Likelihood of Confusion: Are Personal Training Services Related to Clothing

For e-commerce brands operating in the health, fitness, or lifestyle space, trademark clearance can be deceptively complex. A key issue that frequently trips up applicants is the relatedness of goods and services under Section 2(d) of the Lanham Act—the provision that governs likelihood of confusion. A recent decision from the Trademark Trial and Appeal Board (TTAB) in In re Surf Ready Fitness, Serial No. 90548268 (June 21, 2023) [not precedential], is a valuable case study on how the USPTO evaluates whether seemingly different offerings—like physical training services and clothing—are related for trademark purposes.

Are Personal Training Services Related to Clothing for Trademark Purposes? A Lesson from the TTAB’s Surf Ready Fitness Decision?

Understanding the Legal Framework: The DuPont Factors

Under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), the TTAB evaluates likelihood of confusion based on thirteen factors, though not all are relevant in every case. In Surf Ready Fitness, the Board focused on the three most commonly applied:

• Similarity of the trademarks;
• Relatedness of the goods and services; and
• Similarity of the channels of trade and classes of consumers.

Also relevant, though not decisive, was the degree of consumer care. Let’s break down how the Board applied these factors in this case.

The Conflict: SRF & Design (Training) vs. SRF (Clothing)

The applicant, Surf Ready Fitness, sought a federal trademark registration of a stylized trademark featuring the letters SRF within a circular design, used in connection with fitness training services, online videos, blogs, and newsletters. The Examining Attorney refused registration, citing a likelihood of confusion with the existing SRF word mark, registered for a broad range of apparel—sweatshirts, hoodies, hats, pants, and similar items.
Similarity of the Marks

The Board found the two marks “very similar” in sight, sound, and commercial impression. Even though the applicant included a stylized design, it did not meaningfully change the mark’s pronunciation or perception. The circular border was considered a non-distinctive “carrier” for the SRF letters. Importantly, the cited trademark registration was in standard characters, meaning it could appear in the same font or style as the applicant’s trademark.

The Board also dismissed the applicant’s argument that SRF in the cited mark would be pronounced “surf” while its own mark would be read as the individual letters “S-R-F.” The TTAB reiterated that there is no “correct” pronunciation of a mark, and consumers may reasonably interpret both marks the same way—potentially as “surf.”

Relatedness of Goods and Services

This was the heart of the trademark dispute. The applicant argued that personal training services are fundamentally different from clothing, and that consumers would not expect them to come from the same source.

But the TTAB disagreed, citing multiple lines of evidence:

• Applicant’s Original Filing Included Clothing: Although the applicant eventually deleted clothing from its application, the original filing included hoodies, pants, sweaters, and other items. Its specimen of use even showed a hoodie bearing the SRF mark. The Board viewed this as compelling evidence that the applicant itself considered fitness services and clothing to be related under the same brand.
• Third-Party Evidence Supported Overlap: The Examining Attorney introduced screenshots of websites from fitness brands offering both apparel and training services under a single mark. Additionally, ten third-party registrations showed that a single entity had registered the same mark for both types of goods and services. This suggested that in real-world commerce, consumers do encounter businesses offering both.
• Applicant’s Rebuttal Lacked Context: In response, the applicant submitted pairs of registrations showing different owners using the same or similar marks for clothing and personal training. However, the Board gave these limited weight, as there was no evidence that the marks coexisted in the marketplace without confusion, nor that any coexistence agreements existed.

In short, the TTAB concluded that the goods and services were commercially related and could be offered under the same mark, making confusion likely.

Channels of Trade and Classes of Consumers

The Board also found overlap in trade channels. Many fitness brands sell apparel directly on their websites alongside online fitness programs, blog content, and other media. Given that the cited registration had no restrictions on channels of trade, the TTAB presumed it could be sold wherever clothing is normally sold—including ecommerce platforms used by fitness businesses.

As for the class of consumers, the TTAB noted that fitness services and clothing are not necessarily expensive or purchased with great care. The Board rejected the applicant’s unsupported assertion that consumers of fitness instruction are highly discerning. Instead, it emphasized the rule that the analysis must consider the least sophisticated purchaser—in this case, someone casually signing up for training or buying a hoodie online.

Practical Takeaways for Fitness Brands and Ecommerce Sellers

This case offers several important lessons:

• Don’t Assume Goods and Services Are Unrelated: Even if your brand focuses on services (like personal coaching), you may face Section 2(d) refusals if another party already holds a registration for a similar mark on merchandise—especially clothing.
• Past Filings Can Come Back to Haunt You: The applicant’s prior inclusion of apparel goods (even though later deleted) significantly influenced the Board’s view of relatedness. This underscores the need for applicants to be strategic when drafting initial applications.
• Real-World Use Matters: The TTAB gave significant weight to website evidence showing that fitness brands often offer both services and merchandise under a unified mark. If you operate in a hybrid space—selling both goods and services—your trademark strategy should reflect that.
• Real-World Use Matters: The TTAB gave significant weight to website evidence showing that fitness brands often offer both services and merchandise under a unified mark. If you operate in a hybrid space—selling both goods and services—your trademark strategy should reflect that.
• Trademark Clearance Should Be Broad and Forward-Looking: Many brands evolve to include apparel or digital services over time. A trademark search and legal review should account not only for your current offerings but also for foreseeable extensions of your brand.

Conclusion

In Surf Ready Fitness, the TTAB reaffirmed a basic but often misunderstood principle: relatedness under Section 2(d) is not about the goods or services themselves, but about how consumers perceive the connection between them. In today’s ecommerce landscape—especially in fitness and lifestyle sectors—branded clothing and training services often go hand-in-hand.

For startups, personal brands, and online businesses, this case is a reminder to take a holistic view of your brand’s footprint. At our firm, we help ecommerce and service-oriented businesses conduct thorough trademark searches, evaluate potential conflicts, and draft state and federal trademark applications tailored to avoid costly trademark refusals.