Frank A. Bonomo

Trademark Trial and Appeal Board

Aug 7, 2000

No. 75162539 (T.T.A.B. Aug. 7, 2000)

Paper No. 10
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/7/00

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Frank A. Bonomo
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Serial No. 75/162,539
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Myron Amer of Myron Amer, P.C. for Frank A. Bonomo

Cynthia Sloan, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney)
_______

Before Hohein, Chapman and McLeod, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On September 9, 1996, Frank A. Bonomo filed an
application to register the mark FIGHT FOR YOUR LIFE on the
Principal Register for “health services, namely, assisting
individuals in overcoming their nicotine addiction and
ending their smoking habit.” Applicant claimed a date of
first use of September 4, 1996.
The Examining Attorney finally refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with his services, so resembles the previously
Ser. No. 75/162539
2
registered mark WE’RE FIGHTING FOR YOUR LIFE for
“association services in the field of prevention and
treatment of heart disease,”1 as to be likely to cause
confusion, mistake or deception.2
Applicant appealed. Briefs have been filed, but an
oral hearing was not requested.
We affirm the refusal to register. In reaching this
conclusion, we have considered all of the relevant du Pont3
factors.
It is the Examining Attorney’s position that the
involved marks are similar in meaning and commercial
impression, specifically, the connotation of “fighting for
your life” or “to fight for your life” as it relates to
one’s health; that registrant’s mark, including the word
WE’RE and the root word FIGHT in verb form (FIGHTING), are

1 Registration No. 1,075,269 issued October 11, 1977, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
The claimed date of first use is September 1, 1976.
2 The Examining Attorney also made final her requirement for an
amendment to the classification of applicant’s services to Class
42. Applicant made no reference to this matter in either his
brief or reply brief. Classification of goods and services,
however, is for the internal administration within the Patent and
Trademark Office. See Section 30 of the Trademark Act. The
issue of proper classification is not a substantive one, and is
not a proper subject for appeal. See In re Tee-Pak, Inc., 164
USPQ 88 (TTAB 1969). We note that the proper classification of
applicant’s services is Class 42, and if applicant ultimately
prevails herein, the application will be remanded to the
Examining Attorney for entry of the proper class.
3 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 75/162539
3
minor differences which do not create different commercial
impressions; that the average purchaser normally retains
only a general rather than specific impression of
trademarks; and that in light of the record the respective
services are related as shown by the third-party
registrations, and by the Nexis stories which show that
health programs are offered which include, inter alia, both
smoking cessation and cardiovascular health instruction.
Applicant essentially contends that when considered in
their entireties the marks are not confusingly similar
because applicant’s mark is in a declarative format, and
“puts the onus on the would-be-smoker,” whereas
registrant’s mark “accepts on behalf of the registrant the
onus of obviating the adverse bodily consequence of ‘heart
disease’”; and that there are specific differences in the
services because applicant provides a health service to
assist people in stopping smoking, while registrant offers
an association service regarding the treatment and
prevention of heart disease.4
We turn first to a consideration of applicant’s
services vis-a-vis those of the registrant. It is well

4 Applicant has referred to a few matters which are known by
“common experience.” To whatever extent applicant intended that
the Board take judicial notice of these matters, that request is
denied. See TBMP §712.
Ser. No. 75/162539
4
settled that services (or goods) need not be identical or
even competitive to support a finding of likelihood of
confusion, it being sufficient instead that the services
(or goods) are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978).
The Examining Attorney submitted copies of several
third-party registrations, which issued on the basis of use
in commerce, to demonstrate the relationship between the
involved services, by showing in each instance that a
single entity has adopted a mark for services relating to
both smoking cessation and heart disease prevention
(including one third-party registration which is owned by
the cited registrant).
Third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
Ser. No. 75/162539
5
some probative value to the extent they suggest that the
listed goods or services emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988). In addition, the Nexis
evidence submitted by the Examining Attorney establishes
that there are health programs offered which include both
smoking cessation and heart disease prevention instruction.
Regarding the channels of trade and the purchasers, we
find, given the respective identifications, that the
services would travel in the same channels of trade, and
would be encountered by the same class of purchasers. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Based on the record before us, we readily conclude
that applicant’s services are related to the registrant’s
services.
Turning to the marks, it is well settled that marks
must be considered in their entireties because the
commercial impression of a mark on an ordinary consumer is
created by the mark as a whole, not by its component parts.
This principle is based on the common sense observation
that the overall impression is created by the ordinary
purchaser’s cursory reaction in the marketplace, not from a
Ser. No. 75/162539
6
meticulous comparison of possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2000).
See also, Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
That is, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather must be based on the similarity of the general
overall commercial impressions engendered by the involved
marks.
There are obvious differences in the two marks
involved herein, specifically that the term WE’RE appears
in the registered mark, and that the registered mark uses
the verb form, FIGHTING. However, these differences do not
serve to distinguish the marks. Purchasers are unlikely to
remember the specific differences between the marks as the
average purchaser normally retains a general, rather than a
specific, impression of the many trademarks encountered.
That is, the purchaser’s fallibility of memory over a
period of time must also be kept in mind. See Grandpa
Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573 (CCPA 1973); Spoons Restaurants Inc. v.
Ser. No. 75/162539
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Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d
(Fed. Cir., June 5, 1992); and Edison Brothers Stores v.
Brutting E.B. Sport-International, 230 USPQ 530 (TTAB
1986).
In this case, the connotation created by the marks
FIGHT FOR YOUR LIFE and WE’RE FIGHTING FOR YOUR LIFE is
essentially the same when used in relation to the
respective services. That is, both marks refer to the
concept of fighting to save the reader’s life. See The
Wella Corporation v. California Concept Corporation, 558
F.2d 1019, 194 USPQ 419 (CCPA 1977). We do not agree with
applicant that consumers will be aware of and pay close
attention to the minor differences in the marks or that
they will analyze the marks through the technical
grammatical method suggested by applicant. See Kangol Ltd.
v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992); and Chemical New York Corp. v. Conmar
Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986).
The marks, when considered in their entireties, are
similar in sound, appearance, and connotation, creating a
similar commercial impression. See In re National Data
Corp., 753 F.2d 1056 224 USPQ 749 (Fed. Cir. 1985).
Purchasers may assume that FIGHT FOR YOUR LIFE is
simply a variant of registrant’s WE’RE FIGHTING FOR YOUR
Ser. No. 75/162539
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LIFE mark, used to identify a new service of assisting
people to stop smoking, which, in turn, relates to better
cardiovascular health. That is, purchasers are likely to
assume that applicant’s services come from the same source
as registrant’s services or are in some way sponsored by or
associated with registrant. See In re Imperial Jade
Mining, Inc., 193 USPQ 725 (TTAB 1976).
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Based on the similarity of the marks, the relatedness
of the parties’ respective services, the similar trade
channels, and the overlap of consumers, we conclude that
consumers would be likely to mistakenly believe that
registrant’s association services in the field of
prevention and treatment of heart disease offered under the
mark WE’RE FIGHTING FOR YOUR LIFE and applicant’s health
services, namely, assisting individuals in overcoming their
nicotine addiction and ending their smoking habit offered
Ser. No. 75/162539
9
under the mark FIGHT FOR YOUR LIFE originated with or are
somehow associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
is affirmed.

G. D. Hohein

B. A. Chapman

L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board