Tom Chi

Trademark Trial and Appeal Board

Nov 13, 2015

No. 85785715 (T.T.A.B. Nov. 13, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tom Chi
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Serial No. 85785715
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Edwin D. Schindler and Michael I. Kroll
for Tom Chi.
Kelly Trusilo, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Kuhlke, Mermelstein and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Tom Chi (“Applicant”) seeks registration on the Principal Register of the mark
EXTREME HEALTH MAKEOVER (in standard characters) for the following
services in International Class 41:
Entertainment, namely, production of television shows;
Film production; Television program syndication;
Television show production; Video tape film production;
Videotape production.1

1 Application Serial No. 85785715 was filed on November 21, 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.
Serial No. 85785715
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In response to a requirement from the Examining Attorney, Applicant
disclaimed the terms “HEALTH MAKEOVER.”
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), on the ground
that Applicant’s mark, as used in connection with Applicant’s services, so resembles
the mark EXTREME MAKEOVER (in standard characters, MAKEOVER
disclaimed) registered on the Principal Register for
entertainment services, namely, a series of television
programs in the fields of plastic surgery, fitness, exercise
and fashion,2 and
entertainment in the nature of a reality television series;
entertainment services, namely, a series of television
programs in the fields of general surgery, plastic surgery,
dentistry, ophthalmology, beauty, style, fashion, fitness,
exercise, grooming, or personal goal and wish fulfillment,
or combination thereof; entertainment services, namely, a
series of television programs in the fields of architecture,
carpentry, construction, remodeling, design, landscaping,
or wish fulfillment or combination thereof; entertainment
services, namely, a series of television programs about the
making of television programs; entertainment services,
namely, a series of television programs in the fields of
wish fulfillment,3
and the mark EXTREME MAKEOVER WEIGHT LOSS EDITION (in standard
characters, MAKEOVER WEIGHT LOSS EDITION disclaimed) registered on the
Principal Register for

2 Registration No. 3125624, issued on August 8, 2006, Sections 8 & 15 declaration accepted
and acknowledged.
3 Registration No. 3534134, issued on November 18, 2008, Sections 8 & 15 declaration
accepted and acknowledged.
Serial No. 85785715
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entertainment in the nature of a reality television series;
entertainment services, namely, a series of television
programs in the fields of personal health, diet, nutrition,
fitness, exercise, or personal goal and wish fulfillment or
combination thereof,4
as to be likely to cause confusion, mistake or deception. The listed owner in all of
the cited registrations is American Broadcasting Companies, Inc.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in 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 Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity or Dissimilarity of the Services and Channels of Trade
With regard to the services and channels of trade, we must make our
determinations under these factors based on the goods or services as they are
identified in the registration and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.

4 Registration No. 4087396, issued on January 17, 2012.

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2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The goods or services do not have
to be identical or even competitive in order to find that there is a likelihood of
confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I.
Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). “[E]ven if the goods [or
services] in question are different from, and thus not related to, one another in kind,
the same goods [or services] can be related in the mind of the consuming public as to
the origin of the goods [or services]. It is this sense of relatedness that matters in
the likelihood of confusion analysis.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000). See also On-line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Shell Oil Co.,
992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 1403–04, 186 USPQ 476, 480 (CCPA 1975);
Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347 (TTAB 2014); In
re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007).
The Examining Attorney argues that:
[A]pplicant’s services, namely, the production of
television, video and film programs, encompass the
creation of registrant’s television programs and series. In
this manner, registrant’s television programs and series
originate or are created by applicant’s services of
production of television shows.
6 TTABVUE 8.
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Applicant did not present argument or evidence on this factor, other than to note
that:
The services in Trademark Reg. Nos. 3,125,624;
3,534,134; and 4,087,396 are essentially for a series of
television programs pertaining to fitness, exercise, fashion
and plastic surgery, while Applicant’s services concern
television programming.
4 TTABVUE 3-4.
Registrant’s “series of television programs” pertains more directly to the content
or the television programming itself, whereas Applicant’s “production of television
shows” pertains more specifically to the production work behind the television
program. While Applicant’s and Registrant’s services may cover slightly different
positions on the assembly line of providing television programming, they are highly
related and the ordinary channels of trade for their respective services overlap.
In view of the above, the factors of the relatedness of the services and channels
of trade favor a finding of likelihood of confusion.
Similarity or Dissimilarity of the Marks
We consider the marks EXTREME HEALTH MAKEOVER on the one hand, and
EXTREME MAKEOVER and EXTREME MAKEOVER WEIGHT LOSS EDITION
on the other, and compare them “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
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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).
The marks EXTREME HEALTH MAKEOVER and EXTREME MAKEOVER are
nearly identical in appearance, sound, connotation and overall commercial
impression. They are presented in the exact same structure, the only difference
being that Applicant’s mark includes the word HEALTH between EXTREME and
MAKEOVER, which would be perceived simply as a variant of Registrant’s mark.
This perception is further supported by Registrant’s other mark EXTREME
MAKEOVER WEIGHT LOSS EDITION, which is a variant of Registrant’s
EXTREME MAKEOVER mark.
Moreover, in each instance the additional wording, HEALTH in Applicant’s
mark and WEIGHT LOSS EDITION in one of Registrant’s marks, has greatly
reduced source-identifying capacity, because it is descriptive of the subject matter of
the entertainment services. Indeed, all of these terms have been disclaimed. See In
re Dixie Rests., Inc., 41 USPQ2d at 1533-34. In addition, the word MAKEOVER is
disclaimed in all of the marks, leaving the identical common term EXTREME with
the most source-identifying significance in Applicant’s and Registrant’s marks. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n
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
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consideration of the marks in their entireties.”). The prominence of the word
EXTREME is further enhanced by its placement at the beginning of Applicant’s and
Registrant’s marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692; Presto Prods., Inc. v Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988).
Applicant argues without evidentiary support that the term EXTREME
MAKEOVER “is generally understood as a common societal expression expressing a
type of radical change.” 4 TTABVUE 5. Applicant concludes that the weak nature of
the marks justifies “only relatively narrow scopes of protection, rather than being
accorded the same scopes of protection as would a fanciful or arbitrary trademark
term.” Id. It is Applicant’s position that its mark “prominently incorporates the
term ‘HEALTH’ between ‘EXTREME’ and ‘MAKEOVER’ narrowing and
particularizing the meaning of Applicant’s service mark with the ‘HEALTH’ being
‘sandwiched’ by the superlative ‘EXTREME’ and the descriptive, if not generic, term
‘MAKEOVER.’” 4 TTABVUE 6.
While there is evidence in the record pointing to the commercial strength of
Registrant’s mark EXTREME MAKEOVER for a series of television programs,
there is no evidence in the record to establish that the term EXTREME is weak in
this field. Even assuming the term is inherently weak based on its definition to
suggest that the subject matter “exceed[s] the bounds of moderation” or is “of a
Serial No. 85785715
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character or kind farthest removed from the ordinary or average,”5 the scope of
protection for Registrant’s marks, at minimum, extends to Applicant’s highly
similar mark for closely related services. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
We find the sound, appearance, meaning and overall commercial impression of
the marks EXTREME MAKEOVER and EXTREME MAKEOVER WEIGHT LOSS
EDITION, and EXTREME HEALTH MAKEOVER to be highly similar. We note in
particular, looking at the marks in their entireties, the similar structure where the
word EXTREME modifies the word MAKEOVER, which creates a very similar
connotation and commercial impression of the marks. The additional wording,
WEIGHT LOSS EDITION and HEALTH, simply create subcategories within the
overall concept of an EXTREME MAKEOVER.
In view thereof, this du Pont factor weighs in favor of a finding of likelihood of
confusion.
In balancing the relevant du Pont factors, we find that because the marks are
similar and the services and channels of trade overlap, confusion is likely between
Applicant’s mark EXTREME HEALTH MAKEOVER and Registrant’s marks
EXTREME MAKEOVER and EXTREME MAKEOVER WEIGHT LOSS EDITION.

5 Dictionary.com (www.dictionary.reference.com) based on the RANDOM HOUSE
DICTIONARY (2015). The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in
printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).

Serial No. 85785715
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Decision: The refusal to register Applicant’s mark EXTREME HEALTH
MAKEOVER is affirmed.