Innovative Fitness Consultants Inc.v.Michael A. Rickett

Trademark Trial and Appeal Board

Jul 31, 2007

No. 91157339 (T.T.A.B. Jul. 31, 2007)

Date: July 31, 2007

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Innovative Fitness Consultants Inc.

v.

Michael A. Rickett
_____

Opposition No. 91157339
to application Serial No. 76202180
filed on January 31, 2001
_____

Douglas T. Johnson of Miller & Martin PLLC for Innovative
Fitness Consultants Inc.

Erik M. Pelton for Michael A. Rickett.
______

Before Hohein, Walsh and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Applicant has filed an application to register the mark
INNOVATIVE FITNESS and design, shown below,

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91157339

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for “physical fitness and food nutrition instruction;
physical education services; teaching in the fields of
physical fitness and nutrition; training in the use of
weightlifting, physical fitness and sports training
equipment” in Class 41.1 Registration has been opposed by
Innovative Fitness Consultants Inc. on the ground of
priority of use and likelihood of confusion with its
previously used mark, shown below as it appears in the
record.

Opposer specifically alleges that it provides fitness
related services in the United States and Canada, including
personal fitness training and lifestyle management services
in the nature of physical fitness consultations, and that
long prior to the filing date of the opposed application,
and since at least 2000, Opposer and its predecessors in
title have continuously and extensively advertised, promoted
and offered fitness related services in interstate and
foreign commerce in connection with opposer’s distinctive IF
INNOVATIVE FITNESS mark (“IF mark”). Opposer further

1 Serial No. 76202180, filed on January 31, 2001, and claiming
January 1, 1992 as the date of first use of the mark anywhere and
Opposition No. 91157339

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alleges that it is the owner of the IF mark in at least
those territories where it has used the mark and may
reasonably expand its use by virtue of its undisputed use of
the mark in connection with fitness related services since
as early as 1995; that while Applicant claims use of its
INNOVATIVE FITNESS and design mark since 1992, any such use
was geographically remote from and unknown to opposer either
actually or constructively prior to the January 31, 2001
filing date of application Serial No. 76202180; and that
Applicant’s use of its INNOVATIVE FITNESS and design mark is
substantially limited to the state of Colorado.
Applicant, in its answer, admits that “Applicant’s mark
and Opposer’s mark are likely to create confusion, mistake
or to deceive the public which [sic] used in connection with
the relevant services,”2 but otherwise denies the salient
allegations of the notice of opposition.
THE RECORD
The record consists of the pleadings; the file of
application Serial No. 76202180; the testimony deposition,
with Exhibits 1-30, of Jeff Sharpe, Opposer’s president and
CEO; Opposer’s notice of reliance on Applicant’s first
supplemental response to Opposer’s interrogatories, nos. 7,
41, and 42 together with Applicant’s first supplemental

in commerce. The word “FITNESS” has been disclaimed.
2 Answer at paragraph 9.

Opposition No. 91157339

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response to Opposer’s first request for production of
documents, No. 153; and the testimony deposition, with
Exhibits A-D, F, and Y-Z, of Applicant, Michael A. Rickett.
FINDINGS OF FACT
Opposer

Opposer, Innovative Fitness Consultants Inc. (“ICF”),
is one of the largest personal training companies in North
America. Opposer commenced use of its IF INNOVATIVE FITNESS
mark in connection with providing personal fitness and
lifestyle management services in Vancouver, British Columbia
Canada in 1995. (Sharpe test., pp. 7 and 9). Opposer
opened its first facility in 1997 in Vancouver. (Sharpe
test., pp. 7-8). Opposer expanded its fitness training
services in 2000 to Bellevue, Washington and later to San
Rafael, California. The opening of the facility in
Bellevue, Washington was on August 1, 2000. (Sharpe test.,
p. 13). All of Opposer’s fitness facilities include the
“INNOVATIVE FITNESS name” in the exterior signage, and the
interior signage displays the “INNOVATIVE FITNESS name and

3 While these documents (i.e., copies of Applicant’s Federal
Income Tax returns for the years 1999-2002) are not proper
subject matter for introduction by notice of reliance, inasmuch
as applicant did not object to their submission, we will treat
the material as being stipulated into the record for whatever
probative value it may have. See Jeanne-Marc, Inc. v. Cluett,
Peabody & Co., 221 USPQ 58, 59 n. 4 (TTAB 1984).

Opposition No. 91157339

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logo.”4 (Sharpe test., pp. 31-32 and Exh. 13). Promotional
efforts include, inter alia, brochures distributed through
IFC facilities and to IFC customer families, friends,
associates, and local businesses and corporate offices
(Sharpe test., pp. 14-15); and complimentary training cards,
water bottles, T-shirts, fitness related activities and
newsletters distributed to clients, coffee shops and local
recreation and community centers. (Sharpe test., pp. 19-20,
22, 23, 28 and 37). Opposer also sponsors charitable
fundraising activities, which commenced in Washington State
in late-2000. (Sharpe test., pp. 20-21). Opposer also
established a web site in 1999, which is the source of many
of Opposer’s promotions and its newsletter. (Sharpe test.,
p. 24-25, 27). Opposer is also the recipient of third-party
publicity, both early in its operation and with the later
affiliation of Jeff Garcia (the former San Francisco 49ers
quarterback)5 with the company in connection with the 2003
opening of the San Rafael, California facility. (Sharpe
test., pp. 29, 30, 40-42 and Exh. 10, 11 and 28).

4 It is evident from Exhibit No. 13 that Mr. Sharpe is
referring to the pleaded IF INNOVATIVE FITNESS mark with regard
to both the exterior and interior signage.

5 At the time the Sharpe deposition was taken, Mr. Garcia
apparently was the 49ers quarterback.

Opposition No. 91157339

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Applicant
Applicant is a fitness service provider whose business
consists of personal training, providing continuing
education for certified professionals and certifying new
prospective personal trainers, aerobic instructors and
fitness professionals. (Rickett test., p. 6). Applicant
first used the name “Innovative Fitness” and INNOVATIVE
FITNESS word mark in connection with his fitness business in
January of 1992 when he started working with Healthworks
Fitness Club in Fort Collins, Colorado. (Rickett test., p.
6). Applicant promotes his business using the “brand name”
Innovative Fitness with business cards6, brochures and
through a network of personal referrals. (Id.). The mark
appearing on the brochures is as follows:

(Rickett test, Exhs., A and B). Applicant’s business grew
steadily from 1993 to 1997 and in 1997, he began traveling
to other states as a result of the Innovative Fitness

6 Although applicant did not make a copy of his business cards
of record, he describes the information on the business cards as
“just the logo of the fitness figure that has got the I and the
F, and it says Innovative Fitness.” (Rickett test., p. 23).
Applicant, after viewing exhibit A, stated “[t]hat’s what it
looks like.” (Id).

Opposition No. 91157339

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business. (Rickett test., p. 7). The purpose of the out-
of-state travel was to participate in the American Aerobic
Association International (“AAAI”) and International Sports
Medicine Association (“ISMA”) conferences – also referred to
as World One conferences and other fitness conferences as an
instructor or promoter or evaluator. Since 1997, Applicant
has participated in 25 to 30 of these fitness conferences a
year and “go[es] or promote[s] probably another 5 to 10 each
year.” (Rickett test., p. 10). Applicant is, and has been
since 1997, identified in conference brochures as president
of Innovative Fitness. (Rickett test., p. 9 and Exhs. D and
Z). Applicant has submitted a sample invoice to AAAI for
payment for participation in the AAAI’s fitness conferences.
Applicant’s INNOVATIVE FITNESS and design mark shown on the
invoice of record is as follows:

(Rickett test., Exh. Y). Applicant also uses the INNOVATIVE
FITNESS and design mark on a web site. When asked when he
first created his web site, applicant responded:
Opposition No. 91157339

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That was -- let me find the exact date here.
It was in 1999, I’m thinking. The exact
date was -- the actual launching was in
2000, but the actual put together and the
trial of this was probably October 1999.
The actual on-line was 2000.

(Rickett test., p. 12). Applicant’s INNOVATIVE FITNESS and
design mark, as it appeared on the front page of the web
site on March 18th, 2002 is as follows:7

(Rickett test., p. 12 and Exh. C).
PRELIMINARY MATTER
During the testimony deposition of Michael Rickett,
Opposer objected to the introduction of Exhibit Z,
consisting of a letter from the President of AAAI (American
Aerobics Association), on hearsay grounds. Inasmuch as
Opposer did not maintain its objection in its brief, it is
considered waived and we have considered Exhibit Z in this
decision. See Hard Rock Café International (USA) Inc. v.
Elsea, 56 USPQ2d 1504, 1507 n. 5 (TTAB 2000); and Reflange
Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n. 4 (TTAB
1990).

7 Applicant indicates that this is the “general presentation”
that the web site has maintained since its creation in 1999.
(Rickett test., pp. 13-14).
Opposition No. 91157339

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ANALYSIS
Standing

An opposer must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Richie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). The evidence of record shows that Opposer is the
source of fitness related services with which it uses its IF
INNOVATIVE FITNESS and design mark. We find this fact,
together with the fact that Opposer’s likelihood of
confusion claim is not frivolous satisfies the requirements
for standing in this case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Likelihood of Confusion

Likelihood of confusion has been admitted by Applicant
in his answer at paragraph 9. Additionally, the parties, in
their briefs, agree that their disputed marks are
confusingly similar when used in connection with the
parties’ respective physical fitness services.
Priority

To establish priority on a likelihood of confusion
claim brought under Trademark Act § 2(d), a party must prove
that, vis-à-vis the other party, it owns "a mark or trade
name previously used in the United States ... and not
abandoned...." Trademark Act Section 2, 15 U.S.C. § 1052.
A party may establish its own prior proprietary rights in a
Opposition No. 91157339

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mark through ownership of a prior registration, actual use
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§
2(d) and 45, 15 U.S.C. Section 1052(d) and 1127; T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994). Priority is an issue
in this case because Opposer does not own an existing
registration upon which it can rely under § 2(d). See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
The record is clear that opposer first used its IF
INNOVATIVE FITNESS and design mark in the United States upon
the opening of its Bellevue, Washington location on August
1, 2000. Applicant contends that he first used the
INNOVATIVE FITNESS and design mark, which is the subject of
the application, in 1992 and first used the mark in
interstate commerce in 1997. Opposer, on the other hand,
argues that Applicant did not use the INNOVATIVE FITNESS and
design mark in the style that is the subject of the present
application until sometime in the year 2000, and essentially
that, on this record, Applicant can only claim January 31,
Opposition No. 91157339

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2001, the filing date of his application, as his date of
first use. Consequently, opposer asserts that it has
priority.
Although, as noted above, Applicant asserts first use
of his applied–for mark in 1992 (and first use of his mark
in interstate commence in 1997), there is no proof of any
use of that mark in the record. Accordingly, the earliest
date upon which Applicant can rely for purposes of priority,
absent tacking, is the filing date of his application, i.e.,
January 31, 2001, a date that is subsequent to Opposer’s
August 1, 2000 first use date.8 Section 7(c) of the
Trademark Act, 15 U.S.C. § 1057(c). See Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1428-29, n. 13 (TTAB 1993); and Brewski Beer Co. v.
Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). We
therefore presume that Applicant’s claim of priority is
based on his earlier use of the word mark and business name
INNOVATIVE FITNESS and/or his previous INNOVATIVE FITNESS
and design marks, and that Applicant attempts to defeat

8 We feel compelled to note that the specimen of record was
taken from Applicant’s web site, but obviously is a different
page than that submitted as Exhibit C to Applicant’s testimony
deposition. Even if we were to consider the specimen in use as
early as “2000,” the date attested to by Applicant as the
launching date of his web site, given the indefiniteness of 2000,
applicant’s first use date of the specimen for purposes of
priority would have been December 31, 2000, also a date
subsequent to opposer’s first use date. See generally, TBMP §
903.07.
Opposition No. 91157339

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Opposer’s claim of priority by “tacking” on such earlier
use. We find, however, that Applicant is not entitled to
tacking in this case.
“Tacking” (for priority purposes) of a party’s use of
an earlier mark or name onto its use of a later mark or name
is permitted only in rare circumstances, and only where the
applied-for mark is “the same mark” as the ones previously
used. That is, whether the applied-for mark and the
previous marks/names are “legal equivalents,” i.e., whether
they create the same, continuing commercial impression such
that the consumer would consider all of the marks as the
same mark. See Van Dyne-Crotty Inc. v. Wear-Guard Corp.,
926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991); Ilco v.
Ideal Security Hardward Corp., 527 F.2d 1221, 188 USPQ 485
(CCPA 1976); and Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPQ2d 1048 (TTAB 1992).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same,
continuing commercial impression such that the consumer
would consider all of the marks as the same mark. See In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807 (Fed. Cir. 2001) (reversed on other grounds); and
Compania Insular Tabacalera, S.A. v. Camacho Cigars, Inc.,
167 USPQ 299 (TTAB 1970). A minor difference in the marks
such as mere pluralization or an inconsequential
Opposition No. 91157339

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modification of a later mark will not preclude application
of the rule. See In re Loew’s Theatres, Inc., 223 USPQ513
(TTAB 1984) aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985); and In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB
1977). At the same time, however, it is clear that the
“legal equivalents” standard is considerably higher than the
standard for “likelihood of confusion.” Thus the fact two
(or more) marks may be confusingly similar does not
necessarily mean that they are legal equivalents. Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., supra.
In this case, we find that Applicant’s earlier used
INNOVATIVE FITNESS word mark and/or name is not the legal
equivalent of his applied-for mark because the involved mark
contains a distinctive design element. We further find that
Applicant’s previously used INNOVATIVE FITNESS and design
marks, shown below,

are not the “same” as the mark which is the subject of this
proceeding, shown below,
Opposition No. 91157339

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because the change in the design results in a material
alteration of Applicant’s earlier design marks.
A material alteration exists if the old and new formats
do not create the same general commercial impression. See
J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair
Competition §§19:58:50 and 19:133 (4th ed. 2007). Here, the
positioning of the words “Innovative Fitness” on the right
side of the stylized fitness figure, as opposed to the left
side, and the addition of the visually prominent swoosh,
reminiscent of a fitness ribbon and extending from a point
between the legs of the stylized fitness figure and
continuing past the word component, and on which the word
“Fitness” is superimposed, constitutes a material alteration
of the designs previously used by Applicant, as the swoosh
and word placement are integral components of Applicant’s
involved INNOVATIVE FITNESS and design mark. See, e.g., In
re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (The applicant
sought to change its special form mark from

Opposition No. 91157339

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to standard character form, TURBO, thus deleting the swirling
design element, which was determined to be “an essential part
of the original mark and hence ‘integrated’ into the
composite”); and In re Dillard Department Stores, 33 USPQ2d
1052 (Comm’r 1993) (the registrant sought to change, by post
publication amendment, its mark from

to
,
but the Commissioner determined that the mark, as
registered, clearly contained “salient design features apart
from the word portion” and that, particularly in view of the
goods involved (clothing items), “the syllabication and
unique layout could lead someone to view the mark as a play
on the terms ‘in’ and ‘vestments’.”).9 In view of the

9 But see, for example, In re 1175856 Ontario Ltd., 81 USPQ2d
1446 (TTAB 2006) (Applicant sought to register the mark
, but the mark appeared in the specimens of record as .
The Board found that the removal of a curved design from the mark
was not a mutilation or an incomplete representation of the mark
actually used, since the letters “WSI” and the globe design
created a separate and distinct commercial impression and not an
impermissible mutilation.). The curve design in that case was
neither visually dominant nor an integral part of the remaining
design.

Opposition No. 91157339

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foregoing, we find that none of Applicant’s earlier used
INNOVATIVE FITNESS marks (with or without a design element)
are legal equivalents of his applied-for mark.10
In sum, because the earliest date upon which Applicant
can rely for purposes of priority is the filing date of his
application, and given that Applicant is not entitled to
tack on its earlier use of the INNOVATIVE FITNESS word mark
and/or other INNOVATIVE FITNESS and design marks, priority
rests with Opposer. As previously indicated, applicant
admitted in his answer that confusion is likely.

10 Opposer also argues at length that even if Applicant is found
to have priority, Opposer is at least an “immediate junior user”
and, therefore, Applicant is not entitled to an unrestricted
registration. Opposer also contends that “whether the words
‘previously used’ in Section 2(d) of the Lanham Act refer to an
absolute priority between the parties, or instead refer to
previous use with respect to the filing date of the application”
is an issue of “first impression” in this case.

In inter partes proceedings before the Board where the
plaintiff asserting a Section 2(d) claim does not own a
registration, the Section 2(d) priority test is not whether the
plaintiff’s unregistered mark or trade name was “previously used”
as of the defendant’s application filing date, but rather whether
it was “previously used” as of the earliest date on which the
defendant can rely for priority purposes. See, e.g., American
Security Bank v. American Security and Trust Co., 571 F.2d 564,
1997 USPQ 65, 66 (CCPA 1978); Corporate Document Services Inc. v.
I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998); and
Intersat Corp. v. International Telecommunications Satellite
Organization, 226 USPQ 154, 156 n.5 (TTAB 1985).

Further, while Section 2(d) governs a party’s entitlement to
concurrent registration with a substantially similar mark under
certain conditions and limitations, entitlement to such
concurrent use registration is determined by the Board solely
within the context of a concurrent use proceeding. See
generally, TBMP § 1100 et. seq and the authorities cited therein.

Opposition No. 91157339

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Decision: The opposition is sustained and registration to
applicant is refused.