American Council on Exercisev.Health Care Fitness Integrations, LLC

Trademark Trial and Appeal Board

Dec 19, 2019

91238589 (T.T.A.B. Dec. 19, 2019)

LTS
December 19, 2019

Opposition No. 91238589

American Council on Exercise

v.
Health Care Fitness Integrations, LLC

Before Kuhlke, Mermelstein, and Coggins,
Administrative Trademark Judges.

By the Board:

This case now comes up on Applicant’s motion, filed July 26, 2019, for summary
judgment on the pleaded grounds of descriptiveness, genericness, failure to function,
and likelihood of confusion. The motion is fully briefed.1
We have carefully considered all of the parties’ arguments, presume the parties’
familiarity with the factual bases for their filings, and do not recount the facts or
arguments here except as necessary to explain this decision. See Guess? IP Holder LP
v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).

1 Opposer’s change of correspondence address, filed August 26, 2019, and Applicant’s change
of correspondence address, filed September 16, 2019, are noted, and the Board’s records have
been updated accordingly.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91238589

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I. Background
Applicant seeks registration of the mark MEDICAL EXERCISE TRAINERS, in
standard characters, for “t-shirts” in International Class 25.2 In its notice of
opposition, Opposer alleges prior use and ownership of an application for the mark
ACE MEDICAL EXERCISE SPECIALIST, in standard characters, for “printed
matter, namely, paper signs, books, manuals, curricula, newsletters, informational
cards and brochures in the field of health and fitness” in International Class 16.3 1
TTABVUE 6, ¶ 7. Opposer also alleges prior use of the marks: MEDICAL EXERCISE
SPECIALIST, ACE CERTIFIED MEDICAL EXERCISE SPECIALIST, ACE
CERTIFIED PERSONAL TRAINER, PERSONAL TRAINER, ACE PERSONAL
TRAINER, and PEER FITNESS TRAINER (collectively, with ACE MEDICAL
EXERCISE SPECIALIST, “Opposer’s Marks”) “for a variety of … goods and services.”
Id. at 6, ¶ 8.
As grounds for opposition, Opposer alleges that Applicant’s mark is merely
descriptive, generic, and fails to function as a trademark because it is merely

2 Application Serial No. 87064536; filed June 8, 2016, based on use of the mark in commerce
under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). “EXERCISE TRAINERS” is
disclaimed.
3 Application Serial No. 87549195; filed July 31, 2017, based on use of the mark in commerce
under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). “MEDICAL EXERCISE
SPECIALIST” is disclaimed. Application Serial No. 87549195 issued as Registration No.
5588801 on October 23, 2018. When an opposer pleads ownership of an underlying
application in the notice of opposition, the opposer may make the registration which issues
during the opposition of record without having to amend the notice of opposition to assert
reliance on the registration. See UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042,
1045 n.12 (TTAB 2009).
Opposition No. 91238589

3
ornamental or decorative. Id. at 6-11, ¶¶ 9-25. Opposer also alleges that Applicant’s
mark is likely to be confused with each of Opposer’s Marks. Id. at 11-17, ¶¶26-58.
In its first amended answer, Applicant admits that it “has not proffered any
evidence to support a Section 2(f) claim of acquired distinctiveness or a claim of
secondary meaning” (12 TTABVUE 4, ¶ 24) and that “Applicant has no license,
consent or permission from Opposer to use or register Applicant’s mark” (id. at 17,
¶ 58). Applicant otherwise denies the salient allegations in the notice of opposition
and asserts several affirmative defenses.4 7 TTABVUE.
II. The Pleadings
As an initial matter, a decision on summary judgment necessarily requires a
review of the operative pleadings. See Fed. R. Civ. P. 56(a); Asian & W. Classics B.V.
v. Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009). Upon review, we find that the notice
of opposition is legally sufficient to the extent that it contains allegations, which, if
proved, would establish Opposer’s standing, as well as its claims of failure to function
and likelihood of confusion. Opposer’s claims of descriptiveness and genericness,
however, are not sufficiently pleaded.
A. Descriptiveness
To plead a claim that a mark is merely descriptive pursuant to Trademark Act
Section 2(e)(1), a plaintiff must allege that the mark merely describes an ingredient,
quality, characteristic, feature, function, purpose or use of the goods and services
identified in the application. In re Chamber of Commerce of the U.S., 675 F.3d 1297,

4 On January 31, 2019, the Board denied Opposer’s motion to strike Applicant’s affirmative
defenses. 18 TTABVUE.
Opposition No. 91238589

4
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987).
In the notice of opposition, Opposer alleges, inter alia:
10. Pursuant to the Office Action issued on May 19, 2017 against the
‘239 Application Applicant’s website clearly shows the use of
“MEDICAL” and “MEDICAL EXERCISE” in descriptive manners. …
11. Even though Applicant’s trademark contains three words, namely,
MEDICAL EXERCISE TRAINERS, it is established law that if the
individual components of a mark retain their descriptive meaning in
relation to the goods and/or services, the combination results in a
composite mark that is itself descriptive and not registrable. …
12. Given [Opposer’s] stated mission and the services listed on
Applicant’s web pages it is clear that [Opposer] is a competitor of
[Applicant] and therefore, [Opposer] as well as the public in general
should have an equal right to use the terms “MEDICAL”, “EXERCISE”
and “TRAINERS” descriptively in its business. … Therefore, the
application for the mark “MEDICAL EXERCISE TRAINERS” herein
opposed is not registerable as a trademark in that it is merely
descriptive.
1 TTABVUE 7-8.
The notice of opposition fails to set forth the required elements of a claim that
Applicant’s mark MEDICAL EXERCISE TRAINERS in its entirety merely describes
an ingredient, quality, characteristic, feature, function, purpose or use of Applicant’s
goods. Opposer merely alleges that Applicant uses the words “Medical,” “Exercise,”
and “Trainers” descriptively on its website and that Opposer and the public should
be allowed to use those words descriptively. Opposer does not allege that the
composite mark MEDICAL EXERCISE TRAINERS is descriptive of “t-shirts.” As
such, Opposer’s descriptiveness claim (Count I) is insufficiently pleaded and therefore
stricken. In view thereof, Applicant’s motion for summary judgment on the
Opposition No. 91238589

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descriptiveness claim is deemed moot and has been given no consideration. See Asian
and W. Classics B.V., 92 USPQ2d at 1480; Intermed Commc’ns, Inc. v. Chaney, 197
USPQ 501, 503 n.2 (TTAB 1977) (“If a claim has not been properly pleaded, one
cannot obtain summary judgment thereon.”).
B. Genericness
To sufficiently plead a claim that a mark is generic for the identified goods or
services, the plaintiff must plead sufficient facts to allege that (1) the wording at issue
is widely used generically to identify or describe the genus of goods or services
identified in the opposed application or registration sought to be cancelled, and that
(2) consumers primarily understand the wording to be the generic name or identifier
of the genus of goods or services. See, e.g., In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001); H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). In cases
where the proposed mark is comprised of multiple terms, as is the case here, a party
is required to plead that the mark as a whole is generic. Princeton Vanguard, LLC v.
Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830-31 (Fed. Cir. 2015).
In the notice of opposition, Opposer alleges, inter alia:
16. The terms “MEDICAL”, “EXERCISE” and “TRAINERS” have never
gained significance as an indicator of source. These terms have never
had significance as a mark in the United States because of their nature,
and [Applicant] cannot claim any exclusive or proprietary rights to the
terms “MEDICAL”, “EXERCISE” or “TRAINERS”.
17. Therefore, the application for the mark “MEDICAL EXERCISE
TRAINERS” herein opposed is not registerable as a trademark in that
the composite terms are generic.
1 TTABVUE 9.
Opposition No. 91238589

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The notice of opposition fails to set forth the required elements of a claim that
Applicant’s mark MEDICAL EXERCISE TRAINERS in generic for Applicant’s t-
shirts. Opposer merely alleges that the words “Medical,” “Exercise,” and “Trainers”
are each individually generic words in their own right. Opposer does not allege that
the composite mark MEDICAL EXERCISE TRAINERS is generic for “t-shirts.” As
such, Opposer’s genericness claim (Count II) is insufficiently pleaded and therefore
stricken. In view thereof, Applicant’s motion for summary judgment on the
genericness claim is deemed moot and has been given no consideration. See Asian
and W. Classics B.V., 92 USPQ2d at 1480; Intermed Commc’ns, Inc., 197 USPQ at
503 n.2.
III. Summary Judgment
A. Legal Standard
Summary judgment is appropriate only where there are no genuine disputes as to
any material facts, thus allowing the case to be resolved as a matter of law. Fed. R.
Civ. P. 56(a). The party seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute of material fact, and that it is
entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record,
a reasonable fact finder could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
Opposition No. 91238589

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USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light most favorable to the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The
Board may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
B. Ornamental/Decorative
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines a “trademark” as “any
word, name, symbol, or device, or any combination thereof … used by a person … to
identify and distinguish his or her goods … from those manufactured or sold by others
and to indicate the source of the goods, even if that source is unknown.” It is well
settled that not every designation that is placed or used on a product necessarily
functions as a trademark and not every designation adopted with the intention that
it perform a trademark function necessarily does so. In re Hulting, 107 USPQ2d 1175,
1177 (TTAB 2013) (citing Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177
USPQ2d 149, 154 (TTAB 1973)).
The critical inquiry in determining whether a designation functions as a mark is
how the designation would be perceived by the relevant public. TRADEMARK MANUAL
OF EXAMINING PROCEDURE (“TMEP”) § 1202.03-04 (Oct. 2018) and cases cited therein.
To make this determination, the Board must consider evidence of record showing how
the designation is actually used. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB
Opposition No. 91238589

8
2010) (citing In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455 (TTAB 1998)). The
manner in which the mark is actually used is the determinative factor. See Michael
S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1135 (TTAB 2000).
Applicant attaches and cites to its specimen of use (19 TTABVUE 64), and argues
that the “specimen shows use of Applicant’s mark that is not merely decorative or
ornamental” in that “[t]he specimen plainly shows a t-shirt made available in
proximity to Applicant’s mark that is located at the top right of the pictured t-shirt”
offered for sale on the webpage (id. at 7-8).
In response, Opposer argues that Opposer has not been given the opportunity to
obtain discovery concerning: “1) [t]he nature of Applicant’s use of Applicant’s Mark,
i.e. whether the Mark is used only as printed on clothing; 2) how consumers would
perceive Applicant’s Mark; 3) the size, location, and dominance of Applicant’s Mark
on Applicant’s goods; 4) any specimens of use of Applicant’s Mark or screenshots of
Applicant’s goods sold on Applicant’s website; [and] 5) Applicant’s correct/incorrect
use of the ‘TM’ or ‘®’ symbols.” 22 TTABVUE 6. Opposer, however, did not file a
motion for discovery under Fed. R. Civ. P. 56(d).
Upon careful consideration of the parties’ arguments and evidence, we find that
Applicant has demonstrated the absence of a genuine dispute of material fact that
MEDICAL EXERCISE TRAINERS is neither ornamental nor decorative as used on
the specimen in connection with Applicant’s goods. The website-based specimen of
use clearly shows use of the asserted mark MEDICAL EXERCISE TRAINERS in
association with the goods in a “point of sale nature.” In re Sones, 590 F.3d 1282, 93
Opposition No. 91238589

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USPQ2d 1118, 1122-24 (Fed. Cir. 2009); TMEP § 904.03(g) (2018). Accordingly,
Applicant’s motion for summary judgment on Opposer’s failure to
function/ornamental claim (Count III) is granted.
C. Likelihood of Confusion
Likelihood of confusion involves an analysis of all of the probative facts in evidence
that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also M2 Software Inc. v.
M2 Commc’ns Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 UPSQ2d 1201, 1203 (Fed. Cir. 2003). Typically, the two primary factors are the
similarity or dissimilarity of the marks, and the similarity or dissimilarity of the
goods and services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976). In certain cases, the Board may find that a single
DuPont factor is dispositive of likelihood of confusion. Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); Kellogg Co.
v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1550 (TTAB 1990), aff’d, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991).
Applicant argues, inter alia, that: (1) Opposer does not own any trademark rights
in the marks MEDICAL EXERCISE SPECIALIST, PERSONAL TRAINER, ACE
CERTIFIED PERSONAL TRAINER, ACE PERSONAL TRAINER, or PEER
FITNESS TRAINER; (2) Applicant’s MEDICAL EXERCISE TRAINERS mark and
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Opposer’s Marks are different in sight, sound, and connotation; (3) it is unclear on
which goods and services Opposer has used Opposer’s Marks, but in any event,
Opposer did not use Opposer’s Marks on clothing, and any goods on which it did use
its marks are different than the goods recited in the involved application; (4) the
channels of trade and customers for the Applicant’s t-shirts are different than the
channels of trade and customers for Opposer’s certification courses; and (5) Opposer’s
Marks are not famous. 19 TTABVUE 9-24.
In response, Opposer argues it has not been given the opportunity to obtain
discovery concerning: “1) commercial impression of Applicant’s Mark or Opposer’s
Marks, as well as comprehensive analysis of the similarity between each of Opposer’s
Marks and Applicant’s Marks; 2) goods/services sold in association with Opposer’s
Marks; 3) trade channels of Applicant’s Mark or Opposer’s Marks; 4) purchaser
habits, i.e. sophisticated or impulse purchasing; 5) any fame of Opposer’s Marks; 6)
number and nature of similar marks; 7) any actual confusion; 8) the variety of goods
sold by Opposer under Opposer’s Marks; and 9) other factors probative of use.” 22
TTABVUE 6. Again we note that Opposer did not file a motion for discovery under
Fed. R. Civ. P. 56(d).
Upon careful consideration of the parties’ arguments and evidence, and drawing
all justifiable inferences in favor of Opposer as the non-movant, we find that
Applicant has not met its burden of demonstrating that there are no genuine disputes
of material fact as to Opposer’s likelihood of confusion claims (Counts IV, V, and VI).
At a minimum, there are genuine disputes of material fact regarding Opposer’s
Opposition No. 91238589

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common law rights in Opposer’s Marks; the similarities between the parties’ marks
in appearance, sound, connotation and commercial impression; the relatedness of the
parties’ goods and services; the channels of trade; and the strength of Opposer’s
Marks. Accordingly, Applicant’s motion for summary judgment on Opposer’s
likelihood of confusion claims (Counts IV, V, and VI) is denied.
IV. Summary
Opposer’s claims for descriptiveness (Count I) and genericness (Count II) are
stricken; therefore, Applicant’s motion for summary judgment on the
descriptiveness and genericness claims is moot. Opposer is allowed until twenty
days from the mailing date of this order to file an amended notice of opposition that
alleges a sufficient ground of descriptiveness and/or genericness, provided Opposer
has a good faith basis for so alleging. See Trademark Rule 11.18(b); TBMP § 503.03.
If Opposer files the amended notice of opposition, that filing will become the operative
complaint, and Applicant is allowed until twenty days from the date of service of the
amended notice of opposition to file and serve its answer or other appropriate
response thereto. If Opposer does not file an amended notice of opposition, the
original notice of opposition will remain the operative complaint, and this proceeding
will go forward solely on Opposer’s likelihood of confusion claims.
Applicant’s motion for summary judgment on Opposer’s failure to function as
decorative or ornamental claim (Count III) is granted. Judgment is entered in favor
of Applicant, and this claim is dismissed.
Opposition No. 91238589

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Applicant’s motion for summary judgment on Opposer’s likelihood of confusion
claims (Counts IV, V, and VI) is denied.
V. Proceedings Resumed
Proceedings are resumed and dates are reset as follows:
Discovery Closes 2/3/2020
Plaintiff’s Pretrial Disclosures Due 3/19/2020
Plaintiff’s 30-day Trial Period Ends 5/3/2020
Defendant’s Pretrial Disclosures Due 5/18/2020
Defendant’s 30-day Trial Period Ends 7/2/2020
Plaintiff’s Rebuttal Disclosures Due 7/17/2020
Plaintiff’s 15-day Rebuttal Period Ends 8/16/2020
Plaintiff’s Opening Brief Due 10/15/2020
Defendant’s Brief Due 11/14/2020
Plaintiff’s Reply Brief Due 11/29/2020
Request for Oral Hearing (optional) Due 12/9/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).