Babies at the Barre, LLC

This Opinion is not a
Precedent of the TTAB

Mailed: July 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Babies at the Barre, LLC
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Serial No. 87090462

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Jan Matthew Tamanini of JMT Law, LLC,
for Babies at the Barre, LLC.

Won T. Oh, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.

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Before Ritchie, Adlin, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Babies at the Barre, LLC (“Applicant”) seeks registration on the Principal Register

of the mark BABIES AT THE BARRE, in standard characters, for “Conducting

fitness classes; physical fitness instruction; physical fitness training services,” in

International Class 41.1 The Examining Attorney refused registration of Applicant’s

1Serial No. 87090462, filed on June 30, 2016, based upon Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), alleging a date of first use of February 2015 and first use in commerce
of April 11, 2015.
Serial No. 87090462

applied-for mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on

the prior registration of the mark BABY BARRE, also in standard characters, for

“Education and entertainment, namely, physical fitness conditioning classes,

physical fitness instruction, personal training, dance classes, and workshops and

seminars in the field of nutrition for consumers,” in International Class 41.2

When the refusal was made final, Applicant filed a request for reconsideration

and an appeal. After the request for reconsideration was denied, and the appeal was

briefly suspended pending a Section 8 filing for the cited registration, the appeal was

resumed. The appeal is fully briefed. We affirm the Section 2(d) refusal to register.

I. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an

analysis of the probative facts in evidence that are relevant to the factors bearing on

a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin

Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In

considering the evidence of record on these factors, we keep in mind that “[t]he

fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of

differences in the essential characteristics of the [goods or services] and differences

in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

2 Registration No. 4152749, registered June 5, 2012, disclaiming the exclusive right to use
the term “BABY” apart from the mark as shown. Section 8 affidavit accepted.

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Serial No. 87090462

USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB

2014). “Not all of the [du Pont] factors are relevant to every case, and only factors of

significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In

re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).

A. The Services, Trade Channels and Purchasers

We consider first the similarities or dissimilarities between the respective

services as identified in the application and the cited registration. See Stone Lion

Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161

(Fed. Cir. 2014) (goods as identified in involved application and cited registration

compared). Both the application and the cited registration identify “physical fitness

instruction.” Applicant admits that the services are “similar” but denies that they are

the same, as Applicant contends that the actual services offered are somewhat

different. 10 TTABVUE 5. It is axiomatic, however, that we must look at the services

as identified. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d

937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the

question of registrability of an applicant’s mark must be decided on the basis of the

identification of goods set forth in the application regardless of what the record may

reveal as to the particular nature of an applicant’s goods, the particular channels of

trade or the class of purchasers to which the sales of goods are directed.” (citations

omitted)). The services overlap and are legally identical.

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Serial No. 87090462

As for the channels of trade, when as here, the services are legally identical, they

are presumed to travel in the same channels of trade to the same class of purchasers.

In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even

though there was no evidence regarding channels of trade and classes of consumers,

the Board was entitled to rely on this legal presumption in determining likelihood of

confusion). Thus, without regard to Applicant’s arguments and evidence of

marketplace use, we must presume that the trade channels and classes of purchasers

are the same for both the “physical fitness instruction” identified by Applicant and

the “physical fitness instruction” identified by the registrant of the cited registration.

We find that these factors weigh heavily in favor of finding a likelihood of

confusion.

B. Strength of the Cited Mark

Applicant argues that the cited mark is weak. 10 TTABVUE 8. As Applicant notes,

the cited mark disclaims the term “BABY.” Applicant further argues in its April 17,

2017 Response to Office Action that “[t]he term Barre is descriptive, used in dozens

of currently registered marks for registrants conducting exercise classes using a

ballet barre or its equivalent.” In this regard, Applicant included with that Response

to Office Action a chart listing six third-party registrations that include the term

“BARRE” for services related to physical fitness instruction. The six marks listed are

ELITE BARRE FITNESS STUDIO; CLASSIC BARRE YOGA BLISS; EMPOWER

BARRE; BROOKLYN BARRE; ZEN BARRE; and BUMP AT THE BARRE. The

Examining Attorney did not object to the list, but rather treated it as though the

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Serial No. 87090462

registrations are of record. Hence, we consider the list for whatever probative value

it may have.

Applicant also included with its December 1, 2017 Request for Reconsideration

the Google search results for “baby barre.” Applicant only included the search results,

rather than the webpages cited in the search results. Again, however, the Examining

Attorney did not object, and so we consider the search results for whatever probative

value they may have. The results include the following references and descriptions of

physical fitness services:

Babies on Board: Now new moms can get back to the barre and bring
their babies with them. youtube.com.

Stroller Barre® Exercises for Moms. https://fit4mom.com.

Pure Babies: Baby Bounce Back/Pure Barre. purebarre.com.

New Mom Workout Trend: Babywearing at the Barre – the Bump
Thebump.com.

The Follow-Along Barre Workout for New Moms. fitpregnancy.com.

BYO Baby Barre at Y2B Fit – This baby-wearing barre class is designed
for mommies and babies (through crawling age).
classpass.com.

It is apparent that the terms “baby” and “barre” are at least suggestive of physical

fitness instruction offered for mothers and their babies with a component of a dance

or ballet workout at the barre. That said, to the extent Applicant is arguing that the

mark in the cited registration is merely descriptive and unprotectably weak, the

mark, which is registered on the Principal Register without a claim of acquired

distinctiveness, is entitled to a presumption of validity that cannot be challenged via

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Serial No. 87090462

this ex parte proceeding. 15 U.S.C. § 1057(b). For the same reason, we cannot

countenance Applicant’s assertions that Registrant appears to not be using the mark.

10 TTABVUE 20.

While the degree of descriptiveness of the cited mark may influence whether or

not confusion is likely, it is well recognized that even weak marks are entitled to

protection against a mark that is substantially similar and is used on identical

services, as here. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400,

182 USPQ 108, 109 (CCPA 1974).

C. The Marks

We next compare the marks in their entireties for similarities and dissimilarities

in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73

USPQ2d at 1692. The test is not whether the marks can be distinguished when

subjected to a side-by-side comparison, but rather whether the marks are sufficiently

similar in terms of their overall commercial impression that confusion as to the source

of the services offered under the respective marks is likely to result. Coach Servs.,

Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. Under actual marketing

conditions, consumers do not necessarily have the luxury of making side-by-side

comparisons between marks, and must rely upon their imperfect recollections.

Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus

is on the recollection of the average purchaser, who normally retains a general rather

than a specific impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d

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Serial No. 87090462

1264, 1268 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108

(TTAB 1975).

The mark in the cited registration is BABY BARRE. Applicant’s mark is BABIES

AT THE BARRE. Both contain the term “BARRE” and the similar modifier “BABY”

or “BABIES.” In this regard, the marks are similar in sight and sound. As for

connotation and commercial impression, as noted above, both marks would likely be

understood by consumers as referring to physical fitness instruction for mothers and

their babies with a component of a dance or ballet workout at the barre.

Taking into account that the terms in the cited mark (“BABY” and “BARRE”) are

suggestive of the identified services, and considering the marks as a whole, we note

nevertheless that the marks use very similar wording on identical services. Where,

as here, the marks appear on identical services, the degree of similarity between the

marks necessary to support a finding of likely confusion declines. Bridgestone Ams.

Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.

2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d

1698 (Fed. Cir. 1992). The first du Pont factor also favors finding a likelihood of

confusion.

D. Conditions of Sale

Applicant argues that we should consider the sophistication and degree of

purchaser care likely to be exercised by the relevant consumers. In particular,

Applicant argues:

Choosing an exercise class, whether an individual plans to participate
remotely or in person, requires a potential participant to perform, at a

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Serial No. 87090462

minimum, a cursory investigation to determine whether to go ahead
with a class purchase considering several relevant factors. . . . Mothers
of young children are required by the very nature of their parental
responsibilities to balance many considerations in selecting an exercise
service provider. It’s particularly difficult to conceive of any situation in
which the mother of a young child could choose an exercise provider on
impulse. 10 TTABVUE 17-19.

The relevant consumers of the services here include general consumers of physical

fitness instruction. In this regard, we must consider the degree of care that would be

exercised by the least sophisticated consumers of these services. See Stone Lion

Capital 110 USPQ2d at 1163 (affirming that TTAB properly considered all potential

purchasers for recited services, including both sophisticated and unsophisticated

investors, since precedent requires consumer care for likelihood-of-confusion decision

be based “on the least sophisticated potential purchasers”). Despite Applicant’s

assertions, neither Applicant’s nor Registrant’s services are limited to providing

physical fitness instruction for families or children, and there is no evidence that

general consumers of physical fitness instruction would exercise a heightened degree

of care. This factor is neutral.

II. Conclusion

After considering all of the arguments and evidence of record as they pertain to

the relevant du Pont factors, we find that the services are legally identical and

presume that they would travel through the same channels of trade to some of the

same general consumers. There is no evidence that all purchasers of these services

are sophisticated or careful in their purchase or consumption of physical fitness

instruction. We further find that the marks as a whole are similar in sight, sound,

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Serial No. 87090462

and especially in commercial impression. Accordingly, despite some suggestiveness

of the cited mark, we find a likelihood of confusion between Applicant’s mark BABIES

AT THE BARRE, and the registered mark BABY BARRE, for their respective

identified services, which both include “physical fitness instruction.”

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

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