Bioenergy, Inc.

Trademark Trial and Appeal Board

Aug 26, 2011

No. 77503784 (T.T.A.B. Aug. 26, 2011)

Mailed:
August 26, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bioenergy, Inc.
________

Serial No. 77503784
_______

Garrett M. Weber of Lindquist & Vennum PLLP for Bioenergy,
Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney).
_______

Before Seeherman, Cataldo and Ritchie, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Bioenergy, Inc. has appealed from the final refusal of
the trademark examining attorney to register REJUVALEN, in
standard characters, for “skin cream” in Class 3.1
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 77503784, filed June 20, 2008, based on
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-
to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77503784
2
applicant’s mark so resembles the mark REJUVALINE,
registered for “non-medicated ingredients sold as an
integral component of cosmetics and non-medicated skin care
preparations,”2 that, if used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.
We note that the Board previously had occasion to
consider the same refusal in connection with Application
Serial No. 77503483, for the mark REJUVALEN and design.
Our comments made in that decision, which issued on
June 22, 2011, are largely applicable to the present case,
and therefore much of this decision will repeat what we
said in the earlier opinion.
Our determination of the issue of likelihood of
confusion 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 & 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, 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

2 Registration No. 3677319, issued September 1, 2009.
Ser No. 77503784
3
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to the marks, we are guided by the
principle that, in evaluating similarities between marks,
“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 terms of
their overall commercial impression so that confusion as to
the source of the goods offered under the respective marks
is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008). When considered in this
manner, the marks are extremely similar. Both marks are
single terms which begin with the identical letters
REJUVAL, followed by a vowel and the letter “N” and, in the
case of the registrant’s mark, a final “E.” While there
are some differences in the final letters, INE and EN,
because these differences are at the end of each mark, and
therefore make a lesser commercial impression, they are
insufficient to distinguish the marks. See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered”); see also Palm Bay Imports Inc. v. Veuve
Ser No. 77503784
4
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label).
Moreover, the marks can be pronounced virtually
identically. Because there is no correct pronunciation of
a trademark that is not a normal English word, the cited
mark, REJUVALINE, can be pronounced with a short “i”, while
REJUVALEN can be pronounced with a short “e,” such that
most people would hear the marks as being identical. As
for the connotation of the marks, to the extent that they
would convey any connotation, they suggest the word
“rejuvenate,” and therefore the connotation is the same.
In short, the marks convey the same commercial impression.
This du Pont factor favors a finding of likelihood of
confusion.
Applicant does not really dispute these points of
similarity, but argues that, because the letter string
REJUV is found in several registered marks,3 the inclusion
of these letters in both marks is not a sufficient basis
for finding confusion. However, in this case it is not

3 See, for example, REJUVACELL (Reg. No. 3051295 for, inter
alia, skin moisturizers; REJUVADERMISE (Reg. No. 3360448) for,
inter alia, skin creams; REJUVENE (Reg. No. 3686806) for, inter
alia, facial creams, all submitted with applicant’s response
filed March 1, 2010.
Ser No. 77503784
5
merely the letters REJUV that are common to both marks, but
the letters REJUVAL, followed by a vowel and “N,” as
discussed above. Thus, our conclusion that the marks are
similar is not based only on the shared and suggestive
element REJUV, but with the recognition that the suffixes
in the marks are also very similar. When the marks are
considered in their entireties, they are extremely similar,
and the differences in the suffixes are insufficient to
distinguish them.
Applicant also submitted, with a request for
reconsideration filed September 28, 2010, four third-party
registrations for “HYDRO” marks, i.e., e.g., HYDRO-SURGE,
HYDROSHIELD, HYDROSPHERES and HYDROSTAT, to show that
similar marks have been registered for skin cream and skin
cream ingredients. We are not persuaded by this evidence
or this argument. It need hardly be pointed out that
“HYDRO” is not “REJUV”, and that in the HYDRO marks the
prefix is paired with words that are clearly different and
have different meanings (SURGE, SHIELD, SPHERES and STAT),
as opposed to the nearly identical non-word suffixes in the
present case. Thus, merely because various HYDRO marks co-
exist on the Register, the existence of these registrations
provides no basis for finding that REJUVALEN and REJUVALINE
can coexist without confusion. In fact, even in a
Ser No. 77503784
6
situation where prior registrations have some
characteristics similar to an applicant’s, which again is
not the case with the HYDRO marks, the USPTO’s allowance of
such prior registrations does not bind the Board. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
With respect to the goods, we repeat the oft-cited
principle that it is not necessary that the goods or
services of applicant and the registrant be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods or services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the complementary nature of the goods is
apparent from the identifications themselves. Applicant’s
goods are skin cream; the registrant’s goods are
ingredients that are an integral component of skin care
preparations. In other words, the registrant’s goods are
used in the same goods for which applicant intends to use
Ser No. 77503784
7
its mark. In addition, the examining attorney has made of
record third-party registrations showing that a single mark
has been adopted for use for both ingredients in the
manufacture of cosmetics and for cosmetic preparations
themselves. See, for example, Registration No 2713958 for,
inter alia, skin and body creams, and essential oils for
use as ingredients in the manufacture of cosmetic
preparations; Registration No. 2860612 for, inter alia,
cosmetic ingredient used as a component in the manufacture
of body lotions, and skin creams; Registration No. 2976823
for, inter alia, cosmetic ingredient containing an
essential vitamin complex for use in body creams and
lotions, skin creams and skin lotions, and for skin
treatments in the nature of creams and lotions for the
prevention and treatment of sunburn and sun damage; and
Registration NO. 1790028 for, inter alia, essential oils
for use as ingredients in the manufacture of cosmetic
preparations, and skin creams. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Ser No. 77503784
8
The real question is whether applicant’s and
registrant’s goods will be encountered by the same classes
of customers, such that there will be an opportunity for
confusion to occur. The registrant’s goods are identified
as ingredients sold as an integral component of cosmetics
and skin care preparations, thereby indicating that these
are goods sold to manufacturers of cosmetics and skin care
preparations, and not to the public at large, while
applicant’s goods, skin creams, are general consumer
products. However, the examining attorney has made of
record numerous advertisements showing that skin care
product manufacturers feature the ingredients in their
products, including trademarked ingredients. For example,
Neutrogena features the moisturizers “Neutrogena® Healthy
Defense® Daily Moisturizer SPF 30 & SPF 50 with Purescreen™
for Sensitive Skin” and “Neutrogena® Healthy Defense® Daily
Moisturizer SPF 50 with Helioplex®,” stating that the
latter “contains Helioplex®, the sunscreen complex that
helps block the harmful UVB-burning rays and UVA-aging rays
which can cause premature lines and wrinkles.”
www.neutragena.com. Vaseline advertises its moisturizer as
containing STRATYS 3™, “an effective patented moisturizing
complex, combining three powerful ingredients that infuse
and suspend moisture across all layers of skin….”
Ser No. 77503784
9
http://vaselinesheerinfusion.com. There are similar
advertisements for “HELENA RUBINSTEIN COLLAGENIST with PRO-
Xfill,” “Youthtopia Firming eye cream with Rhodiola,” and
the moisturizer “La Roche Posay Substiane with Pro Xylane.”
Moreover, applicant has submitted an advertisement in which
the registrant’s mark, REJUVALINE, is prominently
advertised as being contained in a skincare product sold
under the trademark DERMITAGE:
Dermitage is the only skincare line with
Rejuvaline, a proprietary ingredient complex that
effectively targets the visible signs of aging
for more youthful-looking skin. Rejuvaline
boosts the effectiveness of beneficial
ingredients by delivering them deeper into the
skin and continually releasing them to where they
are needed most.

In view of this practice in the industry, including
registrant’s own use of REJUVALINE for an ingredient
complex in an advertisement for a skincare product, members
of the general public are likely to be exposed to the
registrant’s trademark in connection with skin creams.
That is, the goods are marketed in such a way that they
would be encountered by the same purchasers under
circumstances that would give rise to the mistaken belief
that the goods come from a common source. The du Pont
factors of the similarity of the goods, channels of trade
Ser No. 77503784
10
and classes of consumers favor a finding of likelihood of
confusion.
Applicant points out that the examining attorney’s
evidence does not show that the same mark is used for both
skin cream and ingredients for skin cream, and therefore
asserts that “there would never be a situation where a
product was marketed as Rejuvalen with Rejuvaline.” Brief,
unnumbered p. 6. However, it is not necessary to find a
likelihood of confusion that applicant would have to market
its REJUVALEN skin cream by advertising that it contains
the registrant’s REJUVALINE ingredients. On the contrary,
because of the industry practice of using different
trademarks for the ingredients of the cosmetic products and
the products themselves, consumers would not necessarily
expect applicant’s REJUVALEN skin cream to feature
REJUVALINE as an ingredient. Instead, consumers who are
familiar with skin creams containing REJUVALINE as a
component ingredient are likely to believe, upon seeing
REJUVALEN skin cream, that it emanates from the same source
as the ingredient does. There is also the likelihood of
reverse confusion, i.e., if a consumer is familiar with
REJUVALEN skin cream and sees a cosmetic product featuring
REJUVALINE as a component ingredient, s/he is likely to
Ser No. 77503784
11
believe that there is a sponsorship or connection between
the two.
Neither applicant nor the examining attorney has
argued or submitted evidence on the remaining du Pont
factors. To the extent that they are relevant, we have
treated them as neutral.
Because of the similarity of the marks and the closely
complementary nature of the goods, as discussed above, the
consumers who are the general public are likely to believe
that there is a connection or sponsorship between
applicant’s REJUVALEN skin cream and the registrant’s
REJUVALINE component ingredients in skin care preparations.
We therefore find that the Office has met its burden in
proving that applicant’s mark, if used for its identified
goods, is likely to cause confusion with the registered
mark. To the extent that there is any doubt on this issue,
we resolve that doubt, as we must, in favor of the
registrant and prior user. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.