Suspension Letter

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi. The Office will conduct periodic status checks to determine if suspension remains appropriate.

Action on this application is suspended pending the disposition of:

- Application Serial No(s). 79021838

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq. A copy of information relevant to this pending application(s) was sent previously.

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension. TMEP §716.03. Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.

Applicant’s Arguments

Applicant argued in the correspondence received May 27, 2010 “that product diversity obviates the likelihood of confusion” and that “it has not been established that the respective services are marketed in a way that they would be encountered in a situation that would create the incorrect assumption that they originate from the same source.” The examining attorney is not persuaded.

First, it is noted that with regard to the referenced application, no refusal has been made and therefore it is not yet necessary that the examining attorney establish that the respective service are marketed through the same channels of trade.

Here, applicant’ and registrant’s marks are very similar in sound, appearance, and meaning. If the marks of the respective parties are very similar, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

Applicant’s current identification of services is “a physical training routine under supervision of a trainer in the use of exercise apparatus to promote muscular development, strength and well being.”

The referenced application includes the services “entertainment and amusement services arranged in hotels; arranging of exhibitions, seminars and conferences; arranging professional workshops and training courses” as well as “gymnasium services provided in hotels.” These services are broad enough to include seminars, conferences, workshops and training courses in the field of physical training and/or exercise. Further, the services of applicant are presumably provided in a gymnasium facility, and the referenced applicant provides gymnasium services. These gymnasium services and those of applicant would be provided to the same consumers, namely, those that take part in physical exercise.

Accordingly, it is maintained that the services of applicant and the prior applicant are not diverse as applicant contends, because they are provided in the same facilities, the subject matter of the training is presumed to overlap, and the consumers of the services are the same. The reference is therefore maintained and continued and this application is returned to suspension.

The following refusal(s)/requirement(s) is/are continued and maintained:

Likelihood of Confusion

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 2911280. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. This refusal is maintained and continued.

Activities are Not Registrable Services According to Identification Only

Registration was refused because the activities recited in the identification of services are not registrable services as contemplated by the Trademark Act. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1301.01 et seq. This refusal is maintained and continued.

Identification of Services

The requirement for an acceptable identification is maintained and continued.

Sara N. Benjamin

/Sara N. Benjamin/

Examining Attorney

Law Office 110

571.272.8847

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.