Richard Drengberg and Smart Fitness, LLCv.Othili Park

Trademark Trial and Appeal BoardMar 14, 2011

No. 91189026 (T.T.A.B. Mar. 14, 2011)

Mailed: March 14, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Richard Drengberg and Smart Fitness, LLC v. Othili Park _______ Opposition No. 91189026 to Application No. 77495101 filed on June 10, 2008 _______ Stephen L. Anderson of Anderson & Associates for Richard Drengberg and Smart Fitness, LLC. Robert Salter of Salter & Michaelson for Othili Park. _______ Before Quinn, Walters and Taylor, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Richard Drengberg and Smart Fitness, LLC (“opposers”) filed their opposition to the application of Othili Park to register the standard character mark SMART BODY FITNESS for “Exercise balls; Exercise bars; Exercise equipment, namely, chest expanders; Exercise equipment, namely, chest pulls; Exercise equipment, namely, shoulder stretcher using resistance cables; Manually-operated exercise equipment; THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91189026 2 Personal exercise mats; Spring bars for exercising; Stress relief balls for hand exercise,” in International Class 28.1 The application includes a disclaimer of “BODY FITNESS” apart from the mark as a whole. As a ground for opposition, opposers assert that applicant’s mark, when applied to applicant’s goods, so resembles opposer Smart Fitness’s previously used and registered mark SMART FITNESS for “health club services, health and fitness training for individuals”2 as to be likely to cause confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). As an additional ground for opposition, opposers assert that applicant made no use of the mark SMART BODY FITNESS as a mark in commerce for some or all of the goods listed in the application prior to the filing date of the application. Trademark Act Section 1(a), 15 U.S.C. §1051(a).3 1 Application Serial No. 77495101, filed June 10, 2008, based upon use of the mark in commerce, alleging dates of first use and first use in commerce as of June 3, 2008. 2 Registration No. 2816630, issued February 24, 2004, in International Class 41. Recorded assignments include the assignment from Smart Fitness, LLC of Texas to Richard Drengberg on April 1, 2006; and the assignment from Richard Drengberg and Smart Fitness, LLC of Texas to Smart Fitness, LLC of California on July 25, 2008. The current owner of record of the registration is Smart Fitness, LLC of California. The registration includes a disclaimer of “FITNESS” apart from the mark as a whole. [Sections 8 and 15 affidavits accepted and acknowledged, respectively.] 3 Opposer also asserted a claim of fraud, but acknowledged in its brief that it could not establish its claim and opposer did not pursue it. We consider opposer’s claim of fraud to be waived and we have given it no consideration. Opposition No. 91189026 3 Applicant, in its answer, denied the salient allegations of the claims. The Record The record, by operation of the Trademark Rules, consists of the pleadings and the file of the involved application. Opposers submitted by notices of reliance a copy of pleaded Registration No. 2816639 showing its status and title and portions of that registration record; a copy of the record of opposer’s trademark application serial no. 76499372, a copy of the assignment documents recorded at the USPTO in connection with opposers’ pleaded registration, portions of third-party application files, and copies of third-party registrations.4 Opposers also submitted the testimony deposition of Richard Drengberg, opposer and president of opposer Smart Fitness LLC of California, with accompanying exhibits. Applicant submitted the testimony deposition of Benny Park, applicant’s husband and participant in applicant’s business, with accompanying exhibits. Applicant submitted a duplicate of the testimony exhibits by notice of reliance. Both parties filed briefs on the case. 4 Opposer submitted excerpts from the subject application file, which is already of record by operation of the Trademark Rules. Opposition No. 91189026 4 Procedural Issue In their main brief, opposers object to consideration of all documents submitted by applicant by notice of reliance on the ground that they are improper for submission by notice of reliance. In their reply brief, opposers limited their objection to applicant’s exhibits 1, 3, 9, 10, and 12-21. Applicant’s exhibit no. 1, applicant’s notice of taking testimony, is not properly of record by notice of reliance; nor did applicant’s witness, Mr. Park, testify about it or otherwise authenticate it. Exhibit no. 1 is excluded. Applicant’s exhibit no. 3, applicant’s letter responding to opposers’ cease and desist letter, is properly of record as a deposition exhibit to Mr. Park’s testimony, during which he provided sufficient foundation and authentication. Applicant’s exhibit nos. 9-10 and 12-21, portions of various application and registration records and applicant’s business card, are properly of record as deposition exhibits to Mr. Park’s testimony, during which he provided sufficient foundation and authentication. We have considered these documents only for what they state on their face and any statements by applicant’s witness as to, for example, the significance of actions taken by the examining attorney in a Opposition No. 91189026 5 particular case, is mere conjecture and has not been considered. We have not considered any of the duplicate filings by notice of reliance. Opposers’ objections thereto are moot. Factual Findings Opposer Richard Drengberg began using the mark SMART FITNESS in connection with his health and fitness personal training business in February 2003 in Texas. He offered these services, at least in part, at third-party health and fitness clubs. He used the mark on business cards and direct mail advertisements for his services, on the letterhead of written individualized training programs, and on shirts worn while rendering the services. Prior to applying to register the mark, he transferred ownership of the mark to Smart Fitness, LLC, a Texas limited liability company, in which name the application was filed and the registration issued. Mr. Drengberg subsequently moved himself and his personal training business to California; Smart Fitness, LLC of Texas assigned the mark and registration to Mr. Drengberg on April 1, 2006; and he dissolved the Texas company, of which he had been an officer and principal. He used the mark in his individual capacity in connection with the same fitness and health personal training services in California until he assigned the mark and registration, on July 25, 2008, to Smart Fitness, LLC, a Opposition No. 91189026 6 California limited liability company. He has always been an officer and principal of the California limited liability company.5 The health and fitness personal training services of Opposer Smart Fitness, LLC of California have been rendered continuously by opposer Richard Drengberg and various employees, all of whom wear uniform shirts bearing the mark. Opposer’s services are rendered, at least in part, at third- party health and fitness clubs. In the approximately five years prior to trial, opposer Smart Fitness, LLC of California has used the mark also on dietary and nutritional supplements, bottled water, snack food, clothing, including sweatshirts and T-shirts, gym bags, coolers and fitness machines and equipment. Regarding applicant, Mr. Benny Park, applicant’s witness, identified himself, his wife, Othili Park, and their son, Eugene Park, as the principals in what is essentially a family business of manufacturing overseas and selling in the United States hand-held general fitness products identified under the mark. The business is incorporated as PosFit, Inc., and Eugene Park is its 5 We note that the assignment to Smart Fitness, LLC of California lists both Richard Drengberg and Smart Fitness, LLC of Texas as assignors, although Mr. Drengberg was the sole assignee listed in the prior assignment. We consider the addition of the Texas company as an assignor in the second recorded assignment to be merely additional verbiage, since Mr. Drengberg was the only owner of record at the time of the second assignment. Opposition No. 91189026 7 president. PosFit, Inc. is the corporation that operates applicant’s business. Ms. Park, applicant, is characterized by Mr. Benny Park as the “inventor,” although it is unclear whether she “invented” the business plan or the products manufactured and sold under the mark SMART BODY FITNESS. Ms. Park was the president of PosFit, Inc. in 2008 (See Park Dep. pp. 35 - 37); and Mr. Benny Park identified Ms. Park as “the owner” of the mark (Id., p. 38). Applicant sells the identified products to sporting goods retailers in the United States. For buyers who do not require commercial packaging, applicant affixes a computer- generated label to the products. Applicant uses commercial, professionally designed packaging bearing the mark for products sold primarily to large retailers, who require such packaging. Applicant began selling products identified by the mark SMART BODY FITNESS on June 3, 2008, applicant’s claimed date of first use; however, the record does not indicate specifically what products identified by the mark were sold as of that date. The record includes copies submitted by opposers of eleven use-based third-party registrations for marks that Opposition No. 91189026 8 identify both health club and/or fitness services and exercise equipment.6 Analysis Standing Because opposers have properly made the pleaded registration of record, we find that opposer Smart Fitness, LLC of California, the owner of the mark and registration, has established its standing to oppose registration of applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). The evidence establishes that Mr. Drengberg began a personal training business and subsequently formed a Texas limited liability company that owned the mark and registration. That company assigned the mark to Mr. Drengberg, who used the mark in connection with the identified services as an individual for several years, and then, he formed a California limited liability company to which he transferred ownership of his business and his 6 Third-party registrations that do not have claims of use in commerce are not probative of U.S. consumer perception and have not been considered. Third-party applications submitted by opposer are proof only of their filing and are not probative herein. Similarly, other applications and registrations owned by applicant are not probative herein. We are not bound by and we draw no conclusions from actions taken by the examining attorneys in either the third-party applications or in applicant’s other applications and registrations. Opposition No. 91189026 9 registered mark. Mr. Drengberg has remained the principal in the business, rendering the identified health and fitness personal training services, along with employees of the business, under the mark. There appears to be little actual distinction between Mr. Drengberg and his limited liability company. It is Mr. Drengberg, and others at his direction, who are actually rendering the services identified by the mark. However, because Mr. Drengberg assigned the registration to his company, he does not use the mark in his individual capacity. His use and the use by any employees inures to the benefit of the company, which is the owner of the mark and registration. As such, Mr. Drengberg cannot establish standing as an individual plaintiff.7 Because standing is a threshold question with respect to both the claims of likelihood of confusion and non-use by applicant as of the filing date, these claims must fail as to individual opposer Richard Drengberg. Thus, we turn to the questions of priority and likelihood of confusion and the alleged non-use by applicant as of the filing date with respect to opposer Smart Fitness, LLC of California (“Smart Fitness” or “opposer”). 7 Additionally, any use that Mr. Drengberg made of the mark in his individual capacity prior to transfer of the registration to the company also inures to the current owner and assignee of the registered mark, Smart Fitness, LLC of California. Opposition No. 91189026 10 Priority In view of opposer Smart Fitness, LLC of California’s ownership of a valid and subsisting registration, there is no issue regarding this opposer’s priority as to the identified services. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Opposer has established its common law use of the mark in connection with exercise equipment since at least five years prior to trial, which precedes both the filing date of the application and the June 3, 2008, date of first use to which applicant’s witness testified. Therefore, opposer has also established its priority of use with respect to these goods. Likelihood of Confusion Our determination of likelihood of confusion under Section 2(d) must be based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 Opposition No. 91189026 11 (Fed. Cir. 1997). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and/or services and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The relevant du Pont factors in the proceeding now before us are discussed below. The Goods and Services It is well established that the goods and/or services of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods and/or services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 Opposition No. 91189026 12 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of the goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of likelihood of confusion must be determined based on an analysis of the goods and/or services recited in applicant’s application vis-à-vis the goods and/or services identified in opposer’s pleaded registration(s). Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992. Opposer Smart Fitness has established that it has registered and used its mark in connection with health and fitness personal training services and used its mark in connection with goods including fitness equipment since prior to the filing date of the subject application. While the record does not specify the nature of the fitness equipment in connection with which opposer has used the mark, given the relatively broad range of exercise equipment identified in the application herein, we find that such goods are related because they are all likely to be considered for use as part of an individual exercise program, either at home or at a gym. Opposition No. 91189026 13 Moreover, we find that opposer’s health and fitness training services and applicant’s goods are related.8 Opposer Smart Fitness uses the mark in connection with both fitness training services and exercise equipment, which indicates that at least those consumers familiar with opposer Smart Fitness are accustomed to seeing such goods and services identified by the same mark. The third-party registrations for marks identifying both parties’ goods and services suggest that the goods and services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). The du Pont factor pertaining to the relationship of the goods and services weighs in opposer’s favor. Trade Channels, Purchasers and Conditions of Sale There is no evidence as to the trade channels and purchasers of opposer’s goods; however, applicant’s identified goods contain no limitations on the trade channels or purchasers. As found above, opposer’s and applicant’s goods are related and, thus, we find that the channels of trade and purchasers are at least overlapping. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 8 Because we find a relationship between these services and applicant’s goods, it is unnecessary to consider whether a relationship also exists between opposer’s identified health club services in the same International Class and applicant’s goods. Opposition No. 91189026 14 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). To the extent that the purchasers are gyms and health clubs, such purchasers are likely to be knowledgeable about the equipment they purchase. However, there is no evidence about this in the record, and such knowledgeable purchasers are not immune from confusion when the marks are as similar as these marks and the goods with which they are used are as closely related as the goods herein. See In re General Electric Company, 180 USPQ 542 (TTAB 1973). Thus, we do not find the fact that some purchasers may be knowledgeable to be a mitigating factor. Moreover, purchasers and ultimate users include the general public; and these ordinary consumers would use nothing more than ordinary care in making their purchasing decisions. By definition, opposer’s health and fitness training services for individuals are rendered to the general public and, as stated by Mr. Drengberg, the services are rendered, at least in part, in health clubs and gyms; and the parties’ goods and services end up with the same consumers. Thus, the trade channels and class of purchasers of the respective goods and services are overlapping. These du Pont factors also weigh in favor of opposer. The Marks With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their Opposition No. 91189026 15 appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). We add that, while we must base our determination on a comparison of the marks in their entireties, we are guided, equally, by the well established principle that, in articulating reasons for reaching a conclusion on the issue of confusion, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The registered mark is SMART FITNESS, which includes a disclaimer of FITNESS. Applicant’s mark is SMART BODY FITNESS, which includes a disclaimer of BODY FITNESS. We take judicial notice of the relevant definitions in Merriam- Opposition No. 91189026 16 Webster’s Collegiate Dictionary (11th ed. 2003) of “fit” as “adjective, sound physically and mentally: Healthy” and of “fitness” as “noun, the quality or state of being fit.” There is no question that both FITNESS and BODY FITNESS are highly descriptive in connection with both health and fitness training and exercise equipment because the goal of undertaking the training services and using the exercise equipment is a fit body. While the term SMART may have several slightly suggestive connotations in connection with the respective goods and services, the record does not address this contention. We find that SMART is the dominant portion of opposer’s mark SMART FITNESS and that applicant’s mark encompasses opposer’s mark in its entirety with the addition only of the highly descriptive term BODY. It is immaterial that this descriptive term divides SMART from FITNESS. Considering the marks in their entireties, the appearance of the respective marks is similar, the connotations are essentially the same, and the commercial impressions of the respective marks are substantially similar. We are not persuaded otherwise by applicant’s arguments to the contrary or by its ownership of other registrations that include the word SMART in the registered marks. This du Pont factor also weighs in opposer Smart Fitness, LLC’s favor. Opposition No. 91189026 17 Likelihood of Confusion Conclusion We find that the du Pont factors weigh strongly in favor of a finding of likelihood of confusion with the mark of opposer Smart Fitness, LLC. Consumers familiar with opposer’s goods and services offered under the mark SMART FITNESS would be likely to believe, upon encountering applicant’s mark SMART BODY FITNESS for the exercise equipment specified in the application, that the goods and services originate from or are associated with or sponsored by the same entity. Applicant’s Use of Mark Because opposer Richard Drengberg has not established standing, we do not discuss this claim with respect to him. In the notice of opposition, opposer Smart Fitness alleges that applicant did not use the mark in connection with of the identified goods as of the filing date of the application. Opposer did not specify which goods and, although applicant did not object, opposer did not clarify which goods this claim pertains to during trial or in their brief. While the record is unclear as to whether applicant had used the mark on all goods as of the filing date, it is opposer’s burden to prove such non-use and it has failed to do so. Therefore, the opposition is dismissed as to this claim. Opposition No. 91189026 18 For the first time in the brief, opposer argues that applicant is not the proper owner of the mark in the application, suggesting that the corporation PosFit, Inc. is the correct owner and, thus, the application is void ab initio. We do not consider this claim as it was not in the pleading, applicant did not consent to its being tried, nor does the record reflect that the issue was in fact tried. Moreover, even if we were to consider this claim, opposer has only established that PosFit, Inc. uses the mark, not that Othili Park is not the owner of the mark or that the corporation is the proper owner of the mark. Decision: The opposition is sustained on the ground of likelihood of confusion as to opposer Smart Fitness, LLC. The opposition is dismissed on the ground of likelihood of confusion as to opposer Richard Drengberg and on the ground of non-use as to both opposers. Registration to applicant is refused.