Proceeding no.
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`ESTTA Tracking number:
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`Filing date:
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`ESTTA1351138
`04/09/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92084320
`
`Defendant
`David Barton Consulting, Inc.
`
`DAVID BARTON CONSULTING, INC.
`163 WEST 22ND STREET
`NEW YORK, NY 10011
`UNITED STATES
`Primary email: iptrademarks@lippes.com
`716-853-5100
`Motion to Dismiss - Rule 12(b)
`
`Andrew J. Olek
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`aolek@lippes.com, docketing@lippes.com
`
`/Andrew J. Olek/
`
`04/09/2024
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`Motion to Dismiss 92084320.pdf(199990 bytes )
`Exhibit A1.pdf(4206190 bytes )
`Exhibit A2.pdf(2920800 bytes )
`Exhibit A3.pdf(3544384 bytes )
`Exhibit A4.pdf(4759410 bytes )
`Exhibit A5.pdf(1480017 bytes )
`Exhibit A6.pdf(6061015 bytes )
`Exhibit A7.pdf(2648543 bytes )
`Exhibit B.pdf(6076318 bytes )
`Exhibit C - Affirmation of Shanahan - 4-8-24.pdf(4262645 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92084320
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`Registration No. 7032113
`Mark: LOOK BETTER NAKED
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`
`
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`TOWN SPORTS GROUP, LLC
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`Petitioner
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`v.
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`DAVID BARTON CONSULTING, INC.,
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`Respondent.
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`DAVID BARTON CONSULTING, INC.’S MOTION AND MEMORANDUM IN
`SUPPORT OF MOTION TO DISMISS THE CANCELLATION PETITION FOR
`FAILURE TO STATE A CLAIM UNDER RULE 12(b)(6)
`______________________________________________________________________________
`
`
`INTRODUCTION
`
`
`
`Respondent David Barton Consulting, Inc. (“DBC”), through its undersigned attorney,
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`respectfully requests dismissal with prejudice of the cancellation petition (“Petition”) filed by
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`Petitioner Town Sports Group, LLC (“Town”) because the Petition fails to state a claim for relief
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`under Rule 12(b)(6) of the Federal Rules of Civil Procedure, specifically, Town fails to allege facts
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`sufficient to support a plausible claim for which relief can be granted as to fraud or abandonment.
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`
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`Town seeks to cancel U.S. Registration No. 7032113 for the mark “LOOK BETTER
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`NAKED” in connection with “personal fitness training services, physical fitness training services;
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`health clubs for physical exercise; health club services, namely, providing instruction and
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`equipment in the field of physical exercise” and “hats and activewear, namely, t-shirts, shorts and
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`pullovers” in International Classes 041 and 025, respectively (the “Registered Mark”).
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`
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`1
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`

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`BACKGROUND
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`
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`David Barton created and as utilized in commerce “LOOK BETTER NAKED” since at
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`least June of 1992, through entities of which he is the majority owner or individually. While Mr.
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`Barton or his entities may have undergone reorganizations, facts are clear that (i) Mr. Barton never
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`abandoned use of LOOK BETTER NAKED, and (ii) Town never acquired any interest in LOOK
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`BETTER NAKED.
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`FACTS
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`
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`Eastern Gymnasiums, L.P. filed a trademark application for “Look Better Naked” for Class
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`025 on September 19, 1996, and claimed a date of first use of June 1, 1992 (the “1992
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`Registration”). The 1992 Registration registered on August 5, 1997.
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`
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`The 1992 Registration was assigned to DB 85 Gym Corp., an entity owned by Mr. Barton,
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`through an assignment with an effective date of December 20, 1996 (this assignment was recorded
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`with the USPTO on January 7, 2004). The 1992 Registration was renewed on July 27, 2007.
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`
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`Mr. Barton incorporated DBC on September 28, 2017. DBC submitted the application for
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`the Registered Mark on August 11, 2021.
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`
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`Despite the bankruptcy proceedings referenced in the Petition, the media articles attached
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`as Exhibit A, which publication dates span from 1994 through 2023 (and include articles from
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`2018), demonstrate continuous use of LOOK BETTER NAKED by Mr. Barton or entities owned
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`by Mr. Barton.
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`
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`The Petition references an Asset Purchase Agreement dated November 22, 2017 between
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`TSI Hell’s Kitchen, LLC, and 99th Avenue Holdings LLC and TMPL Holdings LLC (the “APA”).
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`In the Petition, Town alleges that through the APA, TSI Hell’s Kitchen, LLC acquired
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`“substantially all” of the intellectual property assets of 99th Avenue Holdings LLC and TMPL
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`2
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`

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`Holdings LLC. However, nowhere in the APA is there any reference to LOOK BETTER NAKED
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`or the 1992 Registration (which, as Town notes in the Petition was still an active registration as of
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`the effective date of the APA (see Petition, “Relevant Facts,” paragraph 1).
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`The plain language of the APA clearly states that the intellectual property included with the
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`transaction contemplated by the APA, was such intellectual property “as identified on Schedule
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`1.1(a)(i) and including, without limitation, the name “TMPL”” (see APA attached as Exhibit B,
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`page 1, Section 1.1(a)(i)).
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`
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`Schedule 1.1(a)(i) of the APA lists only US Application No. 86792126 for the mark
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`“TMPL” as included intellectual property. Moreover, Schedule 2.9(a), which was to list all
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`registered intellectual property being sold states “See Schedule 1.1(a)(i)” (see APA, Schedule
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`1.1(a)(i) and Schedule 2.9(a) of the APA attached as Exhibit B). Nowhere in the APA is there any
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`reference to the 1992 Registration or LOOK BETTER NAKED.
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`The 1992 Registration and LOOK BETTER NAKED were not assets of either of 99th
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`Avenue Holdings LLC and TMPL Holdings LLC, which is further evidenced by the fact that no
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`assignment of the 1992 Registration, whether to either of 99th Avenue Holdings LLC and TMPL
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`Holdings LLC or any other entity exists. This is further evidenced by the Attorney Affirmation of
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`Thomas D. Shanahan (Mr. Barton’s long-time counsel) dated April 8, 2024 attached as Exhibit C
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`(the “Shanahan Affirmation”).
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`
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`Town filed an application for “Look Better Naked” on February 27, 2023 (the “Town
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`Application”) – over two years after DBC, through its counsel sent its first cease and desist letter.
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`Moreover, if Town had acquired the rights to Look Better Naked in or about November of 2017,
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`why did Town (or its predecessors) never execute an assignment of the 1992 Registration? The
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`3
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`

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`answer is because neither Town nor its predecessors had or have any rights to “Look Better
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`Naked.”
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`
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`This Petition and cancellation proceeding are Town’s attempt to interfere with DBC’s
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`business operations as retribution for long-standing contention between the parties, which has
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`resulted in years of litigation. Town can produce no record of ownership of “Look Better Naked”
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`– in fact, the specimen it submitted with the Town Application to allege use of “Look Better
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`Naked” shows only an illuminated sign hanging on an unidentifiable wall – contrast this use with
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`Mr. Barton’s continuous use demonstrated by the articles attached as Exhibit A, and the specimens
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`that have been submitted to and accepted by the USPTO in connection with the Registered Mark.
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`ARGUMENT
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`
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`A cancellation petition is subject to dismissal under Rule 12(b)(6) when the petition fails
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`to establish that a valid ground exists to cancel the registration. See TBMP § 503.02 (citing Lipton
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`Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024 (C.C.P.A. 1981)). The Board reviews a motion
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`to dismiss by assuming all well-pleaded allegations in the Petition are true, and construing these
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`allegations in a light most favorable to the petitioner. Consolidated Foods Corp. v. Big Red, Inc.,
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`226 U.S.P.Q. 829, 831 (T.T.A.B. 1985). The Petition states no facts that reasonably support the
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`allegations of fraud or abandonment.
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`
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`Town’s Petition also must “state a claim to relief that is plausible on its fact.” See TBMP §
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`503.03 (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S.
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`Ct. 1937 (2009)). This plausibility standard applies in “all civil actions,” including proceedings
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`before the Board. See TBMP § 503.03 (citing Iqbal, 129 S. Ct. at 1953); see also Zoba Int'l Corp.
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`v. DVD Format / LOGO Licensing Corp., Cancellation No. 92051821, 2011 TTAB LEXIS 64
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`(T.T.A.B. Mar. 10, 2011) (granting motion to dismiss a fraud claim under the Twombly and Iqbal
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`
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`4
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`

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`plausibility standard). A Rule 12(b)(6) motion allows the Board “to eliminate actions that are
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`fatally flawed in their legal premises and destined to fail, and thus to spare litigants the burdens of
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`unnecessary pretrial and trial activity.” Advanced Cardiovascular Systems Inc. v. SciMed Life
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`Systems Inc., 988 F.2d 1157, 1160 (Fed. Cir. 1993); see also Kelly Services, Inc. v. Greene’s
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`Temporaries, Inc., 25 U.S.P.Q.2d 1460 (T.T.A.B. 1992) (dismissing a cancellation action under
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`Rule 12(b)(6) when facts did not support statutory grounds for cancellation).
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`
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`Whether Town’s Petition states a plausible claim for relief is a context-specific inquire that
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`requires the Board to draw on its “experience and common sense” to determine if alleged facts
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`“infer more than a mere possibility” that fraud or abandonment occurred. See Iqbal, S. Ct. at 1950-
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`51.
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`A. The Petition Does Not State a Clear and Convincing Claim Proving Fraud.
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`
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`When a party asserts fraud on the USPTO, the party must show that the mark owner
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`knowingly made a false and material fact representation with an intent to mislead the USPTO
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`(Covertech Fabricating, Inc. v. TVM Bldg. Prods., Inc., 855 F.3d 163, 174-75 (3d Cir. 2017); MPC
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`Franchise, LLC v. Tarntino, 826 F.3d 653, 658 (2d Cir. 2016); In re Bose Corp., 580 F.3d 1240,
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`1243 (Fed. Cir. 2009)).The party alleging fraud on the USPTO bears a heavy burden of proof and
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`must prove the elements of fraud with clear and convincing evidence (Bose, 580 F.3d at 1243
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`(stating that fraud must be “proven to the hilt” and may not be based on speculation); A.V.E.L.A.,
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`Inc. v. Estate of Marilyn Monroe, LLC, 241 F. Supp. 3d 461, 480 (S.D.N.Y. 2017) (stating that
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`proof of fraud must leave nothing to speculation, conjecture, or surmise)).
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`
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`“Where a registered mark or a mark sought to be registered is or may be used legitimately
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`by related companies, such use shall inure to the benefit of the registrant or applicant for
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`registration, and such use shall not affect the validity of such mark or of its registration, provided
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`5
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`

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`such mark is not used in such manner as to deceive the public. If first use of a mark by a person is
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`controlled by the registrant or applicant for registration of the mark with respect to the nature and
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`quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant,
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`as the case may be” (15 U.S. Code § 1055).
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`
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`Mr. Barton through his various entities continuously used “Look Better Naked” in
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`commerce (see Exhibit A) and believed the rights of those prior entities inured for the benefit of
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`DBC when the statement of use for the Registered Mark was filed.
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`
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`Town has not proven fraud “to the hilt” – rather, the Petition only speculates based upon
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`the APA, which, as discussed above, makes no reference to any sale or transfer of “Look Better
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`Naked” to Town or its predecessors.
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`B. The Petition Fails to Prove Abandonment.
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`To prove trademark abandonment, the party alleging abandonment must show that the
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`owner of the mark (i) discontinued use of such Mark, and (ii) does not intend to resume use of the
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`mark in the reasonably foreseeable future (see 15 U.S.C. § 1127; Cross Com. Media, Inc. v.
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`Collective, Inc., 841 F.3d 155, 169 (2d Cir. 2016); ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 147
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`(2d Cir. 2007)).
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`Use of a mark to avoid an abandonment finding is use that is sufficient to maintain the
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`public’s association between the mark and its owner (see Silverman v. CBS, Inc., 870 F.2d 40, 48
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`(2d Cir. 1989); Pado, Inc. v. SG Trademark Holding Co., 527 F. Supp. 3d 332, 341-42 (E.D.N.Y.
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`2021)).
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`While nonuse of a mark for three consecutive years, is prima facie evidence of
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`abandonment, such presumption is rebuttable (see ITC, 482 F.3d at 147). The Petition alleges that
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`Mr. Barton did not use “Look Better Naked” for three consecutive years; however, the article titled
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`
`
`6
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`

`

`“New York’s Cathedral of Sweat” dated August 8, 2018 (included in Exhibit A) rebuts this
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`presumption, and also demonstrates that Mr. Barton, even if assuming arguendo he had
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`temporarily stopped using “Look Better Naked” never indented to not resume using “Look Better
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`Naked.” Town cannot meet the two prong test set forth in 15 U.S.C. § 1127 to prove that Mr.
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`Barton abandoned the “Look Better Naked” mark.
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`The Petition seems to argue two premises, neither of which is based in demonstrable facts
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`– one being, that “Look Better Naked” was sold to a predecessor of Town; the other being that Mr.
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`Barton abandoned the “Look Better Naked” mark. The Petition references bankruptcies and sales,
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`but these vague references fail to demonstrate that Mr. Barton sold “Look Better Naked” or that
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`Mr. Barton did not intend to resume use of “Look Better Naked” – assuming arguendo he
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`temporarily ceased use.
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`As a matter of law, Town’s petition should be dismissed because it has not pleaded
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`sufficient facts to establish any grounds that exist for cancelling the Registered Mark.
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`C. Granting Town Leave to Amend Would be Futile.
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`
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`The dismissal of Town’s Petition for failure to state a claim should be with prejudice. See
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`TBMP § 503.03 (stating that the Board has discretion to deny a party the opportunity to amend the
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`pleadings).The Petition’s utter absence of facts to establish a plausible claim for relief
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`demonstrates that allowing Town to amend its pleading would be futile (see American Hygienic
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`Labs, Inc. v. Tiffany & Co., 228 U.S.P.Q. 855, 859 (TTAB 1986) (denying leave to amend when
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`doing so would serve no useful purpose)).
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`Town’s Petition, claiming damages wastes the Board’s time and resources merely to test a
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`legal premise destined to fail because the Petition lacks factual allegations to support a plausible
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`claim for relief.
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`7
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`

`

`
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`For the reasons stated above, David Barton Consulting, Inc. respectfully requests dismissal
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`CONCLUSION
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`of the Petition with prejudice.
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`Dated: April 9, 2024
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`By:
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`LIPPES MATHIAS LLP
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`/Andrew J. Olek/____________
`Andrew J. Olek
`50 Fountain Plaza, Suite 1700
`Buffalo, New York 14202
`(716) 853-5100
`aolek@lippes.com
`Attorneys for Respondent
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`8
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a true and complete copy of this Motion to Dismiss has been sent to
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`Jean G. Vidal-Font, counsel of record for Petitioner, by forwarding said copy on April 9, 2024
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`via email to:
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`Jean G. Vidal-Font
`FERRAIUOLI LLC
`jvidal@ferraiuoli.com
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`Buffalo, New York
`April 9, 2024
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`By:
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`/s/Andrew J. Olek
`Andrew J. Olek
`aolek@lippes.com
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`Attorneys for David Barton Consulting, Inc.
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`

`

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`New York’s Cathedral Of Sweat
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`Author: Brad Bloom
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`Department(s): Church Fitness, Faith and
`Fitness Culture, Features
`
`Read time: 8 minutes
`
`Updated: August 9th, 2018
`
`The David Barton Gym Limelight known as the Cathedral Of Sweat may be New York’s most righteous (or totally
`awesome) gym. They’ve earned awards and recognition for their retrofit of this historic church building.  They
`foreshadow a look and feel that fitness ministries can have and where faith and fitness can be beautifully
`integrated into one fantastic experience.
`
`If you wanted to open a really cool gym that everyone would want to use, where would it be and how would you
`make it truly amazing?
`
`David Barton Gym took a historic Manhattan church built in 1845 and
`created a dynamic experience that preserves the architecture, integrates
`with the culture of the city and delivers quality, service and top-rated
`fitness programs. They set a good example (and price point) for the
`boutique model of fitness club.
`
`Churches and Christian entrepreneurs can do one better – if they’ll try.
`Beyond the look and feel, they can deliver Christian ministry. Visualize a
`place where you can get fit, get funk AND get faith.
`
`th
`The David Barton Gym Limelight at 20 and Sixth makes working out truly
`inspirational. The cardio suite has spectacular stained glass windows
`towering over the treadmills. The strength equipment helps you fire up your
`muscles in the glow of prayer candles. Even some of the group exercise
`classes are whimsically named: Muscle Mass, Core Communion, Divine Abs
`and Salvation.
`
` 
`
`Visual ize a pl ace where you can get f it , get f unk AND get f ait h.
`
` 
`
`In today’s culture “Muscle Worship” isn’t just a tongue-in-cheek
`expression. It is admiration fueled by hard work that can easily
`become a fitness and sexual addiction. Their imagery of
`muscles in a church – a temple in a temple, may at the very
`least challenge gym goers to consider how physical and
`spiritual beauty are more connected than we realize.  Their
`corporate slogan, “Look better naked” certainly captures your
`attention and the heart of their culture. However it ventures
`more closely into the more significant spiritual conversations of
`body worship and gymnos than they may realize – certainly
`more than they may address because their purpose is not to do
`ministry but rather simply be the best gym in the marketplace. They do a good job of that consistently getting
`rave reviews by media, members and visitors.
`
` 
`
`WHAT THE DAVID BARTON GYM HAS THAT CHURCH FITNESS
`MINISTRIES CAN HAVE TOO
`
`Quality equipment – From the free weights to the cardio
`suite every piece of equipment is carefully selected for
`durability, function and overall experience.  Great gyms
`maintain their equipment in clean and top performing
`condition. Because space in boutique gyms is often
`limited and unique, the amount of equipment along with
`where and how it is placed are all considerations to
`assure ready availability and continuity.
`
` 
`
`Professional and engaged staff – Facilities with great
`teams put great effort into carefully selecting who
`represents their brand. They then regularly invest in the ongoing training of staff. The results are obvious. They
`know what their doing, they do it very well AND the members consistently have an amazing experience, always
`coming back for more.
`
`Distinctive programming that delivers results – Gym
`goers want a place that will give them a tough workout.
`They want the intensity that makes a difference. They
`want the fun that will keep it highly engaging and
`rewarding. The development of faith and fitness
`programming is a process that examines wants, needs
`and deliverables that take the participants to obtain
`outcomes they can’t get from traditional programming.  
`
`Photo courtesy of Gina Doost of WhatTheDoost.com. Used by permission.
`
` 
`
`Overall ambiance and culture – Churches often create “third-place” environments like a coffee shop or
`bookstore. Gym’s like David Barton have designed facilities that people want to get to often and then thoroughly
`enjoy. They want a challenge, a conversation, instruction, affirmation, fun and engagement. These gym facilities
`wow you with their style and character and immerse you totally in an ethos of carefully crafted tradition,
`innovation and expression.
`
`A LOOK AT WHAT FITNESS MINISTRY CAN BE
`
`The next generat ion of
`
`f it ness f acil it y – a hybrid
`
`gym/ church combo.
`
`In every city across the
`country there are church
`buildings that are closing
`for many reasons: shifts
`in populations, older
`buildings being replaced
`by newer facilities,
`
`congregation consolidations and decline in attendance to name a few.
`
` 
`
`  A
`
` t empl e in a t empl e – consider how physical and spirit ual beaut y are connect ed.
`
`According to a ChurchLeadership.org article more than 4000 churches close each year.  That’s a lot of real
`estate that could be retrofitted into a gym facility. Certainly not every building is appropriate for becoming a
`fitness facility. However, the David Barton Gym Limelight shows that for some buildings it can be done – and
`done very well. AND for those buildings that either remain part of the church or are transferred to another
`Christian ministry owner the new gym in the existing real estate with it’s clear ministry purpose can operate as a
`non-profit and realize tax savings and scales of affordability provided for Christian ministries.
`
`What is needed to do this? Churches and Christian business professionals need to examine, understand and
`then literally build the next generation of fitness facility – a hybrid gym/church combo. The pattern of a boutique
`gym is already in place. Most certainly the model of simple church is well established from the early era of the
`Christian church – Christ’s disciples through to present-day small group gatherings.
`
`Tim Suttle, in his book Shrink and his Patheos article Why The Church Is In Decline… identifies that the mega-
`church model is a departure from the smaller (and more preferred) simple church model on which Christianity is
`originally founded:
`
`My tribe is the evangelicals. We’ve been the “industry leaders” in developing best practices for the
`realization of the relevant, the powerful, and the spectacular church. Like industrial farmers, we have
`been so successful that we have actually moved the dial for the mainstream church as well. We have
`filled the cities and suburbs with monuments to growth without limits. But we have pushed in the
`wrong direction, and we have pushed too far. We have confused the very nature of what it means to
`be a part of the people of God.
`
`A dif f erent f ut ure f or t he
`
`church – serving smal l
`
`congregat ions f ait hf ul l y.
`
` 
`
`There is a shift in the fitness
`industry from the membership
`model in favor of the smaller and more intimate experience:
`
` 
`
`Sensing that a growing number of people are forgoing their gym membership in favor of specialized
`experiences like boot camps or cycling studios, some gyms have begun partnering with smaller
`boutique studios, offering them temporary or permanent space and giving their customers access to
`the gym’s amenities. In exchange, gyms receive foot-traffic from the well-to-do clientele that
`boutique studios tend to attract and, in some cases, a cut of the studio’s revenue.
`
`Essentially, the mega-gym has discovered and in some instances is adapting to the reality that many people
`DON’T believe “bigger is better”. People want (and pay for), “the cutting-edge workouts and the attention of
`instructors who have built up personal brands through widely-followed Instagram accounts and best-selling DVD
`sets.” Bret Edward Stout a personal trainer at the David Barton Gym Limelight is a good example. The church can
`learn from this by putting much less emphasis on “membership” and giving much more attention to shepherding
`the small flock into spiritual maturity through faithful instruction and a deep koinonia-based fellowship.
`
`These 3 Photos and the top
`
`photo courtesy of Brett Edward
`
`Stout @brettestout on
`
`Instagram.
`
`Suttle describes what
`hopefully will be a
`growing trend, “Many
`church leaders are now
`faced with a fundamental disagreement about time and money and the use of the world. All around me everyday
`in my church and my city, I work with people who have chosen the way of descent. They labor in beautiful
`obscurity and have the audacity to imagine a church that depends upon God for its future. These friends forego
`lucrative careers and the perks of the upwardly mobile in order to serve small congregations faithfully. They are
`straining to imagine a different future for the church.”
`
`THE BEST BUILD-OUT EVER
`
`That future I believe can be expressed in part through the really cool gym model
`– a classic church facility that is designed to house quality fitness equipment,
`thoughtfully crafted spaces, inspiring ambiance and on-target programming. But
`what it houses isn’t what defines it as much as those who make it home. The
`relationships, the accountability, the honesty, the compassion, the grace and the
`joy in the celebration are all the qualities that make this style of gym not only
`cool but the environment that returns the meaning of church from being a place
`to being a group of committed people.
`
`We’re here to help you get this model of fitness ministry started. CONTACT US
`and get help with a retrofit that will bring the most righteous gym to your
`community.
`
`Cover photo of David Barton Gym Limelight exterior by Nikki Espinia for Faith & Fitness Magazine.
`
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`La s V e ga s Tr a de m a r k At t or n e y
`
`A blog dedicat ed t o explor ing, discussing, and shar ing w it h t he w or ld t he lat est new s and legal developm ent s
`in t radem ar k law - - Published by Ryan Gile.
`
`F R I D A Y , F E B R U A R Y 2 9 , 2 0 0 8
`
`Com pe t in g fit n e ss clu bs in t r a de m a r k
`ba t t le ov e r be in g N AKED
`
`The “ Naked Cow boy” isn’t t he only “ naked” t radem ar k disput e
`going on t hese days.
`
`DB 85 Gym Cor p. ( “ DB85” ) is t he ow ner of David Bar t on Gym , a
`luxur y healt h club and spa w it h locat ions in New Yor k Cit y,
`Miam i, and Chicago. DB85 also ow ns t he r egist er ed w or d m ar k
`LOOK BETTER NAKED ( for hat s and act ivew ear goods and for
`healt h club ser vices) w hich was r egist er ed on August 5, 1997,
`and w hich claim s fir st use in com m er ce back t o June 1992. Over
`t he last fift een year s, SB85 has been adver t ising it s luxur y healt h
`clubs using
`t he LOOK BETTER NAKED m ar k on billboar ds,
`m agazine and new spaper ads, pr om ot ional flyer s, and t he David
`Bar t on Gym w ebsit e ( see pict ur e above) . SB85’s LOOK BETTER
`NAKED m ar k, and t he goods and ser vices pr ovided t her eunder,
`have also r eceived w idespr ead publicit y in such r egional and
`nat ional publicat ions as Vanit y Fair, The New Yor k Tim es, USA
`Today, New sw eek, CNN, and NBC.
`
`t he
`filed an opposit ion w it h
`On Febr uar y 28, 2008, DB85
`Tradem ar k Tr ial and Appeals Boar d against Body in Pow er, I nc.
`( “ BI P” ) , t he ow ner of t w o fit ness cent er s in t he Chicago, I llinois
`ar ea operat ing under t he nam e “ Body Em pow er ed Fit ness.” See
`DB 85 Gym Cor p. v. Body
`in Pow er,
`I nc., Opposit ion No.
`91182711 ( T.T.A.B. Feb. 28, 2008) . A copy of t he Not ice of
`Opposit ion can be dow nloaded here.
`
`DB85 is opposing a Sect ion 1( a) use- in- com m er ce applicat ion
`filed by BI P on May 10, 2007, seeking t o r egist er t he w or d m ar k
`HAVE YOU SEEN YOURSELF NAKED? for var ious ser vices r elat ing
`t o physical fit ness ( physical fit ness condit ioning classes; physical
`fit ness consult at ion; physical fit ness inst r uct ion; pr oviding fit ness
`and exer cise facilit ies) . The m ar k was published for opposit ion on
`Febr uar y 26, 2008. BI P’s pending applicat ion m ust have been on
`DB85’s radar scr een given t he im m ediacy of t he filing of t his
`opposit ion so soon aft er publicat ion.
`
`DB85 claim s t hat BI P’s m ar k HAVE YOU SEEN YOURSELF NAKED?
`is confusingly sim ilar t o it s LOOK BETTER NAKED m ar k.
`
`DB85 ar gues t hat bot h m ar ks ar e shor t phrases t hat include t he
`dom inant elem ent “ NAKED” at t he end and w hich associat e each
`“ r espect ive ow ner ’s ser vices w it h t he concept of looking bet t er
`w hen undr essed; i.e., t he per cept ion t hat t he ser vices offer ed
`under
`t he r espect ive m ar ks w ill
`im pr ove consum er s’ body
`physique and out war d appearance.” As such, DB85 m aint ains
`t hat bot h m ar ks cr eat e t he sam e com m er cial im pr ession of
`enhancing consum er s’ body appearance w hen naked.
`
`DB85 also not es t he over lapping ser vices – ser vices r elat ing t o
`physical fit ness – as likely t o cr eat e a m ist aken belief in t he
`m inds of consum er s t hat t he ser vices em anat e fr om t he sam e
`sour ce or t hat BI P’s ser vices ar e sponsor ed by, appr oved by, or
`som ehow connect ed w it h DB85 given t hat DB85 offer s t he sam e
`t ype of fit ness ser vices at it s healt h clubs. I n addit ion, t he ot her
`ser vices cit ed in BI P’s applicat ion ar e w it hin DB85’s logical “ zone
`of expansion” of it s healt h club ser vices.
`
`Finally, DB85 ar gues t hat t he ser vices ar e pr om ot ed t hr ough
`sim ilar channels of t rade ( DB85 and BI P bot h have gym facilit ies
`locat ed in t he Chicago ar ea) and t ar get sim ilar cust om er s ( t hose
`looking t o st ay in shape t hr ough physical fit ness) .
`
`V e ga s™Esq. Com m e n t s:
`DB85 does seem t o have t he advant age w it h r espect t o t hr ee of
`t he r elevant Du Pont fact or s, specifically t he sim ilar nat ur e of t he
`ser vices, t he sim ilar it y of t rade channels, and t he fam e of DB85’s
`m ar k. I n addit ion, t her e ar e also no ot her federal r egist er ed
`m ar ks w it h t he w or d NAKED in connect ion w it h fit ness or healt h
`clubs, w hich favor s SB85. ( I t is int er est ing, how ever, t hat t her e
`is one ot her federal r egist rat ion on t he t radem ar k LOOK BETTER
`NAKED held by The Beaut y Mar ket , Lt d. for body m asks, salt
`body scr ub and body but t er cr eam w hich was filed on May 25,
`2005 and r egist er ed on Apr il 10, 2007.)
`
`As for buyer sophist icat ion,