Celmatrix Corporation

Trademark Trial and Appeal Board

Jul 6, 2015

No. 85785844 (T.T.A.B. Jul. 6, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Celmatrix Corporation
_____

Serial No. 85785844
_____

Steven J. Hultquist, Esq.,
for Celmatrix Corporation.
David Taylor, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Quinn, Kuhlke and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Celmatrix Corporation (“Applicant”) seeks registration on the Principal Register
of the mark shown below

Application Serial No. 85785844

2

for “medicinal hair growth preparations; medicinal preparations for stimulating
hair growth” in International Class 5.1 A description of the mark reads as follows:
“The mark consists of a vertically extending rectangular strip bearing vertically
oriented wording Re-Grow.” The application also includes the statement: “Color is
not claimed as a feature of the mark.”
The Trademark Examining Attorney refused registration on two grounds: 1)
that Applicant’s mark, when applied to Applicant’s goods, so resembles the
previously registered mark shown below

for “hair care preparations, namely, hair moisturizing lotion and scalp moisturizer”
in International Class 3, and “medicated hair preparations, namely, hair growth
stimulants” in International Class 5,2 as to be likely to cause confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and 2) that Applicant’s
mark, when applied to Applicant’s goods, is merely descriptive thereof under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).

1 Application Serial No. 85785844, filed November 21, 2012 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on December 31, 2010.
2 Registration No. 3029116, issued December 13, 2005; Sections 8 and 15 combined affidavit
accepted and acknowledged. The registration includes the following description of the mark:
“The mark consists of the words RE-GRO in stylized form with a cross mark through the
right leg of the letter R to form a stylized ‘Rx.’”
Application Serial No. 85785844

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When the Examining Attorney made the refusals final, Applicant appealed.
Applicant and the Examining Attorney filed briefs.3

MERE DESCRIPTIVENESS
The Examining Attorney maintains that the proposed mark merely describes a
function or feature of Applicant’s goods, namely that Applicant’s medicinal hair
growth preparations “are used to help hair grow, or to grow anew.” (6 TTABVUE
12). In support of the refusal, the Examining Attorney introduced a dictionary
definition, and excerpts of third-party websites.
The sum of Applicant’s argument is the following: “Applicant’s trademark has
been impermissibly deconstructed, with the wording extracted with complete
disregard for the presence of a vertically extending rectangular strip bearing
vertically oriented wording, as a distinctive composite mark.” (4 TTABVUE 17).
A mark is deemed to be merely descriptive of goods, within the meaning of
Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods. In re Chamber of
Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed.
Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB
2007); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
A mark need not immediately convey an idea of each and every specific feature of
the applicant’s goods in order to be considered merely descriptive; rather, it is

3 In this opinion, citations to the briefs are to the TTABVUE docket entry number and the
electronic page number where the statement appears.
Application Serial No. 85785844

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sufficient that the mark describes one significant attribute, function or property of
the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180
USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in
the abstract, but in relation to the goods for which registration is sought, the
context in which it is being used on or in connection with the goods, and the possible
significance that the mark would have to the average purchaser of the goods
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). In other words, the question is whether someone who knows what the goods
are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753,
1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
“On the other hand, if one must exercise mature thought or follow a multi-stage
reasoning process in order to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely descriptive.” Coach Servs.
Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1616 (TTAB 2010) (quoting In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978)), vacated-in-part on
other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).
The terminology “regrow” is defined as “to grow (as a missing part) anew; to
continue growth after interruption or injury.” () (Office
action dated Dec. 21, 2012). Applicant’s specimen, an informational brochure about
the goods, shows the following statement on the brochure’s cover: “Clinically Proven
Application Serial No. 85785844

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To Help Regrow Hair.” The Examining Attorney also introduced excerpts retrieved
from third-party websites showing descriptive usage of the terminology “regrow” (or
similar terminology such as “regrowth”) in connection with hair growth
preparations. (Office action dated May 19, 2014). The following are representative:
ROGAINE® Foam revitalizes hair follicles and is
clinically proven to help regrow hair in men who used it
every day for 4 months.
()

Hair Regrowth Treatment for Men
Uses – to regrow hair on the top of the scalp
()

How To Regrow Hair in 10 days
()

How to Regrow Hair After Hair Loss
()

How to Regrow Hair
Here’s A Powerful Regrow Hair Remedy That Works
()

No imagination is required by a prospective purchaser or user to discern that a
purpose or feature of Applicant’s “medicinal hair growth preparations; medicinal
preparations for stimulating hair growth” is to regrow hair. The terminology
“regrow” in Applicant’s mark immediately describes, without conjecture or
speculation, a significant feature of the goods. Purchasers will clearly understand
that the goods are used to regrow hair.
Applicant does not contend to the contrary, only arguing that the design
features of Applicant’s mark somehow negate the descriptiveness of the terminology
to create a distinctive composite mark. Suffice it to say that the design features of
Application Serial No. 85785844

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the mark do not negate or otherwise mitigate the mere descriptiveness of the
terminology RE-GROW, which clearly dominates the mark, even when oriented in a
vertical manner. We agree with the Examining Attorney’s assessment that any
stylization of RE-GROW is minimal or virtually nonexistent, and that the vertical
rectangular strip in the mark is merely a non-distinct background design that does
not add source-indicating capability to the merely descriptive terminology. That is,
given the highly descriptive nature of the terminology RE-GROW in Applicant’s
mark, the addition of the non-distinct design features and vertical orientation of the
terminology does not transform the mark as a whole into an inherently distinctive
mark. Cf. In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980).
Applicant also hints that even if its mark were merely descriptive, Applicant
could show acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f). In this
connection, Applicant relies upon the declaration of Shane Malek, Applicant’s
founder and chief executive officer. Applicant states:
[T]he examining attorney’s allegation of mere
descriptiveness of the applicant’s mark would still be
rebutted by the evidence presented by the applicant in its
Declaration, of record, of over 100,000 bottles of the
applicant’s product sold nationwide under its mark in the
period since 2010. In these five years, the Applicant has
achieved substantial brand identity and customer
recognition of its mark that is inconsistent with the notion
of mere descriptiveness of such mark.
(4 TTABVUE 17)

Notwithstanding these remarks, however, Applicant continues to maintain that
its proposed mark is inherently distinctive; so as to be clear, Applicant did not seek
to amend its application to assert a claim, in the alternative, that its mark has
Application Serial No. 85785844

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acquired distinctiveness under Section 2(f). TMEP § 1212.02(c) (2015); TBMP §
1215 (2015) (“[I]t is the applicant’s responsibility to make clear that it is taking
alternative positions.”). See, e.g., In re Brouwerij Bosteels, 96 USPQ2d 1414, 1419
(TTAB 2010); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009). Accordingly, to the
extent that Applicant’s remarks constitute an attempt to claim the benefit of
Section 2(f), we have given no consideration to it.
We conclude that Applicant’s mark RE-GROW and design, when applied to
Applicant’s “medicinal hair growth preparations; medicinal preparations for
stimulating hair growth,” is merely descriptive thereof.
Accordingly, the Section 2(e)(1) refusal is affirmed.

LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We first direct our attention to the second du Pont factor regarding the
similarity/dissimilarity between the goods. It is settled that in making our
determination regarding the relatedness of the goods, we must look to the goods as
Application Serial No. 85785844

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identified in the application and the cited registration. See Octocom Sys., Inc. v.
Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Thus, we
compare Applicant’s “medicinal hair growth preparations; medicinal preparations
for stimulating hair growth” to Registrant’s “medicated hair preparations, namely,
hair growth stimulants.” Because the goods identified in the cited registration and
present application have no limitations or restrictions, it is presumed that as
recited the goods encompass all goods of the type identified. See Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973);
Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Thus, we must presume that
Applicant’s and Registrant’s goods encompass all types of medicated preparations
for stimulating hair growth. Based on the identifications, we find the goods to be
legally identical.4
In a feeble attempt to distinguish the goods, Applicant relies on Registrant’s
website, pointing out that Registrant promotes its product as “Specially

4 Beyond basing this identity on the identifications of goods, the Examining Attorney
introduced third-party registrations showing the same entity registered the same mark for
hair growth preparations and hair growth stimulants, both medicinal and non-medicinal.
“Third-party registrations which cover a number of differing goods and/or services, and
which are based on use in commerce, although not evidence that the marks shown therein
are in use on a commercial scale or that the public is familiar with them, may nevertheless
have some probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Application Serial No. 85785844

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Formulated” and “Just for Women of Color.”5 Applicant further points out that
Registrant’s product is sold at a low price point relative to Applicant’s product
which, according to Applicant, is priced 450% higher. These purported distinctions
are irrelevant to our analysis. An applicant may not restrict the scope of the goods
covered in its application or in the cited registration by argument or extrinsic
evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165
(TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re
Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific
differences between the actual nature of the goods are irrelevant in our analysis.
Neither of the identifications of goods includes any limitations regarding cost or
classes of purchasers (based on race or gender) upon which Applicant relies.
Insofar as the trade channels and purchasers are concerned under the third and
fourth du Pont factors, because the goods identified in the application and the cited
registration are legally identical, we must presume that the channels of trade and
classes of purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research

5 The Examining Attorney objected to this evidence in his brief because it lacked complete
information as to the date the webpage was published or accessed from the Internet. (6
TTABVUE 9). Applicant submitted the webpage with its response on August 21, 2013; in
his responsive Office action dated October 7, 2013, the Examining Attorney did not raise
any objection to this evidence. Because the webpage lists a copyright date of 2009, and
given the Examining Attorney’s earlier failure to object to the evidence at a point when
Applicant could have cured any deficiency, the objection is overruled. See TBMP § 1207.03.
We have considered the evidence to be of record.
Application Serial No. 85785844

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Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion). The goods would
be sold through the same trade channels (e.g., drug stores, online retailers) to the
same classes of purchasers (i.e., ordinary consumers).
The legal identity between Applicant’s goods and Registrant’s goods, the
presumed identical trade channels, and the overlap in purchasers are du Pont
factors that weigh heavily in favor of a finding of likelihood of confusion.
With respect to the first du Pont factor involving the similarity between the
marks, Applicant argues that “the letter stylization, prescription symbol,
intentional misspelling, and orientation of letters in the registrant’s mark are all
different than in Applicant’s mark, and aggregate to produce a fundamental
dissimilarity of the marks in relation to one another.” (4 TTABVUE 14).
We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567). Although Applicant presents the
marks side-by-side in its brief (4 TTABVUE 11), “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
Application Serial No. 85785844

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the marks would be likely to assume a connection between the parties.” Coach
Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721 (citation omitted). The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In comparing the marks when used in connection with Applicant’s and
Registrant’s goods, we are mindful that where, as here, the goods are legally
identical, the degree of similarity between the marks necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between
the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721;
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007); Schering-Plough HealthCare Prods. Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
Application Serial No. 85785844

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mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
With respect to Applicant’s mark, where both words and a design comprise the
mark, then the words are normally accorded greater weight because the words are
likely to make an impression upon purchasers, would be remembered by them, and
would be used by them to request the goods and/or services. CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark
comprising a design and words, the verbal portion of the mark is the one most likely
to indicate the origin of the goods to which it is affixed”); In re Appetito Provisions
Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In Applicant’s mark,
the literal portion of the mark, namely RE-GROW, clearly is the dominant portion,
and is accorded much greater weight over the non-distinct design features when
comparing this mark to the cited mark RE-GRO and design.
With respect to Registrant’s mark, the term RE-GRO is minimally stylized, and
includes an “Rx” portion.6
The terminology RE-GROW and RE-GRO are identical in sound. Similarity in
any one of the elements of sound, appearance or meaning is sufficient to support a

6 The abbreviation “Rx” means “a doctor’s prescription.” (). The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See In re
Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013).
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determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”); In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of
similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to
support a holding that the marks are confusingly similar.’”) (citations omitted). This
is especially true in this case, where the goods may be ordered, referred to or
recommended by word of mouth.
Further, both marks convey a virtually identical meaning, namely that the
goods are used to grow hair. In saying this, we observe that the “Rx” in Registrant’s
mark may add more specific information about the goods, namely that the
preparations are medicinal, but any distinction in meaning is minimal.
We recognize that the marks have some specific differences between them in
terms of appearance. We appreciate that Applicant’s mark is oriented in a vertical
fashion, while Registrant’s mark includes a stylized “Rx” and RE-GRO is a
misspelling of RE-GROW. Contrary to Applicant’s view that the “Rx” portion of
Registrant’s mark is “so visually exaggerated as the dimensionally largest
component in the registrant’s mark,” we view the “Rx” as only minimally stylized
and is a feature of the mark that may be overlooked by consumers. Further, we
disagree with Applicant that consumers will pronounce Registrant’s mark as “Rex-
Gro.” As to the difference in spellings, we again question whether consumers will
even notice this. See, e.g., In re Viterra Inc., 101 USPQ2d at 1909-11 (XCEED and
Application Serial No. 85785844

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X-SEED and design found to be confusingly similar); Centraz Indus. Inc. v. Spartan
Chem. Co. Inc., 77 USPQ2d 1698 (TTAB 2006) (ISHINE stylized and ICE SHINE
are confusingly similar). Although the marks have somewhat different appearances,
this does not mandate a finding that there can be no likelihood of confusion, given
the similarity in sound and meaning between Applicant's RE-GROW mark and
Registrant’s RE-GRO mark. Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d
1511 (2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581 (TTAB 2007).
That is to say, the similarities in sound and meaning outweigh the differences in
appearance. Given that the marks are more similar than dissimilar, they engender
similar overall commercial impressions.
The similarity between the marks, when they are considered in their entireties,
is a factor that weighs in favor of finding that there is a likelihood of confusion
between the marks.
In finding that the marks are similar in their entireties, we acknowledge that
the Federal Circuit and the Board have recognized that merely descriptive and
weak designations may be entitled to a narrower scope of protection than an
entirely arbitrary or coined word. See Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 73 USPQ2d at 1693; Giersch v. Scripps
Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79
USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916
(TTAB 1984). However, even a weak mark is entitled to protection against the
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registration of a similar mark for closely related goods. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (CCPA 1974).
Although we view the terminology RE-GRO (and RE-GROW) to be extremely
weak, as should be obvious from our earlier discussion of the mere descriptiveness
refusal, even shared descriptive terms can create a likelihood of confusion if their
use creates a similar overall commercial impression between the marks in their
entireties. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223
USPQ 1281, 1283 (Fed. Cir. 1984) (quoting Spice Islands, Inc. v. Frank Tea & Spice
Co., 505 F.2d 1293, 184 USPQ 35, 37 (CCPA 1974)). In that case, the Federal
Circuit stated, in finding a likelihood of confusion between the marks SPICE
VALLEY and SPICE ISLANDS for tea, that “[o]f paramount interest is not the
descriptive nature of SPICE, but the overall commercial impression derived by
viewing the marks in their entireties.” Id. See Morton-Norwich Prods., Inc. v. S.C.
Johnson & Son, Inc., 531 F.2d 561, 189 USPQ 413, 414-415 (CCPA 1976) (likelihood
of confusion found between RAINFRESH for liquid detergents and RAIN BARREL
for fabric softener; both marks begin with the word “Rain,” shared a connotation of
rain-softness and rain-freshness, and projected similar commercial impressions). In
finding that the scope of protection afforded to Registrant’s mark extends to
Applicant’s mark, we also point out that the cited mark is registered on the
Principal Register (with no disclaimer). Further, the record is devoid of any third-
party uses or registrations of marks similar to the ones involved herein, and so the
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sixth du Pont factor, involving the number and nature of similar marks in use on
similar goods, is neutral.
With respect to the fourth du Pont factor, Applicant contends that the goods are
bought by sophisticated purchasers, asserting that they “will give inordinate
attention to the products and their packaging since the products are commercialized
to ameliorate lost or thinning hair conditions affecting the appearance, mood and
self-confidence of persons suffering such disorders,” and that “the therapeutic
character of such products will thus elicit a highly focused, investigative scrutiny of
these products and their packaging.” (11 TTABVUE 13). First, the record is devoid
of any evidence in support of Applicant’s remarks. Second, even assuming that
Applicant’s and Registrant’s goods may involve a careful purchase, it is settled that
sophisticated purchasers are not immune from source confusion, especially in cases
such as this one involving similar marks and legally identical goods. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-
64 (Fed. Cir. 2014); In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) (“Human memories even of discriminating purchasers...are not
infallible.”) (quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). See also In re Decombe, 9 USPQ2d
1812 (TTAB 1988). We find that the similarity between the marks and the legal
identity of the goods sold thereunder outweigh any presumed sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d
1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
Application Serial No. 85785844

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1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
Accordingly, this factor is neutral.
As to the eighth du Pont factor, the record includes, as indicated earlier, the
declaration of Shane Malek. Mr. Malek states that Applicant has used its mark
since 2010; that Applicant has sold over 100,000 bottles of its product under the
mark throughout the United States; and that Applicant’s use of the mark has been
open and well-publicized by virtue of online and television advertising. Mr. Malek
claims that, despite this use, he is unaware of any instance of actual confusion
involving Applicant’s mark.
It is not necessary, however, to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 14 USPQ2d
at 1842-43. Applicant’s assertion, particularly in this ex parte proceeding, is entitled
to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of
applicant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion); In re Binion, 93 USPQ2d at 1536; In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). In any event, the record is devoid of probative evidence
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relating to the specific extent of use of Registrant’s mark that would enable us to
determine whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du
Pont factor of the length of time during and conditions under which there has been
contemporaneous use of the marks without evidence of actual confusion is
considered neutral.
We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto.
We conclude that purchasers familiar with Registrant’s “medicated hair
preparations, namely, hair growth stimulants” sold under the mark RE-GRO and
design would be likely to mistakenly believe, upon encountering Applicant’s mark
RE-GROW and design for “medicinal hair growth preparations; medicinal
preparations for stimulating hair growth,” that the goods originate from or are
associated with or sponsored by the same entity.
Accordingly, the Section 2(d) refusal is affirmed.

DECISION
The refusal to register under Section 2(e)(1) is affirmed.
The refusal to register under Section 2(d) is affirmed.