Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA690708
`ESTTA Tracking number:
`08/20/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91222837
`Defendant
`Mustapha, Donny
`MUSTAPHA, DONNY
`166 Middlesex St
`North Chelmsford, MA 01863-2028
`
`boxer2323@gmail.com
`Answer
`Donald Mustapha
`boxer2323@gmail.com
`/ s / Donald G. Mustapha
`08/20/2015
`(Exhibit A ) Report and Recommendation on CrossFit's Motion to Modify Prelim-
`inary Injunction.pdf(116157 bytes )
`( Exhibit B) Memorandum and Order Massachusetts District Judge Dennnis
`Saylor.pdf(24773 bytes )
`( Exhibit C ) CrossFit's Motion for Summary Judgement.pdf(540288 bytes )
`Donals G. Mustapha's , Motion to Suspend Proceeding' s Pursuant to Trade-
`mark Rule 2.117(a).pdf(105447 bytes )
`
`

`
`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 1 of 35
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`CIVIL ACTION
`NO. 13-11498-FDS
`
`))
`
`)
`)
`)
`)
`)
`
`))
`
`)
`
`CROSSFIT, INC.,
`
`
`
`Plaintiff,
`
`v.
`
`DONNY MUSTAPHA, individually,
`and d/b/a CHELMSFORD SPORTS
`CLUB,
`
`Defendants.
`
`REPORT AND RECOMMENDATION ON CROSSFIT’S
`MOTION TO MODIFY PRELIMINARY INJUNCTION
`
`DEIN, U.S.M.J.
`
`August 4, 2014
`
`I. INTRODUCTION
`
`The plaintiff, CrossFit, Inc. (“CrossFit”), has brought this action against Donny
`
`Mustapha (“Mustapha”), individually and doing business as the Chelmsford Sports Club
`
`(“CSC”), claiming that the defendants infringed upon its registered “CrossFit” trade-
`
`mark.1 Specifically, CrossFit alleges that it has developed a unique fitness training
`
`regimen, which has become the principal strength and conditioning program for
`
`thousands of professional and amateur athletes throughout the world, and that it licenses
`
`1 Throughout this Report and Recommendation, this court has used the term “trademark”
`to encompass both trademarks and service marks. “Trademarks serve to identify and distinguish
`goods; service marks perform the same function for services.” Boston Duck Tours, LP v. Super
`Duck Tours, LLC, 531 F.3d 1, 12 n.8 (1st Cir. 2008). Although the CrossFit mark at issue is
`technically a service mark, the distinction makes no difference in the context of this case.
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 2 of 35
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`its “CrossFit” mark to entities and individuals who have engaged in specialized training
`
`and have entered into written affiliation agreements defining the terms and conditions of
`
`their relationship with the plaintiff. It further alleges that CSC, which is owned by
`
`Mustapha, has been using the “CrossFit” trademark to advertise and promote its own
`
`fitness services even though it is not a CrossFit affiliate and has never been licensed or
`
`otherwise authorized to use the plaintiff’s intellectual property. By its complaint,
`
`CrossFit has asserted claims against the defendants, pursuant to the Lanham Act, for
`
`trademark infringement, false designation of origin, and trademark dilution. It has also
`
`asserted a state law claim against the defendants for unfair and deceptive trade practices
`
`under Mass. Gen. Laws ch. 93A.2 Although the defendants were represented by counsel
`
`at the start of the litigation, they are presently proceeding pro se.
`
`Pursuant to a Preliminary Injunction Order that was issued by the Court on
`
`September 30, 2013 and modified on April 25, 2014, Mustapha and CSC are currently
`
`enjoined from using the “CrossFit” trademark, including any substantially similar
`
`variation thereof, in connection with the advertising or provision of fitness training
`
`services. The matter is presently before the court on “CrossFit’s Motion to Modify
`
`Preliminary Injunction” (Docket No. 88), by which CrossFit is seeking to expand the
`
`scope of the preliminary injunction so that Mustapha and CSC also are:
`
`2 Mustapha asserted counterclaims against CrossFit and third-party claims against various
`other parties. However, all of those claims have been dismissed. (See Docket No. 145).
`
`-2-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 3 of 35
`
`(a)
`
`(b)
`
`(c)
`
`required to delete all references to, and restrained and enjoined from
`using, “CrossBox,” “CrossKick,” “CrossTrain,” and “Fitness isn’t a
`sport its [sic] a lifestyle” or substantially similar variations;
`
`required to replace all references to “Fitness” with “fitness” when
`adjacent to “Cross” or any word containing the prefix “Cross”; and
`
`restrained and enjoined from using “Fitness” when adjacent to
`“Cross” or any word containing the prefix “Cross.”
`
`After careful consideration of the parties’ written submissions and their oral arguments,
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`this court recommends to the District Judge to whom this case is assigned that CrossFit’s
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`motion to modify the preliminary injunction be ALLOWED IN PART and DENIED IN
`
`PART. Specifically, this court recommends that the defendants (1) be required to delete
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`any remaining references to, and be restrained and enjoined from using, “Fitness isn’t a
`
`sport its a lifestyle;” (2) be required to replace all references to “Fitness” with “fitness”
`
`when adjacent to “Cross”; and (3) be restrained and enjoined from using the word
`
`“Fitness” when adjacent to “Cross.” However, because this court finds that the factual
`
`circumstances presented at this stage in the litigation do not support CrossFit’s remaining
`
`requests for relief, this court recommends that the plaintiff’s motion for a modification
`
`otherwise be denied.
`
`-3-
`
`

`
`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 4 of 35
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`II. FACTUAL BACKGROUND3
`
`On September 30, 2013, the Court issued a Preliminary Injunction Order enjoining
`
`Mustapha and CSC from using or displaying the “Protected Mark,” which was defined to
`
`mean “‘CROSSFIT,’ including any substantially similar variation, such as ‘CrossFit’ or
`
`‘Cross Fit.’” (Docket No. 28 ¶ 1(b)). Specifically, the Order provided in pertinent part:
`
`2.
`
`3.
`
`4.
`
`Defendants shall not use or display the Protected Mark in connection
`with the provision of Fitness Training Services.4
`
`Defendants shall not use or display the Protected Mark in any
`Advertisement5 for Fitness Training Services.
`
`Notwithstanding the foregoing, Defendants may use or display the
`Protected Mark if legally permissible as a nominative fair use. If
`Defendants intend to make a nominative fair use of the Protected
`Mark in connection with the provision of Fitness Training Services,
`they shall provide a copy of each such proposed use to counsel for
`
`3 The facts set forth herein are derived from the pleadings filed and orders issued in this
`case, as well as from the following evidence submitted by the parties at various stages in the
`litigation: (1) the Affidavit of Mojda Najafi (“Najafi Aff.”) (Docket No. 14); (2) portions of the
`Affidavit of Donny Mustapha (“Mustapha Aff.”) (Docket No. 19) that have not been stricken by
`the court; (3) the Affidavit of Zachary C. Kleinsasser (“Kleinsasser Aff. I”) (Docket No. 34);
`(4) the Affidavit of Zachary C. Kleinsasser in Support of CrossFit’s Motion to Modify Preliminary
`Injunction (“Kleinsasser Aff. II”) (Docket No. 90); and (5) Exhibit A to the defendants’
`Memorandum in Opposition of Plaintiff’s Modification of the Preliminary Injunction (“Def. Ex.
`A”) (Docket No. 92).
`
`4 The phrase “Fitness Training Services” is defined in the Preliminary Injunction Order to
`mean “any training, coaching, or education services concerning physical fitness or exercise.”
`(Docket No. 28 ¶ 1(c)).
`
`5 The term “Advertisement” is defined in the Preliminary Injunction Order to mean “any
`advertisement, flyer, brochure, billboard, display, direct mailing, television commercial, radio
`commercial, or similar communication of marketing, advertising, sales, or promotional informa-
`tion or materials directed to the general public or segments of the general public.” (Docket No.
`28 ¶ 1(d)).
`
`-4-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 5 of 35
`
`plaintiff no less than ten days before the actual use, so that the
`parties may have an opportunity to negotiate a resolution of any
`dispute or, if necessary, to contest the legality of the use before this
`Court.
`
`(Id. ¶¶ 2-4).
`
`Changes to the Description of Defendants’ Services
`
`Following the issuance of the Preliminary Injunction Order, the defendants, who
`
`were then represented by counsel, sought approval from CrossFit to make certain
`
`nominative fair uses of the “CrossFit” mark. (Kleinsasser Aff. I, Ex. N). In addition, the
`
`defendants asked the plaintiff whether it would object to three proposed versions of a new
`
`logo. (Id., Ex. Q at 1-2). CrossFit objected to some but not all of the defendants’
`
`proposals. In particular, it is undisputed that CrossFit had no objection to the defendants’
`
`proposal to use the following text online:
`
`5.
`
`6.
`
`CrossFit, Inc. offers open-source workout routines at
`www.crossfit.com, posting a workout of the day (“WOD”) every day
`on its homepage. Many CrossFit affiliates get their daily workouts
`from the same source. Though we’re not a CrossFit affiliate and we
`make no claim that we’re offering the CrossFit brand, we get many
`of our daily workout routines from the same source. Many people
`do the same WOD on their own at home, but the workouts posted on
`www.crossfit.com may be dangerous without the assistance of a
`fitness professional. We offer educated coaching and can create a
`scalable version of the daily workouts for your individual fitness
`needs.
`
`As you may know, CrossFit, Inc. is suing the Chelmsford Sports
`Club, alleging that we infringed its trademark for the term
`CROSSFIT®, an allegation we strenuously deny. On September 27,
`2013, CrossFit, Inc. argued for a preliminary injunction to restrain us
`from referring to our cross-training fitness services as “Crossfit
`Style.” The court issued the injunction but ordered that, while the
`
`-5-
`
`

`
`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 6 of 35
`
`lawsuit continues, we can use the CROSSFIT® trademark to the
`extent legally permissible as a nominative fair use, and mandated
`that CrossFit, Inc. and [CSC] consult to negotiate any disputes over
`our proposed nominative fair use references to the CROSSFIT®
`trademark.
`
`To avoid any confusion: the Chelmsford Sports Club is not affiliated
`with, or endorsed or sponsored by, CrossFit, Inc. We have chosen to
`temporarily rename our cross-training fitness services as the
`“Crosstrain Sports Club” to convey exactly what we offer our
`members. While we continue to litigate the dispute with CrossFit,
`Inc. in court, we remain committed to providing you quality cross-
`training fitness services that fit your individual needs.
`
`(Id., Exs. N & O). It is also undisputed that CrossFit had no objection to the defendants’
`
`proposal to use the phrase “CROSSTRAIN SPORTS CLUB” or to the defendants’
`
`proposal to use the following logo:
`
`(See Kleinsasser Aff. I, Exs. N,
`
`O & Q at 1-2; Def. Ex.A).
`
`Nevertheless, as part of its present motion, CrossFit is seeking to preclude the defendants’
`
`use of the term “CrossTrain,” including their use of the phrase “CrossTrain Fitness.”
`
`By October 24, 2013, the defendants had changed the name of their facility to
`
`“CrossTrain Sports Club,” and had begun to describe their fitness training services as
`
`“CrossTrain Fitness.” (Kleinsasser Aff. II ¶ 3). They also had renamed their fitness
`
`classes “CrossBox,” “CrossKick,” and “CrossTrain,” and had started using the slogan
`
`“Fitness isn’t a sport its a lifestyle” (collectively, the “New Marks”). (See id., Exs. B, C,
`
`-6-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 7 of 35
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`E, F & J). While the New Marks did not incorporate the term “CrossFit,” the plaintiff
`
`argues that the terms “CrossBox,” “CrossKick,” and “CrossTrain” look and sound similar
`
`to its trademark, and that the defendants’ slogan is similar to CrossFit’s tagline “Fitness
`
`as a Sport.” It also contends that the manner in which the defendants have used the New
`
`Marks is so closely tied to CrossFit that it creates a likelihood of consumer confusion and
`
`constitutes trademark infringement. For example, but without limitation, the plaintiff
`
`contends that the defendants’ description of their CrossBox and CrossKick classes are
`
`similar to CrossFit’s description of its training classes, and that the defendants have
`
`improperly promoted their fitness training classes by comparing them directly to CrossFit.
`
`CrossFit’s Motion for Contempt
`
`On November 6, 2013, CrossFit filed a Motion for a Finding of Contempt and
`
`Modification of Preliminary Injunction. (Docket No. 32). In support of its motion
`
`CrossFit argued, inter alia, that the defendants had violated the Preliminary Injunction
`
`Order by continuing to use its trademark to advertise their fitness training services online.
`
`In particular, the plaintiff asserted that the defendants had repeatedly used the term
`
`“CrossFit” in a manner that did not constitute a nominative fair use of the trademark, and
`
`had improperly inserted links from CSC’s website to the plaintiff’s website without
`
`permission. (See Docket No. 33 at 1-2, 4-11). Moreover, although the plaintiff had
`
`approved the defendants’ use of the phrase “CROSSTRAIN SPORTS CLUB,” and a logo
`
`that included the term “CrossTrain,” it argued that the defendants’ decision to re-name
`
`their facility the “CrossTrain Sports Club,” and to offer fitness services called
`
`-7-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 8 of 35
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`“CrossBox” and “CrossKick,” amounted to an attempt “to benefit from the goodwill
`
`associated with the capitalization and appearance of the CrossFit name.” (Id. at 10).
`
`Accordingly, CrossFit requested that the court hold the defendants in civil contempt of
`
`the Preliminary Injunction Order. It also requested that the court expand the scope of the
`
`injunction to restrain the defendants from using the CrossFit trademark in any manner,
`
`and from using the terms “CrossTrain,” “CrossBox,” and “CrossKick,” “or variations
`
`thereof, which are stylized identically to the CrossFit mark.” (Id. at 20). The defendants
`
`opposed the motion and asserted that they had acted in good faith in an effort to comply
`
`with the terms of the injunction. (See Docket Nos. 40 & 41).
`
`On December 20, 2013, this court held a hearing on CrossFit’s motion for a
`
`finding of contempt and modification of the Preliminary Injunction Order. At this court’s
`
`urging, the parties agreed to engage in a process aimed at resolving their differences as to
`
`the contents of CSC’s website and CrossFit’s motion for contempt. (See Docket No. 49;
`
`Docket No. 81 at 1). Despite their efforts to carry out that process, the parties’ negotia-
`
`tions proved unsuccessful. Consequently, CrossFit requested that its motion for contempt
`
`be allowed, and that the Preliminary Injunction Order be modified to preclude the defen-
`
`dants’ use of the term “CrossFit.” (Docket No. 81 at 14). In addition, CrossFit filed the
`
`present Motion to Modify Preliminary Injunction by which it is seeking to enjoin the
`
`defendants from using any of the New Marks, or from using the term “Fitness” when
`
`adjacent to “Cross” or any word containing the prefix “Cross,” on the grounds that such
`
`-8-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 9 of 35
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`usage will cause consumers to confuse CSC’s services with CrossFit, and that such marks
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`do not maintain a “safe distance” from the CrossFit mark.
`
`On April 24, 2014, the parties appeared at another hearing before this court.
`
`During the course of the hearing, the defendants agreed, without admitting liability, to
`
`refrain from using the term “CrossFit” in any manner whatsoever pending the outcome of
`
`the litigation. On April 25, 2014, in accordance with the defendants’ agreement, this
`
`court ordered that the Preliminary Injunction Order be modified to eliminate paragraph 4
`
`relating to the nominative fair use of the plaintiff’s trademark. (Docket No. 122 ¶ 1(a)).
`
`Consequently, the Preliminary Injunction Order now precludes the defendants from using
`
`or displaying the term “CROSSFIT,” or any substantially similar variation, such as
`
`“Cross-Fit” or “Cross Fit,” in connection with the provision of any Fitness Training
`
`Services or in any Advertisement for Fitness Training Services. Because this change
`
`resolved the principal issues raised by the plaintiff’s contempt motion, this court also
`
`denied that motion without prejudice to renewal in the event the defendants fail to adhere
`
`to the terms of the Preliminary Injunction Order as amended. (Id. ¶ 1(b)).
`
`The Remaining Dispute
`
`While the defendants’ agreement resolved the parties’ dispute regarding the
`
`defendants’ pretrial use of the term “CrossFit,” it did not resolve CrossFit’s request for an
`
`order precluding the defendants from using the New Marks or the term “Fitness” to the
`
`extent it adjoins “Cross” or any word containing the prefix “Cross.” Thus, on May 7,
`
`2014, the parties appeared for a hearing on CrossFit’s present Motion to Modify
`
`-9-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 10 of 35
`
`Preliminary Injunction. During the hearing, Mustapha stated that the defendants were no
`
`longer using, and did not intend to use, the slogan “Fitness isn’t a sport its a lifestyle.”
`
`Moreover, he has not disputed that the term “CrossFitness” is substantially similar to
`
`“CrossFit,” or that the defendants should be restrained from using that term pending the
`
`outcome of the litigation. (See Def. Opp. Mem. (Docket No. 92) at 2). Accordingly, this
`
`court finds that the Preliminary Injunction Order should be modified to preclude the
`
`defendants’ use of the slogan, as well as their use of the term “Fitness” with a capital “F”
`
`when adjacent to the word “Cross.”
`
`Because the defendants have not agreed to refrain from using the phrase
`
`“CrossTrain Fitness” to describe their fitness training services, or from using the terms
`
`“CrossTrain,” “CrossBox,” and “CrossKick” to describe the class offerings at CSC, the
`
`parties continue to dispute whether the defendants should be enjoined from such use
`
`pending the outcome of the case. Subsequent attempts at mediation proved unsuccessful,
`
`so that this issue is ripe for decision. Based on the present status of the record, and for all
`
`the reasons described herein, this court finds that the evidence is insufficient to warrant a
`
`preliminary injunction with respect to those Marks.
`
`Additional factual details relevant to this court’s analysis are set forth below where
`
`appropriate.
`
`III. ANALYSIS
`
`A.
`
`Preliminary Injunction Standard of Review
`
`-10-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 11 of 35
`
`When confronted with a motion for a preliminary injunction, the court is required
`
`to weigh the following four factors: “‘(1) the plaintiff’s likelihood of success on the
`
`merits; (2) the potential for irreparable harm in the absence of an injunction; (3) whether
`
`issuing an injunction will burden the defendants less than denying an injunction would
`
`burden the plaintiff[]; and (4) the effect, if any, on the public interest.’” Swarovski
`
`Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44, 48 (1st Cir. 2013) (quoting
`
`United States v. Weikert, 504 F.3d 1, 5 (1st Cir. 2007)). The burden is on the moving
`
`party to establish that consideration of these factors supports the issuance of a
`
`preliminary injunction. See Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542,
`
`544 (1st Cir. 1995) (explaining that district court may grant a preliminary injunction
`
`when plaintiff shows that four factors have been satisfied). Moreover, “trial courts have
`
`wide discretion in making judgments regarding the appropriateness [or inappropriateness]
`
`of preliminary injunctive relief.” Charlesbank Equity Fund II v. Blinds To Go, Inc., 370
`
`F.3d 151, 162 (1st Cir. 2004).
`
`“[W]hile each of the four factors is important, ‘the cynosure of this four-part test is
`
`more often than not the movant’s likelihood of success on the merits.’” Swarovski
`
`Aktiengesellschaft, 704 F.3d at 48 (quoting Borinquen Biscuit Corp. v. M.V. Trading
`
`Corp., 443 F.3d 112, 115 (1st Cir. 2006)). “The importance of that inquiry is magnified in
`
`trademark cases because the resolution of the other three factors will depend in large part
`
`on whether the movant is likely to succeed in establishing infringement.” Borinquen
`
`Biscuit Corp., 443 F.3d at 115. In addition, the “emphasis on likelihood of success is
`
`-11-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 12 of 35
`
`fully consistent with the tenet that, as a matter of public policy, trademarks should be
`
`protected against infringing uses.” Id.
`
`In light of the defendants’ agreement not to use the phrase “Fitness isn’t a sport its
`
`a lifestyle,” and their decision not to dispute the plaintiff’s request to restrain their use of
`
`“CrossFitness,” this court will confine its analysis to consideration as to whether the
`
`defendants should be preliminarily enjoined from using the terms “CrossBox,”
`
`“CrossKick,” or “CrossTrain,” including the phrase “CrossTrain Fitness.” For the
`
`reasons detailed below, this court concludes that the record does not support such relief.
`
`B.
`
`Likelihood of Success on the Merits
`
`“Before a party can succeed in an infringement action, it must demonstrate both
`
`that its mark merits protection and that the allegedly infringing use is likely to result in
`
`consumer confusion.” Id. at 116. The First Circuit has “interpreted ‘likely confusion’ to
`
`mean ‘more than the theoretical possibility of confusion.’” Boston Duck Tours, LP v.
`
`Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008) (quoting Int’l Ass’n of Machinists
`
`& Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 200 (1st
`
`Cir. 1996)). Therefore, the trademark holder must show that the allegedly infringing
`
`conduct creates “‘a likelihood of confounding an appreciable number of reasonably
`
`prudent purchasers exercising ordinary care.’” Id. (quoting Int’l Ass’n of Machinists &
`
`Aerospace Workers, AFL-CIO, 103 F.3d at 201). This court finds that while CrossFit has
`
`presented undisputed evidence showing that its trademark merits protection, it has not
`
`-12-
`
`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 13 of 35
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`demonstrated that it is likely to be able to establish a likelihood of confusion, as opposed
`
`to the possibility of confusion, arising from the defendants’ use of the New Marks.
`
`i.
`
`Eligibility for Trademark Protection
`
`The record demonstrates that CrossFit developed its fitness training regimen in the
`
`1980s, and that it has worked diligently over the last three decades to promote its
`
`CrossFit brand. (Najafi Aff. ¶¶ 2-3). It also demonstrates that CrossFit owns 16 federally
`
`registered trademarks for the word mark “CrossFit,” including a service mark for fitness
`
`training that was registered with the United States Patent and Trademark Office on
`
`October 18, 2005. (Id. ¶¶ 5-6 & Ex. A thereto). “Under the Lanham Act, registration of
`
`a mark is prima facie evidence of ‘the registrant’s exclusive right to use the registered
`
`mark in commerce on or in connection with the goods or services specified in the
`
`registration.’” Black Dog Tavern Co., Inc. v. Hall, 823 F. Supp. 48, 53 (D. Mass. 1993)
`
`(quoting 15 U.S.C. § 1115(a)). Where, as here, the owner has been using the registered
`
`mark continuously for at least “five consecutive years subsequent to the date of
`
`registration[,]” the right becomes incontestable, and “the registration is deemed to be
`
`conclusive evidence of the registrant’s exclusive right to use the mark.” Id. at 53 n.5.
`
`See also 15 U.S.C. § 1065. Therefore, CrossFit has shown that its mark is entitled to
`
`trademark protection.
`
`ii.
`
`Likelihood of Confusion
`
`“Once the determination has been made that a term is entitled to trademark
`
`protection, the pivotal inquiry becomes whether the allegedly infringing mark is likely to
`
`-13-
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`

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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 14 of 35
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`cause consumer confusion.” Equine Techs., Inc., 68 F.3d at 546 (quoting Boston Beer
`
`Co. Ltd. P’ship v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 180 (1st Cir. 1993)). In the
`
`First Circuit, this determination requires consideration of the following eight factors:
`
`(1) the similarity of the marks; (2) the similarity of the goods [or
`services]; (3) the relationship between the parties’ channels of trade;
`(4) the relationship between the parties’ advertising; (5) the classes
`of prospective purchasers; (6) evidence of actual confusion; (7) the
`defendant’s intent in adopting its mark; and (8) the strength of the
`plaintiff’s mark.
`
`Borinquen Biscuit Corp., 443 F.3d at 120 (quoting Astra Pharm. Prods., Inc. v. Beckman
`
`Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983)). “A proper analysis takes
`
`cognizance of all eight factors but assigns no single factor dispositive weight.” Id.
`
`Factor 1: Similarity of the Marks
`
`“Marks may be recognized as similar based on their appearance, sound and
`
`meaning.” Black Dog Tavern Co., Inc., 823 F. Supp. at 54. However, the question
`
`whether the parties’ marks are sufficiently similar to cause a likelihood of confusion must
`
`be assessed “on the basis of the total effect of the designation, rather than a comparison
`
`of individual features.” Id. (quoting Pignons S.A. de Mecanique de Precision v. Polaroid
`
`Corp., 657 F.2d 482, 487 (1st Cir. 1981)). “It is improper to ‘dissect’ a mark into
`
`infringing and noninfringing parts: ‘words are not to be compared syllable by syllable,
`
`vowel by vowel and consonant by consonant.’” Maxwell Shoe Co., Inc. v. Edelman Shoe
`
`Co., LLC, Civil Action No. 04-CV-10694-RCL, 2004 WL 6225744, at *2 (D. Mass. Aug.
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`5, 2004) (slip op.) (quoting Coca-Cola Co. v. Snow Crest Beverages, 162 F.2d 280 (1st
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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 15 of 35
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`Cir. 1947)). “Furthermore, similarity is not an isolated concept, to be observed in a
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`vacuum where the two potentially similar marks are looked at side by side and the
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`likelihood of confusion assessed; rather, courts should consider the totality of the
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`circumstances surrounding the use of the marks[.]” Stop & Shop Supermarket Co. v. Big
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`Y Foods, Inc., 943 F. Supp. 120, 124 (D. Mass. 1996). In other words, “[s]imilarity of
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`the marks must be considered in light of what occurs in the marketplace, taking into
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`account the circumstances surrounding the purchase of the goods or services.” Id.
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`(quoting Calamari Fisheries, Inc. v. The Village Catch, Inc., 698 F. Supp. 994, 1009
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`(D. Mass. 1988)) (additional quotations and citation omitted). After consideration of the
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`circumstances surrounding the defendants’ current use of the New Marks, as well as the
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`total effect of those Marks based on their appearance, sound, and meaning, this court
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`finds that the plaintiff has not shown that the first factor relating to confusion weighs in
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`its favor.
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`In considering whether the parties’ marks are similar, this court finds it significant
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`that the defendants have abandoned their efforts to make nominative fair use of the plain-
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`tiff’s trademark and are now enjoined from using “CrossFit” in any manner that is related
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`to their fitness training services pending the outcome of the litigation. The record indi-
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`cates that at the time the plaintiff’s motion to modify the preliminary injunction was filed,
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`the “CrossFit” trademark appeared repeatedly on both CSC’s website and in its online
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`promotional materials. (Kleinsasser Aff. I ¶¶ 15, 18; Kleinsasser Aff. II, Exs. B, J, K &
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`L). In particular, CrossFit has submitted evidence showing that prior to the expansion of
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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 16 of 35
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`the injunction to preclude all use of the term “CrossFit,” or any substantially similar
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`variation thereof, the defendants had taken the disclaimer that CrossFit had approved as a
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`nominative fair use of its mark and copied it onto every page of CSC’s website, Facebook
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`page and blog. (Kleinsasser Aff. I ¶ 26). It also presented evidence showing that CSC’s
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`Facebook page contained numerous links to CrossFit’s website, and that the defendants
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`were comparing their CrossTrain, CrossBox and CrossKick fitness classes to CrossFit
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`training in their online promotional materials. (See id. ¶¶ 16-17; Kleinsasser Aff. II, Exs.
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`J, K & L). By agreeing to remove all references to CrossFit from their website and other
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`online locations, and to be restrained from using “CrossFit” pending the completion of
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`the case, the defendants have altered the context in which consumers view the New
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`Marks so as to eliminate any direct associations between the New Marks and the
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`plaintiff’s registered trademark. As a consequence, CrossFit can no longer rely on the
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`defendants’ references to “CrossFit” in order to show that the New Marks are closely tied
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`to its own.
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`This court also finds it significant that the defendants are no longer using the
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`slogan “Fitness isn’t a sport its a lifestyle.” The plaintiff has presented evidence showing
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`that at the time it filed its motion to modify, the defendants were using the following
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`logo:
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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 17 of 35
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`(See Kleinsasser Aff. II, Ex. B at 1, 5-7). The defendants’ decision to abandon their use
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`of the slogan “Fitness isn’t a sport its a lifestyle” eliminates any potential that consumers
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`viewing their logo could confuse that slogan with CrossFit’s tagline “Fitness as a Sport”
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`or mistake CSC as an affiliate of CrossFit due to the defendants’ use of the slogan.
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`Therefore, the relevant question becomes whether reasonable consumers viewing the
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`terms “CrossBox,” “CrossTrain,” and “CrossKick” in the context of the defendants’
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`website and online promotional materials, without any references to CrossFit or to
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`“Fitness isn’t a sport its a lifestyle,” are likely to confuse those terms with the CrossFit
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`brand.
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`The plaintiff argues that the CrossFit mark and CSC’s New Marks are sufficiently
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`similar on their face to establish a likelihood of confusion. (Pl. Mem. (Docket No. 89) at
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`11). This court disagrees. There can be no dispute that the plaintiff’s mark and the New
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`Marks do share some common characteristics, which render them similar in both their
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`design and appearance. Like the plaintiff’s “CrossFit” mark, the New Marks combine the
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`word “Cross” with a capital “C” with a second word relating to fitness that is also
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`capitalized. Nevertheless, CrossFit has not shown that the parties’ written marks share
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`similar sounds or meanings. Although CrossFit’s mark and each of the New Marks
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`contain a common prefix, and “CrossTrain Fitness” incorporates the term “Fit” as well as
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`“Cross,” the parties’ marks remain phonetically distinct. Compare Star Fin. Servs., Inc. v.
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`Aastar Mortg. Corp., 89 F.3d 5, 10 (1st Cir. 1996) (“a jury could supportably find that the
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`total effect of [the designations ‘Star Mortgage’ and ‘Aastar Mortgage’] – including
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`Case 1:13-cv-11498-FDS Document 154 Filed 08/04/14 Page 18 of 35
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`similarity in pronunciation – was to create a probability of confusion”). Furthermore,
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`while both of the parties’ marks contain terms relating to fitness, the words “train,”
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`“box,” and “kick,” even when linked with “cross,” conjure up different images and
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`connote different meanings than the plaintiff’s mark. See Black Dog Tavern Co., Inc.,
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`823 F. Supp. at 55 (finding that the plaintiff’s mark, “The Black Dog,” and the
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`defendant’s marks, “The Black Hog” and “The Dead Dog,” “connote very different
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`meanings” that are unlikely to cause confusion). In fact, CrossFit has expressly
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`acknowledged that “cross-train” is a generic term “meaning exercising various body parts
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`(as opposed to just one),” and that the defendants’ use of “CrossTrain” is so general that
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`it “does not differentiate [their] exercise services from any other company’s exercise
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`services.” (Kleinsasser Aff. I, Ex. R at 1). Accordingly, it has not shown that consumers
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`viewing the term “CrossTrain” are likely to associate it, much less confuse it, with
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`“CrossFit.” Similarly, the defendants’ use of the phrase “CrossTrain Fitness” to describe
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`their services does not alter the generic nature of “CrossTrain.” It merely clarifies the
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`fact that cross-training is a type of fitness training, and that CSC’s business involves
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`exercise.
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`While t