Mack and Astilean

Trademark Trial and Appeal Board

Feb 11, 2008

No. 78652191 (T.T.A.B. Feb. 11, 2008)

Mailed: February 11, 2008
JST

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mack and Astilean
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Serial No. 78652191
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Myron Amer of Myron Amer PC for Tami Mack and Aurel A.
Astilean.

David A. Hoffman, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
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Before Hairston, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Tami Mack and Aurel A. Astilean, joint applicants,
have filed an application to register the mark IT’S NOT
YOUR BODY, IT’S YOUR FITNESS ROUTINE (in standard character
form) on the Principal Register for services ultimately
identified as “providing classes, seminars and workshops in
the field of physical fitness.”1 The application was filed
on June 16, 2005, based upon applicants’ bona fide

1 Serial No. 78652191.

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 78652191

2
intention to use the mark in commerce. The application was
published on March 7, 2006 and a notice of allowance issued
on May 30, 2006. Applicants filed their statement of use,
accompanied by a specimen of use, on November 30, 2006.2
Registration of applicant’s mark has been refused
under Trademark Act Section 45 on the ground that the
specimen of record does not show use of the mark in
connection with applicants’ services. After the refusal
was made final, applicants appealed. Both applicants and
the examining attorney filed appeal briefs.
For the reasons discussed below, we affirm the refusal to
register.
Applicants’ specimen of record, which is affixed to
treadmills in applicants’ fitness centers3, is reproduced
below:

2 Applicants claimed as their date of first use and date of
first use in commerce May 15, 1996.

3 Applicants’ March 23, 2007 response, Evidentiary Declaration.
Ser No. 78652191

3
The examining attorney maintains that applicant’s
mark IT’S NOT YOUR BODY, IT’S YOUR FITNESS ROUTINE is not
being used to identify the source of any classes, seminars
or workshops in the field of physical fitness because there
is no wording on the specimen that would indicate that
these services are being offered under the mark. The
examining attorney also maintains that the manner of use of
the mark on the specimen is such that consumers would not
recognize the mark as it appears on the specimen as
indicating the source of applicants’ services.
Particularly, the examining attorney argues:
… with no reference to the nature of the
services anywhere on the specimen, consumers
would likely believe that the proposed mark had
a connection to the manufacturer of treadmills,
since they are placed on the front of these
machines in applicants’ fitness centers.

Examining attorney’s brief at 2.

To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services identified in the application,
and there must be sufficient reference to the services to
create this association. In re Monograms America Inc., 51
USPQ2d 1317 (TTAB 1999). That is, the mark must be used in
such a manner that it readily would be perceived as
Ser No. 78652191

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identifying the source of such services. In re Advertising
& Marketing Development, Inc., 821 F.2d 614, 2 USPQ2d 2010
(Fed. Cir. 1987); In re Adair, 45 USPQ2d 1211 (TTAB 1997).
A specimen that shows only the mark, with no reference to
the services, does not show service mark usage. See In re
Adair, supra (tags affixed to decorated Christmas trees
that bear the mark TREE ARTS CO. and design and the
applicant’s location, but make no reference to the
services, fail to show use for “design services in the
nature of designing handcrafted, permanently decorated
Christmas and designer trees”); and In re Johnson Controls,
Inc., 33 USPQ2d 1318 (TTAB 1994)(labels affixed to
packaging of valves do not show use of mark for custom
manufacturing of valves).
The specimen submitted by applicants was submitted
without context. Further, the only wording in addition to
applicants’ mark appearing on the specimen is “RUN
TIME/REST TIME MINUTES” and “Stop Jogging! Start Running!.”
As pointed out by the examining attorney, there is no
reference whatsoever to applicants’ physical fitness
classes, seminars or workshops, and none of this language
creates a direct association with applicant’s mark such
that consumers of applicant’s services, when viewing the
specimen on the front of the treadmill, would relate the
Ser No. 78652191

5
mark to applicants’ services. Put simply, the additional
wording does not advertise applicants’ classes, seminars
and workshops in the physical fitness field. Instead, the
wording is likely to be perceived as instructive and/or
motivational when using the treadmills. We thus find that
applicants’ mark as used on the specimen is not source
identifying.
The declaration of joint-applicant, Aurel A. Astilean4
does not compel a different result. This declaration is
similar in nature to a declaration that would be submitted

4 Mr. Astilean, in his declaration, states in pertinent part:

3. I have filed patent applications for
“Self-Propelled Treadmill Leg Exerciser”
assigned Serial No. 60/678,700 and “Bungee Cord
Exercising Device” assigned Serial No.
60/749,300;

4. the specimen which displays the slogan
which is my mark, namely IT’S NOT YOUR BODY, IT
(sic) YOUR FITNESS MACHINE, is located on the
front of a treadmill used for exercising
indoors, usually in a fitness gym, in this
case, a fitness gym that I own and operate in
East Hampton, New York;

5. based on my reputation of
involvement in physical fitness through
exercising and my previous participation in
sports, it has been my experience that when
my clients see the words of the slogan on
the treadmill in my fitness gym, they
associate it with my business activity and
not as mere advertising of the manufacturer
of the treadmill[.]

Ser No. 78652191

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in support of a claim of acquired distinctiveness. It does
not establish that purchasers and users of applicant’s
identified services would recognize IT’S NOT YOUR BODY,
IT’S YOUR FITNESS ROUTINE, as it appears on the specimen of
record, as a mark identifying classes, seminars or
workshops in the field of physical fitness.

Decision: The refusal to register is affirmed.