88311087 (T.T.A.B. Feb. 8, 2021)

Tanner Hidrogo

Trademark Trial and Appeal BoardFeb 8, 2021

88311087 (T.T.A.B. Feb. 8, 2021)

THIS ORDER IS NOT A PRECEDENT OF THE TTAB Mailed: February 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tanner Hidrogo _____ Serial No. 88311087 _____ Richard A. Ryan, Esq. for Tanner Hidrogo. Marcya N. Betts, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Cataldo, Wolfson and Shaw, Administrative Trademark Judges. By Wolfson, Administrative Trademark Judge: Tanner Hidrogo (“Applicant”) seeks registration on the Principal Register of the mark depicted below for “Protective equipment and articles for sport activities, namely, boxing gloves, mixed martial arts gloves, hand guards, shin guards, body guards, abdominal protectors, chest protectors and shaped padding for protecting parts of the body specifically made for use in sporting activities” in International Serial No. 88311087 - 2 - Class 28.1 The Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration for the standard character mark HITT for “Physical fitness consultation; Physical fitness instruction; Physical fitness training services; Providing a website featuring information on exercise and fitness; Providing assistance, personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living” in International Class 41.2 When the refusal was made final, Applicant filed this appeal. We affirm the refusal to register. 1 Application Serial No. 88311087 was filed on February 21, 2019 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), based on Applicant’s allegation of its bona fide intent to use the mark in commerce. The description of the mark reads: “The mark consists of a front view of a stylized closed fist with the letters ‘HITT’ across the fingers and the words ‘HIGH IMPACT TUBULAR TECHNOLOGY’ below the fist.” Color is not claimed as a feature of the mark. “HIGH IMPACT TUBULAR TECHNOLOGY” has been disclaimed. 2 Reg. No. 4290205 issued February 12, 2013; combined declaration under Trademark Act Sections 8 and 15, 15 U.S.C. §§1058 and 1065, accepted and acknowledged. Serial No. 88311087 - 3 - I. Likelihood of Confusion A. Legal Standard Our determination of likelihood of confusion is based on an analysis of all 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) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We make that determination on a case-by-case basis, On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000), aided by the application of the factors set out in DuPont. We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019); In re Country Oven, Inc., 2019 USPQ2d 443903, at *2 (TTAB 2019). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *5 (TTAB 2019). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). B. Similarity of the Marks We compare Applicant’s mark with Registrant’s mark “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, Serial No. 88311087 - 4 - 1692 (Fed. Cir. 2005). (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side- by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1713 (Fed. Cir. 2012)). The proper focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Applicant seeks to register the composite mark: . The registered mark is HITT. The Examining Attorney argues that “Applicant’s mark does not create a distinct commercial impression from the registered mark because the applied-for mark contains the identical term HITT as the registered mark, and does not add any wording that would distinguish its mark from the registered mark.” Examining Serial No. 88311087 - 5 - Attorney’s Brief, 6 TTABVUE 9.3 The Examining Attorney adds that “the fist design in Applicant’s mark does not change the idea or feeling of the word HIIT when compared with the Registrant’s mark.” Id. at TSDR 7. While we must consider the marks in their entireties, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“Indeed, this type of analysis appears to be unavoidable.”). We find the term HITT to be the dominant term in Applicant’s mark for several reasons. First, the term HITT appears in large letters in the center of Applicant’s mark; the remaining wording is considerably smaller and underneath the fist design. Applicant argues that “because the “HITT” portion of Applicant’s Mark is incorporated into the forward projecting clenched fist, with the fist being the most predominant feature of the Mark, the design portion of the Mark is likely to stick in the mind of the consumer.” 4 TTABVUE 14. We agree with Applicant that consumers may perceive the fist design and the term HITT simultaneously, but we disagree that the two are inseparable. Consumers are more likely to register, remember, and recall the term HITT than the outline of the fist that surrounds it. When a mark comprises 3 Citations in this opinion to the appeal record are to TTABVUE, the docket history system for the Trademark Trial and Appeal Board. Citations to the prosecution history of the application are to pages from the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). Serial No. 88311087 - 6 - both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. See, e.g., In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra, 101 USPQ2d at 1908)); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Moreover, the fist design acts as a visual cue for the term HITT as a misspelling of the word “hit.” In this manner, it underscores the prominence of the term. The remaining wording in the mark, HIGH IMPACT TUBULAR TECHNOLOGY, is also of lesser significance than the prominent term HITT. The phrase appears in considerably smaller letters and at the bottom of the mark, where it will be read as a promotional slogan describing the goods. The wording has been disclaimed in recognition of its descriptiveness. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Ath. Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)). For these reasons, the Board agrees with the Examining Attorney that Applicant’s mark is dominated by the term HITT. The cited mark is comprised solely of this term. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019); see also Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (finding similar the marks BENGAL for gin and BENGAL LANCER and design for Serial No. 88311087 - 7 - nonalcoholic club soda, quinine water and ginger ale); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, * 6-7 (TTAB 2019) (“Tru’s junior mark, ROAD WARRIOR contains Double Coin’s entire mark WARRIOR”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“Applicant’s mark BARR GROUP wholly encompasses the registered mark BARR”). Viewing Applicant’s and Registrant’s marks in their entireties, including the disclaimed phrase and the design features of Applicant’s mark, we find that the marks are similar in sight, sound, connotation and overall commercial impression. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d at 1812; see also TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315, 1318 (Fed. Cir. 1997); In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Ox Paperboard, 2020 USPQ2d 10878 at *3. The first DuPont factor strongly favors a finding of likelihood of confusion. C. Relatedness of the Services; Channels of Trade; Classes of Consumers The second and third DuPont factors consider the relatedness of the involved goods and services, their trade channels, and classes of consumers. DuPont, 177 USPQ at 567. We consider Applicant’s goods as they are identified in Applicant’s application and Registrant’s services as they are recited in the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). The compared goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline, 56 USPQ2d Serial No. 88311087 - 8 - at 1475; Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the [goods and services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Applicant’s goods are: Protective equipment and articles for sport activities, namely, boxing gloves, mixed martial arts gloves, hand guards, shin guards, body guards, abdominal protectors, chest protectors and shaped padding for protecting parts of the body specifically made for use in sporting activities. Registrant’s services are: Physical fitness consultation; Physical fitness instruction; Physical fitness training services; Providing a website featuring information on exercise and fitness; Providing assistance, personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living. The Examining Attorney argues that the goods and services “are closely related in that sports equipment and fitness services are generally sold under the same marks and via the same trade channels to the same class of consumers.” 6 TTABVUE 10. In support, she submitted thirteen third-party Principal register registrations based on use to show that companies who sell protective sports equipment also provide physical fitness services such as training and consultation.4 For example: 4 February 6, 2020 Office Action, TSDR 2-49. Serial No. 88311087 - 9 - Reg. No. 4009496 for the mark ILOVEKICKBOXING.COM is registered for “hand wraps; boxing gloves” and “physical fitness instruction; physical fitness training services.” Reg. No. 4736191 for the mark 9R is registered for, inter alia, “sports equipment for boxing and martial arts, namely, boxing gloves, boxing bags, and punching mitts.” And “physical fitness instruction; providing a web site featuring information on exercise and fitness; providing assistance, personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living.” Reg. No. 5269868 for the mark CKO is registered for, inter alia, “boxing bags; boxing gloves” and physical fitness conditioning classes; physical fitness consultation; physical fitness instruction.” The third-party registrations demonstrate that Applicant’s goods and Registrant’s services are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). In addition, the Examining Attorney submitted third-party Internet evidence establishing that the goods and services are commonly provided and marketed by the same companies and are found in the same channels of trade.5 For example: Overthrow New York offers private group boxing classes on its website as well as boxing gloves and hand wraps under the OVERTHROW mark.6 5 Id. at TSDR 50-76. 6 At https://overthrownyc.com/private-class/ and https://overthrownyc.com/product- category/boxing-gear/. Id. at TSDR 50-51. Serial No. 88311087 - 10 - Everlast offers fitness courses under the mark EVERLAST as well as a variety of protective equipment for boxing such as EVERLAST headgear, punch and strike shields, and “catch and release mitts.”7 Fairtex offers training in mixed martial arts as well as boxing gloves under the FAIRTEX mark.8 UFC Gym offers group fitness classes and mixed-martial arts training as well as boxing gloves under the mark UFC.9 Applicant argues that while it “concedes that Applicant’s goods and Registrant[’]s services are both generally related to physical activities, they are actually quite different” in that Applicant’s goods are items, such as gloves, that are “sold to persons who desire to protect a part of their body” as a result of training for or during a competition, whereas Registrant’s services are “directed to an audience who are interested in general fitness and personal training.” 4 TTABVUE 16. Applicant’s argument is unpersuasive. There is no limitation or restriction in either Applicant’s identification of goods or Registrant’s recitation of services that would suggest Applicant’s goods would not be used by the general public or that Registrant’s services would not be proffered to athletes in training or competitive sports. Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in the application or services in the cited registration, we 7 At https://www.everlast.com/fitness/fitcerts# and https://www.everlast.com/fight/boxing/ protective-gear. Id. at TSDR 68-73. 8 At https://www.fairtex.com/training/ and https://www.fairtex.com/products/. Id. at TSDR 53-57. 9 At https://ufcgym.com/classes and https://ufcstore.com/collections/shop-all-equipment. Id. at TSDR 74-76. Serial No. 88311087 - 11 - must presume that they move in all channels of trade normal for such goods and services and are available to all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Indeed, the Examining Attorney’s evidence supports such finding of relatedness. Accordingly, the second and third DuPont factors favor a finding of likelihood of confusion. II. Conclusion Overall, the marks are similar in appearance, sound, connotation and commercial impression. Applicant’s goods are closely related to Registrant’s services, and will travel through the same trade channels to the same classes of purchasers. Accordingly, there is a likelihood of confusion among relevant purchasers. Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed.