ICON Health & Fitness opposed Procheer’s application to register the mark shown immediately below, for “providing fitness instruction services in the field of dance, and physical fitness,” alleging a likelihood of confusion with its registered mark IFIT for, inter alia, physical fitness instruction. The services overlap, but what about the marks? Are they confusable? ICON Health & Fitness, Inc. v. Procheer Fitness and Dance, Opposition No. 91230219 (February 1, 2019) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer ICON claimed that its mark is famous, pointing to sales figures for its fitness machines and other products, the number of apps that have been downloaded, the number of visits to its website and blog, its advertising in various media, the availability of its products at major retailers such as Walmart and Amazon.com, its trade show participation, various awards it has received, and use of the IFIT mark since the 1990s. The Board found this evidence “impressive,” but much of it concerned opposer’s goods and not fitness instruction services. Nonetheless, the Board found that “Opposer has established that its mark is very strong in the field of fitness instruction due to its impressive showing concerning its many fitness-related products.”

Turning to the marks, the Board first noted that Opposer’s mark is in standard character form, and is thus not limited to any particular font, style, color, or size of display. In applicant’s mark, the large wording SEXIFIT is the dominant part of the mark both because it is the wording in a word+design mark that consumers will use to call for the services, and because the term SEXIFIT is substantially larger than the other wording in the mark.

Of course, the first letter “I” is in the shape of a slim barbell; consumers would likely view this as part of the term SEXIFIT and not as an independent design element separating the wording SEX and FIT.

The Board found that the marks are similar in commercial impression because of applicant’s inclusion of the entirety of opposer’s mark in the applied-for mark.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

The services, trade channels and classes of consumers overlap. Opposer’s mark is a very strong mark and there is no evidence of third-parties using similar marks. Opposer’s and Applicant’s marks are similar, and consumers are likely to exercise a relatively low degree of care when making purchasing decisions for the involved fitness instruction services.

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TTABlog comment: Well, what do you think? It seems to me that applicant’s mark would be perceived as SEXI-FIT, not SEX-IFIT.

Text Copyright John L. Welch 2019.