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montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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Its a trademark question, no but have watched the videos at

Customer Question

hi Pearl
JA: What written documentation do you have?
Customer: Yes, its a trademark question
JA: Have you talked to a local attorney? Has anything been filed in court?
Customer: no but have watched the videos at
JA: Anything else you want the lawyer to know before I connect you?
Customer: 1 other person has a similar name and our products are somewhat related
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Ely replied 1 year ago.

Hello and welcome to JustAnswer. Please note: This is general information for educational purposes only and is not legal advice. No specific course of action is proposed herein, and no attorney-client relationship or privilege is formed by speaking to an expert on this site. By continuing, you confirm that you understand and agree to these terms.

What can I answer for you in regards ***** ***** trademark matter?

This is not an answer, but an information request. I need this information to answer your question. Please reply, so I can answer your question. Thank you in advance.

Customer: replied 1 year ago.
DR. SKINNY RAPID WEIGHT LOSS SPA, Providing clinical weight management and dietary planning services. FIRST USE: 20131127. FIRST USE IN COMMERCE: 20131127, Men depicted as shadows or silhouettes of men; Silhouettes of men
02.03.02 - Silhouettes of women; Women depicted as shadows or silhouettes of women
02.09.12 - Flying, humans (self-propelled); Humans, including men, women and children, depicted flying (self-propelled)
02.09.19 - Diving, humans; Humans, including men, women and children, depicted playing games or engaged in other sports; Playing games or sports, humans
05.09.05 - Apples
05.09.25 - Coconuts; Other fruits,
Description of Mark Color is not claimed as a feature of the mark. The mark consists of the wording "DR. SKINNY RAPID WEIGHT LOSS SPA" bordered on the left side by the partial outline of an apple with two leaves on the top and bordered on the right side by an abstract human figure in flying or leaping form with arms extended upward.
SERVICE MARK.IS THIS A CONFLICT if I try to register just Dr. Skinny which is what I have been using to see weight loss and vitamin supplements and, sporting goods? I have also been providing online educational products on weightloss and healthy living?
Expert:  Ely replied 1 year ago.

I am going to opt out of your question and open this up for other experts.

Your JustAnswer Account has not been charged for this conversation and your question is back in the queue. You do not have to stay online for the question to be active. Should an expert pick it up, you should be alerted via email and/or SMS (text message) unless you actively disable these features.

There is no need for you to reply at this time as this will "lock" your question back to me, thus inadvertently delaying other experts' access to it.

My apologies for any inconvenience and good luck.

Expert:  montysimmons replied 1 year ago.

I can help you with your question.

The Mark : "Dr. Skinny Rapid Weight Loss SPA"
Word Mark

Goods and ServicesIC 044. US 100 101. G & S: Providing clinical weight management and dietary planning services. FIRST USE: 20131127. FIRST USE IN COMMERCE: 20131127

You wish to use : "Dr. Skinny"

For Goods: weight loss and vitamin supplements and, sporting goods

Answer: There is no guarantee (people can be sued for good reason, bad reason, and No Reason) That Said: You will probably be OK for the reasons provide below:

The test the Examiner will use to Evaluate your Mark is a variation of the "Likelihood of Confusion" test.

. . . . federal trademark law prohibits the use of another’s trademark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a).

So how does one determine if a "use" of a Mark is "likely to cause confusion"? You use a "likelihood of confusion" test.

A likelihood of confusion exists between two marks if USE in actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question.” CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006) (quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004)).

To determine if there is a likelihood of confusion between two marks, nine non-exclusive and non-mandatory factors are normally considered:
(1) the strength or distinctiveness of the plaintiff's mark as actually used in the marketplace;
(2) the similarity of the two marks to consumers;
(3) the similarity of the goods or services that the marks identify;
(4) the similarity of the facilities used by the markholders;
(5) the similarity of advertising used by the markholders;
(6) the defendant's intent;
(7) actual confusion;
(8) the quality of the defendant's product; and
(9) the sophistication of the consuming public.
George & Co., LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 393 (4th Cir. 2009).

These nine factors serve as a guide rather than “a rigid formula for infringement”; they are not all of equal importance and not all factors are relevant in every case.

So you would need to consider the 9 factors above and make a determination. The two big factors are:

(1) Your marks are different.


YOURS: Dr. Skinny (just text)

(2) Goods : your goods/services are different:

HIS: Class 44. Providing clinical weight management and dietary planning services

YOURS: weight loss and vitamin supplements and, sporting goods

You will be associating your make with GOODS and he uses the mark with a SERVICE. Not the same.

Now I have over simplified the test but such is how one would go about forming an opinion on your particular issues. I would predict you would be ok based on the information you have given me (for USPTO registration only consider the mark you asked about).

Now the owner of the "DR. SKINNY RAPID WEIGHT LOSS SPA" may file an Opposition with the USPTO to try and stop your registration of your mark (should you file an application). Such would get a little expensive.

What about being sued?
Yes, you might get sued (anyone can sue for any reason) which can get expensive. You may "win" in the end based on the facts above but it could be a painful win (expensive). There is no zero risk path here except not to use the Dr. Skinny mark. That said, based on the facts you provided, your risks seem low.

Please keep asking questions until you are satisfied with my answers.


Customer: replied 1 year ago.
Thank you for the feeback. Below are a couple of follow up questions:1. One of the tests I guess is Sound, do the names sound the same.
In this case Dr Skinny is the exactly the same. And, we are both in the weight management business albeit service vs actual goods. I noticed the word POSH for instance, there are multiple registrations with that name, then other words or elements in the complete name. I have a very different logo from "DR. SKINNY RAPID WEIGHT LOSS SPA" and do not provide Spa services in North Carolina, the physical location of the Spa. As such, I am wondering if location is to my benefit. I sell primarily on Amazon and other ecommerce websites. We both do have Facebook pages that promote weight management and dietary messages. Would this not cause confusion?2. Would it make sense to contact the "DR. SKINNY RAPID WEIGHT LOSS SPA" owner and iron out the differences prior to my registration. What I am worried about is that, I am looking to go big on marketing and several product launches. If I happen to be a commercial success, this person, may want a piece of the pie.3. I am updating my logo and wanted to make sure I do not have any future issues. So, is your recommendation to not use this just incase, though there is a low risk?Thank you for answering these for me.
Expert:  montysimmons replied 1 year ago.

ANSWER TO Question 1 Above

1A: "Dr. Skinny" does not sound the same as "DR. SKINNY RAPID WEIGHT LOSS SPA" - they do have that one part "Dr Skinny" is identical but the overall impression is different - although "Dr. Skinny" is a dominate feature of their mark - perhaps. Such does give them a point to argue but in the end I submit you would prevail on such "test".

1B: You have a very different logo - that is VERY good. You would want to stay away from any LOGO that looks like theirs.

1C: You sell on Amazon then you sell in North Carolina. And while the location of the SPA may be in North Carolina, I suspect they advertise their services on the internet and anyone can travel to NC and use the spa. Location does not help you.

1D: We both do have Facebook pages that promote weight management and dietary messages. Good point to consider. Again, this issue is about RISK tolerance. What level of risk can you tolerate. The more you actions start approaching the selling of a weight loss service they provide, the more likely you are to be sued (and perhaps lose). The more you change your logo to look like theirs the more likely you would be sued (and perhaps lose.

For example:

First Extreme: You simply do what you are doing - just sell pills under the name "Dr. Skinny" over the internet.

Second Extreme: Suppose you setup a SPA right next door to theirs, Had a Big Sign that said "Dr. Skinny" in big letters and then below another sign that said "Weight Loss Spa" . . . you are going to get sued.

The more your actions move from Extreme 1 to Extreme 2 the higher the risk of being sued. Try to stay toward extreme 1.

Just giving "Weight Loss Tips" is not a big deal but it does nudge you in the direction to Extreme 2 slightly.


At this point I submit it is unlikely that contacting them will lead to anything good for you happening in the long run.

That said, lets say you do not contact them and they sue. The will, after the fact, say if you would have just asked they would have not had a problem. I do know anyone involved I just know people from past experience - they always say that and it is never true.

Question 3

If you are going to be investing lots of money in a brand name you want it to be a strong brand name. "Strong" means the mark had little meaning for your goods before you started using the mark and advertising the mark with your products.

Example: "Apple" for computers. No one would have associated Apple with computers before Apple started using the mark.

Now "Apple" for apples is not only weak, it is generic and not registerable as a mark.

Apple for computers is arbitrary but Apple for apples is generic. You typically want your brand name to be toward the "arbitrary" side.

Now "Dr. Skinny" for weight loss pills is a clever Brand name - which means such is probably used already. When I do a google search for "Dr. Skinny" is get 9,000 hits. There is a "Skinny's" registered mark for weight loss services. Thus, your biggest problem may not be the trademark owner you identified. Need to do your homework here - may be people with "common law" rights.

Below I will give you some examples of where similar marks have been OK and not OK


Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other distinctive matter, or a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences.

ML v ML ***** *****S

See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML, is likely to be perceived as a shortened version of registrant's mark, ML ***** *****S (stylized), when used on the same or closely related skin-care products);


Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming TTAB’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the “strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”);


In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression is created);

MAX v MAX (with pillar design)

In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the “addition of a column design to the cited mark . . . is not sufficient to convey that [the] marks . . . identify different sources for legally identical insurance services”);


In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark,” VANTAGE, to the registered mark would not avoid confusion);


In re SL&E Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both for wallets and various types of bags, likely to cause confusion, noting that there are strong similarities between the marks because they share the same surname, and that consumers viewing the mark EDELMAN may perceive it as an abbreviated form of SAM EDELMAN because it is the practice in the fashion industry to refer to surnames alone);


In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (holding CORAZON BY CHICA with design, and CORAZON with design, both for jewelry, likely to cause confusion, noting that, “to many consumers, applicant’s mark for the identical word ‘Corazon’ followed by the phrase ‘BY CHICA’ will simply be viewed as the identification of the previously anonymous source of the goods sold under the mark CORAZON”);


In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (holding MACHO COMBOS (with “COMBOS” disclaimed), and MACHO (stylized), both for food items as a part of restaurant services, likely to cause confusion); In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that “the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers . . . distinguish the source of each party’s service”);


In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with “CARD” disclaimed), both for banking services, likely to cause confusion, noting that “the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion”);


Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if:

(1) the marks in their entireties convey significantly different commercial impressions; or

(2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g.,


Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that ”CAPITAL” is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks);


Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is not likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression);


Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that “DEER” is descriptive as applied to the relevant goods and thus has no source-indicating significance);


In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with “CATFISH” disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word “BOBBER” has different connotation when used in connection with the respective goods and services);


In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with “GOLD’N CRUST” disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because “GOLDEN CRUST” and “GOLD’N CRUST” are highly suggestive as applied to the respective goods, the addition of “ADOLPH’S” is sufficient to distinguish the marks);

Expert:  montysimmons replied 1 year ago.

If you need help researching your trademark, I can offer an additional service.

I will offer an additional service just in case you have confidential questions.