Giancarlo Riotto

Trademark Trial and Appeal Board

Oct 9, 2012

No. 85144408 (T.T.A.B. Oct. 9, 2012)

Mailed:
October 9, 2012

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

In re Riotto
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Serial No. 85144408
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Michael J. Doherty of Doherty & Charney LLC, for Giancarlo
Riotto.

Benjamin U. Okeke, Trademark Examining Attorney, Law Office 112
(Angela B. Wilson, Managing Attorney).
_______

Before Quinn, Cataldo, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Giancarlo Riotto (“applicant”) filed an application to
register the mark TRIUMPH FITNESS and design, as shown below for
services identified as “personal fitness training services and
consultancy; physical fitness studio services, namely, providing
group exercise instruction, equipment, and facilities; providing
fitness and exercise facilities,” in International Class 411:

1 Serial No. 85144408, filed October 4, 2010, pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use
and first use in commerce of April 27, 2006, and disclaiming the
exclusive right to use the term “FITNESS” apart from the mark as
shown. The application includes the following description: “The mark
consists of an outlined shield with a very detailed eagle displayed on
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85144408
2

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark TEAM TRIUMPH,2 in standard
character form, for “sports club services, namely providing
athletic instruction and training, member social events, and
providing a website featuring sports competition information,”
in International Class 41, that when used on or in connection
with applicant’s recited services, it is likely to cause

it. The eagle displayed on the shield has its wings spread along with
its tail shown. The shield has rivets going around the eagle as well.
The words ‘TRIUMPH FITNESS’ appear above the top of the shield.”
2 Registration No. 3211266, issued February 20, 2007, and disclaiming
the exclusive right to use the term “TEAM” apart from the mark as
shown.
Serial No. 85144408
3
confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register.
We base our determination under Section 2(d) on 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); see also, In re
Majestic Distilling Company, Inc., 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 or services.
See 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”).
The Services and Channels of Trade

The recital of services in the application includes
“personal fitness training services and consultancy; physical
fitness studio services, namely, providing group exercise
instruction, equipment, and facilities; providing fitness and
exercise facilities,” while the recital of services in the cited
Serial No. 85144408
4
registration includes “sports club services, namely providing
athletic instruction and training, member social events, and
providing a website featuring sports competition information.”
In analyzing their similarities and dissimilarities, we keep in
mind that the test is not whether consumers would be likely to
confuse the services, but rather would be likely to be confused
into believing that they emanate from a single source. San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
To show that consumers may expect to see services of the
sort included in both the application and the cited registration
offered under the same mark, the examining attorney submitted a
number of use-based third party registrations that include
services from both. Examples are Registration No. 3840051
(“athletic training services” and “providing fitness and
exercise facilities”); Registration No. 3853213 (”athletic
training services” and “consulting services in the fields of
fitness and exercise”/”providing fitness and exercise
facilities”); Registration No. 85039072 (“athletic training
services” and “consulting services in the fields of fitness and
exercise”/”providing fitness and exercise facilities”);
Registration No. 3770777 (“athletic training services” and
“personal training services”); Registration No. 3912576
(“athletic training services” and “personal fitness training
services and consultancy”); Registration No. 85139352 (“athletic
Serial No. 85144408
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training services” and “personal fitness training and
consultancy”/”providing fitness and exercise facilities”);
Registration No. 85173490 (“athletic training services” and
“personal fitness training and consultancy”); Registration No.
3990096 (“athletic training services” and “personal fitness
training services and consultancy”/”providing fitness and
exercise facilities”). Copies of use-based, third-party
registrations may serve to suggest that the services are of a
type which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).3
Accordingly, we find the services to be related and generally
complementary.
Regarding channels of trade, we note that there are no
limitations with regard thereto on the services in the cited
registration, nor on those identified in the application.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983); see also In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). Since the services are complementary, they

3 The examining attorney also submitted web evidence to show the
relatedness of the services. However, we find that only one of the
websites, www.mysportsclubs.com, evidences services from both the
application and the cited registration.
Serial No. 85144408
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are likely to be purchased by the same consumers seeking similar
results from physical training. Accordingly, we find that these
du Pont factors weigh in favor of finding a likelihood of
consumer confusion.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In comparing the marks, 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 overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants, Inc. v. Morrison Inc., 23 USPQ2d at 1741.
The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration consists of the words
“TEAM TRIUMPH,” in standard character form. The disclaimed term
“team” appears to be descriptive of the services regarding
“athletic training” and “sports competitions”. In re National
Serial No. 85144408
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Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985)
(descriptive or disclaimed matter is generally considered a less
dominant portion of a mark). When viewed in relation to the
services in the cited registration, the mark creates the
commercial impression of a triumphant or successful team of
athletic trainers or else invites consumers to be part of the
winning team by engaging in registrant’s services.
Applicant’s mark contains the words “TRIUMPH FITNESS,”
thereby sharing the term “triumph.” The disclaimed term
“fitness” appears to be descriptive of applicant’s physical
fitness services. When viewed in relation to the services in
the application, the mark as a whole creates the commercial
impression of services where consumers can triumph or win with
applicant’s fitness center and instruction.
Applicant’s mark also contains, besides the literal
portion, the design of an eagle. While we do not find the
design in the application to be insignificant, it does not
significantly change the commercial impression of the mark, nor
would it affect its pronunciation, since consumers are likely to
use the words to call for, or refer to, the services. CBS Inc.
v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re
Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
On the balance, we find the commercial impressions of the
marks in their entireties to be similar and to outweigh
dissimilarities in sight and sound, keeping in mind also that
the mark in the cited registration is registered in standard
Serial No. 85144408
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character format and may be displayed in any number of formats.
See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d
1253, 1259 (Fed. Cir. 2011) (“If the registrant ... obtains a
standard character mark without claim to ‘any particular font
style, size or color,’ the registrant is entitled to depictions
of the standard character mark regardless of font, style, size,
or color.”). Accordingly, we find this du Pont factor to also
weigh in favor of finding a likelihood of consumer confusion.
Consumer Sophistication
Applicant urges us to consider the sophistication of its
consumers. There is nothing in the record that would give us
insight as to the possible sophistication of consumers of the
relevant services. See Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004) (the applicable standard of care
is that of the least sophisticated consumer). Nor are the
involved services of such a technical or specialized nature to
suggest that they would be sought or utilized solely by
sophisiticated consumers. To the contrary, the services appear
to be available to anyone with an interest in fitness. To the
extent they are marketed to the general public, as indicated by
the record,4 we must consider this du Pont factor to weigh in

4 Applicant submitted some webpages regarding its business with its
appeal brief. Although the examining attorney objected to these as
having been submitted for the first time on appeal, there is at least
one page of web evidence regarding applicant’s own business that was
submitted into the record during prosecution. Accordingly, we find
the objection to be moot, as the relevant evidence is already of
record.
Serial No. 85144408
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favor of finding a likelihood of confusion.
Conclusion
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. As our precedent
dictates, we resolve doubt in favor of the prior registrant.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). We conclude that with similar goods
travelling in the same or similar channels of trade, and similar
marks with similar commercial impressions, being marketed to
ordinary purchasers who may be expected to exercise no more than
ordinary care, there is a likelihood of confusion between
applicant’s TRIUMPH FITNESS and design mark for the applied-for
services and the mark TEAM FITNESS as registered.
Decision: The refusal to register is affirmed.