Implus Footcare, LLC

Trademark Trial and Appeal Board

Feb 21, 2017

No. 86598377 (T.T.A.B. Feb. 21, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Implus Footcare, LLC
_____

Serial No. 86598377
_____

Edward S. Wright of the Law Offices of Edward S. Wright
for Implus Footcare, LLC.
Sandra Snabb, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Zervas, Lykos and Coggins,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Implus Footcare, LLC (“Applicant”) seeks to register on the Principal Register
the mark HUMAN in standard characters for “[e]xercise and fitness equipment,
namely, weightlifting gloves, balance trainers, jump ropes, wrist stabilizers and
supports, weight vests, resistance cables, push-up bars, personal exercise mats,
personal exercise mats for abdominal exercise, palm flap gloves, weightlifting straps,
knee wraps, weightlifting belts, weightlifting head harnesses, abdominal
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weightlifting straps, weightlifting hooks, and weightlifting bar pads” in International
Class 28.1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to 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 HUMAN TRAINER
in standard characters for “[e]xercise equipment, namely, adjustable straps with
handles for resistance exercise” in International Class 28,2 that, when used on or in
connection with Applicant’s identified goods, it is likely to cause confusion or mistake
or to deceive. When the refusal was made final, Applicant appealed. The appeal is
now fully briefed. For the reasons set forth below, we affirm the Section 2(d) refusal.
I. Applicable Law
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) (“du Pont”). 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, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24

1 Application Serial No. 86598377, filed April 15, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Registration No. 3932840, issued on March 15, 2011 on the Principal Register; alleging
January 5, 2011 as the date of first use anywhere and in commerce. The word TRAINER has
been disclaimed apart from the mark as shown.
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(CCPA 1976). These factors and others are discussed below. See M2 Software, Inc. v.
M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even within du
Pont list, only factors that are “relevant and of record” need be considered).
A. The Marks

We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “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) (quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d
1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties. Id.
See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
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piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”).
Applicant argues that despite sharing the common word HUMAN, the marks are
distinct. Applicant points to the fact that although the cited mark is registered as
HUMAN TRAINER, it is actually used as “THE HUMAN TRAINER”, and therefore
more likely “to be perceived as referring to a particular type of equipment for training
humans or to a person who trains others.” Brief, p. 3; 4 TTABVUE 7.
Applicant’s arguments are unconvincing. We consider how the mark is set forth
in the registration. As the Examining Attorney properly points out, the correct
comparison is between the marks as they appear in the application (HUMAN) and
the registration (HUMAN TRAINER). Applicant’s and Registrant’s marks are
comprised, either in whole or in part, of the term HUMAN which is arbitrary in
relation to the goods. See Coca-Cola Bottling Company of Memphis, Tennessee, Inc. v.
Joseph E. Seagram & Sons, Inc., 188 USPQ 105, 106 (CCPA 1975) (“When one
incorporates the entire arbitrary registered mark of another into a composite mark,
inclusion in the composite mark of a significant nonsuggestive element does not
necessarily preclude the marks from being so similar as to cause a likelihood of
confusion.”). In addition, HUMAN is the first element in the cited mark, which when
coupled with the fact that it is arbitrary, makes it the dominant element. “[I]t is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered” when making purchasing decisions.” Palm Bay, 73
USPQ2d at 1692. See also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
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1897 (TTAB 1988). HUMAN is also likely to be accorded more weight by consumers
because the remaining wording TRAINER is, at a minimum, descriptive of
Registrant’s goods as indicated by the disclaimer. As such, TRAINER is less likely to
make an impact in the minds of consumers. See In re Dixie Rests., Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of
or generic for a party’s goods is typically less significant or less dominant when
comparing marks). See also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 753
(Fed. Cir. 1985). As a result, when considering the marks in their entireties, they are
similar in sound, appearance, meaning and commercial impression. See. e.g., Stone
Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014) (affirming Board’s finding that applicant’s mark STONE LION
CAPITAL incorporated the entirety of the registered marks LION CAPITAL and
LION, and that the noun LION was the dominant part of both parties’ marks).
The first du Pont factor therefore weighs in favor of finding a likelihood of
confusion.
B. The Goods
The next step in our analysis is a comparison of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration, the second du Pont
factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). It is settled that the respective goods need not be identical or even
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competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. The respective goods 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 services] emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). 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). Evidence of relatedness may include news articles and/or evidence
from computer databases showing that the relevant goods are used together or used
by the same purchasers; advertisements showing that the relevant goods are
advertised together or sold by the same manufacturer or dealer; and/or copies of prior
use-based registrations of the same mark for both applicant’s goods and the goods
listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB
2014) (finding pepper sauce and agave related where evidence showed both were used
for the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). The issue is not whether
purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
As reflected in their respective identifications, both Applicant’s and Registrant’s
goods fall under the general category of “exercise equipment” making them inherently
related. Given that Applicant’s and Registrant’s goods could be used as part of an
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exercise enthusiast’s fitness regime at home or at a gym, we can conclude that they
are complementary products.
To further show that the goods are related, the Examining Attorney has submitted
evidence from the following e-commerce websites:
• GoFit.net Store (store.gofit.net) offering via its direct-to-consumer sale website
goods equivalent to “weight vests”, “wrist stabilizers and supports”,
“weightlifting belts”, “personal exercise mats”, “personal exercise mats for
abdominal exercise”, “balance trainers”, “jump ropes”, “push-up bars”,
“resistance cables”, and “adjustable straps with handles for resistance
exercise” under the GoFit trademark. July 28, 2015 Office Action, TSDR pp. 4-
11.
• Harbinger (harbingerfitness.com) offering via its direct-to-consumer sales
website goods equivalent to “weightlifting belts”, “wrist stabilizers and
supports”, “knee wraps”, “personal exercise mats”, “personal exercise mats for
abdominal exercise”, “balance trainers”, “jump ropes”, “push-up bars”,
“resistance cables”, and “adjustable straps with handles for resistance
exercise” under the trademark Harbinger. July 28, 2015 Office Action, TSDR
pp. 12-18.
• Performance Health (shop.performancehealth.com) offering for sale a variety
of exercise products by different brands, including goods equivalent to
“personal exercise mats”, “personal exercise mats for abdominal exercise”,
“balance trainers”, “resistance cables”, and “adjustable straps with handles for
resistance exercise” under the trademark Thera-Band. July 28, 2015 Office
Action, TSDR pp. 21-23.
• j/fit online (stores.jfit.com) offering via its direct-to-consumer sales website
goods equivalent to “weight vests”, “personal exercise mats”, “personal exercise
mats for abdominal exercise”, “balance trainers”, “jump ropes”, “push-up bars”,
“resistance cables”, and “adjustable straps with handles for resistance
exercise” under the trademark j/fit. July 28, 2015 Office Action, TSDR pp. 24-
32.
• TRX (trxtraining.com) offering via its direct-to-consumer sales website goods
equivalent to “adjustable straps with handles for resistance exercise”,
“resistance cables”, and “jump ropes” under the trademark TRX. See February
16, 2016 Office Action, TSDR pp. 2-16.
• Lifeline (lifelinefitness.com) offering via its direct-to-consumer sales website
goods equivalent to “adjustable straps with handles for resistance exercise”,
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“resistance cables”, “jump rope” under the trademark Lifeline. February 16,
2016 Office Action, TSDR pp. 17-22.
• KBANDSTRAINING (kbandstraining.com) offering via its direct-to-consumer
sales website goods equivalent to “adjustable straps with handles for
resistance exercise” and “resistance cables” under the trademark KBANDS
TRAINING. February 16, 2016 Office Action, TSDR pp. 23-32.
• Walmart (walmart.com) offering for sale via its online store goods equivalent
to “adjustable straps with handles for resistance exercise”, “resistance cables”,
“jump ropes”, “weightlifting belts”, “wrist stabilizers and supports”, “push-up
bars”, “personal exercise mats”, “personal exercise mats for abdominal
exercise”, “weightlifting gloves”, and “abdominal weightlifting straps” under
the trademark Gold’s Gym. February 16, 2016 Office Action, TSDR pp. 33-60.
• Ultimate Body Press (ultimatebodypress.com) offering via its direct-to-
consumer sales website goods equivalent to “adjustable straps with handles for
resistance exercise”, “resistance cables”, “push-up bars”, “jump ropes” under
the trademark Ultimate Body Press. February 16, 2016 Office Action, TSDR
pp. 61-69.
• BEACHBODY (beachbody.com) offering via its direct-to-consumer sales
website goods equivalent to “adjustable straps with handles for resistance
exercise”, “resistance cables”, and “weightlifting gloves” under the mark
BEACHBODY. February 16, 2016 Office Action, TSDR pp. 70-76.
This constitutes evidence that consumers may expect to find both Applicant’s and
Registrant’s goods as identified in the involved application and cited registration as
emanating from a common source under a single brand name. Most of the
aforementioned evidence is not from brick and mortar department stores or “big box”
online retailers selling a wide variety of goods but rather from manufacturers’ direct-
to-consumer sales websites. This targeted type of retailing is narrower in scope, and
as such is entitled to a higher degree of probative weight. And while we acknowledge
the single piece of evidence from Walmart, a “big box” online retailer, this evidence
pertains to a single third-party brand, thereby increasing its probative weight.
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In addition, the Examining Attorney made of record third-party, used-based
registrations showing that the same entity has registered a single mark identifying
both Applicant’s and Registrant’s goods or the equivalent thereof.3
• Registration No. 4511982 for the mark BRONZE FIST for, in relevant part,
“exercise equipment, namely, straps that are affixed to doors for performance
of various exercises using body weight resistance”, “eight lifting belts”, and
“weight lifting gloves.” February 16, 2016 Office Action, TSDR pp. 90-91.
• Registration No. 4683540 for the mark BIG MIKE’S FITNESS for, in relevant
part, “training, namely, exercise bands”, “push up bars”, “exercise mats in the
nature of personal exercise mats, yoga mats, and other mats to be used for the
purpose of fitness training and exercise”, “resistance bands, namely, fitness
training exercise equipment in the nature of elastomeric materials which
provide resistance through elongation used to tone muscles for the purpose of
fitness training and strengthening for personal and professional use”,
“weighted vests”, “jumping ropes”, and “suspension trainers for the purpose of
fitness training for personal and professional use in the nature of strength-
building apparatus supporting the user via suspension, using the user’s body
weight as a means of resistance.” February 16, 2016 Office Action, TSDR pp.
95-98.4
Emphasis added. As a general proposition, although use-based third-party
registrations alone are not evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless may have probative value to the
extent they may serve to suggest that the goods are of a kind that emanate from a
single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001);
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

3 We agree with Applicant that the majority of third-party registrations submitted by the
Examining Attorney are not relevant.
4 The underlined goods in Registration Nos. 4511982 and 4683540 are the equivalent of
Registrant’s identified goods.
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In view of the evidence of record, we find that the goods identified in the
application and cited registration are related and complimentary in nature. Both
Applicant’s and Registrant’s goods serve the same function of enhancing strength and
fitness. As such, the second du Pont factor also weighs in favor of finding a likelihood
of confusion.
C. Trade Channels
Next we direct our attention to the established, likely-to-continue channels of
trade, the third du Pont factor. Applicant argues that Registrant’s goods are
commonly known as suspension trainers and are generally sold directly to the
customer by the manufacturer or an entity that specializes in one particular brand.
As such, Applicant contends that the established, likely-to-continue channels of trade
do not overlap.
Applicant’s argument is unconvincing. While the record does show that
Registrant’s products are indeed offered through direct-to-consumer sales
manufacturer web sites, because the identifications in the application and cited
registration have no restrictions on channels of trade, we must presume that the
goods travel in all channels of trade appropriate for such goods, such as traditional
brick and mortar retail stores featuring exercise equipment from a variety of
manufacturers under different brand names as well as online retailers. See Octocom,
16 USPQ2d at 1787. In addition, both parties’ goods may be encountered by the same
prospective consumers, namely fitness enthusiasts. As such, the third du Pont factor
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regarding the similarity or dissimilarity of established, likely to continue trade
channels also favors a finding of likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Goods
Lastly, we consider the number and nature of similar marks in use on similar
goods, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an applicant]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have been educated to distinguish
between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength
of a mark is not a binary factor” and “varies along a spectrum from very strong to
very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted).
“The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Id. at 1676 (internal citations omitted).
See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”).
Applicant maintains that the common element in both marks, the word “human,”
is relatively weak and entitled to a narrow scope of protection as applied to exercise
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equipment. In support thereof, Applicant has made of record the following Principal
Register third-party registrations:5
MARK(s) Reg. No. RELEVANT GOODS IN IDENTIFICATION
B BIONIC
SUPER.
HUMAN.
PERFORMANCE. 4597620 Golf gloves; fitness gloves
HARNESSING
HUMAN POWER 4314243 Exercise machines
HT HUMAN
TOUCH; HT
HUMAN TOUCH
IJOY; and HT
HUMAN TOUCH
IJOY BOARD 6

3655179,
3752733
&
3915199
Exercise equipment, namely, balancing boards
and training devices
HUMAN
POWERED,
NATURALLY
(HUMAN
POWERED
disclaimed) 3664279 Mobile elliptically driven exercise machines
HUMAN
SLINGSHOT 3982289
Sporting goods, namely, a sports training device
to improve strength, toning, conditioning,
balance, and proprioception
IGNITING
HUMAN
POTENTIAL 4822588
Tennis ball throwing machine; tennis court
marking tapes and tennis nets; racquet
equipment, namely, racquet strings, guards,
cushions, power pads, regripping tape, grip
wrap, and rosin bags

5 The third-party applications submitted by Applicant have no probative value “Third-party
applications, as opposed to registrations, have no probative value other than as evidence that
the applications were filed.” Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 1208.02 (Jan. 2017) (citing in Note 4 In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016); In re Toshiba Medical Systems Corporation, 91 USPQ2d 1266, 1270 n.8
(TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1st USA
Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)).
6 These registered marks are owned by the same entity.
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See January 28, 2016 Response. Applicant has not established with these relatively
few registrations that HUMAN is suggestive or descriptive or so commonly used in
connection with exercise equipment that the public will look to other elements to
distinguish the source of the goods or services. See Juice Generation, 115 USPQ2d at
1674-75.
In addition, the record contains no evidence that the referenced third-party marks
are in actual use or that consumers are aware of them. See Palm Bay Imports, 396
F.3d at 1373 (“The probative value of third-party trademarks depends entirely upon
their usage.”). Nor does the record include other examples of actual use of HUMAN.
Thus, the evidence before us falls short of a showing that would allow us to conclude
that “human” is diluted and commercially weak for the relevant goods. Compare Jack
Wolfskin, 116 USPQ2d at 1136 (“extensive” evidence not only of third-party
registrations but also “of these marks being used in internet commerce” for the
relevant goods); Juice Generation, 115 USPQ2d 1671 (uncontradicted testimony of “a
considerable number” of third party uses of similar marks, along with third-party
registrations). We therefore deem this du Pont factor neutral.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion. We treat as neutral the
sixth du Pont facto and any du Pont factors for which there is no evidence of record.
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We therefore find that there is a likelihood of confusion between Applicant’s mark
HUMAN in standard characters for “[e]xercise and fitness equipment, namely,
weightlifting gloves, balance trainers, jump ropes, wrist stabilizers and supports,
weight vests, resistance cables, push-up bars, personal exercise mats, personal
exercise mats for abdominal exercise, palm flap gloves, weightlifting straps, knee
wraps, weightlifting belts, weightlifting head harnesses, abdominal weightlifting
straps, weightlifting hooks, and weightlifting bar pads” and Registrant’s mark
HUMAN TRAINER for “[e]xercise equipment, namely, adjustable straps with
handles for resistance exercise.”
Decision: The Section 2(d) refusal is affirmed.