| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
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| SERIAL NUMBER | 77523564 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 105 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| MARK SECTION (no change) | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| ARGUMENT(S) | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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APPLICANT'S FIRST RESPONSE TO OFFICE
This is a response to an Office Action dated November 3, 2008 on behalf of our client, Logical Kinetics LLC (the "Applicant"). In the Office Action, the Examining Attorney refused registration of Applicant's mark for the reason that it is likely to be confused with the mark HEALTHYLOGIC and design, Reg. No. 2743457 (the "HEALTHYLOGIC Mark").
REMARKS By Office Action dated November 3, 2008, the Examining Attorney refused registration on the Principal Register of the mark LOGIC, Serial Number 77/523564, in International Class 041 for "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." The Examiner based refusal to register on the ground that Applicant's mark was likely to be confused with the HEALTHYLOGIC Mark registered by HealthyLogic, LLC ("HealthyLogic") in Class 41 for "instructional services in the field of health and fitness; providing physical exercise programs on a global computer network." The Applicant respectfully requests that the Examining Attorney reconsider the refusal to register the Applicant's mark. For the reasons set forth below, Applicant disagrees with the finding that its mark is likely to be confused with the HEALTHYLOGIC Mark. I. The Test for Likelihood of Confusion The principal issue in this case is whether Applicant's physical training and physical fitness services offered under the LOGIC mark are sufficiently related to the computerized instructional services offered by HealthyLogic under the HEALTHYLOGIC Mark to give rise to a likelihood of confusion. Applicant is a provider of health and fitness services. It uses its LOGIC mark in connection with the custom-designed physical training and physical fitness services it provides in-person for its clients at its boutique studio located in New York City. See Exhibit A. HealthyLogic's mark is used in connection with its web-based provision of health and fitness information. See Exhibit B.[1] In determining whether there is a likelihood of confusion between marks, all circumstances surrounding the sale of the relevant goods and services must be considered. Indus. Nucleonic Corp. v. Hinde Eng'g Co., 475 F.2d 1197, 177 U.S.P.Q. 386 (C.C.P.A. 1973). "If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely." TMEP § 1207.01(a)(i), citing Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q.2d 1156 (Trademark Tr. & App. Bd., July 11, 1990). As discussed below, various factors identified in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)[2] to evaluate likelihood of confusion weigh in favor of Applicant's position, whereas none of these factors favors a finding of confusion with the HEALTHYLOGIC Mark. When applying these factors, it is important to keep in mind that "[t]he meaning or connotation of a mark must be determined in relationship to the named goods or services. Even marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." TMEP §1207.01(b)(v) (internal citations omitted). Applicant respectfully submits that factors below are the most relevant to demonstrate that confusion between the marks at issue is not likely. II. There is No Likelihood of Confusion Between Applicant's Mark And the HEALTHYLOGIC Mark.
As shown below, there is no likelihood of confusion between Applicant's and HealthyLogic's mark because: (i) the marks are dissimilar and co-exist peacefully as registrations, (ii) the services provided by Applicant and HealthyLogic are dissimilar, (iii) the target markets for Applicant's and HealthyLogic's services differ, (iv) the established, likely-to-continue trade channels for Applicant's and HealthyLogic's services are different, (v) consumers of Applicant's services are sophisticated and engage in a deliberative selection process before selecting Applicant's services, and (vi) there are no known instances of reported or actual confusion. A. The Marks at Issue are Dissimilar. Applicant's mark and the HEALTHYLOGIC Mark are not similar when the marks are compared as a whole. Moreover, the fact that various marks co-exist with marks containing the exact same word prefaced by the word "HEALTHY" indicates that the inclusion of "HEALTHY" in front of a mark renders the marks sufficiently dissimilar for registration purposes. Finally, the peaceful co-existence of various other marks using the work "LOGIC" in International Class 41, and for related goods and services in other classes, shows that common use of "LOGIC" does not render them "similar" for purposes of determining likelihood of confusion. Although Applicant's and HealthyLogic's marks both contain the word "LOGIC," the marks must be considered in their entireties as to their similarity or dissimilarity. Additionally, "[m]arks are not 'similar' for purposes of assessing likelihood of confusion simply because they contain an identical or nearly identical word." Meija and Assocs. Inc. v. Int'l Bus. Machs. Corp., 920 F.Supp. 540, 547 (S.D.N.Y. 1996). Furthermore, "[e]ven marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." TMEP §1207.01(b)(i) (internal citations omitted). Overall commercial impression is also influenced by the different accompanying word or design of each mark. The HEALTHYLOGIC Mark is immediately distinguishable from Applicant's mark by virtue of the stylized "i" in HEALTHYLOGIC, which is designed to look like a person with outstretched arms. Applicant's mark, on the other hand, is simply block text with no design element. Even consumers who only retained a general impression of each mark would not focus on the word LOGIC. Rather they would remember the overall distinguishable image of each mark. Consequently, the fact that Applicant's and HealthyLogic's marks both contain the word LOGIC does not weigh against registration of Applicant's mark. Moreover, the respective marks must be viewed as they are encountered by consumers, in their entireties, and may not be dissected in performing such an analysis. In re Nat'l Data Corp., 753 F. 2d 1056, 1058, 224 U.S.P.Q. 749, 750-51 (Fed. Cir. 1985). The addition of the word "HEALTHY" to the HEALTHYLOGIC Mark leads to marks so markedly difference in appearance that, when combined with stylized "i" in the HEALTHYLOGIC Mark and the fact that the products referred to by the marks are so different, there is little likelihood that consumers would confuse the two marks. A search of trademark office registration yields numerous examples of the coexistence registrations, within the same international class, in which the same word is found, both as a mark by itself and as preceded by the word "HEALTHY." In addition to Applicant's mark and The HEALTHYLOGIC Mark discussed herein, among the many references found were the following:
The peaceful co-existence of these sample pairs of marks in the same class provide strong evidence that the addition of the word "HEALTHY" to a mark renders the two marks dissimilar with respect to evaluating likelihood of confusion. In addition, among the many tests used to determine the likelihood of confusion between trademarks is the relative strength of the marks. See In re E.I. DuPont, 476 F.2d at 1361. In considering the term LOGIC, which is the common part of the marks at issue, it is readily apparent from the numerous registrations already of record containing this word that the word LOGIC alone is not subject to broad exclusivity. In addition to the marks discussed herein, among the references found for health- and fitness-related products and services were the following:
Thus, the common element of the two marks at issue here - the word "LOGIC" - is an insufficient basis for finding likelihood of confusion between the two marks. The common use of the word LOGIC or derivatives thereof in connection with health- and fitness-related products and services illustrates that confusion among the marks at issue is highly unlikely as consumers are accustomed to looking to other aspects of the mark to distinguish the source of these goods or services. See, e.g., In re Guardian Int'l Inc., 2002 WL 54582 (Trademark Tr. & App. Bd., January 14, 2002) (Noting the frequent use of the term "guardian" in the security industry and customers' propensity to distinguish among different marks containing that word); In re Broadway Chicken Inc., 38 U.S.P.Q.2d 1559, 1566, 1996 WL 253841 *6 (Trademark Tr. & App. Bd., March 26, 1996) ("Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field."). Thus, common use of LOGIC in the two marks is not enough to create a likelihood of confusion between marks that are otherwise distinguishable. Additionally, Applicant respectfully notes that a notice of allowance was granted for the marks LABELOGIC and FITLOGIX despite the existence of the HEALTHYLOGIC Mark. The HEALTHYLOGIC Mark itself was granted registration in light of the pre-existing registrations for HEALTHLOGIC, LOGIC NUTRITION, and STUDIO BODY LOGIC. Such allowance and registration further evidences that marks containing "LOGIC" are not confusingly similar to each other or to Applicant's mark. Applicant respectfully submits that if these applications and registrations are allowed to peacefully co-exist on the Register, its own application should be also be allowed. This factor favors a finding of no likely confusion. B. Applicant's Services are Dissimilar from those of Healthylogic. Based upon an investigation of the services offered by Applicant and HealthyLogic and a comparison of the description of services in the HEALTHYLOGIC Mark and in the instant application, Applicant respectfully submits that because the differences in the services offered under the marks are so substantial that confusion is highly unlikely. A closely related service is one which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by the trademark owner. Cf. Newport Pacific Corp., and Mo's Enters. Inc. v. Moe's Southwest Grill, LLC, and Wraps of Argyle Square, LLC., Slip Op., 2006 WL 2811905 (No. 05-995-KI, September 28, 2006). "Numerous cases, however, illustrate that even when two products or services fall within the same general field, it does not mean that the two products or services are sufficiently similar to create a likelihood of confusion. Meaningful differences between the products and services are often cited as a factor tending to negate reverse confusion, even when the products are superficially within the same category." Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F.Supp. 1084, 1095 (D.N.J. 1997). On one hand, Applicant uses its LOGIC mark in connection with the highly personalized health and fitness services provided in-person at Applicant's health and fitness studio. Depending on the client, these services may include strength and flexibility training, enhancement of the client's abilities in specific sports, recovery from existing injury, or general health and wellness. See Exhibit A. Applicant personally and individually assesses each client's physical condition, needs and goals. Applicant then develops a individualized health, fitness and lifestyle plan for each client and works on a one-on-one basis with clients, sometimes for many years, as they progress through their short-term and long-term programs. On the other hand, HealthyLogic uses the HEATHYLOGIC Mark in connection with the health and fitness information it provides through its website. See Exhibit B. Its customers subscribe to its online service and obtain access to generic information and videos about physical training and physical fitness. All of its users have access to all of the information on the site and any "personalization" is based only on the customer's self assessment and self stated fitness goals. HealthyLogic does not offer personalized, individual assessment of its customers physical condition and its websites do not offer the kind of individualized programs offered by Applicant or any of the other services offered to the clients who frequent Applicant's exercise studio. Because of this clear distinction between the products and services offered by the two companies, the likelihood of consumers confusing them is extremely small. C. Applicant's Target Market for its Services is Dissimilar
Applicant's services are provided to entirely different customers from those of HealthyLogic. Applicant's customers consist of professionals, athletes and performance artists in and around New York City who require and can afford Applicant's individualized services, which currently cost approximately $140 per hour. The consumers of HealthyLogic's services, on the other hand, are generally those people with a general interest in fitness who subscribe to HealthyLogic's low-cost web service which, based on last available information on its now inactive web site, cost $11.95 per month. See Exhibit B. Even identical marks used on related products and services do not involve a likelihood of confusion when the purchasers and trade channels are sufficiently distinct. See, e.g., The Trs. of Columbia Univ. in the City of New York v. Columbia/HCA Healthcare Corp., 43 U.S.P.Q.2d 1083 (S.D.N.Y. 1997) (Applicant's COLUMBIA for medical and health care services found not likely to cause confusion with trademark COLUMBIA used for medical school and affiliation with teaching hospitals including Columbia - Presbyterian Medical Center; Welch Allyn Inc. v. Tyco Int'l Servs. AG, 63 U.S.P.Q.2d 1508 (N.D.N.Y. 2002) (Applicant's TYCO for medical products found not likely to cause confusion with trademark TYCOS used for medical diagnostic instruments). Here, the differences in target markets, based on cost of services and geographic location, favors a finding of no likely confusion. D. The Established, Likely-to-Continue Trade Channels for Applicant's Services Differ from those of Healthylogic.
Just as they target dissimilar consumer bases, Applicant and HealthyLogic distribute their services through completely different channels of trade. On one hand, Applicant's LOGIC assessment and individualized training services are provided to clients in-person at Applicant's studio. See Exhibit A. On the other hand, HealthyLogic does not offer any in-person services or a place at which its customers can train. Its HEALTHYLOGIC services consist of the information that its customers download from its website. See Exhibit B. Given these different channels of trade, the likelihood that any of Applicant's consumers would mistake Applicant's product or services for that of HealthyLogic is remote. Similarly, the likelihood that any of HealthyLogic's customers would confuse Applicant's product and services for that of HealthyLogic is also remote. Accordingly, this factor favors a finding of no likely confusion. E. Consumers of Applicant's Services are Sophisticated and Undertake a Deliberate Selection Process before Selecting Applicant's Services.
Because of the highly individualized services Applicant provides, and also because of the relative cost of the services, consumers of Applicant's services are likely to be sophisticated and engage in a careful and deliberate selection process before selecting Applicant for their fitness training purposes. This care and sophistication mitigates against a finding of likely confusion. The degree of care employed by a customer when making decisions as to what type of goods they need helps determine the likelihood of confusion. See TMEP § 1207.01; J.C. Penney Co., Inc. v. Arctic Enters., Inc., 375 F.Supp. 913, 183 U.S.P.Q. 342 (D.C. Minn. 1974). "The greater the care and attention [by the purchaser], the less the likelihood of confusion." Fisons Horticulture, Inc. v. Vigoro Indus., 30 F.3d 466, 476 n.12, 31 U.S.P.Q.2d 1592 (3d Cir. 1994). The degree of care employed by Applicant's and HealthyLogic's consumers when purchasing fitness services is therefore highly relevant when conducting a likelihood of confusion analysis. Applicant's customers are high-end consumers of physical fitness services. The athletes, professionals and performers who seek out Applicant's services require them to continue to perform at the highest levels in their professions and all of Applicant's clients pay a high premium for the level of personal service they receive. Therefore, "this is not a case where 'the [goods] are relatively inexpensive and consumers cannot be expected to examine the [origin of the services] carefully,'" Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1230, 200 U.S.P.Q. 421 (3d Cir. 1978) as quoted in Versa Products Co. Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 33 U.S.P.Q.2d 1801, 1819 (3d Cir. 1995); instead, this is a situation where sophisticated consumers carefully determine the properties of the goods (including the source) before selecting the best provider for their needs. Applicant's clients must purposefully and thoughtfully seek out personalized health and fitness services, arrange for consultation, and travel to Applicant's studio for fitness analysis and training. They would not confuse HealthyLogic's online information with the kind of training provided by Applicant. See Exhibit A. HealthyLogic's users, on the other hand, seek out relatively inexpensive online information to help them meet their health and fitness goals. The vast majority would never entertain the idea of travelling to New York City to train in Applicant's studio and would immediately know that these are not the services for which they are searching. See Exhibit B. Sophisticated consumers are less likely to be confused by similar marks. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046, 24 U.S.P.Q.2d 1161 (2d Cir. 1992) ("Generally, the more sophisticated and careful the average consumer of a product is, the less likely it is that similarities in trade dress or trade marks will result in confusion concerning the source or sponsorship of the product."); Versa, 33 U.S.P.Q.2d at 1819-1820 (no confusion found where purchasers are sophisticated, knowledgeable persons familiar with [goods] in question). Given this level of scrutiny and the disparate nature of the services in question, it is extremely unlikely that any of Applicant's clients or HealthyLogic's customers would mistakenly believe that Applicant's services are the same as HealthyLogic's or that HealthyLogic's services are the same as Applicant's. The likelihood of consumer confusion with respect to Applicant's mark and HealthyLogic's mark therefore is remote. F. To Date There Has Been No Actual Confusion Between the Marks. Applicant's mark and the HEALTHYLOGIC Mark have, in fact, been peacefully coexisting in the marketplace without any known or reported instances of actual confusion. This should be considered as further evidence that there is no likelihood of confusion. III. Conclusion In light of the foregoing factors, Applicant respectfully submits that this Application is now in condition for allowance and should be published for opposition at this time. [1] Information about HealthyLogic's products and services have been retrieved from the internet archive at http://www.archive.org. HealthyLogic apparently no longer operates a website. [2] The Court in E.I. DuPont DeNemours & Co. listed thirteen factors to be considered by trademark examiners. These factors are: (1) similarity of the marks, (2) similarity of goods or services, (3) similarity of established, like-to-continue trade channels, (4) the conditions under which and buyers to whom sales are made; (5) the fame of the prior mark, (6) the number and nature of similar marks in use on similar gods, (7) the nature and extent of any actual confusion, (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion, (9) the variety of goods on which a mark is or is not used, (10) the market interface between applicant and the owner of the prior mark, (11) the extent to which applicant has a right to exclude others from use of its mark on the goods, (12) the extent of potential confusion, and (13) any other established fact provative of the effect of use. Id., 476 F.2d at 1361. |
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| EVIDENCE SECTION | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| EVIDENCE FILE NAME(S) | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| ORIGINAL PDF FILE | evi_38112155211-114940777_._LOGIC_-_Exhibit_A__B0879118_.PDF | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT6\IMAGEOUT6\775\235\77523564\xml1\ROA0002.JPG | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| \\TICRS\EXPORT6\IMAGEOUT6\775\235\77523564\xml1\ROA0003.JPG | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| \\TICRS\EXPORT6\IMAGEOUT6\775\235\77523564\xml1\ROA0004.JPG | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| \\TICRS\EXPORT6\IMAGEOUT6\775\235\77523564\xml1\ROA0005.JPG | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| ORIGINAL PDF FILE | evi_38112155211-114940777_._LOGIC_-_Exhibit_B__B0879119_.PDF | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT6\IMAGEOUT6\775\235\77523564\xml1\ROA0006.JPG | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - Applicant's Personalized Health and Fitness Services Exhibit B - Web page: HealthyLogic's Web-based Fitness Information Services | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATURE SECTION | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DECLARATION SIGNATURE | /Mitchell C. Stein/ | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Mitchell C. Stein | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of Record | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 05/01/2009 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| RESPONSE SIGNATURE | /Mitchell C. Stein/ | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Mitchell C. Stein | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of Record | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 05/01/2009 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SUBMIT DATE | Fri May 01 12:07:00 EDT 2009 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20090501120700617977-7752 3564-430599a3e6bf4b1e47b5 db87c6107ee980-N/A-N/A-20 090501114940777387 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
APPLICANT'S FIRST RESPONSE TO OFFICE
ACTION DATED NOVEMBER 3, 2008
This is a response to an Office Action dated November 3, 2008 on behalf of our client, Logical Kinetics LLC (the "Applicant"). In the Office Action, the Examining Attorney refused registration of Applicant's mark for the reason that it is likely to be confused with the mark HEALTHYLOGIC and design, Reg. No. 2743457 (the "HEALTHYLOGIC Mark").
REMARKS
By Office Action dated November 3, 2008, the Examining Attorney refused registration on the Principal Register of the mark LOGIC, Serial Number 77/523564, in International Class 041 for "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." The Examiner based refusal to register on the ground that Applicant's mark was likely to be confused with the HEALTHYLOGIC Mark registered by HealthyLogic, LLC ("HealthyLogic") in Class 41 for "instructional services in the field of health and fitness; providing physical exercise programs on a global computer network." The Applicant respectfully requests that the Examining Attorney reconsider the refusal to register the Applicant's mark. For the reasons set forth below, Applicant disagrees with the finding that its mark is likely to be confused with the HEALTHYLOGIC Mark.
I. The Test for Likelihood of Confusion
The principal issue in this case is whether Applicant's physical training and physical fitness services offered under the LOGIC mark are sufficiently related to the computerized instructional services offered by HealthyLogic under the HEALTHYLOGIC Mark to give rise to a likelihood of confusion. Applicant is a provider of health and fitness services. It uses its LOGIC mark in connection with the custom-designed physical training and physical fitness services it provides in-person for its clients at its boutique studio located in New York City. See Exhibit A. HealthyLogic's mark is used in connection with its web-based provision of health and fitness information. See Exhibit B.[1]
In determining whether there is a likelihood of confusion between marks, all circumstances surrounding the sale of the relevant goods and services must be considered. Indus. Nucleonic Corp. v. Hinde Eng'g Co., 475 F.2d 1197, 177 U.S.P.Q. 386 (C.C.P.A. 1973). "If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely." TMEP § 1207.01(a)(i), citing Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q.2d 1156 (Trademark Tr. & App. Bd., July 11, 1990).
As discussed below, various factors identified in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)[2] to evaluate likelihood of confusion weigh in favor of Applicant's position, whereas none of these factors favors a finding of confusion with the HEALTHYLOGIC Mark. When applying these factors, it is important to keep in mind that "[t]he meaning or connotation of a mark must be determined in relationship to the named goods or services. Even marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." TMEP §1207.01(b)(v) (internal citations omitted). Applicant respectfully submits that factors below are the most relevant to demonstrate that confusion between the marks at issue is not likely.
II. There is No Likelihood of Confusion Between Applicant's Mark
And the HEALTHYLOGIC Mark.
As shown below, there is no likelihood of confusion between Applicant's and HealthyLogic's mark because: (i) the marks are dissimilar and co-exist peacefully as registrations, (ii) the services provided by Applicant and HealthyLogic are dissimilar, (iii) the target markets for Applicant's and HealthyLogic's services differ, (iv) the established, likely-to-continue trade channels for Applicant's and HealthyLogic's services are different, (v) consumers of Applicant's services are sophisticated and engage in a deliberative selection process before selecting Applicant's services, and (vi) there are no known instances of reported or actual confusion.
A. The Marks at Issue are Dissimilar.
Applicant's mark and the HEALTHYLOGIC Mark are not similar when the marks are compared as a whole. Moreover, the fact that various marks co-exist with marks containing the exact same word prefaced by the word "HEALTHY" indicates that the inclusion of "HEALTHY" in front of a mark renders the marks sufficiently dissimilar for registration purposes. Finally, the peaceful co-existence of various other marks using the work "LOGIC" in International Class 41, and for related goods and services in other classes, shows that common use of "LOGIC" does not render them "similar" for purposes of determining likelihood of confusion.
Although Applicant's and HealthyLogic's marks both contain the word "LOGIC," the marks must be considered in their entireties as to their similarity or dissimilarity. Additionally, "[m]arks are not 'similar' for purposes of assessing likelihood of confusion simply because they contain an identical or nearly identical word." Meija and Assocs. Inc. v. Int'l Bus. Machs. Corp., 920 F.Supp. 540, 547 (S.D.N.Y. 1996). Furthermore, "[e]ven marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." TMEP §1207.01(b)(i) (internal citations omitted). Overall commercial impression is also influenced by the different accompanying word or design of each mark.
The HEALTHYLOGIC Mark is immediately distinguishable from Applicant's mark by virtue of the stylized "i" in HEALTHYLOGIC, which is designed to look like a person with outstretched arms. Applicant's mark, on the other hand, is simply block text with no design element. Even consumers who only retained a general impression of each mark would not focus on the word LOGIC. Rather they would remember the overall distinguishable image of each mark. Consequently, the fact that Applicant's and HealthyLogic's marks both contain the word LOGIC does not weigh against registration of Applicant's mark.
Moreover, the respective marks must be viewed as they are encountered by consumers, in their entireties, and may not be dissected in performing such an analysis. In re Nat'l Data Corp., 753 F. 2d 1056, 1058, 224 U.S.P.Q. 749, 750-51 (Fed. Cir. 1985). The addition of the word "HEALTHY" to the HEALTHYLOGIC Mark leads to marks so markedly difference in appearance that, when combined with stylized "i" in the HEALTHYLOGIC Mark and the fact that the products referred to by the marks are so different, there is little likelihood that consumers would confuse the two marks.
A search of trademark office registration yields numerous examples of the coexistence registrations, within the same international class, in which the same word is found, both as a mark by itself and as preceded by the word "HEALTHY." In addition to Applicant's mark and The HEALTHYLOGIC Mark discussed herein, among the many references found were the following:
|
Trademark |
Reg. Number |
Goods/Services |
|
HEALTHY SLEEPER |
3236489 |
IC 020: Pillows and mattress toppers. |
|
SLEEPER |
0268994 |
IC 020: Mattresses for beds. |
|
|
|
|
|
HEALTHY FOUNDATIONS |
3345467 |
IC 036: Insurance services, namely, administration of consumer directed pre-paid health plans, health savings accounts, health reimbursement programs, and flexible spending accounts for individuals and employers; providing information to plan customers regarding health benefit plan options and benefit account information via a global computer network. |
|
FOUNDATIONS |
3341516 |
IC 036: Insurance related services, namely, underwriting and writing in the field of life insurance. |
|
|
|
|
|
HEALTHY RADIANCE |
3459603 |
IC 003: Dentifrices, cosmetic tooth whitener preparations, gel, cream and pastes. |
|
RADIANCE |
2923132 |
IC 003: Dental care preparation; namely, toothpaste. |
|
|
|
|
|
HEALTHY NATURALS |
3396299 |
IC 031: Foodstuffs for animals. |
|
NATURALS |
2683239 |
IC 018: Pet treats derived from the body parts of domesticated animals. |
|
|
|
|
|
HEALTHY CURLS |
3265946 |
IC 003: Hair shampoo and hair conditioner. |
|
CURLS |
3307008 |
IC 003: Beauty and hair care products namely, shampoos, conditioners, lotions and creams. |
|
|
|
|
|
HEALTHY HARVEST |
3239485 |
IC 031: Living plants of all varieties, namely, fresh vegetables and herbs. |
|
HARVEST |
1386987 |
IC 031: Fresh cut ornamental plants, namely flowers and ferns. |
|
|
|
|
|
HEALTHY START |
2621569 |
IC 042: Providing information in the field of prenatal care to pregnant women. |
|
START |
2232947 |
IC 042: Medical services and consultation relating to the fields of gynecology, female endocrinology, fertility and human reproduction. |
The peaceful co-existence of these sample pairs of marks in the same class provide strong evidence that the addition of the word "HEALTHY" to a mark renders the two marks dissimilar with respect to evaluating likelihood of confusion.
In addition, among the many tests used to determine the likelihood of confusion between trademarks is the relative strength of the marks. See In re E.I. DuPont, 476 F.2d at 1361. In considering the term LOGIC, which is the common part of the marks at issue, it is readily apparent from the numerous registrations already of record containing this word that the word LOGIC alone is not subject to broad exclusivity. In addition to the marks discussed herein, among the references found for health- and fitness-related products and services were the following:
|
Trademark |
Reg. Number |
Goods/Services |
|
STUDIO BODY LOGIC |
2469639 |
IC 041: Physical fitness instruction. |
|
LABELOGIC |
2902068 |
IC 016: printed instructional, education, and teaching materials in the field of health and nutrition.
IC 041: Education and instruction services, namely conducting classes, seminars, conferences, training and workshops in the field of health and nutrition. |
|
AQUALOGIX |
3060609 |
IC 041: Educational services, namely conducting classes, seminars and workshops in the field of aquatic exercise, fitness and rehabilitation and sports medicine; health club services, namely providing instruction and equipment for use in the field of physical exercise using water resistance. |
|
FITLOGIX |
3349209 |
IC 044: Health care services, namely, conducting weight management programs using web-enable and telephonic weight management tools for providing improved weight management processes, social interaction and participant incentives. |
|
LOGIC NUTRITION |
2632311 |
IC 042: Diet planning and supervision, physical fitness consultation and health consultation. |
|
HEALTHLOGIC |
2625168 |
IC 009: Computer software for database management for use in the fields of health, physical fitness and health management services. |
Thus, the common element of the two marks at issue here - the word "LOGIC" - is an insufficient basis for finding likelihood of confusion between the two marks. The common use of the word LOGIC or derivatives thereof in connection with health- and fitness-related products and services illustrates that confusion among the marks at issue is highly unlikely as consumers are accustomed to looking to other aspects of the mark to distinguish the source of these goods or services. See, e.g., In re Guardian Int'l Inc., 2002 WL 54582 (Trademark Tr. & App. Bd., January 14, 2002) (Noting the frequent use of the term "guardian" in the security industry and customers' propensity to distinguish among different marks containing that word); In re Broadway Chicken Inc., 38 U.S.P.Q.2d 1559, 1566, 1996 WL 253841 *6 (Trademark Tr. & App. Bd., March 26, 1996) ("Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field."). Thus, common use of LOGIC in the two marks is not enough to create a likelihood of confusion between marks that are otherwise distinguishable.
Additionally, Applicant respectfully notes that a notice of allowance was granted for the marks LABELOGIC and FITLOGIX despite the existence of the HEALTHYLOGIC Mark. The HEALTHYLOGIC Mark itself was granted registration in light of the pre-existing registrations for HEALTHLOGIC, LOGIC NUTRITION, and STUDIO BODY LOGIC. Such allowance and registration further evidences that marks containing "LOGIC" are not confusingly similar to each other or to Applicant's mark. Applicant respectfully submits that if these applications and registrations are allowed to peacefully co-exist on the Register, its own application should be also be allowed. This factor favors a finding of no likely confusion.
B. Applicant's Services are Dissimilar from those of Healthylogic.
Based upon an investigation of the services offered by Applicant and HealthyLogic and a comparison of the description of services in the HEALTHYLOGIC Mark and in the instant application, Applicant respectfully submits that because the differences in the services offered under the marks are so substantial that confusion is highly unlikely.
A closely related service is one which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by the trademark owner. Cf. Newport Pacific Corp., and Mo's Enters. Inc. v. Moe's Southwest Grill, LLC, and Wraps of Argyle Square, LLC., Slip Op., 2006 WL 2811905 (No. 05-995-KI, September 28, 2006). "Numerous cases, however, illustrate that even when two products or services fall within the same general field, it does not mean that the two products or services are sufficiently similar to create a likelihood of confusion. Meaningful differences between the products and services are often cited as a factor tending to negate reverse confusion, even when the products are superficially within the same category." Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F.Supp. 1084, 1095 (D.N.J. 1997).
On one hand, Applicant uses its LOGIC mark in connection with the highly personalized health and fitness services provided in-person at Applicant's health and fitness studio. Depending on the client, these services may include strength and flexibility training, enhancement of the client's abilities in specific sports, recovery from existing injury, or general health and wellness. See Exhibit A. Applicant personally and individually assesses each client's physical condition, needs and goals. Applicant then develops a individualized health, fitness and lifestyle plan for each client and works on a one-on-one basis with clients, sometimes for many years, as they progress through their short-term and long-term programs.
On the other hand, HealthyLogic uses the HEATHYLOGIC Mark in connection with the health and fitness information it provides through its website. See Exhibit B. Its customers subscribe to its online service and obtain access to generic information and videos about physical training and physical fitness. All of its users have access to all of the information on the site and any "personalization" is based only on the customer's self assessment and self stated fitness goals. HealthyLogic does not offer personalized, individual assessment of its customers physical condition and its websites do not offer the kind of individualized programs offered by Applicant or any of the other services offered to the clients who frequent Applicant's exercise studio. Because of this clear distinction between the products and services offered by the two companies, the likelihood of consumers confusing them is extremely small.
C. Applicant's Target Market for its Services is Dissimilar
to the Market for HealthyLogic's Services.
Applicant's services are provided to entirely different customers from those of HealthyLogic. Applicant's customers consist of professionals, athletes and performance artists in and around New York City who require and can afford Applicant's individualized services, which currently cost approximately $140 per hour. The consumers of HealthyLogic's services, on the other hand, are generally those people with a general interest in fitness who subscribe to HealthyLogic's low-cost web service which, based on last available information on its now inactive web site, cost $11.95 per month. See Exhibit B.
Even identical marks used on related products and services do not involve a likelihood of confusion when the purchasers and trade channels are sufficiently distinct. See, e.g., The Trs. of Columbia Univ. in the City of New York v. Columbia/HCA Healthcare Corp., 43 U.S.P.Q.2d 1083 (S.D.N.Y. 1997) (Applicant's COLUMBIA for medical and health care services found not likely to cause confusion with trademark COLUMBIA used for medical school and affiliation with teaching hospitals including Columbia - Presbyterian Medical Center; Welch Allyn Inc. v. Tyco Int'l Servs. AG, 63 U.S.P.Q.2d 1508 (N.D.N.Y. 2002) (Applicant's TYCO for medical products found not likely to cause confusion with trademark TYCOS used for medical diagnostic instruments). Here, the differences in target markets, based on cost of services and geographic location, favors a finding of no likely confusion.
D. The Established, Likely-to-Continue Trade Channels for Applicant's
Services Differ from those of Healthylogic.
Just as they target dissimilar consumer bases, Applicant and HealthyLogic distribute their services through completely different channels of trade. On one hand, Applicant's LOGIC assessment and individualized training services are provided to clients in-person at Applicant's studio. See Exhibit A. On the other hand, HealthyLogic does not offer any in-person services or a place at which its customers can train. Its HEALTHYLOGIC services consist of the information that its customers download from its website. See Exhibit B. Given these different channels of trade, the likelihood that any of Applicant's consumers would mistake Applicant's product or services for that of HealthyLogic is remote. Similarly, the likelihood that any of HealthyLogic's customers would confuse Applicant's product and services for that of HealthyLogic is also remote. Accordingly, this factor favors a finding of no likely confusion.
E. Consumers of Applicant's Services are Sophisticated and Undertake
a Deliberate Selection Process before Selecting Applicant's Services.
Because of the highly individualized services Applicant provides, and also because of the relative cost of the services, consumers of Applicant's services are likely to be sophisticated and engage in a careful and deliberate selection process before selecting Applicant for their fitness training purposes. This care and sophistication mitigates against a finding of likely confusion.
The degree of care employed by a customer when making decisions as to what type of goods they need helps determine the likelihood of confusion. See TMEP § 1207.01; J.C. Penney Co., Inc. v. Arctic Enters., Inc., 375 F.Supp. 913, 183 U.S.P.Q. 342 (D.C. Minn. 1974). "The greater the care and attention [by the purchaser], the less the likelihood of confusion." Fisons Horticulture, Inc. v. Vigoro Indus., 30 F.3d 466, 476 n.12, 31 U.S.P.Q.2d 1592 (3d Cir. 1994). The degree of care employed by Applicant's and HealthyLogic's consumers when purchasing fitness services is therefore highly relevant when conducting a likelihood of confusion analysis. Applicant's customers are high-end consumers of physical fitness services. The athletes, professionals and performers who seek out Applicant's services require them to continue to perform at the highest levels in their professions and all of Applicant's clients pay a high premium for the level of personal service they receive. Therefore, "this is not a case where 'the [goods] are relatively inexpensive and consumers cannot be expected to examine the [origin of the services] carefully,'" Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1230, 200 U.S.P.Q. 421 (3d Cir. 1978) as quoted in Versa Products Co. Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 33 U.S.P.Q.2d 1801, 1819 (3d Cir. 1995); instead, this is a situation where sophisticated consumers carefully determine the properties of the goods (including the source) before selecting the best provider for their needs.
Applicant's clients must purposefully and thoughtfully seek out personalized health and fitness services, arrange for consultation, and travel to Applicant's studio for fitness analysis and training. They would not confuse HealthyLogic's online information with the kind of training provided by Applicant. See Exhibit A. HealthyLogic's users, on the other hand, seek out relatively inexpensive online information to help them meet their health and fitness goals. The vast majority would never entertain the idea of travelling to New York City to train in Applicant's studio and would immediately know that these are not the services for which they are searching. See Exhibit B. Sophisticated consumers are less likely to be confused by similar marks. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046, 24 U.S.P.Q.2d 1161 (2d Cir. 1992) ("Generally, the more sophisticated and careful the average consumer of a product is, the less likely it is that similarities in trade dress or trade marks will result in confusion concerning the source or sponsorship of the product."); Versa, 33 U.S.P.Q.2d at 1819-1820 (no confusion found where purchasers are sophisticated, knowledgeable persons familiar with [goods] in question). Given this level of scrutiny and the disparate nature of the services in question, it is extremely unlikely that any of Applicant's clients or HealthyLogic's customers would mistakenly believe that Applicant's services are the same as HealthyLogic's or that HealthyLogic's services are the same as Applicant's. The likelihood of consumer confusion with respect to Applicant's mark and HealthyLogic's mark therefore is remote.
F. To Date There Has Been No Actual Confusion Between the Marks.
Applicant's mark and the HEALTHYLOGIC Mark have, in fact, been peacefully coexisting in the marketplace without any known or reported instances of actual confusion. This should be considered as further evidence that there is no likelihood of confusion.
III. Conclusion
In light of the foregoing factors, Applicant respectfully submits that this Application is now in condition for allowance and should be published for opposition at this time.
[1] Information about HealthyLogic's products and services have been retrieved from the internet archive at http://www.archive.org. HealthyLogic apparently no longer operates a website.
[2] The Court in E.I. DuPont DeNemours & Co. listed thirteen factors to be considered by trademark examiners. These factors are: (1) similarity of the marks, (2) similarity of goods or services, (3) similarity of established, like-to-continue trade channels, (4) the conditions under which and buyers to whom sales are made; (5) the fame of the prior mark, (6) the number and nature of similar marks in use on similar gods, (7) the nature and extent of any actual confusion, (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion, (9) the variety of goods on which a mark is or is not used, (10) the market interface between applicant and the owner of the prior mark, (11) the extent to which applicant has a right to exclude others from use of its mark on the goods, (12) the extent of potential confusion, and (13) any other established fact provative of the effect of use. Id., 476 F.2d at 1361.
