RelaxStation Ltd.

Trademark Trial and Appeal Board

Sep 23, 2004

No. 76402644 (T.T.A.B. Sep. 23, 2004)

Mailed:
September 23, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re RelaxStation Ltd.
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Serial No. 76402644
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Satch U. Ejike, Esq. for RelaxStation Ltd.
Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Hohein and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
RelaxStation Ltd. (applicant) has applied to register
the mark shown below for "massage therapy to ease sore and
aching bodily joints, muscles, and feet, through natural
non-medical relaxation procedures," in Class 44.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76402644
2
The application, filed on April 30, 2002, is based on
applicant's allegation of use of the mark in commerce, and
asserts March 23, 2002 as the date of first use of the mark
and April 17, 2002 as the date of first use of the mark in
commerce.
Registration was finally refused by the examining
attorney, under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), in view of the registration of the mark
RELAXATION STATION for "body, head and neck massage
services," in Class 42. Registration No. 2220094 issued
January 26, 1999; an affidavit of continuing use has been
filed under Section 8 of the Trademark Act, 15 U.S.C. §
1058.
In presenting their arguments on likelihood of
confusion, applicant and the examining attorney discuss
different authorities, although the factors considered by
the respective authorities largely overlap.1 The Du Pont
factors govern our analysis of likelihood of confusion in
this case. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1361, 177 USPQ 563, 567 (CCPA 1973). For a recent
1 Counsel for applicant apparently practices within the
jurisdiction of the United States Court of Appeals for the Sixth
Circuit and has discussed likelihood of confusion factors
analyzed in that circuit.
Ser No. 76402644
3
restatement of these factors, see In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
or differences between the marks and the similarities or
differences between the respective goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks”). Further,
when the goods or services in an application and a cited
registration are virtually identical, as in this case, it
has been held that the marks need not be as close as they
might otherwise have to be to support a finding of
likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Having alluded to the overlap in the identified
services, we will now consider them, the classes of
consumers for such services and the channels of trade for
marketing such services, to the extent there is any
evidence of record on these factors. In doing so, we must
focus on the services as identified in the involved
Ser No. 76402644
4
application and registration. See In re Dixie Restaurants,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(internal quotation marks omitted) (“Indeed, the second
DuPont factor expressly mandates consideration of the
similarity or dissimilarity of the services as described in
an application or registration”). Applicant appears to
stress that its services involve massage of "joints,
muscles, and feet" while registrant's services involve
massage of the "body, head and neck." This, however, is a
distinction only in semantics and we find the respective
massage services, based on the involved identifications, to
clearly overlap. This is so despite applicant's listing of
its services as therapeutic in nature, for registrant's
identification is not limited in any way and must be read
to include therapeutic massage of the body, head and neck.
As for the classes of consumers, in this case, there
are no restrictions in either identification and both
applicant and registrant must be presumed to market their
massage services to all possible consumers of such
services. Thus, both applicant and registrant are presumed
to offer their services to the general public. Applicant
stresses that it is located in Ann Arbor, Michigan and
asserts that registrant's services are provided only in San
Francisco and, therefore, there is no overlap in consumers.
Ser No. 76402644
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We note, however, that there is nothing in the record
regarding the geographic area in which registrant offers
its services and that the examining attorney is correct in
observing that the registration of registrant's mark on the
Principal Register constitutes "constructive use of the
mark [as of the filing date of the underlying application],
conferring a right of priority, nationwide in effect." See
Section 7(c) of the Trademark Act, 15 U.S.C. §1057(c).
Thus, it is inapposite that applicant has stated that it
has not offered its services outside Ann Arbor and has no
plans to do so in the future.
As to channels of trade through which the applicant
and registrant may market their services, we note again
that neither identification contains any restrictions, and
the services must be presumed to be offered in any manner
typical for such services. This would obviously include
not only offering the services in physical locations
established by applicant or registrant but also might
include rendering of services at athletic events, perhaps
in spas or hotels, or in any location in which potential
customers for massage services may be found.
In sum, for purposes of our analysis, the services,
classes of consumers and channels of trade overlap. One
Ser No. 76402644
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final point relative to the services and classes of
consumers, however, remains to be considered.
Applicant argues that when services are "personal" in
nature the consumer is "ordinarily ... discriminating and
sophisticated." We have nothing in the record regarding
the cost of either applicant's or registrant's services,
the type or style of massage offered, or the length of time
involved in receiving a typical massage from applicant or
registrant. Since massages can vary in type, length and
price, there may be circumstances in which prospective
customers would be deliberative and discriminating,
carefully weighing cost and skill of the masseur; but there
may also be circumstances in which prospective customers
might be offered quick, less-expensive massage services and
may be more impulsive in their purchasing decisions with
less concern for the credentials of the masseur.
Moreover, even if we assume the respective customers
to be discriminating, we would not conclude, on that factor
alone, that there would be no likelihood of confusion.
When legally identical services are marketed under, as we
discuss below, very similar marks, even careful or
discriminating consumers may be confused. Weiss Associates
Ser No. 76402644
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Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990).2
Turning to a comparison of the involved marks,
applicant argues at length that the marks are significantly
different, but we find to the contrary.
First, applicant argues that it is particularly
significant that it uses a stylized font and a design
element in its mark. However, when a mark is registered in
typed form, as is the RELAXATION STATION mark in the cited
registration, the registration of the typed mark is not
limited to any particular font and we must consider all
reasonable forms of display in which the mark may be
presented. Phillips Petroleum Co. v. C. J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1971). We find that the font
used in applicant's stylized presentation of the term
RELAXSTATION would be a reasonable form of display for the
registered mark RELAXATION STATION. Accordingly, in our
analysis of likelihood of confusion, we consider that the
marks may look very similar, at least apart from
applicant's design element.
2 Applicant has acknowledged that consumers may not have the
opportunity to compare the marks side by side and may have a
vague or general recollection of each. We agree and find that
this circumstance, too, means that even sophisticated consumers
might be confused when seeing the marks at different times.
Ser No. 76402644
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Second, we do not find that the design element in
applicant's mark is significant enough to avoid a
likelihood of confusion. The application refers to the
design element as a "coiled spring whose tension unwinds
into a smooth spiral."3 Many consumers may simply perceive
the design element as stylized underscoring for the words.
In any event, the words RELAXSTATION clearly dominate the
mark, visually and in terms of the commercial impression
created. See Dixie, 41 USPQ2d at 1534 (Applicant's
addition of design element and generic term to registered
mark did not create a different commercial impression).
Third, we find the marks similar in sound. While the
total number of syllables in registrant's mark is greater,
the "-ATION" portion of RELAXATION rhymes with the STATION
portion of registrant's mark and may serve more to
emphasize the sound of STATION than to differentiate the
words RELAX and RELAXATION. When spoken, the additional
syllables in registrant's mark will not be a clear and
obvious way to draw a distinction between the two marks.
Finally, and most significantly in this case, we find
the marks to create virtually identical commercial
3 This has not been included in the application as a description
of the mark and appears under the section of the application form
entitled "specimen description"; however, it suggests what
applicant considers the design to represent.
Ser No. 76402644
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impressions. Each mark, considered in conjunction with the
identified services, creates the impression of a place
where one can relax, i.e., experience relaxation, through
massage. We rely on the presumptive similarity in forms of
display, similarity in sound and the virtually identical
connotations of the marks to reach our conclusion that the
marks are very similar for likelihood of confusion
purposes. In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111,
113 (Fed. Cir. 1983) (“the [USPTO] may reject an
application ex parte solely because of similarity in
meaning of the mark sought to be registered with a
previously registered mark”).
Applicant has argued that RELAXATION STATION is either
a generic term or so highly descriptive that it cannot
acquire distinctiveness as a mark.4 In support of this
assertion applicant recites a list of purported other uses
of RELAXATION STATION and lists Internet web sites where
these other uses can be found. Applicant has not, however,
provided copies of these web sites, so the record is devoid
of any evidence on which applicant might rely to argue that
4 Applicant acknowledges that a mark registered on the Principal
Register is presumed not to be descriptive. Brief, p. 6, n. 5.
Nonetheless, applicant has strenuously argued that registrant's
mark is entitled to no more weight in comparing the marks than is
a generic term. We remind applicant that an ex parte proceeding
is not the proper forum for such a challenge to a registered
mark. See Dixie, 41 USPQ2d at 1534-35.
Ser No. 76402644
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the registered mark is so commonly used or registered as to
warrant only a narrow scope of protection. Accordingly, we
reject applicant's contention that "Relaxation Station's
generic value encroaches on RelaxStation's fanciful and
stronger value" so that applicant's mark "should enjoy
greater protection" than the registered mark. Brief, p. 7.
Moreover, we agree with the examining attorney that, even
if we were to assume registrant's mark was weak and
entitled to a narrow scope of protection, it is entitled to
be protected against registration of a very similar mark
(virtually identical in commercial impression), for the
same services.
One final point to address is applicant's contention
that there have been no instances of actual confusion. Of
course, as applicant has noted, its services have been
rendered in a very limited geographic area, and those of
registrant may likewise have been rendered in a limited,
and different, area. Thus, there is nothing in the record
to indicate that there have been any opportunities for
instances of actual confusion to occur. Accordingly, this
factor is entitled to no weight.
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.