Wednesday, February 06, 2019

TTABlog Test: Is "THE OFFICIAL SEXIFIT & Design" Confusable with "IFIT" for Fitness Services?

ICON Health & Fitness opposed Procheer's application to register the mark shown immediately below, for "providing fitness instruction services in the field of dance, and physical fitness," alleging a likelihood of confusion with its registered mark IFIT for, inter alia, physical fitness instruction. The services overlap, but what about the marks? Are they confusable? ICON Health & Fitness, Inc. v. Procheer Fitness and Dance, Opposition No. 91230219 (February 1, 2019) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer ICON claimed that its mark is famous, pointing to sales figures for its fitness machines and other products, the number of apps that have been downloaded, the number of visits to its website and blog, its advertising in various media, the availability of its products at major retailers such as Walmart and, its trade show participation, various awards it has received, and use of the IFIT mark since the 1990s. The Board found this evidence "impressive," but much of it concerned opposer's goods and not fitness instruction services. Nonetheless, the Board found that "Opposer has established that its mark is very strong in the field of fitness instruction due to its impressive showing concerning its many fitness-related products."

Turning to the marks, the Board first noted that Opposer's mark is in standard character form, and is thus not limited to any particular font, style, color, or size of display. In applicant’s mark, the large wording SEXIFIT is the dominant part of the mark both because it is the wording in a word+design mark that consumers will use to call for the services, and because the term SEXIFIT is substantially larger than the other wording in the mark.

Of course, the first letter “I” is in the shape of a slim barbell; consumers would likely view this as part of the term SEXIFIT and not as an independent design element separating the wording SEX and FIT.

The Board found that the marks are similar in commercial impression because of applicant’s inclusion of the entirety of opposer’s mark in the applied-for mark.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

The services, trade channels and classes of consumers overlap. Opposer’s mark is a very strong mark and there is no evidence of third-parties using similar marks. Opposer’s and Applicant’s marks are similar, and consumers are likely to exercise a relatively low degree of care when making purchasing decisions for the involved fitness instruction services.

Read comments and post your comment here.

TTABlog comment: Well, what do you think? It seems to me that applicant's mark would be perceived as SEXI-FIT, not SEX-IFIT.

Text Copyright John L. Welch 2019.


At 9:15 AM, Anonymous Anonymous said...

Ouch, the Board missed that one. I'm sure 99 out of 100 people would pronounce that "SEXY FIT."

Also, is there any basis in law for the opinion's statement that "[t]he marks are similar in commercial impression due to Applicant’s inclusion of the entirety of Opposer’s mark in its mark." The Wella Corp. case cited following that statement actually says that the inclusion of non-distinctive components in a composite mark does little to dissuade confusion, whereas the inclusion of distinctive non-common components in a composite mark indicates non-confusion.

Thank goodness this SEXIFIT opinion is not precedential.

At 9:53 AM, Blogger Eddie said...

First: I've never even heard of Ifit. No way that's world famous. I don't care how much money they've spent, it's just not well known outside their advertising. Just because you're constantly splashing the internet with your mark doesn't make you famous. Still a drop in the ocean.

Second: No way anyone reading it sees "sex-ifit". Doesn't make any sense read that way. Makes the mark meaningless.

Third: Put a dash after the "sexi-" and disclaim fit. Like the author said. Problem solved. It's what you want anyway.

At 10:43 AM, Anonymous Anonymous said...

And the other one person would see it as SEX/FIT. No one is going to perceive this as SEX-IFIT except judges perturbed that they can't reject the mark as "scandalous."

At 11:32 AM, Anonymous Anonymous said...

To me, the barbell is simply a design element that separates the words SEX and FIT. I could also be convinced it represents the letter "I," but in that case I agree with John and the first comment - the mark would be perceived as "SEXY FIT" not "SEX IFIT." I think the Board got this one wrong.

At 11:42 AM, Anonymous Anonymous said...

Whatever their test for difference in commercial impression is, it apparently doesn't include reasonableness. The dominant portion of the applicant's mark is Sex or Sexy, and I don't thin anyone will be reading the "i" in the middle of the word in the sense that an "i" at the beginning of the word would be read. I would challenge the examiner to find any example of an "i" in the middle of a word that is read to have the same meaning as an "i" prefix.

At 11:46 AM, Anonymous Jon said...

Wow. I did not expect this case to reach that conclusion. FIT is a descriptive or generic term in this context and the "I" prefix has little source indicating value. Opposer's mark should have been entitled to narrow protection. I, personally, saw the applicant's mark as SEX/FIT with the dumbbell functioning as a forward slash.

Regardless, this case is a prime example of where the "commercial impression" analysis misses the mark. The Board found two dissimilar marks similar on the basis of abstract, subjective considerations. Just because one mark might "call to mind" another does not mean there is a likelihood of consumer confusion. Hopefully the Applicant considers an appeal, because I think a stern rebuke from the CAFC would benefit the Board tremendously.

At 12:57 PM, Blogger Stacey Friends said...

I agree. I do not think these marks are confusingly similar. The applicant's mark is obviously going to be pronounced and read as, "SEXY FIT."


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