QuickPayNet, Ltd.

Trademark Trial and Appeal Board

May 8, 2015

No. 85925162 (T.T.A.B. May. 8, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 8, 2015

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

In re QuickPayNet, Ltd.
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Serial No. 85925162
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Patrick R. Roche of Fay Sharp LLP,
for QuickPayNet, Ltd.
David Yontef, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
_____

Before Cataldo, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On May 7, 2013, QuickPayNet, Ltd. (“Applicant”) filed an application to register
on the Principal Register the mark STAYFIT PLAN in standard character format
for the following services in International Class 44:1

1 Application Serial No. 85925162, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging August 24, 2007 as the date of first use anywhere and in commerce.
Applicant has disclaimed the word “PLAN” apart from the mark as shown.
During ex parte prosecution, Applicant amended the mark from STAY FIT PLAN to
STAYFIT PLAN in order to overcome a refusal under Trademark Act Sections 1 and 45,
15 U.S.C. §§1051, 1127, that Applicant’s specimen fails to show the applied-for mark used
in direct connection with the sale or advertising of the recited services.

Serial No. 85925162
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Health care services, namely, wellness programs; Providing a website
featuring information about health, wellness and nutrition; Providing a
website featuring information and advice in the fields of diet, weight loss,
diet planning and lifestyle wellness; Providing a website featuring
information regarding healthy living and lifestyle wellness; Providing
assistance, fitness evaluation and consultation to corporate clients to help
their employees make health, wellness and nutritional changes in their
daily living to improve health; Providing assistance, fitness evaluation
and consultation to individuals to help them make health, wellness and
nutritional changes in their daily living to improve health; Providing
information, news and commentary in the field of nutrition, health and
wellness; Providing wellness services, namely, personal assessments,
personalized routines, maintenance schedules, and counseling; Providing
wellness services, namely, weight loss programs offered at a wellness
center; Wellness and health-related consulting services.

The Trademark Examining Attorney refused registration of Applicant’s mark
under 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 following registered marks that, when used
on or in connection with Applicant’s identified services, it is likely to cause
confusion or mistake or to deceive:
Registration Nos. 3776977 and 3574131 on the Principal Register owned by Stay
Fit Seniors, Inc., for the mark STAY FIT SENIORS in standard characters and
the mark displayed below,

for services identified as
Business management, billing and marketing program for chiropractic
and health care services; retail and wholesale store services in the field
of health care products and health care printed materials; franchising,
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namely, offering technical assistance in the establishment and/or
operation of pain treatment and chiropractic clinics, and business
consultation services related thereto in International Class 35; and
Chiropractic consultation services; chiropractic and health care
services; physical therapy; massage therapy in International Class 44.2
Registration Nos. 4133936 and 4196636 on the Principal Register owned by TA
Operating LLC for the mark STAY FIT in standard characters and the mark
displayed below

for goods and services identified as

Magazines featuring topics relating to health, wellness and nutrition
to truck drivers and other drivers; Jogging and walking trail maps” in
International Class 16; and

Providing a website featuring information about health, wellness,
nutrition and jogging and walking trails to truck drivers and other
drivers” in International Class 44.3

2 Issued April 20, 2010 and February 10, 2009 respectively with a disclaimer of the word
“SENIORS” apart from the mark as shown.
The description of the design mark is as follows: “The mark consists of the wording ‘Stay
Fit Seniors’ on two lines with a common large ‘S’ shared by ‘Stay’ and ‘Seniors’, with two
stylized and shaded figures in the upper right corner of the mark.” Color is not claimed as a
feature of the mark.
3 Issued May 1, 2012 and August 28, 2012 respectively.
The description of the design mark is as follows: “The mark consists of the words ‘STAY
FIT’ in white capital letters outlined in black depicted within a red heart with white
highlights that is positioned over a black and white curved road leading from the lower
right section to the middle of the heart.” The colors red, white and black are claimed as a
feature of the mark.
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When the refusal was made final, Applicant appealed and requested
reconsideration based on amending the identification of services to the following:
Providing a subscription-based website for employees of insurance
company subscribers featuring information about health, wellness and
nutrition relating to diets, weight loss, diet planning, lifestyle wellness
and assistance, fitness evaluation and consultation for corporate
clients to help their employees make health, wellness and nutritional
changes in their daily living to improve health.

The Trademark Examining Attorney accepted and entered Applicant’s amendment
but denied the Request for Reconsideration, maintaining the final refusal.
Thereafter, the appeal was resumed, and the case is now fully briefed.
For the reasons explained below, we affirm the refusal to register.
Likelihood of Confusion Analysis
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 and services. 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 (CCPA 1976). These factors and others are discussed below.
Similarity of the Marks
The first du Pont likelihood of confusion factor involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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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) (citation omitted). Our analysis
cannot be predicated on dissecting the marks into their various components; that is,
the decision must be based on the entire marks, not just part of the marks. In re
Nat’l 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 233, 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.”). “On the other hand, in articulating reasons for reaching a conclusion
on the issue of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.” In re Nat’l Data
Corp., 224 USPQ at 751.
At the outset, we note that Applicant’s and Registrants’ marks are comprised,
either in whole or in part, of the compound word mark STAYFIT or the two word
phrase STAY FIT. Because STAYFIT appears first in Applicant’s mark STAYFIT
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PLAN, it constitutes the dominant portion. Consumers are generally more inclined
to focus on the first word, prefix, or syllable in any trademark or service mark. See
id. See also Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (stating that “it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”). We further observe
that the descriptive word PLAN in Applicant’s mark is disclaimed. Disclaimed
matter generally will not constitute the dominant part of a mark. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting
In re Nat’l Data Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
Applicant agrees that the dominant portion of its mark STAYFIT PLAN is
STAYFIT. Applicant argues, however, that its mark as a whole “implies
maintaining fitness or overall general health, and the addition of PLAN implies a
design or scheme of arrangement or a specific project or definite purpose.”
Applicant’s Reply Brief, p. 4; 10 TTABVUE 5.4 Applicant then focuses on the literal
distinctions in the involved marks in arguing that the marks are dissimilar. Vis-à-
vis the STAYFIT SENIORS Marks, Applicant contends that STAYFIT PLAN
“evokes a health and wellness strategy, declining to make consumers really think

4 For the citations to the record in TTABVUE throughout the decision, the number
preceding “TTABVUE” corresponds to the docket entry number; the number(s) following
“TTABVUE” refer to the page number(s) of that particular docket entry. See, e.g., Turdin v.
Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014).
Serial No. 85925162
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about what STAYFIT alone provides or evoking thoughts of health plans for seniors
as in STAFYFIT SENIORS.” Applicant’s Brief, p. 10; 7 TTABVUE 10. As to the
STAYFIT Marks, Applicant argues that the connotation is distinct from its applied-
for mark insofar as it implies “a device, a diet, a supplement, or a plan of
maintaining fitness and health without suggesting health care services.” Applicant’s
Reply Brief, p. 4; 10 TTABVUE 5.
Applicant’s arguments are unconvincing. First, in comparing Applicant’s mark
with the STAY FIT SENIORS Marks, the additional descriptive wording
SENIORS does little to alter the connotation and commercial impression vis-à-vis
Applicant’s mark. Disclaimed matter that is descriptive of or generic for a party’s
services is typically less significant or less dominant when comparing marks. In re
Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997);
In re Nat’l Data Corp., 24 USPQ at 752. As noted above, the Board has the
discretion to place more weight on a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
Nat’l Data, 224 USPQ at 751. See, e.g., In re Dixie Rests., Inc., 41 USPQ2d at 1533-
34. While we acknowledge the difference in meaning between the descriptive terms
PLAN and SENIORS, we think that prospective consumers encountering
Applicant’s mark will focus primarily on the first portion of each mark which is
nearly identical. As to the additional design element in Registration No. 3574131,
we find that it fails to mitigate the identical sound and nearly identical appearance
of the phrase “stay fit” in the involved marks. The shaded figures in Registration
Serial No. 85925162
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No. 3574131 serve merely as a backdrop for the literal element of the mark which
appears in a darker shade. Applicant is reminded of the often-recited principle that
when a mark consists of a literal portion and a design portion, the literal portion is
more likely to be impressed upon a purchaser’s memory and to be used in calling for
the goods and/or services; therefore, the literal portion is normally accorded greater
weight in determining whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow,
708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et
Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). Furthermore, Applicant’s mark
could be perceived as a variation of the STAYFIT SENIORS mark, relating to a
particular plan or strategy to be employed, or Registrant’s mark could be perceived
as a variation of Applicant’s services targeted to seniors.
Turning now to the registered STAY FIT Marks, the dominant portion of
Applicant’s mark is virtually identical to the sole literal element of each of these
marks. As to the red heart and black and white curved road depicted in the STAY
FIT design mark, we find that in this particular case, the presence of these design
elements fails to mitigate the highly similar sound, appearance, and connotation of
the involved marks. The wording STAY FIT appears prominently in large letters
inside the red heart and at the “end of the road.” Thus, it is likely that prospective
consumers will pay less attention to these design elements which serve more as a
carrier for the wording STAY FIT. Indeed, the inclusion of the heart and road
Serial No. 85925162
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design, if anything, reinforce the suggestive meaning of the mark “stay fit” as
maintaining a healthy heart or cardiovascular system while driving long distances.
Applicant argues that its applied-for mark can co-exist on the Register,
contending that “the first component ‘STAYFIT’ is identical to 29 registered marks,
including four registered marks within the Applicant’s designated class.”
Applicant’s Brief, p. 5; 7 TTABVUE 9. That is to say, Applicant contends that the
common matter to each mark is diluted or weak. Applicant, however, did not submit
any evidence that the phrase “stay fit” is weak when used in connection with
Applicant’s or Registrant’s services either by way of introduction of third-party
registrations or third-party uses. Thus, on the record before us, we cannot find that
“stay fit” is weak or undeserving of protection.
Hence, in comparing Applicant’s mark as a whole to each of the registered
marks, we find that Applicant’s mark is similar in sound, connotation and
commercial impression to each of the cited registered marks. This first du Pont
factor weighs in favor of finding a likelihood of confusion.
The Services and Channels of Trade
We turn now to the second and third du Pont factors, a comparison of Applicant’s
and Registrant’s respective services as they are identified in the application and the
cited registration (see Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014)) as well as the established,
likely-to-continue channels of trade. The examining attorney must provide evidence
showing that the goods and/or services are related to support a finding of likelihood
Serial No. 85925162
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of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285
(TTAB 2009) (finding Office had failed to establish that wine and vodka infused
with caffeine are related goods). Evidence of relatedness may include news articles
and/or evidence from computer databases showing that the relevant goods/services
are used together or used by the same purchasers; advertisements showing that the
relevant goods/services 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/services and the goods/services 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).
Applicant argues that its amendment to the recitation of services obviates any
likelihood of confusion because it “now identifies a corporate fitness plan to promote
health and wellness that is available to corporate subscribers.” Applicant’s Brief, p.
6; 7 TTABVUE 10. Applicant maintains that its services are directed to different
consumers, namely those employed by corporate subscribers, and that its amended
recitation of services does not encompass either truck drivers or senior citizens. In
Applicant’s view, its services fall in a distinct trade channel insofar as the recitation
is limited to “those employees working with a corporate subscriber using the
STAYFIT PLAN services.” Applicant’s Brief, p. 9; 7 TTABVUE 13. Applicant further
argues that “[t]o maintain that all older citizens and truck drivers are covered by
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corporate subscribers, or that all corporate subscribers cover older citizens and
truck drivers, is too inclusive and fails to address the separate trade channels of
both corporate and general business practices.” Id.
The fact that Applicant restricted its recitation of services by deleting many of
the originally identified services altogether and narrowing the scope of its online
content provision services is of no matter. This is because Applicant’s amended
services, when compared to the services identified in the STAY FIT SENIORS
Registrations of “[c]hiropractic consultation services; chiropractic and health care
services; physical therapy; massage therapy,” continue to be related in nature. See
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000). See also Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Specifically, the Examining
Attorney has made of record use-based third-party registrations (see Registration
Nos. 4369805, 4349392, 4367444, and 4383726 from August 28, 2013 Office Action)
which suggest that Applicant’s services and those of Stay Fit Senior’s Class 44
services are of a kind that may 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 at n.6 (TTAB 1988). We find this evidence sufficient to
show a commercial relationship between Applicant’s services and Stay Fit Senior’s
Class 44 services.
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As to the STAY FIT Registrations, Applicant’s amended recitation of services is
sufficiently broad to encompass TA Operating’s online content provision services
directed toward “truck drivers” and “other drivers.” Both Applicant and TA
Operating are providing online content on the same subject matters such as health
and wellness. As worded, the trade channels may indeed overlap. Applicant’s
consist of “a subscription-based website for employees of insurance company
subscribers” and Registrant’s consist of “truck drivers and other drivers.” Some
“employees of insurance company subscribers” may also be “truck drivers” or “other
drivers.” So Applicant’s identified services could encompass Registrant’s truck
drivers who are “employees of insurance company subscribers.” As such, the trade
channels and potential purchasers are partially overlapping. Accordingly, the
second and third du Pont factors also favor a likelihood of confusion.
To the extent that there are any other du Pont factors which may be relevant, we
treat them as neutral.
In conclusion, after considering all of the evidence properly of record and
arguments pertaining to the du Pont likelihood of confusion factors, we find that
there is a likelihood of confusion between Applicant’s applied-for and Registrants’
registered marks.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.