Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1002034
`
`Filing date:
`
`09/16/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91238589
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Health Care Fitness Integrations, LLC
`
`ERIK OSTERRIEDER
`RAO DEBOER OSTERRIEDER PLLC
`2550 GRAY FALLS DRIVE SUITE 200
`HOUSTON, TX 77077
`UNITED STATES
`erik@rdoip.com, sarah@rdoip.com
`281-372-6114
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Papers
`
`Erik J. Osterrieder
`
`erik@rdoip.com
`
`/Erik J. Osterrieder/
`
`09/16/2019
`
`Attachments
`
`reply.pdf(2981413 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`§
`
`AMERICAN COUNCIL ON EXERCISE,
`§
`
`
`Opposer,
`§
`
`
`§ OPPOSITION No. 91238589
`
`v.
`§
`
`
`HEALTH CARE FITNESS INTEGRATION, LLC, § Ser. No. 87/064,536
`
`Applicant/Defendant.
`
` § MEDICAL EXERCISE TRAINERS
`
`
`
`§ Pub. for Opp. Date: June 27, 2017
`
`
`
`APPLICANT’S REPLY TO OPPOSER AMERICAN COUNCIL ON EXERCISE’S
`BRIEF IN RESPONSE TO APPLICANT HEALTH CARE FITNESS INTEGRATIONS,
`LLC’S MOTION FOR SUMMARY JUDGMENT
`
`
` Applicant’s reply to Opposer’s response is brief because Opposer elects not to substantively
`
`respond to Applicant’s brief. For instance, instead of responding with why there is a dispute, e.g.,
`
`MEDICAL EXERCISE TRAINERS is somehow generic or descriptive of t-shirts, Opposer
`
`sidesteps these issues by attempting to blame Applicant’s argument that Opposer’s assertions are
`
`simply irrational. Moreover, Applicant submits that Opposer’s alleged confusion about the
`
`exhibits is disingenuous for at least two reasons: (1) Opposer is already familiar with the vast
`
`majority of these exhibits; and (2) the emailed service copy contained two attachments, which
`
`were labeled “Motion for Summary Judgment” and “Brief and Motion for Summary Judgment,”
`
`wherein the latter had an exhibit page before each exhibit. Exhibits 1-3.
`
` After Opposer’s pretextual response in its section (a), Opposer provides about two pages of
`
`what it feels is important before sliding in the real reason for its non-response to Applicant’s
`
`motion for summary judgment: “Opposer has not been given an opportunity to obtain some of the
`
`information from Applicant, or to assert facts that Opposer already has in its possession that
`
`support Opposer’s claims.” Response, p. 6. This bogus reason is merely a product of indolence.
`
`Yes, Opposer did serve its discovery on July 24, 2019 on the case that it brought against Applicant,
`
`1
`
`

`

`but Opposer elected to conduct absolutely zero discovery – no depositions or other discovery
`
`vehicles – for the last five months and instead wait until the next to last day, July 24, to begin its
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`discovery. Moreover, despite the motion for summary judgment staying deadlines, Applicant
`
`responded with its discovery responses and productions three days before Opposer’s response was
`
`due and filed.1 These two facts point to the simple fact that Opposer decided to lollygag and not
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`substantively respond to Applicant’s motion even with Applicant’s discovery responses and
`
`productions in hand; its plea for needing more time for a case that it brought is dishonest.
`
` Accordingly, as the motion is briefed by the parties, Applicant respectfully requests that the
`
`Board grants its motion for summary judgment for at least the reasons of record.
`
`
`
`
`
`
`
`
`Dated: September 16, 2019
`
`
`Respectfully submitted,
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
`
`1334 Brittmoore Road, Suite 2401
` Houston, TX 77043
`
`(281) 372-6114
`erik@rdoip.com
`
` ATTORNEY FOR APPLICANT
`
`
`
`
`1 It is noted that Applicant also served discovery on July 24 and 25, 2019 (previously due on
`Monday, August 26 as the deadline was a Saturday), but Opposer has not responded with its
`discovery productions, as permitted, or even answered Applicant’s question as to when it might
`serve it so that this case can be resolved, whether amicably or by order, more timely and efficiently.
`
`Page 2 of 3
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`
`This is to certify that a true and correct copy of the foregoing APPLICANT’S REPLY TO
`OPPOSER AMERICAN COUNCIL ON EXERCISE’S BRIEF IN RESPONSE TO
`APPLICANT HEALTH CARE FITNESS INTEGRATIONS, LLC’S MOTION FOR
`SUMMARY JUDGMENT was transmitted, via ESTTA, to the Trademark Trial and Appeal
`Board, on the date of signing below:
`
`
`Mark I. Reichenthal: markr@branfman.com
`
`
`
`Dated: September 16, 2019
`
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
`
`1334 Brittmoore Road, Suite 2401
` Houston, TX 77043
`
`(281) 372-6114
`
`erik@rdoip.com
` ATTORNEY FOR APPLICANT
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing APPLICANT’S REPLY TO
`
`OPPOSER AMERICAN COUNCIL ON EXERCISE’S BRIEF IN RESPONSE TO
`APPLICANT HEALTH CARE FITNESS INTEGRATIONS, LLC’S MOTION FOR
`SUMMARY JUDGMENT was served via email on Opposer at:
`
`
`Mark I. Reichenthal: markr@branfman.com
`
`
`
`Dated: September 16, 2019
`
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
` 1334 Brittmoore Road, Suite 2401
` Houston, TX 77043
`
`(281) 372-6114
` erik@rdoip.com
` ATTORNEY FOR APPLICANT
`
`Page 3 of 3
`
`

`

`
`
`
`
`
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`1
`
`

`

`Erik Osterrieder
`
`From:
`Sent:
`To:
`Subject:
`Attachments:
`
`Erik Osterrieder
`Friday, July 26, 2019 9:04 PM
`Mark Reichenthal
`service of motion and brief
`Brief and Motion for Summary Judgment.pdf; Motion for Summary Judgment.pdf
`
`Mark,
`
`Attached is a service copy of a motion and brief in support thereof.
`
`Regards,
`Erik
`
`
`Erik J. Osterrieder
`Partner – Rao DeBoer Osterrieder, PLLC
`P: (281) 372-6114 ext. 1008 ׀ C: (713) 201-0303
`A: 2550 Gray Falls Drive, Suite 200, Houston, TX 77077
`W: www.RDOip.com
`
`
`
`
`
`
`
`
`
`NOTICE: This electronic message (including any attachments) contains information from Rao DeBoer Osterrieder,
`PLLC that may contain privileged and confidential attorney work product or attorney/client communication meant
`only for an intended recipient. If you are not the intended recipient, note that any disclosure, copying, distribution or
`use of the contents of this message is prohibited. If you received this message in error, please notify the sender
`immediately and delete this message from your system.
`
`
`
`
`1
`
`

`

`
`
`
`
`
`
`EXHIBIT 2
`
`EXHIBIT 2
`
`1
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`§
`
`AMERICAN COUNCIL ON EXERCISE,
`§
`
`
`Opposer,
`§
`
`
`§ OPPOSITION No. 91238589
`
`v.
`§
`
`
`HEALTH CARE FITNESS INTEGRATION, LLC, § Ser. No. 87/064,536
`
`Applicant/Defendant.
`
` § MEDICAL EXERCISE TRAINERS
`
`
`
`§ Pub. for Opp. Date: June 27, 2017
`
`
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`
`
` Based on Applicant’s Brief in Support of its Motion and further briefing related thereto,
`
`Applicant respectfully requests that the Board grant summary judgment that Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS is not: merely descriptive, generic, merely ornamental, and
`
`likely to be confused with MEDICAL EXERCISE SPECIALIST, ACE CERTIFIED METICAL
`
`EXERCISE SPECIALIST, PERSONAL TRAINER, ACE CERTIFIED PERSONAL TRAINER
`
`ACE PERSONAL TRAINER and PEER FITNESS TRAINER.
`
`
`
`
`
`
`
`
`Dated: July 26, 2019
`
`
`Respectfully submitted,
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
` 2550 Gray Falls Drive, Suite 200
` Houston, TX 77077
`
`(281) 372-6114
` erik@rdoip.com
` ATTORNEY FOR APPLICANT
`
`
`
`1
`
`

`

`
`
`CERTIFICATE OF TRANSMISSION
`
`
`This is to certify that a true and correct copy of the foregoing APPLICANT’S MOTION FOR
`
`SUMMARY JUDGMENT was transmitted, via ESTTA, to the Trademark Trial and Appeal
`Board, on the date of signing below:
`
`
`Mark I. Reichenthal: markr@branfman.com
`
`
`
`Dated: July 26, 2019
`
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
`
`2550 Gray Falls Drive, Suite 200
` Houston, TX 77077
`
`(281) 372-6114
`
`erik@rdoip.com
` ATTORNEY FOR APPLICANT
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing APPLICANT’S MOTION
`
`FOR SUMMARY JUDGMENT was served via email on Opposer at:
`
`
`Mark I. Reichenthal: markr@branfman.com
`
`
`
`Dated: July 26, 2019
`
`
`By: /Erik J. Osterrieder/
`
`Erik J. Osterrieder
` Rao DeBoer Osterrieder, PLLC
` 2550 Gray Falls Drive, Suite 200
` Houston, TX 77077
`
`(281) 372-6114
` erik@rdoip.com
` ATTORNEY FOR APPLICANT
`
`Page 2 of 2
`
`

`

`
`
`
`
`
`
`EXHIBIT 3
`
`EXHIBIT 3
`
`1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`§
`
`AMERICAN COUNCIL ON EXERCISE,
`§
`
`
`Opposer,
`§
`
`
`§ OPPOSITION No. 91238589
`
`v.
`§
`
`
`HEALTH CARE FITNESS INTEGRATION, LLC, § Ser. No. 87/064,536
`
`Applicant/Defendant.
`
` § MEDICAL EXERCISE TRAINERS
`
`
`
`§ Pub. for Opp. Date: June 27, 2017
`
`
`
`APPLICANT’S BRIEF IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
`
`
`
`Law of Summary Judgment
`
` Under Fed R. Civ. P. 56, made applicable to Board proceedings by Trademark Rule 2.116(a)
`
`and 37 C.F.R. § 2.116(a), a party moving for summary judgment has the burden of demonstrating
`
`the absence of any genuine dispute as to a material fact, and that it is entitled to judgment as a
`
`matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
`
`Pannill Knitting Co. Inc., 833 F.2d 1560, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987). There must
`
`be evidence on which the jury could reasonably find for the nonmovant, and undoubtedly exceed
`
`the mere scintilla standard. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
`
`
`
`A. Applicant’s Mark is Not Merely Descriptive.
`
` Applicant submits that the Board should summarily adjudicate that Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS, is not merely descriptive of its associated goods, i.e., t-shirts,
`
`because a jury could not reasonably find to the contrary.
`
` A mark is merely descriptive of goods within the meaning of Section 2(e)(1) if it forthwith
`
`conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
`
`1
`
`

`

`use of the goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 U.S.P.Q. 2d 1217,
`
`1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q. 2d 1009 (Fed. Cir. 1987).
`
`Whether a proposed mark is merely descriptive is determined in relation to the goods for which
`
`registration is sought and the context in which the mark is used, not in the abstract or on the basis
`
`of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re
`
`Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, evaluation centers on whether
`
`someone, who knows what the goods are, will understand the asserted mark to convey information
`
`about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 U.S.P.Q.
`
`2d 1753, 1757 (Fed. Cir. 2012). A proposed mark need not immediately convey an idea of each
`
`and every specific feature of the goods in order to be considered merely descriptive; it is enough
`
`if it describes one significant attribute, function or property of the goods. See In re Gyulay, 3
`
`U.S.P.Q. 2d at 1010; In re H.U.D.D.L.E., 216 U.S.P.Q. 358 (T.T.A.B. 1982); In re MBAssociates,
`
`180 U.S.P.Q. 338 (T.T.A.B. 1973).
`
`
`
`Succinctly, Applicant’s mark, MEDICAL EXERCISE TRAINERS, does not forthwith – or
`
`even eventually if that were the law – convey an ingredient, quality, characteristic, feature,
`
`function, purpose or use about t-shirts. Indeed, the trademark examiner did not deem Applicant’s
`
`mark under opposition to be merely descriptive. Exhibit 1. And the Notice of Opposition
`
`conspicuously provides no reasons as to why Applicant’s mark under opposition is merely
`
`descriptive. As a result, the Board should grant Applicant’s motion for summary judgment
`
`because there is no genuine dispute as to a material fact regarding the non-descriptiveness of
`
`Applicant’s mark in relation to t-shirts.
`
`
`
`
`
`Page 2 of 24
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`

`

`B. Applicant’s Mark is Not Generic.
`
` Applicant submits that the Board should summarily adjudicate that Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS, is not generic of its associated goods, i.e., t-shirts, because a
`
`jury could not reasonably find to the contrary.
`
`
`
`It is Opposer’s burden to establish that MEDICAL EXERCISE TRAINERS is generic by a
`
`preponderance of the evidence. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d
`
`960, 114 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2015) (“In an opposition or cancellation proceeding,
`
`the opposer or petitioner bears the burden of proving genericness by a preponderance of the
`
`evidence.”) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1554 (Fed. Cir.
`
`1991); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d, 1750, 1761 (TTAB
`
`2013), aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014)).
`
`
`
`There is a two-part test used to determine whether a designation is generic: (1) what is the
`
`genus of goods or services at issue, and (2) does the relevant public understand the designation
`
`primarily to refer to that genus of goods or services. H. Marvin Ginn Corp. v. Int’l Assn. of Fire
`
`Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). The relevant public’s
`
`perception is the primary consideration in determining whether a term is generic. Loglan Inst. Inc.
`
`v. Logical Language Grp. Inc., 902 F.2d 1038, 22 U.S.P.Q. 2d 1531, 1533 (Fed. Cir. 1992).
`
`Evidence of the public’s understanding of a term may be obtained from any competent source,
`
`including testimony, surveys, dictionaries, trade journals, newspapers and other publications. Id.
`
`at 1533; Dan Robbins & Assocs, Inc. v. Questor Corp., 599 F.2d 1009, 202 U.S.P.Q. 100, 105
`
`(C.C.P.A. 1979).
`
` Here, the genus of the goods at issue are clothing, and, specifically, t-shirts, which Applicant
`
`states in its identification of goods. Opposer cannot establish by any evidentiary standard,
`
`Page 3 of 24
`
`

`

`including by a preponderance of evidence, that Applicant’s mark, MEDICAL EXERCISE
`
`TRAINERS, is understood by the relevant public to refer to clothing or even more specifically, t-
`
`shirts. As a result, the Board should grant Applicant’s motion for summary judgment because
`
`there is no genuine dispute as to a material fact regarding the non-genericness of Applicant’s mark.
`
`
`
`C. Applicant’s Mark is Not Merely Decorative or Ornamental.
`
` Applicant submits that the Board should summarily adjudicate that Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS, is not merely decorative or ornamental, and does function as
`
`a trademark; a jury could not reasonably find to the contrary.
`
`
`
`The critical inquiry in determining whether a potentially ornamental designation functions as
`
`a mark is how the designation would be perceived by the relevant consumers. To make this
`
`determination, specimens and other evidence may be use to show how the designation is actually
`
`used in the marketplace. In re Eagle Crest Inc., 96 U.S.P.Q. 2d 1227, 1229 (T.T.A.B. 2010);
`
`Michael S. Sachs Inc. v. Cordon Art B.V., 56 U.S.P.Q. 2d 1132, 1135 (T.T.A.B. 2000).
`
`Furthermore, matter which serves as part of the aesthetic ornamentation on goods, such as t-shirts
`
`and hats, may nevertheless be registered as a trademark for such goods if it also serves a source
`
`indicating function.” In re Dimitri’s Inc., 9 U.S.P.Q. 2d 1666, 1667 (T.T.A.B. 1988). “Where ...
`
`an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location,
`
`dominance and significance of the alleged mark as applied to the goods are all factors which figure
`
`prominently in the determination of whether it also serves as an indication of origin.” In re Pro-
`
`Line Corp., 28 U.S.P.Q. 2d 1141, 1142 (T.T.A.B. 1993).
`
`
`
`Evidence of record includes the specimen filed during prosecution of Applicant’s mark that
`
`examiner accepted without rejection. Exhibit 2. The specimen plainly shows a t-shirt made
`
`Page 4 of 24
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`

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`available in proximity to Applicant’s mark that is located at the top right of the pictured t-shirt,
`
`and is properly an adjective describing the associated goods, i.e., “MEDICAL EXERCISE
`
`TRAINERS T-Shirt” that is available for sale. Id.; TMEP § 904. Properly, this specimen shows
`
`use of Applicant’s mark that is not merely decorative or ornamental. In fact, Amazon presents
`
`trademarked t-shirts for sale in the same fashion, i.e., a swoosh logo on the shirt that is also located
`
`at the top right of the pictured t-shirt along with the text, “Nike Women’s Dry Training T-Shirt.”
`
`Exhibit 3.
`
` Additionally and alternatively, Applicant provides evidence of Applicant’s use of its trademark
`
`in another classical fashion, to wit: a picture of Applicant’s t-shirt bearing Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS, on a tag located in the rear of the shirt. Exhibit 4.
`
`Furthermore, this t-shirt bears TM next to MEDICAL EXERCISE TRAINERS on the front of the
`
`shirt and the tag. Id. As a result, the Board should grant Applicant’s motion for summary judgment
`
`because there is no genuine dispute as to a material fact regarding the use of Applicant’s mark as
`
`a trademark in relation to t-shirts, wherein such use is neither merely descriptive or ornamental.
`
`
`
`D. Applicant’s Mark is Not Likely to Be Confused with MEDICAL EXERCISE SPECIALIST or
`
`ACE CERTIFIED METICAL EXERCISE SPECIALIST.
`
` Applicant submits that the Board should summarily adjudicate that Applicant’s mark,
`
`MEDICAL EXERCISE TRAINERS, is not likely to be confused with MEDICAL EXERCISE
`
`SPECIALIST or ACE CERTIFIED METICAL EXERCISE SPECIALIST because a jury could
`
`not reasonably find to the contrary.
`
`
`
`Page 5 of 24
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`

`

`(1) Opposer Does Not Own a MEDICAL EXERCISE SPECIALIST Trademark, Much Less a
`
`Trademark Used Prior to Applicant’s Mark.
`
` Applicant submits that the Board should summarily adjudicate that Opposer does not own a
`
`trademark for MEDICAL EXERCISE SPECIALIST and/or one that was used prior to Applicant’s
`
`mark, and, therefore, MEDICAL EXERCISE SPECIALIST does not present a basis for likelihood
`
`of confusion with Applicant’s mark.
`
` A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's
`
`products and distinguish them from the products of another. 15 U.S.C. § 1127. In the Notice of
`
`Opposition, Opposer states that it has used this mark “on a wide variety of goods and services”
`
`prior to Applicant. Notice of Opposition, ¶ 28. However, analysis shows that Opposer’s’ bald
`
`assertion is merely conclusory and baseless.
`
`
`
`First, Opposer has no pending applications or registrations, whether past or existing, for any
`
`goods or services for the MEDICAL EXERCISE SPECIALIST mark.
`
`
`
`Second, Opposer’s Notice of Opposition provides no proof of use of the MEDICAL
`
`EXERCISE SPECIALIST mark by Opposer for any goods or services.
`
`
`
`Third, a third party, Michael Jones (“Jones”), used “Medical Exercise Specialist” in connection
`
`with his certification, course, and exam that Opposer certified as “ACE approved” beginning in
`
`the 1990’s. Exhibit 5, p. 2. To that end, if “Medical Exercise Specialist” is a mark, it is owned by
`
`Michael Jones and not Opposer. Furthermore, if ACE began using “Medical Exercise Specialist,”
`
`then it was in 2015, which is subsequent to Applicant’s use. Id. In further support thereof, Opposer
`
`admitted in the Jones v. ACE case that Opposer could not find any uses of “Medical Exercise
`
`Specialist” prior to August 1, 2015. Exhibit 6, passim.
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`Page 6 of 24
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`

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`
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`Fourth, Opposer has railed against MEDICAL EXERCISE SPECIALIST being anyone’s
`
`mark, much less one that Opposer owns. Below are multiple examples from the Jones v. ACE
`
`case:
`
`
`
`
`
`“ACE argue[d] that it cannot be held liable for trademark infringement because it
`does not use the term ‘Medical Exercise Specialist’ as a mark and is using it fairly
`to describe the type of program it offers”; instead, Opposer’s use of “Medical
`Exercise Specialist” was permissible under a fair use defense. Exhibit 5, p. 32.
`
`“Jones argues that ACE uses the term ‘Medical Exercise Specialist’ as a mark
`because ACE features the term prominently. ACE argues that it does not use the
`term as a mark and only uses it to describe its program.” Exhibit 5, p. 34.
`
`“ACE contends that this case is like Zatarain’s because everywhere ACE uses the
`term ‘Medical Exercise Specialist’ the term is in the same size, font, and color as
`surrounding words, and that it is like Dessert Beauty because ACE always uses its
`trademark, ACE, with the term ‘medical exercise specialist.’ Thus, ACE urges the
`court to conclude that it is not using the term as a trademark and is merely using
`the term in a descriptive sense.” Exhibit 5, p. 36.
`
`“Additionally, if ACE were using ‘Medical Exercise Specialist’ as a mark, it would
`be using two marks on one ‘item,’ similar to the use of “Sexy Girls Have Dessert”
`being used on the same perfume as the allegedly infringing ‘love potion’ phrases.
`As the Dessert Beauty court noted, generally there are not two phrase [sic] serving
`as marks on one package.” Exhibit 5, p. 37.
`
`“ACE notes that it chose the name ‘Medical Exercise Specialist’ as opposed to, for
`instance, ‘medical exercise professional,’ because the word “specialist” means ‘a
`person who has a special knowledge and skill relating to a particular job, area of
`study, etc.’ (quoting dictionary definition of ‘specialist’). It argues that no other
`words convey the same description.” Exhibit 5, p. 41 [emphasis added].
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`“ACE contends that the mark [i.e., MEDICAL EXERCISE SPECIALIST] is
`generic and unprotectable.” Exhibit 6, p. 4.; Id. at p. 7.
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`“ACE argues that “medical exercise” and “exercise specialist” are common terms
`of general use and knowledge in the fitness industry and that combining these two
`generic terms for specialists in medical exercise is generic. Exhibit 7, pp. 7, 8.
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`ACE’s Chief Science Officer, who was on the study panel, states that ‘the panel
`performing the role delineation study considered an alternative name for the
`certification – Medical Exercise Specialist – which accurately conveyed the
`commonly described job role.’ He admits that he knew about Jones’s use of the
`term when ACE chose it, but he felt that Jones’s course name was just a description
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`of “the job role in plain common terminology.” Id. He reports that the study panel
`‘readily concluded that ‘Medical Exercise Specialist’ was the obvious and most
`accurate title for the job role to convey immediately to others what the professional
`is trained to do.’” Exhibit 7, pp. 15, 16.
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` As just shown, there is no genuine dispute as to a material fact regarding Opposer’s absence
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`of rights in a MEDICAL EXERCISE SPECIALIST mark; Opposer has repeatedly testified that
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`neither it nor anyone else has rights in MEDICAL EXERCISE SPECIALIST. Additionally and
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`alternatively, there is no genuine dispute as to priority, i.e., Opposer died not have any trademark
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`rights in MEDICAL EXERCISE SPECIALIST prior to 2015, which is subsequent to Applicant’s
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`ownership of its mark for t-shirts. Therefore, this Board should summarily adjudicate that Opposer
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`does not own a trademark for MEDICAL EXERCISE SPECIALIST and/or not prior to
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`Applicant’s use of its mark.
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`
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`(2) There Is No Likelihood of Confusion.
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` Additionally and alternatively to the Board’s ruling on (1), Applicant submits that the Board
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`should summarily adjudicate that Applicant’s mark, MEDICAL EXERCISE TRAINERS, is not
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`likely to be confused with MEDICAL EXERCISE SPECIALIST1 or ACE CERTIFIED
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`MEDICAL EXERCISE SPECIALIST because a jury could not reasonably find to the contrary.
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` When testing for likelihood of confusion, multiple factors, when of record, must be considered,
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`but no single factor is dispositive. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir.
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`1997); In re E.I duPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).
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`Those factors are:
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`1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.
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`1 Applicant analyzes MEDICAL EXERCISE SPECIALIST under this subsection if the Board does not grant
`Applicant’s summary judgment for Opposer’s failure to use MEDICAL EXERCISE SPECIALIST as a trademark
`and/or one that existed prior to Applicant’s prior use of MEDICAL EXERCISE TRAINERS.
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`Page 8 of 24
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`2. The similarity or dissimilarity and nature of the goods or services as described in an application
`or registration or in connection with which a prior mark is in use.
`3. The similarity or dissimilarity of established, likely-to-continue trade channels.
`4. The conditions under which, and buyers, to whom sales are made, i.e., “impulse” vs. careful,
`sophisticated purchasing.
`5. The fame of the prior mark (sales, advertising, length of use).
`6. The number and nature of similar marks in use on similar goods.
`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 (house, “family”, or product mark)
`10. The market interface between applicant and the owner of a prior mark:
`a) a mere “consent” to register or use,
`b) agreement provisions designed to preclude confusion, i.e., limitations on continued use
`of the marks by each party,
`c) assignment of mark, application, registration and good will of the related business, or
`d) laches and estoppel attributable to owner of prior mark and indicative of lack of
`confusion.
`11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
`12. The extent of potential confusion, i.e., whether de minimis or substantial.
`13. Any other established fact probative of the effect of use. Id.
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`Below, Applicant addresses relevant factors in its likelihood of confusion analysis.
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` Under the first DuPont factor, the marks are dissimilar in the entireties. A basic principle in
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`determining confusion between marks is that marks must be compared in their entireties.
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`Glenwood Laboratories v. American Home Products Corp., 455 F.2d 1384, 1385, 173 USPQ 19,
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`20 (C.C.P.A. 1972); 2 J. McCarthy, Trademarks and Unfair Competition § 23:15A (2nd ed. 1984).
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`Marks must be compared in their entireties and should not be dissected. However, weight may be
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`given to individual components of a mark to determine its overall commercial impression. Stone
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`Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 U.S.P.Q. 2d 1157, 1161
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`(Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . .
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`more or less weight has been given to a particular feature of a mark, provided the ultimate
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`conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp.,
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`753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985))).
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`Page 9 of 24
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`
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`For one, Applicant’s mark contains TRAINERS, a word providing no similarity in sight or
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`sound to MEDICAL EXERCISE SPECIALIST or ACE CERTIFIED MEDICAL EXERCISE
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`SPECIALIST.
`
`
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`For another, and according to Opposer, SPECIALIST provides Opposer’s alleged marks,
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`MEDICAL EXERCISE SPECIALIST or ACE CERTIFIED MEDICAL EXERCISE
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`SPECIALIST, with a connotation that no other words can convey. Exhibit 5, p. 41 [emphasis
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`added].
`
`
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`For yet another, Opposer’s position in the Jones v. ACE case additional reasons why
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`MEDICAL EXERCISE SPECIALIST or ACE CERTIFIED MEDICAL EXERCISE
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`SPECIALIST are dissimilar to Applicant’s mark:
`
`“Jones argues that confusion is highly likely to occur from ACE’s appropriation of
`the name Medical Exercise Specialist to offer a “superficially similar” course in the
`same industry with the same potential customers. ACE contends that there is no
`likelihood of ‘actionable confusion.’ It notes that likelihood of confusion is not
`‘possible confusion,’ but ‘probable confusion.’ citing Bd. of Supervisors for La.
`State Univ. v. Smack Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008). It argues that
`Jones’s alleged mark [i.e., MEDICAL EXERCISE SPECIALIST] is weak; that
`ACE generally uses ‘ACE Certified’ with the term ‘Medical Exercise Specialist,’
`making the marks dissimilar; that the courses are not advertised in the same media
`or retail outlet; that ACE chose the name in good faith after a study; and that Jones’s
`evidence of actual confusion is not compelling.” Exhibit 7, pp. 12, 13.
`
` And for yet another reason, Applicant’s mark is plural unlike MEDICAL EXERCISE
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`SPECIALIST or ACE CERTIFIED MEDICAL EXERCISE SPECIALIST. That is, Applicant’s
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`mark is a plural adjective even when associated with its singular goods, i.e., a MEDICAL
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`EXERCISE TRAINERS t-shirt. Appearing grammatically incorrect is a counterintuitive point of
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`distinction not present with MEDICAL EXERCISE SPECIALIST or ACE CERTIFIED
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`MEDICAL EXERCISE SPECIALIST.
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` Based on the foregoing, the first factor weighs in Applicant’s favor.
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`Page 10 of 24
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` Under the second DuPont factor for comparing the similarity of the goods and services of the
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`marks at issue, “[t]he authority is legion that the question of registrability of an applicant’s mark
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`must be decided on the basis of the identification of goods set forth in the application regardless
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`of what the record may reveal as to the particular nature of an applicant’s goods, the particular
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`channels of trade or the class of purchasers to which sales of the goods are directed.” Octocom
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`Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (citing 11
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`cases over the last 50 years that compare goods and services by solely relying on the description
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`in the registrant’s application).
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` Applicant submits that its mark, MEDICAL EXERCISE TRAINERS, is used in association
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`with t-shirts, but the identity of Opposer’s goods and/or services is not stated in the Notice of
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`Opposition. Resort to pending applications or registrations, whether past or existing, for clarifying
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`what goods or services are associated with MEDICAL EXERCISE SPECIALIST or ACE
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`CERTIFIED MEDICAL EXERCISE SPECIALIST is unavailing because none exist. And even
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`if Opposer has used MEDICAL EXERCISE SPECIALIST and/or ACE CERTIFIED MEDICAL
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`EXERCISE SPECIALIST with any clothing, then it was not continuously used as a brand prior to
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`2015 so as to have priority over Applicant’s use of MEDICAL EXERCISE TRAINERS as a brand
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`of t-shirts. Exhibits 5, 6. If fact, if there are any goods/services associated with MEDICAL
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`EXERCISE SPECIALIST and/or ACE CERTIFIED MEDICAL EXERCISE SPECIALIST, then
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`it is clear from Jones v. ACE case that clothing, and, in particular, t-shirts, are not the goods; a
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`certification of sorts related to courses may exist that bears no similarity, and certainly not within
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`the normal zone of expansion, to Applicant’s goods, i.e., t-shirts. Exhibits 5-7. Moreover, Opposer
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`has made it clear that a certification mark cannot function simultaneously as mark for goods and/or
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`Page 11 of 24
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`services; else, it would invalidate ACE CERTIFIED MEDICAL EXERCISE SPECIALIST.
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`Exhibit 5, p. 43. As a result, the second factor overwhelmingly favors Applicant.
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` Under the third DuPont factor, similarity of established, likely-to-continue trade channels,
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`Applicant submits that its goods, t-shirts, do not travel through the same conduits as
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`certification/courses to reach their respective, ultimate customers. Exhibit 7, p. 14. Moreover,
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`Applicant’s marked t-shirts are available only from its website, www.medextrainers.com, or
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`directly from Applicant. As a result, the third factor strongly weighs in Applicant’s favor.
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` Under the fourth DuPont factor, the parties’ customers are sufficiently sophisticated so as to
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`prevent a likelihood of confusion. Applicant submits that people buying t-shirts would not
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`accidentally buy certification courses. A fundamental principle of trademark law is that
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`sophisticated consu