Visual Similarity Sinks SEXIFIT Trademark Application

"Sexifit logo refused primarily because of visual similarity"

SEXIFIT is the name of a workout program primarily directed at women that focuses on strength and core. The workout was developed by a former NFL and NBA dancer. The name is a composite word comprised of a spelling variation of SEXY (i.e., SEXI) and FIT to form the unitary mark SEXIFIT. Unfortunately, the Board’s primary focus on visual similarity would lead to the downfall of a trademark application that included this term.

Procheer Fitness and Dance filed an application to register the mark THE OFFICIAL SEXIFIT & Design mark in connection with “providing fitness instruction services in the field of dance, and physical fitness.” The United States Patent and Trademark Office examined the application and finding no likelihood of confusion issue, published the mark for opposition.

During the 30 day opposition period, ICON Health & Fitness, Inc. opposed the registration of Procheer’s mark alleging it was likely to cause confusion with its prior registrations for IFIT. ICON Health & Fitness owns several fitness brands: Nordictrack, Freemotion, Proform, and iFit. The iFit brand is a mobile application combined with a virtual personal trainer. Although in the fitness or exercise field, a fitness class is different than personal training and definitely appeal to different classes of consumers.

Nevertheless, none of these limitations appeared in THE OFFICIAL SEXIFIT & Design application nor in any of the IFIT registrations. Accordingly, because the Trademark Trial and Appeal Board was forced to compare fitness and exercise with fitness and exercise, it had to conclude the services at issue were related. However, what was abnormal was the Board conclusion that ICON’s IFIT mark was famous for fitness instruction services when all the evidence presented demonstrated that IFIT may be famous for fitness equipment. Fame is not transferable this way.

When it came to the similarity of the marks, the Board gave no consideration to the difference in meaning between the THE OFFICIAL SEXIFIT & Design mark and IFIT mark. Likewise, it gave no consideration to the phonetic dissimilarity between SEXIFIT and IFIT. For trademark searchers, this is an example that visual similarity between two marks is generally the most important consideration when evaluating two marks.

The Board also ignored the design elements in the SEXIFIT & Design mark stating that the literal element is the most important because consumers use words to order and refer to goods and services. Focusing on the literal portion of the mark, the Board found that ICON’s entire IFIT mark was incorporated into the SEXIFIT portion of Procheer’s mark. This is another example for trademark searchers to pay attention to. If a prior registered mark is subsumed in its entirety in the mark you are searching and you can’t find dilution or have credible argument about the unrelatedness of the goods or services at issue, then the mark likely is unavailable.

Accordingly, primarily focusing on visual similarity, the Board granted ICON’s opposition and denied registration of Procheer’s THE OFFICIAL SEXIFIT & Design mark.

2018 State of Branding: Sound Similarity Key to Determining Similar Names

“Google home mini virtual assistant 2018 State of Branding importance of sound similarity to determine similar names”

Sound similarity between two trademarks may be growing in importance to determine similar names after the report released by Bynder and OnBrand. Bynder and OnBrand released the 2018 State of Branding Report and  GoodHands added to the report with their own comments on the state of branding. According to the report, 40% of respondents were investing in voice assistant technology for marketing purposes.  This means that sound similarity between marks may need to be scrutinized more closely when conducting trademark searches.

The similarity of the marks is one of two potentially dispositive likelihood of confusion factors to determine is similar names exist. The other dispositive factor is the relatedness of the goods or services factor. The similarity of the marks factor broken down into three sub-factors:  (1) visual similarity; (2) sound similarity; and (3) similar meanings. The analysis of these three sub-factors leads to a conclusion regarding the overall commercial impression of the marks and ultimately determining if they are similar names.

For the most part, visual similarity has dominated the other two sub-factors by receiving the most weight in the similarity of marks analysis. This is because consumers place more emphasis on things they can see. But sound similarity has been a close second to visual similarity. The reason sound similarity has not historically been on even par with visual similarity is because this sub-factor is more important in markets where goods or services are ordered or purchased by name. A good example of where sound similarity is important in the bar or restaurant market where orders are taken orally as opposed to a retail environment where consumers browse shelves or racks of product.

The rise of Internet shopping and increase use of Amazon’s Alexa and Google Home, are increasing the importance of sound similarity, which is being noticed by marketers according to the 2018 State of Branding report. As trademark searchers, we need to pay attention to this trend and when a mark may be visually different from other marks in the search results but sound similar we may need to raise the warning flag whereas in the past we could stand down.