Nutri/System IPHC, Inc.

Trademark Trial and Appeal Board

Sep 18, 2015

No. 86056885 (T.T.A.B. Sep. 18, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nutri/System IPHC, Inc.
_____

Serial No. 86056885
_____

Timothy J. Szuhaj of Becker Meisel LLC,
for Nutri/System IPHC, Inc.
Sara N. Benjamin, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Cataldo, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Nutri/System IPHC, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark FAST 5 (in standard characters) for
health care services, namely, providing treatment, planning and
counseling for weight reduction and obesity, weight management in
the nature of weight loss and/or weight maintenance programs and
weight reduction diet supervision, namely, providing individuals with
customized weight loss and weight management counseling, weight
management planning and transition planning, nutrition behavior
modification, all provided by telephone and a global computer network
in International Class 44.1

1 Application Serial No. 86056885 was filed on September 5, 2013, based upon Applicant’s
allegation of a bona fide intent to use the mark in commerce. Applicant subsequently filed
Serial No. 86056885
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based upon
Registration No. 2957045 for the mark FAST 10 (in standard characters, with a
disclaimer of “10”) for
educational services; namely instruction in the fields of exercise
equipment, fitness exercise, and diet and nutrition programs and
instructional manuals distributed therewith; educational services;
namely tracking progress of workouts in International Class 41.2

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In its request for reconsideration, Applicant makes the following statement:
[A] review of the TESS database revealed 3,578 live registrations and
applications for marks containing the term “FAST.” Applicant submits
that this evidences the weak nature of the term “FAST” as related to
numerous goods and services, including the goods and services related
to the Cited Marks, and, therefore, confusion as suggested by the
Examining Attorney based on the shared term is unlikely. See TMEP §
1207[.01](d)(iii) (“[i]f the evidence establishes that the consuming
public is exposed to third-party use of similar marks on similar goods,
it ‘is relevant to show that a mark is relatively weak and entitled to
only [a] narrow scope of protections[sic]’”) (quoting Palm Bay Imps., v.

an allegation of use claiming first use anywhere and use in commerce since at least as early
as September 3, 2013.

2 Issued on May 31, 2005. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
First Renewal.
Serial No. 86056885
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Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369,
1373-74 [73 USPQ2d 1689, 1693] (Fed. Cir. 2005)).3

Also with its request for reconsideration, Applicant introduced into the record copies
of 12 FAST-formative registrations, discussed below, along with Internet materials
and dictionary definitions.4 In its brief, Applicant repeats the above argument.5
In her brief, the Examining Attorney raises the following objection to “evidence”
submitted by Applicant:
The examining attorney objects to new evidence submitted by the
applicant at the time of appeal. Specifically, applicant states
“…Applicant’s review of the TESS database revealed 3,578 live
registrations and applications for marks containing the term ‘FAST’,”
however, applicant has not presented any evidence or support for such
fact, nor has it requested that judicial notice be taken thereof.”6

The record in an application should be complete prior to the filing of an
appeal. 37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP
§710.01(c). Because applicant’s new evidence was untimely submitted
during an appeal, the trademark examining attorney objects to this
evidence and requests that the Board disregard it. See In re Fiat Grp.
Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014);
In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013); TBMP
§§1203.02(e), 1207.01; TMEP §710.01(c).7

3 4 TTABVUE 3. Record citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
Citations to the examination record refer to the USPTO’s online Trademark Status and
Document Retrieval system (TSDR), by date and page number.

4 Id. at 33-91.

5 9 TTABVUE 15-6.

6 The Board does not take judicial notice of third party registrations residing in the USPTO
records. See the discussion infra.

7 11 TTABVUE 4-5.

Serial No. 86056885
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In its reply brief, Applicant addresses the Examining Attorney’s argument by
noting that “the Applicant first made this statement in support of the
uncontroverted proposition that “FAST” is a weak term in the context of
trademarks and submitted accompanying evidence in its timely filed Request for
Reconsideration.”8 “Accordingly, by rule, the Applicant submitted this evidence in
a timely fashion and it is properly part of the record.”9
Further, in an abundance of caution, the Applicant respectfully
requests the Board take judicial notice of the fact that the TESS data
base contains over 3,500 live registrations and applications for
marks containing the phrase “FAST.” This overwhelming evidence
makes clear that the phrase “FAST” has widespread use as a
trademark. Equity dictates the Board’s use of judicial notice in this
instance. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
U.S.P.Q.2d 1681 (Fed. Cir. 2010) (Federal Circuit exercised its
discretion to take judicial notice of a third party's registrations). To
require the Applicant to submit over 3,500 documents as evidence to
the Examining Attorney, documents obtained from the Examining
Attorney's own database, would be over burdensome, would promote
form over substance, and would defy common sense.10

At the outset, we noted that “[a] timely request for reconsideration of an
appealed action may be accompanied by additional evidence, which will thereby be
made part of the record in the application.” TBMP § 1207.04 (June 2015). See also
In re Petroglyph Games, Inc., 91 UPSQ2d 1332, 1334 (TTAB 2009). Because the
twelve third-party registrations were submitted with a timely request for
reconsideration, those registrations are of record and will be considered.

8 12 TTABVUE 3.

9 Id.

10 Id. at 4.

Serial No. 86056885
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With respect to Applicant’s reference to the 3,500 third-party “Fast” formative
marks in the USPTO database, we agree with Applicant that submitting copies of
over 3,500 registrations and applications in support of its position would be overly
burdensome both to Applicant and to this tribunal. We discourage such evidentiary
submissions on the ground that they tend to be overly cumulative and, in this case,
doubtless would include a large number of registrations for marks identifying goods
and services unrelated to those at issue herein, which would be of little, if any,
probative value.11 See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246
(TTAB 2010) (much of the 300 pages of Internet material submitted by applicant
unhelpful because duplicative, or reference different terms, or for services in
different fields or otherwise irrelevant).
Furthermore, it is well-settled that the Board does not take judicial notice of
third party registrations.
With regard to third-party registrations, the Federal Circuit, in In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir.
2010), exercised its discretion to take judicial notice of a third party’s
registrations. [internal citations omitted.] However, the Board’s well-
established practice is to not take judicial notice of third-party
registrations when an applicant or examining attorney requests that
such notice be taken during the course of an appeal.

Trademark Board Manual of Procedure (“TBMP“) § 1208.02 (2015). See also, e.g., In
re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (request in reply brief that Board
take judicial notice of “thousands of registered marks incorporating the term NEW

11 We note in addition that any applications identified in the list also are of no value.
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003)
(applications show only that they have been filed).

Serial No. 86056885
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YORK for products and services that do not originate in New York state or city”
denied), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir.1999); In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1717 n.18 (TTAB 2011); In re Jonathan Drew, Inc.,
97 USPQ2d 1640, 1644 n.11 (TTAB 2011); In re Carolina Apparel, 48 USPQ2d 1542,
1542 n.2 (TTAB1998); In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998). See
also TBMP § 1208.04 and authorities cited therein. Cf. In re Chippendales USA,
Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010).
It further is settled that 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. See In re Jump Designs LLC,
80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Duofold Inc., 184 USPQ 638 (TTAB
1974). See also generally TBMP § 1208.02 and authorities cited therein. Indeed,
Applicant properly made of record copies of a dozen FAST-formative registrations
with its request for reconsideration. Furthermore, in its brief “Applicant notes with
particular interest”12 3 of the 12 registrations so submitted: presumably, these 3 are
the most probative of the third-party registrations made of record. These 12 third-
party registrations, as well as the Internet materials, dictionary definitions and any
other evidence properly made of record by Applicant and the Examining Attorney
will be considered in our determination below of the refusal of registration that is
the subject of this ex parte appeal.

12 9 TTABVUE 16.
Serial No. 86056885
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In accordance with the above authorities, Applicant’s request for judicial notice
of approximately 3,500 registrations and applications for marks assertedly
consisting in whole or in part of the term “FAST” is denied. Applicant’s arguments
based upon these purported registrations and applications are just that; arguments
without evidentiary support. As a result, the Examining Attorney’s request that the
Board disregard such “evidence” is moot.
II. Applicable Law
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 Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). We discuss the du Pont factors for which Applicant and the Examining
Attorney have presented evidence and arguments.
Similarities and Dissimilarities of the Marks
We turn to the du Pont factor of the similarity or dissimilarity of the marks at
issue as to appearance, sound, meaning, and overall commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). As noted above, these are the
involved marks: FAST 5 and FAST 10.
Regarding the first du Pont factor, we recognize that the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, and
the analysis cannot be predicated on dissecting the marks into their various
Serial No. 86056885
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components; that is, the decision must be based on the entire marks, not just part of
the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion”). In addition, we observe that while we have placed the two
marks next to one another for comparison purposes, consumers may not necessarily
encounter the marks in such proximity and must rely upon their recollections
thereof. In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
In this case, the marks are similar to the extent that “FAST,” the first word of
Registrant’s mark, is identical to the first term in Applicant’s mark, in appearance
and sound. Further, in both marks, the term “FAST” is followed by a numeral,
respectively, “5” and “10.” As a result, the marks FAST 5 and FAST 10 are
somewhat similar in appearance and sound. In addition, the marks both suggest
that the services they identify provide a quick, efficient, or “fast” way to reach a
fitness, nutritional, or weight loss goal. Both Applicant’s specimen of use (“Lose 5
pounds* your first week or your money back – guaranteed!)13 and evidence
introduced into the record by the Examining Attorney (“Follow this six-week diet-
and-exercise program, created by Christine Lydon, MD, and you’ll wipe out 15
pounds – and look a decade younger.”)14 indicate that exercise and weight loss

13 September 13, 2013 Allegation of Use.

14 April 18, 2014 Office Action at 21-60.

Serial No. 86056885
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programs offer goals in pound increments. Thus, the marks FAST 5 and FAST 10
appear to be variations of each other, connoting services that provide, inter alia,
weight loss, exercise and nutrition programs allowing users thereof to lose a fast 5
or 10 pounds or see results in a mere 5 or 10 days. We find, therefore, that the
marks, when taken as a whole, present overall similar commercial impressions.
We are not persuaded by Applicant’s arguments that “these marks look
completely different.”15 “Applicant submits that the numerals “5” and “10” have
been registered as text marks without design elements and without disclaimer thus
demonstrating the distinctiveness of these numerals standing alone as
trademarks.”16 In support of this position, Applicant introduced into the record
copies of the following use-based third-party registrations, all issued on the
Principal Register for marks in typed or standard characters:17
Registration No. 997190 for the mark 5 for
thread sealing compound;

Registration No. 1569109 for the mark 5 for
perfume, cologne, bath oil, and various skin products;

Registration No. 2068649 for the mark 10 for
commercial, industrial and residential building materials;

Registration No. 2374202 for the mark 5 for

15 9 TTABVUE 14.

16 Id.

17 4 TTABVUE 33-39.
Serial No. 86056885
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entertainment in the nature of participating in professional automobile
races;

Registration No. 2725011 for the mark 10 for
various light emitting diode and incandescent lighting products for
automobiles, including headlights, tail lights, and running lights;

Registration No. 3663967 for the mark 10 for
various items of infants’ and children’s clothing;

Registration No. 3496735 for the mark 5 for
chewing gum;

Registration No. 3462331 for the mark 5 for
customer service, promotional services, consumer product information
and retail store services in the field of pet products for numerous
breeds of dogs; and

Registration No. 4437067 for the mark 5 for
energy consulting services, namely, business risk management in the
energy industry for others.

However, none of these third-party registrations identify goods or services that
are even remotely related to the services at issue herein. We further note that the
cited mark FAST 10 is registered with a disclaimer of “10,” undercutting Applicant’s
argument that the numerical portions of the marks are more distinctive than the
term “FAST” as used in connection with the services identified thereby.
In further support of its position, Applicant has introduced into the record copies
of the following use-based third-party registrations, all issued on the Principal
Register for marks in typed or standard characters:
Registration No. 3555990 for the mark PHAST for
Serial No. 86056885
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reference standards, namely, solutions, reagents and/or preparations
for pharmaceutical development, pharmaceutical quality control, and
pharmaceutical quality assurance in International Class 1,

education services, namely, instruction and training in the field of use
of reference standards for medical products and in the field of quality
securing measures in the field of pharmacy in International Class 41,

conducting chemical, biological and pharmaceutical examinations for
others; quality control of medicine, medicine products and food
products and need objects for others; development and realization of
quality securing measures for the pharmaceutical industry;
development of medicines, foodstuffs and need articles in International
Class 42;

Registration No. 3761735 for the mark FAST 5 for
quoting, underwriting, and writing of insurance, namely, property and
casualty, providing services, namely, insurance policy management in
International Class 36, and

product evaluation in the field of insurance in International Class 42;

Registration No. 4514017 for the mark FAST 5 PIZZA (“PIZZA” disclaimed) for
restaurant services in International Class 43.

We begin by noting that the “existence of [third party] registrations is not
evidence of what happens in the market place or that customers are familiar with
them.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268,
269 (CCPA 1973). Nonetheless, we look to the third-party registrations submitted
by Applicant in assessing the relative strength or weakness of the mark in the cited
registration. Juice Generation, Inc. v. GS Enters. LLC, — F.3d —, 115 USPQ2d
1671, 1674-5 (Fed. Cir. 2015). We examine these third-party registrations in turn.
Registration No. 3555990 identifies pharmaceutical solutions and reagents for
pharmaceutical purposes and training, quality control, and development services
Serial No. 86056885
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related thereto. These goods and services are unrelated either to Applicant’s
medical services in the fields of weight reduction and management or Registrant’s
instruction in the fields of exercise, fitness, diet and nutrition. In addition,
Applicant introduced the following definition from urbandictionary.com of the term
“phast” – “to express satisfaction in an object and/or person Yo Joe those gloves are
mad phast.”18 Thus, the mark PHAST in Registration No. 355990 may have a
connotation separate and apart from those engendered by Applicant’s mark or the
mark in the cited registration as opposed to being viewed as a novel spelling of
“fast.”
Registration No. 3761735 for the mark FAST 5 identifies various insurance
services. Thus, notwithstanding that the mark in Registration No. 3761735 is
identical to the mark in the involved application and more similar to the FAST 10
mark in the cited registration than the marks in the other third-party registrations,
the services recited therein are unrelated to the services recited in the subject
application or cited registration.
Registration No. 4514017 for the mark FAST 5 PIZZA identifies restaurant
services that again are unrelated to the services recited in either the involved
application and cited registration. And notwithstanding that PIZZA is disclaimed
and, at best, appears to be highly descriptive of the services, the presence of that
term in the third-party FAST 5 PIZZA mark creates a commercial impression that

18 4 TTABVUE 79.
Serial No. 86056885
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is further removed from those engendered by the marks in either the involved
application or cited registration.
All of the third-party registrations that Applicant has made of record identify
goods and/or services that are unrelated to the services at issue and, therefore, they
do not support Applicant’s argument that Registrant’s mark is entitled to a narrow
scope of protection. In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991)
(“Registrations for goods unrelated to the clothing field are irrelevant to our
discussion”); SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8
USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party use
were submitted, it would be of no aid to respondent herein where the third-party
usage was for goods unrelated to either petitioner's skin care products or
respondent's stuffing box sealant”); Anderson, Clayton & Co. v. Christie Food
Products Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987) (“The other third-party
registrations relating to marks in unrelated fields are of no probative value”).
Certainly, even if there were evidence that third parties were using the term
FAST by itself or with a numerical designation in connection with services related
to pharmaceutical development, insurance or restaurants, it would not affect the
scope of protection that we would give to Registrant’s mark for educational services
related to exercise, fitness, nutrition and diet in this case.
In addition, even if the services in these registrations were closer to the services
in the cited registration, these third-party registrations may be used to demonstrate
that a mark or a portion of a mark is suggestive or descriptive, but they cannot be
Serial No. 86056885
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used to justify the registration of another confusingly similar mark. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See also Plus Products v. Star-
Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations
relied on by applicant cannot justify the registration of another confusingly similar
mark”). Therefore, while we can agree that the cited mark may be somewhat
suggestive of the services, the evidence does not show that it is so highly suggestive
as to be entitled to only a narrow scope of protection.
Also, it has often been stated that each case must stand on its own record and, in
any event, the Board is not bound by the actions of prior examining attorneys. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the board
or this court.”).
Finally, “Applicant renews its assertion that the actual use of the famous house
mark, NUTRISYSTEM, by its affiliate in constant juxtaposition to FAST 5
undercuts any potential for a likelihood of confusion.”19 However, Applicant’s
involved mark is FAST 5 and in the context of this ex parte proceeding, we must
base our likelihood of confusion determination on the marks as they appear in the
involved application and cited registration without consideration as to the manner
in which the marks may be presented or whether they are marketed in association
or proximity with other house marks or trade dress.

19 9 TTABVUE 18.
Serial No. 86056885
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Viewed as a whole, Applicant’s mark is more similar to than dissimilar from the
mark in the cited registration in appearance, sound and, in particular, connotation.
As a result, we find that the marks convey commercial impressions that are more
similar than dissimilar.
Relationship of the Services
We turn now to the du Pont factor involving the similarity or dissimilarity of
Applicant’s services, which include weight loss management counseling and
nutrition behavior modification, and Registrant’s instruction in the fields of
exercise, fitness, diet and nutrition. It is settled that in making our determination,
we must look to the services as identified in the application vis-à-vis those recited in
the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). It is not necessary that the respective services be
competitive, or even that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the respective services 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 give rise to the mistaken belief that
they originate from the same producer. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).
Serial No. 86056885
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We observe that the services at issue appear to be related on their face inasmuch
as both concern, inter alia, nutrition. That is to say, Applicant provides nutrition
behavior modification as part of its weight loss programs and Registrant provides
diet and nutrition programs along with its fitness programs. In addition, the
Examining Attorney introduced into the record with her April 18, 2014 Office
Action evidence from commercial Internet websites suggesting that the same
entities provide Applicant’s dietary, weight loss and management, and nutritional
services as well as Registrant’s fitness, exercise, diet and nutrition programs under
the same marks. In other words, the evidence of record establishes that third
parties provide diet, weight loss, and exercise programs together as part of an
overall health and wellness regimen. Examples include health.com;
jillianmichaels.com; deniseaustin.com; beachbody.com; and weightwatchers.com.20
In addition, the Examining Attorney made of record with her September 27,
2013 Office Action copies of third-party, use-based registrations, of which 14 recite
services of the type identified both in the involved application and cited
registration.21 The following examples are illustrative:
Registration No. 4082090 for services including providing information,
news and commentary services in the field of dieting, weight loss,
nutrition, health and wellness; and providing training services in the
field of dieting, weight loss, nutrition, health and wellness;

Registration No. 3781028 for services including providing an on-line
computer database featuring information regarding exercise and
fitness, providing on-line publications in the nature of books, reports,

20 At 21-60.

21 At 20-135.
Serial No. 86056885
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and newsletters in the field of health, nutrition, diet, weight loss,
fitness, exercise, and lifestyle; and providing an on-line computer
database featuring information regarding health and nutrition,
providing health information;

Registration No. 4136306 for services including educational services,
namely, a continuing program providing information about health and
nutritional and holistic medicine and providing holistic medical
information about nutritional products and supplements accessible by
radio, television, satellite, audio, video and computer networks; and
providing information about health and nutritional and holistic
medicine, providing holistic medical information about nutritional
products and supplements;

Registration 4003168 for services including physical fitness training
services, educational services in the nature of providing fitness classes,
providing on-line publications in the nature of e-books in the field of
exercise and diet; and providing weight loss program services, weight
loss coaching and counseling, and hypnotherapy for weight loss; and

Registration No. 4069763 for services including educational services,
namely, providing a comprehensive program in the field of weight loss
and diet, educational services, namely, providing classes, mentoring,
coaching, workshops, seminars in the fields of weight loss and diet; and
providing weight loss program services, weight loss diet planning and
supervision, providing medical counselling for weight loss and
implementing preventative medicine using nutrition, homeopathy and
medicines, providing a website featuring information and advice in the
fields of weight loss and diet.

These registrations suggest that third parties provide certain of Applicant’s services
and Registrant’s services under a single mark. See In re Infinity Broadcasting Corp.
of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The registrations show that
entities have registered their marks for both television and radio broadcasting
services. Although these registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nevertheless have
probative value to the extent that they serve to suggest that the services listed
Serial No. 86056885
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therein, including television and radio broadcasting, are of a kind which may
emanate from a single source.). See, also e.g., In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010); In re Anderson, 101 USPQ2d 1912, 1919
(TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
We are not persuaded by Applicant’s arguments and extrinsic evidence
attempting to limit the nature or extent of the services identified by the mark in the
cited registration. As noted above, we must look to the services as identified in the
application vis-à-vis those recited in the cited registration in coming to our
determination regarding the relatedness thereof. See Octocom, 16 USPQ2d at 1787;
In re Giovanni Food Co., 97 USPQ2d at 1991. It further is settled that an applicant
may not restrict the scope of the services covered in the pleaded registration by
argument or extrinsic evidence. See In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986). In addition, to the extent Applicant argues that the mark in the
cited registration is no longer in use, such argument, viewed properly, is an attack
on the validity of a registration which is not permitted in an ex parte proceeding. In
re Dixie Restaurants, Inc., 41 USPQ2d at 1534. We must accord the cited
registration the presumption of validity provided for in Trademark Act Section 7
discussed above. Accordingly, we reject Applicant’s argument to the extent it
challenges the validity of the registered mark.
Based upon the evidence of record, we find that consumers would believe that
Applicant’s services are related to Registrant’s services and may emanate from a
Serial No. 86056885
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common source. Moreover, it is not necessary for the Examining Attorney to prove
likelihood of confusion with respect to each item of services identified in Applicant’s
single-class application; if there is likelihood of confusion with respect to any of
Applicant’s identified services, the refusal of registration must be affirmed. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981).
Channels of Trade and Classes of Purchasers
Where the services in an application or cited registration are broadly described,
such that there are no restrictions as to trade channels and purchasers, it is
presumed that the identification of services encompasses not only all services of the
nature and type described therein, but that the identified services are offered in all
the normal channels of trade, and that they would be purchased by all the usual
customers. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In this case, Applicant’s services are provided by telephone and global computer
network. However, Registrant’s services are not limited to any particular channels
of trade, and thus we must assume they are available in all trade channels common
for exercise, diet, nutrition and fitness services and also are available to all usual
consumers of such services. Furthermore, evidence of record, discussed above,
suggests that both Applicant’s services and Registrant’s services are provided on the
same Internet websites, and further supports a finding that they will be marketed
to the same class of purchasers, namely, consumers interested in fitness, nutrition,
diet and exercise.
Serial No. 86056885
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Conclusion
We have considered all of the du Pont factors for which Applicant and the
Examining Attorney have introduced evidence and arguments. The rest we treat as
neutral. After considering all of the evidence properly of record, including any
evidence not specifically discussed herein, and arguments pertaining to the du Pont
likelihood of confusion factors, we find the marks are similar, the services are
related, and the services appear to be offered in some of the same channels of trade
to the same classes of purchasers. In view thereof, we find that Applicant’s mark, if
used in association with the services identified in the application, is likely to cause
confusion with the registered mark used in connection with the services recited in
the registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.