Richard Drengberg and Smart Fitness, LLCv.Othili Park

Trademark Trial and Appeal Board

Mar 14, 2011

No. 91189026 (T.T.A.B. Mar. 14, 2011)

Mailed: March 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Richard Drengberg and Smart Fitness, LLC
v.
Othili Park
_______

Opposition No. 91189026
to Application No. 77495101
filed on June 10, 2008
_______

Stephen L. Anderson of Anderson & Associates for Richard
Drengberg and Smart Fitness, LLC.

Robert Salter of Salter & Michaelson for Othili Park.
_______

Before Quinn, Walters and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Richard Drengberg and Smart Fitness, LLC (“opposers”)
filed their opposition to the application of Othili Park to
register the standard character mark SMART BODY FITNESS for
“Exercise balls; Exercise bars; Exercise equipment, namely,
chest expanders; Exercise equipment, namely, chest pulls;
Exercise equipment, namely, shoulder stretcher using
resistance cables; Manually-operated exercise equipment;

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91189026
2
Personal exercise mats; Spring bars for exercising; Stress
relief balls for hand exercise,” in International Class 28.1
The application includes a disclaimer of “BODY FITNESS”
apart from the mark as a whole.
As a ground for opposition, opposers assert that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer Smart Fitness’s previously used and
registered mark SMART FITNESS for “health club services,
health and fitness training for individuals”2 as to be
likely to cause confusion, under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d).
As an additional ground for opposition, opposers assert
that applicant made no use of the mark SMART BODY FITNESS as
a mark in commerce for some or all of the goods listed in
the application prior to the filing date of the application.
Trademark Act Section 1(a), 15 U.S.C. §1051(a).3

1 Application Serial No. 77495101, filed June 10, 2008, based upon use
of the mark in commerce, alleging dates of first use and first use in
commerce as of June 3, 2008.

2 Registration No. 2816630, issued February 24, 2004, in International
Class 41. Recorded assignments include the assignment from Smart
Fitness, LLC of Texas to Richard Drengberg on April 1, 2006; and the
assignment from Richard Drengberg and Smart Fitness, LLC of Texas to
Smart Fitness, LLC of California on July 25, 2008. The current owner of
record of the registration is Smart Fitness, LLC of California. The
registration includes a disclaimer of “FITNESS” apart from the mark as a
whole. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]

3 Opposer also asserted a claim of fraud, but acknowledged in its brief
that it could not establish its claim and opposer did not pursue it. We
consider opposer’s claim of fraud to be waived and we have given it no
consideration.

Opposition No. 91189026
3
Applicant, in its answer, denied the salient
allegations of the claims.
The Record
The record, by operation of the Trademark Rules,
consists of the pleadings and the file of the involved
application. Opposers submitted by notices of reliance a
copy of pleaded Registration No. 2816639 showing its status
and title and portions of that registration record; a copy
of the record of opposer’s trademark application serial no.
76499372, a copy of the assignment documents recorded at the
USPTO in connection with opposers’ pleaded registration,
portions of third-party application files, and copies of
third-party registrations.4 Opposers also submitted the
testimony deposition of Richard Drengberg, opposer and
president of opposer Smart Fitness LLC of California, with
accompanying exhibits.
Applicant submitted the testimony deposition of Benny
Park, applicant’s husband and participant in applicant’s
business, with accompanying exhibits. Applicant submitted a
duplicate of the testimony exhibits by notice of reliance.
Both parties filed briefs on the case.

4 Opposer submitted excerpts from the subject application file, which is
already of record by operation of the Trademark Rules.

Opposition No. 91189026
4
Procedural Issue
In their main brief, opposers object to consideration
of all documents submitted by applicant by notice of
reliance on the ground that they are improper for submission
by notice of reliance. In their reply brief, opposers
limited their objection to applicant’s exhibits 1, 3, 9, 10,
and 12-21.
Applicant’s exhibit no. 1, applicant’s notice of taking
testimony, is not properly of record by notice of reliance;
nor did applicant’s witness, Mr. Park, testify about it or
otherwise authenticate it. Exhibit no. 1 is excluded.
Applicant’s exhibit no. 3, applicant’s letter
responding to opposers’ cease and desist letter, is properly
of record as a deposition exhibit to Mr. Park’s testimony,
during which he provided sufficient foundation and
authentication.
Applicant’s exhibit nos. 9-10 and 12-21, portions of
various application and registration records and applicant’s
business card, are properly of record as deposition exhibits
to Mr. Park’s testimony, during which he provided sufficient
foundation and authentication. We have considered these
documents only for what they state on their face and any
statements by applicant’s witness as to, for example, the
significance of actions taken by the examining attorney in a
Opposition No. 91189026
5
particular case, is mere conjecture and has not been
considered.
We have not considered any of the duplicate filings by
notice of reliance. Opposers’ objections thereto are moot.
Factual Findings
Opposer Richard Drengberg began using the mark SMART
FITNESS in connection with his health and fitness personal
training business in February 2003 in Texas. He offered
these services, at least in part, at third-party health and
fitness clubs. He used the mark on business cards and
direct mail advertisements for his services, on the
letterhead of written individualized training programs, and
on shirts worn while rendering the services. Prior to
applying to register the mark, he transferred ownership of
the mark to Smart Fitness, LLC, a Texas limited liability
company, in which name the application was filed and the
registration issued. Mr. Drengberg subsequently moved
himself and his personal training business to California;
Smart Fitness, LLC of Texas assigned the mark and
registration to Mr. Drengberg on April 1, 2006; and he
dissolved the Texas company, of which he had been an officer
and principal. He used the mark in his individual capacity
in connection with the same fitness and health personal
training services in California until he assigned the mark
and registration, on July 25, 2008, to Smart Fitness, LLC, a
Opposition No. 91189026
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California limited liability company. He has always been an
officer and principal of the California limited liability
company.5
The health and fitness personal training services of
Opposer Smart Fitness, LLC of California have been rendered
continuously by opposer Richard Drengberg and various
employees, all of whom wear uniform shirts bearing the mark.
Opposer’s services are rendered, at least in part, at third-
party health and fitness clubs. In the approximately five
years prior to trial, opposer Smart Fitness, LLC of
California has used the mark also on dietary and nutritional
supplements, bottled water, snack food, clothing, including
sweatshirts and T-shirts, gym bags, coolers and fitness
machines and equipment.
Regarding applicant, Mr. Benny Park, applicant’s
witness, identified himself, his wife, Othili Park, and
their son, Eugene Park, as the principals in what is
essentially a family business of manufacturing overseas and
selling in the United States hand-held general fitness
products identified under the mark. The business is
incorporated as PosFit, Inc., and Eugene Park is its

5 We note that the assignment to Smart Fitness, LLC of California lists
both Richard Drengberg and Smart Fitness, LLC of Texas as assignors,
although Mr. Drengberg was the sole assignee listed in the prior
assignment. We consider the addition of the Texas company as an
assignor in the second recorded assignment to be merely additional
verbiage, since Mr. Drengberg was the only owner of record at the time
of the second assignment.

Opposition No. 91189026
7
president. PosFit, Inc. is the corporation that operates
applicant’s business. Ms. Park, applicant, is characterized
by Mr. Benny Park as the “inventor,” although it is unclear
whether she “invented” the business plan or the products
manufactured and sold under the mark SMART BODY FITNESS.
Ms. Park was the president of PosFit, Inc. in 2008 (See Park
Dep. pp. 35 - 37); and Mr. Benny Park identified Ms. Park as
“the owner” of the mark (Id., p. 38).
Applicant sells the identified products to sporting
goods retailers in the United States. For buyers who do not
require commercial packaging, applicant affixes a computer-
generated label to the products. Applicant uses commercial,
professionally designed packaging bearing the mark for
products sold primarily to large retailers, who require such
packaging.
Applicant began selling products identified by the mark
SMART BODY FITNESS on June 3, 2008, applicant’s claimed date
of first use; however, the record does not indicate
specifically what products identified by the mark were sold
as of that date.
The record includes copies submitted by opposers of
eleven use-based third-party registrations for marks that

Opposition No. 91189026
8
identify both health club and/or fitness services and
exercise equipment.6
Analysis
Standing
Because opposers have properly made the pleaded
registration of record, we find that opposer Smart Fitness,
LLC of California, the owner of the mark and registration,
has established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
The evidence establishes that Mr. Drengberg began a
personal training business and subsequently formed a Texas
limited liability company that owned the mark and
registration. That company assigned the mark to Mr.
Drengberg, who used the mark in connection with the
identified services as an individual for several years, and
then, he formed a California limited liability company to
which he transferred ownership of his business and his

6 Third-party registrations that do not have claims of use in commerce
are not probative of U.S. consumer perception and have not been
considered. Third-party applications submitted by opposer are proof
only of their filing and are not probative herein. Similarly, other
applications and registrations owned by applicant are not probative
herein. We are not bound by and we draw no conclusions from actions
taken by the examining attorneys in either the third-party applications
or in applicant’s other applications and registrations.

Opposition No. 91189026
9
registered mark. Mr. Drengberg has remained the principal
in the business, rendering the identified health and fitness
personal training services, along with employees of the
business, under the mark. There appears to be little actual
distinction between Mr. Drengberg and his limited liability
company. It is Mr. Drengberg, and others at his direction,
who are actually rendering the services identified by the
mark. However, because Mr. Drengberg assigned the
registration to his company, he does not use the mark in his
individual capacity. His use and the use by any employees
inures to the benefit of the company, which is the owner of
the mark and registration. As such, Mr. Drengberg cannot
establish standing as an individual plaintiff.7 Because
standing is a threshold question with respect to both the
claims of likelihood of confusion and non-use by applicant
as of the filing date, these claims must fail as to
individual opposer Richard Drengberg.
Thus, we turn to the questions of priority and
likelihood of confusion and the alleged non-use by applicant
as of the filing date with respect to opposer Smart Fitness,
LLC of California (“Smart Fitness” or “opposer”).

7 Additionally, any use that Mr. Drengberg made of the mark in his
individual capacity prior to transfer of the registration to the company
also inures to the current owner and assignee of the registered mark,
Smart Fitness, LLC of California.
Opposition No. 91189026
10
Priority
In view of opposer Smart Fitness, LLC of California’s
ownership of a valid and subsisting registration, there is
no issue regarding this opposer’s priority as to the
identified services. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposer has established its common law use of the mark
in connection with exercise equipment since at least five
years prior to trial, which precedes both the filing date of
the application and the June 3, 2008, date of first use to
which applicant’s witness testified. Therefore, opposer has
also established its priority of use with respect to these
goods.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
Opposition No. 91189026
11
(Fed. Cir. 1997). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and/or services
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). See also In re Azteca Restaurant Enterprises, Inc.,
50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The
relevant du Pont factors in the proceeding now before us are
discussed below.
The Goods and Services
It is well established that the goods and/or services
of the parties need not be similar 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 goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
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
Opposition No. 91189026
12
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 goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services identified
in opposer’s pleaded registration(s). Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992.
Opposer Smart Fitness has established that it has
registered and used its mark in connection with health and
fitness personal training services and used its mark in
connection with goods including fitness equipment since
prior to the filing date of the subject application. While
the record does not specify the nature of the fitness
equipment in connection with which opposer has used the
mark, given the relatively broad range of exercise equipment
identified in the application herein, we find that such
goods are related because they are all likely to be
considered for use as part of an individual exercise
program, either at home or at a gym.
Opposition No. 91189026
13
Moreover, we find that opposer’s health and fitness
training services and applicant’s goods are related.8
Opposer Smart Fitness uses the mark in connection with both
fitness training services and exercise equipment, which
indicates that at least those consumers familiar with
opposer Smart Fitness are accustomed to seeing such goods
and services identified by the same mark. The third-party
registrations for marks identifying both parties’ goods and
services suggest that the goods and services are of a type
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
The du Pont factor pertaining to the relationship of
the goods and services weighs in opposer’s favor.
Trade Channels, Purchasers and Conditions of Sale
There is no evidence as to the trade channels and
purchasers of opposer’s goods; however, applicant’s
identified goods contain no limitations on the trade
channels or purchasers. As found above, opposer’s and
applicant’s goods are related and, thus, we find that the
channels of trade and purchasers are at least overlapping.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc.,

8 Because we find a relationship between these services and applicant’s
goods, it is unnecessary to consider whether a relationship also exists
between opposer’s identified health club services in the same
International Class and applicant’s goods.

Opposition No. 91189026
14
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). To the extent
that the purchasers are gyms and health clubs, such
purchasers are likely to be knowledgeable about the
equipment they purchase. However, there is no evidence
about this in the record, and such knowledgeable purchasers
are not immune from confusion when the marks are as similar
as these marks and the goods with which they are used are as
closely related as the goods herein. See In re General
Electric Company, 180 USPQ 542 (TTAB 1973). Thus, we do not
find the fact that some purchasers may be knowledgeable to
be a mitigating factor. Moreover, purchasers and ultimate
users include the general public; and these ordinary
consumers would use nothing more than ordinary care in
making their purchasing decisions.
By definition, opposer’s health and fitness training
services for individuals are rendered to the general public
and, as stated by Mr. Drengberg, the services are rendered,
at least in part, in health clubs and gyms; and the parties’
goods and services end up with the same consumers. Thus,
the trade channels and class of purchasers of the respective
goods and services are overlapping.
These du Pont factors also weigh in favor of opposer.
The Marks
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
Opposition No. 91189026
15
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692. The test 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 their entireties that confusion as to the source
of the 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. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). We add that,
while we must base our determination on a comparison of the
marks in their entireties, we are guided, equally, by the
well established principle that, 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.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The registered mark is SMART FITNESS, which includes a
disclaimer of FITNESS. Applicant’s mark is SMART BODY
FITNESS, which includes a disclaimer of BODY FITNESS. We
take judicial notice of the relevant definitions in Merriam-
Opposition No. 91189026
16
Webster’s Collegiate Dictionary (11th ed. 2003) of “fit” as
“adjective, sound physically and mentally: Healthy” and of
“fitness” as “noun, the quality or state of being fit.”
There is no question that both FITNESS and BODY FITNESS are
highly descriptive in connection with both health and
fitness training and exercise equipment because the goal of
undertaking the training services and using the exercise
equipment is a fit body. While the term SMART may have
several slightly suggestive connotations in connection with
the respective goods and services, the record does not
address this contention. We find that SMART is the dominant
portion of opposer’s mark SMART FITNESS and that applicant’s
mark encompasses opposer’s mark in its entirety with the
addition only of the highly descriptive term BODY. It is
immaterial that this descriptive term divides SMART from
FITNESS. Considering the marks in their entireties, the
appearance of the respective marks is similar, the
connotations are essentially the same, and the commercial
impressions of the respective marks are substantially
similar. We are not persuaded otherwise by applicant’s
arguments to the contrary or by its ownership of other
registrations that include the word SMART in the registered
marks.
This du Pont factor also weighs in opposer Smart
Fitness, LLC’s favor.
Opposition No. 91189026
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Likelihood of Confusion Conclusion
We find that the du Pont factors weigh strongly in
favor of a finding of likelihood of confusion with the mark
of opposer Smart Fitness, LLC. Consumers familiar with
opposer’s goods and services offered under the mark SMART
FITNESS would be likely to believe, upon encountering
applicant’s mark SMART BODY FITNESS for the exercise
equipment specified in the application, that the goods and
services originate from or are associated with or sponsored
by the same entity.
Applicant’s Use of Mark
Because opposer Richard Drengberg has not established
standing, we do not discuss this claim with respect to him.
In the notice of opposition, opposer Smart Fitness alleges
that applicant did not use the mark in connection with of
the identified goods as of the filing date of the
application. Opposer did not specify which goods and,
although applicant did not object, opposer did not clarify
which goods this claim pertains to during trial or in their
brief. While the record is unclear as to whether applicant
had used the mark on all goods as of the filing date, it is
opposer’s burden to prove such non-use and it has failed to
do so. Therefore, the opposition is dismissed as to this
claim.
Opposition No. 91189026
18
For the first time in the brief, opposer argues that
applicant is not the proper owner of the mark in the
application, suggesting that the corporation PosFit, Inc. is
the correct owner and, thus, the application is void ab
initio. We do not consider this claim as it was not in the
pleading, applicant did not consent to its being tried, nor
does the record reflect that the issue was in fact tried.
Moreover, even if we were to consider this claim, opposer
has only established that PosFit, Inc. uses the mark, not
that Othili Park is not the owner of the mark or that the
corporation is the proper owner of the mark.
Decision: The opposition is sustained on the ground of
likelihood of confusion as to opposer Smart Fitness, LLC.
The opposition is dismissed on the ground of likelihood of
confusion as to opposer Richard Drengberg and on the ground
of non-use as to both opposers. Registration to applicant
is refused.