Simple Mobility Tools LLCv.McKiernan Physical Therapy

Trademark Trial and Appeal BoardSep 8, 2020

91240341 (T.T.A.B. Sep. 8, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: September 8, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Simple Mobility Tools LLC v. McKiernan Physical Therapy _____ Opposition No. 91240341 _____ Jeffrey Sturman of Sturman Law LLC for Simple Mobility Tools LLC McKiernan Physical Therapy, pro se _____ Before Taylor, Adlin, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background McKiernan Physical Therapy (“Applicant”) seeks registration on the Principal Register of the following mark: Opposition No. 91240341 - 2 - for massage apparatus and instruments in International Class 10.1 By its Notice of Opposition, Simple Mobility Tools LLC (“Opposer”) opposes registration of the mark based on alleged likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Opposer’s common law mark MOBILIZER for what Opposer described in the Notice of Opposition as “physical fitness equipment, namely devices used to deliver pressure for training and recovery of the body.”2 In its Answer, Applicant denies the salient allegations in the Notice of Opposition.3 1 Application Serial No. 87641987 was filed on October 11, 2017 under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based on alleged bona fide intention to use the mark in commerce. The application includes the following description: “The mark consists of capital letter ‘M’, color white, followed by a space, followed by a line, color white, followed by a space, capital letter ‘M’, color white. Underneath this, the word, in capital letters ‘MUSCLE’, white color, followed by a space, the word, in capital letters ‘MOBILIZER’ white color. All of this in blue background.” The colors white and blue are claimed as a feature of the mark. 2 1 TTABVUE 4. Except where otherwise indicated, citations refer to TTABVUE, the Board’s online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Although Opposer’s ESTTA coversheet for the Notice of Opposition also referred to its Application Serial Number 87717065 as a basis for the opposition, 1 TTABVUE 1-2, Opposer did not refer to the application in the body of its Notice of Opposition, did not attach for the record a copy of the application to its Notice of Opposition, and did not introduce the application into evidence during its testimony period. Opposer incorrectly asserts in its Reply Brief that its pleaded application “forms part of the record of the proceeding without any action by the parties,” 22 TTABVUE 5. Unlike the file of the opposed application, which automatically becomes part of the record of an opposition proceeding under Trademark Rule 2.122(b), a pleaded application does not. 37 C.F.R. § 2.122(b). Accordingly, we have given Opposer’s application no consideration. 3 4 TTABVUE. Opposition No. 91240341 - 3 - The record includes the pleadings and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application. Opposer also submitted a testimony declaration with five exhibits from Scott Burson, its President and CEO.4 Applicant submitted a testimony declaration with two exhibits from Edward George Mckiernan IV, its owner.5 Both parties filed briefs. Although Applicant’s Brief does not comply with Trademark Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1), in that it is not double-spaced, we exercise our discretion to accept it because it appears that the Brief would fall within the applicable page limits had it been double-spaced. See In re University of Miami, 123 USPQ2d 1075, 1077 n.2 (TTAB 2017) (Board exercised its discretion to consider applicant’s appeal brief and reply that were not double -spaced because it appeared that they would fall within the applicable page limits had they been double - spaced). II. Entitlement to Statutory Cause of Action6 To establish entitlement to a statutory opposition cause of action under Section 13 of the Trademark Act, 15 U.S.C. § 1063, Opposer must demonstrate a real interest 4 8 TTABVUE. 5 19 TTABVUE. Applicant first submitted a declaration with exhibits by Mr. Mckiernan earlier in the proceeding, 15 TTABVUE, but because it fell outside Applicant’s trial period, the Board instructed Applicant to “re-file and re-serve its testimony declaration and exhibits during its trial period, as reset by [that] order.” 18 TTABVUE 11 n.12. 6 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125- 26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition No. 91240341 - 4 - in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Mr. Burson testified that Opposer has used the common law mark MOBILIZER since 2016 for massage apparatuses and instruments.7 Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (common law use of similar mark sufficient to establish standing). Based on such common law use, Opposer has asserted a plausible likelihood of confusion claim against the involved application, thereby showing a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief of damage. We therefore conclude that Opposer has proven its entitlement to bring this opposition proceeding. III. Priority We next consider whether Opposer has established priority. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB 2013) (citing Hydro- Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987)). Opposer has not pleaded ownership of a federal registration, but instead relies on common law rights in its mark. Applicant is entitled to rely on the October 11, 2017 filing date of its intent-to-use application as its constructive use 7 8 TTABVUE 2. Opposition No. 91240341 - 5 - date, and Applicant does not assert an earlier date of use.8 Applicant indicates in its Brief that it does not concede priority. As support for Opposer’s alleged priority, Mr. Burson testified on behalf of Opposer in his capacity overseeing “all matters related to trademarks, marketing, and advertising” since the company’s inception.9 According to his declaration, Opposer “has been using the MOBILIZER trademark in commerce since at least as early as 2016,” and “has advertised and sold massage apparatus and instruments to customers under the MOBILIZER trademark throughout the United States and globally.”10 The declaration includes information about Opposer’s trade channels and the third-party retailers who have sold the goods. In addition, Mr. Burson attached screenshots, all dated May 29, 2019, showing the goods “currently” marketed under the mark on Opposer’s website,11 Amazon.com,12 and Opposer’s Facebook page.13 He also attached an online review of Opposer’s MOBILIZER product on the Modern Athletic Health website with a URL containing what appears to be the date “2017/05/09.”14 Mr. Burson stated that Applicant “has previously marketed” goods under the mark through Walmart.com,15 and attached screenshots from 8 21 TTABVUE 14-15 (Applicant’s Brief). 9 8 TTABVUE 2 (Burson Declaration). 10 Id. 11 Id. at 3, 7-8. 12 Id. at 10-19. 13 Id. at 21-33. 14 Id. at 35-38. 15 Id. at 3. Opposition No. 91240341 - 6 - Walmart.com dated May 29, 2019, with listings for Mobilizer 6.1, Mobilizer 8.1, and Mobilizer 10.1, stating “This item is no longer available. We’re unable to show you buying options for this item.”16 In Applicant’s Appendix A of its Brief, Applicant makes what it characterizes as evidentiary objections to Mr. Burson’s declaration and exhibits, but what really are arguments about the probative value of Opposer’s evidence to establish priority. As a threshold matter, Applicant first argues that Mr. Burson’s testimony and evidence describing Opposer’s goods “contradict” the description of Opposer’s goods in the Notice of Opposition. In the Notice, Opposer described its goods as “physical fitness equipment, namely devices used to deliver pressure for training and recovery of the body,”17 whereas Mr. Burson’s testimony describes Opposer’s goods as “massage apparatus and instruments.”18 We do not find these descriptions of goods to be inconsistent. “Massage” is defined as “manipulation of tissues (as by rubbing, kneading, or tapping) with the hand or an instrument for relaxation or therapeutic purposes.”19 We note that the Amazon.com page offering Opposer’s goods refers to them as a “roller trigger point release myofascial self massage recovery tool,” that delivers “precise, focused pressure where [the user] need[s] it most.”20 We find that 16 Id. at 40-44. 17 1 TTABVUE 4 (Notice of Opposition). 18 8 TTABVUE 2 (Burson Declaration). 19 We take judicial notice of the definition from the Merriam-Webster online dictionary, https://www.merriam-webster.com/dictionary/massage, accessed on September 1, 2020. See In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-1768 (TTAB 2016) (Board may take judicial notice of online dictionary definitions also available in printed form). 20 8 TTABVUE 10. Opposition No. 91240341 - 7 - Opposer’s goods can be characterized as a massage apparatus as well as a device used to deliver pressure for recovery of the body, such that the description of the goods by Mr. Burson does not contradict the Notice of Opposition. Next, Applicant points out that the declaration and exhibits do not include “sales, dates of sales, nor sales volume,” and “also does not provide evidence of any advertisement costs or figures.”21 Applicant further criticizes the lack of documentary evidence to support the testimony that Opposer’s mark has been in use since 2016. “Oral testimony is, of course, always ‘strengthened by corroborative documentary evidence,’ [Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1184 (TTAB 2017)], but ‘[w]hile it is certainly preferable for a party’s testimony to be supported by corroborating documents, the lack of documentary evidence is not fatal.’ [Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1931 (TTAB 2011)].” Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1608 (TTAB 2018). Applicant did not introduce any evidence suggesting any inaccuracy in Mr. Burson’s testimony as to use of MOBILIZER on Opposer’s goods since 2016, and Applicant did not elect to cross-examine Mr. Burson regarding such testimony. “Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use.” Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). Mr. Burson’s testimony regarding use of MOBILIZER on its goods since 2016 is clear and has not been contradicted, such that “[t]he record provides no sufficient reason for us to disregard or discount” the testimony. Kemi Organics, 126 21 21 TTABVUE 24 (Applicant’s Brief). Opposition No. 91240341 - 8 - USPQ2d at 1608. In addition, while the documents attached to Mr. Burson’s declaration are not dated from 2016, they corroborate his testimony regarding use of the MOBILIZER mark. Accordingly, Opposer has established priority as to massage apparatuses and instruments. IV. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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.”). Opposer bears the burden of proving its claim of Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). Opposition No. 91240341 - 9 - A. The Goods, Trade Channels and Classes of Consumers Our comparison of the goods must be based on the identification in the application and the goods for which Opposer has established common law rights. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In this case, the goods are identical, such that this factor weighs heavily in favor of likely confusion. As to trade channels, Applicant’s identification contains no restrictions, so its goods are deemed to move in all the usual trade channels for massage apparatuses and instruments. See Cunningham, 55 USPQ2d at 1846 (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”). Mr. Burson testified for Opposer that Opposer’s trade channels include fitness expositions, fitness competitions, races, conventions, brick-and-mortar physicians’ offices and fitness facilities, third-party health and athletic websites, third-party online retailers such as Amazon.com, and Opposer’s own website.22 Accordingly, we find that the trade channels and classes of purchasers overlap, and this factor also weighs heavily in favor of likely confusion. 22 8 TTABVUE 3 (Burson Declaration). Opposition No. 91240341 - 10 - B. The Strength of Opposer’s Mark Before we turn to the similarity of the marks, we address the strength of Opposer’s mark, as that will affect the scope of protection to which the mark is entitled. “In determining strength of a mark, we consider both its conceptual strength, based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark.” Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014). As to conceptual strength, Applicant posits, without pointing to supporting evidence, that the common element of the marks at issue, MOBILIZER, “is descriptive or highly suggestive,” so as to be easily distinguishable by additional matter.23 Applicant therefore contends that comparing its “two word phrase, ‘MUSCLE MOBILIZER’ with ‘MUSCLE’ being the first word in the phrase, to that of the Opposer’s one word, being ‘Mobilizer,’ provid[es] different connotations in the minds of consumers.”24 Opposer responds that Applicant’s weakness assertion lacks proof, and argues that “’often the best trademarks are highly suggestive.’”25 Relevant to conceptual strength, Opposer’s promotional statements about its MOBILIZER goods make clear that the goods promote “healthy joint movement and increased overall range of motion,”26 and seek to “maximiz[e] mobility.”27 And the product 23 21 TTABVUE 22 (Applicant’s Brief). 24 Id. at 18. 25 22 TTABVUE 9 (Opposer’s Reply Brief) (quoting Minnesota Mining Mfg. Co. v. Johnson & Johnson, 454 F.2d 1179, 172 USPQ 491, 492 (CCPA 1972)). 26 8 TTABVUE 10 (Burson Declaration, Amazon.com screenshot) (emphasis added). 27 Id. at 8 (Opposer’s website screenshot) (emphasis added). Opposition No. 91240341 - 11 - review Opposer introduced refers to the product helping “improve and expand your thoracic spine mobility and increase your overall range of motion.”28 As to commercial strength, the record contains little relevant evidence. On the one hand, Opposer has not introduced the type of sales or promotional data, media attention, length of use, or direct evidence of consumer perception that would support finding a high degree of commercial strength. See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690-91 (Fed. Cir. 2018). On the other hand, Applicant has not introduced any of the type of third-party use evidence that would suggest commercial weakness. Considering the record as a whole, we find some degree of conceptual weakness of Opposer’s MOBILIZER mark, and an ordinary degree of commercial strength. C. Similarity of the Marks With respect to the marks, we must compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are similar 28 Id. at 37 (modernathletichealth.com screenshot) (emphasis added). Opposition No. 91240341 - 12 - enough that confusion as to the source of the goods offered under the respective marks is likely to result. Cai v. Diamond Hong, 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Where the goods are legally identical, as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Coach Servs., 101 USPQ2d at 1721); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)). Applicant’s mark incorporates the entirety of Opposer’s MOBILIZER word mark. Applicant argues that the M|M and MUSCLE elements of its mark dominate. While the two M’s in Applicant’s mark are large and visually prominent, Applicant has conceded that “[t]he letters, ‘M’ and ‘M’, represent the initials of the first word listed in the mark, that being ‘MUSCLE’, and the second Opposition No. 91240341 - 13 - word listed in the mark, that being ‘MOBILIZER.’”29 For that reason, despite the size of the M|M portion of the mark, we find that consumers would view it as pointing to and reinforcing the wording MUSCLE MOBILIZER. We also reject Applicant’s contention that MUSCLE, but not MOBILIZER, is the dominant element. In the context of a massage apparatus, which performs “manipulation of tissues,”30 we take judicial notice that muscle is a type of tissue.31 As Opposer’s promotional materials state, a massage apparatus like those at issue here “loosens up muscles,”32 and the product review article in the record states that the massage apparatus “will isolate and loosen muscles more quickly than you’ve ever experienced.”33 Thus, because MUSCLE names a type of tissue targeted by Applicant’s massage apparatus, we find that consumers would not focus on this word in particular as source-indicating, and would not rely on it to distinguish the marks. Rather, despite some degree of conceptual weakness of MOBILIZER for a massage apparatus, MOBILIZER would stand out more to consumers as source-indicating. And nothing in the record suggests that consumers would view MOBILIZER differently in Applicant’s mark than in Opposer’s mark. That would not make sense, because the parties’ goods are identical. 29 21 TTABVUE 11 (Applicant’s Brief). 30 https://www.merriam-webster.com/dictionary/massage, accessed on September 3, 2020. 31 Merriam-webster.com/dictionary/muscle entry for “muscle,” accessed September 3, 2020, defining it as “a body tissue consisting of long cells that contract when stimulated and produce motion.” 32 8 TTABVUE 10 (Amazon.com). 33 Id. at 37 (modernathletichealth.com). Opposition No. 91240341 - 14 - Applicant’s blue rectangular design element merely serves as a background on which the wording is superimposed, and therefore fails to mitigate the similar sound, appearance, connotation and commercial impression of the marks. When a mark consists of a literal portion and a design portion, the literal portion is usually more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services; therefore, the literal portion is normally accorded greater weight in determining whether marks are confusingly similar. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); see also CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983). This is certainly true for a design element such as the relatively insignificant background carrier in Applicant’s mark. Because the key element MOBILIZER of Applicant’s mark is identical to Opposer’s mark, and given our findings about the other elements of Applicant’s mark, we find the two marks similar in appearance, sound, meaning and commercial impression. For rational reasons, we may give more or less weight to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Viterra, Inc., 101 USPQ2d at 1908. Likelihood of confusion is often found where, as here, the entirety of one mark is incorporated within another. Omega SA v. Alpha Phi Omega, 118 USPQ2d 1289, 1293 (TTAB 2016) (OMEGA incorporated into ALPHA PHI OMEGA and Design); Christian Broad. Network, Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007) (CBN v. ABS-CBN). Opposition No. 91240341 - 15 - Overall, particularly in the context of identical goods, we find the marks similar in terms of appearance, sound, connotation and commercial impression, such that this DuPont factor weighs in favor of finding a likelihood of confusion. V. Conclusion Opposer’s and Applicant’s marks are similar, and the subject application identifies goods that are the same as those on and in connection with which Opposer has established prior common law rights. The goods travel in overlapping channels of trade to overlapping consumers. Given this, a likelihood of confusion exists. Decision: The opposition is sustained based on the likelihood of confusion.