ICON Health & Fitness, Inc.v.Fit-Pro Limited Liability Company

Trademark Trial and Appeal Board

Aug 23, 2019

91227008 (T.T.A.B. Aug. 23, 2019)

Mailed: August 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

ICON Health & Fitness, Inc.

v.

Fit-Pro Limited Liability Company
_____

Opposition No. 91227008
_____

Gregory M. Hess and LaShel Shaw of Parr Brown Gee & Loveless PC,
for ICON Health & Fitness, Inc.

Allison R. Imber, Ryan T. Santurri, David L. Sigalow,
of Allen, Dyer, Doppelt & Gilchrist, P.A., for Fit-Pro Limited Liability Company
_____

Before Bergsman, Wolfson, and Lynch,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant, Fit-Pro Limited Liability Company, seeks registration on the Principal
Register of the mark depicted below
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91227008
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for
Games and playthings, namely, action skill games, action
target games, amusement game machines, electronic game
equipment with a watch function, go games, manipulative
games, electric action toys; gymnastic and sporting
articles, namely, gymnastic apparatus, exercise and
gymnastic banners, balance beams, sport balls, sports field
training grids, bags specially adapted for sports
equipment, discuses, boards for use in the practice of water
sports, nets for sports
in International Class 28; and
Education, namely, providing classes, workshops, and
seminars in the field of physical fitness, nutrition, health
and sports; providing of training in the fields of physical
fitness, sports, and strength and conditioning;
entertainment, namely, gymnastic performances,
competitions in the field of athletics, fashion shows, live
performances by a musical band; sporting and cultural
activities, namely, organizing community sporting and
cultural events, and organizing exhibitions for educational
and entertainment purposes relating to physical fitness
and exercise
in International Class 41.1

1 Serial No. 79146878, filed October 7, 2013 under Trademark Act Section 66(a), 15 U.S.C.
§ 1141(f), based on protection extended from International Registration No. 1202848.
Opposition No. 91227008
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The mark is described as
the stylized design of a person, formed in-part by the letter
“E” on the right hand side of the design forming the arm,
body and leg of the person in the color black, a blue
triangular shape forming the arm on the left, a curved
black band forming the leg on the left, and a black circle
forming the head. The stylized wording “FIT” appears to
the right of the design in the color gray except for the blue
dot in the letter “I”, and the stylized wording “ELECTRO
FITNESS” appears below the wording “FIT” in the color
gray.
The colors black, blue and gray are claimed as a feature of the mark. Applicant
disclaimed the exclusive right to use the phrase “EFIT ELECTRO FITNESS.”2
ICON Health & Fitness, Inc. (“Opposer”) has opposed registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the basis of
alleged likelihood of confusion with its registered marks IFIT (in standard characters)
and IFIT.COM (typeset3) as shown below:

Mark No. Date Filed Goods & Services Int’l Class
IFIT.COM 2466474 7/21/1999;
renewed
Providing information and
consultation services in the field of
exercise equipment and personal
health, fitness and nutrition by means
of a global computer network.
42
IFIT 2618509 2/11/1999;
renewed
Fitness and exercise machines;
educational services, namely,
conducting personal training in the
field of health and fitness.
28, 41

2 In the November 19, 2015 Response to an Office Action, Applicant disclaimed the exclusive
right to use the phrase “EFIT ELECTRO FITNESS in response to the Examining Attorney’s
requirement for a disclaimer on the ground that the phrase is merely descriptive.
3 Prior to November 2, 2003, “standard character” drawings were known as “typeset”
drawings.
Opposition No. 91227008
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Mark No. Date Filed Goods & Services Int’l Class
IFIT 4450213 12/27/2012;
§§ 8 and 15
Personal fitness training services and
consultancy; Physical fitness
instruction; Physical fitness training
services; Providing an on-line
computer database featuring
information regarding exercise and
fitness; Providing information in the
field of exercise training.
41

IFIT 4604633 12/18/2013;
registered
Web-based, downloadable software
for the collection, storage and display
of personal performance data from
various fitness activities, display of
nutritional information and fitness
and athletic programs and workouts,
software for tracking, monitoring and
planning fitness training activities.
9
IFIT 4500591 2/21/2013;
§§ 8 and 15
An application service provider
(ASP) featuring software for use with
mobile devices, tablet, and computers
for tracking, storing, and displaying
personal performance data for various
fitness activities; ASP featuring
application programming interface
(API) software for connecting and
interacting with software applications
on mobile devices, tablets, and
computers to track, store, and display
personal performance data for various
fitness activities.
42

Opposer also pleaded dilution under Trademark Act § 43(c), 15 U.S.C. § 1125(c).
However, Opposer did not argue the claim in its brief and accordingly, it is considered
waived. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426
n.3 (TTAB 2013) (claim not argued in brief is considered waived).
Applicant denied the salient allegations in Opposer’s Notice of Opposition and
asserted the affirmative defenses of estoppel, laches and acquiescence. Because none
of the affirmative defenses were pursued at trial, they are deemed waived. See
Opposition No. 91227008
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Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6.
(TTAB 2013).
I. THE RECORD
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. The record also includes:4
A. Opposer’s Testimony
Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), Opposer
introduced the following testimony:
• Testimony declaration and accompanying exhibits of Mark Watterson,
Opposer’s Vice President of the IFIT Division (“Mark Watterson Decl.”),
27 TTABVUE;5

• Testimony declaration and accompanying exhibits of David Chase
Watterson, Opposer’s IFIT Director of Marketing (“Chase Watterson
Decl.”), 29 TTABVUE;

• Testimony declaration and accompanying exhibits of Emily Wilson,
Opposer’s legal assistant (“Emily Wilson Decl.”), 31 TTABVUE;6

4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
5 Opposer filed confidential versions of several of its witnesses’ testimony, which allows access
only by the Board. The confidential version of the Mark Watterson Decl. is posted at 28
TTABVUE. The confidential version of the Chase Watterson Decl. is posted at 30 TTABVUE.
The confidential version of the Jensen Decl. and accompanying confidential Exhibit 10 are
posted at 34 TTABVUE. The confidential version of the Miller Decl. is posted at 40
TTABVUE. The confidential version of the Logan Decl. is posted at 44 TTABVUE. The
confidential version of the Stevenson Decl. is posted at 46 TTABVUE. The confidential
version of the Miller Supp. Decl. is posted at 62 TTABVUE. The confidential version of the
Stevenson Supp. Decl. is posted at 64 TTABVUE. The confidential version of the Jensen
Supp. Decl. is posted at 66 TTABVUE. The confidential version of the Wilson Supp. Decl. is
posted at 68 TTABVUE.
6 Confidential Exhibit 7 has been filed under seal at 32 TTABVUE.
Opposition No. 91227008
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• Testimony declaration and accompanying exhibits of Perry Jensen,
Opposer’s Vice President of Sales for the United States and Latin
America (“Perry Jensen Decl.”), 33 TTABVUE;

• Testimony declaration and accompanying exhibits of Jared Lowe,
Opposer’s Director of Sales - Retail eCommerce (“Jared Lowe Decl.”), 35
TTABVUE;

• Testimony declaration and accompanying exhibits of Tracy Cox,
Opposer’s I.T. eCommerce Manager (“Tracy Cox Decl.”), 36 TTABVUE;

• Testimony declaration and accompanying exhibits of David Hays,
Produce Manager of Free Motion Fitness, Inc, Opposer’s wholly-owned
subsidiary (“David Hays Decl.”), 37 TTABVUE;7

• Testimony declaration and accompanying exhibits of Adam Miller,
Opposer’s National Sales Manager (“Adam Miller Decl.”), 39 TTABVUE;

• Testimony declaration and accompanying exhibits of Colleen Logan,
Vice-President of Marketing (“Colleen Logan Decl.”), 43 TTABVUE;

• Testimony declaration and accompanying exhibits of Doug Stevenson,
Director of Advertising (“Stevenson Decl.”), 45 TTABVUE;

• Supplemental testimony declaration of Adam Miller (“Miller Supp.
Decl.”), 61 TTABVUE;

• Supplemental testimony declaration of Doug Stevenson (“Stevenson
Supp. Decl.”), 63 TTABVUE;

• Supplemental testimony declaration of Perry Jensen (“Jensen Supp.
Decl.”), 65 TTABVUE;

• Supplemental testimony declaration of Emily Wilson (“Emily Wilson
Supp. Decl.”), 67 TTABVUE.

7 Confidential Exhibit 4 to the Hays Decl. is filed under seal at 38 TTABVUE.
Opposition No. 91227008
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B. Opposer’s Evidence
Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer
submitted a Notice of Reliance on its pleaded registrations and a Notice of Reliance
on printed pages from publically available Internet websites.8
Pursuant to Trademark Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5), Opposer
submitted a Notice of Reliance on Applicant’s answers to Opposer’s Interrogatories
Nos. 3, 4, 8, 9, 10, 16, 17.9

8 47 TTABVUE, 50 TTABVUE, and 51 TTABVUE. Opposer included with the Wilson Supp.
Decl. a copy of Reg. No. 5530425 that issued from trademark application Serial No. 86184888.
68 TTABVUE 6. When the Notice of Opposition was filed on March 18, 2016, that application
was pending, having been filed on February 5, 2014. However, Opposer neither pleaded
ownership of the application in its Notice of Opposition, nor asserted that the pleadings
should be amended pursuant to Fed. R. Civ. P. 15(b) to plead the registration.
In its brief, Applicant objected to admitting the registration on the ground that once the
complaint was filed it could not have been amended to plead Reg. No. 5530425 because
Applicant’s application was filed under Section 66(a). Trademark Rule 2.107(b) prohibits
amendment of pleadings in an opposition proceeding against an application filed under
section 66(a) of the Act “to add grounds for opposition…beyond those identified in the notice
of opposition.” 37 C.F.R.§ 2.107(b). See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
USPQ2d 1419, 1424 n.14 (TTAB 2014); TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP)
§314 (June 2019); cf. Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012)
(plaintiff that pleads ownership of an application in its complaint does not have to amend its
pleading to assert the resultant registration, so long as it issues before the plaintiff’s
testimony period closes). Because Reg. No. 5530425 would expand the grounds upon which
Opposer’s Section 2(d) claim rests to include additional, presently unpleaded, goods, Opposer
may not rely upon its unpleaded registration.
9 49 TTABVUE. Opposer also submitted a Notice of Reliance on a cease and desist letter
dated August 14, 2015 and on a printout of Applicant’s “Brand Book,” produced by Applicant
during discovery. 52 TTABVUE. These documents are not admissible by Notice of Reliance
alone as they do not qualify for admission under Trademark Rule 2.122(e) and Opposer has
not obtained an admission or stipulation from Applicant authenticating the
documents. 37 C.F.R. § 2.120(k)(3)(ii). Accordingly, we have not considered the evidence.
Opposition No. 91227008
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C. Applicant’s Evidence
Pursuant to Trademark Rule 2.122(e), 37 C.F.R. §2.122(e), Applicant submitted a
Notice of Reliance on copies of 190 third-party registrations10 and screenshots from
about 30 third-party websites11 purporting to show that “FIT” is weak, and a Notice
of Reliance on dictionary and acronym definitions for “fit,” “fitness,” “electric,”
“electro,” “e-,” “i-,” and “internet.”12
II. STANDING AND PRIORITY
Because Opposer has properly made its pleaded registrations of record,13 showing
Opposer as owner and that the registrations are valid, Opposer has established its
standing. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058 (Fed. Cir. 2014); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). For the same reason, Section 2(d)
priority is not at issue in this case as to the mark and the goods and services covered
by the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). Additionally, Opposer has proven use of the IFIT
mark since 1999, when Opposer “created an online service at www.ifit.com (the ‘IFIT
Website’) that provided users with personalized video and audio workouts led by

10 55 TTABVUE and 56 TTABVUE. A TSDR printout for each registration was included,
showing current status and title.
11 55 TTABVUE and 56-60 TTABVUE.
12 60 TTABVUE.
13 48 TTABVUE.
Opposition No. 91227008
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certified personal trainers and the ability to schedule one-on one videoconference
sessions with personal trainers.”14 Opposer has also proven use of the IFIT mark
since at least 2010 on an interactive fitness mobile application;15 since 2014 on related
goods such as fitness bands and clips;16 since 2015 on fitness watches;17 and since
2017 on the IFIT Coach mobile app.18 Applicant claims 2013 as the date of first use
of its mark, by displaying it on its website and on an “EF-1280 electron muscle
stimulation (EMS) product.”19 Based on the above, Opposer has proven standing and
priority.
III. LIKELIHOOD OF CONFUSION
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the facts in evidence that are relevant to the factors bearing on the likelihood
of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the relatedness of the goods or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). In addition, we address the strength of Opposer’s mark, the use of similar
marks on similar goods or services and the conditions under which and buyers to

14 Cox decl., 36 TTABVUE 3, Exhibit 2. The IFIT.com workouts could be downloaded from,
and later in time streamed on, the IFIT Website. Id.
15 27 TTABVUE 3, Exhibit 1.
16 Id., Exhibit 3
17 Id., Exhibit 4,
18 Id. at 4, Exhibit 5
19 49 TTABVUE 7, Response to Interrogatory No. 3. Applicant’s goods are discussed more
fully below.
Opposition No. 91227008
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whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. We have
considered all arguments and evidence of record.
A. Fame/Strength of Opposer’s mark IFIT, including the Number and
Nature of Similar Marks in Use on Similar Goods and in Connection with
Similar Services

We begin with the fame factor, because when fame exists, it plays a dominant
role in the likelihood of confusion analysis. Indeed, famous marks “‘enjoy a wide
latitude of legal protection.’” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame is not “an all-or-nothing factor,” however. Joseph Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Rather, we must place Opposer’s IFIT marks “along a spectrum from very strong to
very weak.” Id. (quoting Palm Bay Imps. V. Veuve Clicquot Ponsardin Masion Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). In doing so, we
must consider Opposer’s pleaded mark from the perspective of “the class of customers
and potential customers” of the relevant goods and services, in this case consumers
interested in fitness, health and nutrition. Palm Bay, 73 USPQ2d at 1695 (“[A] mark’s
renown within a specific product market is the proper standard.”). The stronger the
mark, the greater the scope of protection to which it is entitled. Tao Licensing, LLC
v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017) (“A very strong mark
receives a wider latitude of legal protection in the likelihood of confusion analysis.”);
Opposition No. 91227008
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Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187, 1198 (TTAB 2007). If we find
that Opposer’s mark is a strong mark entitled to broad scope of protection, then
Applicant’s mark does not have to be as close to find the marks are similar. On the
other hand, if Opposer’s mark is weak and only entitled to a narrow scope of
protection, then Applicant’s mark may come closer to Opposer’s mark.
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would be the
case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there
is not the possibility of confusion that exists in the latter
case.
In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1154 (TTAB 2012) (citing Sure-Fit
Products Company v. Saltzson Drapery Company, 254 F.2d 158 , 117 USPQ 295, 297
(CCPA 1958)).
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atlantic Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength).
“The first enquiry focuses on the inherent potential of the term at the time of its
first use.” MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed.
Opposition No. 91227008
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2019). The term “IFIT” used in connection with, e.g., “fitness and exercise machines,”
web-based, downloadable software for “tracking, monitoring and planning fitness
training activities” or “personal fitness training and instruction” suggests, but does
not merely describe, a quality of those goods or services, namely that they involve
physical fitness utilizing the Internet. Alternatively, it may be perceived as “I am fit.”
Opposer’s mark is suggestive, and therefore inherently distinctive.
The second enquiry, market strength, is the extent to which the relevant public
recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea
Inc., 80 USPQ2d at 1899. In other words, it is similar to acquired distinctiveness.
Commercial strength may be measured indirectly, by the volume of sales of and
advertising expenditures for the goods and services identified by the mark at issue,
by “the length of time those indicia of commercial awareness have been evident,” by
widespread critical assessments, by independent sources’ notice of the products
identified by the marks, as well as by the general reputation of the products and
services. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305-6, 1309 (Fed. Cir. 2002). Relying primarily on its use of the IFIT mark for nearly
20 years and its “enormous” sales, Opposer argues that its mark “has achieved a
significant degree of fame for purposes of the likelihood of confusion analysis.”20
Opposer introduced evidence of significant sales, reaching into the low billions of
dollars, and television, print and social media advertising of over $100 million, since

20 69 TTABVUE 36.
Opposition No. 91227008
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at least 2004.21 A substantial portion of its advertising budget provides “funds and
discounts to retailers to do their own individual advertising.”22 Opposer advertises
directly online at Amazon.com and Walmart.com as well as The Home Depot, QVC,
Costco Wholesale, Sears, HSN, Groupon, and Overstock.com.23 Opposer’s television
commercials began airing in 2012 and continue to the present; one commercial in
2012 aired “thousands of times across the US on broadcast and cable television”;
another from 2015 “has had hundreds of national airings.”24 Opposer also sells in
brick-and-mortar stores such as Walmart, Sears, Academy Sports, Sports Authority,
Kmart, and Dick’s Sporting Goods.25 Opposer enjoyed unsolicited media attention in
2000, when its NordicTrack elliptical machine was the winner of the “All-around
Awesome” award from Good Housekeeping magazine. The article announcing the
award suggests a person using the device “try one of 36 built-in programs or subscribe
to iFit ($145 per year) for personalized training.”26 In 2015, Opposer attended two
industry trade shows, CES and IHRSA.27 Thus, we find that Opposer’s IFIT marks
are commercially strong.

21 As sales and marketing figures have been provided under seal, we discuss them in general
terms only.
22 43 TTABVUE 6.
23 30 TTABVUE 4, 35 TTABVUE 3.
24 43 TTABVUE 10-11.
25 27 TTABVUE 4, Exhibit 8.
26 43 TTABVUE 117.
27 43 TTABVUE 7.
Opposition No. 91227008
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In an attempt to diminish the distinctiveness of Opposer’s mark, Applicant points
to the sixth DuPont factor, namely “the number and nature of similar marks in use
on similar goods [or services].” This factor examines whether consumers are
conditioned to look for minor differences to distinguish among marks with a common
element. Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Applicant submitted
over 160 copies of third-party registrations and screenshots from more than 17
websites for the term “FIT” to show that consumers will recognize FIT as a generic
term for fitness-related goods and services.28 Opposer does not dispute the weakness
of “FIT,” but argues that the “third-party registrations and common-law marks cited
by Applicant have minimal probative value because the common word in all but four
of them is FIT, not IFIT or even IFITNESS.”29
We agree that the third-party registrations have minimal probative value. Absent
evidence of actual use, third-party registrations are not evidence that the marks are
in use on a commercial scale or that the public has become familiar with them, and
thus they have lesser probative value to show that consumers “have been educated to
distinguish between different . . . marks on the basis of minute distinctions,” Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S.

28 55 TTABVUE 14-584, 56 TTABVUE 1-430, Exhibits 1-3.
29 72 TTABVUE 16.
Opposition No. 91227008
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Patent and Trademark Office).30 Indeed, there are no third-party registrations for
IFIT, but the marks IFIT GOLF, IFIT PHYSICAL THERAPY, IFITNESS EQUIP and
IFITNESS include “ifit” or “ifitness.” Applicant’s reliance on IFIT GOLF and
IFITNESS for a fitness app, however, is misplaced for the reasons set forth in the
Supplemental Declaration of Emily Wilson (“Wilson Suppl.”), filed under seal.31
Applicant’s reliance on IFIT PHYSICAL THERAPY for physical therapy is misplaced
because it involves different services. See Omaha Steaks Int’l v. Greater Omaha
Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely on third-
party evidence of similar marks for dissimilar goods, as Board must focus “on goods
shown to be similar”); In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751
(Fed. Cir. 2017) (disregarding third-party registrations for goods in other classes
where the proffering party “has neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes, … support a finding that registrants’ marks are weak with respect to
the goods identified in their registrations”). The mark IFITNESS EQUIP uses the
term “fitness,” not “fit.” Even recognizing that “fit” may be perceived as short for
“fitness,” the existence of so few registrations is insufficient as a basis upon which to
find that Opposer’s mark is weak. The remaining registrations are for marks that use
the term “fit” with different terms that obviate their similarity to Opposer’s mark.

30 “Even if ‘there is no evidence of actual use’ of ‘third-party registrations,’ such registrations
‘may be give some weight to show the meaning of a mark in the same way that dictionaries
are used.’” Juice Generation, 115 USPQ2d at 1675 (quoting Textronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976)).
31 68 TTABVUE 3 and 8-12, Exhibit B (confidential).
Opposition No. 91227008
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Applicant also provided evidence of third-party use of marks including the term
“FIT.” In determining the degree of weakness, if any, of Opposer’s mark “IFIT,” we
must “adequately account for the apparent force of [third-party use] evidence,”
regardless of whether “specifics” pertaining to the extent and impact of such use have
been proven. Juice Generation, 115 USPQ2d at 1674-5; see also Jack Wolfskin, 116
USPQ2d at 1136. In the case at hand, while the third-party uses, like the
registrations, show that the term “FIT” may be diluted, they do not support a finding
that the term IFIT is weak. All but three of the uses of the term FIT in connection
with other words are entirely distinct from IFIT.32 The three more relevant marks
are: IFIT for a posture support (chest harness),33 CLUB E FIT for a personal fitness
gym,34 and IFITNESS for a mobile fitness app.35 This is too small a number to show
that IFIT is diluted. See In re i.am.symbolic, 123 USPQ2d at 1749. On the other hand,
to the extent consumers recognize the term “FIT” within Opposer’s mark, they may
be more likely to rely on the difference between E and I as a prefix to distinguish
between the marks.
Considering the record as a whole (i.e., conceptual strength, commercial strength,
and the number of similar marks in use on similar goods and services), we find that
Opposer’s IFIT marks are appropriately placed closer to the side of being

32 For example, VIVOFIT, CLUBFIT, SILVER&FIT, FITBIT, FOREVER-FIT, and
ROCKFIT. None of these marks impact the strength of Opposer’s mark.
33 58 TTABVUE 89.
34 56 TTABVUE 416-427
35 56 TTABVUE 376-80.
Opposition No. 91227008
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commercially strong, along the spectrum of “very strong to very weak.” Phelps
Vineyards, 122 USPQ2d at 1734; Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d at 1059 (“The commercial strength of Petitioner’s TAO mark outweighs any
conceptual weakness.”). Accordingly, these DuPont factors favor a finding of
likelihood of confusion.
B. The Marks
We next consider the similarity or dissimilarity of the marks at issue 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 (Fed. Cir. 2005) (citing DuPont, 177 USPQ at 567). In
comparing the marks, we bear in mind that the proper test “is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
Nonetheless, “there 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.” In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant has applied to register the mark
Opposition No. 91227008
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Opposer’s mark is IFIT.36 Opposer argues that in Applicant’s mark, the word “FIT”
combines with the letter “E” formed by the design element as “EFIT,” and that the
mark will be perceived as “EFIT ELECTRO FITNESS.” Opposer contends that the
“dominant portion” of Applicant’s mark is “EFIT” and that the design features, and
the words “ELECTRO FITNESS” are of lesser significance. Applicant argues that its
design (which it concedes forms, in part, the letter “E”37) is separable from the
wording “E FIT ELECTRO FITNESS,” which it has disclaimed, and that it is the
overall silhouette of a human that dominates its mark. Applicant further argues that
the co-existence of the commonly used and merely descriptive term FIT is insufficient
to cause a likelihood of confusion given the substantial differences in the marks.
A threshold dispute between the parties is whether the Board should consider
the various forms in which Opposer has used and is using its mark. The marks in

36 We focus on Opposer’s registrations for the IFIT mark, rather than its registration for the
mark IFIT.COM. If we find that there is no likelihood of confusion with the former, there is
no need for us to consider the likelihood of confusion with the latter. See, e.g., The North Face
Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015) (citing In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
37 71 TTABVUE 13. Applicant argues in its brief that “in view of the descriptiveness of the
wording, the dominant part of Applicant’s Mark is not its wording, but rather the design of a
silhouette of a person dancing or jumping to form the E in Applicant’s mark….” (emphasis
supplied). Applicant’s description of the mark further supports a finding that the design
comprises the identifiable letter “E.” On the other hand, the design may be perceived as a
stylized letter “I” given that the “head” of the figure is a “dot” similar to that which would
appear over a small letter “i.” Viewed in this light, the marks are even closer in appearance.
Opposition No. 91227008
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Opposer’s pleaded registrations are typed drawings or in standard character form.
Marks presented in standard characters are not limited to any particular depiction,
and the rights associated with a mark in standard characters reside in the wording,
not in any particular display. Thus, the marks in Opposer’s pleaded registrations may
be depicted in any manner, regardless of the font style, size, or color, and might at
any time in the future be displayed in a manner including in a color scheme that
resembles the shades of blue and black of Applicant’s mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City
Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
In Citigroup Inc. v. Capital City Bank Grp., Inc., the court held that the Board
“should not first determine whether certain depictions are ‘reasonable’ and then
apply the DuPont analysis to only a subset of variations of a standard character
mark.” Id. at 1259. Rather, the court held that the Board should consider all forms
of the mark, in terms of variation of its font style, size or color, and be guided by
illustrative examples showing how the mark is used. Id. at 1258. We have thus taken
into account the fact that Opposer uses its registered mark IFIT in a color scheme
that resembles the shades of blue and black of Applicant’s mark: . We
do not, however, consider the letter “E” portion of the mark as a “font style” because
it is an inseparable part of the rest of the silhouette design. Nonetheless, we find the
marks similar in overall appearance.
The marks are also similar in pronunciation, even if the “E” in Applicant’s mark
is pronounced as an “E” and not an “I.” This is because in calling for the goods and
Opposition No. 91227008
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services, consumers are likely to shorten Applicant’s mark to “EFIT” for two reasons.
First, even if the dominant portion of the mark is the design of the silhouette of a
person, as Applicant contends, that design (other than the representation of the letter
“E”) is unpronounceable.38 Second, Applicant uses the shortened version “E-Fit” itself
when referring to its goods and services, as shown by the below pages from
Applicant’s website.39 For these reasons, Applicant’s consumers are likely to verbalize
Applicant’s mark as E-FIT.

38 Applicant argues that the design of the human figure dominates its mark. Although we
acknowledge that there is no general rule as to whether a word or a design dominates in any
particular mark, it is highly unlikely that consumers will refer to Applicant’s mark by
verbalizing the human figure design. See, e.g., Jansen Enterprises, Inc. v. Israel Rind and
Stuart Stone, 85 USPQ2d 1104 (TTAB 2007) (word IZZY’S dominates over design of boy
carrying a basket of bagels next to image of Brooklyn bridge, for restaurant services).
39 47 TTABVUE 40-43, Exhibit E.
Opposition No. 91227008
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“[U]sers of language have a universal habit of shortening full names – from haste
or laziness or just economy of words. Examples are: automobile to auto; telephone to
phone; necktie to tie; gasoline service station to gas station.” In re Abcor Development
Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring). Moreover,
given their small size and “second” position, the words “ELECTRO FITNESS” are
less likely to be “impressed upon the mind of a purchaser and remembered.” Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (it is the
first part of a mark that is most likely to be recalled); see also, Palm Bay 73 USPQ2d
at 1692; Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). The
marks are similar in pronunciation.
In meaning, the marks convey similar connotations generally, that is, advanced
fitness technology, but they differ in the specific technology referred to. Because
Opposition No. 91227008
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Applicant’s mark includes the words “ELECTRO FITNESS,” it is likely that to the
extent consumers identify the “E” in the design and combine it with the word “FIT,”
they may view EFIT as an abbreviation for “ELECTRO FITNESS.” As for the
meaning of “electro fitness,” Applicant submitted online dictionary evidence showing
that “electro-“ is a “combining form representing electric or electricity in compound
words: electromagnetic”40 and that the term “fitness” means “the quality of being
suitable; of being qualified; of being in shape or in condition.”41 Viewed in connection
with the goods to which they are applied, which include “electronic game equipment
with a watch function” and “electric action toys,” the letter “E” is likely to be seen in
reference to “electronic” or “electric.” The letter “I” in Opposer’s IFIT mark is likely
to be seen in reference to the Internet. This is borne out by the abbreviations in the
online dictionary Applicant submitted42 and the fact that Opposer’s goods and
services directly reference the Internet (its Class 9 goods include “web-based,
downloadable software” and its services include “providing information and
consultation services in the field of exercise equipment and personal health, fitness
and nutrition by means of a global computer network”). To the extent the meaning
of “electric/electronic” differs from “Internet,” the marks differ in their connotations.
On the other hand, the excerpt from dictionary.com submitted by Applicant defines
“e-” (used in combination) as “1. electronic: e-book; e-cigarette. 2. on the Internet;

40 At http://www.dictionary.com/browse/electro, 60 TTABVUE 94, Exhibit 9.
41 At https://www.vocabulary.com/dictionary/fitness, 60 TTABVUE 100, Exhibit 10. The term
“fit” has a similar meaning. See at https://www.merriam-webster.com/dictionary/fit, 60
TTABVUE 60, Exhibit 4.
42 At https://www.abbreviations.com/I, 60 TTABVUE 82, Exhibit 7.
Opposition No. 91227008
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online.”43 Therefore, not only does each mark’s general reference to advanced
technology imbue the marks with similar meanings, but to the extent consumers
perceive the “e” in Applicant’s mark as referring to the Internet, the similarity in
connotation of the marks is enhanced.
In overall commercial impression, we again find the marks are similar, especially
when the manner in which Opposer uses its mark is considered. While we do not
ordinarily look to trade dress to determine that marks are distinguishable, “trade
dress may nevertheless provide evidence of whether the word mark projects a
confusingly similar commercial impression.” Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984); see also
Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992) (considering the similarities in trade dress in finding likelihood of
confusion); cf. Edom Labs., Inc. v. Glenn Lichter, 102 USPQ2d 1546, 1554 n.31
(finding trade dress relevant evidence regarding applicant’s intent to cause
confusion). Here, the fact that both Applicant’s proposed mark and examples of
Opposer’s actual use of its mark utilize similar color schemes enhances the similarity
of the marks’ overall commercial impression.
The first DuPont factor favors a finding of likelihood of confusion.

43 60 TTABVUE 103. The second definition is barely legible in the copy provided by Applicant
but continues: “on the Internet; online: e-content; e-commerce.” At
www.dictionary.com/browse/e, accessed August 5, 2019. The Board may take judicial notice
of definitions from dictionaries, including online dictionaries that exist in printed format.
E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
Opposition No. 91227008
- 24 -
C. Goods and Services; Trade Channels and Classes of Consumers
The second DuPont factor considers “the similarity or dissimilarity and nature of
the goods or services” as described in Applicant’s application and in connection with
which Opposer’s mark is in use. DuPont, 177 USPQ at 567. The parties’ respective
goods or services need not be identical or even competitive in order to find that they
are related for purposes of our likelihood of confusion analysis. They need only be
“related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that the goods emanate from
the same source.” Coach Servs., 101 USPQ2d at 1722; see also In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (circumstances surrounding the
marketing of the goods or services may give rise to mistaken belief that they are “in
some way associated with the same producer or that there is an association between
the producers of each parties’ goods or services.”).
1. Goods
The goods identified in the subject application are
Games and playthings, namely, action skill games, action
target games, amusement game machines, electronic game
equipment with a watch function, go games, manipulative
games, electric action toys; gymnastic and sporting
articles, namely, gymnastic apparatus, exercise and
gymnastic banners, balance beams, sport balls, sports field
training grids, bags specially adapted for sports
equipment, discuses, boards for use in the practice of water
sports, nets for sports.
Opposer sells fitness and exercise machines equipped with IFIT technology, and
has registered its mark for “fitness and exercise machines” and “web-based,
Opposition No. 91227008
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downloadable software for the collection, storage and display of personal performance
data from various fitness activities, … software for tracking, monitoring and
planning fitness training activities.” As listed on the face of the application, the goods
closest to Opposer’s goods and services are “gymnastic and sporting articles, namely,
gymnastic apparatus, exercise and gymnastic banners, balance beams, sport balls,
sports field training grids, bags specially adapted for sports equipment, discuses,
boards for use in the practice of water sports, nets for sports.”44 Although there is no
description of “gymnastic apparatus” in the record, we may take judicial notice that
“apparatus” is defined as “a set of materials or equipment designed for a particular
use” and that this would include equipment for gymnasts.45
We find that Applicant’s gymnastic and sporting articles and Opposer’s exercise
machines are complementary products. That is, they are likely to be purchased and
used together; complementary goods are typically found when encountering one good
while purchasing the other. In re Gina Davia, 110 USPQ2d 1810, (TTAB 2014)
(functionally related goods considered complementary); see also In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (bread

44 Applicant’s application includes “electronic game equipment with a watch function.”
Opposer also uses and has registered its mark for fitness bands and watches. Opposer’s watch
is designed not only to tell time but to track a wearer’s physical activity (see, e.g., 39 TTABVUE
16, Exhibit 4 to Miller decl., describing Opposer’s fitness watch). To the extent both parties’
goods tell time, they may be considered related, but there is nothing in the record describing
the nature of Applicant’s game equipment and the significance of its watch feature. Although
the term “electronic game equipment” broadly includes all types of equipment for playing
games, fitness watches are not designed to play games. Based on the scant evidence of record,
we draw no inference of relatedness between these goods.
45 Webster’s online dictionary, at https://www.merriam-webster.com/dictionary/apparatus,
accessed July 26, 2019.
Opposition No. 91227008
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and cheese likely sold and consumed together); In re Sela Prods., LLC, 107 USPQ2d
1580, 1587 (TTAB 2013) (purchasers likely to encounter both surge protectors, and
wall mounts and brackets, during course of purchasing a television, audio or home
theater system). We also find that Opposer’s personal and physical fitness training
services, physical fitness instruction, and information and consultancy services “in
the field of exercise equipment and personal health, fitness and nutrition by means
of a global computer network” are related to Applicant’s gymnastic and sporting
articles in that physical and personal training and instruction are required for
obtaining skills necessary to excel in gymnastics and other sports. The subject matter
of Opposer’s services that includes “exercise equipment” could include goods such as
Applicant’s gymnastic equipment and sports balls. Such services and goods are
related on the face of the identifications.
Further, both parties sell their goods online to consumers of the same
demographic groups. Opposer sells to “those of all genders and ages, economic
circumstances, abilities, and fitness levels (from beginner to advanced).”46 Its
commercial channels of trade “include gyms, health clubs, other exercise and fitness
facilities, personal trainers, apartment complexes, and medical facilities.”47 On the
consumer level, Opposer markets directly to consumers “through national brick-and-
mortar retailers and online retailers.”48 Opposer conducts advertising in “television

46 33 TTABVUE 6.
47 Id.
48 Id. at 7.
Opposition No. 91227008
- 27 -
commercials, Internet marketing, email marketing, social media initiatives, and co-
op programs, which provide funds and [by providing] discounts to retailers to do their
own individual advertising.”49Applicant described its channels of trade as “its
distribution partner FITPRO North America, Inc.; gyms, health clubs, beauty salons
and studios, exercise facilities, etc. such as 4U Fitness, LLC that purchase its
products and use them to provide fitness and health related services; websites; social
media sites such as Facebook, Twitter, and Instagram; and online and print media
such as newspapers and magazines, television, trade shows, and catalogs.”50 It
“primarily offers and intends to offer its goods and services to businesses that cater
to people who are interested in health, fitness, nutrition, exercise, and/or beauty.”51
Applicant also runs advertisements in media publications such as the IHRSA Club
Business International Magazine;52 Both companies have attended the International
Health, Racquet & Sportsclub Association (IHRSA) trade shows.53
The inquiry is not whether the consuming public will confuse the goods or services
but whether the consumer understands them to have originated from the same
source. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1415 (TTAB
2010) (citing In re Rexel Inc., 223 USPQ 830 (TTAB 1984)). The goods and services

49 33 TTABVUE 6.
50 49 TTABVUE 17.
51 49 TTABVUE 18. Likewise, Opposer’s “corporate channels of trade include efforts to
market iFIT branded products to businesses to enable them to offer health, fitness, and
wellness programs to their employees.” 33 TTABVUE 6.
52 49 TTABVUE 15.
53 For Applicant: 49 TTABVUE 13. For Opposer: 37 TTABVUE 3.
Opposition No. 91227008
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are complementary, are covered by the same media outlets, are made available at
health clubs and gyms, and are otherwise offered, sold, and provided by and to the
same parties. The second and third DuPont factors favor a finding of likelihood of
confusion.
2. Services
Applicant seeks registration of its mark for the following services:
Education, namely, providing classes, workshops, and
seminars in the field of physical fitness, nutrition, health
and sports; providing of training in the fields of physical
fitness, sports, and strength and conditioning;
entertainment, namely, gymnastic performances,
competitions in the field of athletics, fashion shows, live
performances by a musical band; sporting and cultural
activities, namely, organizing community sporting and
cultural events, and organizing exhibitions for educational
and entertainment purposes relating to physical fitness
and exercise
Opposer’s registrations include: “educational services, namely, conducting
personal training in the field of health and fitness”; “personal fitness training services
and consultancy;” and “physical fitness instruction; physical fitness training
services.” The parties’ services are identical-in-part and otherwise highly related.
Because the services are identical-in-part, and neither Opposer’s registrations nor
the involved application contain any limitations on the channels of trade and classes
of purchasers, we must presume that the channels of trade and classes of purchasers
are the same. See Stone Lion Capital Partners, 110 USPQ2d at 1161; In re Yawata
Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are
legally identical goods, the channels of trade and classes of purchasers are considered
to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Opposition No. 91227008
- 29 -
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion).
The second and third DuPont factors strongly favor a finding of likelihood of
confusion with respect to the services in Applicant’s application.
D. Conditions of Sale
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing,”
DuPont, 177 USPQ at 567, basing our analysis “on the least sophisticated potential
purchasers.” Stone Lion 110 USPQ2d at 1163.
Circumstances suggesting care in purchasing may tend to minimize the likelihood
of confusion. DuPont, 177 USPQ at 567; In re N.A.D., Inc., 754 F.2d 996, 224 USPQ
969, 971 (Fed. Cir. 1985) (confusion is unlikely when sophisticated purchasers are
buying goods with great care).
Applicant argues that the purchasers are sophisticated, but does not provide
evidence supporting its contention. The fourth DuPont factor is neutral.
IV. CONCLUSION
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this opinion, we conclude that
Opposition No. 91227008
- 30 -
confusion is likely between Applicant’s mark for the
identified goods and services and Opposer’s mark IFIT for the registered goods and
services. The services are identical-in-part, the goods are complementary and the
trade channels and classes of consumers are the same. Opposer’s mark is well-known,
and has not been shown to be weak despite Applicant’s showing that the word “fit” is
diluted for related goods and services. Overall, the marks are similar in appearance,
pronunciation, connotation and commercial impression. Any other DuPont factors,
such as the issue of Applicant’s ability to exclude others (raised by Opposer), are
neutral.
Decision: The opposition on the ground of likelihood of confusion is sustained.