Now Yoga, LLC

Trademark Trial and Appeal Board

Jan 27, 2015

No. 85677969 (T.T.A.B. Jan. 27, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Now Yoga, LLC
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Serial No. 85677969
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Matthew H. Swyers of The Trademark Company PLLC,
for Now Yoga, LLC.
Zachary B. Cromer, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Bucher, Kuhlke and Lykos,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Now Yoga, LLC (“Applicant”) seeks registration on the Principal Register of the
mark NOW YOGA AND FITNESS (in standard character format) for “yoga
instruction” in International Class 41.1
Registration has been refused under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the

1 Application Serial No. 85677969 was filed on July 16, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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recited services, so resembles the mark NOWYOGA, also registered on the
Principal Register for “yoga instruction” in International Class 5, as to be likely to
cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion Analysis
Our determination under Section 2(d) is based upon an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the relationship
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We discuss each of the
du Pont factors concerning which Applicant or the Trademark Examining Attorney
submitted argument or evidence.
As to the du Pont factors focusing on the similarity of the respective services,
their channels of trade and conditions of sale, Applicant concedes that the
services are recited identically without any limitations, and therefore we must
presume the trade channels and marketing conditions are also identical.
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Nonetheless, Applicant continues to point to obvious differences of which the
informed consumers of Registrant’s and of Applicant’s respective services would
be cognizant immediately:
Applicant’s yoga instruction, massage, acupuncture,
and other holistic services, bearing the NOW YOGA
AND FITNESS mark are used to attract a very specific
consumer, namely, adults seeking yoga instruction and
other body work and healing services as well as related
accessories. In contrast, it can only be assumed that the
[Registrant’s] mark was used to attract those seeking
Buddhism based yoga and QiGong classes.
Applicant’s brief at 10.
Of course, an applicant may not restrict the scope of the services covered in its
application or in the cited registration by argument or extrinsic evidence. In re
Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013), In
re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re Bercut-Vandervoort
& Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific differences between
the actual forms or traditions of the respective services are irrelevant in our
analysis. As noted above, neither of the recitations of services includes any of the
limitations in trade channels or classes of purchasers highlighted by Applicant’s
declarant. As a result, we find that the services herein are legally identical and we
must presume that the channels of trade and conditions of sale will also be
identical.
As to whether consumers of yoga instruction are sophisticated and
knowledgeable, Applicant’s counsel argues that “the average purchaser” of these
services “would also exercise a high level of sophistication,” thereby “minimizing
any likelihood of confusion.” Applicant’s brief at 10. However, we find no evidence in
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this record supporting a conclusion that persons taking yoga instruction, as a class,
are sophisticated consumers. Accordingly, we find this to be, at best for Applicant, a
neutral du Pont factor.
We turn then to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “the marks in their entireties as to appearance, sound,
connotation, and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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)
(citation omitted). We also keep in mind that when, as here, marks would be used in
connection with identical services, “the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Applicant points out that in contrast to Applicant’s mark, which “consists of the
term ‘NOW’ followed by the terms ‘YOGA AND FITNESS’,” the cited mark
“telescopes the terms NOW and YOGA to form one unitary and distinct mark:
NOWYOGA. … As such, from the onset it is clear that the marks cannot be said to
be identical.” Applicant’s brief at 9.
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In response, the Trademark Examining Attorney counters that these two marks
are highly similar as to sound, appearance and connotation. Certainly, Applicant’s
insertion of a space between the words “Now” and “Yoga” does not alter the
commercial impression of its mark or obviate a likelihood of confusion. See
Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks
SEAGUARD and SEA GUARD are, in contemplation of law, identical”). Likewise,
Applicant’s adding the words “And Fitness” does not obviate the refusal herein.
Although marks are compared in their entireties, one feature of a mark may be
more significant or dominant in creating a commercial impression. See In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Disclaimed matter
that is descriptive of or generic for an applicant’s services is typically less
significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Here, the trailing words
“And Fitness” are at least highly descriptive of Applicant’s services, have been
properly disclaimed by Applicant, and hence do little to distinguish these marks.
Given that the dominant portion of both marks is “Now Yoga / NowYoga,” we find
the marks are highly similar as to overall commercial impression.
As to the du Pont factor focusing on the number and nature of similar marks in
use on yoga instruction services, Applicant made of record three marks registered in
connection with yoga instruction:
HAPPY NOW YEAR!
Serenity Now Yoga
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As noted by the Trademark Examining Attorney, purported evidence of the
weakness of a cited mark consisting solely of third-party registrations is generally
entitled to little weight in determining the strength or weakness of a mark, because
such registrations alone do not establish that the registered marks identified
therein are in actual use in the marketplace or that consumers are accustomed to
seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973). As a result, we do not find these registrations to be
probative. Moreover, the third-party marks submitted by Applicant call to mind
“now and then,” “Happy New Year,” and calmness or tranquility – each mark
containing the word “now” and registered in connection with yoga instruction
services, but creating substantially different commercial impressions than
Applicant’s and Registrant’s marks. Accordingly, even if these particular marks
were shown to be widely used in the marketplace, they would not be especially
relevant to this du Pont factor.
In conclusion, with identical services that are presumed to travel through the
same trade channels to the same classes of ordinary consumers, and where the
respective marks are quite similar as to overall commercial impressions, we find a
likelihood of confusion should Applicant’s applied-for mark be used in connection
with Applicant’s services.
Decision: The refusal to register Applicant’s mark NOW YOGA AND
FITNESS under Section 2(d) of the Lanham Act is hereby affirmed.