https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85594830/DRW20120414073731/1/webcontent?scale=1

In a recent case before the U.S. Trademark Trial and Appeal Board, the TTAB provided useful guidance regarding the burden of proof that parties must meet in trademark opposition proceedings.

In Brick Bodies Fitness Services, Inc v. BRIK Fitness Solutions LLC, the Board held that the mark BRIK FITNESS and Design was likely to cause confusion with Opposer’s mark, Brick Bodies based on the similarity between the parties’ marks and respective health and fitness services.  In so ruling, the Board raised the following observations that touch upon several related issues that litigants face in trademark opposition proceedings:

  1.  Assertion of a “family” of marks.   Here, the Opposer Brick Bodies sought to assert rights in and to four separate trademarks – namely, Brick Bodies, Lynne Brick’s, Build Your Body with Brick, and Brick Bodies Extreme, claiming that collectively they constituted a family of “BRICK” marks that were entitled to greater protection.  The Board opined that the mere use of a common term in multiple trademarks owned by the same party does not a “family” make for purposes of trademark rights.  Instead, other factors must be examined, including the public’s recognition of the marks as emanating from the same source, as supported by website visitors or other consumer perception factors.
  2.   Strength/Weakness of marks.  Applicant claimed that the Opposer’s “brick” marks were weak, since the “brick” derivative of Opposer’s marks were derived from a combination of the surnames of the founders of the company.  The Board rejected this argument, stating that the term “brick” is commonly perceived to relate to a hardened clay block, and not primarily merely a surname.
  3.   Third-party trademark uses.   Applicant submitted into the record evidence of numerous third-party listings for fitness facilities that use the term “brick” as part of their name from several locations throughout the United States.  Surprisingly, and without explanation, the Board reasoned that although use of similar marks on similar goods by third-parties is relevant to show that a mark is weak and entitled to a narrow scope of protection, the Applicant failed to show the extent of such third-party uses.  Therefore, the Board summarily concluded that the uses provided by Applicant were limited in geographic scope and not probative to show that consumers would be aware of such third-party uses.

In the end, the Board relied on the standard likelihood of confusion analysis based on the similarity of sight, sound, and meaning of the parties’ respective BRICK BODIES and BRIKFITNESS marks, together with the similarity of the parties’ services, to deny registration and rule in favor of the Opposer.