Thursday, January 25, 2018

TTAB Test: Are These Two Marks Confusable For Weight Loss Programs?

The USPTO refused to register the mark FIT IN YOUR GENES, finding it likely to cause confusion with the registered mark FITGENES & Design, shown below, both for weight loss programs. Applicant contended that the design element in the cited mark creates "a distinct, significant commercial impression[s] in the purchaser's mind such that this element alone should dictate no likelihood of confusion." How do you think this came out? In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

Of course, because the services overlap in part, the Board presumed that those overlapping goods travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board disagreed with applicant's contention that the design element in the cited mark is enough to distinguish the marks. When evaluating a word + design mark, the word portion is most likely to indicate origin because it is the portion that consumers would use to refer to the services. In short, here the literal portion of the cited mark is dominant.

Although both marks incorporate the words "FIT" and "GENES," the meanings and commercial impressions of the mark are not similar. In applicant's mark, "FIT" is  used as a verb and means to "be the right shape or size," and "GENES" is a play on "jeans." The mark FIT IN YOUR GENES connotes the goal of the weight loss programs. In the cited mark, "FIT" is used as an adjective and means "physically healthy and strong." FITGENES connotes genetic characteristics of physical health and strength, and is suggestive of registrant's services of genetic testing and profiling, including weigh management services.

Thus the marks at issue do not have the same connotation and they also engender different commercial impressions. The design element in the cited mark further distinguishes the marks.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.


At 12:02 PM, Anonymous Anonymous said...

That is definitely the argument I would make if I was arguing the refusal, but I'm a little surprised it worked here. The marks seem quite similar and used for overlapping services.

At 12:20 PM, Anonymous Anonymous said...

A good reason to file a combined word/logo mark ONLY after you have the word mark registered by itself.

I am surprised with this opinion. If I were the cited mark I would oppose, but now you might have an uphill battle to get TTAB reverse?

The opinion says the word is dominant, but then uses the design for part of its basis to overcome the refusal?


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