BPI Sports, LLC

Trademark Trial and Appeal Board

Aug 31, 2017

No. 86711039 (T.T.A.B. Aug. 31, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 31, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BPI Sports, LLC
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Serial No. 86711039
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John C. Carey of Carey Rodriguez Milian Gonya LLP,
for BPI Sports, LLC
Dean A. Hopkins II, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Taylor, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
BPI Sports, LLC (“Applicant”) seeks registration on the Principal Register of the
mark BE UNSTOPPABLE (in standard characters) for “dietary and nutritional
supplements” in International Class 5.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of

1 Application Serial No. 86711039, filed July 31, 2015, based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §
1051(b).
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likelihood of confusion with the registered mark BE UNSTOPPABLE (also in
standard characters) for “Personal fitness training services and consultancy; physical
fitness conditioning classes; physical fitness instruction; physical fitness training
services; providing fitness and exercise facilities” in International Class 41.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003).
We have considered each du Pont factor for which there is evidence or argument,
and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered
each factor for which we have evidence, we focus our analysis on those factors we find
to be relevant.”). Varying weights may be assigned to each du Pont factor depending
on the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26

2 Registration No. 4539613, registered on May 27, 2014.
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USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in
any particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the goods and services. See In re I.AM.Symbolic, LLC, __F.3d __,
2017 WL 3393456, *3 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth
Van Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013).
A. Comparison of the Marks
We first address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve 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, the marks are identical in every
way, which “weighs heavily” in support of finding a likelihood of confusion. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984). And because the marks are identical, the degree of similarity between the
goods and services that is required to support a finding of likelihood of confusion is
reduced. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993);
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and
In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).

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B. Relatedness of the Goods and Services

We next compare Applicant’s goods and Registrant’s services. In making our
determination under this second du Pont factor, we look to the goods and services as
identified in the involved application and cited registration. See Stone Lion Capital
Partner, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 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 basis of the respective descriptions of goods.”).
In this case, Applicant’s goods are identified as “dietary and nutritional
supplements.” Registrant’s services are “Personal fitness training services and
consultancy; physical fitness conditioning classes; physical fitness instruction;
physical fitness training services; providing fitness and exercise facilities.” It is only
necessary that there be a viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ
355, 356 (TTAB 1983). Further, as a general rule, it is not necessary that the
respective goods and services be competitive, or even that they move in the same
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trade channels to support a finding of likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner, or that the conditions and
activities surrounding the marketing of the goods and services are such that they
would or could be encountered by the same persons under circumstances that could,
because of the similarity of the marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
The Trademark Examining Attorney made of record 19 third-party, use-based
registrations identifying both Applicant’s goods and the services identified in the
cited registration.3 Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar with them, they nonetheless
have some probative value to the extent that they serve to suggest that the goods and
services listed therein are of a kind which may emanate from a single source under a
single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). A representative
sample are identified below:
(Reg. No. 4145483) registered on the
Principal Register for “Dietary and nutritional supplements; Dietary
and nutritional supplements used for weight loss; Dietary drink mix for
use as a meal replacement; Dietary food supplements; Dietary
supplemental drinks; Dietary supplements; Dietary supplements for
human consumption; Meal replacement and dietary supplement drink
mixes” and “Personal training provided in connection with weight loss
and exercise programs; Personal training services, namely, strength and

3 See October 1, 2015, Office Action, TSDR pp. 25-38; see also July 28, 2016, Final Office
Action, TSDR pp. 67-109.
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conditioning training; Physical fitness training services; Providing
assistance, personal training and physical fitness consultation to
individuals to help them make physical fitness, strength, conditioning,
and exercise improvement in their daily living; Providing information in
the field of exercise training”;

(Reg. No. 4205761) registered on the Principal
Register for, among other things, “Dietary and nutritional supplements
used for weight loss; Weight management supplements” and
“Consulting services in the fields of fitness and exercise; Providing a
website featuring information on exercise and fitness; Providing
information in the field of exercise training; Providing information on
physical exercise”;

IGNITION APG (Reg. No. 4653246) registered on the Principal Register
for, among other things, “dietary and nutritional supplements” and
“Sport-specific athletic training services, namely, physical fitness
instruction in the field of exercise, fitness, aerobic, speed, agility,
stability, performance enhancement and strength building; physical
fitness training and consultation services for athletes, cheerleaders, and
gymnasts involved in a variety of different active sports, athletic
pursuits and physical activities; and providing fitness training, physical
fitness training, and physical fitness skill training”;

U REVOLUTION (Reg. No. 4491987) registered on the Principal
Register for “nutritional supplements” and “education services, namely,
mentoring in the field of physical fitness; physical fitness instruction”;

CANO HEALTH (Reg. No. 4583713) registered on the Principal Register
for, among other things, “dietary supplements; food supplements;
mineral supplements; nutritional supplements; vitamin supplements”
and “Personal training provided in connection with weight loss and
exercise programs; Health club services, namely, providing instruction
and equipment in the field of physical exercise; Providing a web site
featuring information on exercise and fitness; Providing classes,
workshops, seminars and camps in the fields of fitness and exercise;
Providing information in the field of exercise training; Providing
information on physical exercise”;

(Reg. No. 3625603) registered on the Principal
Register for “Dietary supplements” and “Personal training services,
namely, strength and conditioning training”;

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(Reg. No. 3625754) registered on the Principal
Register for, among other things, “dietary supplements” and “Health
club services, namely, physical fitness consultation services, physical
fitness facilities, physical fitness classes, physical fitness instruction,
physical fitness instruction in the field of core strengthening, physical
fitness camps and physical fitness training camps, conducting
workshops in physical fitness and physical fitness training”; and

BUILTLEAN (Reg. No. 4486180) registered on the Principal Register
for, among other things, “nutritional and dietary supplements” and
“Educational services, namely, providing web-based and classroom
training in the field of exercise equipment, physical fitness, diet and
nutritional programs and distribution of training material in connection
therewith; educational services, namely, conducting classes, seminars,
conferences, workshops, and field trips in the field of physical fitness,
diet and nutritional programs 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; physical fitness training services and
consultancy; providing information and programs in the field of exercise
training.”

Additionally, the Trademark Examining Attorney submitted websites from third-
party online retailers offering for sale dietary and/or nutritional supplements and
physical fitness services under the same mark.4 By way of illustration, we note the
following:
www.beachbody.com;
www.julianweightloss.com;
www.bodyconstructfit.com;
www.curves.com;

4 See October 1, 2015, Office Action, TSDR pp. 7-24; see also July 28, 2016, Final Office
Action, TSDR pp. 30-109.

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www.hghplus.net;
www.core3training.com;
www.lifetimefitness.com; and
www.traceyanderson.com
Applicant argues that its dietary and nutritional supplements are not related to
Registrant’s physical fitness services because (1) Registrant limits use of its mark to
a specific portion of a gym facility referred to as the “the Cage,” which is purportedly
a highly specialized training area, and (2) Registrant only uses its registered mark in
connection with its physical fitness services specified in the cited registration, and
not with dietary and nutritional supplements.5
First, Applicant’s argument based on how the cited mark is used in the
marketplace is unavailing. For purposes of our Section 2(d) analysis, we are
constrained to make our determination based on the description of services in the
cited registration and cannot consider extrinsic evidence regarding Registrant’s
actual use of its mark. See Stone Lion Capital Partners, LP, 110 USPQ2d at 1162.
Second, and contrary to Applicant’s argument, it is not necessary for Applicant to
provide the services identified in the cited registration or for the Registrant to provide
Applicant’s identified goods to support a finding of likelihood of confusion. It is
sufficient that the parties’ respective goods and services are related in some manner,
or that the circumstances surrounding their marketing are such that they would be
encountered by the same persons in situations that would give rise, because of the

5 See Applicant’s Appeal Brief, p. 5-6, 8 TTABVUE 6-7.
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marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods and services. In re Thor
Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). To that end, we find that the third-
party registration evidence and the website evidence submitted by the Trademark
Examining Attorney together amply demonstrate the relatedness of Applicant’s
dietary and nutritional supplements and Registrant’s physical fitness services, and
show that consumers, if they encountered both goods and services sold under
confusingly similar marks (in this instance, under identical marks), are likely to
believe that they emanate from the same source.
In view of the above, we find that the second du Pont factor regarding the
similarity of the goods and services also weighs in favor of finding that there is a
likelihood of confusion.
C. Similarity of Trade Channels and Classes of Purchasers
We must base our determination regarding the similarities between channels of
trade and classes of purchasers on the goods and services as they are identified in the
application and the cited registration. Octocom Sys. Inc., 16 USPQ2d at 1787;
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Mini Melts, 118 USPQ2d at 1471. Neither Applicant’s application nor the
cited registration contains any limitations as to trade channels or classes of
customers, and we may not read any limitation into them. Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) quoted in In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1091 (TTAB 2016); In re Elbaum, 211 USPQ 639, 640 (TTAB
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1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). The
only evidence relating to the trade channels through which the goods and services at
issue travel is the third-party website evidence submitted by the Trademark
Examining Attorney, discussed above, as well the evidence that Applicant itself
markets and sells its dietary and nutritional supplements and physical fitness
workout plans on its own website.6 This evidence shows that the goods identified in
Applicant’s application, as well as services identified in the cited registrations, may
be offered via the same virtual marketplace to all relevant classes of purchasers, i.e.,
individuals interested in health and fitness. Thus, the respective goods and services,
as identified, would be provided in the same or at least overlapping channels of trade
to the same or overlapping classes of purchasers. Thus, the third du Pont factor
weighs in favor of finding a likelihood of confusion.
D. Sophistication of Consumers
Applicant argues that likelihood of confusion between its involved mark and the
cited mark is “de minimis because some consumers have a ‘heightened sophistication’
that makes confusion less likely.”7 Specifically, Applicant contends that the coaches,
instructors and trainers of the prospective buyers of Registrant’s physical fitness
services would ensure that any potential confusion on part of the prospective buyers

6 See July 28, 2106 Office Action; TSDR 9-25.
7 Applicant’s Appeal Brief at pp. 6-7; 8 TTABVUE 7-8.
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of Applicant’s dietary and nutritional supplements as to source or sponsorship of the
goods and services would be quickly dispelled.8
There is nothing in the record which shows that customers for Applicant's dietary
and nutritional supplements and Registrant’s physical fitness instruction services
are anything other than ordinary consumers who are interested in health and fitness.
The fact that such consumers are conscious of health and nutritional matters,
however, does not mean that they are necessarily knowledgeable and sophisticated
when it comes to discriminating as to the source or sponsorship of goods and services
directed principally to the health, nutritional and physical fitness fields, particularly
where such goods and services, as in the case of Applicant’s goods and Registrant’s
services, are offered under the identical mark, and would not generally receive the
care and attention for their selection which would typically be exercised with respect
to goods and services which are relatively expensive and/or highly scientifically or
technically oriented. See, e.g., Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289, 292 (CCPA 1962); see also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Accordingly, we find this du Pont factor to be neutral.
E. Conclusion
We have considered all of the arguments and evidence of record pertaining to the
relevant du Pont factors, including those not specifically discussed herein. Because
we have found that: (1) the marks are identical in appearance, sound, connotation

8 Id. at 7; 8 TTABVUE 8.
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and commercial impression; and (2) Applicant’s goods are related to Registrant’s
services and that they move in the same or overlapping trade channels and are offered
to the same or overlapping classes of purchasers, we conclude that Applicant’s mark,
as used in connection with the goods identified in the application, so resembles the
cited mark for the identified services as to be likely to cause confusion or mistake, or
to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s BE UNSTOPPABLE mark is
affirmed.