Roman Torgovitsky

Trademark Trial and Appeal BoardOct 15, 2014

No. 85808451 (T.T.A.B. Oct. 15, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: October 15, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Torgovitsky _____ Serial No. 85808451 _____ Jason R. Lee of Lee, Lee & Associates PC, for Roman Torgovitsky. Donald Johnson, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ Before Cataldo, Mermelstein and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Roman Torgovitsky (“Applicant”) seeks registration on the Principal Register of the mark SOMA SYSTEM (in standard characters) for the services set forth below: Health club services, namely, providing instruction and equipment in the field of physical exercise premised on myofascial release, trigger point therapy, and mindfulness medication; Physical education services, premised on myofascial release, trigger point therapy, and mindfulness medication; Physical fitness conditioning classes, premised on myofascial release, trigger point therapy, and mindfulness medication; Physical fitness instruction, premised on myofascial release, trigger point therapy, and mindfulness medication; Physical fitness studio services, namely, providing exercise classes, body Serial No. 85808451 - 2 - sculpting classes, and group fitness classes, premised on myofascial release, trigger point therapy, and mindfulness medication; Providing assistance, personal training and physical fitness consultation to corporate clients to help their employees make physical fitness, strength, conditioning, and exercise alterations in their daily living, premised on myofascial release, trigger point therapy, and mindfulness medication; Yoga instruction, premised on myofascial release, trigger point therapy, and mindfulness medication in International Class 41.1 Applicant disclaimed the exclusive right to use the word “system.” The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the previously registered mark SOMA REFLEXOLOGY for “massage; massage and therapeutic shiatsu massage; massage therapy services,” in Class 44.2 Registrant disclaimed the exclusive right to use the word “reflexology.”3 1 Application Serial No. 85808451 was filed on December 20, 2012, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as September 1, 2012. The word “myofascial” is defined as “of or relating to the fascia surrounding and separating muscle tissue.” Dictionary.com derived from THE AMERICAN HERITAGE STEDMAN’S MEDICAL DICTIONARY (2002). The word “fascia” is defined as “a sheet or band of fibrous connective tissue enveloping, separating, or binding together muscles, organs, and other soft structures of the body.” Id. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 2 Registration No. 4212607, issued September 25, 2012. 3 “Reflexology” is defined as “a method of massage that relieves nervous tension through the application of finger pressure, especially to the feet.” TheFreeDictionary.com derived from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000) attached to Applicant’s August 25, 2013 response to an Office action. See also Wikipedia defining “reflexology” as “an alternative medicine involving the physical act of applying pressure to the feet, hands, or ears with specific thumb, finger, and hand techniques Serial No. 85808451 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, “finding of similarity as to any one factor [sight, sound, connotation or commercial impression) alone ‘may be sufficient to support a without the use of oil or lotion. It is based on what reflexologists claim to be a system of zones and reflex areas that they say reflect an image of the body on the feet and hands, with the premise that such work effects a physical change to the body.” August 25, 2013 response to an Office action. Serial No. 85808451 - 4 - holding that the marks are confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant’s mark is SOMA SYSTEM and Registrant’s mark is SOMA REFLEXOLOGY. The marks are similar because they start with the word “Soma” followed by a descriptive term. Because the words “System” in Applicant’s mark and “Reflexology” in Registrant’s mark are descriptive, it is the word “Soma” in both marks which creates the dominant commercial impression. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d Serial No. 85808451 - 5 - 1842, 1846 (Fed. Cir. 2000), quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983) (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). The significance of the word “Soma” as the dominant element of both marks is further reinforced by its location as the first part of both marks. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). In noting that the word “Soma” is the dominant element of both marks, we are aware that the likelihood of confusion analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Serial No. 85808451 - 6 - Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 224 USPQ at 751. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). On the other hand, 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 a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. As noted above, we focus on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). The word “Soma” is defined as follows: 1. The entire body of an organism, exclusive of the germ cells. 2. The axial part of a body, including the head, neck, trunk, and tail. 3. The body of a person as contrasted with the mind or psyche.4 We find the commercial impression of the marks to be similar. Applicant’s mark suggests a physical fitness system focusing on the entire body. Similarly, Registrant’s mark is suggestive of massage therapy focusing on the entire body through the feet. 4 Dictionary.com derived from THE AMERICAN HERITAGE STEDMAN’S MEDICAL DICTIONARY (2002). In BRAVE NEW WORLD (1932) by Aldous Huxley, “Soma” is the name of a state-dispensed narcotic producing euphoria and hallucination. Online Etymology Dictionary (2010). See also Merriam-Webster online (m-w.com) attached to Applicant’s December 2, 2013 Response to Office action. Serial No. 85808451 - 7 - In view of the foregoing, consumers are likely to view Registrant’s massage services mark as SOMA brand REFLOXOLGY services. Likewise, consumers are likely to view Applicant’s fitness services as the SOMA brand fitness SYSTEM and mistakenly believe that Applicant’s SOMA services and Registrant’s SOMA services are different lines emanating from the same source because of the similarity of the marks. Accordingly, we find that the mark SOMA SYSTEM and SOMA REFLEXOLOGY are similar in terms of appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the services, established, likely- to-continue channels of trade and classes of consumers. Registrant’s services are “massage; massage and therapeutic shiatsu massage; massage therapy services.”5 Applicant is seeking to register its mark for health club services, physical education and fitness conditioning, personal training and yoga instruction premised on myofascial release, trigger point therapy, and mindfulness medication. As explained by the excerpt from Applicant’s website submitted as a specimen of use, Applicant’s services are “a physical and mental self-cultivation practice in which practitioners move, breathe, and apply pressure with state of the art myofascial tools designed to compress and elongate muscles and fascia.” The Trademark Examining Attorney has submitted numerous use-based, third- party registrations for services listed in both the application and registration at issue. Third-party registrations which individually cover a number of different 5 “Shiatsu” massage is defined as “a Japanese massage technique that includes the use of acupressure.” Dictionary.com based on the RANDOM HOUSE DICTIONARY (2014). Serial No. 85808451 - 8 - services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are representative.6 MARK REG. NO. SERVICES TODAY’S LIFESTYLE PRODUCES TOMORROW’S RESULTS! 3289721 Massage; Yoga instruction; physical fitness conditioning classes; physical fitness instruction and consultation 3973067 Massage; reflexology services; consulting services in the fields of fitness and exercise; providing instruction in the field of physical exercise; personal fitness training services and consultancy; physical fitness training services; yoga instruction PHLEX HEALTH AND WELLNESS STUDIO 4156994 Massage therapy services; providing exercise classes, group exercise fitness classes, individual training exercise session; yoga classes 4387407 Massage therapy; providing instruction and equipment in the field of physical exercise; physical fitness instruction; providing lessons and instruction in the field of physical fitness, body conditioning, injury prevention and health OX BOX 4205943 Massage therapy services; physical fitness training services 6 We have not included the entire description of services for each registration. We have listed only the services relevant to this appeal. Serial No. 85808451 - 9 - In addition, the Trademark Examining Attorney submitted excerpts from third- party websites, listed below, showing the same entities rendering fitness or yoga services and massage services under the same mark. 1. March 13, 2014 Office action a. Hands On Advanced Therapies for Optimal Health (handson- austin.com). Hands On advertises therapeutic exercise classes featuring myofascial stretching, strengthening and stabilization. It also advertises advanced massage therapy featuring myofascial release techniques. b. StudioMix (studiomix.com) StudioMix advertises a wide variety of fitness instruction, including foam roll release classes for “self-myofascial release of trigger points in the muscles.”7 “Foam rolling is a way of massaging away muscle soreness in trigger points, and preparing your muscles for deeper stretching.”8 StudioMix also advertises massage services “for relaxation, restoration, injury treatment, and total body wellness, we offer a range of practitioners with expertise from head to toe.” c. Cleveland Yoga (clevelandyoga.com) “Cleveland Yoga is a Baptiste Yoga Affiliate studio.” In addition to its yoga classes, Cleveland Yoga advertises massage services featuring reflexology and myofascial release techniques. 7 “Trigger points are sore spots that form within muscles or tendons.” Id. 8 Id. Serial No. 85808451 - 10 - d. Main Street Yoga (mainstreetyoga.com) Main Street Yoga advertises yoga and fitness classes. One of its workshops is a “Myofascial, Prana, and the Bandhas …. A Yin Approach (merging anatomy with spirit). Main Street Yoga also advertises massage therapy featuring deep tissue massage, myofascial release, and neuromuscular therapy. 2. December 23, 2013 Office action a. Parkpoint Health Clubs (parkpointhealthclub.com) Parkpoint Health Club advertises fitness training, Pilates, and massage therapy services that incorporate myofascial release and trigger point work. b. Sporting Health Club (sportinghealthclub.com) Sporting Health Club advertises fitness, group exercise, personal training and massage therapy services. c. Frost Tower Executive Health Club (fbthealthclub.com) The Frost Tower Executive Health Club advertises personal training, group fitness and massage therapy services. It also advertises “Myofascial Release.” Myofascial Release is a safe and very effective hands-on technique that involves applying gentle sustained pressure into the Myofascial connective tissue restrictions to eliminate pain and restore motion. MFR is a whole body approach which works to lengthen and broaden the fascial tissue, increasing blood flow and oxygen to facilitate healing. This modality is especially effective on people who have had surgery, broken a bone, been in an accident, do or have done repetitive motion (i.e. weight lifting or computer work). Myofascial Release Treatment can be performed prior to the massage directly on the skin with or without oils or creams. Serial No. 85808451 - 11 - 3. September 17, 2013 Office action a. MySportsClubs (mysportsclubs.com) MySportsClubs advertises group exercise, small group training, personal training, yoga and sports massage services. b. ACAC Fitness & Wellness Centers (acac.com) ACAC Fitness & Wellness Centers advertise personal training, small group training and massage services. c. BMG Fitness SF (bmgfitnesssf.com) BMG Fitness SF advertises massage therapy and personal training services. 4. April 10, 2013 Office action a. Sport&Health (sportandhealth.com) Sport&Health advertises personal training, fitness programs, fitness classes, yoga and massage services. b. Princeton Club (princetonclub.com) Princeton Club advertises a cardiovascular training center, strength training services, and massage services, including deep tissue and trigger point techniques and myofascial release techniques for injury recovery and repetitive stress pain. The evidence submitted by the Trademark Examining Attorney, especially the websites from third parties, demonstrates that fitness/yoga services and massage services are related, move in the same channels of trade and are sold to the same classes of consumers. In response, Applicant makes the following argument: Serial No. 85808451 - 12 - The Applicant’s services are physical fitness instruction. The Registrant’s services are massage services. The services offered by each mark, are offered in different classes, have very specific, divergent audiences and are in no way related as services likely to cross paths in the market place.9 Applicant’s arguments fly in the face of the evidence that establishes just the opposite. Furthermore, the classification of the services has no bearing on the question of likelihood of confusion. See Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the Applicant or Registrant has identified their goods or services that is controlling. See Nat'l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990). We find that Applicant’s fitness and yoga related services and Registrant’s massage services are related, move in the same channels of trade and are rendered to the same classes of consumers. D. Degree of consumer care. Applicant argues that the relevant consumers exercise a high degree of care when they select fitness services and massage services.10 For example, Registrant’s clients are “connoisseurs of massage therapy” and Applicant’s clients specifically seek fitness instruction in myofascial release techniques. In addition, the services are not purchased on impulse because the fees for both types of services are not inexpensive. Even assuming that consumers exercise a high degree of care, in view 9 Applicant’s Brief, p. 8. 10 Applicant’s Brief, pp. 8-9. Serial No. 85808451 - 13 - of the similarity of the marks and the relatedness of the services, we would consider this du Pont factor to weigh in favor of a finding of likely confusion. Even careful consumers are likely to be confused when presented with similar marks used in connection with similar services. In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). E. Applicant’s registration for SOMA SYSTEM for fitness apparatus. Applicant claims ownership of Registration No. 4468984 for the mark SOMA SYSTEM, in standard character form, for “apparatus for physical training for medical use; foam rollers for use in physical therapy; manually-operated exercise equipment for physical therapy purposes; massage apparatus; physical exercise apparatus, for medical purposes; myofascial tools, namely, foam rollers for use in myofascial physical therapy,” in Class 10. Applicant argues that because these goods are offered for sale in connection with Applicant’s fitness services, to affirm the refusal to register in the application before the Board in this appeal would be incongruous.11 With respect to Applicant’s estoppel-like argument, the registered mark is used in connection with fitness products while in the application before us the mark is used in connection with fitness services. It is settled, that the USPTO is not barred from examining the registrability of a mark when Applicant seeks to register the mark for different services [or additional goods] as it does here, even when the 11 Applicant’s Brief, p. 9. Serial No. 85808451 - 14 - different services are closely related to the products listed in a prior registration. In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). As the Board stated in In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986): The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated. See, for example, In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985) [other citations omitted]. Section 20 of the Trademark Act, 15 USC Section 1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not be delegated by adoption of conclusions reached by Examining Attorneys on different records. Suffice it to say that each case must be decided on its own merits based on the evidence of record. We obviously are not privy to the record in the files of the registered mark and, in any event, the issuance of a registration by an Examining Attorney cannot control the result of another case. F. Balancing the factors. Because the marks are similar, the services are related, the services move in the same channels of trade and are sold to the same classes of consumers, we find that Applicant’s mark SOMA SYSTEM for the services set forth in the application so resemble the previously registered mark SOMA REFLEXOLOGY for “massage; massage and therapeutic shiatsu massage; massage therapy services” as to be likely to cause confusion. Decision: The refusal to register Applicant’s mark SOMA SYSTEM is affirmed.