Scifit Systems, Inc.

Trademark Trial and Appeal Board

Mar 18, 2008

No. 78475542 (T.T.A.B. Mar. 18, 2008)

Mailed:
3/18/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scifit Systems, Inc.
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Serial No. 78475542
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Scott R. Zingerman of Fellers, Snider, Blankenship, Bailey
& Tippens, P.C. for Scifit Systems, Inc.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
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Before Seeherman, Bergsman, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Scifit Systems, Inc. filed an application to register
the mark BIO FLEX, in standard character format, for a
“component in the nature of a footbed support and pivot
system sold as an integral part of an exercise machine,” in
international class 28.1

1 Application Serial No. 78475542, filed August 30, 2004,
pursuant to Section 1(a) of the Trademark Act, 15 USC §1051(a),
alleging first use anywhere and first use in commerce “at least
as early as 11/30/99.”
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78475542
2
The Examining Attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that Applicant’s mark BIO FLEX,
when used in connection with the identified goods, so
resembles the registered mark BIOFLEX, in standard
character format, when used in connection with “exercise
equipment, namely machines for strengthening the back and
abdominal muscles,” as to be likely to cause confusion.2
Upon final refusal of registration, Applicant filed a
timely appeal. Both Applicant and the Examining Attorney
filed briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
relevant, probative facts in evidence. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29

2 Registration No. 3082059, issued April 18, 2006, based on
Section 44 of the Trademark Act.
Serial No. 78475542
3
(CCPA 1976) (“The fundamental inquiry mandated by §2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”). We consider each of the factors as to which
Applicant or the Examining Attorney presented arguments or
evidence.
Appearance, Sound, Connotation and Commercial Impression
We first consider and compare the appearance, sound,
connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). In this case, the marks are effectively
identical in appearance and sound. Visually, Applicant’s
BIO FLEX mark is the same as registrant’s BIOFLEX mark,
nothwithstanding the absence of the space between “bio”
and “flex.” Even discerning consumers would overlook that
minor distinction. See Winn’s Stores, Inc. v. Hi-Lo, Inc.,
203 USPQ 140 (TTAB 1979)(WIN is the phonetic equivalent of
WINN, and little, if any, trademark significance can be
attributed to the apostrophe and letter “s” found in
opposer’s mark); Goodyear Tire & Rubber Co. v. Dayco Corp.,
201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with hyphen
is substantially identical to FASTFINDER without the
Serial No. 78475542
4
hyphen). For the same reason, the marks are phonetically
identical.
Neither Applicant nor the Examining Attorney presented
evidence as to the meaning of registrant’s mark BIOFLEX or
of Applicant’s mark BIO FLEX. Registrant’s mark appears to
be arbitrary or at least suggestive, and therefore
inherently distinctive. Since Applicant’s mark has an
identical sound, and virtually identical appearance, it
follows that the resulting commercial impression of the
marks will likely be the same even for discerning
consumers. In view of the foregoing, the Board finds that
the first du Pont factor weighs in favor of finding a
likelihood of consumer confusion.
Similarity of the Goods
Applicant is seeking registration for a component of
an exercise machine. The cited registration is for an
exercise machine. Applicant argues that components of
exercise machines are different from exercise machines.
However, the Examining Attorney offered evidence of
exercise machine advertisements featuring prominently the
marks of the components alongside those of the exercise
machine itself. The Examining Attorney additionally
offered evidence of third-party registrations covering both
exercise machines and their components. We consider the
Serial No. 78475542
5
evidence offered by the Examining Attorney to be probative
of a high degree of similarity between Applicant’s goods
and those of registrant. The use of identical marks, as in
this case, on products that are at least complementary,
will likely lead consumers to the assumption that there is
a common source. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
In view of the foregoing, the second du Pont factor
weighs in favor of finding a likelihood of consumer
confusion.
Channels of Trade and Sophistication of Consumers
Applicant argues that its target customers are
sophisticated health care and exercise professionals, who
will recognize the difference between the BIO FLEX mark as
used on its exercise components, and the BIOFLEX mark as
used on registrant’s exercise machines. In the absence of
specific limitations in either the registration and/or the
application though, we must presume that the goods at issue
will travel in all normal and usual channels of trade and
methods of distribution and be sold to all classes of
consumers, which in this case may overlap. Squirtco v.
Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983).
Serial No. 78475542
6
Thus, evidence that Applicant’s products will be sold
to discriminating purchasers cannot be considered. In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Moreover, even a sophisticated professional is not immune
from source confusion, and because the marks are virtually
identical, even a careful, sophisticated consumer is not
likely to note the differences in the marks. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000).
In view of the foregoing, the third and fourth du Pont
factors weigh in favor of finding that there is a
likelihood of consumer confusion.
Balancing The Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists because the marks are
virtually identical, they are used on related products,
they are likely to be sold through the same channels, and
they are likely to target the same consumers.
Decision: The refusal to register is affirmed.