In re Fitness Market Inc.

Transcription

1 This Opinion is Not a Precedent of the TTAB UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board In re Fitness Market Inc. Serial No Joshua T. Rose, of Hummel Coan Miller Sage & Rose LLC, for Fitness Market Inc. Shaila E. Lewis, Trademark Examining Attorney, Law Office 114, K. Margaret Le, Managing Attorney. Before Cataldo, Mermelstein and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Mailed: May 12, 2016 Fitness Market Inc. ( Applicant ) seeks registration on the Principal Register of the mark FITNESS MARKET (in standard characters) for Retail store services featuring fitness machines and equipment, namely weights, treadmills, rowing machines, stair stepping machines, resistance machines, stationary cycles in International Class Application Serial No was filed on June 16, 2014, based upon Applicant s allegation of first use of the mark and first use in commerce on July 20, 2011, under Section 1(a) of the Trademark Act.

2 The Trademark Examining Attorney has refused registration of Applicant s mark under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), on the ground that the applied-for mark merely describes a feature or characteristic of Applicant s services. After the Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Applicable Law Trademark Act Section 2(e)(1) prohibits registration of a mark which is merely descriptive of the applicant s goods or services. A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer database management software); In re Petroglyph Games, Inc., 91 USPQ2d

3 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term identifies, the term is suggestive rather than merely descriptive. In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). II. Analysis Applicant seeks to register the mark FITNESS MARKET for retail store services featuring fitness machines and equipment, namely weights, treadmills, rowing machines, stair stepping machines, resistance machines, [and] stationary cycles. The Examining Attorney argues that when consumers encounter Applicant s mark FITNESS MARKET, they will immediately understand the word FITNESS to refer to the fitness machines and equipment being sold through the retail store, and they - 3 -

4 will understand the word MARKET to refer to the sale of goods, particularly fitness goods. 2 The word FITNESS is defined as the quality or state of being fit. 3 Being fit means being physically healthy and strong. 4 As shown by the excerpt from Applicant s website attached to the Final Office Action, Applicant sells a variety of exercise equipment through its retail outlet, promoting itself as Kentucky s Leader in Commercial & Residential Fitness Sales. 5 Applicant argues that the term FITNESS has a broader meaning of the quality of being able to survive or adapted to an end or design, neither of which equate to exercise equipment, and that Applicant is not selling fitness. 6 However, Applicant is selling fitness equipment. Descriptiveness of a mark is not considered in the abstract but rather in the context of the identified goods or services. The issue is whether someone who knows what Applicant s services are will understand the mark to directly convey information about them. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 (TTAB 2007); Tower Tech, 64 USPQ2d at In this context, the word fitness describes products that are designed to increase one s physical fitness, health and 2 6 TTABVUE 5. 3 At The Board may take judicial notice of dictionary definitions, including definitions or entries from references that are the electronic equivalent of a print reference work. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009). 4 Id. 5 At attached to Office Action dated April 6, Appeal Brief, 4 TTABVUE

5 overall strength. Consumers familiar with treadmills, fitness machines, and the similar exercise machines sold by Applicant through its retail outlet would immediately understand the term FITNESS to be descriptive of a significant feature of the goods sold, and therefore, to be descriptive of retail store services selling such goods. See, e.g., In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (proposed mark M-A-T-R-E-S-S is merely descriptive of applicant s telephone shop-at-home mattress retail services); In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store services); In re Anania Associates, Inc., 223 USPQ 740 (TTAB 1984) (OFF THE RACK merely descriptive of retail men s apparel store services); In re Melville Corporation, 228 USPQ 970 (TTAB 1986), (BRAND NAMES FOR LESS merely descriptive of retail store services in the clothing field). Cf. In re Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ( We hold, furthermore, that PAINT PRODUCTS CO. is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company. ). Given the record before us, we have no doubt that consumers will immediately understand the word FITNESS as describing the very type of goods being offered for sale through Applicant s retail store. The word MARKET is defined as a place where products are bought and sold. 7 Applicant s on-line retail outlet, as shown by the record excerpt from Applicant s website, is a place where a wide variety of exercise equipment is offered for sale. 7 At

6 Applicant s masthead and exterior signage identify Applicant as an exercise equipment showroom, and photographs of the interior of Applicant s store display large quantities of various types of exercise equipment for sale. 8 Citing Merriam- Webster s on-line dictionary, Applicant argues that the word market usually refers to a store where foods and often household items are sold. 9 Even assuming that the term market traditionally refers to a grocery store or supermarket, however, does not change the fact that relevant consumers are familiar with the term market as simply referring to any location, including an on-line website, where goods or services may be purchased. As noted, whether FITNESS MARKET is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. Each of the words that comprise Applicant s mark, fitness and market, has a descriptive meaning in relation to Applicant s services. The combination mark FITNESS MARKET is equally descriptive. No imagination or thought is required by a prospective purchaser to discern that a significant purpose or feature of Applicant s retail store services is to sell fitness machines and equipment for physical fitness. Although, as Applicant contends, it is possible that two terms, which separately are merely descriptive, may be combined into an incongruous or inventive new composite, this is clearly not such a case. Contrary to Applicant s argument, its mark 8 At attached to April 6, 2015 Office Action. 9 Appeal Brief, 4 TTABVUE

7 does not have a bizarre or incongruous meaning as applied to its services. Cf. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for bakery products registrable as suggestive). Moreover, the fact that the descriptive term FITNESS MARKET is not itself found in the dictionary is not controlling on the question of registrability. See, e.g., In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (BREADSPRED for jellies and jams is merely descriptive). And while Applicant contends that its use of the designation is exclusive, 10 and even in the event Applicant is the first to use the term fitness market to designate a showroom, warehouse, or other type of retail outlet in connection with fitness equipment, merely being the first or even sole user of a merely descriptive term does not entitle Applicant to register the term as a mark. See Sheetz of Del., Inc. v. Doctor s Assocs. Inc., 108 USPQ2d 1341, 1362 (TTAB 2013) ( Even if applicant was the first and/or sole user of a generic term or phrase, as it claims, that does not entitle applicant to register such a term or phrase as a mark. ); In Re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) ( a word need not be in common use in an industry to be descriptive ); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a merely descriptive designation does not justify registration if the term projects only merely descriptive significance ). The applied-for mark FITNESS MARKET immediately describes, without conjecture or speculation, a retail store where fitness equipment is sold. Our assessment that FITNESS MARKET is merely descriptive is 10 4 TTABVUE

8 confirmed by the inclusion of fitness machines in the recitation of services and by the language on Applicant s website, which describes Applicant as a leader in fitness sales. III. Conclusion Applicant sells fitness and exercise machines and related equipment in a marketplace environment. The record demonstrates that the individual terms of Applicant s mark, fitness and market, describe features of Applicant s services, while the combination FITNESS MARKET fails to evoke a non-descriptive commercial impression requiring mature thought or imagination to discern the nature of Applicant s services. Accordingly, the term FITNESS MARKET is merely descriptive of Applicant s retail store services featuring fitness machines and equipment, namely weights, treadmills, rowing machines, stair stepping machines, resistance machines, [and] stationary cycles. Decision: The refusal to register Applicant s mark FITNESS MARKET under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), is affirmed