Balance Spa & Fitness, Inc.

Trademark Trial and Appeal Board

Jan 30, 2008

No. 78250125 (T.T.A.B. Jan. 30, 2008)

Mailed:
30 January 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Balance Spa & Fitness, Inc.
________

Serial No. 78250125
_______

Eugene E. Renz, Jr., Esq. for Balance Spa & Fitness, Inc.

Heather D. Thompson, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Drost, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 15, 2003, Balance Spa & Fitness, Inc.
(applicant) filed an application to register the mark
BALANCE SPA & FITNESS in typed or standard character form
on the Principal Register for services ultimately
identified as follows:
Health and fitness club services, namely providing
instruction and equipment in the field of physical
exercise in Class 41

Health spa services, namely cosmetic body care
services, massage services, beauty salon services in
Class 44.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78250125
2
The application (Serial No. 78250125) is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce. Applicant has disclaimed the term “Spa &
Fitness.”
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of the mark BALANCE A FITNESS
STUDIO and design shown below that has been registered for
“providing fitness and exercise facilities” in Class 41.

The registration (No. 2864824) issued on July 20, 2004 and
the term “A Fitness Studio” has been disclaimed.
After the examining attorney made the refusal to
register final, this appeal followed.1
Initially, we must address the declaration and
exhibits that applicant submitted with its appeal brief.
The examining attorney has objected to this new evidence.
Brief at unnumbered p. 11. We agree with the examining
attorney’s objection. As the USPTO’s rules indicate, the

1 Applicant filed, but subsequently withdrew, a request for an
oral hearing in this case.
Ser No. 78250125
3
record on appeal should be complete prior to appeal. 37
CFR § 2.142(d). See also In re First Draft Inc., 76 USPQ2d
1183, 1192 (TTAB 2005) (“Submission of the TARR printout
with its appeal brief, however, is an untimely submission
of this evidence”). Therefore, we will not consider any
new evidence submitted with applicant’s appeal brief.
Next, we address the issue of whether there is a
likelihood of confusion in this case. We consider the
evidence of record in light of the relevant factors set out
in 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence on these factors, we must keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [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).
“The first DuPont factor requires examination of ‘the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Ser No. 78250125
4
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567.
Here, registrant’s mark consists of the words BALANCE
A FITNESS STUDIO with a design element. Applicant’s mark
consists of the words BALANCE SPA & FITNESS. Both marks
contain the words BALANCE and FITNESS. They differ because
applicant’s mark includes the term “Spa &” while
registrant’s mark includes the phrase “A … Studio.”
Because applicant’s mark is in typed or standard character
form, there is legally no difference between it and the
stylization of the words in registrant’s mark because we
must assume that applicant’s mark can be displayed in the
same style as the registered mark (without the design
element). Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a
difference in type style is not viable where one party
asserts rights in no particular display. By presenting its
mark merely in a typed drawing, a difference cannot legally
be asserted by that party. Tomy asserts rights in SQUIRT
SQUAD regardless of type styles, proportions, or other
possible variations. Thus, apart from the background
design, the displays must be considered the same”).
Furthermore, the slight design in registrant’s mark would
Ser No. 78250125
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be unlikely to distinguish the marks. In re Code
Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(“[D]esign elements such as those appearing in applicant's
mark [a dark square and a crosshair design] are generally
less important than the word portion of the mark in
creating an impression”). Registrant’s circle and lines,
which may be viewed as a highly stylized balance, would not
significantly distinguish the marks. If the design is
viewed as a balance, it merely reinforces the term BALANCE.
If the design is viewed as a design with lines and a
circle, these elements would serve to underline and
highlight the term BALANCE, which is the only non-
disclaimed word in the marks.
Both applicant and registrant have disclaimed most of
the wording in the marks, “Spa & Fitness” and “A Fitness
Studio.” The terms, “A Fitness Studio,” and “Spa &
Fitness” have descriptive meanings for “fitness and
exercise facilities,” “fitness club,” and “health spa”
services. Disclaimed matter is often “less significant in
creating the mark’s commercial impression.” Code
Consultants, 60 USPQ2d at 1702. See also Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding
Ser No. 78250125
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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’”).
While we do not ignore these terms, we hold that they would
have less significance in determining whether the marks are
similar. M2 Software Inc. v. M2 Communications Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When
comparing the similarity of marks, a disclaimed term, here
‘COMMUNICATIONS,’ may be given little weight, but it may
not be ignored”). Applicant argues that “the marks are
quite different i.e. FITNESS vs. SPA for example.” Brief
at 3. However, even here, the disclaimed matter is
actually somewhat similar: A FITNESS STUDIO and SPA &
FITNESS. Therefore, applicant’s argument that its services
are “primarily in the SPA field aimed at beautification and
FITNESS STUDIO is aimed at providing programs for improving
strength and muscle” (Brief at 3) is not persuasive. The
disclaimed wording in both marks emphasize that the
services are in the field of “fitness.”
The only word in the marks that is not disclaimed is
the term “Balance.” There is no indication that this term
is a weak term for the services in this case and we find
that it is the dominant feature of both marks. National
Data Corp., 224 USPQ at 751 (“[T]here is nothing improper
Ser No. 78250125
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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. Indeed, this type of analysis appears
to be unavoidable”). Here, purchasers or users of health,
fitness, or spa services are likely to rely on the first
term “Balance” to distinguish the source of the services
rather than the descriptive wording or registrant’s design.
The marks BALANCE SPA & FITNESS and BALANCE A FITNESS
STUDIO and design certainly have some differences but they
also have similarities in sound and appearance because they
contain the identical words “Balance” and Fitness” and
applicant’s mark can be displayed in the same style as
registrant’s. They have similar meanings because both
refer to a facility identified by the term “BALANCE” where
people can go for fitness-related services regardless of
whether this place may be also described as a “studio” or a
“spa.”
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
terms of their overall commercial impression that
confusion as to the source of the goods or 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.

Ser No. 78250125
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Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004).
Finally, the commercial impressions of the marks
convey that these BALANCE services include fitness-related
services. When we compare the marks in their entireties,
we find that the terms are very similar. See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (JOSE GASPAR GOLD and GASPAR'S ALE
similar; the “Board had good reason to discount ALE, JOSE,
and GOLD as significant differences between the marks”).
Next, we address the question of whether the services
of applicant and registrant are related. Applicant’s
services include “Health and fitness club services, namely
providing instruction and equipment in the field of
physical exercise.” Registrant’s services involve
providing fitness and exercise facilities. Inasmuch as
applicant’s health and fitness club services include
“providing … equipment in the field of physical exercise,”
its services would overlap with registrant’s fitness and
exercise facilities. We must consider the services as they
are described in the identification of services. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
Ser No. 78250125
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basis of the respective descriptions of goods [or
services]”). When the goods or services overlap, marks do
not have to be as similar before there is a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines”).
Applicant’s services also include “Health spa
services, namely cosmetic body care services, massage
services, beauty salon services.” The examining attorney
has made of record several registrations to support her
argument that these services are related. See Registration
No. 2567948 (“health and fitness club services” and “spa
services in the nature of a health spa and a beauty spa”);
No. 2851355 (“health clubs” and “providing health spa
services namely providing cosmetic body care services and
sauna baths… and beauty salons”); No. 2835277 (“health and
fitness club services” and “health spa services namely
massage … skin care salon services; cosmetic body care
services…”); No. 2939408 (“health club services, namely
providing instruction and equipment in the filed of
physical exercise” and “health spa services featuring skin
care salon services … message therapy); and No. 2783051
Ser No. 78250125
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(“health and fitness clubs, health and fitness centers” and
“health and fitness spas”). These registrations suggest
that applicant’s and registrant’s types of services
originate from the same source under a common mark. See In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988) (Although third-party registrations are “not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
nonetheless have some probative value to the extent that
they may serve to suggest that such goods or services are
of a type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). Therefore, to the extent the services are not
overlapping, they are related.
Furthermore, if the marks are used in association with
the same services, their purchasers and channels of trade
must be presumed to be the same. Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
Ser No. 78250125
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goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers”). We add that the purchasers and
channels of trade for spa services and the fitness services
would be similar as they would appeal to people attempting
to improve their physical appearance and health.
Applicant argues that the “consumers are professional
buyers and are assumed to be sophisticated enough not [to]
be confused by trademarks that are closely similar.” Brief
at 4. Even if purchasers here were sophisticated, this
does not eliminate the likelihood of confusion particularly
when the marks are as similar as they are in this case. In
re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986)
(“While we do not doubt that these institutional purchasing
agents are for the most part sophisticated buyers, even
sophisticated purchasers are not immune from confusion as
to source where, as here, substantially identical marks are
applied to related products”) and In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999) (“In any event, even
careful purchasers are not immune from source confusion”).
Secondly, we must consider the services as they are
identified in the identification of goods and services.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). We do
Ser No. 78250125
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not read limitations into the identification of services.
In this case, neither applicant’s or registrant’s services
contain any limitations. Therefore, we must assume that
the health and fitness club services, health spa services,
and fitness and exercise facilities services would be
purchased by ordinary as well as sophisticated purchasers.2
Even if there were evidence that indicated applicant and
registrant currently limit their sales to professional
purchasers, this fact would not limit the scope of the
identification of services in the application or
registration. Octocom Systems, 16 USPQ2d at 1787 (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also Squirtco, 216 USPQ
at 940 (“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts

2 The evidence that applicant attached to its amendment dated May
16, 2005, supports the assumption that at least some of the users
of applicant’s and registrant’s services are ordinary purchasers.
Ser No. 78250125
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the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”).
Similarly, if there were evidence that was properly of
record that established that applicant and registrant were
actually operating in separate geographic areas, this fact
would not overcome the likelihood of confusion refusal in
this ex parte case. Amcor, Inc. v. Amcor Industries, Inc.,
210 USPQ 70, 77 (TTAB 1981) (“Now, the possible
geographical separation between the parties, although the
evidence does show an overlap on occasion, is of no
significance in this proceeding because applicant is
seeking territorially unrestricted registrations for its
marks and, if granted, the presumptions afforded the
registrations under Section 7(b) include a presumption of
use or the right to use the registered marks throughout the
United States thereby obviously covering opposer's area of
use of its designation”). See also Kay Corp. v.
Weisfield's, Inc., 190 USPQ 565, 568 (TTAB 1976) (citations
omitted):
[T]hese separate marketing areas and trade channels
are of no moment in this proceeding because they are
subject to change at any time and because there is no
restriction on trade channels or geographical selling
areas in either the application or in opposer's
registration, and both would have to be restricted in
order to establish a controlling separation of
Ser No. 78250125
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customers and sales channels. Opposer's unrestricted
incontestable registration is conclusive evidence of
its exclusive right to use “ETERNALLY YOURS” for
finger rings throughout the United States.

Therefore, when we consider that the marks are very
similar and the services overlap or are related as well as
the other factors, we conclude that confusion is likely.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered marks used in
connection with the identified services under Section 2(d)
of the Trademark Act is affirmed.