Once an Examining Attorney refuses a trademark application on the grounds of likelihood of confusion (2(d) grounds), it is unlikely the Trademark Trial and Appeal Board (“TTAB” or the “Board”) will reverse the refusal. Statistics demonstrate that approximately nine out of ten times, the Board will affirm a likelihood of confusion refusal. However, the Board reversed the refusal in the case that will be discussed in this blog, and you can decide if you agree with the Board or the Examining Attorney on this matter. The Applicant applied for the mark FIT IN YOUR GENES in standard characters for among other services, a weight loss program. The Examiner cited the registration FITGENES and Design (the design consisting of a letter V upright and one upside intersecting with the upright letter V) also for weight loss services in part, as grounds for a likelihood of confusion refusal. See In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential].
The Applicant argued that the design element in the mark, the intersected letter Vs, was sufficient to distinguish the two marks. The Board disagreed with this point. It is well settled law that when evaluating a standard character mark and a composite mark, generally speaking, the word element will be considered the dominant element of the mark, and the indicator of source. The rationale for this general rule is that the word element of the mark is the portion of the trademark that consumers will use to refer to the services. Thus, if the literal elements of two marks are similar enough to create a likelihood of confusion, adding a design element to one mark, will not generally distinguish the trademarks.
Regarding the literal portions of the marks, on the surface it appears that there are similarities between the marks that may cause confusion. However, the Board found otherwise. In comparing the trademarks, the following factors are considered, appearance, sound, connotation and commercial impression. Trademark law aims to protect consumers by avoiding confusion in the marketplace upon encountering two similar trademarks for related goods or services. In this case, both marks include the terms, “fit” and “genes” and therefore, the appearance of the two marks is similar. But the connotations and the commercial impressions are different. The Board took judicial notice of the definition of the term “fit” from the Merriam-Webster Online Dictionary, both as a verb and as an adjective. It also noted the definition of the term “gene”.
When the Board viewed the marks in their entireties, it concluded that in the Applicant’s mark, FIT IN YOUR GENES, was conveying a message to consumers to physically fit (using “fit” as a verb and a play on words) in their jeans. Therefore, when this phrase FIT IN YOUR GENES is used in conjunction with weight loss services, it implies the goal of the weight loss program (to fit in your jeans and lose weight). The Board determined that the Registrant used its mark FITGENES with its genetic testing services to convey a different message. The Board held that “fit” was used as an adjective to mean “physically healthy and strong”. In addition, the Registrant’s mark implies genetic characteristics of strong health. In fact, the phrase FITGENES is making reference to the Registrant’s services of genetic testing and medical advisory services in connection with genetic profiling, including weight management. This case can be compared to Approved Pharm. Corp. v. P. Leiner Nutritional Prods. Inc., 5 USPQ2d 1219 (TTAB 1987), where the Board found the marks HEALTHY LIFE and HEALTH FOR LIFE for goods including vitamins and dietary food supplements, to have different meanings and in fact to present different commercial impressions.
It should be noted that the Board determined that the parties’ services (weight loss) did overlap in part and thus, were legally identical in part. This conclusion allowed the Board to presume that the parties’ services travel in the same channels of trade and to the same classes of purchasers. The relatedness of the goods and the trade channels weighed in favor of finding confusion. However, the other du Pont factors weighed in favor of allowing the mark to register. The Board held that the first du Pont factor, dissimilarities of the marks, was dispositive in this case, and reversed the refusal. See our webpage entitled, Overcoming Likelihood of Confusion Refusals, for strategies to overcome these types of refusals. Likelihood of confusion evaluations can be quite complex, if you have questions concerning an Office Action or other trademark questions, please feel free to contact our office for a courtesy consultation.