E. Mishan & Sons, Inc.

Trademark Trial and Appeal Board

Jul 18, 2013

No. 85365295 (T.T.A.B. Jul. 18, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re E. Mishan & Sons, Inc.
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Serial No. 85365295
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Angelo Notaro and John Zaccaria of Notaro, Michalos & Zaccaria P.C. for E. Mishan
& Sons, Inc.

Nicholas A. Coleman, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
_____

Before Bucher, Lykos, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On July 7, 2011, applicant applied to register ROCKET FITNESS, in
standard characters and with “FITNESS” disclaimed, for goods ultimately identified
as “Manually operated exercise equipment, namely, push-up assistance devices,
thigh muscle toning devices, and wheels for floor abdominal exercises; exercise
bands; straps for fitness training, namely, stretch-out straps; personal exercise
mats; exercise balls; medicine balls; all for home use” in International Class 28.1

1 Application Serial No. 85365295, filed on the basis of a bona fide intention to use the mark
in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
Serial No. 85365295
2

The examining attorney refused registration on the ground of a likelihood of
confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with
the registered mark ROCKETLOK for
Manually operated exercise equipment, namely a weight
exercise apparatus having an interlocking grip bar and
rotationally removable weight plates, featuring a weight
plate attached to a socket on the grip bar which can be
interlocked with additional weight plates using a simple
inset and twist motion and designed to limit rattle-type
noise typical of loose weights on a barbell and featuring a
latching mechanism to prevent a weight plate from being
accidentally disconnected in International Class 28.2
Applicant timely appealed, and briefing is complete.
Analysis
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). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

2 Registration No. 2949557, issued May 10, 2005; Combined Declaration of Use and
Incontestability under Sections 8 & 15 of the Trademark Act accepted and acknowledged
May 26, 2011. The examining attorney also refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the mark
in Registration No. 2994711 (also owned by Rocketlok, L.L.C., owner of the cited
’557 registration). The latter registration, however, was cancelled on October 12, 2012
under Trademark Act Section 8, 15 U.S.C. § 1058. Therefore, the refusal based on the ’711
registration is now moot and will be given no further consideration.
Serial No. 85365295
3

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.”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or evidence. To the extent
that any other du Pont factors for which no evidence or argument was presented
may nonetheless be applicable, we treat them as neutral.
We first address the similarity of the goods and their channels of trade, the
second and third du Pont factors, respectively. Applicant’s goods are restricted to
“home use,” while the goods identified in the cited registration contain no such
limitation. Because the identification in the cited registration contains no
limitations, it is presumed that it encompasses all goods of the type described, that
the goods move in all normal channels of trade, and that they are available to all
classes of purchasers. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, we
presume (and applicant does not argue otherwise) that the goods identified in the
cited registration may be sold for use either at home or elsewhere, such as in a gym.
Both the application and the cited registration are for manually operated
exercise equipment. The cited registration covers a “weight exercise apparatus”; in
more common parlance, Internet printouts show the registered mark used in
association with sets of dumbbells, weights, and related products.3 The goods

3 See March 8, 2012 response to Office action at 9; Request for Reconsideration at 39-48.
Serial No. 85365295
4

identified in the application are “push-up assistance devices, thigh muscle toning
devices, and wheels for floor abdominal exercises; exercise bands; straps for fitness
training, namely, stretch-out straps; personal exercise mats; exercise balls;
medicine balls.”
Record evidence shows that third parties offering exercise weights also
provide, under the same marks, exercise equipment of virtually every type
identified in the application, including push-up assistance devices, wheels for floor
abdominal exercises, exercise bands, personal exercise mats, exercise balls, and
medicine balls.4 There is also record evidence that sporting goods stores offer goods
of the types identified in both the application and the cited registration in the same
sections of their websites, under “exercise,” “exercise equipment,” or “fitness.”5 This
evidence establishes that exercise equipment of the kinds identified in the
application are related to the goods in the cited registration, that they travel
through the same channels of trade, and that they emanate from the same sources.
In our likelihood of confusion analysis, these findings under the second and third
du Pont factors strongly weigh in favor of finding that confusion is likely.
We turn next to 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 Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691

4 See April 9, 2012 final Office action at 2-12 (roguefitness.com), 16-20 (bodysolid.com), 21-
28 (tko.com), 29-34 (zonfitness.com), 35-44 (valorathleticsinc.com).
5 See id. at 45-48 (sportsauthority.com), 49-50 (dickssportinggoods.com), 51-54
(academy.com).
Serial No. 85365295
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(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Where, as here, the goods are
closely related, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007); Schering-Plough HealthCare Prods. Inc. v. Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
It is well-settled that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this dominant feature in
determining the commercial impression created by the mark. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing
improper 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.”) (footnote omitted).
Applicant seeks to register the mark ROCKET FITNESS, while the cited
registration is for the mark ROCKETLOK. We find the identical word “ROCKET”
to be the dominant element in both applicant’s mark and the cited registered mark.
The significance of ROCKET as the dominant element of the marks is further
reinforced by its location as the first part of each mark. See Presto Prods. Inc. v.
Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that “it is often the
first part of a mark which is most likely to be impressed upon the mind of a
Serial No. 85365295
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purchaser and remembered”). See also Palm Bay Imps. Inc., 73 USPQ2d at 1692;
Century 21 Real Estate Corp., 23 USPQ2d at 1700.
The disclaimed term “FITNESS” is highly descriptive in association with
exercise equipment. The term “LOK” – the phonetic equivalent of “lock” – in the
cited registered mark also has descriptive significance for the goods identified in the
registration, i.e., registrant’s patented interlocking weight exercise apparatus.
Descriptive or generic matter may have less significance in creating a mark’s
commercial impression and little weight in likelihood of confusion determinations.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on
likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 752); In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”).
We find that the presence of the identical term ROCKET as the initial and
dominant part of each mark, followed in each by a descriptive term, contributes
strongly to the confusing similarity of the marks.
Applicant focuses the majority of its appeal brief on arguments that its mark
differs from the cited registered mark in sight, sound, meaning, and commercial
impression. In comparing the marks, however, we are mindful that 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
Serial No. 85365295
7

overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests.
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed.
Cir. June 5, 1992). The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. Winnebago
Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant emphasizes that its goods have no locking features, so the “lok”
portion of the cited registered mark is not descriptive of applicant’s goods and the
connotation of ROCKETLOK as fast-locking is not apt. Even so, we observe that
the converse analysis does not hold. Because “fitness” is equally descriptive in
association with applicant’s goods and the cited registered goods, the applied-for
mark ROCKET FITNESS is likely to cause confusion with the existing registered
mark ROCKETLOK.
Applicant also contends that marks incorporating the term ROCKET already
coexist in association with fitness-related goods without likelihood of confusion.
Applicant cites its own registrations for AB ROCKET and AB ROCKET TWISTER,
both for “manually-operated exercise equipment,”6 and use and registration by a
third party of ROCKIT for “exercise machines,”7 as well as use by another third
party of the name “Ab Balance Rock It Exercise Stepper.”

6 Registration Nos. 3395378 and 3979531, respectively.
7 Registration No. 1929244.
Serial No. 85365295
8

Three of the four uses and registrations cited by applicant differ from the
marks at issue in that they feature “AB” as their first term. More importantly,
there is no evidence that any of the names on which applicant’s argument rests
have been used so extensively that consumers have become sufficiently conditioned
by their use that they can distinguish between such marks on the basis of minor
differences. The probative value of third-party trademarks depends entirely on
their usage. Palm Bay Imps. Inc., 73 USPQ2d at 1693. Where, as here, the record
includes no evidence about the extent of third-party uses, the probative value of this
evidence is minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57
USPQ2d 1557, 1561 (Fed. Cir. 2001); see also Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark,
however, registration evidence may not be given any weight.”). “The existence of
[third-party] registrations is not evidence of what happens in the market place or
that consumers are familiar with them nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010) (third-party registrations cannot justify
registration of another confusingly similar mark). Finally, prior decisions in other
applications are not binding on the Board, and each case must stand on its own
merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977).
Serial No. 85365295
9

For all the reasons discussed above, we find applicant’s mark ROCKET
FITNESS to be similar to the cited mark ROCKETLOK in appearance, sound,
connotation, and overall commercial impression. Therefore, the first du Pont factor
weighs in favor of finding that confusion is likely.
Conclusion
We have carefully considered all the arguments and evidence of record as
they pertain to the relevant du Pont factors, even if not specifically discussed
herein. We find that applicant’s mark ROCKET FITNESS for its identified goods is
likely to cause confusion with the mark in cited Registration No. 2949557,
ROCKETLOK. To the extent there are any doubts, we resolve them, as we must,
against applicant as the newcomer and in favor of the registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 863, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.