The Board rendered a split decision in this Section 2(d) opposition to registration of the mark shown immediately below [FRESH and BODY disclaimed] for "non-medicated skin care preparations, namely, lotions" in International Class 3; and "clothing, namely, shirts, pants, shorts, sweatshirts, sportswear, in the nature of sweat pants and tank tops" in International Class 25, accepting applicant's prior registration (Morehouse) defense regarding the Class 3 goods, but finding the mark confusingly similar to opposer's registered mark FB (in standard character form) for overlapping clothing items. GTFM, Inc. v. Fresh Body, LLC, Opposition No. 91209621 (March 4, 2016) [not precedential].
Evidentiary issue: Opposer GTFM moved to strike certain website evidence because applicant had not indicated the relevance of the material in its notice of reliance. The Board pointed out that a procedural objection to a notice of reliance should be raised promptly so that applicant would have time to cure the defect. See Trademark Rule 2.122(e). Therefore, the Board deemed the objection waived.
Morehouse defense: Although applicant did not raise the prior registration defense in its Affirmative Defenses, it claimed ownership of a registration for the mark shown below for "non-medicated skin lotion," and it introduced a copy of the registration into evidence. Opposer did not object to this evidence until its brief at final hearing.
The first question, then, was whether the prior registration defense was tried by implied consent. Looking at the totality of circumstances, the Board concluded that Opposer GTFM was aware that the registration formed the basis of a defense, and it ruled that the issue had been tried by implied consent.
Considering the merits of the Morehouse defense, the Board found it applicable to applicant's class 3 goods. It observed that the goods in the subject application and the prior registration are "essentially identical." As to the mark, the Board found instructive its decision in The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB1983). There, Pearle Vision sought to register PEARLE VISION CENTER with a design element, while already owning registrations for PEARL VISION CENTER in standard character form. Opposer's claim related only to the VISION CENTER portion of the mark. Citing Morehouse, the Board there observed that "An opposer cannot suffer damage, within the meaning of Section 13 of the Trademark Act, by the issuance of a registration if the applicant for such registration already owns an unchallenged registration of that mark for the same goods.
"Here, opposer’s likelihood of confusion claim related only to the FB portion of the applied-for mark, and not to the FRESH BODY and design features of the mark. "Accordingly, as in Place for Vision, Opposer cannot be damaged by registration of the present applied-for mark when Applicant already owns an unchallenged registration for the same goods covered by a mark that is closer to Opposer’s mark than the applied-for mark."
And so the Board dismissed the Section 2(d) claim against applicant's class 3 goods.
Likelihood of confusion: As to the class 25 goods, both the challenged application and opposer's registration included "pants" and "shirts." The Board must presume that these goods travel in the same, normal channels of trade to the usual classes of consumers. The goods encompass inexpensive items that would be purchased with no more than ordinary care. These factors weighed heavily in favor of a finding of likely confusion.
As to the marks, the FB component of applicant's mark is highlighted by its central position and the two circles around it. Although the words FRESH BODY gives Applicant’s mark an appearance and sound that is different from opposer’s, these (disclaimed) words are less distinctive than the FB portion of applicant’s mark.
The Board concluded that, despite the differences between the marks, "the common portion FB in the marks is instrumental in creating the commercial impression of each of the marks, serving to engender similar overall commercial impressions."
In the present case, the words FRESH BODY are likely to be viewed as identifying the previously anonymous source of the identical goods sold under the mark FB by Opposer, and/or as a house mark. Alternatively, the letters FB standing alone in Opposer’s mark may be perceived as simply a shortened form of Applicant’s mark, especially when the respective marks are used in connection with identical goods.
And so the Board found confusion likely, and it sustained opposer's Section 2(d) claim with regard to applicant's class 25 goods.
TTABlog comment: Well, it's about time we had a case where the Morehouse defense actually worked! I think the decision should be precedential. I'm not sure I agree with the Section 2(d) ruling. Isn't FRESH BODY the dominant part of applicant's mark?