Aaron T. Tabor, M.D.v.Frank J. LaBarba, II

Trademark Trial and Appeal Board

Jun 14, 2007

No. 91166743 (T.T.A.B. Jun. 14, 2007)

Mailed: June 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Aaron T. Tabor, M.D.
v.
Frank J. LaBarba, II
_____

Opposition No. 91166743
to application Serial No. 78399621
filed on April 9, 2004
_____

George T. Mann of Allman, Spry, Leggett & Crumpler for Aaron
T. Tabor, M.D.

Frank J. LaBarba, II, pro se.
______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Frank J. LaBarba, II, seeks registration of
the mark REVIVAL WATER (in standard character form, WATER
disclaimed) for goods identified as “non-alcoholic
beverages, namely, bottled water, spring water, drinking
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166743
2
water, purified water, lemon flavored water and mint
flavored water” in International Class 32.1
Opposer, Aaron T. Tabor, M.D., has opposed registration
of applicant’s mark on the ground that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used and registered mark REVIVAL, for “soybean-
derived dietary supplement,” and “soy protein for use as a
food additive in cereals, breads, muffins and meat,” among
other goods and services, as “to be likely when used on or
in connection with the goods of Applicant to cause
confusion, or to cause mistake or to deceive.”
Applicant filed an answer by which it denied the
salient allegations.2
The evidence of record consists of the pleadings, the
file of the opposed application, and the testimony
depositions, with accompanying exhibits, of Aaron T. Tabor,
M.D., opposer, taken on June 29, 2006, and of Mr. Frank J.
LaBarba, II, applicant, taken on September 6, 2006. In

1 Serial No. 78399621, filed April 9, 2004, alleging a bona fide
intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. §1051(b).

2 Applicant’s answer also contained several affirmative defenses,
including laches, estoppel and unclean hands. However, inasmuch
as applicant did not pursue any of its affirmative defenses in
taking testimony, submitting evidence, or filing its brief, we
consider these affirmative defenses to be waived. In addition,
applicant’s allegation that opposer committed fraud in obtaining
his registrations, to the extent it is separate from the defense
of unclean hands, is an impermissible collateral attack in the
absence of a counterclaim against the registrations.

Opposition No. 91166743
3
addition, opposer submitted, under notice of reliance,
status and title copies of each of his three pleaded
registrations, applicant’s responses to Interrogatories Nos.
19, 20 and 23, as well as printouts from selected covers and
pages of two published books and ten published magazine
periodicals.3
STANDING/PRIORITY
The pleaded registrations, which are in full force and
effect, and are owned by opposer, are summarized as follows:
Registration No. 2208921, for the mark REVIVAL (in
typed form) for “soybean-derived dietary
supplement” in International Class 5, issued on
December 8, 1998, Section 8 accepted and Section
15 acknowledged;

Registration No. 2348156, for the mark REVIVAL (in
typed form) for “newsletters featuring information
on diet, cancer prevention, and health” in
International Class 16, for “soy protein for use
as a food additive in cereals, breads, muffins and
meat” in International Class 29, and for
“educational services, namely, conducting
instructional courses in the fields of diet,
cancer prevention, and health” in International
Class 41, issued on May 9, 2000, Section 8
accepted; and

Registration No. 2362163, for the mark REVIVAL (in
typed form) for “providing information in the
field of health and well being, nutrition, diet,
dietary supplements, drugs, cancer and other

3 We note that applicant filed concurrently with its brief a
document titled “notice of reliance” and listed various exhibits
introduced during the course of Mr. LaBarba’s testimony
deposition. A notice of reliance is a method by which a party
may introduce certain types of evidence, e.g. printed
publications or official records, and must be filed during a
party’s trial period. We consider applicant’s filing merely to
be an addendum to applicant’s brief highlighting certain evidence
of record, and not an untimely notice of reliance under Trademark
Rule 2.122.
Opposition No. 91166743
4
diseases, prevention and the health care industry
by means of a global computer network” in
International Class 42, issued on June 27, 2000,
Section 8 accepted and Section 15 acknowledged.

Because opposer has made the pleaded registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In addition, opposer’s testimony of record
establishes that the first of its products to be sold
bearing its REVIVAL mark was “a soy shake mix,” and that the
date of such use of the mark was 1997, a date prior to the
filing date of the opposed application. Tabor Dep. p. 17.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under
Trademark Act Section 2(d) is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Opposition No. 91166743
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We begin with an analysis of the marks. Under this du
Pont factor, we look to the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their overall commercial impressions
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the perception and recollection of the average purchaser,
who normally retains a general rather than specific
impression of trademarks. See Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
As a preliminary matter, in making this determination
we have considered applicant’s argument that the existence
of third-party registered marks that contain the root word
“REVIVE” or its foreign equivalent for various beverages,
and third-party registered marks that contain the word
“REVIVAL” for a variety of goods and services, not including
dietary supplements, water or shake mixes, limit the scope
of protection to which opposer’s mark is entitled. However,
we find the argument unpersuasive. First, such
Opposition No. 91166743
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registrations are not evidence of use and have little
probative value as to the sixth du Pont factor, namely, the
number and nature of similar marks in use on similar goods
in the marketplace. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973). Second,
while third-party registrations may be “useful to
demonstrate the sense in which a term is used in ordinary
parlance” and “can show that a particular term has been
adopted by those engaged in a certain field or industry and
that said term has less than arbitrary significance with
respect to certain goods or services,” In re Dayco Products-
Eaglemotive, Inc., 9 USPQ2d 1910, 1911 (TTAB 1988), none of
the third-party registrations containing the word “REVIVAL”
are for beverages, dietary supplements or shake mixes.
Therefore, they have little probative value as to this
point.
With regard to the three third-party registrations for
various beverages, the marks REVIVE, BODY REVIVE and
RINASCENTE (translated to “The Reviving”),4 these marks are
different from both opposer’s and applicant’s marks.
Moreover, the registration for RINASCENTE registered solely
on the basis of a foreign registration under Trademark Act
Section 44, and thus is of very limited probative value.

4 In his testimony deposition, applicant placed into the record
U.S. Registrations Nos. 2145494, 2616045, and 2984425.
Opposition No. 91166743
7
Cf. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). In view thereof, we do not consider the mark REVIVAL
to be a weak mark entitled to only limited protection.
We find the marks at issue, REVIVAL and REVIVAL WATER,
to be nearly identical. The dominant portion of applicant’s
mark is the term REVIVAL, inasmuch as the disclaimed term
WATER is the generic word for the goods. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“That a particular feature is descriptive [or
otherwise lacking in distinctiveness]. . . with respect to
the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark …”).
Thus, the dominant element in applicant’s mark is identical
to the entirety of opposer’s mark.
As to the connotation of this common term, each party
provided significant testimony and arguments explaining the
commercial meaning that his respective mark is intended to
create in the minds of potential purchasers. Whereas both
parties asserted that “revival” is indicative of products
one ingests to attain or sustain good health, feel renewed
or restored, the parties also proffered testimony that
provides a more specific and targeted commercial impression
of the term REVIVAL vis-à-vis defined consumer groups to
whom both opposer and applicant exert marketing efforts.
Opposition No. 91166743
8
Opposer testified that its REVIVAL mark “really imparts
a notion of someone being refreshed, feeling better, being
revived.” Tabor Dep. p. 14. Through the introduction of
three exhibits in the nature of consumer newsletters,
opposer highlighted that its goods are marketed, in part,
through humanitarian efforts with various Christian
ministries. Tabor Dep. pp. 22-23. In identifying and
describing an array of advertising efforts that encompass
online, print, direct mail, radio and television venues,
opposer noted that certain radio efforts include “spots … on
Christian radio.” Tabor Dep. p. 34. He stated that certain
television placements are “with a Christian ministry, the
CB, Christian Broadcasting Network,” and that its
advertising has been “targeting the Christian audience…”
Tabor Dep. p. 35. Opposer continued that “we also work with
quite a few Christian ministries on-line.” Tabor Dep. p.
36. He also stated, “We’ve spent … over $19 million
building the Revival trademark, with a great portion of that
in the Christian area, as well as secular area.” Tabor Dep.
P. 41. Moreover, opposer testified that its widespread
advertising efforts are “targeted to a secular market.”
Tabor Dep. p. 35.
Applicant testified that “our company is an openly
Christian company. And the association between the word
“revival” and the word “water” is a spiritual connotation.”
Opposition No. 91166743
9
LaBarba Dep. p. 10. He stated that applicant markets the
bottled water primarily to Christian ministries, churches,
organizations, conferences, and “events that are usually
Christian based.” LaBarba Dep. p. 35. Applicant promotes
his product through a website, word-of-mouth, phone calls,
emails, attendance at church conferences and bookstores, and
through conversations with pastors and pastor offices.
LaBarba Dep. pp. 62-62.
Thus, the record evidences that, with respect to a
significant portion of their target audience, both marks
would evoke the impression of a “revival” in a religious
sense as well as a healthful sense. The parties have amply
described this connotation behind their respective REVIVAL
and REVIVAL WATER marks. Consequently, in addition to
evoking a common suggestive feeling of being physically
revived, both marks also create the same shared suggestive
religious-oriented impression. We further note that the
application is not limited to a particular market and as
such the non-religious connotation is applicable to
applicant’s goods.
In view of the above, and underscoring that the only
feature differentiating the marks is the generic disclaimed
term WATER, we conclude that the marks are essentially
identical in their appearance, as well as in the commercial
Opposition No. 91166743
10
impressions and meanings they readily convey. Accordingly,
this du Pont factor strongly favors opposer.
We next consider the relatedness of opposer's and
applicant's goods. As regards the application and the
registrations, we must make our findings based on the goods
as they are recited in the application and registrations,
respectively. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In
re Elbaum, 211 USPQ 639 (TTAB 1981).
The goods at issue need not be identical or directly
competitive in order for there to be a likelihood of
confusion. Rather, the respective goods need only be
related in some manner or the conditions surrounding their
marketing be such that they could be encountered by the same
purchasers under circumstances that could give rise to the
mistaken belief that the goods come from a common source.
In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Moreover, “the greater the degree of similarity between
the applicant’s mark and [opposer’s mark], the lesser the
degree of similarity between the applicant’s goods or
services and the [opposer’s] goods or services that is
required to support a finding of likelihood of confusion.”
In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001);
Opposition No. 91166743
11
Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB
1981); TMEP §1207.01(a) (4th ed. 2005). Cf. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S.
1034 (1992) (where the goods or services are virtually
identical, the degree of similarity in the marks that is
necessary to support a conclusion of likely confusion
declines). However, if the goods are not related or are not
marketed in such a way that they would be encountered by the
same persons in situations that would create the incorrect
assumption that they originate from the same source, then,
even if the marks are identical, confusion is not likely.
Shen Manufacturing Co. v. Ritz Hotel Ltd, 393 F.3d 1238, 73
USPQ2d 1350, (Fed. Cir. 2004).
Opposer’s pleaded Registrations Nos. 2208921 and
2348156 cover a “soybean-derived dietary supplement” in
International Class 5 and “soy protein for use as a food
additive in cereals, breads, muffins and meat” in
International Class 29,5 respectively. As identified, the
differences between these goods on one hand, and bottled,
flavored and purified water on the other, are too great to

5 Opposer’s pleaded Registrations Nos. 2348156 and 2362163 cover
services in the nature of providing information and education in
the fields of diet, cancer prevention, health, nutrition, dietary
supplements, drugs, and Registration No. 2348156 covers
newsletters on such topics. However, neither party pursued
arguments relating to such goods or services. Accordingly, our
Opposition No. 91166743
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find a likelihood of confusion in the absence of further
evidence to support such a conclusion. Nor does the record
conclusively establish that the goods are complementary.
Opposer has presented no evidence that any of the goods
named in his three pleaded registrations are closely related
to the goods named in the application, or that they are used
in such a manner as to be complementary in the marketplace.6
Hence, we cannot determine from the pleaded
registrations, the application, and the evidentiary record
before us that the goods are related, or complementary in
actual use.
In view thereof, and notwithstanding any possible
similarity in the marks, the differences in these goods, as
identified in the application and registrations, are too
great to find a likelihood of confusion without evidence to
support such a conclusion.
Thus, in view of our finding that opposer has not shown
that the goods are related or that the channels of trade
overlap, we conclude that the evidence of record as it

analysis centers on the Class 5 and Class 29 goods that opposer’s
registrations encompass.
6 Opposer appears to argue that the “soybean-derived dietary
supplement” identified in Registration No. 2208921 includes its
“soy shake mixes.” Opposer has presented no evidence to support
this contention, and we find that the goods identified in
Registration No. 2208921 do not include “soy shake mixes.” Not
only is it not clear from the record that “dietary supplement”
would include a shake mix form; it is also not clear that a soy
shake mix would be exclusively considered a dietary supplement.
We discuss these goods, infra, in connection with opposer’s
common law rights.
Opposition No. 91166743
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pertains to the relevant du Pont factors does not support a
finding of a likelihood of confusion as to opposer’s
Registration Nos. 2208921 and 2348156. See Kellogg Co. v.
Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145
(Fed. Cir. 1991) (a single factor may play a dominant role
in a likelihood of confusion analysis).
As noted above, opposer also pleaded and presented
sufficient evidence that establishes his common law rights
in the REVIVAL mark as used in connection with a “soy shake
mix” prior to the filing date of the opposed application.
In his testimony, opposer stated that he first used the mark
in 1997, and that such use was on “soy-derived nutritional
supplements.” Tabor Dep. p. 15. More specifically, such
use was on “a soy shake mix.” Tabor Dep. p. 17. Opposer
also testified that the instructions on the packages of his
mixes state that the product is to be blended with water.
Tabor Dep. p. 42. Thus, these goods are complementary
inasmuch as opposer’s soy shake mixes must be blended with
water before consumption. See, e.g., General Foods
Corporation v. Wisconsin Bottling, Inc., 190 USPQ 43, 44
(TTAB 1976) (soft drinks are related to instant breakfast
drink inasmuch as such beverages are often used as a
component of or mixed with other ingredients). The
complementary nature of related products when they are
likely to be used together is relevant to the question of
Opposition No. 91166743
14
likelihood of confusion. See In re Martin’s Famous Pastry
Shoppe, Inc., supra, at 1290 (bread and cheese found to have
complementary uses). Therefore, we find that opposer’s
nutritional supplements in shake mix form designed for use
with water are sufficiently related to applicant’s bottled,
flavored or purified drinking water such that use of a
similar mark on these goods would likely cause confusion,
particularly here, where the marks are nearly identical.
With regard to the channels of trade through which the
goods move in commerce, the identification of goods in the
application is not limited by trade channels and would
include opposer’s demonstrated trade channels, which
primarily consist of sales through an online website and a
direct mailing product catalogue.7 Moreover, the record
demonstrates that the parties are, in fact, operating in
overlapping markets. Specifically, both parties testified
to undertaking ongoing marketing efforts directed towards
individuals and organizations in the Christian community,
thereby indicating an intersection among a portion of their
targeted consumer base. See, e.g., Tabor Dep. p. 35 (“Our
most successful television advertising has been with a
Christian ministry, the CB, Christian Broadcasting Network,
which is a top ten ministry with great national,

7 There is some indication in the record that at least some of
opposer’s products are also sold in health food stores, but the
record is not clear on this point.
Opposition No. 91166743
15
international distribution of their content.”) and LaBarba
Dep. pp. 34-35 “Q. … Can you please identify customers of
your company that have actually purchased water from you for
profit … A. They’re ministries or they’re churches.”)
We further note that the goods at issue are relatively
inexpensive general consumer items, and not purchased with a
level of care that would outweigh the similarity in the
marks and relatedness of the goods. Thus, we find that the
goods could be encountered by the same consumers in
situations that would create the incorrect assumption that
they originate from the same source.
In view of the above, the du Pont factors of the
relatedness of the goods, channels of trade, purchasers and
conditions of sale clearly favor opposer with regard to the
soy shake mixes.
Applicant argues that there have been no instances of
actual confusion. As applicant acknowledges, however, the
parties’ marks have not been in concurrent use for a long
period, in that applicant only started producing its water
in November, 2004. LaBarba Dep. p. 25. Thus, there has not
been a meaningful time period of concurrent use for actual
confusion to occur. Moreover, a showing of actual confusion
is not necessary to a finding that a likelihood of confusion
exists. See Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Opposition No. 91166743
16
Considering the marks in their entireties, we conclude
that the evidence of record as it pertains to the relevant
du Pont factors supports a finding of a likelihood of
confusion as between applicant’s REVIVAL WATER mark and
opposer’s common law REVIVAL mark previously used in
connection with soy shake mixes, such that registration of
applicant’s mark is barred under Trademark Act Section 2(d).
Finally, to the extent that we have any doubt, it must be
resolved “against the newcomer because the newcomer has the
opportunity and obligation to avoid confusion with existing
marks.” See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002).
Decision: The opposition is sustained and registration
to applicant is refused.