Kasia Michalski

Trademark Trial and Appeal Board

Apr 26, 2013

No. 85186655 (T.T.A.B. Apr. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 26, 2013

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

In re Kasia Michalski
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Serial No. 85186655
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Thomas P. O’Connell for Applicant Kasia Michalski.

Priscilla Milton, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
_____

Before Grendel, Mermelstein and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Kasia Michalski filed, on November 29, 2010, an application to register on
the Principal Register the mark for services ultimately identified as
“providing healthy lifestyle and sports nutrition services, namely, in-person
personal assessments, personalized routines, maintenance schedules, and
counseling” in International Class 44.1

1 Asserting November 18, 2010, as the date of first use and first use of the mark in
commerce. The application includes the following description of the mark: “The mark
consists of the word ‘EAT’ over the word ‘FIT’ with a stick figure to the left thereof
Serial No. 85186655
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The examining attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when
applied to applicant’s services, so resembles the previously registered mark
EATPHIT (in standard characters) for “educational services, namely, conducting an
on-line health education program for promoting an individual’s overall physical,
mental, emotional and spiritual well-being and providing incentives to employer
groups and members of health plans to demonstrate excellence in the field of
nutritional and dietary habits” in International Class 41,2 as to be likely to cause
confusion.
When the refusal was made final, applicant filed a request for
reconsideration, in which she proposed an amendment to the recitation of services.
Upon reconsideration, the examining attorney accepted the proposed amendment,
which resulted in the recitation set forth above, but maintained her refusal. This
appeal ensued. As discussed below, we affirm the refusal to register.
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Drilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).

representative of a human being with arms up and one leg bent at the knee and partially
raised.”
2 Registration No. 3102961, issued June 13, 2006. Section 8 affidavit accepted; Section 15
affidavits acknowledged.
Serial No. 85186655
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We turn first to a comparison of the marks. We must compare the marks in
their entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1690 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. The test, under the first du Pont factor, 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
that confusion as to the source of the goods and/or services offered under the
respective marks is likely to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered in their entireties, it
is well-settled that one feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant feature in determining the
commercial impression created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
We agree with the examining attorney that the dominant portion of
applicant's mark is the wording EAT FIT. It is well-established that, when a
mark consists of both words and a design, the literal portion of a mark generally is
the dominant feature because it is the element by which consumers will refer to and
call for the goods or services. In re Decombe, 9 USPQ2d 1812, 1814 (TTAB 1988); In
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re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Further, the design
element in applicant’s mark is not particularly distinctive, and clearly is
subordinate to the visually prominent wording. Thus, the EAT FIT portion of
applicant's mark dominates over the design.
Registrant's mark is EATPHIT, which is phonetically identical to “eat fit,”
the wording in applicant's mark. Applicant does not dispute this point. EATPHIT
and EAT FIT also are similar visually, especially because registrant's mark, as a
typed mark, is accorded a range of lettering styles which includes the identical
lettering style of applicant's mark. See Phillips Petroleum Co. v. C. J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35 (CCPA 1971) (a mark registered in typed form is not
limited to being depicted in any particular manner of display). Consumers are not
likely to note or remember that EATPHIT and EAT FIT differ by the presence or
absence of a space, or the substitution of “PH” for the letter “F” in registrant’s mark,
nor will they distinguish the marks based on these slight differences. Under actual
marketing conditions, consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB
1980).
We further find that the connotations of the marks are identical, and that
they create the same commercial impression. To the extent that “eat fit” is
suggestive of eating in a fit or healthy manner, this term has the same meaning
with respect to the services associated with both marks. In this regard, there is no
Serial No. 85186655
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support for applicant’s contention that “PHIT” is a recognized abbreviation for
“Personal Health Improvement Training” or how this phrase relates to registrant’s
services.
In view of the foregoing, we find that, when applicant's mark and registrant's
mark are compared in their entireties, they are sufficiently similar in appearance,
sound, connotation and commercial impression that, if used in connection with
related services, confusion would be likely to occur. As such, this du Pont factor
favors a finding of likelihood of confusion.
We next turn to consider the second du Pont factor regarding the similarity
or dissimilarity of the services. It is well settled that the services of applicant and
registrant need not be identical or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of confusion. It is sufficient
that the respective services of applicant and registrant are related in some manner,
or that the conditions and activities surrounding the marketing of the services are
such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In
re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The issue, of course, is not whether purchasers would confuse the services, but
rather whether there is a likelihood of confusion as to the source of the services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Serial No. 85186655
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We make our determination regarding the similarity of the services, channels
of trade and classes of purchasers based on the services as they are identified in the
application and registration, respectively. Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Accordingly, we must compare applicant’s services, which are identified as
“providing healthy lifestyle and sports nutrition services, namely, in-person
personal assessments, personalized routines, maintenance schedules, and
counseling” to registrant’s “educational services, namely, conducting an on-line
health education program for promoting an individual’s overall physical, mental,
emotional and spiritual well-being and providing incentives to employer groups and
members of health plans to demonstrate excellence in the field of nutritional and
dietary habits.”
Applicant’s primary argument regarding the purported differences between
her services and the services of registrant is best summarized in applicant’s own
words:
Applicant’s services are directed to in-person personal
assessments, counseling and personalized routines and
maintenance schedules for health and nutrition.
However, the cited mark is employed relative to on-line
programs, which by their very nature would be
substantially more impersonal. The in-person nature of
the guidance provided by the Applicant would obviate any
risk of confusion, even if there were one.
App. Br., pp. 9-10.
Applicant points to her website and registrant’s website as evidence of the
differences between the services the parties provide under their respective marks.
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Although the examining attorney argues that applicant did not make these
webpages of record, we note that applicant submitted a copy of her webpage as a
specimen when she filed the application. In any event, we agree with the
examining attorney that the webpages would have little, if any, probative value,
even if applicant properly had made them of record, as our analysis regarding the
similarity or dissimilarity of the parties’ respective services is based on the
recitation of services in the application and registration, not on extrinsic evidence of
actual use. See Octocom, 16 USPQ2d at 1787.
It is the examining attorney’s position that:
healthy lifestyles and sports nutrition and nutrition
related services and programs in general are related and
it does not matter whether the services are provided on-
line or in-person because on-line and in-person services
and/or programs related to health and nutrition are of a
kind that may emanate from a single source under a
single mark. Moreover, if the on-line services are
interactive, then the on-line services may also be
personalized.
Ex. Atty. Br., p. 12.
To support her position, the examining attorney has made of record a number
of use-based, third-party registrations which show that various entities have
adopted a single mark for services of the type that are identified in both applicant's
application and the cited registration. Following are excerpts from the most
pertinent of such registrations:
•Registration No. 3950913 (EDIBLE NUTRITION AN
EDIBLE APPROACH TO A LIFE WORTH TASTING!) for
“education services, namely, providing live and on-line
classes, seminars and workshops in the field of health,
wellness and nutrition” and “nutrition counseling; . . .
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providing healthy lifestyle and nutrition services, namely,
personal assessments, personalized routines, mainten-
ance schedules, and counseling to assist in reaching
weight loss, sports performance, health, fitness, and
wellness-related goals”;
•Registration No. 3747333 (NUTRIGRADES) for “edu-
cational services, namely, conducting classes, seminars,
and workshops in the field of nutrition and wellness and
distribution of course material in connection therewith”
and “counseling services in the fields of health, nutrition
and lifestyle wellness, food nutrition consultation”;
•Registration No. 77584601 (RENKER WELLNESS
CENTER) for “educational services, namely, lectures and
seminars promoting healthy lifestyle” and “counseling
services in the fields of health, nutrition and lifestyle
wellness”;
•Registration No. 3633337 (FITOPIA) for “educational
services, namely, conducting programs in the field of
fitness, wellness, exercise, diet, and nutrition,” “fitness,
wellness, exercise, diet, bodybuilding, yoga, and nutrition
instruction provided via the internet”; and “nutrition
counseling services”;
•Registration No. 4091361, HEALTHY 100 for “…educa-
tional services, namely, conducting seminars, conferences
and workshops, meetings in the fields of aging, general
health, increased healthy lifespans, wellness and
nutrition and distribution of course materials in
connection therewith” and “counseling and advice in the
field of diet”; and
•Registration No. 4063997, MIND OVER EATING A
ROADMAP TO MINDFUL EATING for “education serv-
ices, namely, providing live and on-line workshops,
webinars, and seminars in the field of mindful eating,
weight loss, nutrition and maintaining a healthy weight,”
“counseling services in the fields of health, nutrition and
lifestyle wellness” and “nutrition counseling.”
Third-party registrations which individually cover a number of different
items and which are based on use in commerce serve to suggest that the listed
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goods and/or services are of a type which may emanate from a single source. In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d
149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
In addition, the examining attorney submitted evidence from several third-
party websites suggesting that the same entities provide both applicant’s and
registrant’s types of services. The following samples are illustrative:
•Nancy Clark offers on-line and in-person workshops on
nutrition and exercise, with topics including sports
nutrition counseling, exercise and weight loss
(nancyclarkrd.com);
•Neal Nutrition “specializes in sports nutrition,” offers
“on-line and in-person services to help you lose weight,
fight chronic disease, and get the extra boost you need for
your best performance” and, to this end, provides
“individualized, personal nutrition counseling.”
(nealnutrition.com);
•Endurance Nutrition provides on-line or in-person
“nutrition packages” to “fit your Sports Nutrition Needs –
let us help you get to the finish line feeling strong!”
(endurancenutritiononline.com); and
•Venice Nutrition offers on-line and one-on-one consult-
ing to “educate individuals on how to work nutrition,
fitness, and overall health permanently into their
lifestyle.” (venicenutrition.com).
Based upon the foregoing, we find that it is not uncommon for providers of in-
person health, wellness and nutrition services, including sports nutrition, to also
provide those services on-line, that applicant's services are related to those provided
by registrant and that the parties’ services are of a type that may be marketed
Serial No. 85186655
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under the same marks. We further find that the parties’ respective services are
rendered in similar trade channels.
As to the classes of purchasers, where the services in a cited registration are
broadly identified as to their nature and type, such that there is no limitation as to
the classes of purchasers, it is presumed that in scope the recitation of services
encompasses all the services of the nature and type described therein and that the
identified services would be purchased by all potential buyers thereof. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co. v. Camera-Mart, Inc.,
258 F.2d 956, 119 USPQ 139 (CCPA 1958)). As neither the application nor the
registration contain limitations as to the classes of purchasers, we find them to be
the same or similar.
The similarities between the services, trade channels and classes of
purchasers are factors that weigh in favor of a finding of likelihood of confusion.
With regard to the factor of fame, as applicant points out, there is no evidence
that the registrant's mark is famous. This is usually the case in an ex parte
proceeding, since the Examining Attorney normally would have no access to
evidence that would prove the fame of a mark. In re Thomas, 79 USPQ2d 1021,
1027, n. 11 (TTAB 2006). However, the lack of fame of the registrant's mark does
not support the contrary conclusion, asserted by applicant, that the cited mark is
weak. See In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (Fed. Cir. 2003), in
which the Court stated that while the fame of a registered mark is relevant to
likelihood of confusion, “we decline to establish the converse rule that likelihood of
Serial No. 85186655
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confusion is precluded by a registered mark's not being famous.” Thus, this du Pont
factor is neutral.
The next factor we consider is that of third-party use. As applicant points
out, evidence of third-party use can be used to show that a registrant’s mark is
weak and thus entitled to a limited scope of protection. To this end, applicant
submitted printouts of five websites that use the designation EAT FIT (Exhibits B-
F to the July 18, 2011, Response to First Office Action). However, as the examining
attorney states, Exhibits C, E and F do not show use of the wording EAT FIT in
connection with the services identified in either the application or the registration,
and Exhibit E indicates that the services are “coming soon.” We note, in addition,
that Exhibits B and F are owned by the Regents of the University of California.
This evidence of third-party use is minimal, and does not render registrant’s mark
weak.
In addition, applicant submitted a list of third-party registrations and
applications taken from USPTO electronic records, of marks that include the words
EAT and FIT. However, despite the examining attorney’s advice in the Final Office
action, applicant did not properly make the registrations or applications of record.3
“To make a third-party registration of record, a copy of the registration, either a
copy of the paper USPTO record, or a copy taken from the electronic records of the
Office, should be submitted.” TBMP § 1208.02. “[T]he submission of a list of
registrations is insufficient to make them of record....” In re Duofold Inc., 184
USPQ 638, 640 (TTAB 1974). The Board does not take judicial notice of

3 Applicant had the opportunity to do so when she filed her Request for Reconsideration.
Serial No. 85186655
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registrations residing in the USPTO. In re Lar Mor International, Inc., 221 USPQ
180 (TTAB 1983).
Thus, the du Pont factor of the number and nature of similar marks in use on
similar services is neutral.
Applicant suggests that the selection of its services would require care
because they are related to the purchaser’s health and well-being. App. Br., p. 10.
First, this allegation is not supported by any evidence. Even if some purchasers
exercise a high level of care for the reason applicant suggests, there is no reason to
assume that applicant’s services do not appeal equally to less careful purchasers.
Applicant’s services are not limited to those purchased only by sophisticated or
particularly careful customers. Second, and in any event, even assuming that a
careful selection is involved, it is settled that even sophisticated purchasers are not
immune from source confusion, especially in cases such as this, involving very
similar marks and closely related services. See In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers...are not infallible.”). See also
Decombe, 9 USPQ2d 1812. We find that the similarities between the marks and the
services sold thereunder outweigh any presumed sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
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marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods). Thus, the factor regarding conditions of purchase is neutral.
We conclude that consumers familiar with registrant’s “educational services,
namely, conducting an on-line health education program for promoting an
individual’s overall physical, mental, emotional and spiritual well-being and
providing incentives to employer groups and members of health plans to
demonstrate excellence in the field of nutritional and dietary habits,” offered under
the mark EATPHIT would be likely to believe, upon encountering applicant’s mark
for “providing healthy lifestyle and sports nutrition services, namely, in-
person personal assessments, personalized routines, maintenance schedules, and
counseling,” that the services originated with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.