Professional Product Research, Inc.v.Body Balancing Ltd.

Trademark Trial and Appeal Board

Jan 30, 2001

No. 91113363 (T.T.A.B. Jan. 30, 2001)

1/30/01
Paper No. 12
EWH/cv
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Professional Product Research, Inc.
v.
Body Balancing Ltd.
_____
Opposition No. 113,363
to application Serial No. 75/362,486
filed on September 24, 1997
_____
William H. Cox of Janvey Gordon Herlands Randolph Rosenberg
& Cox, LLP for Professional Product Research, Inc.
Grace Apfel for Body Balancing Ltd.
______
Before Hanak, Bucher and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Body Balancing Ltd. (applicant) seeks to register in
typed drawing form BODY BALANCER for “health care devices,
namely, boards for the back for use in therapy and pain
relief.” The intent-to-use application was filed on
September 24, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,363
2
Professional Product Research, Inc. (opposer) filed a
notice of opposition alleging that prior to September 24,
1997 it both used and registered the virtually identical
mark BODY BALANCERS in connection with heel insert pads.
Opposer further alleges that both its goods and applicant’s
boards for the back for use in pain relief “are both
intended to relieve bodily discomfort and are likely to move
within the same channels of trade and be purchased by the
same class of purchasers.” (Notice of opposition paragraph
seven). Finally, opposer alleges that the contemporaneous
use of opposer’s mark for opposer’s goods and applicant’s
mark for applicant’s goods will “cause confusion or deceive
purchasers in the mistaken belief that the goods of
applicant emanate from, are offered for sale, or are sold by
opposer or under opposer’s approval, sponsorship or
control.” (Notice of opposition paragraph seven).
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition including those
contained in paragraph seven.
Opposer made of record evidence and filed a brief.
Applicant did neither. Neither party requested a hearing.
At the outset we noted that priority of use rests with
opposer. Not only has opposer properly made of record a
certified status and title copy of its Registration Number
1,947,339 for the mark BODY BALANCERS and design (shown
Opposition No. 113,363
3
below) for “heel insert pads,” but in addition the record
clearly demonstrates that opposer has continuously used
since February 1995 not only its registered mark but also
the mark BODY BALANCERS per se for heel insert pads. In
this regard, reference is made to page 14 of the testimony
deposition of Daniel Feldman, opposer’s Director of
Marketing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by Section 2(d) goes to
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”)
Considering first the marks, applicant’s mark BODY
BALANCER and opposer’s unregistered mark BODY BALANCERS
Opposition No. 113,363
4
are, obviously, virtually identical in visual appearance,
pronunciation and connotation. Thus, the first Dupont
“factor weights heavily against the applicant” because the
two word marks are almost identical. In re Martin’s Famous
Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984).
Turning to a consideration of opposer’s goods and
applicant’s goods, we note that because the marks are
almost identical, their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
However, the record in this case demonstrates that
opposer’s goods and applicant’s goods are clearly related
in that they are advertised in the same publications; they
travel in the same trade channels; they are sold to the
same customers; and they serve the same purpose, namely, to
relieve back pain. With regard to this latter point,
applicant’s chosen description of goods is as follows:
“health care devices, namely, boards for the back for use
in therapy and pain relief.” (Emphasis added). As for
opposer’s heel insert pads, Mr. Feldman testified that
these pads relieve pain not only in the feet and legs, but
also in the back (Feldman deposition page 15). Attached as
Opposition No. 113,363
5
exhibit two to Mr. Feldman’s deposition is one of opposer’s
BODY BALANCERS heel insert pads enclosed in its normal
packaging. This packaging states that BODY BALANCERS heel
insert pads distribute “weight equally thereby reducing
pressure to the ankles, feet, legs and back.” (Emphasis
added). The text in the packaging also notes that BODY
BALANCERS heel insert pads “are guaranteed to help relieve
back and leg pain.” (Emphasis added).
In short, given the fact that the marks of the parties
are virtually identical and the fact that the goods of the
parties serve the same purpose, we find that there exists a
likelihood of confusion. Our determination of likelihood
of confusion is only enhanced by the fact that, as
previously noted, both set of goods are advertised in the
same publications; travel in the same channels of trade;
and are used by the same individuals.
Decision: The opposition is sustained.