Ontel Products Corporation

Trademark Trial and Appeal Board

Apr 21, 2009

No. 77423223 (T.T.A.B. Apr. 21, 2009)

Mailed: April 21, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ontel Products Corporation
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Serial No. 77423223
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Jason M. Drangel of Epstein Drangel Bazerman & James, LLP
for Ontel Products Corporation.

Janice Kim, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Hairston and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On March 16, 2008 Ontel Products Corporation filed an
intent-to-use application to register the mark IRON GYM (in
standard character form) for goods ultimately identified as
“gymnasium equipment, namely, manually-operated exercise
equipment for home use; chin-up bars for home use; pull-up
bars for home use; sit-up equipment for home use; push-up
equipment for home use” in International Class 28.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77423223
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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
goods, will so resemble the previously registered mark
AMERICAN IRON GYM for “health club services, namely
providing instruction and equipment in the field of
physical exercise” in International Class 41,1 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
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 (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

1 Registration No. 3064405, issued February 28, 2006. The words
AMERICAN and GYM are disclaimed apart from the mark as shown.
Ser No. 77423223
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services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We consider first the goods and services of applicant
and registrant. It is not necessary that the respective
goods and services be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and 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
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
To show that applicant’s goods and registrant’s
services are related, the examining attorney made of record
use-based third-party registrations for marks identifying
exercise/gym equipment, on the one hand, and health club
services/physical exercise instruction, on the other hand.
The following are examples: Registration No. 2380507 for
the mark POWERFLEX for manually operated exercise equipment
and weights, and health club services; Registration Nos.
3402918 and 3353244 for the mark LES MILLS and LES MILLS
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and design, respectively, for body building apparatus, and
health club services; Registration No. 3437787 for the mark
SHISEI for gymnastics apparatus and exercise machines, and
health club services; Registration No. 2007681 for the mark
FRAPPIER ACCELERATION for hand weights, and physical
fitness instruction; Registration No. 2729653 for the mark
GYROTONIC for exercise equipment, and exercise services;
Registration No. 2905632 for the mark EFI SPORTS MEDICINE
for exercise machines and exercise equipment, and exercise
services; Registration No. 3276481 for the mark MYGYM
FITNESS SYSTEM for exercise machines and physical fitness
consultation and instruction services; Registration No.
2009589 for the mark “A” and design for manually operated
exercise equipment and hand weights, and physical fitness
instruction; Registration No. 3404280 for the mark LIFELINE
for physical exercise equipment, and provision of
instruction in the field of exercise training; and
Registration No. 2908405 for the mark BOSU for exercise
equipment, and physical exercise instruction. “Although
third-party registrations are not evidence that the marks
shown therein are in commercial use, or that the public is
familiar with them, nevertheless third-party registrations
which individually cover a number of different items and
which are based on use in commerce may have some probative
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value to the extent that they serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source.” In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1786 (TTAB 1993), citing In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). Although the third-party registrations do not
specifically indicate whether the exercise/gym equipment
identified therein is for home use, that does not lessen
the probative value of the registrations as showing that
the types of goods identified in applicant’s application
and those identified in the cited registration are of a
type which may emanate from a single source. Moreover,
although applicant’s gymnasium equipment is identified as
being for home use, there is no question that such
equipment and health club services are used for essentially
the same purpose of maintaining/improving one’s physical
health. We find, therefore, that applicant’s gymnasium
equipment for home use and registrant’s health club
services are related goods and services.
Insofar as the channels of trade and purchasers are
concerned, we recognize that persons would not encounter
applicant’s gymnasium equipment for home use in a health
club. However, gymnasium equipment for home use and health
club services would certainly be bought by the same class
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of purchasers, namely, persons interested in
maintaining/improving their physical health. Applicant
contends that purchasers of these kinds of goods and
services are sophisticated. Apart from the fact that
applicant has offered no support for this contention, even
assuming that purchasers of the involved goods and services
are discriminating, this does not mean that they are immune
from confusion as to the source of the respective goods and
services. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Consumers familiar with registrant’s services, upon
encountering applicant’s goods offered for sale in a retail
setting, might easily assume there is a common source or
sponsorship.
In sum, we find that applicant’s goods and
registrant’s services are related, that the purchasers
would be the same, and that if the respective goods and
services are offered under the same or similar marks,
confusion is likely to result.
Turning then to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1389, 73 USPQ2d 1689 (Fed. Cir.
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2005). Although the marks 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Furthermore, the test 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 commercial impression that
confusion as to the source of the goods and/or services
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’s mark is IRON GYM; the registrant’s mark is
AMERICAN IRON GYM. Obviously, because applicant’s mark
consists of the identical term IRON GYM in registrant’s
mark, there are consequent similarities in appearance
pronunciation. The additional word AMERICAN in
registrant’s marks is insufficient to distinguish the
marks. AMERICAN is a geographic term which has been
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disclaimed, and is entitled to less weight in our
likelihood of confusion analysis.
In terms of connotation, we find that the marks have
similar meanings due to the shared term IRON GYM. It is
certainly not unusual for a business to identify its goods
or services as “American,” and to many consumers, IRON GYM
and AMERICAN IRON GYM may be essentially synonymous terms.
At the very least, one who is familiar with AMERICAN IRON
GYM health club services is likely to view IRON GYM as a
mark used to identify “companion” gymnastic equipment for
home use emanating from the same source as the AMERICAN
IRON GYM services.
Furthermore, when applicant’s mark and registrant’s
mark are considered in their entireties, they create highly
similar overall commercial impressions so that, if the
related goods and services involved herein were offered
thereunder, confusion would be likely to occur among
consumers.
Applicant, in contending that the marks are not
similar, asserts that the term IRON GYM is highly
suggestive of health club services and that the commonality
of the term is an insufficient basis upon which to find
that the marks are similar. According to applicant, the
term is associated with “a classic/original gym that
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concerns itself, first and foremost, with a serious workout
and features old standard free weights (iron) over new
advanced training machines.” (Brief, p. 2) In support of
its contention, applicant introduced examples of uses of
“Iron Gym” in LexisNexis excerpts and third-party websites.
Applicant’s evidence does not compel a different
result in determining likelihood of confusion. As the
Federal Circuit has stated, “the probative value of third-
party trademarks depends entirely upon their usage.” Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee, supra at 1693. In this case, there is no evidence
of the purchasing public’s awareness of these uses of “Iron
Gym;” nor is there any information as to, for example, how
long the websites have been operational or the extent of
the public exposure to the sites. Where the “record
includes no evidence about the extent of [third-party] uses
… [t]he probative value of this evidence is minimal.” Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57
USPQ2d 1557, 1561 (Fed. Cir. 2001). In view of the
foregoing, we cannot conclude that there is such
significant third-party use of “Iron Gym” marks or trade
names that consumers are likely to make a distinction
between applicant’s mark and registrant’s mark if these
Ser No. 77423223
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marks were used in connection with these related goods and
services.
Even assuming, however, that the term IRON GYM is
highly suggestive of health club services such that marks
which include this term are weak marks, IRON GYM would have
essentially the same connotation in both marks, i.e., a
workout using classic/original exercise equipment.
Moreover, even a weak mark is entitled to protection
against the registration of a highly similar mark for
related goods or services.
We conclude that consumers familiar with registrant’s
health club services offered under the mark AMERICAN IRON
GYM would be likely to believe, upon encountering
applicant’s mark IRON GYM for gymnasium equipment for home
use, that the goods and services originate from or are
somehow associated with or sponsored by the same source.
To the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1024 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 784 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
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Decision: The refusal to register under Section 2(d)
is affirmed.