Friday, February 29, 2008

Competing fitness clubs in trademark battle over being NAKED

The “Naked Cowboy” isn’t the only “naked” trademark dispute going on these days.

DB 85 Gym Corp. (“DB85”) is the owner of David Barton Gym, a luxury health club and spa with locations in New York City, Miami, and Chicago. DB85 also owns the registered word mark LOOK BETTER NAKED (for hats and activewear goods and for health club services) which was registered on August 5, 1997, and which claims first use in commerce back to June 1992. Over the last fifteen years, SB85 has been advertising its luxury health clubs using the LOOK BETTER NAKED mark on billboards, magazine and newspaper ads, promotional flyers, and the David Barton Gym website (see picture above). SB85’s LOOK BETTER NAKED mark, and the goods and services provided thereunder, have also received widespread publicity in such regional and national publications as Vanity Fair, The New York Times, USA Today, Newsweek, CNN, and NBC.

On February 28, 2008, DB85 filed an opposition with the Trademark Trial and Appeals Board against Body in Power, Inc. (“BIP”), the owner of two fitness centers in the Chicago, Illinois area operating under the name “Body Empowered Fitness.” See DB 85 Gym Corp. v. Body in Power, Inc., Opposition No. 91182711 (T.T.A.B. Feb. 28, 2008). A copy of the Notice of Opposition can be downloaded here.

DB85 is opposing a Section 1(a) use-in-commerce application filed by BIP on May 10, 2007, seeking to register the word mark HAVE YOU SEEN YOURSELF NAKED? for various services relating to physical fitness (physical fitness conditioning classes; physical fitness consultation; physical fitness instruction; providing fitness and exercise facilities). The mark was published for opposition on February 26, 2008. BIP’s pending application must have been on DB85’s radar screen given the immediacy of the filing of this opposition so soon after publication.

DB85 claims that BIP’s mark HAVE YOU SEEN YOURSELF NAKED? is confusingly similar to its LOOK BETTER NAKED mark.

DB85 argues that both marks are short phrases that include the dominant element “NAKED” at the end and which associate each “respective owner’s services with the concept of looking better when undressed; i.e., the perception that the services offered under the respective marks will improve consumers’ body physique and outward appearance.” As such, DB85 maintains that both marks create the same commercial impression of enhancing consumers’ body appearance when naked.

DB85 also notes the overlapping services – services relating to physical fitness – as likely to create a mistaken belief in the minds of consumers that the services emanate from the same source or that BIP’s services are sponsored by, approved by, or somehow connected with DB85 given that DB85 offers the same type of fitness services at its health clubs. In addition, the other services cited in BIP’s application are within DB85’s logical “zone of expansion” of its health club services.

Finally, DB85 argues that the services are promoted through similar channels of trade (DB85 and BIP both have gym facilities located in the Chicago area) and target similar customers (those looking to stay in shape through physical fitness).

Vegas™Esq. Comments:
DB85 does seem to have the advantage with respect to three of the relevant Du Pont factors, specifically the similar nature of the services, the similarity of trade channels, and the fame of DB85’s mark. In addition, there are also no other federal registered marks with the word NAKED in connection with fitness or health clubs, which favors SB85. (It is interesting, however, that there is one other federal registration on the trademark LOOK BETTER NAKED held by The Beauty Market, Ltd. for body masks, salt body scrub and body butter cream which was filed on May 25, 2005 and registered on April 10, 2007.)

As for buyer sophistication, while gym memberships are not typically bought on impulse (notwithstanding the aggressiveness of the sales people at such clubs), it’s not clear that the cost of the gym membership is so high that customers are likely to exercise a heightened degree of care so as to eliminate any potential likelihood of confusion. This factor does not seem to favor either side.

Finally, I do not agree entirely with DB85 about the similarity of the marks. A likelihood of confusion analysis considers the marks as a whole and not the marks as dissected; and the use of identical (even dominant) words in common does not automatically mean that the two marks are similar. In this case, the only similarities in the appearance of the mark is the single word NAKED -- BIP’s mark includes the additional words “HAVE YOU SEEN YOURSELF” and its mark is in the form of a question whereas DB85’s mark, with the word “LOOK BETTER” is more of an affirmative assertion.

While the marks are dissimilar in sight and sound, DB85 may have a valid point that the “meanings” of the two marks are nonetheless similar in a way that conveys similar overall commercial impressions such that there is probability that a reasonably prudent consumer may be confused as to the source of the services.

My initial impression was that BIP’s mark HAVE YOU SEEN YOURSELF NAKED? did convey a different message from DB85’s LOOK BETTER NAKED because it asks the consumer (with a hint of criticism) whether they have seen themselves naked lately as to suggest that out-of-shape consumers (key target customers for such a business) might realize that they are out-of-shape if they had seen themselves naked. However, on further reflection, this suggestion is ultimately similar to that of DB85’s LOOK BETTER NAKED – basically, each are trying to sell their fitness services with the suggestion that they can help the consumer look better when naked.

Because the other factors do tend to weigh mostly in DB85’s favor, the similarity of the marks need not be as strong in order for DB85 to make a successful case for likelihood of confusion.

One interesting endnote -- BIP may already be taking steps to try and further distinguish its slogan: BIP’s home page currently has the following slogan: “Have You Seen Yourself Naked LatelyTM” But based on the above analysis, even this addition may still not be enough.


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