PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(9 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86013681
`
`LAW OFFICE 110
`
`http://tsdr.uspto.gov/img/86013681/large
`
`ICONIC FITNESS
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`The mark consists of a lower case "i" in bold. Between the dot and passing through
`the body of the "i" there is an oval ring. The remaining letters "CONIC" are
`capitalized and bold. "FITNESS" follows "iCONIC" and has a slim font with all
`capital letters.
`
`evi_68501639-234627034_._OAResponse-ICONICFITNSS.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\136\86013681\xml5\ROA0010.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`arguments in response to the Section 2(d) refusal
`
`GOODS AND/OR SERVICES SECTION (025)(no change)
`
`GOODS AND/OR SERVICES SECTION (041)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Providing fitness and exercise in gym setting facilities: Providing assistance in personal training and physical fitness. Consultation to
`individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; Education services,
`namely, providing classes, seminars and workshops in the field of fitness, wellness and exercise; Gym management services, fitness studios in
`gyms with members, developing fitness routines consisting of video instruction, photos and live demonstrations; Conducting fitness classes;
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`Consulting services in the fields of fitness and exercise; Education services, namely, providing panel discussions in the field of exercise,
`fitness, wellness, and personal development; Educational services, namely, developing and conducting workouts, workshops, presentations,
`retreats, and personal training in right-brain fitness; Educational services, namely, providing cognitive fitness programs for seniors; Golf
`fitness instruction; Personal fitness training services and consultancy; Personal fitness training services featuring aerobic and anaerobic
`activities combined with resistance and flexibility training; Personal fitness training services, namely, providing cross-training instruction to
`tennis players, based on pilates methods and tennis techniques, in a studio or on a tennis court; Physical fitness consultation; Physical fitness
`conditioning classes; Physical fitness instruction; Physical fitness studio services, namely, providing exercise classes, body sculpting classes,
`and group fitness classes; Physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; Physical
`fitness training services using pilates apparatuses, pilates training techniques and tennis techniques to improve core strength, endurance and
`match play for tennis players in order to prevent tennis-related injuries and assist in the rehabilitation process of injured tennis players;
`Physical fitness training of individuals and groups; Providing a website featuring information on exercise and fitness; Providing an interactive
`website featuring information and links relating to fitness; Providing an interactive website featuring information and links relating to fitness;
`Providing an on-line computer database featuring information regarding exercise and fitness before and after pregnancy; Providing an on-line
`computer database featuring information regarding exercise and fitness; Providing assistance, personal training and physical fitness
`consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living;
`Providing classes, workshops, seminars and camps in the fields of fitness, exercise, boxing, kick boxing and mixed martial arts; Providing
`facilities for physical fitness training; Providing fitness and exercise facilities; Providing general fitness and mixed martial arts facilities that
`require memberships and are focused in the fields of general fitness, exercise, and mixed martial arts; Providing physical fitness and exercise
`service, namely, indoor cycling and yoga instruction; Personal training services in pysical fitness
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 07/07/2011
`
`At least as early as 07/07/2011
`
`GOODS AND/OR SERVICES SECTION (041)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`Providing fitness and exercise in gym setting facilities: Providing assistance in personal training and physical fitness. Consultation to
`individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; Physical fitness
`instruction, physical fitness consultation, personal training services and consultancy; Education services, namely, providing classes, seminars
`and workshops in the field of fitness, wellness and exercise; Gym management services, fitness studios in gyms with members, developing
`fitness routines consisting of video instruction, photos and live demonstrations; Conducting fitness classes; Consulting services in the fields of
`fitness and exercise; Education services, namely, providing panel discussions in the field of exercise, fitness, wellness, and personal
`development; Educational services, namely, developing and conducting workouts, workshops, presentations, retreats, and personal training in
`right-brain fitness; Educational services, namely, providing cognitive fitness programs for seniors; Golf fitness instruction; Personal fitness
`training services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities combined with resistance and
`flexibility training; Personal fitness training services, namely, providing cross-training instruction to tennis players, based on pilates methods
`and tennis techniques, in a studio or on a tennis court; Physical fitness consultation; Physical fitness conditioning classes; Physical fitness
`instruction; Physical fitness studio services, namely, providing exercise classes, body sculpting classes, and group fitness classes; Physical
`fitness studio services, namely, providing group exercise instruction, equipment, and facilities; Physical fitness training services using pilates
`apparatuses, pilates training techniques and tennis techniques to improve core strength, endurance and match play for tennis players in order to
`prevent tennis-related injuries and assist in the rehabilitation process of injured tennis players; Physical fitness training of individuals and
`groups; Providing a website featuring information on exercise and fitness; Providing an interactive website featuring information and links
`relating to fitness; Providing an interactive website featuring information and links relating to fitness; Providing an on-line computer database
`featuring information regarding exercise and fitness before and after pregnancy; Providing an on-line computer database featuring information
`regarding exercise and fitness; Providing assistance, personal training and physical fitness consultation to individuals to help them make
`physical fitness, strength, conditioning, and exercise improvement in their daily living; Providing classes, workshops, seminars and camps in
`the fields of fitness, exercise, boxing, kick boxing and mixed martial arts; Providing facilities for physical fitness training; Providing fitness
`and exercise facilities; Providing general fitness and mixed martial arts facilities that require memberships and are focused in the fields of
`general fitness, exercise, and mixed martial arts; Providing physical fitness and exercise service, namely, indoor cycling and yoga instruction;
`Personal training services in pysical fitness
`
`FINAL(cid:160)DESCRIPTION
`
`Physical fitness instruction, physical fitness consultation, personal training services and consultancy
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 07/07/2011
`
`At least as early as 07/07/2011
`
`

`

`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`No claim is made to the exclusive right to use FITNESS apart from the mark as
`shown.
`
`/avann/
`
`Antonio Vann
`
`Authorized US Attorney, VA Bar Member
`
`7037777319
`
`05/12/2014
`
`YES
`
`Mon May 12 23:51:24 EDT 2014
`
`USPTO/ROA-XX.XX.XX.XX-201
`40512235124891054-8601368
`1-5007b865bd8b6452c98383f
`2dd19687ef3180ab95b961e6e
`e7b79a44cdfcd575-N/A-N/A-
`20140512234627034126
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86013681(cid:160)ICONIC FITNESS (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86013681/large) has been
`amended as follows:
`
`EVIDENCE
`Evidence in the nature of arguments in response to the Section 2(d) refusal has been attached.
`Original PDF file:
`evi_68501639-234627034_._OAResponse-ICONICFITNSS.pdf
`Converted PDF file(s) ( 9 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 041 for Providing fitness and exercise in gym setting facilities: Providing assistance in personal training and physical fitness.
`Consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; Education
`services, namely, providing classes, seminars and workshops in the field of fitness, wellness and exercise; Gym management services, fitness
`studios in gyms with members, developing fitness routines consisting of video instruction, photos and live demonstrations; Conducting fitness
`
`

`

`classes; Consulting services in the fields of fitness and exercise; Education services, namely, providing panel discussions in the field of exercise,
`fitness, wellness, and personal development; Educational services, namely, developing and conducting workouts, workshops, presentations,
`retreats, and personal training in right-brain fitness; Educational services, namely, providing cognitive fitness programs for seniors; Golf fitness
`instruction; Personal fitness training services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities
`combined with resistance and flexibility training; Personal fitness training services, namely, providing cross-training instruction to tennis players,
`based on pilates methods and tennis techniques, in a studio or on a tennis court; Physical fitness consultation; Physical fitness conditioning
`classes; Physical fitness instruction; Physical fitness studio services, namely, providing exercise classes, body sculpting classes, and group fitness
`classes; Physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; Physical fitness training services
`using pilates apparatuses, pilates training techniques and tennis techniques to improve core strength, endurance and match play for tennis players
`in order to prevent tennis-related injuries and assist in the rehabilitation process of injured tennis players; Physical fitness training of individuals
`and groups; Providing a website featuring information on exercise and fitness; Providing an interactive website featuring information and links
`relating to fitness; Providing an interactive website featuring information and links relating to fitness; Providing an on-line computer database
`featuring information regarding exercise and fitness before and after pregnancy; Providing an on-line computer database featuring information
`regarding exercise and fitness; Providing assistance, personal training and physical fitness consultation to individuals to help them make physical
`fitness, strength, conditioning, and exercise improvement in their daily living; Providing classes, workshops, seminars and camps in the fields of
`fitness, exercise, boxing, kick boxing and mixed martial arts; Providing facilities for physical fitness training; Providing fitness and exercise
`facilities; Providing general fitness and mixed martial arts facilities that require memberships and are focused in the fields of general fitness,
`exercise, and mixed martial arts; Providing physical fitness and exercise service, namely, indoor cycling and yoga instruction; Personal training
`services in pysical fitness
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 07/07/2011 and first used in commerce at least as early as 07/07/2011 , and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Providing fitness and exercise in gym setting facilities: Providing assistance in personal training and physical
`fitness. Consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living;
`Physical fitness instruction, physical fitness consultation, personal training services and consultancy; Education services, namely, providing
`classes, seminars and workshops in the field of fitness, wellness and exercise; Gym management services, fitness studios in gyms with members,
`developing fitness routines consisting of video instruction, photos and live demonstrations; Conducting fitness classes; Consulting services in the
`fields of fitness and exercise; Education services, namely, providing panel discussions in the field of exercise, fitness, wellness, and personal
`development; Educational services, namely, developing and conducting workouts, workshops, presentations, retreats, and personal training in
`right-brain fitness; Educational services, namely, providing cognitive fitness programs for seniors; Golf fitness instruction; Personal fitness
`training services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities combined with resistance and
`flexibility training; Personal fitness training services, namely, providing cross-training instruction to tennis players, based on pilates methods and
`tennis techniques, in a studio or on a tennis court; Physical fitness consultation; Physical fitness conditioning classes; Physical fitness instruction;
`Physical fitness studio services, namely, providing exercise classes, body sculpting classes, and group fitness classes; Physical fitness studio
`services, namely, providing group exercise instruction, equipment, and facilities; Physical fitness training services using pilates apparatuses,
`pilates training techniques and tennis techniques to improve core strength, endurance and match play for tennis players in order to prevent
`tennis-related injuries and assist in the rehabilitation process of injured tennis players; Physical fitness training of individuals and groups;
`Providing a website featuring information on exercise and fitness; Providing an interactive website featuring information and links relating to
`fitness; Providing an interactive website featuring information and links relating to fitness; Providing an on-line computer database featuring
`information regarding exercise and fitness before and after pregnancy; Providing an on-line computer database featuring information regarding
`exercise and fitness; Providing assistance, personal training and physical fitness consultation to individuals to help them make physical fitness,
`strength, conditioning, and exercise improvement in their daily living; Providing classes, workshops, seminars and camps in the fields of fitness,
`exercise, boxing, kick boxing and mixed martial arts; Providing facilities for physical fitness training; Providing fitness and exercise facilities;
`Providing general fitness and mixed martial arts facilities that require memberships and are focused in the fields of general fitness, exercise, and
`mixed martial arts; Providing physical fitness and exercise service, namely, indoor cycling and yoga instruction; Personal training services in
`pysical fitness
`
`Class 041 for Physical fitness instruction, physical fitness consultation, personal training services and consultancy
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 07/07/2011 and first used in commerce at least as early as 07/07/2011 , and is now in use in such commerce.
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use FITNESS apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`
`

`

`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 05/12/2014
`Signatory's Name: Antonio Vann
`Signatory's Position: Authorized US Attorney, VA Bar Member
`
`Signatory's Phone Number: 7037777319
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86013681
`Internet Transmission Date: Mon May 12 23:51:24 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201405122351248910
`54-86013681-5007b865bd8b6452c98383f2dd19
`687ef3180ab95b961e6ee7b79a44cdfcd575-N/A
`-N/A-20140512234627034126
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`Filed:
`
`Trademark Atty:
`Word Mark:
`
`Iconic Fitness, LLC
`86013681
`
`July 18, 2013
`Dezmona J. Mizelle-Howard
`ICONIC FITNESS
`
`RESPONSE TO NOVEMBER 12, 2013 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on November 12, 2013. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for ICONIC FITNESS is in condition for allowance to publication.
`
`Potential Section 2(d) — Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
`
`reserves all rights to provide a detailed and more descriptive response if Examining Attorney
`
`Dezmona J. Mizelle-Howard raises a Section 2(d) refiasal in a subsequent Office Action.
`
`Applicanfs Word Mark
`ICONIC FITNESS
`
`Cited Registered Marks
`ICONIC — 4038085
`
`O25: Shirt; Shoes; Hats; Pants; Jackets;
`Sweatshirts; Pullovers; Beanies; Wristbands;
`Headbands; Socks; Underwear; A-shirts
`
`041: Physical fitness instruction, physical fitness
`consultation, personal training services and
`consultancy
`
`041: Dance events; Dance instruction; Dance
`instruction for children; Dance schools; Dance
`
`studios; Education services, namely, providing
`classes and instruction in the field of dance;
`Entertainment and education services in the
`
`nature of live dance and musical performances;
`Entertainment in the nature of dance
`
`performances.
`
`ICONic Boyz - 4090921
`
`041: Dance events; Dance instruction; Dance
`instruction for children; Dance schools; Dance
`
`

`

`studios; Education services, namely, providing
`classes and instruction in the field of dance;
`Entertainment and education services in the
`
`nature of live dance and musical performances;
`Entertainment in the nature of dance
`
`performances
`
`ICONIC - 3773570
`
`016: leather personal organizers
`
`018: Leather goods, namely, handbags, shoulder
`bags, card cases, purses, coin pouches, zipper
`pouches, cosmetic cases sold empty, photo
`pouches with key chains.
`
`025: Shoes
`
`ICONIC — 4017681
`
`025: Men's and women's golf and athletic
`apparel, namely, golf pants, skirts, shorts, Warm-
`up pants and sweatshirts, vests, t-shirts and
`collared knit shirts, golf caps, knit caps and
`visors, Wind and Water-resistant sports jackets.
`
`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, ICONIC FITNESS, “because
`
`of a likelihood of confusion with four registered marks. “[T]he question of confusion is related not to
`
`the nature of the mark but to its effect ‘When applied to the goods of the applicant.” In re E. I. du Pont
`
`de Nemours & Co., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United States
`
`Court of Customs and Patent Appeals listed thirteen factors to weigh in the likelihood of confusion
`
`analysis and stated that all of the factors must be considered “when of record.” Id. at 1361. The
`
`Examining Attorney has indicated that similarity of the marks, similarity of the goods and/or services,
`
`and similarity of trade channels of the goods and /or services weigh against the registration of
`
`Applicant’s mark. However, Applicant respectfully asserts that when all factors are Weighed, the
`
`

`

`majority weighs against the existence of a likelihood of confusion.
`
`(I) Similarity of Conflicting Designations
`
`The first factor is the similarity of the conflicting designations, including in their appearance, sound,
`
`meaning or connotation, and commercial impression. In re E. I. du Pont de Nemours & Ca, 476 F.2d
`
`1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two marks is not
`
`dispositive of a confusing similarity between the marks when the marks give off different commercial
`
`expressions. See Kellogg Ca. V. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991). When
`
`Applicant’s mark (ICONIC FITNESS), and the cited registrations are compared; the marks give off
`
`different commercial expressions. The cited registrations either have no additional elements or have
`
`elements that narrow the commercial impression. The Applicant’s mark includes the additional term
`
`“FITNESS.” This additional term suggests that the goods are fitness related, thus giving off a
`
`commercial expression that is fitness related. The Examining Attorney has not provided evidence that
`
`the cited registrations give off a physical fitness related commercial impression. When the Applicant’s
`
`mark is viewed in its entirety, it is very difficult to establish that there is an association between
`
`Applicant’s physical fitness training and fitness related clothing and the goods offered under the cited
`
`registrations.
`
`Visually, the phrase ICONIC FITNESS is easily distinguished from the cited registration. Applicant’s
`
`mark is a uniquely styled “word & design trademark.” The applied for mark (with its style and design
`
`elements) is significantly different from the cited registrations. The two marks give distinctly different
`
`commercial impressions and visual representations. The Applicant’s mark incorporates design
`
`elements and the cited registrations do not. Applicant’s mark does not cover the same goods as the
`
`

`

`cited registrant. These differences create a substantially different commercial impression. For at least
`
`these reasons, Applicant asserts that the mark ICONIC FITNESS is significantly different than the
`
`cited registrations. This factor weighs in Applicant’s favor.
`
`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as described
`
`in an application or registration or in connection with a prior use of the mark. In re E. I. du Pom‘ de
`
`Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s class 025
`
`goods are for clothing, and two of the cited registrations also cover clothing. However, App1icant’s
`
`clothing is uniquely directed at physical fitness and personal training.
`
`Applicant’s class 041 services are not similar to the cited registrations because none of the services in
`
`the cited registrations identify personal training or physical fitness training in the applications.
`
`Therefore, this factor weighs in Applicant’s favor.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely—to—continue trade channels. In re
`
`E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`
`against a finding of a likelihood of confiision. The Applicant maintains exclusive control over how his
`
`products and services reach trade channels. Applicant asserts that it is unlikely that consumers for the
`
`goods/services offered under the cited registrations will have a mistaken interaction with his service.
`
`The Examining Attorney also has not identified the trade channels for the cited registrations. It being
`
`unclear as to the Registrants’ trade channels, this factor either weighs against the existence of a
`
`

`

`likelihood of confusion or is neutral.
`
`(4) Conditions Upon Sales Are Made
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse V.
`
`careful). Id. Consumers interested in Applicant’s goods/ services will contact the Applicant directly, as
`
`it offers direct personal services. Furtherrnore, its goods are directly offered as an extension of the
`
`Applicant’s class 41 services. Applicant controls and is directly engaged in the sale of its
`
`goods/services. Applicant’s involvement I sales is so direct, confusion amongst the cited registrations
`
`is unlikely. This factor weighs heavily against a likelihood of confusion between these two marks.
`
`(5) Fame of the Prior Mark
`
`The fifth factor is the fame of the prior mark (e. g., sales, advertising, length of use, etc). 101. There is
`
`no evidence that the prior marks are famous, this factor Weighs against a likelihood of confusion.
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`(6) Number and Nature ofSimilar Marks in Use on Similar Goods
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`The sixth factor is the number and nature of similar marks in use in connection with similar services.
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`Id. In this case, the USPTO has not made any assertions as to the number and nature of marks used in
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`connection with classes 025 or 041. However, different owners own some of the cited registrations,
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`and yet they have “iconic” related trademarks that are capable of existing without confilsion.
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`Applicant asserts that it should be afforded the same opportunity to register as the cited registrations.
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`Therefore, Applicant asserts that this factor also weighs in his favor.
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`(7) Nature and Extent ofAny Actual Confusion
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`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists that
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`any consumer has been confused by the use of these two marks. Consequently, Applicant asserts that
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`this factor weighs in his favor or is at least neutral in the likelihood of confilsion analysis.
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`(8) Length of Time During and Conditions under which There Has Been Concurrent Use Without
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`Evidence ofActual Confusion
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`The eighth factor is the length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion. Id. Applicant has enjoyed use of its mark since July 7, 2011
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`without any evidence of actual confusion. Therefore, this factor also weighs in Applicant’s favor.
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`(9) Variety of Goods on which a Mark Is or Is Not Used
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`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family” mark,
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`product mark). In re E. I du Pont de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. None of the
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`marks are a part of a family of trademark. Consequently, this factor is neutral.
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`(10) Market Interface Between Applicant and the Owner of a Prior Mark
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`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark. Id. In
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`this case, there has been no interface between the Applicant and the Registrant, and therefore this
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`factor is also neutral.
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`(11) Extent to which Applicant has a Right to Exclude Others from Use of its Mark on its Goods
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`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its mark
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`on its goods. Id. Having enjoyed use of its mark since 2011, Applicant respectfully asserts it has a
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`right to exclude others from using a similar trademark in connection with fitness/personal training
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`clothing and services. This factor weighs in Applicant’s favor.
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`(12) Extent ofPotential Confusion
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`The twelfth factor is the extent of potential confusion, ie., whether de minimis or substantial. Ia’.
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`Because (1) Applicant maintains direct control over the goods and services offered under the
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`trademark, (2) the services and goods are directed at physical fitness and personal training, and (3)
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`Applicant has maintained use of the mark since 2011 Without actual confusion, the potential for
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`confusion is de minimis and Weighs heavily against a likelihood of confusion.
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`(13) Whether There Are any Other Established Facts Probative ofthe Effect of Use
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`The thirteenth factor looks to whether there are any other established facts probative of the effect of
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`use. Applicant reserves all rights to provide a detailed and more descriptive response on this factor if
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`the USPTO should raise a Section 2(d) refusal in a subsequent Office Action. Applicant further
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`asserts that the USPTO has found a mark capable of registration, even in cases Where the marks are
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`nearly identical and are covered under the same classification. Furthermore, courts have long held that
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`the addition of different terms to a common element appreciably reduces the likelihood of COI1filSi0I1
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`between two marks. See US Trust v. U.S. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D. Mass 2002)
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`(UNITED STATES TRUST COMPANY not confusingly similar to UNITED STATES TRUST
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`COMPANY OF BOSTON, both for financial services); Colgate Palmolive Co. v. Carter-Wallace,
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`Inc., 432 F.2d 1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confiising
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`similar to PEAK); Servo Corp. Am. v. Servo—Tek Prod. Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353
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`(C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions,