On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services

On May 3, 2024, the CAFC remanded to the Board its decision in iFit's opposition to registration the mark I-FIT FLEX for safety eyewear. iFit claimed likely confusion with its registered mark IFIT for exercise equipment and related services. The Board originally 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." The Board has again dismissed the opposition. Icon Health & Fitness, Inc. v ERB Industries, Inc., Opposition No. 91264855 (June 13, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

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. [TTABlogged here]:

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."

On remand, the Board quickly took care of the "weigh heavily" issue: "Here, because we found the parties’ marks “highly similar,” we now clarify pursuant to Naterra that the similarities between IFIT and I FIT FLEX weigh heavily in favor of finding a likelihood of confusion."

As to the goods and services, the Board found "no persuasive evidence in the record that sources of fitness training services or exercise equipment also offer safety glasses, much less that consumers would perceive safety glasses, which they purchased separately from exercise equipment or fitness training services, as emanating from the same source."

The Board again concluded that the dissimilarity of the goods and services and their channels of trade and classes of consumers was dispositive. "despite: (1) the marks being highly similar, which weighs heavily against finding a likelihood of confusion; and (2) Opposer’s IFIT mark being commercially strong.

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Text Copyright John L. Welch 2024.