparatus and massage therapy services.
Opposition No. 91249495
- 12 -
The DuPont factor concerning the classes of consumers also favors a finding of
likelihood of confusion.
D. Conclusion
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, we conclude
that confusion is likely between Applicant’s LIVE LIFE. BETTER mark for “massage
apparatus” and Opposer’s LIVE. LIFE. BETTER. mark for “massage therapy
services.” We conclude so principally due to the virtually identical marks, the related
goods and services, and the overlapping classes of consumers.
V. Misuse of the Registration Symbol
Section 29 of the Trademark Act provides that “a registrant of a mark registered
in the Patent and Trademark Office, may give notice that his mark is registered by
displaying ... the letter R enclosed within a circle, thus ®.” 15 U.S.C. § 1111. “The
registration symbol should be used only on or in connection with the
goods/services/collective membership organization listed in the registration” and the
“symbol may not be used with marks that are not actually registered in the USPTO.”
Trademark Manual of Examining Procedure (“TMEP”) § 906. (Oct. 2018).
The improper use of a registration notice in connection
with an unregistered mark, if done with intent to deceive
the purchasing public or others in the trade into believing
that the mark is registered, is a ground for denying the
registration of an otherwise registrable mark.
Copelands’ Enters. Inc. v. CNV Inc., 20 USPQ2d 1295, 1298, 945 F.2d 1563 (Fed. Cir.
1991) (citations omitted). See also TMEP § 906.02 and the authorities listed therein.
Opposition No. 91249495
- 13 -
Opposer argues that Applicant is not authorized to use the trademark registration
symbol, yet has been “making improper commercial use” of the symbol in connection
with its mark. Opposer’s brief, p. 8.17
In response, Applicant maintains that it had “no intent to deceive the purchasing
public [by the use of the registration symbol]” and that “[i]mmediately upon notice of
any use of using [sic] a registration symbol improperly, TruCor Distributors has
removed any such symbols.” Applicant’s brief, p. 6.18
Here we find that Opposer has not proven that Applicant had the requisite intent
to deceive the purchasing public or anyone else. And Applicant explained that “the
only location of use of the mark will reveal it no longer has the tiny registration
symbol that was actually missed by both the attorney and the Examiner during
prosecution.” Id. at 6-7.19 We find by this explanation that Applicant’s use of the
registration symbol in the first instance was mere in error. That, coupled with
Applicant’s prompt removal of the symbol from its mark, leads us to conclude that
Applicant’s actions do not rise to the level of intending to deceive prospective
purchasers or anyone else. Accordingly, Opposer claim based on Applicant’s improper
use of the registration symbol is dismissed.
Decision: Opposition No. 9124995 is sustained on the likelihood of confusion
ground and dismissed on the ground of misuse of the trademark registration symbol.

17 7 TTABVUE 9.
18 8 TTABVUE 8.
19 Id. at 8-9.