“ROSFIT” and “CROSSFIT” Ruled Not Confusingly Similar

A physical trainer applied for the registration of the trademark “ROSFIT” in classes 38 and 41. Crossfit Inc. filed oppositions based on their trademark “CROSSFIT” in class 41. The Trademark Office dismissed the oppositions, as it understood that the trademarks were not confusingly similar, considering their distinctive elements, such as the logo chosen for the trademark “ROSFIT”, which gave it sufficient distinctive capacity.

Crossfit appealed but, in a split decision, Chamber III of the Federal Court of Appeals upheld the decision of the Trademark Office. The court considered that the term CROSSFIT  is “almost a necessary designation” of the sport it identifies and that, therefore, whoever wished to carry out such activity could distinguish the term CROSSFIT from other trademarks, regardless of the similarities between them.

Even though the court understood there were phonetical similarities, they highlighted the conceptual differences: while the trademark “CROSSFIT” consists of two terms (“CROSS” and “FIT”) with specific meanings, the mark “ROSFIT” only has one term with meaning (“FIT”). Further, the court considered that there were not enough elements in the case to conclude that “CROSSFIT” is a well-known trademark.

Lastly, the majority of the court also took into account the fact that the applicant used the trademark “ROSFIT” on social media, and ruled that the trademarks were not confusingly similar, as it was understood that such use gave the logo a prevailing place in the trademark that clearly differentiated it from the logo Crossfit used.

As for the dissenting opinion, one of the judges considered that the trademark filed could not coexist with the opposing trademark if there was likelihood of confusion in one of the three aspects of the trademark comparison. The dissenting opinion pointed out that “ROSFIT” shares with “CROSFIT” the same number of syllables and the same order in six of its eight letters. Additionally, the key to conclude that the trademarks were confusingly similar was the fact that the applicant offered the same services as the opponent.