Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number: ESTTA910319
`Filing date: 07/19/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Notice of Opposition
`
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`Entity
`Address
`
`FORTIFIED HOLISTIC, LLC
`
`37-40 31ST STREET
`NEW YORK, NY 11101
`UNITED STATES
`
`Citizenship
`
`NEW YORK
`
`
`Correspondence
`information
`
`ALOZIE ETUFUGH
`LAW OFFICES OF ALOZIE N. ETUFUGH, PLLC
`200 PARK AVE
`STE 1700
`NEW YORK, NY 10166
`UNITED STATES
`Email: ANE@ETUFUGHLAW.COM
`Phone: 2123098723
`
`
`Applicant Information
`
`Application Serial
`No
`Opposition Filing
`Date
`Applicant
`
`87758282
`
`07/19/2018
`
`Publication date
`
`06/19/2018
`
`Opposition Period Ends
`
`07/19/2018
`
`Luccic, Anthony
`4755 39th Place, Apt 3H
`Sunnyside, NY 11104
`UNITED STATES
`
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants, jackets,
`footwear, hats and caps, athletic uniforms; Athletic tops and bottomsfor athletes; Bottoms as clothing;
`Footwear; Gym suits; Headwear; Jogging suits; Outerwear, namely, coats, jackets, sweaters, gloves, ear
`warmers, and hats; Sweat suits; Tops as clothing
`
`Grounds for Opposition
`
`
`
`ESTTA Tracking number: ESTTA910319
`Filing date: 07/19/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Notice of Opposition
`
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`Entity
`Address
`
`FORTIFIED HOLISTIC, LLC
`
`37-40 31ST STREET
`NEW YORK, NY 11101
`UNITED STATES
`
`Citizenship
`
`NEW YORK
`
`
`Correspondence
`information
`
`ALOZIE ETUFUGH
`LAW OFFICES OF ALOZIE N. ETUFUGH, PLLC
`200 PARK AVE
`STE 1700
`NEW YORK, NY 10166
`UNITED STATES
`Email: ANE@ETUFUGHLAW.COM
`Phone: 2123098723
`
`
`Applicant Information
`
`Application Serial
`No
`Opposition Filing
`Date
`Applicant
`
`87758282
`
`07/19/2018
`
`Publication date
`
`06/19/2018
`
`Opposition Period Ends
`
`07/19/2018
`
`Luccic, Anthony
`4755 39th Place, Apt 3H
`Sunnyside, NY 11104
`UNITED STATES
`
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants, jackets,
`footwear, hats and caps, athletic uniforms; Athletic tops and bottomsfor athletes; Bottoms as clothing;
`Footwear; Gym suits; Headwear; Jogging suits; Outerwear, namely, coats, jackets, sweaters, gloves, ear
`warmers, and hats; Sweat suits; Tops as clothing
`
`Grounds for Opposition
`
`
`
`
`Priority and likelihood of confusion
`Applicant not rightful owner of mark for identified
`goods or services
`Fraud on the USPTO
`
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`NONE
`
`NONE
`
`Trademark Act Section 2(d)
`Trademark Act Sections 1
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938
`(Fed. Cir. 2009)
`
`Application Date
`
`NONE
`
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`
`Apparel; Provision of fitness classes; Operation of fitness facility
`
`
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`
`Apparel; Provision of fitness classes; Operation of fitness facility
`
`
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`BELL
`Apparel; Provision of fitness classes; Operation of fitness facility
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`CF BELL
`Apparel; Provision of fitness classes; Operation of fitness facility
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`
`
`Goods/Services
`
`
`Related
`Proceedings
`
`Attachments
`
`Apparel; Provision of fitness classes; Operation of fitness facility
`
`
`
`FORTIFIED HOLISTIC, LLC V. ANTHONY LUCIC (SUP. CT. QUEENS, NY) INDEX #
`711627-2017
`
`Kettlebell Logo.jpg ( 1 Page)
`Combination CF Kettlebell Logo.jpg ( 1 Page)
`Combination Kettlebell Logo.jpg ( 1 Page)
`0436-4001 Notice of Opposition.pdf ( 22 Pages)
`Exhibit 1.pdf ( 2 Pages)
`Exhibit 2.pdf ( 2 Pages)
`Exhibit 3.pdf ( 2 Pages)
`Exhibit 4.pdf ( 2 Pages)
`Exhibit 5.pdf ( 2 Pages)
`Exhibit 6.pdf ( 2 Pages)
`Exhibit 7.pdf ( 2 Pages)
`Exhibit 8.pdf ( 2 Pages)
`Exhibit 9.pdf ( 2 Pages)
`Exhibit 10.pdf ( 2 Pages)
`Exhibit 11.pdf ( 2 Pages)
`Exhibit 12.pdf ( 2 Pages)
`Exhibit 13.pdf ( 2 Pages)
`
`
`
`Exhibit 14.pdf (2 Pages)
`Exhibit 15.pdf ( 3 Pages)
`Exhibit 16.pdf ( 7 Pages)
`Exhibit 17.pdf ( 6 Pages)
`Exhibit 18.pdf ( 3 Pages)
`Exhibit 19.pdf ( 2 Pages)
`Exhibit 20.pdf ( 2 Pages)
`
`
`
`
`Certificate of Service
`
`
`
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their
`address of record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`
`
`/ALOZIE ETUFUGH/
`ALOZIE ETUFUGH
`07/19/2018
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Application Serial No: 87758282
`Filed January 17, 2018
`For the BELL Mark (with design)
`Published in the Official Gazette – June 19, 2018
`
`
`FORTIFIED HOLISTIC, LLC.,
`A New York Limited Liability Company
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Applicant,
`
` __________________________________________)
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposition No. TBD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Anthony Lucic,
`An Individual
`
`
`
`
`
`
`
`
`FORTIFIED HOLISTIC, LLC, a limited liability company organized and existing
`
`under the laws of the State of New York and having a business address at 37-40 31st Street
`
`Long Island City, NY 11101 (“Fortified”, “Opposer”) will be damaged by registration of
`
`the trademark as shown in Application Serial No. 87758282 in International Class 025, and
`
`hereby opposes the same under Section 13 of the Trademark Act of July 5, 1946 (15 U.S.C.
`
`§1063).
`
`
`
`
`
`
`
`
`
`
`
`
`
`As grounds for the opposition, Opposer alleges as follows:
`
`1.
`
`Fortified is the owner of the following word, logo and combination common law
`
`marks (hereinafter, “Opposer Trademarks”)1:
`
`
`
` •
`
` BELL
`• BELLe OF BAYSIDE
`• BELLe OF THE BOROUGHS
`• BAYSIDE Bar BELL
`• CF BELL
`
`
`
`
`
`
`1 With the exception of the CROSSFIT word mark, which is not pertinent to the instant application and as
`to which Opposer asserts no enforcement rights.
`
`
`
`2
`
`
`
`2.
`
`Pertinent to this Opposition are the following trademarks:
`
`a. The BELL word mark (the “BELL Mark”);
`
`b. The CF BELL word mark (the “CF BELL Mark”);
`
`c. The kettlebell logo mark,
`
`(the “Kettlebell Mark”);
`
`d. The combination CF word & logo mark
`
` (the “Combination CF
`
`Mark”); and
`
`e. the combination kettlebell word & logo mark,
`
`(the “Combination
`
`Kettlebell Mark”)2.
`
`3.
`
`Fortified is a New York limited liability company primarily engaged in the business
`
`of operating a fitness facility. Fortified also engages in the sale of apparel and the provision
`
`of fitness classes.
`
`4.
`
`Upon information and belief, Applicant is a natural person having a domicile at
`
`4755 39th Place, Apt. 3H, Sunnyside New York 11104.
`
`5.
`
`Fortified was formed on March 2010 by Dominick Fortino as a single member New
`
`York Limited Liability Company.
`
`6.
`
`In or about June 2012, Dominick Fortino, executed an Operating Agreement adding
`
`Phil Fortino and Applicant, Anthony Lucic, as additional members of Fortified.
`
`
`2 Images of the logo and combination marks are included in Exhibit #20.
`
`
`
`3
`
`
`
`7.
`
`The Operating Agreement allocated a 45% ownership share of the LLC to
`
`Dominick Fortino, 45% to Applicant and 10% to Phil Fortino.
`
`8.
`
`Following execution of the Operating Agreement, Dominick Fortino, developed the
`
`Opposer Trademarks and enabled Fortified’s use of same in conjunction with the operation
`
`of a rented facility in Bayside, New York Fortified provided fitness classes and sold apparel
`
`at the facility.
`
`9.
`
`Long before any date of priority or date of use upon which Applicant can rely,
`
`Fortified has continuously used the BELL Mark, the CF Mark, the Kettlebell Mark, the
`
`Combination CF Mark and the Combination Kettlebell Mark in conjunction with its sale
`
`of apparel, operation of a fitness facility and provision of fitness classes since at least 2012.
`
`10.
`
`Exemplary pictures and examples of Fortified’s use of the BELL Mark, the CF
`
`Mark, the Kettlebell Mark, the Combination CF Mark and the Combination Kettlebell
`
`Mark may be seen in Exhibits 1-13.
`
`11.
`
`12.
`
`Fortified generates revenue by selling group fitness classes and its sale of apparel.
`
`In 2013, Opposer moved from its original rented location in Bayside, New York to
`
`another rented facility in Long Island City, New York, where it continued to use the
`
`Opposer Trademarks.
`
`13.
`
`In communicating with its customers and to market its new facility, numerous
`
`domain names, based on the Opposer Trademarks, were acquired. In addition, websites for
`
`same were established for Fortified.
`
`14.
`
`In addition to the aforesaid websites, Fortified established a strong social media
`
`presence by way of the creation of Facebook and Instagram pages – accounts of which
`
`were also named based on the Opposer Trademarks. A private Facebook group known as
`
`
`
`4
`
`
`
`the “BELL RINGERS”, was also established for its customers. The formation of the BELL
`
`RINGERS group enabled Fortified to communicate directly with its customers.
`
`15.
`
`The websites and social media accounts have served as Fortified’s primary means
`
`for advertising its services and apparel. The websites and social media accounts have also
`
`been the means by which Fortified has communicated with current and prospective
`
`customers. Virtually all of Fortified’s customers are acquired through signups using these
`
`websites.
`
`16.
`
`Because of the extensive advertising, marketing, promotion and sales of Fortified’s
`
`goods and services in connection with the BELL Mark, the CF Mark, the Kettlebell Mark,
`
`the Combination CF Mark and/or the Combination Kettlebell Mark along with Fortified’s
`
`use of the Opposer Trademarks, Fortified has established common-law property rights, and
`
`has built up highly valuable goodwill in the BELL Mark, the CF Mark, the Kettlebell Mark,
`
`the Combination CF Mark and the Combination Kettlebell Mark.
`
`17.
`
`The BELL Mark, the CF Mark, the Kettlebell Mark, the Combination CF Mark and
`
`the Combination Kettlebell Mark Marks are also recognized as identifying high quality
`
`goods and services associated with Fortified.
`
`18.
`
`In early 2017, Fortified’s rented premises in Long Island City, New York was sold.
`
`Fortified’s landlord notified Fortified that its lease would be terminated in six months.
`
`19.
`
`By May 2017, Fortified’s members decided to move Fortified’s facility to its
`
`current location at 37-40 31st Street, a location also in Long Island City, New York.
`
`20.
`
`In June 2017, as Fortified’s members were preparing for its move to the location,
`
`Applicant informed Dominick Fortino that Applicant needed some time off as he was burnt
`
`out from coaching fitness classes,
`
`
`
`5
`
`
`
`21.
`
`22.
`
`Applicant thereafter ceased participating in Fortified’s activities.
`
`Upon information and belief, on or about June 14, 2017, Applicant removed
`
`Fortified’s only computer from the premises. The computer contained a vast number of
`
`Fortified’s digital files, including, without limitation, digital photographs, workout
`
`programming, promotional materials, correspondence, corporate records, and importantly,
`
`Fortified’s trademark logos, including the Kettlebell Mark.
`
`23.
`
`Over the next few weeks following Applicant’s removal of Fortified’s computer,
`
`Applicant systematically revoked Fortified’s remaining members’ administrator access to
`
`Fortified’s social media accounts, changed the recovery email address associated with
`
`these social media accounts, and deleted various password change notification emails that
`
`would have alerted Fortified’s remaining members of his actions.
`
`24.
`
`Contemporaneous with these actions, Applicant demanded an exorbitant amount
`
`from Fortified’s other members to buy Applicant’s out of the LLC. The other members
`
`refused this demand, but the parties negotiated an alternative buy out, in which the other
`
`members agreed to pay Applicant cash in exchange for Applicant’s withdrawal from
`
`Fortified and agreement not to compete with Fortified.
`
`25.
`
`26.
`
`Fortified paid Applicant $10,000 as an advance on the agreed buy out.
`
`On August 22, 2017, after receiving the $10,000 advance payment, Applicant
`
`issued a statement to Fortified’s customers via the BELL RINGERS Facebook group and
`
`falsely claimed sole ownership of certain of Fortified’s properties and indicated that he
`
`would be operating a business separate from that of Fortified.
`
`27.
`
`Upon information and belief, despite his agreement not to compete with
`
`Fortified, Applicant, sometime in October 2017, started operating an identical and
`
`
`
`6
`
`
`
`competing fitness facility at 36-42 37th Street, Long Island City, New York, a location that
`
`is a few blocks and less than half a mile from Fortified’s facility. See, Exhibit 14.
`
`28.
`
`Upon information and belief, Applicant is offering the same type of fitness classes,
`
`similar and indistinguishable from those offered by Fortified.
`
`29.
`
`On January 17, 2018, Applicant filed an intent-to-use application to register a
`
`BELL (with design) mark with the United States Patent & Trademark Office (USPTO) in
`
`International Class 025, an application that was assigned serial number 87/758,828.
`
`(“Applicant’s Combination BELL Mark”). See, Exhibit 15.
`
`30.
`
`Applicant described his goods in the application as:
`
`“Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
`
`athletic uniforms; Athletic tops and bottoms for athletes; Bottoms as
`
`clothing; Footwear; Gym suits; Headwear; Jogging suits; Outerwear,
`
`namely, coats, jackets, sweaters, gloves, ear warmers, and hats; Sweat suits;
`
`Tops as clothing”.
`
`(“Applicant’s goods”). See, Exhibit 16.
`
`31.
`
`Applicant, in his application, described the filed mark, shown below, as “The mark
`
`consists of a silhouette of a kettlebell split in half with a barbell running through it. The
`
`barbell is split in half and the word "Bell" is centered between the barbell.” Id.
`
`
`
`
`
`
`
`7
`
`
`
`32.
`
`On April 27, 2018, the Examiner assigned to Applicant’s application issued an
`
`Office Action in which the Examiner required Applicant to address an informality related
`
`to ownership of the mark as designated by Applicant. See, Exhibit 17.
`
`33.
`
`Applicant, on April 28, 2018, corrected this informality by way of Applicant’s
`
`response to the Examiner’s Office Action. See, Exhibit 18.
`
`34.
`
`Applicant’s application was then published for opposition on June 19, 2018. See,
`
`Exhibit 19.
`
`COUNT 1: LIKELIHOOD OF CONFUSION WITH RESPECT TO
`
`
`
`THE BELL MARK
`
`
`
`35.
`
`Applicant’s Combination BELL mark is similar to Fortified’s common law BELL
`
`Mark in appearance, connotation and commercial impression, and is likely, when applied
`
`to Applicant’s goods, to cause confusion, mistake or deception among consumers within
`
`the meaning of 15 U.S.C. §1052(d), because the word portion would be more likely to be
`
`impressed upon a consumer’s memory to be used in calling for the goods.
`
`36.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`similarity and relatedness between Applicant’s goods and Fortified’s goods.
`
`37.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`same channels of trade through which Applicant’s goods and Fortified’s goods, bearing
`
`Fortified’s BELL Mark, pass.
`
`
`
`8
`
`
`
`38.
`
`Because of the similar BELL terms being used in both marks, members of the
`
`public are likely to believe that Applicant’s goods originated from, were endorsed,
`
`approved, sponsored by, and/or are associated with Fortified in some way, given Fortified’s
`
`prior and continuous use of Fortified’s BELL Mark.
`
`39.
`
`Because of the significant similarity between Fortified’s BELL Mark and
`
`Applicant’s Combination BELL mark, given the similar BELL terms, members of the
`
`public, including the BELL RINGERS group, are likely to believe that Applicant’s goods
`
`are associated with Fortified’s BELL Mark in some way.
`
`40.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods originated from, were endorsed, approved,
`
`sponsored by and/or are associated with, Fortified in some way, given Fortified’s prior and
`
`continuous use of Fortified’s BELL Mark.
`
`41.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods are associated with Fortified’s BELL Mark in some
`
`way.
`
`42.
`
`If Applicant’s Combination BELL mark is permitted to register and subsist, there
`
`would be a likelihood of confusion as to the source or sponsorship of the goods set forth in
`
`Applicant’s registration, resulting in damage and injury to Fortified. Patrons familiar with
`
`Fortified’s BELL mark will likely avail themselves of goods or services offered by
`
`Applicant, believing them to be affiliated, associated with, or provided by Fortified,
`
`thereby leading to loss of revenue to Fortified.
`
`
`
`9
`
`
`
`43.
`
`In view of the significant goodwill and reputation of Fortified’s BELL Mark, the
`
`use and registration of Applicant’s Combination BELL mark by Applicant is likely to
`
`create confusion, mistake and deception among consumers, especially given the history
`
`between the parties, the parties’ similar customers and the fact that Applicant's facility is
`
`less than half a mile from Fortified’s facility.
`
`
`
`44.
`
`COUNT 2: LIKELIHOOD OF CONFUSION WITH RESPECT TO
`
`THE CF BELL MARK
`
`Fortified repeats and reasserts Paragraphs 1-43 of this Notice as though fully set
`
`forth herein.
`
`45.
`
`Applicant’s Combination BELL mark is similar to Fortified’s common law CF
`
`BELL Mark in appearance, connotation and commercial impression, and is likely, when
`
`applied to Applicant’s goods, to cause confusion, mistake or deception among consumers
`
`within the meaning of 15 U.S.C. §1052(d).
`
`46.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`similarity and relatedness between Applicant’s goods and Fortified’s goods.
`
`47.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`same channels of trade through which Applicant’s goods and Fortified’s goods, bearing
`
`Fortified’s CF BELL Mark, pass.
`
`48.
`
`Because of the similar BELL terms being used in both Fortified’s CF BELL mark
`
`and Applicant’s Combination BELL mark, members of the public, including the BELL
`
`RINGERS group, are likely to believe that Applicant’s goods originated from, were
`
`
`
`10
`
`
`
`endorsed, approved, sponsored by, and/or are associated Fortified in some way, given
`
`Fortified’s prior and continuous use of Fortified’s CF BELL Mark.
`
`49.
`
`Because of the significant similarity between Fortified’s CF BELL Mark and
`
`Applicant’s Combination BELL mark, members of the public, including the BELL
`
`RINGERS group, are likely to believe that Applicant’s goods are associated with
`
`Fortified’s CF BELL Mark in some way.
`
`50.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods originated from, were endorsed, approved,
`
`sponsored by and/or are associated with, Fortified in some way, given Fortified’s prior and
`
`continuous use of Fortified’s CF BELL Mark.
`
`51.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods are associated with Fortified’s CF BELL Mark in
`
`some way.
`
`52.
`
`If Applicant’s Combination BELL mark is permitted to register and subsist, there
`
`would be a likelihood of confusion as to the source or sponsorship of the goods set forth in
`
`Applicant’s registration, resulting in damage and injury to Fortified. Patrons familiar with
`
`Fortified’s CF BELL Mark will likely avail themselves of goods or services offered by
`
`Applicant, believing them to be affiliated, associated with, or provided by Fortified,
`
`thereby leading to loss of revenue to Fortified.
`
`53.
`
`In view of the significant goodwill and reputation of Fortified’s CF BELL Mark,
`
`the use and registration of Applicant’s Combination BELL mark by Applicant is likely to
`
`
`
`11
`
`
`
`create confusion, mistake and deception among consumers, especially given the history
`
`between the parties, the parties’ similar customers and the fact that Applicant's facility is
`
`less than half a mile from Fortified’s facility.
`
`
`
`COUNT 3: LIKELIHOOD OF CONFUSION WITH RESPECT TO
`
`54.
`
`Fortified repeats and reasserts Paragraphs 1-53 of this Notice as though fully set
`
`THE KETTLEBELL MARK
`
`forth herein.
`
`55.
`
`Applicant’s Combination BELL mark is similar to Fortified’s common law
`
`Kettlebell Mark in appearance, connotation and commercial impression, and is likely,
`
`when applied to Applicant’s goods, to cause confusion, mistake or deception among
`
`consumers within the meaning of 15 U.S.C. §1052(d).
`
`56.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`similarity and relatedness between Applicant’s goods and Fortified’s goods.
`
`57.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`same channels of trade through which Applicant’s goods and Fortified’s goods, bearing
`
`Fortified’s Kettlebell Mark, pass.
`
`58.
`
`Because of the significant similarity between Fortified’s Kettlebell Mark and
`
`Applicant’s Combination BELL mark (see below), members of the public, including the
`
`BELL RINGERS group, are likely to believe that Applicant’s goods originated from, were
`
`endorsed, approved, sponsored by, and/or are associated with Fortified in some way, given
`
`Fortified’s use of Fortified’s Kettlebell Mark.
`
`
`
`12
`
`
`
`
`Fortified’s Kettlebell Mark
`
`59.
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant’s Mark
`
`
`
`Because of the significant similarity between Fortified’s Kettlebell Mark and
`
`Applicant’s Combination BELL mark members of the public, including the BELL
`
`RINGERS group, are likely to believe that Applicant’s goods are associated with
`
`Fortified’s Kettlebell Mark in some way, given Fortified’s prior and continuous use of
`
`Fortified’s Kettlebell Mark.
`
`60.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods originated from, were endorsed, approved,
`
`sponsored by and/or are associated with, Fortified in some way, given Fortified’s prior and
`
`continuous use of Fortified’s Kettlebell Mark.
`
`61.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods are associated with Fortified’s Kettlebell Mark in
`
`some way.
`
`62.
`
`If Applicant’s Combination BELL mark is permitted to register and subsist, there
`
`would be a likelihood of confusion as to the source or sponsorship of the goods set forth in
`
`Applicant’s registration, resulting in damage and injury to Fortified. Patrons familiar with
`
`
`
`13
`
`
`
`Fortified’s Kettlebell Mark will likely avail themselves of goods or services offered by
`
`Applicant, believing them to be affiliated, associated with, or provided by Fortified,
`
`thereby leading to loss of revenue to Fortified.
`
`63.
`
`In view of the significant goodwill and reputation of Fortified’s Kettlebell Mark,
`
`the use and registration of Applicant’s Combination BELL mark is likely to create
`
`confusion, mistake and deception among consumers, especially given the history between
`
`the parties, the parties’ similar customers and the fact that Applicant's facility is less than
`
`half a mile from Fortified’s facility.
`
`
`
`64.
`
`COUNT 4: LIKELIHOOD OF CONFUSION WITH RESPECT TO
`
`THE COMBINATION CF MARK
`
`Fortified repeats and reasserts Paragraphs 1-63 of this Notice as though fully set
`
`forth herein.
`
`65.
`
`Applicant’s Combination BELL mark is similar to Fortified’s common law
`
`Combination CF Mark in appearance, connotation and commercial impression, and is
`
`likely, when applied to Applicant’s goods, to cause confusion, mistake or deception among
`
`consumers within the meaning of 15 U.S.C. §1052(d).
`
`66.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`similarity and relatedness between Applicant’s goods and Fortified’s goods.
`
`67.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`same channels of trade through which both Applicant’s goods and Fortified’s goods,
`
`bearing Fortified’s Combination CF Mark, pass.
`
`
`
`14
`
`
`
`68.
`
`Because of the significant similarity between Fortified’s Combination CF Mark and
`
`Applicant’s Combination BELL mark (see below), members of the public are likely to
`
`believe that Applicant’s goods originated from, were endorsed, approved, sponsored by,
`
`and/or are associated Fortified in some way, given Fortified’s prior and continuous use of
`
`Fortified’s Combination CF Mark.
`
`
`
`
`
`
`
`
`
`
`
`Applicant’s Mark
`
`Fortified’s Combination CF Mark
`
`69.
`
`Because of the similarity between Fortified’s Combination CF Mark and
`
`Applicant’s Combination BELL mark members of the public are likely to believe that
`
`Applicant’s goods are associated with Fortified’s Combination CF Mark in some way,
`
`given Fortified’s prior and continuous use of the Fortified’s Combination Kettlebell Mark.
`
`70.
`
`Because of the similarity between Fortified’s Combination CF Mark and
`
`Applicant’s Combination BELL mark members of the public, including the BELL
`
`RINGERS group, are likely to believe that Applicant’s goods originated from, were
`
`endorsed, approved, sponsored by, and/or are associated with, Fortified in some way, given
`
`Fortified’s prior and continuous use of Fortified’s Combination CF Mark.
`
`71.
`
`Because of the similarity between Fortified’s Combination CF Mark and
`
`Applicant’s Combination BELL mark members of the public, including the BELL
`
`
`
`15
`
`
`
`RINGERS group, are likely to believe that Applicant’s goods are associated with
`
`Fortified’s Combination CF Mark in some way.
`
`72.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods originated from, were endorsed, approved,
`
`sponsored by and/or are associated with, Fortified in some way, given Fortified’s prior and
`
`continuous use of Fortified’s Combination CF Mark.
`
`73.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods are associated with Fortified’s Combination CF
`
`Mark in some way.
`
`74.
`
`If Applicant’s Combination BELL mark is permitted to register and subsist, there
`
`would be a likelihood of confusion as to the source or sponsorship of the goods set forth in
`
`Applicant’s registration, resulting in damage and injury to Fortified. Patrons familiar with
`
`Fortified’s Combination CF Mark will likely avail themselves of goods or services offered
`
`by Applicant, believing them to be affiliated, associated with, or provided by Fortified,
`
`thereby leading to loss of revenue to Fortified.
`
`75.
`
`In view of the significant goodwill and reputation of Fortified’s Combination CF
`
`Mark, the use and registration of Applicant’s Combination BELL mark is likely to create
`
`confusion, mistake and deception among consumers, especially given the history between
`
`the parties, the parties’ similar customers and the fact that Applicant's facility is less than
`
`half a mile from Fortified’s facility.
`
`
`
`
`
`16
`
`
`
`COUNT 5: LIKELIHOOD OF CONFUSION WITH RESPECT TO THE
`
`76.
`
`Fortified repeats and reasserts Paragraphs 1-75 of this Notice as though fully set
`
`COMBINATION KETTLEBELL MARK
`
`forth herein.
`
`77.
`
`Applicant’s Combination BELL mark is similar to Fortified’s common law
`
`Combination Kettlebell Mark in appearance, connotation and commercial impression, and
`
`is likely, when applied to Applicant’s goods, to cause confusion, mistake or deception
`
`among consumers within the meaning of 15 U.S.C. §1052(d).
`
`78.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`similarity and relatedness between Applicant’s goods and Fortified’s goods.
`
`79.
`
`Applicant’s Combination BELL mark is likely to cause confusion, mistake or
`
`deception among consumers within the meaning of 15 U.S.C. §1052(d) because of the
`
`same channels of trade through which both Applicant’s goods and Fortified’s goods,
`
`bearing Fortified’s Combination Kettlebell Mark, pass.
`
`80.
`
`Because of the similarity between Fortified’s Combination Kettlebell Mark and
`
`Applicant’s Combination BELL mark (see below), members of the public are likely to
`
`believe that Applicant’s goods originated from, were endorsed, approved, sponsored by
`
`Fortified in some way, given Fortified’s prior and continuous use of Fortified’s
`
`Combination Kettlebell Mark.
`
`
`
`17
`
`
`
`
`
`
`81.
`
`
`
`Fortified’s Combination Kettlebell Mark
`
`
`
`Applicant’s Mark
`
`
`
`Because of the significant similarity between Fortified’s Combination Kettlebell
`
`Mark and Applicant’s Combination BELL mark members of the public, including the
`
`BELL RINGERS group, are likely to believe that Applicant’s goods originated from, were
`
`endorsed, approved, sponsored and/or are associated with Fortified in some way, given
`
`Fortified’s prior and continuous use of Fortified’s Combination Kettlebell Mark.
`
`82.
`
`Because of the significant similarity between Fortified’s Combination Kettlebell
`
`Mark and Applicant’s Combination BELL mark members of the public, including the
`
`BELL RINGERS group, are likely to believe that Applicant’s goods are associated with
`
`Fortified’s Combination Kettlebell Mark in some way.
`
`83.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`likely to believe that Applicant’s goods originated from, were endorsed, approved,
`
`sponsored by and/or are associated with, Fortified in some way, given Fortified’s prior and
`
`continuous use of Fortified’s Combination Kettlebell Mark.
`
`84.
`
`Given the proximity between Fortified’s fitness facility and Applicant’s facility,
`
`members of the public and customers living within areas proximate to either facility are
`
`
`
`18
`
`
`
`likely to believe that Applicant’s goods are associated with Fortified’s Combination
`
`Kettlebell Mark in some way.
`
`85.
`
`If Applicant’s Combination BELL mark is permitted to register and subsist, there
`
`would be a likelihood of confusion as to the source or sponsorship of the goods set forth in
`
`Applicant’s registration, resulting in damage and injury to Fortified. Patrons familiar with
`
`Fortified’s Combination Kettlebell Mark will likely avail themselves of goods or services
`
`offered by Applicant, believing them to be affiliated, associated with, or provided by
`
`Fortified, thereby leading to loss of revenue to Fortified.
`
`86.
`
`In view of the significant goodwill and reputation of Fortified’s Combination
`
`Kettlebell Mark, the use and registration of Applicant’s Combination BELL mark is likely
`
`to create confusion, mistake and deception among consumers, especially given the history
`
`between the parties, the similar customers and the fact that Applicant's facility is less than
`
`half a mile from Fortified’s facility.
`
`
`
`COUNT 6: FRAUD
`
`
`
`87.
`
`Applicant’s Combination BELL mark identified Applicant as the owner of the
`
`mark. This constitutes, a fraudulent misrepresentation to the USPTO within the meaning
`
`of 15 U.S.C. §1064(3) as Applicant used Fortified’s designs for the Kettlebell logo which
`
`were resident on Fortified’s computer which Applicant converted.
`
`
`
`
`
`COUNT 7: MISREPRESENTATION OF SOUR
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