Victor Quintana

Trademark Trial and Appeal Board

Aug 13, 2013

No. 77916753 (T.T.A.B. Aug. 13, 2013)

Mailed:
August 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Victor Quintana
________

Serial No. 77916753
_______

Luke Brean of Breanlaw LLC for Victor Quintana.

Elissa Garber Kon, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Holtzman and Masiello, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Victor Quintana, an individual, has appealed from the
final refusal of the trademark examining attorney to
register EQUILIBRIO WELLNESS and design, as shown below,
for “physical fitness training services; providing fitness
and exercise studio services, namely, pilates instruction
and training” in Class 41, and “food nutrition
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Ser No. 77916753
3
services in Classes 41, 44 and 45 that, as used in
connection with applicant’s services, it is likely to cause
confusion or mistake or is likely to deceive.2
Class 41: providing information, counseling and
consulting services in the field of exercise, and
physical fitness via a global computer network,
mobile phones, and wireless handheld computers.

Class 44: Providing information, counseling and
consulting services in the fields of health,
wellness, diet, nutrition, stress management,
sleep management, medication, and vital sign
monitoring via a global computer network, mobile
phones, and wireless handheld computers.

Class 45: Personal lifestyle consulting
services; providing information, counseling and
consulting services in the field of personal
lifestyle management via a global computer
network, mobile phones, and wireless handheld
computers.

We affirm the refusal of registration for both classes
of applicant’s application.
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). In any likelihood of confusion analysis, two

2 Registration No. 3836247, issued August 17, 2010. The
registration includes the statement, “The English translation of
the word ‘EQUILIBRIO’ in the mark is balance.”
Ser No. 77916753
4
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the du Pont factor of “[t]he
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.” 177 USPQ at 567. It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood 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 a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). In this case, both marks
include the term EQUILIBRIO which, according to the
translations in the application and registration, means
“balance,” and which, on this record, appears to be
arbitrary. Although applicant’s mark also contains
additional elements, we find that they are not sufficient
to distinguish the marks. With respect to the design
Ser No. 77916753
5
element, although it is a prominent visual element, there
is no evidence that consumers would understand the symbol
as a stylized depiction of the Mayan God Hunab Ku, such
that this would be understood as the connotation or
commercial impression of the mark. On the contrary,
applicant’s specimens show that it is the words EQUILIBRIO
WELLNESS per se that are emphasized in headings in the
text. Further, the examining attorney has submitted
evidence from the YELP website, www.yelp.com, consisting of
reviews of applicant’s services, in which the services are
identified as being offered under just the words
“Equilibrio Wellness.” In view of the foregoing, it is
appropriate to accord greater weight to the word portion of
applicant’s mark. See In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987) (if a mark comprises both a
word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services).
As for the word WELLNESS, it is descriptive of
applicant’s wellness program services, as applicant has
acknowledged by his disclaimer of this word in response to
the examining attorney’s requirement. Therefore, it has
little or no source-identifying significance. Applicant
has argued that this word adds phonetic and conceptual
Ser No. 77916753
6
differences to applicant’s mark, but we disagree. Although
it clearly is an additional word, it does not affect the
pronunciation of the word EQUILIBRIO, nor does it change
the meaning of EQUILIBRIO. Cf. Lever Bros. Co. v.
Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972), in
which the addition of CLEAR to ALL resulted in marks (ALL
and ALL CLEAR) having different meanings.
Accordingly, having considered the marks in their
entireties, but giving greater weight to the arbitrary term
EQUILIBRIO in applicant’s mark, which term constitutes the
entirety of the cited mark, we find that the marks are
similar, and that this du Pont factor favors a finding of
likelihood of confusion.
This brings us to the du Pont factor of the
“similarity or dissimilarity and nature of the goods or
services as described in an application or registration….”
177 USPQ2d at 567. With respect to applicant’s services as
identified in Class 41 the examining attorney has submitted
evidence of third-party registrations showing that third
parties have adopted a single mark for physical fitness
training services and for the providing of information,
counseling and consulting services in the field of exercise
and physical fitness online (the services identified in the
cited registration). See for example, Registration No.
Ser No. 77916753
7
4102946 for, inter alia, personal fitness training services
and consultancy, providing fitness studio services, namely,
providing exercise classes, providing a web site featuring
information on exercise and fitness, and providing an on-
line computer database featuring information regarding
exercise and fitness; Registration No. 4046563 for, inter
alia, consulting services in the fields of fitness and
exercise, personal fitness training services and
consultancy, and providing a website featuring information
on exercise and fitness; Registration No. 4092156 for,
inter alia, consulting services in the fields of physical
fitness and exercise, personal fitness training services
and consultancy, and providing a web site featuring
information on fitness and exercise; and Registration No.
4102052 for, inter alia, consulting services in the fields
of fitness and exercise, personal fitness training services
and consultancy, and providing an interactive website
featuring information and links relating to fitness.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or 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 addition, although applicant has argued that his
Ser No. 77916753
8
services and those identified in the cited registration are
different because his services are rendered in-person while
the registrant’s are rendered online and through mobile
phones and wireless hand-held computers, applicant has
acknowledged that such services may emanate from a single
source: “While some gyms and similar service business may
provide web applications to assist in tracking performance
over time….” Response filed August 22, 2012, p. 7 of
attachment.
As for the “food nutrition consultation” and “health
care services, namely, wellness programs” identified in
Class 44 of applicant’s application, these would encompass
the “providing … consulting services in the fields of …
wellness, diet, nutrition … via a global computer network,
mobile phones and wireless handheld computers” identified
in the cited registration.
Applicant argues that his services and those of the
registrant are non-competitive and non-related because
consumers would be well aware of the difference between
information provided through the Internet, and in-person
consultation: “consumers are well aware of the difference
and are unlikely to view the two services as related in any
meaningful way.” Brief, unnumbered p. 4. Applicant also
asserts that the examining attorney “has failed to
Ser No. 77916753
9
establish that consumers searching for physical fitness
training services, food and nutrition services, and pilates
instruction, are likely to view services provided by an in-
person trainer and consultant to be equivalent to an
online-only service provided via a global computer network,
mobile phones, and wireless handheld computers.” Id.
First, applicant’s services are broadly described such
that they could be rendered online, and not solely in-
person. Second, and more importantly, the issue is not
whether consumers could tell the differences in the
services, or would view them as being equivalent or
competitive. As often stated, it is not necessary that the
goods or services be identical or even competitive in
nature in order to support a finding of likelihood of
confusion, it being sufficient that the goods or services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990).
Ser No. 77916753
10
We find that this du Pont factor favors a finding of
likelihood of confusion.
The examining attorney has pointed out that neither
applicant’s identification of services, nor those in the
cited registration, contain any limitation on channels of
trade. The services as identified are of a type that would
be offered to and obtained by the general public. Thus,
the du Pont factor of the channels of trade would also
favor a finding of likelihood of confusion.
Neither the examining attorney nor applicant has
submitted evidence or argument on any other du Pont
factors. To the extent that any are relevant, we treat
them as neutral.
In view of the foregoing discussion, we find that
applicant’s use of his mark for his identified services is
likely to cause confusion with the mark in Registration No.
3836247.
Decision: The refusal of registration is affirmed.