Friday, May 12, 2006

"WORLD GYM" Flexes Its Muscles in TTAB 2(d) Opposition Victory

World Gym International pinned Applicant Eunice U.S.A. to the mat in a Section 2(d) opposition involving Applicant's mark shown immediately below [THE WORLD IS OUR GYM disclaimed] for various clothing items, including shirts, shorts, pants, and jackets. World Gym Int'l, Inc. v. Eunice U.S.A., Inc., Opposition No. 91124916 (May 2, 2006) [not citable].

World Gym relied on several registrations, including one for the mark shown immediately below [GYM disclaimed] for "shirts, shorts, pants, sweat suits, jackets, hats, gloves."

The Board first dealt with a procedural issue. The parties had stipulated under Rule 2.123(b) that testimony could be submitted by declaration, but Opposer objected to the declaration of Applicant's attorney. The Board observed that an attorney "generally may not appear as a witness on behalf of a party he is representing," and it gave the declaration and accompanying exhibits "no weight."

World Gym claimed that its WORLD GYM marks are famous, but its proofs fell short: it failed to provide actual sales figures, advertising expenditures, or evidence of the extent of its advertising. Quoting Blue Man Prods. Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005), the Board pointed out that:

"In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude or protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it."

The Board concluded that WORLD GYM was not shown to be a famous mark. However, Opposer's evidence of "public exposure to the WORLD GYM marks in connection with the gym and fitness centers and the clothing, coupled with the lack of evidence of third-party use of the terms WORLD or WORLD GYM," led the Board to find that WORLD GYM is a "strong mark with some renown."

As the goods, some are identical clothing items, others related. In light of the lack of any limitations in the identifications of goods, the channels of trade must be presumed to "overlap." Applicant meekly argued that it "has never marketed or sold athletic, exercise, or fitness apparel," and "has never marketed or sold its apparel to sporting goods stores, gyms, fitness centers, or other physical exercise oriented customers or markets." The Board, however, noted for the millionth time that it cannot read limitations into the goods as identified in the involved application and registrations.

As to the marks, the Board recognized "certain differences," but it found that the slogan THE WORLD IS OUR GYM is "visually much more prominent" than the rest of Applicant's mark. Similarly, the words WORLD GYM dominate Opposer's mark "inasmuch as it is by the words that consumers will call for the goods." The respective dominant elements THE WORLD IS OUR GYM and WORLD GYM "are entitled to the most weight" in the duPont analysis. Those elements, the Board found, are similar in connotation and commercial impression, and therefore the subject marks, when used on identical or closely related clothing items, "indicate goods emanating from a single source."

Balancing the duPont factors, the Board concluded that the evidence "supports a finding of likelihood of confusion."

The Board declined to consider Opposer's other registrations, and likewise declined to consider World Gym's dilution claim.

TTABlog comment: The dilution claim would likely have failed because the marks at issue are neither identical nor substantially similar. (See my dilution article here, page 12).

Text Copyright John L. Welch 2006.


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