Beachbody LLC

Trademark Trial and Appeal Board

Mar 31, 2014

No. 85779130 (T.T.A.B. Mar. 31, 2014)

85779111
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
September 26, 2013 March 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Beachbody LLC
_____

Serial Nos. 85779111 and 85779130
_____

Camille M. Miller and J. Trevor Cloak of Cozen O’Connor, P. C.

Samuel Paquin1, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
_____

Before Zervas, Taylor and Ritchie, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Beachbody LLC has filed applications to register on the Principal Register
the marks BEACHBODY PRO TEAM2 (Serial No. 85779111) and P90X PRO
TEAM3 (Serial No. 85779130) both for the following International Class 41 services:

1 Samuel Paquin represented the Office at the oral hearing and Colleen Dombrow is the
Examining Attorney who was responsible for the application during prosecution and
briefing.
2 Application Serial No. 85779111, filed November 14, 2012, and asserting a bona fide
intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C §
1051(b). Applicant claimed ownership of Registration Nos. 2862904 and 3450708 both for
the mark BEACHBODY and Registration No. 2873866 for the mark .
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial Nos. 85779111 and 85779130

2

Educational services, namely, providing web-based, classroom and
other training in the field of exercise equipment, physical fitness,
diet and nutritional programs for certification of and continuing
education for instructors and distribution of training material in
connection therewith; educational services, namely, conducting
classes, seminars, conferences, workshops, and field trips in the
field of exercise equipment, diet and nutritional programs, and
sales techniques and distribution of training material in connection
therewith; membership club services, namely, providing training to
members in the field of exercise equipment, diet and nutritional
programs, and sales techniques; educational services, namely,
offering of assessments and surveys in the field of educator
training and performance for the purpose of improving teaching
procedures; physical fitness training services and consultancy;
providing information in the field of exercise training.
The trademark examining attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks give
rise to a likelihood of confusion with the three registered marks owned by two
different entities set forth below.
A. Mike Gueringer’s Registration:
Registration No. 2770165 for the mark

(Fitness disclaimed) for “providing fitness and exercise facilities” in International
Class 41.4

3 Application Serial No. 85779130 filed November 14, 2012 and asserting a bona fide intent
to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C § 1051(b). Applicant
claimed ownership of Registration Nos. 2843063 and 3444723 both for the mark P90X and
Registration No. 2973356 for the mark .
4 Issued September 30, 2003; Section 8 Affidavit accepted. We note that although this
registration has not been cancelled by the Office, the registration records do not reflect the
Serial Nos. 85779111 and 85779130

3

B. Athletic Dealers, LLC’s Registrations:
Registration No. 3701056 for the mark

Registration No. 3701057 for the mark PROTEAM (standard characters),
both for, inter alia, “fitness and weight training equipment, namely, weight
benches, and exercise weights” in International Class 28;5
When the refusal in each application was made final, applicant appealed and
requested reconsideration, which was denied in each proceeding on March 27, 2014.
Both proceedings were subsequently resumed. The appeals have been fully briefed.
In addition, applicant requested an oral hearing in each case. Because both
proceedings involve similar issues of law and fact and nearly identical records, the
appeals were heard in a single hearing, attended by both applicant’s attorney and
the examining attorney, and are being decided in this single decision.6 We affirm
the refusals to register in view of Registration No. 3701057.
Our determination of the issue of likelihood of confusion is based on an
analysis of all 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 (CCPA

filing of a renewal by registrant. In any event, we have not relied on this registration in
reaching our decision.
5 Both registrations issued on October 27, 2009.
6 We also note that the evidence and briefs in each application are virtually identical.
Accordingly, unless otherwise stated, specific arguments and evidence are taken from the
record of application Serial No. 85779111.
Serial Nos. 85779111 and 85779130

4

1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Rests Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In analyzing likelihood of confusion, we limit our discussion to Athletic
Dealers, LLC’s Registration No. 3701057 for the standard character mark
PROTEAM and for the goods identified therein as “fitness and weight training
equipment, namely, weight benches, and exercise weights,” as this is the mark and
these are the goods that are closest to applicant’s marks and recited services.
Notably, with regard to the cited ‘057 registration, both applicant and the
examining attorney focused their arguments regarding the relatedness of the
respective goods and services on the fitness and weight training equipment recited
in that cited registration. We also point out that to the extent that there would be
confusion with the ‘057 registration, it would serve little purpose to consider the
other registrations. And if there is no likelihood of confusion with the ‘057
registration, there would similarly be no likelihood of confusion with the other
registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
The Goods and Services, Trade Channels and Purchasers
Serial Nos. 85779111 and 85779130

5

We turn first to the relationship between applicant’s services and registrant’s
goods, keeping in mind that the question of likelihood of confusion must be
determined based on an analysis of the services recited in applicant’s applications
vis-à-vis the goods identified in the cited ‘057 registration. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). It is a
general rule that a registrant’s goods and an applicant’s services need not be
identical or even competitive in order to support a finding of likelihood of confusion.
Rather, it is enough that the goods and services are related in some manner or that
some circumstances surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which would give rise, because
of the marks used therewith, to a mistaken belief that they originate from or are in
some way associated with the same producer or that there is an association between
the producers of applicant’s services and the registrant’s goods. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and the cases cited therein.
As identified, applicant’s services are
educational services, namely, providing web-based, classroom and
other training in the field of exercise equipment, physical fitness,
diet and nutritional programs for certification of and continuing
education for instructors and distribution of training material in
connection therewith; educational services, namely, conducting
classes, seminars, conferences, workshops, and field trips in the
field of exercise equipment, diet and nutritional programs, and
sales techniques and distribution of training material in connection
therewith; membership club services, namely, providing training to
members in the field of exercise equipment, diet and nutritional
programs, and sales techniques; educational services, namely,
offering of assessments and surveys in the field of educator
training and performance for the purpose of improving teaching
Serial Nos. 85779111 and 85779130

6

procedures; physical fitness training services and consultancy;
providing information in the field of exercise training.
The goods identified in the cited registration are “fitness and weight training
equipment, namely, weight benches, and exercise weights.” Applicant and the
examining attorney focused their discussion on registrant’s physical fitness training
services and consultancy and the providing [of] information in the field of exercise
training and we will do likewise. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any items
that come within the identification of goods [or services] in the application). The
examining attorney maintains that applicant’s services are related to registrant’s
goods because weight equipment and physical fitness training are offered by fitness
companies and fitness facilities and, thus, these types of goods and services travel
through the same channels of trade to the same classes of consumers. In support of
her position, the examining attorney has made of record web pages from the
following websites:7
(www.jillianmichaels.com/fit/ultimate-fitness) shows that Jillian
Michaels Ultimate Fitness offers both fitness instruction and sells
exercise weights;
(www.ballyfitness.com) and (www.amazon.com) show that Bally
Total Fitness offers physical fitness training services and
consultancy and classes in exercise equipment and also sells
weights under the same name;
(www.poundfit.com) shows that Pound offers training in the field
of exercise equipment and physical fitness certification of and

7 Exhibits to the examining attorney’s office action issued January 17, 2013, and Final
Office Action issued March 5, 2013.
Serial Nos. 85779111 and 85779130

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continuing education for instructors, and also sells exercise
weights;
(www.goldsgym.com) shows that Gold’s Gym offers physical
fitness training services and consultancy, and also sells exercise
weights; and
(shop.cathe.com) shows that Shop Cathe offers information in the
field of exercise training and exercise weights.
In addition, the examining attorney submitted with her Final Office Action,
copies of various use-based, third-party registrations showing, in each instance, that
the same mark has been registered for both “exercise weights and/or benches” and
“fitness instruction and/or training in the field of exercise equipment and/or
information in the field of exercise training and/or physical fitness training8.” These
third-party registrations include:
Registration No. 2794177 (A and design) for, inter alia, “exercise
weights” and “educational services, namely conducting seminars in
the field of exercise instruction and physical fitness instruction”;
Registration No. 3722877 (EXPECT DIFFERENT) for, inter alia,
“Exercise equipment, namely free weights, barbells, dumbbells,
weight benches” and “Physical health and fitness instruction;
training in the use and operation of fitness equipment”;
Registration No. 3861300 (SMARTBELLS) for, inter alia,
“Exercise weights, namely, free weights” and “Physical fitness
instruction”;
Registration No. 3668620 (INVEST) for, inter alia, “Exercise
weights, namely, weighted vests, weighted belts, hand weights,
wrist and ankle weights, shoe and leg weights” and “Providing
information, exercises and training methods to individuals, and
their trainers to help them improve their physical fitness …
through the use of weighted vests and other weight equipment”;

8 We consider the fitness instruction, training in the field of exercise equipment,
information in the field of exercise training, and physical fitness training services identified
in the third-party registrations to include training and information services directed to
physical fitness instructors.
Serial Nos. 85779111 and 85779130

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Registration No. 3894445 (misc. design of a stylized picture of an
individual exercising) for, inter alia, “exercise equipment and
props, namely, … exercise benches … [and] exercise weights” and
“Health club services, namely, providing instruction and/or
equipment in the field of physical exercise … [and] physical
fitness consultation to individuals to help them make physical
fitness … and exercise improvement in their daily lives”;
Registration No. 4154521 (PREVA) for “Exercise equipment,
namely … exercise benches” and “Providing fitness training”;
Registration No. 3945996 (KAIA F.I.T.) for, inter alia, “Exercise
weights” and “Physical fitness instruction; Physical fitness training
services”;
Registration No. 3402918 (LES MILLS) for, inter alia, “Exercise
equipment in the nature of dumbbells, barbells” and “educational
services, namely, classes, seminars, programs, courses, workshops
and conferences in the field[ ] of … physical fitness”;
Registration No. 3336738 (THE NO GYM, NO EXCUSES
COMPANY) for, inter alia, “Exercise equipment, namely …
weight benches [and] dumbbells” and “live and on-line fitness
lectures, classes and seminars in the field of physical fitness”;
Registration No. 3469820 (SATORI ACADEMY) for, inter alia,
“weight lifting benches … and exercise weights in the nature of
weight plates, barbells, [and] dumbbells for weight lifting” and
“physical fitness instruction and consultation”; and
Registration No. 4185409 (MAKE YOUR MOVE) for, inter alia,
“weight benches … [and] weight lifting equipment and
accessories, namely, barbells, … dumbbells [and] kettlebells” and
“Providing consultation, advice, instruction and information in the
fields of physical fitness and exercise.”
Third-party registrations that individually cover different items and that are
based on use in commerce serve to suggest that the listed goods and services are of
a type that may emanate from a single source. See 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
Serial Nos. 85779111 and 85779130

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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).
We first find that based on the identifications alone applicant’s “physical
fitness training and consultancy services” and its “providing [of] information in the
field of exercise training” are complementary and/or closely related to registrant’s
“fitness and weight training equipment, namely weights and weight benches,” as
weights and weight benches would be used while rendering physical fitness training
and consultancy and providing information in the field of exercise training services.
It frequently has been found that consumers are likely to be confused by the use of
similar marks, as discussed infra, on or in connection with goods and services
featuring or related to those goods. See e.g., In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir, 1988) (holding BIGG’S for retail grocery and
general merchandise store services likely to be confused with BIGGS for furniture);
In re Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (holding design for
distributorship services in the field of health and beauty aids likely to be confused
with design for skin cream); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB
1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and
machinery likely to be confused with STEELCASE for office furniture and
accessories).
In addition, based on the internet materials introduced by the examining
attorney, we find that the examining attorney has established that physical fitness
Serial Nos. 85779111 and 85779130

10

training and instruction may involve training and instruction on or with exercise
equipment, including weights, and based on the third-party registrations and
internet materials that these types of goods and services often emanate from the
same source under a common mark. Notably, a printout from applicant’s website9
shows that applicant also offers for sale fitness equipment, including weights, and
confirms our findings. As previously indicated, we need not consider applicant’s
remaining services because the fact that some of the services listed in applicant’s
recitation of services are related to the goods recited in the cited ‘057 registration is
sufficient to support a finding that there is a likelihood of confusion for that
International Class. Tuxedo Monopoly v. General Mills 209 USPQ at 988.
We thus find that applicant’s services and registrant’s goods are related for
purposes of our likelihood of confusion analysis and, accordingly, this du Pont factor
favors affirmance.
We are not persuaded by applicant’s contention that there is no “overlap”
between its services and registrant’s goods because it “does not intend to offer
weight benches and weights under its marks.” As stated, the test is not whether
the goods and services are the same; it is whether they are sufficiently similar or
related that prospective consumers would expect them to emanate from a common
source. See Albert Trostel & Sons Co., supra.

9 www.beachbody.com/category/fitness. The printout was submitted by the examining
attorney as an exhibit to the Office Action issued January 13, 2013.

Serial Nos. 85779111 and 85779130

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Further, as regards the channels of trade and classes of purchasers, there
are no channels of trade and purchaser limitations in the identifications of the
applications and the cited ‘057 registration, at least with respect to the physical
fitness training and consultancy services and the provision [of] information in the
field of exercise training in applicant’s applications and the weights and weight
benches. We presume, as we must, that applicant’s fitness training and
consultation services as well as registrant’s weights and weight benches will move
in all usual channels of trade. The evidence of record, demonstrates that such trade
channels include the personal fitness industry (which includes fitness training, body
building and martial arts). Purchasers of these goods and services include both
fitness professionals (such as personal trainers, aerobics instructors and gym
owners) and member of the general public seeking fitness training and who are
buying weights for their own use, either in a class or at home. Thus, at a minimum,
the channels of trade and classes of purchasers overlap. In re Elbaum, 211 USPQ
639 (TTAB 1981).
In view thereof, the du Pont factor of the relatedness of the channels of trade
and classes of purchasers favor a finding of likelihood of confusion.
Conditions of Sale
The du Pont factor of the conditions under which applicant’s services and
registrant’s goods would be purchased was first addressed in applicant’s reply brief
and hence is untimely. The purpose of a reply brief is to offer an opportunity to the
plaintiff to respond to the arguments made by the defendant, not to allow plaintiff
Serial Nos. 85779111 and 85779130

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to make new arguments that come to mind after the filing of the main brief and to
which the defendant cannot respond. However, since both the examining attorney
and applicant argued the issue at oral hearing, we will address this factor for the
completeness of the decision. Applicant essentially argues that the fitness
professionals and enthusiasts to whom applicant’s services and registrant’s services
are intended are sophisticated and, as such, will not be confused into believing that
applicant’s “educational and training-related services” are affiliated or associated
with registrant’s exercise equipment, or into believing that registrant’s exercise
equipment is affiliated or associated with applicant. App. br. p. 8. The problem
with this argument is that it is only attorney argument without evidentiary
support. See Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840,
843 (TTAB 1977) (selling to a sophisticated purchaser does not automatically
eliminate the likelihood of confusion because “[i]t must also be shown how the
purchasers react to trademarks, how observant and discriminating they are in
practice, or that the decision to purchase involves such careful consideration over a
long period of time that even subtle differences are likely to result in recognition
that different marks are involved”).
Moreover, as just noted, neither the recitations in applicant’s applications nor
the identification in the cited registration limits applicant’s physical fitness training
and consultancy services and its provision of information in the field of exercise
training, or registrant’s exercise equipment to sophisticated purchasers. However,
even assuming arguendo that the purchasers of both applicant’s fitness services and
Serial Nos. 85779111 and 85779130

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registrant’s exercise equipment use some degree of care in their purchasing
decisions, they can still be confused as to source, where, as here, very similar marks
(as more fully discussed, infra) are used in connection with closely related goods and
services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating
purchasers … are not infallible.").
Accordingly, the du Pont factor regarding the condition of sale, including the
sophistication of the purchasers and degree of care, is neutral.
The Marks, the Strength of the Registered Mark, and the Number and Nature of
Similar Marks in Use in Connection with Similar Goods and Services

We turn then to a comparison of applicant’s marks and the mark in the cited
‘057 registration, keeping in mind that in determining the similarity or
dissimilarity thereof, we must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
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 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. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Serial Nos. 85779111 and 85779130

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Comparing the marks in this case, applicant’s BEACHBODY PRO TEAM and
P90X PRO TEAM marks comprise registrant’s mark, PROTEAM, plus applicant’s
assertedly “famous house mark” BEACHBODY and assertedly “famous and
distinctive” P90X mark, respectively.10 In short, both of applicant’s marks
encompass the registered mark in its entirety. Likelihood of confusion has been
found where the entirety of one mark is incorporated within another. See The Wella
Corp, v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)

10 The record is devoid of any evidence to support applicant’s contention that its house
mark BEACHBODY is famous. Also, while applicant has included some evidence (e.g., a
screenshot taken from the YouTube website showing that the P90X commercial has over
200,000 views and a screenshot taken from applicant’s Facebook fan page showing 600,000
likes), to support its position that its P90X mark is famous, the evidence falls far short of
establishing fame. In any event, even if applicant had demonstrated that its
BEACHBODY and P90X marks are famous, such fame would exacerbate, rather than
obviate, the likelihood of confusion between applicant’s mark and the cited registered mark.
See e.g., In re Hill-Behan Lumber Company, 201 USPQ 245, 249-250 (TTAB 1978) (HILL-
BEHAN’S LUMBER JACK for hardware and lumber yard services confusingly similar to
LUMBERJACK for finished lumber products). See also, In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In Shell, the court made clear that “[t]he
trademark law not only protects the consumer from likelihood of confusion as to commercial
sources and relationships, but also protects the registrant and senior user from adverse
commercial impact due to use of a similar mark by a newcomer,” and further described the
possible impact as “reverse confusion” explaining:
The term “reverse confusion” has been used to describe the situation where a
significantly larger or prominent newcomer “saturates the market” with a trademark that
is confusingly similar to that of a smaller, senior registrant for related goods or services.
The junior user does not seek to benefit from the goodwill of the senior user; however,
the senior user may experience diminution or even loss of its mark's identity and
goodwill due to extensive use of a confusingly similar mark by the junior user.
The avoidance of confusion between users of disparate size is not a new concept;
however, the weighing of the relevant factors must take into account the confusion that
may flow from extensive promotion of a similar or identical mark by a junior user. In
considering likelihood of confusion as to the source of services that are not identical, or
likelihood of confusion as to whether there is a relation between the source of the
services, the extent of the registrant's and the newcomer's activities relating to the mark
must be given weight appropriate to the circumstances.
(Citations omitted.)

Serial Nos. 85779111 and 85779130

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(CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray,
conditioner and shampoo is likely to cause confusion with the mark CONCEPT for
cold permanent wave lotion and neutralizer); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark
EBONY DRUM for hairdressing and conditioner is likely to cause confusion with
EBONY for cosmetics).
Applicant’s marks and the cited mark differ in that there is a space between
PRO and TEAM in applicant’s marks and the additions of BEACHBODY to
applicant’s BEACHBODY PRO TEAM mark and P90X to applicant’s P90X PRO
TEAM mark. The deletion of the space between the terms “pro” and “team” in
applicant’s marks does not serve to distinguish them from the cited mark.
With regard to the additional matter, as a general rule, the addition of a
house mark or other such matter to one of two otherwise confusingly similar marks
will not serve to avoid a likelihood of confusion. See, generally, In re Dennison Mfg.
Co., 229 USPQ 141, 144 (TTAB 1986) (GLUE STIC for general purpose adhesive in
stick form likely to be confused with UHU GLU STIC for adhesives for paper and
stationary); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168 (TTAB 1982) (MENNEN SKIN SAVERS for hand and body lotion confusingly
similar to SKIN SAVERS for face and throat lotion).
We recognize, however, that there are exceptions to this general principle.
For example, the additional matter may be sufficient to distinguish the mark in
situations where the appropriated matter is highly suggestive or merely descriptive
Serial Nos. 85779111 and 85779130

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of the identified goods or services (e.g., In re Hartz Hotel Services, Inc., 102 USPQ2d
1150, 1155 (TTAB 2012) (Because of the highly suggestive nature of the mark
“GRAND HOTEL,” the proliferation of registered “Grand Hotel” marks and the
unregistered uses of “Grand Hotel” marks, the Board found that the mark “Grand
Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of
use and concluded that consumers are able to distinguish between different GRAND
HOTEL marks based on small differences in the marks); see also Knight Textile
Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB 2005) (NORTON
MCNAUGHTON ESSENTIALS not confusingly similar to ESSENTIALS for
identical clothing where evidence established that ESSENTIALS is highly
suggestive for clothing); or where the mark (or a portion thereof) is diluted or weak
(e.g., Hartz Hotel Services, supra; In re Broadway Chicken Inc., 38 USPQ2d 1559,
1565-66 (TTAB 1996) (BROADWAY weak for restaurant services based on evidence
that hundreds of restaurants and eating establishments use that word such that
“purchasers have been conditioned to look to other elements of the marks as a
means of distinguishing the source of goods or services in the field.”)).
It is applicant’s position that these exceptions are applicable here.
Accordingly to applicant, “the ‘PRO TEAM’ [PROTEAM] portion of the cited marks
is weak and diluted, as it is highly suggestive of the goods and/or services associated
with each registration and has been diluted via numerous third party uses of
similar marks in connection with similar goods and services.” App. br. p. 1. For
those reasons, applicant contends that PRO TEAM is inherently weak and entitled
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to a narrow scope of protection such that the additions of BEACHBODY and PX90
to PRO TEAM in its BEACHBODY PROTEAM and P90X PROTEAM marks are
sufficient to alleviate any “potential” likelihood of confusion with the cited mark.
As support for its position that “PRO TEAM” is highly suggestive of
registrant’s identified weights and weight benches, applicant, with its February 11,
2013 response to the first Office action, made the following of record:
1. Definitions of the abbreviation/words “pro,” “professional” and “team”:
i. Pro – “professional”
11

ii. Professional – “of or relating to, or characteristic of a
profession” …“following a line of conduct as though it were a
profession”
12

iii. Team – “a number of persons associated together in work or
activity: as … a group on one side (as in football or a debate)”
13

2. Screenshots from various websites purportedly showing that ‘“pro
team’ members appear to engage in fitness training and use fitness
facilities and, presumably, exercise and sporting equipment.” App. br. p.
7.
14

Applicant contends that this evidence demonstrates that “given that ‘pro
teams’ are comprised of professional athletes, who, by the nature of their
professions, engage in frequent exercise, likely use exercise-related facilities and
similarly use various sports equipment, the term [“pro team”] is highly suggestive of

11 Abbreviations (www.abbreviations.com/PRO), App’s Response, Exh. B.
12 Merriam-Webster Online Dictionary (www.merriam-
webster.com/dictionary/professional), App’s Response, Exh. B.
13 Merriam-Webster Online Dictionary (www.merriam-webster.com/dictionary/teaml),
App’s Response, Exh. B.
14 Exh. B to the February 11, 2013 office action response and Exh. A. to the March 7 2013
request for reconsideration.
Serial Nos. 85779111 and 85779130

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the various sports and exercise equipment identified in connection with the … ‘057
Registration.” Id. Applicant particularly contends that “PRO TEAM describes or is
suggestive of the fact the registrant’s exercise equipment and/or fitness facilities are
of such quality as to be suitable for “pro teams” or are items or facilities that are
used by “pro teams” or professional teams.
We agree with applicant that “pro team” is an abbreviation for “professional
team” and, as defined above, is a group of persons associated together in an activity,
and who follow that activity as if it were a profession.” However applicant has not
established that “pro team” is highly suggestive of the quality of fitness facilities
and/or exercise equipment. Stated simply, it does not follow, and the evidence does
not show, that because members of professional teams may engage in frequent
exercise and may use exercise-related facilities and equipment, use of the wording
“pro team” to describe them would also suggest that the exercise equipment or
facilities that they may use is of a higher or professional quality.
Applicant’s evidence clearly demonstrates the descriptive use of “pro team” in
referring to groups of fitness professionals but, for the reasons discussed below, it
does not show that “pro team” imparts a highly suggestive meaning in relation to
the quality of the fitness facilities or exercise equipment they may or may not be
used by the subject fitness professionals, which include personal trainers. For
example, the screenshots from the websites http://mri-performance.com/pro-team/,
www.alliancegym.com/ric-delfierro-head-coach-of-alliance-mma-pro-team-mixed-
martial-arts-training/ and www.youtube.com/watch?v=4–g23hjiyZc, shown below,
Serial Nos. 85779111 and 85779130

19

demonstrate use of “pro team” in a descriptive manner to refer to groups of fitness
professionals who, in the screenshots, are engaged in fitness activities. While the
evidence appears to demonstrate descriptive use of the term “pro team” as the
recognized abbreviation for professional team and as referring to certain individuals
who appear to be members of a professional team in their respective professions or
sports, e.g., body building and mixed martial arts, it does not demonstrate, or give
rise to a presumption, that “pro team” is suggestive of “professional” or superior
quality exercise equipment and, in particular, weights and weight benches. Aside
from perhaps the MRI website, which shows in shadow, a male working with what
appears to be a weighted ball, these screenshots are not probative of any suggestive
quality of the term “pro team” in relation to weights.

Serial Nos. 85779111 and 85779130

20

Serial Nos. 85779111 and 85779130

21

The screenshot from www.coretransformer.con.blog.team, etc. only shows the
term “pro team” in the header of the web page, i.e., AB Core Transformer Pro Team
Presenting At EMPOWER! Chicago Fitness Convention 2012 – Windows Internet
Explorer and it appears only to identify a group of professional trainers who will
demonstrate a new fitness program offered by Core Transformer.
A screenshot from the website www.lifefitness.com/blog.html?label_
Athletic%20Training of a blog post entitled “HAMMER STRENGTH CLINIC
RECAP: THROUGH AN ENGINEER’S EYES” states that the fitness facilities at
Noblesville High School “rivals some of the pro team’s training centers.” Contrary
to applicant’s contention, this use of “pro team” does not show highly suggestive use
of “pro team” for exercise facilities or equipment that is of a higher quality or grade.
Indeed, it does not in any way demonstrate the use of the term “pro team” in
connection with weights or weight benches. Instead, “pro team” is used merely as
the standard abbreviation for “professional team.” Accordingly, we read the
statement to merely indicate that the Noblesville High School facility has fitness
equipment that is on par with the equipment used by those of professional teams,
and to make no allusions as to the quality of the particular equipment in the
Noblesville facility.
On the website http://uofmma.com/2012/mma-gyms/gym-of-the-month-team-
quest/, the term “pro team” is used as follows: “‘The pro team trains at the same
time as the amateur team. So when we have a fight coming up, we go through a
training camp with the pros,’ said Richardson.” Again, the term “professional team”
Serial Nos. 85779111 and 85779130

22

has been abbreviated to “pro team” and is used solely to refer to a group of
individuals and not to any equipment that they may use.
The screenshot from the website of Gold’s Gym’s15 features trainer bios, and
states in the bio that the featured trainer was “Most Outstanding Free Agent for
Pro Team (Denver Broncos)” and [participated in] “Several Pro Team tryouts.”
Here again, “pro team” is used as the recognized abbreviation “for professional
team” and solely references professional sports; in no way does it suggests exercise
facilities or equipment.
The screenshot from the website of Rivera Athletic Center
(www.riveraathleticcenter.com/pro-team) shows the term “pro team” being used as a
caption to a paragraph discussing the “experienced coaching staff” that can be found
at athletic center. As so used, “pro team” does not suggest that any of its exercise
equipment is of professional quality.
Last, a screenshot of a press release on the website PRLOG
(www.prlog.org/12018160) announces that the brand USA Pro launched a “Pro
Team.” The press release states, in part, that “[t]he USA Pro Team will be the point
of contact for women seeking advice on all matters of health and fitness including
training, nutrition, fit kit, weight loss and styling.” As used in the release, the term
“Pro Team” describes the fitness professionals who will provide expertise and is not

15 (www.goldsgym.com/gyms/california/vacabille/680/trainer-bio/8550).
Serial Nos. 85779111 and 85779130

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suggestive of the quality of any fitness or exercise equipment that may be used by
these professionals.16
In sum, applicant’s evidence fails to demonstrate that the term “pro team”
has a recognized meaning in the field of exercise equipment or facilities.
Accordingly, applicant has failed to demonstrate that the registered PROTEAM
mark is highly suggestive such that it is entitled to only a narrow scope of
protection, as it maintains.
As regards applicant’s position that the designation “pro team” is diluted in
the field of physical fitness, applicant has made of record website screenshots
purportedly showing multiple third-party uses of PRO TEAM (or similar variations
thereof) in connection with exercise and sports-related goods and services.17 The
apparent purpose of this evidence is to show “that customers have become so
conditioned by a plethora of such similar marks that customers ‘have been educated
to distinguish between different [such] marks on the bases of minute distinctions.’’’
Palm Bay, 73 USPQ2d at 1694 (Fed. Cir. 2005) (internal citations omitted). See
also In re Mighty Leaf Tea, 601 Fed.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir.
2010). The third party uses are as follows:
PRO TEAM APPAREL for cycling apparel by Art’s
Cyclery (www.artscyclery.com/...);

16 Applicant also submitted a screen shot from the website of MMAXOUT in which the
term PRO TEAM is used to caption of YouTube video. Although it appears to reference
fitness professionals, we cannot be certain. Accordingly, the reference has not been
considered in this decision.
17 App’s Response, Exh. C.
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MEN’S PRO TEAM CYCLING APPAREL by Colorado
Cyclist (www.coloradicyclist.com/product/display/40250);
PROTEAM and design for items with the insignia of
various professional sports teams (www.proteam.com);
PRO-TEAM PRODUCTS for third-party paintball-related
sporting goods (www.proteamproducts.com);
ALL PRO TEAM SPORTS for sports equipment and
related goods (www.allproteamsports.com);
AP ALL PRO TEAM SPORTS for custom team sports
apparel (www.allproteamspors.com);
PRO TEAM by Lookcycle.com for cycling gear
(www.lookcycle.com/en/us/textile/pro-team.html) features
a “PRO TEAM JACKET”;
CARBON PRO TEAM SHOES for cycling shoes
(www.louisgarneau.com/.../CARBON_PRO-
_TEAM_SHOES for a professional grade cycling shoe
ALL STAR PRO TEAM EQUIPMENT BAG by
Cheapbats.com (illegible) for equipment bags;
PRO TEAM PLAYER DELUX EQUIPMENT BASEBALL
BAG by Pro Team (www.amazon.com/) for equipment
bags;
PRO TEAM BENCH CART (myaaeworld.com) for a
portable baseball bleacher);
GOOSE’S PRO TEAM SPORTS for professional hockey
locker room supplier and distributor
(www.gooseproteamsports.com);
KATTUS PRO-TEAM SPORTS COLUMBUS LLC for a
sporting goods store (www.yelp.com/...illegible);
PRO TEAM SPORTS INC. for a sporting goods store
(www.manta.com/c/...pro-team-sports-inc); [appears to
offer particular fishing team apparel]
MERCURY PRO TEAM for sports apparel
(www.mercuryproteamgear.com/...);
Serial Nos. 85779111 and 85779130

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TKO TKO Pro Team MMA Training Gloves for training
gloves presumably for mixed martial arts
(www.sears.com); and
Pro Gym Pro Team 16 Weight Training Equipment, 10-
Wte-3033 for weight training equipment
(www.dillardgovernmentsales.com).18
With regard to the website evidence, we note first that the web pages from
www.artscyclery.com; www.proteam.com; and www.proteamproducts.com do not
show use the term “pro team” as a source indicator. Instead “pro team” is used to
identify the type of sports apparel featuring professional team insignia or third-
party products. Similarly, on the website, www.gooseproteamsports.com, “pro
team” is used to denote distributorship of apparel for professional teams. On one
website, the use is AP ALL PRO [space] TEAM SPORTS and not “pro team” as a
single term. Because PRO TEAM is not used as a source indicator on these
websites, they have little probative value.
With regard to the remaining websites, two appear to use “pro team” in
connection with other matter to identify the source of sporting goods stores, seven
use “pro team” (“pro-team”) to identify sports-related apparel and shoes and five use
“pro-team” to identify sports or fitness-related equipment. While this evidence
shows third-party use of “pro team” (“pro-team”) for fitness-related goods and
services, it is of limited probative value. That is because applicant presented no

18 Applicant also submitted screenshots from the SUUNTO website (www.suunto.com)
offering for sale a “SUUNTO PRO TEAM PACK” for a monitor and software for displaying
workout date in real time. The web page indicates, however, that: “THIS PRODUCT IS
NO LONGER IN PRODUCTION.”’ An illegible website offers for sale a “REEBOK PRO
TEAM 36” Equipment Bag.” The screen shot indicated that the webpage covering these
goods “cannot be found.” Accordingly, these postings have no probative value.

Serial Nos. 85779111 and 85779130

26

evidence concerning the extent to which these third-party identifiers are used in
commerce. As a result, the record simply does not establish that PRO TEAM has
been diluted in the field of exercise and fitness-related goods and services. Ten
websites are simply insufficient to establish that PRO TEAM is highly suggestive
for exercise equipment.
While the Board has, in likelihood of confusion cases, given weight to
evidence of widespread and significant use by third parties of marks containing
elements in common with the involved marks to demonstrate that confusion is not
likely to occur,19 in this case, there is insufficient evidence of such third-party use
that would establish that “PRO TEAM” has been diluted in the field of physical
fitness products and services. Moreover, applicant has not established that PRO
TEAM is highly suggestive and otherwise weak for exercise equipment, such that
applicant may incorporate registrant’s entire distinctive mark and overcome
confusion by adding BEACHBODY and P90X, respectively. As such, this is not a
situation where the addition of a house mark, or other matter, to one of two
otherwise similar marks would avoid likelihood of confusion between them.
In making our findings we have not ignored the “coexistence” of the FITNESS
PRO TEAM and design registration, owned by one owner, and the
PROTEAM/PROTEAM and design registrations, owned by a different owner. The
Board is not bound by the prior decisions of examining attorneys in allowing marks
for registration. It has been noted many times that each case must be decided on its

19 See e.g., Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d
1445, 1462 (TTAB 1987).
Serial Nos. 85779111 and 85779130

27

own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (“Even if some prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are not privy to the record
of those prior proceedings and, as just stated, are obligated to assess the
registrability of each of applicant’s marks on its own merits and not simply based on
the existence of other registrations. See In re Brown-Forman Corp., 81 USPQ2d
1284, 1286 n.3 (TTAB 2006); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1048 n.2 (TTAB 2002).
With further regard to its position that its marks and the cited mark can
coexist, applicant submitted copies of eight third-party registrations purportedly
“showing that sports-related goods and services and exercise-related goods and
services often originate from the same source.”20 The fact that these third-party
marks can coexist with each other, applicant argues, strongly suggests that
applicant’s mark is able to coexist with the cited registrations. While each of these
third-party registrations covers a variety of goods and services, many of which are
identical to or related to some of the goods and services in the other registrations,
none of the marks – considered in their entireties – in those registrations are

20 The registrations are for the following marks: CONVERSION TRAINING (Reg. No.
4298753); JUST POLE (Reg. No. 4298704); TOPJSEN (Reg. No. 4292230); IRONBODY
(Reg. No. 4287977); ALICE in stylized form (Reg. No. 4295155); PRACTICE PLAY WIN
(Reg. No. 4141857); UP in stylized form (Reg. No. 4248944); and BRASS (Reg. No.
4240043).
Serial Nos. 85779111 and 85779130

28

similar to one another. Accordingly, their coexistence has no probative value to this
decision. In any case, as just stated, each case must be determined on its own
merits. Nett Designs, supra.
Because the identical term PRO TEAM is registrant’s entire distinctive mark
and forms a significant portion of applicant’s mark, we find the marks as a whole
are similar in appearance, sound, connotation and commercial impression.
Contrary to applicant’s contention, the additions of BEACHBODY and P90X to
applicant’s marks do not significantly alter the commercial impression of the mark.
That is, purchasers familiar with registrant’s mark PRO TEAM as used in
connection with the identified exercise equipment, namely weights and weight
benches, are likely to assume that the house mark BEACHBODY simply identifies
what had previously been an anonymous source for those goods, see In re Fiesta
Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (“When, as in this case, the common
part of the marks is identical, purchasers familiar with the registrant’s mark are
likely to assume that the house mark simply identifies what had previously been an
anonymous source”), and that PX90 PRO TEAM is a variant mark identifying a new
line of goods.
The du Pont factor of similarity of the marks thus favors a finding of
likelihood of confusion, while the factor of the number and nature of similar marks
in use in connection with similar goods and service is neutral.
Conclusion
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We have carefully considered all of applicant’s arguments and evidence, even
if not specifically discussed herein, but have not found them persuasive. Based on
all of the evidence of record bearing on the relevant du Pont factors, we conclude
that applicant’s marks BEACHBODY PRO TEAM and P90X PRO TEAM for their
identified services are likely to cause confusion with the cited registration for PRO
TEAM. We conclude so principally due to the similarity of the marks, the
relatedness of the goods and services, and the overlapping trade channels and
purchasers. Moreover, applicant has not established that the common portions of
the marks are diluted or inherently weak. In view of our finding regarding the cited
PRO TEAM registration, we need not discuss the other cited registrations.
To the extent that any of applicant's points raises a doubt about likelihood of
confusion, we resolve that doubt, as we must, in favor of the prior registrant. Hyper
Shoppes, 6 USPQ2d at 1026.
Decision: The refusals to register under Section 2(d) of the Trademark Act
issued in application Serial Nos. 85779111 and 85779130 are affirmed.