CAFC Remands I-FIT FLEX Opposition at Request of USPTO for Re-consideration of First and Second DuPont Factors

On motion of the USPTO Director as intervenor [pdf here], the CAFC remanded to the Board its decision in Icon Health & Fitness, Inc. v ERB Industries, Inc., Opposition No. 91264855 (June 27, 2003) [pdf here], because the USPTO raised "legitimate concerns about the Board’s findings on the relatedness between ERB’s goods and iFIT’s services and also wishes to reconsider the decision in light of Naterra International, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir. 2024)." iFit, Inc. v. Vidal, Appeal No. 2024-1041 (Fed. Cir. May 3, 2024) [not precedential].

iFit opposed ERB's application to register the mark I-FIT FLEX for safety eyewear, claiming likely confusion with its registered mark IFIT for exercise equipment and related services. The Board dismissed the opposition, finding that the first DuPont factor favored iFit, but deeming the second factor dispositive: "Opposer has failed to show that the parties’ goods and services are related, or that they travel in the same channels of trade to the same classes of consumers."

After Applicant ERB failed to appear in the appeal, the CAFC invited the USPTO Director to intervene. The Director did so and then filed a motion for remand, asserting that:

The TTAB's decision does not provide complete factual findings as to whether the personal training services in Appellant's registrations and the goods in ERB's application are related under the second DuPont factor. Further, the TTAB did not have the benefit of this Court's recent decision in Naterra [TTABlogged here], which held that the TTAB erred in not weighing the similarity of the marks heavily in favor of a likelihood of confusion when it found the marks were "more similar than dissimilar."

According to the Director, "the decision on review here, despite recognizing the high similarity of the mark, is not clear whether the Board gave the appropriate weight to this similarity in reaching its ultimate determination on the likelihood of confusion."

The CAFC granted the motion and remanded the case to the Board "for further proceedings consistent with the motion and this order."

Read comments and post your comment here.

TTABlogger comment: I think the Director misstated the ruling in Naterra. There, the Board had found the marks BABIES' MAGIC TEA and BABY MAGIC "more similar than dissimilar. " The CAFC remanded to the Board, relying on its Detroit Athletic decision, wherein it found that the similarity of the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO. “weighs heavily in the confusion analysis” because the Board found that the marks’ “lead words are their dominant portion and are likely to make the greatest impression on consumers." Contrary to the Director's motion, the CAFC did not say in Naterra that "the TTAB erred in not weighing the similarity of the marks heavily in favor of a likelihood of confusion when it found the marks were 'more similar than dissimilar.'"

Text Copyright John L. Welch 2024.