Friday, June 23, 2023

TTABlog Test: Are Personal Training Services Related to Clothing For Section 2(d) Purposes?

The USPTO refused to register the mark SRF & Design, shown here, for (inter alia) physical fitness training services, finding confusion likely with the standard character mark SRF for "shirts, sweatshirts, jackets, hoodies, hats, pants, sweatpants, sweaters, pullovers, headwear." Not surprisingly, the Board found the marks to be "very similar" in sound, appearance, connotation, and commercial impression. But what about the goods and services? How do you think this came out? In re Surf Ready Fitness, Serial No. 90548268 (June 21, 2023) [not precedential] (Opinion by Judge Christen M. English).

Applicant argued that the spacing in its mark would lead consumers to pronounce it as three individual letters, whereas the cited mark would likely be pronounced "surf." The Board was unimpressed, pointing out that there is no correct pronunciation of a mark and that applicant's mark might also be pronounced "surf." The circular design element in applicant's mark would likely be perceived "merely as an outline or carrier for the literal element of Applicant’s mark." Moreover, the cited standard character mark could be displayed in the same font as applicant's mark.

Turning to the involved goods and services, the Board pointed out that applicant originally included "t-shirts; hoodies; sweaters; pants" in its application, and claimed that its mark was in use for those goods. Its specimen of use showed a hoodie bearing its mark. During prosecution, applicant deleted those goods, "but the inclusion of clothing items in Applicant’s own application as originally filed strongly suggests that the “t-shirts; hoodies; sweaters; pants” identified in the cited registration are related to Applicant’s personal training services and blog posts, newsletters and videos in the fields of fitness, sports, exercise and nutrition." [What if the application had included machine guns? Would that make them related to fitness services? - ed.]

Furthermore, Examining Attorney James MacFarlane submitted website printouts showing seven third-parties using a single mark to identify the types of clothing covered by the cited mark, as well as Applicant’s services. He also introduced ten use-based registrations owned by different entities covering at least some of the clothing items identified in the cited registration and Applicant’s physical fitness-related services.

In rebuttal, Applicant submitted ten pairs of third-party registrations showing the same or a similar mark registered by one entity for clothing and another entity for personal fitness services. However, the Board gave this evidence little probative value. First, there was no evidence as to whether the registrants entered into any coexistence agreements or whether the marks themselves have actually coexisted in the marketplace without confusion. Second, these registrations do not negate the Office's evidence showing that sometimes the goods and service may emanate from the same source. Third, each case must be decided on its own merits.

In sum, the Board found the involved goods and services to be related for purposes of Section 2(d).

As to channels of trade, the Internet evidence revealed at least one common channel: the websites of physical fitness businesses offering clothing as well as online fitness instruction and related blogs, newsletters and videos.logs, newsletters and videos.

Applicant argued that consumers would take considerable time in choosing personal training services, but the Board found no evidence supporting that assertion. In any case, the Board must base its decision on the least sophisticated potential consumer.

Consumers of fitness services may include neophytes who may not be particularly educated about fitness and so may not exercise any particular degree of care in purchasing Applicant’s services. Similarly, the clothing items identified in the cited registration are not limited as to their nature or price and, therefore, include inexpensive, “off-the-shelf items” that may be purchased on impulse “by all manners of people.”

The Board concluded that the first, second and third DuPont factors supported a finding of likely confusion, with none of the factors weighing in applicant's favor. And so, it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? Is clothing related to everything else?

Text Copyright John L. Welch 2023.


At 7:59 AM, Blogger BOB KELSON said...

I can see how this decision came about. Several items of clothing clearly related to the fitness industry. Much easier to understand than the table grapes versus wine decision.

At 8:11 AM, Blogger Gene Bolmarcich, Esq. said...

Yes, clothing is related to everything. It's a right in gross.

At 10:48 AM, Anonymous Anonymous said...

Yes...apparently clothing is related to everything else. I guess that means no more trademark registrations for anyone....we can all "clothes" up shop....

At 10:50 AM, Anonymous Anonymous said...

With regard to evidence of similar marks issued for the different goods, the Board said "First, there was no evidence as to whether the registrants entered into any coexistence agreements or whether the marks themselves have actually coexisted in the marketplace without confusion."

That's complete BS, the issue is that the Office approved them over each other and didn't bother to raise an issue that would create a need for a co-existance agreemnet. That's what matters. If the Board statement stands then no applicant could ever rely on third party evidence to show a lack of confusion.

What's an applicant supposed to do? Call up all the trademark owners and get a declaration that there's no co-existance agreement? Kafka would be proud of these guys.

I'm sick of these guys and their twisted logic.

At 2:02 PM, Anonymous Anonymous said...

IMHO, TTAB is out of control!

At 1:22 AM, Anonymous Personal Trainers said...

The connection between personal training services and clothing might seem tenuous, but when it comes to Section 2(d) considerations, even seemingly unrelated concepts can be intertwined. This test explores the intriguing nuances of trademark law.


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