Fitness Market Inc.

Trademark Trial and Appeal Board

May 12, 2016

No. 86310383 (T.T.A.B. May. 12, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fitness Market Inc.
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Serial No. 86310383
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Joshua T. Rose, of Hummel Coan Miller Sage & Rose LLC,
for Fitness Market Inc.

Shaila E. Lewis, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Cataldo, Mermelstein and Wolfson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Fitness Market Inc. (“Applicant”) seeks registration on the Principal Register of
the mark FITNESS MARKET (in standard characters) for
Retail store services featuring fitness machines and
equipment, namely weights, treadmills, rowing machines,
stair stepping machines, resistance machines, stationary
cycles
in International Class 35.1

1 Application Serial No. 86310383 was filed on June 16, 2014, based upon Applicant’s
allegation of first use of the mark and first use in commerce on July 20, 2011, under Section
1(a) of the Trademark Act.
Serial No. 86310383
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the
applied-for mark merely describes a feature or characteristic of Applicant’s services.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Applicable Law
Trademark Act Section 2(e)(1) prohibits registration of a mark which is merely
descriptive of the applicant’s goods or services. A term is deemed to be merely
descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). When two or more merely descriptive terms are
combined, the determination of whether the composite mark also has a merely
descriptive significance turns on whether the combination of terms evokes a new and
unique commercial impression. If each component retains its merely descriptive
significance in relation to the goods, the combination results in a composite that is
itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer
database management software); In re Petroglyph Games, Inc., 91 USPQ2d 1332
Serial No. 86310383
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(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services); In re
Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs); In re Putman
Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE
merely descriptive of news and information services in the food processing industry).
“If one must exercise mature thought or follow a multi-stage reasoning process in
order to determine what characteristics the term identifies, the term is suggestive
rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497
(TTAB 1978).
II. Analysis
Applicant seeks to register the mark FITNESS MARKET for “retail store services
featuring fitness machines and equipment, namely weights, treadmills, rowing
machines, stair stepping machines, resistance machines, [and] stationary cycles.”
The Examining Attorney argues that when consumers encounter Applicant’s mark
FITNESS MARKET, they “will immediately understand the word ‘FITNESS’ to refer
to the ‘fitness machines and equipment’ being sold through the retail store, and they
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will understand the word ‘MARKET’ to refer to the sale of goods, particularly fitness
goods.”2
The word FITNESS is defined as “the quality or state of being fit.”3 Being “fit”
means being “physically healthy and strong.”4 As shown by the excerpt from
Applicant’s website attached to the Final Office Action, Applicant sells a variety of
exercise equipment through its retail outlet, promoting itself as “Kentucky’s Leader
in Commercial & Residential Fitness Sales.”5 Applicant argues that the term
“FITNESS” has a broader meaning of “the quality of being able to survive” or
“adapted to an end or design,” neither of which equate to exercise equipment, and
that Applicant “is not selling ‘fitness.’”6 However, Applicant is selling fitness
equipment. Descriptiveness of a mark is not considered in the abstract but rather in
the context of the identified goods or services. The issue is whether someone who
knows what Applicant’s services are will understand the mark to directly convey
information about them. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030
(TTAB 2007); Tower Tech, 64 USPQ2d at 1316-17. In this context, the word “fitness”
describes products that are designed to increase one’s physical fitness, health and

2 6 TTABVUE 5.
3 At http://www.merriam-webster.com. The Board may take judicial notice of dictionary
definitions, including definitions or entries from references that are the electronic equivalent
of a print reference work. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983);
In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009).
4 Id.
5 At http://www.thefitnessmarket.com, attached to Office Action dated April 6, 2015.
6 Appeal Brief, 4 TTABVUE 6.
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overall strength. Consumers familiar with treadmills, fitness machines, and the
similar exercise machines sold by Applicant through its retail outlet would
immediately understand the term FITNESS to be descriptive of a significant feature
of the goods sold, and therefore, to be descriptive of retail store services selling such
goods. See, e.g., In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807 (Fed. Cir. 2001) (proposed mark “1-888-M-A-T-R-E-S-S” is merely descriptive of
applicant’s telephone shop-at-home mattress retail services); In re Pencils Inc., 9
USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store
services); In re Anania Associates, Inc., 223 USPQ 740 (TTAB 1984) (OFF THE RACK
merely descriptive of retail men’s apparel store services); In re Melville Corporation,
228 USPQ 970 (TTAB 1986), (BRAND NAMES FOR LESS merely descriptive of
retail store services in the clothing field). Cf. In re Paint Products Co., 8 USPQ2d
1863, 1866 (TTAB 1988) (“We hold, furthermore, that “PAINT PRODUCTS CO.” is
no more registrable for goods emanating from a company that sells paint products
than it would be as a service mark for the retail paint store services offered by such
a company.”). Given the record before us, we have no doubt that consumers will
immediately understand the word FITNESS as describing the very type of goods
being offered for sale through Applicant’s retail store.
The word MARKET is defined as “a place where products are bought and sold.”7
Applicant’s on-line retail outlet, as shown by the record excerpt from Applicant’s
website, is a place where a wide variety of exercise equipment is offered for sale.

7 At http://www.merriam-webster.com.
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Applicant’s masthead and exterior signage identify Applicant as an “exercise
equipment showroom,” and photographs of the interior of Applicant’s store display
large quantities of various types of exercise equipment for sale.8 Citing Merriam-
Webster’s on-line dictionary, Applicant argues that the word “market” usually refers
to a store where “foods and often household items are sold.”9 Even assuming that the
term “market” traditionally refers to a grocery store or supermarket, however, does
not change the fact that relevant consumers are familiar with the term “market” as
simply referring to any location, including an on-line website, where goods or services
may be purchased.
As noted, whether FITNESS MARKET is merely descriptive is determined in
relation to the services for which registration is sought and the context in which the
term is used, not in the abstract or on the basis of guesswork. Each of the words that
comprise Applicant’s mark, “fitness” and “market,” has a descriptive meaning in
relation to Applicant’s services. The combination mark FITNESS MARKET is equally
descriptive. No imagination or thought is required by a prospective purchaser to
discern that a significant purpose or feature of Applicant’s retail store services is to
sell fitness machines and equipment for physical fitness.
Although, as Applicant contends, it is possible that two terms, which separately
are merely descriptive, may be combined into an incongruous or inventive new
composite, this is clearly not such a case. Contrary to Applicant’s argument, its mark

8 At http://www.thefitnessmarket.com, attached to April 6, 2015 Office Action.
9 Appeal Brief, 4 TTABVUE 4.
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does not have a bizarre or incongruous meaning as applied to its services. Cf. In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE
for “bakery products” registrable as suggestive). Moreover, the fact that the
descriptive term FITNESS MARKET is not itself found in the dictionary is not
controlling on the question of registrability. See, e.g., In re Orleans Wines, Ltd., 196
USPQ 516, 517 (TTAB 1977) (BREADSPRED for jellies and jams is merely
descriptive). And while Applicant contends that its use of the designation is
exclusive,10 and even in the event Applicant is the first to use the term “fitness
market” to designate a showroom, warehouse, or other type of retail outlet in
connection with fitness equipment, merely being the first or even sole user of a merely
descriptive term does not entitle Applicant to register the term as a mark. See Sheetz
of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1362 (TTAB 2013) (“Even if
applicant was the first and/or sole user of a generic term or phrase, as it claims, that
does not entitle applicant to register such a term or phrase as a mark.”); In Re Hunter
Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“a word need not be in common use in
an industry to be descriptive”); In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a
merely descriptive designation does not “justify registration if the term projects only
merely descriptive significance”). The applied-for mark FITNESS MARKET
immediately describes, without conjecture or speculation, a retail store where fitness
equipment is sold. Our assessment that FITNESS MARKET is merely descriptive is

10 4 TTABVUE 3.
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confirmed by the inclusion of “fitness machines” in the recitation of services and by
the language on Applicant’s website, which describes Applicant as a leader in “fitness
sales.”
III. Conclusion
Applicant sells fitness and exercise machines and related equipment in a
marketplace environment. The record demonstrates that the individual terms of
Applicant’s mark, “fitness” and “market,” describe features of Applicant’s services,
while the combination FITNESS MARKET fails to evoke a non-descriptive
commercial impression requiring mature thought or imagination to discern the
nature of Applicant’s services. Accordingly, the term FITNESS MARKET is merely
descriptive of Applicant’s “retail store services featuring fitness machines and
equipment, namely weights, treadmills, rowing machines, stair stepping machines,
resistance machines, [and] stationary cycles.”
Decision: The refusal to register Applicant’s mark FITNESS MARKET under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), is affirmed.