Intellectual Property Law

Chapter 4 Case Study Answers

Case Study: Fit Forever plans to use the mark OCTANE EXPERIENCE in connection
with personalized (one-on-one) fitness instruction.

Activities: You may need to access the USPTO website or the TMEP to answer these
questions.

• Use the USPTO’s TESS Search System. Do you believe Fit Forever could secure a
registration for the mark OCTANE EXPERIENCE for individualized fitness classes?
At the time this material was prepared, there was no
identical mark OCTANE EXPERIENCE on the records of the USPTO.
There are a number of marks that include the word “Octane” in
somewhat related fields, including the following:
• Hi-Octane Boosters (for racquetball rackets)
• Octane Athletics (for clothing)
• Octane Wellness Sustainable Life Fuel (for health care services)
• Brain Octane (for diet and nutritional supplements)
• Octane Fitness (stationary elliptical exercise equipment—with
“Fitness” disclaimed)
The coexistence of these marks with the common element “Octane”
suggests that the term is somewhat weak in the field of fitness,
athletics, and nutrition. Thus, there should be room for another mark
with the word “Octane” so long as it can be distinguished from the
existing marks.

Similarly, there are numerous marks that use the word
“EXPERIENCE” in connection with related goods, such as THE
WELLNESS EXPERIENCE and PREMIER FITNESS
EXPERIENCE, once again suggesting that there should be room for
another mark with the word “Experience” so long as it can be
distinguished from the existing marks.

• Draft an appropriate identification of the services to be offered under the mark
and indicate the International Class or Classes for such.
Providing personalized physical fitness instruction and training
services for individuals; providing coaching services in the fields of
fitness and wellness. International Class 41.