CytoSport, Inc.

Trademark Trial and Appeal Board

Apr 9, 2018

No. 87239887 (T.T.A.B. Apr. 9, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 9, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re CytoSport, Inc.
_____
Serial No. 87239887
_____
James R. Steffen of Faegre Baker Daniels LLP
for CytoSport, Inc.

Jimmy Stein, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____
Before Taylor, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
CytoSport, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark SLEEPING GIANT in standard characters, for:
Dietary and nutritional supplements; pre-mixed
nutritionally fortified beverages, dietary and nutritional
supplements in powdered form, dietary supplement drink
mixes, nutritional supplements in the nature of
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nutritionally fortified chews, all of the foregoing for the
purposes of building lean muscle and aiding sleep in
International Class 5
Milk protein-based meal replacement beverages; milk
protein-based meal replacement drink mixes in
International Class 29
Non-carbonated soft-drinks and sports drinks; workout
recovery drinks in International Class 32.1
The Examining Attorney has finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered mark SLEEPING GIANT WORKOUT in standard characters, with
WORKOUT disclaimed, for:
Educational services, namely, conducting classes,
seminars, conferences, and workshops in the fields of
health, physical fitness, and nutrition; instruction in the
fields of health, physical fitness, and nutrition;
consultation in the field of physical fitness; training in the
use and operation of physical fitness equipment; personal
training services, namely, strength and conditioning
training in International Class 41.2
After the final Office Action, Applicant appealed. We affirm the refusal.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be

1 Application Serial No. 87239887 was filed November 17, 2016, based on a declared bona
fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Registration No. 3202518 issued January 23, 2007, and has been renewed.
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considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. Number and Nature of Similar Marks in Use on Similar Goods or with
Similar Services
Because the strength of the cited mark under the sixth du Pont factor impacts our
comparison of the marks, we first address Applicant’s claim under this factor that the
cited registration deserves a narrow scope of protection in view of third-party
registrations that consist of or include the term SLEEPING GIANT. Evidence of
third-party use and registration of a term in the relevant industry is considered in the
likelihood of confusion analysis. Juice Generation, Inc. v. GS Enterprises LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur
Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015). In the case before us, however, Applicant points to no
evidence of third-party use, and instead relies only on four third-party registrations
of marks that consist of or include SLEEPING GIANT for unrelated goods and
services, as discussed below. Applicant’s record thus does not demonstrate
commercial weakness from third-party use. See In re Morinaga Nyugyo Kabushiki
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Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“But Applicant’s citation of third-
party registrations as evidence of market weakness is unavailing because third-party
registrations, standing alone, are not evidence that the registered marks are in use
on a commercial scale, let alone that consumers have become so accustomed to seeing
them in the marketplace that they have learned to distinguish among them by minor
differences.”); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5
(TTAB 2013) (“the mere existence of third-party registrations is not evidence that the
registered marks are actually in use or that the public is familiar with them.”).
However, even where the record lacks proof of third-party use, third-party
registration evidence may show conceptual weakness, in that a term carries a highly
suggestive or descriptive connotation in the relevant industry. Here, Applicant’s
evidence does not establish conceptual weakness. None of the four third-party
registrations identifies goods or services related to Registrant’s services or
Applicant’s goods. In fact, the third-party registrations cover goods and services far
removed from those in this case.3 Thus, unlike in Juice Generation and Jack Wolfskin,

3 Registration No. 3712991 identifies wine. TSDR March 24, 2017 Response to Office Action
at 11.
Registration No. 4130087 recites various services such as providing consumer information in
the field of earth-friendly products and resources in the foodservice industry, distributorship
services in the field of foods and foodservice products produced in an environmentally
responsible manner, including organic foods, and providing educational information in the
field of restaurants, namely, identification of restaurants that practice environmental
responsibility, including restaurants that feature organic foods. Id. at 12.
Registration No. 3141370 recites promotion of a discipleship and fundraising campaign, as
well as charitable fundraising services. Id. at 13.
Registration No. 3611638 recites advertising, marketing and promotion services;
management of performing artists. Id. at 14.
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where the third-party evidence involved the very same goods and services at issue,
here Applicant’s third-party registration evidence relates to entirely different goods
and services. It therefore lacks probative value as to alleged weakness of the term
SLEEPING GIANT in relation to Registrant’s services. See i.am.symbolic, 123
USPQ2d at 1751 (disregarding third-party registrations for goods in other classes
where the proffering party “has neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes, … support a finding that registrants’ marks are weak with respect to
the goods identified in their registrations”). Thus, we find no basis upon which to
accord the cited registration a narrow scope of protection.
B. Similarity of the Marks
The next du Pont factor concerns a comparison of the applied-for and cited marks,
which we consider “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). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. 101 USPQ2d at
1721; see also Edom Labs, 102 USPQ2d 1546, 1551 (TTAB 2012).
The marks SLEEPING GIANT and SLEEPING GIANT WORKOUT are obviously
very similar. First, the shared term SLEEPING GIANT creates a significant visual
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resemblance between the two marks and makes them sound quite similar. In
Registrant’s mark, SLEEPING GIANT, as the first part of the mark, is “most likely
to be impressed upon the mind of a purchaser and remembered.” See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). The last word in
Registrant’s mark, WORKOUT, is the only difference between the marks. Applicant
argues the importance of this additional descriptive word because it would be
“incongruous in the context of Applicant’s ingestible goods.”4 However, in this context,
WORKOUT, which Registrant disclaimed as descriptive, would be understood merely
as a reference to the subject matter of Registrant’s services. The descriptive nature
of the word diminishes its significance in the comparison of marks, because
consumers would be unlikely to focus on it to distinguish source. See In re Dixie Rests.,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Because the dominant SLEEPING GIANT component of Registrant’s mark is
identical to the proposed mark, we also find the marks’ connotations and commercial
impressions to be very close. As previously noted, the word WORKOUT in the cited
mark adds little to the commercial impression because it describes the services.
Although it contributes a descriptive meaning to the registered mark, this difference
in connotation does not distinguish the marks for likelihood of confusion purposes. A
consumer familiar with Registrant’s SLEEPING GIANT WORKOUT who

4 4 TTABVUE 4 (Applicant’s Brief).
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encountered Applicant’s mark for fitness-related goods likely would view SLEEPING
GIANT as a variation of Registrant’s mark.
Considering the marks in their entireties, we find the appearance, sound,
connotation and commercial impression of Applicant’s SLEEPING GIANT mark to
be very close to the cited mark, SLEEPING GIANT WORKOUT. See Packard Press,
Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000)
(“Once all the features of the mark are considered, . . . it is not improper to state that,
for rational reasons, more or less weight has been given to a particular feature of the
mark, provided the ultimate conclusion rests on a consideration of the marks in their
entireties.”). We find the two marks similar, weighing heavily in favor of likely
confusion.
C. The Goods and Services, Trade Channels, and Classes of Consumers
As to the goods and services, we must determine whether their degree of
relatedness rises to such a level that consumers would mistakenly believe that
Applicant’s goods emanate from the same source as Registrant’s services. In making
this analysis of the second du Pont factor, we look to the identifications of goods and
services in the application and cited registration. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Also, “it is sufficient for finding a likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122,
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1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant has identified its goods as:
Dietary and nutritional supplements; pre-mixed
nutritionally fortified beverages, dietary and nutritional
supplements in powdered form, dietary supplement drink
mixes, nutritional supplements in the nature of
nutritionally fortified chews, all of the foregoing for the
purposes of building lean muscle and aiding sleep in
International Class 5
Milk protein-based meal replacement beverages; milk
protein-based meal replacement drink mixes in
International Class 29
Non-carbonated soft-drinks and sports drinks; workout
recovery drinks in International Class 32.
Registrant’s services are:
Educational services, namely, conducting classes,
seminars, conferences, and workshops in the fields of
health, physical fitness, and nutrition; instruction in the
fields of health, physical fitness, and nutrition;
consultation in the field of physical fitness; training in the
use and operation of physical fitness equipment; personal
training services, namely, strength and conditioning
training in International Class 41.
We note, first, that based on the identifications themselves, Registrant’s broadly
worded educational and instruction services in the fields of physical fitness and
nutrition are complementary to Applicant’s nutritional supplements, meal
replacement beverages and workout recovery drinks, all being goods and services that
can be used together by the same consumer to achieve a healthier lifestyle. See In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984) (finding bread and cheese to be related because they are often used in
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combination, and stating: “Such complementary use has long been recognized as a
relevant consideration in determining a likelihood of confusion.”). Further, the
Examining Attorney submitted third-party website screenshots showing fitness
training facilities offering nutritional supplements and meal replacement products.
For example:5
The Gold’s Gym website states, “Come by the gym and we
will gladly sit down with you and determine the nutritional
system that fits your lifestyle and fitness goals, or you can
take advantage of the ONLINE Supplement Recommender
which you can do from the convenience of your own home.”
The webpage further notes, “We use Supplement Rx
branded products…” and displays an accompanying
photograph of bottles of supplements and products labeled
“meal replacement.”6
The 24 Hour Fitness webpage touts itself as “one of the
nation’s leading fitness club chains,” includes a menu
option for “Studio Classes,” and describes its amenities as
including fitness training and a retail area offering
nutrition supplements.7
The Facebook page of Snap Fitness 24/7 offers “personal
training, group classes, supplements….” One post states,
“The fitness industry is always coming out with new ways
to make the most of your workout, pre-workout and energy
supplements being one.”8
Although we agree with Applicant that the evidence fails to show directly that the
supplements and fitness services are offered under the same marks, it nonetheless
demonstrates consumer exposure to the same source offering services like those

5 We did not consider the Facebook page of Planet Fitness given its location outside the
United States. TSDR April 17, 2017 Office Action at 6 (facebook.com).
6 TSDR April 17, 2017 Office Action at 2 (goldsgym.com).
7 Id. at 8-9 (24hourfitness.com).
8 Id. at 10, 19 (facebook.com).
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recited in the cited registration and also offering supplements either at their fitness
facilities, through their websites, or both.
In addition, the record includes a large number of use-based third-party
registrations that cover these types of goods and services under the same mark,9
suggesting that they may emanate from the same source. Aquamar, 115 USPQ26 at
1126 n.5; In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). For
example:
• Reg. No. 4377081 identifies meal replacement drinks, dietary
supplements in the nature of powders and vitamins, sports
drinks, physical fitness instruction and consultation, and
conducting fitness classes.10
• Reg. No. 4502592 identifies dietary and nutritional supplements,
meal replacement shakes, and fitness, education and coaching.11
• Reg. No. 4506553 identifies dietary and nutritional supplements,
meal replacement shakes, and fitness, education and coaching,
namely, providing online information about fitness.12
• Reg. No. 4739528 identifies nutritional supplements, packaged
concentrates and powders consisting primarily of vegetables
intended to be consumed as a beverage, classes and workshops in
the field of weight loss.13

9 TSDR December 21, 2016 Office Action at 17-68; 118-140. However, we do not find Reg. No.
4735699 (id. at 69-117) persuasive because it is a certification mark covering an extremely
broad range of goods.
10 Id. at 47-49.
11 Id. at 62-64.
12 Id. at 65-67.
13 Id. at 118-20.
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• Reg. No. 5006541 identifies nutritional supplements, nutritional
supplement shakes, and personal fitness training services.14
The evidence shows that these goods and services move in the same trade
channels. We reject Applicant’s assertion of distinct trade channels for the goods and
services based on claimed marketplace differences that are not reflected in the
unrestricted identifications of goods and services. This du Pont factor must be based
upon the identifications of the respective goods/services as listed in the application
and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012); Octocom, 16 USPQ2d at 1787. We must assume that the identified goods
and services move through all normal and usual channels of trade and methods of
distribution for such goods and services, and here, the evidence establishes that
supplements, meal replacement beverages, and sports drinks move in some of the
same channels of trade as health and fitness instruction. See i.am.symbolic llc, 123
USPQ2d at 1751; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983).
Applicant argues that the coexistence of allegedly similar trademarks owned by
different entities, registered on the one hand for goods like Applicant’s, and on the
other hand for services like Registrant’s, weighs against likelihood of confusion in
this case.15 However, we exclude those third-party registrations Applicant offered for

14 Id. at 135-37.
15 4 TTABVUE 7-9 (Applicant’s Brief); TSDR March 24, 2017 Response to Office Action at
18-32.
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the first time in its reply brief.16 As the Board held in In re Compania de Licores
Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012), third-party registrations
submitted at the briefing stage are “untimely and, thus, not proper for consideration.”
Under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d):
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
Accordingly, because the newly raised third-party registrations are not in the record,
we give them no consideration.
Regardless, the properly introduced third-party registrations in the record do not
warrant a reversal of the refusal.17 There may be a myriad of reasons explaining the
coexistence of these seven pairs of third-party registrations, such as inherent
weakness or the weakness of the shared term, which limits the scope of protection of
the prior co-existing registrations. As discussed above, the cited mark in this case
suffers from no such weakness. “Applicant’s attempt to equate those co-existing
registrations, for each of those marks, with the situation herein is not persuasive.
Suffice it to say that each case must be decided on its own set of facts.” L’Oreal S.A.
and L’Oreal USA, Inc. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); see also In
re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (“each

16 7 TTABVUE 5-9 (Applicant’s Reply Brief).
17 TSDR March 24, 2017 Response to Office Action at 5-8.
Serial No. 87239887
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case must be decided on its own facts and the differences are often subtle ones.”).
Further, we are not bound by the allowance of prior registrations, even if they have
some characteristics that may appear relevant to this case. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
D. Consumer Sophistication
Applicant argues, without supporting evidence,18 that consumers would “exercise
a high degree of deliberation and care” in purchasing the goods and services at issue.19
We find no basis upon which to conclude that the identified goods and services are
specialized or expensive, and in view of the requirement that we consider the least
sophisticated potential purchasers, we reject Applicant’s proposition that consumers
will exercise care in purchasing these goods and services. See Stone Lion Capital
Partners, 110 USPQ2d at 1163 (“Board precedent requires the decision to be based
‘on the least sophisticated potential purchasers.’”) We consider this factor neutral.
III. Conclusion
The overall similarity of the marks for related goods and services that move in the
same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.

18 We do not consider Applicant’s alleged quotes from Registrant’s website, which does not
appear in the record.
19 7 TTABVUE 10-11 (Applicant’s Reply Brief).