First Maxx, LLC

Trademark Trial and Appeal Board

May 22, 2013

No. 85360663 (T.T.A.B. May. 22, 2013)

Mailed:
May 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re First Maxx, LLC
________

Serial No. 85360663
_______

Mary Sotis and Rachel Kronman of Frankfurt Kurnit Klein &
Selz, P.C. for First Maxx, LLC.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Mitchell Front, Managing Attorney).
_______

Before Seeherman, Shaw and Gorowitz, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

First Maxx, LLC has appealed from the final refusal of
the trademark examining attorney to register THE MAXX
FITNESS CLUBZZ and design, as shown below, for “providing
fitness and exercise facilities.”1

1 Application Serial No. 85360663, filed June 30, 2011, based on
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-
to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85360663
2

Applicant has disclaimed exclusive rights to use FITNESS
CLUBS. Registration has been refused pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the marks in the
following two registrations that, if used in connection
with applicant’s services, it is likely to cause confusion
or mistake or to deceive:
Registration No. 3337965 for

for “health club services, namely providing
instruction and equipment in the field of
physical exercise; providing fitness and exercise
facilities”;2

and Registration No. 3932746 for

2 Issued November 20, 2007.
Ser. No. 85360663
3
for “health and fitness club services, namely,
providing fitness and exercise facilities; health
and fitness club services, namely, physical
fitness consultation, physical fitness training
services.”3

The examining attorney has explained that, at the time he
issued the refusals of registration, both of the cited
registrations were owned by the same person, Timothy J.
Goodwin, but that Registration No. 3932746 “has
subsequently been assigned to a related limited liability
company.” Brief, unnumbered p. 2. USPTO records show that
the registration for MAX FITNESS was assigned to Max
Fitness LLC on January 20, 2012, the date of the Office
action in which the examining attorney cited this
registration. However, nothing in the record actually
shows that the assignee is a related company to the
licensor; at page 12 of his brief the examining attorney
qualifies his statement that the parties are related to say
that they are “apparently” related, because “both share the
same mailing address.” Id. In point of fact, the only
information about addresses is that the same address is
listed for both parties in the assignment document.
Applicant contests the examining attorney’s assumption
that the cited registrations are owned by related
companies, and that they should be treated as “companion

3 Issued March 15, 2011.
Ser. No. 85360663
4
registrations.” We agree with applicant. In the absence
of evidence that Mr. Goodwin and Max Fitness LLC have an
ownership or contractual relationship, we must regard the
two cited registrations as being owned by different and
unrelated entities.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). Each factor may, from case to case, play a
dominant role. Du Pont, 177 USPQ at 567.
In this case, we think that the strength of the cited
marks, and the number and nature of similar marks in use on
similar goods and in connection with similar services, are
the most significant factors. Applicant has submitted
copies of several third-party registrations which include
the term MAX or MAXIMUM, as listed below:4

4 Applicant did not submit actual copies of the third-party
registrations until it filed its appeal brief. Normally such
exhibits would be given no consideration, as the record in the
application should be complete prior to the filing of an appeal.
Trademark Rule 2.142(d). However, during prosecution of the
application applicant listed the particulars of the registrations
in its responses, and the examining attorney did not object nor
did he advise applicant that a mere listing was not the
appropriate method to make third-party registrations of record.
Ser.

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Ser. No. 85360663
6
Although third-party registrations are not evidence of
use of the marks, they can be used in the manner of
dictionary definitions, to show that a term has a
significance in a particular industry. Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151 (CCPA 1978). These registrations shows that, in the
area of physical fitness, MAX has the meaning of “maximum,”
in the sense of the greatest degree of fitness or work-out.
As a result, the inclusion in applicant’s mark and the
cited marks of MAX is an insufficient basis upon which to
bottom a holding of likelihood of confusion. Mead John &
Co. v. Peter Eckes, 195 USPQ 187 (TTAB 1977).
Further, applicant has submitted substantial evidence
of third-party use of MAX-formative marks. Some of this
evidence shows use of several of the marks in the third-
party registrations listed above, e.g., Z-MAX FITNESS
CLUBS, FITNESS MAXX personal training services, MAXIMUM
FITNESS MINIMUM TIME workout, and MMAXOUT Fitness.
Additional third-party evidence of MAX marks for health
club and related services includes, inter alia, M2MAX fit
club, MAXWORKOUTS for high-intensity workouts, MAX MARTIAL
ARTS & FITNESS, MAX FITNESS ACADEMY (gym membership and
personal training), MAX FITNESS ELITE (website shows photo
Ser. No. 85360663
7
of an exercise class), 02MAX on O2 MAX Fitness website, and
F-MAX FITNESS for gym and personal trainer services.
The foregoing evidence, as well as additional evidence
submitted by applicant that we have not detailed here,
demonstrates that many entities providing physical
fitness/health club services use “MAX” in their trademarks.
As a result, it appears that consumers are able to
distinguish between these marks by other elements in the
marks. Thus, merely because MAX is a common element in two
marks is not a sufficient basis for finding likelihood of
confusion.
Based on the evidence of record, we find that the
scope of protection to which either of the cited
registrations is entitled is quite limited. With that in
mind, we turn to a consideration of the marks herein.
Applicant’s mark does not have the element “MAX”; rather,
the first element is spelled MAXX, and the double X at the
end of the word is emphasized by being depicted in much
larger type from the letters MA, so that it gives a
different impression from MAX. Further, the word CLUB is
spelled CLUBZZ, and this odd spelling, with the double Z,
reinforces the double X in MAXX. When applicant’s mark is
compared with the registered mark MAX and with MAX FITNESS,
Ser. No. 85360663
8
the marks as a whole convey different commercial
impressions.
We acknowledge the examining attorney’s point that the
double X and double Z in applicant’s mark would not be
articulated when the mark is spoken, so that THE MAXX
FITNESS CLUBZZ would sound very similar to the mark MAX
FITNESS. However, we think this similarity in sound is
outweighed by the differences in appearance and commercial
impression. Because fitness and exercise facilities are
physical locations, the appearance of the mark takes on a
greater importance.
We also give some weight to applicant’s argument that
customers for fitness and exercise facilities exercise a
degree of care in choosing such facilities, because these
facilities normally require a membership fee or long-term
investment. The examining attorney has disagreed, saying
that such a decision is often made on impulse, for example,
as a result of a New Year’s resolution, or the decision is
made based on convenience of location. Although the
decision to join a fitness club may be made on impulse, the
decision as to which fitness club to join would not be.
Thus, in the course of the activities connected with
signing up with a fitness club, a potential consumer would
have the opportunity to take note of applicant’s logo, with
Ser. No. 85360663
9
its particular distinctive elements. As for the examining
attorney’s comment that the choice of fitness club is based
on location, we give no weight to this contention, since
the examining attorney is essentially saying that the
trademark would play no role at all in the decision to
purchase the services. The du Pont factor of the
conditions of purchase favor a finding of no likelihood of
confusion.
Because of the highly suggestive nature of the element
MAX, and the limited scope of protection to which the cited
registrations are entitled, we find that the differences in
appearance and commercial impression between applicant’s
mark and the cited marks outweigh the factors (legally
identical services and therefore legally identical channels
of trade) that favor a finding of likelihood of confusion.
Decision: The refusals of registration are reversed.