Thursday, February 19, 2015

WYHA? TTAB Finds NOW YOGA AND FITNESS Confusable With NOWYOGA for Yoga Instruction

It's been a while since I posted a WYHA? Here's a "good" one. In a six-page decision, the Board affirmed a Section 2(d) refusal to register NOW YOGA AND FITNESS for "yoga instruction" [YOGA AND FITNESS disclaimed], finding the mark likely to cause confusion with the registered mark NOWYOGA (standard character form) for the identical services. Would You Have Appealed? In re Now Yoga, LLC, Serial No. 85677969 (January 27, 2015) [not precedential].

Because the involved services are identical, the Board must presume that the trade channels and marketing conditions are also identical. Applicant lamely argued that there are obvious differences: its mark is "used to attract a very specific consumer, namely, adults seeking yoga instruction and other body work and healing services as well as related accessories." As to the cited mark, applicant contended, "it can only be assumed that the ... mark was used to attract those seeking Buddhism based yoga and QiGong classes."

The Board pointed out one again, however, that the services recited in the application or cited registration cannot be narrowed by extrinsic evidence. Neither the application or the registration contains any restrictions in trade channels or classes of consumers. Regarding the contention that consumers of yoga instruction are "sophisticated," the Board found no support in the record.

Turning to the marks, applicant incisively observed that they are not identical. Examining Attorney Zachary B. Cromer maintained that the marks are highly similar in sound, appearance, and connotation, and that the space between the words "new" and "yoga" in applicant's mark is irrelevant. The Board agreed, noting that the disclaimed words "And Fitness" do little to distinguish the marks.

Finally, applicant made of record three registrations for marks containing the word "now" for yoga instruction services: HAPPY NOW YEAR!, Serenity Now Yoga, and NOW & ZEN STRENGTH TRAINING & YOGA CONDITIONING. The Board found this evidence non-probative: first, there was no evidence that these marks are in use or that the public is familiar with them, and second, each of these mark creates a substantially different commercial impression than the two marks at issue here.

And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here

Text Copyright John L. Welch 2015.


At 9:57 AM, Blogger Benjamin Donovan said...

In this scenario, the board affirmed a Section 2(d) refusal to register applicant Now Yoga LLC’s mark “NOW YOGA AND FITNESS” concerning “yoga instruction” as the board found the mark likely to cause confusion with NOWYOGA, which is also for “yoga instructions.” I find myself agreeing with the board’s findings, and would not appeal.
There are generally 13 factors to consider when applying a likelihood of confusion test via the du Pont factors.
The factors are not a hardline test, it appears to me that because of the nature of the marks in question, the board relied mainly on two of the above factors (although many others were noted) – the similarities between the marks, and the relationship between the goods and services. The first step the board took was to determine if the two marks were similar or dissimilar based upon their appearance, sound, and meaning. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369. The board properly applied the relevant tests, finding that there was little to distinguish the marks. Furthermore, the court determined that the marks operate in legally identical channels of commerce, as even though applicant sought to distinguish who its mark appealed to, an applicant cannot “restrict the scope of the services covered in its application or in the cited registration by argument or extrinsic evidence”), thus making the service channels of both marks “legally identical.” This is very strong language against Now Yoga, and suggests that an appeal of the board’s decision would be very difficult to overcome
After its analysis, the board concluded that the use of applicants mark in the same channels of commerce would be likely to confuse ordinary consumers. Applicant, in my opinion has almost no grounds to appeal on. The mark NOW YOGA AND FITNESS not only looks, sounds, and means nearly identical to NOWYOGA (note that the “AND FITNESS,” as the board said, is essentially used as a descriptive term), but it will appeal, whether intentionally or not, to all the same ordinary consumers that NOWYOGA will appeal to. Furthermore, when looking at the full list of considerations laid out in du Pont, applicant seemingly would have none in its favor. The consumers are not sophisticated, Now Yoga LLC, has no permission from the owner of NOWYOGA to use the mark, etc.
Applicant’s strongest ground for appeal would likely be that yoga consumers are so sophisticated, that they will recognize the difference between the marks (not that even if this were proved, such a factor is not dispositive, and the marks could still be considered confusing). Now Yoga, LLC did not provide enough (or any) evidence in the application to support this theory, and I do not believe applicant would be able to do so. A quick Google search of “yoga” made in the Boston area immediately brings up results for seven different yoga studio locations, and brings up many results to many local yoga studios ( It is logical to infer from this, and the prevalence to which we yoga exists in other commercial mediums (such as magazines, advertisements, etc.), that yoga appeals to nearly everyone. Yoga, including Now Yoga, LLC, provides no evidence that its goods appeal to those with more expertise. In addition, Now Yoga LLC even advertises its services to those seeking “yoga instruction.” Experts generally do not need instruction.
For all the reasons given, including others not mentioned, I would not appeal the board’s ruling. If I were Now Yoga, LLC, I would strongly consider re-branding my services.


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