Bello Fitness Ltdav.Body Up Fitness LLC

Trademark Trial and Appeal Board

Oct 28, 2011

No. 92049838 (T.T.A.B. Oct. 28, 2011)

Mailed: October 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Bello Fitness Ltda
v.
Body Up Fitness LLC
_______

Cancellation No. 92049838
_______

Jeffrey Furr for Bello Fitness Ltda

Michael A. Cornman of Ladas & Parry LLP for Body Up Fitness
LLC
_______

Before Quinn, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On August 18, 2008, Bello Fitness Ltda, petitioner,
petitioned to cancel Registration No. 3295316 owned by Body
Up Fitness LLC, respondent, issued on September 18, 2007,
for the mark shown below for “clothing, namely blouses,
tops, jackets, capris, pants, shorts, and bodysuits” in
International Class 25.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92049838
2

As grounds for cancellation, petitioner asserts the
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. 1052(d). More
specifically, petitioner alleges that respondent’s BODY UP
with design mark, as used in connection with its goods, so
resembles petitioner’s previously used word mark BODY UP for
“sport clothing” as to be likely to cause confusion, to
cause mistake, or to deceive under Trademark Act Section
2(d).1
Respondent in its answer denied the salient
allegations.2
EVIDENCE OF RECORD
The evidence of record consists of the pleadings herein
and the file of the registration sought to be cancelled. In

1 Petitioner uses language in its pleading that obliquely
references other potential grounds; however, the only properly
pleaded ground is likelihood of confusion. Further, to the
extent petitioner attempts to argue fraud in its brief, this
ground was not pleaded or tried by implied consent, and is,
therefore, not before the Board. Respondent’s arguments
regarding petitioner’s pleading of priority are discussed below.

2 Respondent also asserted several affirmative defenses, e.g.,
laches, in its answer; however, respondent did not pursue these
defenses in its brief and we consider them to have been waived.
To the extent these “affirmative defenses” simply serve to
amplify respondent’s defense (e.g., the allegation that
petitioner lacks standing), they have been considered.
Cancellation No. 92049838
3
addition, petitioner submitted the discovery deposition,
with exhibits, of Ms. Gilda Almeida (Almeida), a former
officer and shareholder/manager of respondent and a third
party, Body Up, LLC; and the trial testimony upon written
questions of Mr. Fernando Homem da Costa Filho (Filho),
officer and shareholder of petitioner and Body Up, LLC.
Petitioner also submitted notices of reliance on several
application file records, including petitioner’s pending
application. Respondent submitted a notice of reliance on
petitioner’s intent-to-use application Serial No. 77525382,
petitioner’s responses to certain of respondent’s requests
for admissions and interrogatories, Exhibits F and G from
the Almeida deposition (a Bill of Sale and a Distribution
Agreement), and printouts from respondent’s website. In
rebuttal, petitioner submitted a notice of reliance on its
full response to respondent’s Interrogatory No. 3.3
STANDING
To establish standing to petition to cancel
respondent’s registration, petitioner must prove that it has
a real interest in the outcome of this proceeding and, thus,

3 Respondent’s contention that this document “cannot be used [and
is] improperly the subject of an untimely Notice of Reliance,” is
misplaced. The notice was timely filed during petitioner’s 15-
day rebuttal testimony period ending on February 6, 2010 inasmuch
as it was filed on February 2, 2011 (see October 19, 2010 Board
order). It was also properly submitted under Trademark Rule
2.120(j)(5). Moreover, responses of record may be referred to by
any party for any purpose. Trademark Rule 2.120(j)(7). See also
Safer, Inc. v OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010).

Cancellation No. 92049838
4
a reasonable basis for its belief that it would be damaged
by the registration. See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Petitioner’s witness, Mr. Filho, testified that, “since
Body Up Fitness, LLC has illegally got the rights to use
‘BODY UP’ mark, it has prevented us to use ‘BODY UP’
trademark in the USA.” Filho Test. p. 4. Further,
petitioner has filed a trademark application (Application
Serial No. 77525383, filed on July 17, 2008) which has been
refused registration based on the subject registration.4
Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959
(TTAB 2008) (standing found because the opposed application
was cited as a potential bar to opposer’s registration); see
Lipton Indus., 213 USPQ at 189. In view thereof, we find
that petitioner has established its standing.
FINDINGS OF FACT

4 Petitioner submitted this application under notice of reliance.
Respondent notes that petitioner did not plead this application;
however, respondent itself submitted this application under
notice of reliance and relies on it to challenge petitioner’s
assertion of priority by noting in its statement of facts that it
is based on an “intent to use.” Br. p. 4. In view thereof, we
consider the pleading amended by implied consent to include this
application. Fed. R. Civ. P. 15(b).

Cancellation No. 92049838
5
Based on the totality of the record, we make the
following findings. West Florida Seafood Inc. v Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir.
1994) (evidence as a whole may establish prior use).
Petitioner is a Brazilian clothing manufacturer. Almeida
Test. pp. 15, 23, Exh. G. Mr. Filho is one of petitioner’s
shareholders and officers. Almeida Test. p. 22, Exh. G;
Filho Test. p. 2. Petitioner first used the mark BODY UP in
the United States in 2002 through a third-party distributor
Mrs. Marcia Garcia. Filho Test. p. 3. In November, 2003,
Body Up, LLC, a third party, was formed as a Florida limited
liability company, and, based on an assignment of stock on
March 17, 2004, petitioner’s officer and shareholder, Mr.
Filho, became a 20% shareholder in Body Up, LLC. Almeida
Test. p. 8, Exh. A; Filho Test. pp. 2, 5.
On February 26, 2004, petitioner signed a distribution
agreement with the third party Body Up, LLC to sell
petitioner’s clothes in the United States. Almeida Test.
Exh. G; Filho Test. p. 2. Body Up, LLC was a distributor
for petitioner. Almeida Test. p. 15; Filho Test. p. 2.
Subsequently, in March/April 2004, respondent was
formed as a Florida limited liability company. Almeida
Test. p. 10, Exhs. B-E. Ms. Almeida was a shareholder and
officer/manager of both Body Up, LLC and Body Up Fitness,
LLC. Almeida Test. pp. 6,8, Exhs. A-F. On December 14,
Cancellation No. 92049838
6
2007, Ms. Almeida, on behalf of Body Up, LLC and respondent
as the manager of both companies, signed a bill of sale of
Body Up, LLC’s assets to Body Up Fitness, LLC. Almeida
Test. pp. 12-13, Exh. F. We do not make findings as to what
those assets are inasmuch as that requires interpretation of
the distribution agreement which may only be done pursuant
to arbitration, as discussed below.
PRIORITY/LIKELIHOOD OF CONFUSION
It is the plaintiff’s burden to prove its claims by a
preponderance of the evidence.
The record shows, and respondent does not dispute, that
the marks BODY UP and design and BODY UP are similar, the
parties’ clothing items (e.g., tops, pants and shorts) are
identical and the trade channels overlap. See, e.g., Resp.
NOR Exh. 4; Pet. Rebuttal NOR (petitioner’s response to
Interrogatory No. 3 “a. state the date of first use in the
United States in conjunction with the type of product and
describe the circumstances surrounding such first use. ...
Female Active Wear Tops, Shirts ... Pants, Breeches, Shorts
... exported to the USA since December 2002”). In re E. I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In view thereof, we hold that a likelihood of
confusion exists between the BODY UP and design mark and the
BODY UP mark used in connection with various clothing items.
Cancellation No. 92049838
7
The only issue remaining in dispute is the question of
priority and petitioner’s trademark rights.
We begin by addressing the arguments pertaining to the
distribution agreement, referenced above, between petitioner
and the third party, Body Up, LLC. There is no dispute that
petitioner and Body Up, LLC were parties to this agreement
and that petitioner was the manufacturer of the goods in
Brazil and Body Up, LLC was the distributor in the United
States. Almeida Test. p. 15 (“Body Up, LLC. was a Bello
Fitness distributor, but we’ve been having problems with
this distribution since we started.”); Filho Test. p. 2
(“Yes, Body Up, LLC was created to be Bello Fitness Ltda
distributor in the USA”).
The law is clear on the question of ownership as
between a foreign manufacturer and a domestic distributor or
importer:
[T]he question of ownership of a trademark as
between the manufacturer of a product to which the
mark is applied and the exclusive distributor of
that product, or as between a foreign manufacturer
and the exclusive United States importer and
distributor, is a matter of agreement between
them, and in the absence of any such agreement,
there is the legal presumption that the
manufacturer is the owner of the mark. Without
such expressed or implied acknowledgement or
transfer by the foreign manufacturer of rights in
the trademark to the exclusive U.S. distributor,
such distributor does not acquire ownership of a
mark of a foreign manufacturer any more than a
wholesaler can acquire ownership of the mark of a
manufacturer, merely through sale and distribution
of goods bearing the manufacturer’s trademark.

Cancellation No. 92049838
8
Audioson Vertriebs-GmbH v. Kirksaeter Audiosonics, Inc.,
196 USPQ 453, 456-57 (TTAB 1977) (citations omitted).
However, respondent was never petitioner’s distributor.
The dispute arises over whether Body Up, LLC acquired
ownership rights in the mark BODY UP based on this agreement
and subsequently whether respondent acquired such rights in
the sale of Body Up, LLC’s assets. What is clear in the
agreement is that such disputes must be submitted for
arbitration:
¶ 9.5 The parties hereto agree that any
controversy or claim arising out of or relating to
this Agreement (including, but not limited to the
alleged breach thereof, or the termination or non-
renewal thereof) shall be submitted to binding
arbitration with the American Arbitration
Association in accordance with the rules of the
American Arbitration Association in effect at such
time. The decision of the arbitrator(s) shall be
final and binding upon the parties and judgment
upon the award may be entered in any court having
jurisdiction thereof. In accordance with Section
8.4 hereof, in any arbitration proceeding the
arbitrators shall apply the laws of the State of
Florida. The arbitration shall take place in
Miami, Florida. The expenses of the arbitrator
shall be borne by the losing party.

Ms. Gilda Almeida Test. Exh. G; Resp. NOR Exh. 5.
Therefore, in view of the unambiguous arbitration
clause, we will not determine the parties’ respective rights
based on this agreement.5 Cf. Selva & Sons, Inc. v. Nina

5 We note, however, that paragraph 6 of the distribution
agreement grants the distributor “an exclusive and irrevocable
license to register for and use the trademark.” Pet. NOR Exh. 5.
However, only the owner of the mark may file an application to
register the mark. Trademark Act Section 1, 15 U.S.C. 1051. See
Cancellation No. 92049838
9
Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir.
1983) (Board has authority to consider an agreement, its
construction, or its validity if necessary to decide the
issues properly before it). Specifically, we make no
findings as to what was conveyed in the distribution
agreement, whether it was terminated, and what was left for
the distributor to convey to respondent.
We now turn to consider the issue of priority as
between these parties. Because petitioner has not pleaded
any registrations, petitioner must rely on its common law
use to prove its priority. As to respondent’s first use,
respondent argues that it “adopted, developed, and used and
continues to use its registered BODY UP mark in the USA
independently of any rights it acquired from Body Up LLC’s
rights, those rights are cumulative to its own independently
established rights.” Br. p. 7. However, the record is not
clear as to when respondent first used the mark independent
of any prior use by the third-party Body Up LLC. Further,
we may not determine whether the sale of Body Up LLC’s
assets included trademark rights. Absent evidence
establishing the asserted date of first use in the

also TMEP §1201 (8th ed. 2011); McCarthy §19:53 (“The applicant
must be the owner of the mark. This basic rule applies to both
use-based and Intent to Use applications.”) A licensee cannot be
the applicant. Wilson Jones Co., 337 F.2d 670, 143 USPQ 238
(CCPA 1964); Marcon Ltd. v. Avon Products Inc., 4 USPQ2d 1474
(TTAB 1987) (“[O]nly the owner (the licensor here) may register a
trademark.”)
Cancellation No. 92049838
10
registration, a registrant may rely on the filing date of
the registration’s underlying application. Thus, the
earliest date upon which respondent may rely for priority
purposes is November 15, 2005. Therefore, in order to
establish priority, petitioner must show that it used its
mark in connection with its goods prior to November 15,
2005.
Respondent argues that there “is no documentary
evidence of record of sales in the U.S. by Petitioner prior
to Respondent’s usage, Petitioner’s self-serving oral
testimony and interrogatory answers being uncorroborated and
undocumented. Proof of use, prior or otherwise, requires
more than a bald, self-serving statement of a party
unaccompanied by documentary evidence and uncorroborated by
other witnesses or other evidence.” Br. pp. 4-5. Further,
respondent contends that “petitioner has failed to establish
by admissible, credible, competent evidence that it, Bello
Fitness Ltda., now exists and has owned the mark in Brazil
since 2001 and that it, Bello Fitness Ltda., existed in 2002
and used the mark in the U.S. in 2002. There is not a shred
of evidence of record to establish those allegations, of
which, only ownership of a Brazilian registration was
Cancellation No. 92049838
11
pleaded... paragraphs 2-14 of the Petition do not reference
alleged priority of use by the Petitioner.” Br. pp. 10-11.6
We find that the pleading sufficiently sets out a
ground of priority and likelihood of confusion and that, to
the extent it did not sufficiently specify petitioner’s date
of first use, we consider the pleading amended to set forth
the 2002 date inasmuch as respondent did not object to the
testimony regarding this use during the deposition upon
written questions and further opened the door by relying on
Interrogatory No. 3(d), allowing petitioner to rely on all
of Interrogatory 3 which references this use date. See Fed.
R. Civ. P. 15(b); Trademark Rules 2.120(j)(5) and (7).
Although not addressed by the parties, we find that the
word mark BODY UP taken in its entirety is, on its face,
inherently distinctive. Otto Roth & Co., Inc. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Petitioner relies on the following evidence to
establish priority. Mr. Filho testified that he is a
shareholder in petitioner with 49% shares and he is a
shareholder in the third-party Body Up, LLC, with 20%
shares. He testified that he has no relationship with

6 Respondent also argues that any dispute arising under the
distribution agreement between petitioner and a third party, Body
Up, LLC, must be resolved by arbitration, but then argues that
the agreement was “de facto terminated.” Br. p. 12. As
discussed above, this issue must be resolved by an arbitration
panel.

Cancellation No. 92049838
12
respondent. Filho Test. p. 1. He obtained part ownership
of Body Up, LLC in order to “insure Bello Fitness Ltda
interest in the ‘BODY UP’ trademark was protected.” Id. p.
3. As to the first use of the mark, Mr. Filho testifies as
follows:
Q. What was the date of first use of Bello
Fitness’s use of the ‘Body Up’ mark in the United
States?

A. It was in 2002.

Q. Was this usage done through Body Up, LLC?

A. No, at that time Mrs. Marcia Garcia was
Body Up distributor in the USA.

Id.

On the relationship between himself, petitioner and
Body Up, LLC he testifies:
Q. 9. Was Bello Fitness’ signing the
Distribution Agreement with Body Up, LLC based on
its unique relationship between the two parties?

A. Yes.

Q. Did you, as a shareholder, agree to any
transfers of trademark rights from Body Up, LLC to
Body Up Fitness, LLC?

A. NO, I was not consulted about that and I
did not know about that transaction.

Q. Did Bello Fitness agree to any transfers
of trademark rights from Body Up, LLC to Body Up
Fitness, LLC?

A. NO, Bello Fitness Ltda was not consulted
about that and did not know about that
transaction.

Id. pp. 3-4.
...
Cancellation No. 92049838
13

Q. Have you ever exercised any rights you
claim to believe you have as a shareholder in Body
Up LLC?

A. As a minority shareholder and Body Up
trademark representative, I told her that she
could not give the Body Up LLC using rights of
BODY UP trademark to other companies (Body Up
Fitness LLC and others), but no answer at all.

Q. If so, when, where, and how did you
exercise those rights?

A. When we found out that there were other
companies using the trademark BODY UP. The date
was at the end of 2005. First talks were by Skype
in 2005. The last one was by formal letter in
August, 2007. ...

Id. pp. 7-8.

Ms. Almeida testifies that Body Up, LLC sold products
from petitioner but that Body Up Fitness, LLC never sold
goods from petitioner. Almeida Test. p. 16. With regard to
use of the mark, she testifies, “We started using Body Up
mark in 2003 in the U.S.” Almeida Test. p. 15. Body Up,
LLC started in November 2003. Almeida Test. p. 8 Exh. A.
Respondent, Body Up Fitness, LLC, started on April 1, 2004.
From these facts we determine that the use in 2003 is from
the importation of petitioner’s goods into the U.S. by Body
Up, LLC, petitioner’s distributor.
Finally, petitioner states in its verified responses to
Interrogatory No. 3 that since December 2002 it exported
active wear tops, shorts and pants bearing the mark BODY UP.
As to U.S. sales, petitioner responded that it has had
Cancellation No. 92049838
14
$4,200 in sales in 2002, $22,000 in sales in 2003, and
$165,000 in sales in 2004. Pet. NOR Exh. A. At a minimum,
these responses are consistent with Mr. Filho’s testimony
regarding petitioner’s first use.
Absent documentation, the testimony of a witness can be
sufficient to prove priority. See 3 J. Thomas McCarthy:
McCarthy on Trademarks and Unfair Competition § 16.06(2)
(4th ed. 2005). We find that the witness, Mr. Filho, was
competent to testify as to petitioner’s use of the mark BODY
UP in connection with its clothing in the United States and
the testimony is not characterized by contradictions or
inconsistencies. Further, Mr. Filho’s testimony is
consistent with petitioner’s responses to Interrogatory No.
3 and Ms. Almeida’s testimony further supports petitioner’s
export and sales in the United States of its clothing under
the BODY UP mark.
The record does not reveal contradictions or
inconsistencies as to the use of the mark. Respondent
attempts to draw contradictions by referencing provisions of
the distribution agreement (e.g., the grant of license and
termination provisions), but the meaning and effect of these
provisions must be determined by an arbitration panel. In
addition, respondent points to petitioner’s admission that
“on February 26, 2004, [it] gave up any right to register or
to use the alleged Brazilian BODY UP mark in the United
Cancellation No. 92049838
15
States to BODY UP LLC, a Florida limited liability company.”
Resp. NOR Exh. 3 (petitioner’s response to respondent’s
requests for admission no. 6). This admission does not
clearly contradict petitioner’s assertion of ownership
rights or that the use would inure to its benefit.
In short, the documents and any inferences to be drawn
from them are not sufficient to render Mr. Filho’s testimony
unreliable.
Finally, with regard to respondent’s argument that
petitioner’s pending application based on an “intent to use”
the mark in commerce undermines petitioner’s assertion of
prior use, the declaration in an application of an intent to
use is not inconsistent with actual use. Cf. Fair Indigo
LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007)
(ITU applicant may rely on its use prior to application for
purposes of priority (citing Corporate Document Svcs. Inc.
v. I.C.E.D. Mgmt. Inc., 48 USPQ2d 1477, 1479 (TTAB 1998))).
The filing of an intent-to-use application is in no way an
admission of non-use.
In view of the testimony presented as to petitioner’s
use prior to respondent’s November 15, 2005 filing date,
petitioner has established its priority with respect to its
common law rights in the mark BODY UP for active wear
clothing.
Cancellation No. 92049838
16
Accordingly, petitioner has proven its claim of
likelihood of confusion under Section 2(d) of the Trademark
Act.
Decision: The petition for cancellation is granted
based on the claim of likelihood of confusion under Section
2(d). Registration No. 3295316 will be cancelled in due
course.