IP Law Daily, TRADEMARK—TTAB: HIPE not confusable with HIP for health club services, (Apr 6, 2023)

By Jonathan Anderson

The Board disagreed with the examining attorney’s argument that the pronunciation of HIPE is the phonetic equivalent of “hip.”

The Trademark Trial and Appeal Board has reversed the examining attorney’s refusal to register the marks HIPE FIT and HIPE FITNESS in connection with health club services, concluding that they are not likely to cause confusion with the mark HIP for related services. Applying relevant DuPont factors, the Board found that confusion is unlikely because the marks are sufficiently dissimilar in sound, meaning, and commercial impression, even though the services are in part related and overlap in trade channels (In re: Disciplina Excellentiae, LLC, March 31, 2023, Goodman, C.).

Background. Applicant, Disciplina Excellentiae, LLC, sought registration on the Principal Register of the standard character marks HIPE FIT (FIT disclaimed) and HIPE FITNESS (FITNESS disclaimed) for “Health club services, namely, providing instruction and equipment in the field of physical exercise; Providing assistance, personal training and consultation in the field of physical fitness; Providing small group training in the field of physical fitness; Providing private yoga instruction; Providing recreational services in the nature of athletic facilities, gymnasiums, fitness centers, and exercise rooms; Yoga, pilates, cycling, dance, strength training, and fitness instruction; Special event planning, coordination and consultation services for entertainment purposes” in International Class 41.

The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks resemble and could cause confusion with the standard character and stylized marks HIP, which are jointly owned by one entity for “Education services, namely, training high school students to provide health education and health information resources to their peers, and providing curricula and course materials in connection therewith” in International Class 41, in addition to the standard character mark HIP, owned by a separate entity, for “Arranging and conducting youth sports programs in the field of football; Educational services, namely, providing classes, seminars, and workshops in the fields of sports; Entertainment in the nature of football games” in International Class 41. After reconsideration requests were denied, applicant appealed.

Likelihood of confusion. The Board applied DuPont factors for which there was evidence and argument, namely the similarities between the services and the similarities between the marks. In balancing the factors, the Board concluded that confusion is not likely because the marks are sufficiently dissimilar, even though the services are in part related and overlap in trade channels.

Similarity or dissimilarity of the services. First, the Board found that the services are in part related and overlap in trade channels. For the two commonly owned marks registered for high school health education, applicant’s “small group training” is broad enough to include “training of high school students” and the field of “physical fitness” is under the broader field of health identified by registrant’s services, according to the Board. For the separately owned standard character mark related to youth sports programs, the Board found that internet evidence supports the relatedness of registrant’s educational services with applicant’s health club services. The Board further agreed with the examining attorney that the trade channels overlap, at least for the latter registrant.

Similarity or dissimilarity of the marks. Second, the Board found that registrants’ marks are not similar to applicant’s marks because differences in sound, meaning, and commercial impression outweigh any similarities in appearance. With respect to sound, applicant argued that HIPE is the phonetic equivalent of “hype,” defined as stimulating and enlivening with a “long ‘I’ sound,” as opposed to the cited registrations for HIP, which are defined as “having or showing awareness of or involvement in the newest developments” and which are pronounced with a “short ‘I’ sound.” The examining attorney argued that HIPE is the phonetic equivalent of “hip,” which the Board found was unsupported in the record and that it is more probable the average consumer will pronounce HIPE as applicant argued. When applicant’s marks are considered in their entireties in connection with the services, the Board found they have different connotations and commercial impressions from the registrants’ marks.

Regarding the conceptual strength of the cited marks, applicant argued that the marks are conceptually weak and “have diminished source identifying significance because they are highly suggestive.” The examining attorney argued that applicant failed to provide evidence showing that HIP and HIPE are diluted or commonly used to render them conceptually weak. The Board found the HIP marks inherently distinctive because they registered without a claim of acquired distinctiveness. Although the dictionary definitions do support a finding that HIP is suggestive of up-to-date training and educational services, the Board concluded that applicant did not show the existence of other third-party registrations for the term, apart from the cited registrations, that could demonstrate that HIP conveys a high degree of suggestiveness.

The Case is Serial No. 90426395.

Attorneys: Olivia M. Muller (Erik M. Pelton & Associates, PLLC) for Disciplina Excellentiae, LLC. Valerie Kaplan for the USPTO.

Companies: Disciplina Excellentiae, LLC

Cases: Trademark USPTO