| To: | FLY- A FITNESS REVOLUTION, LLC (mike@meemlegal.com) |
| Subject: | U.S. Trademark Application Serial No. 88233359 - FLY - N/A |
| Sent: | October 07, 2019 05:09:43 PM |
| Sent As: | ecom120@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88233359
Mark: FLY
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Correspondence Address: |
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Applicant: FLY- A FITNESS REVOLUTION, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: October 07, 2019
This Office action is in response to applicant’s communication filed on September 13, 2019.
In a previous Office action dated March 14, 2019, the trademark examining attorney refused registration of the applied-for mark, “FLY”, based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, namely, the mark in U.S. Registration No. 5346398 (“FLY”). In addition, applicant was provided information regarding pending U.S. Application Serial No. 87927356 (“FLY”), which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.
In response, applicant argued that there is no likelihood of confusion between the applied-for mark, “FLY” (plus design) for use in connection with “Physical fitness studio services, namely, providing exercise classes, body sculpting classes, and group fitness classes; Physical fitness training of individuals and groups; Providing fitness and exercise facilities” and the cited registered mark “FLY” (plus design) for use in connection with “Providing fitness and exercise studio services, namely, indoor cycling instruction, personal training, exercise classes, and group physical fitness classes; counseling services in the field of exercise” because the marks create significantly different commercial impression and the wording “FLY” is weak or diluted. Specifically, applicant argued that the registered mark conveys the commercial impression of the registrant’s company name “FLYWHEEL SPORTS, INC.” while applicant’s mark creates the commercial impression of wings and relates to the applicant’s prior registration for “WINGS OUT”. Applicant’s arguments have been considered and found unpersuasive.
First, the applied-for mark “FLY” plus the design of two wings inside a shaded circle is similar to the registered mark “FLY” plus the design of an outline of a circle. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In this case, the shared wording “FLY” is the dominant element in each mark because it is the only wording in each mark. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).
The marks are similar because the dominant portions of the marks are identical and the marks convey a similar overall general commercial impression of “engag[ing] in flight.” See attached. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Contrary to applicant’s arguments, the marks do not convey different commercial impressions. The marks are both “FLY” (plus different designs) and create a commercial impression of engaging in flight. There is no evidence that consumers would associate applicant’s mark with its prior registration or that applicant’s mark conveys the commercial impression of “wings out.” Applicant’s assertion that registrant’s mark conveys the commercial impression of registrant’s company name merely indicates that registrant’s mark is functioning as a service mark to identify and distinguish registrant’s services from those of others and to indicate the source of registrant’s services.
With respect to the two third-party registrations applicant submitted, evidence comprising only a small number of third-party registrations for similar marks with similar services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording “FLY” is weak or diluted.
In short, the trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark, the cited registered mark, and the mark in the cited prior-pending application, should it register. Thus, this application is suspended and Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark inU.S. Registration No. 5346398 (“FLY”) is continued and maintained.
All previous arguments and evidence are incorporated by reference herein.
The application is suspended for the reason specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below was sent previously.
- U.S. Application Serial No. 87927356 ("FLY")
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Jacquelyn A. Jones/
Jacquelyn A. Jones
Examining Attorney
Law Office 120
571-272-4432
jacquelyn.jones@gmail.com
