For Life Products, LLC

Trademark Trial and Appeal Board

Aug 22, 2019

87073748 (T.T.A.B. Aug. 22, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re For Life Products, LLC
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Serial No. 87073748
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Terry L. Clark of Bass Berry & Sims PLC, for For Life Products, LLC.
Samir Ramesh-Patel, Trademark Examining Attorney, Law Office 106, Mary I.
Sparrow, Managing Attorney.
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Before Shaw, Greenbaum and Larkin
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
For Life Products, LLC (“Applicant”) seeks registration on the Principal Register
of the mark REJUVENATE (in standard characters) for goods identified as “paints,”
in International Class 2.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
applied to the identified goods, so resembles the mark REJUVENATION (in standard

1 Application Serial No. 87073748 was filed on June 16, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a) claiming a date of first use anywhere and in commerce
of June 6, 2016.
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characters) for goods identified as “Interior paint,” in International Class 2,2 as to be
likely to cause confusion, mistake or deception, and also under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely
descriptive of the identified goods.
When the refusals were made final, Applicant appealed. The case is fully briefed.
We affirm the refusals to register under Sections 2(d) and 2(e)(1).
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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 goods and the similarities between the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The nature and similarity or dissimilarity of the goods, the established, likely-
to-continue trade channels, and the classes of purchasers.
We begin with the similarity of the respective goods. Applicant’s goods are “paints”
and Registrant’s goods include “interior paint.” The goods are legally identical

2 Registration No. 5253550, issued August 1, 2017.
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inasmuch as Applicant’s broadly worded “paints” includes the more narrowly worded
“interior paints.” Applicant does not argue otherwise.
Because the goods are legally identical and without restriction, we must presume
that they are sold in all normal trade channels and to all normal classes of purchasers
for such goods, and thus the channels of trade and classes of purchasers are the same
as well. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Yawata Iron & Steel Co., Ltd., 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).
The du Pont factors regarding the similarity of the goods, channels of trade, and
classes of purchasers favor a finding of a likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider their appearance, sound, connotation and
commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity
as to any one of these factors may be sufficient to support a finding that the marks
are confusingly similar. See Krim-Ko Corp. v. 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).
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To recap, Applicant’s mark is REJUVENATE, in standard characters, whereas
Registrant’s mark is REJUVENATION, also in standard characters. “Rejuvenate” is
a verb defined as “[t]o restore to an original or new condition: rejuvenate an old sofa.”3
We find the marks to be quite similar. The cited mark, REJUVENATION, is simply
the noun form of “rejuvenate.”4 Both marks create the same connotation and
commercial impression: that the product will restore the painted object to an original
or like new condition. The change in the part of speech of the root term does not alter
the similar meaning of the marks. See, e.g., In re Dahiquist, Inc., 192 USPQ 237, 238
(TTAB 1976) (a tense change does not alter the meaning of the marks). In addition,
because both marks share the same root term, “rejuvenat-,” they are similar in sound
and appearance.
Applicant argues that the marks are distinguishable because its mark “terminates
in the single letter ‘e’ [and] is phonetically distinct from the Cited Mark, which
terminates in the sound ‘ion.’”5 Thus, Applicant argues “the phonetic differences in
the marks, coupled with the visual differences, further demonstrates that its mark
can co-exist with the Cited Mark without causing consumer confusion.”6
We disagree. We find the strong similarity in connotation and commercial
impression is likely to overcome the slight difference in sound. Moreover, in terms of
visual differences, both marks are in standard character form and can be used in any

3 AMERICAN HERITAGE DICTIONARY, Office Action of May 7, 2017, p. 18.
4 Id.
5 Applicant’s Br., p. 5, 5 TTABVUE 13.
6 Id.
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typeface, including identical ones. Viewing the marks in their entireties, we find that
they are extremely similar and likely to cause confusion when used in connection with
the respective goods involved in this case. Thus, the first du Pont factor weighs in
favor of a finding of likelihood of confusion.
C. Conclusion
For the reasons discussed above, and considering all of the evidence of record
pertaining to the du Pont factors, we conclude that applicant’s mark, REJUVENATE,
is very similar to registrant’s mark, REJUVENATION, and their contemporaneous
use on legally identical goods is likely to cause confusion as to the source or
sponsorship of such goods.
II. Mere Descriptiveness under Section 2(e)(1)
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed.
Cir. 1987). Whether a particular term is merely descriptive is determined in relation
to the goods for which registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002).
The Examining Attorney argues that “Applicant’s applied-for mark
REJUVENATE, within the context of its goods ‘paints’ in International Class 002, is
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merely descriptive as a characteristic, function, feature, purpose, or use of applicant’s
goods which is to restore the surface to which the paint is applied to an original or
new condition.”7
To support the mere descriptiveness refusal, the Examining Attorney submitted
the above dictionary definition of “rejuvenate,” as well as excerpts from Internet web
sites (including Applicant’s) using the term “rejuvenate’ in connection with home
improvement. The following examples are the most relevant.
• An excerpt from Applicant’s web page describing its paint: “RejuvenateTM
Siding Restoration Coating is an exterior paint and primer in one designed
to maximize adhesion. This high build coating with Smoothfill
TechnologyTM gives aged and weathered siding a smooth, uniform
appearance.”8
• JD’s Home Improvements, a home improvements blog featuring an article
titled “A fresh coat of paint can rejuvenate your home’s appearance.”9
• An excerpt from the website of Hercules Fence with an article titled “Tips
to Rejuvenate Your Fence with a Fresh Coat of paint.”10
• An excerpt from the website of Wyman Painting with an article titled
“Repaint to Rejuvenate Ole [sic] walls.”11

7 Examining Attorney’s Br., p. 7, 7 TTABVUE 7.
8 Office Action of July 13, 2016, p. 6.
9 Office Action of September 14, 2017, p. 35.
10 Id. at 37.
11 Office Action of May 7, 2018, p. 20.
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• An excerpt from the website of Lake Homes Realty with an article titled
“Easy and Inexpensive DIY Options to Refresh and Rejuvenate A Room.”12
We find the Examining Attorney’s evidence sufficient to establish that prospective
consumers would understand REJUVENATE to mean that the paint would function
to restore the surface to which the paint is applied to an original or new condition.
Applicant argues that “the Examining Attorney has erred in maintaining the
refusal by failing to acknowledge the Applicant’s use of the Mark resulting in
numerous federal registrations including the word ‘rejuvenate’ on goods related to
paint in International Class 002 that are marketed in the same channels of trade for
almost two decades.”13 Applicant argues that the mark “is part of the family of marks
and therefore not descriptive.”14 Applicant claimed ownership of U.S. Registration
Numbers 3051798 (REJUVENATE for floor, cabinet and furniture polish, registered
on the Supplemental Register), 3522915 (REJUVENATE DEEP CLEAN for an all-
purpose cleaner, registered on the Supplemental Register), 3646878 (REJUVENATE
REFRESHER for floor cleaners, waxes and polishes), and others.15
This argument is unpersuasive. Applicant’s prior registrations are either on the
Supplemental Register, comprise different marks, or are for goods other than paint.
The prior registrations, therefore, do not establish that REJUVENATE is not merely

12 Id. at 24.
13 Applicant’s Br., p. 7, 5 TTABVUE 15.
14 Id. at 8, 5 TTABVUE 16.
15 Application of June 16, 2016; See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 812.01 (Oct. 2018) (“If an applicant includes a claim of ownership of a prior registration . .
. in the application as filed, the examining attorney must accept the claim without further
proof of ownership”).
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descriptive when used in connection with paint.16 In addition, the registrations do not
establish that the term REJUVENATE has been promoted in such a way as to create
recognition among the purchasing public as a source indicator for the goods or that
the purchasing public would perceive the applied-for mark as part of the alleged
family of marks and thus as a source indicator. See In re LC Trademarks, Inc., 121
USPQ2d 1197, 1204 (TTAB 2016) (mere ownership of a series of similar marks does
not suffice to establish a family of marks); cf. TPI Holdings, Inc. v. TrailerTrader.com,
LLC, 126 USPQ2d 1409, 1428 (TTAB 2018) (finding that the shared element in
petitioner’s marks was so commonly used by others that it does not constitute a
distinguishing feature upon which a family-of-marks claim could be based).
The Examining Attorney’s evidence establishes that paint is commonly used to
“rejuvenate” painted surfaces such as homes, fences and interior walls. Accordingly,
we find that consumers will readily understand from the term REJUVENATE that
Applicant’s paint will function to restore the painted object to an original or new
condition. For the foregoing reasons, we conclude that the proposed mark
REJUVENATE, when used on or in connection with the identified goods, merely

16 Applicant also argues that the prior registrations establish that the mark has acquired
distinctiveness and “reserves the right to submit additional evidence to traverse [the Section
2(e)(1)] refusal.” Applicant’s Br., 7-8, 5 TTABVUE 15-16. Although Applicant, in its January
12, 2017 and March 14, 2018 responses, alluded to “secondary meaning in the minds of
consumers” based on prior Supplemental Register registrations, such an allusion is
insufficient to support a claim of acquired distinctiveness under Section 2(f). See In re
Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983). In addition, as discussed above,
registrations on the Supplemental Register for different marks and different goods cannot
form the basis of a valid Section 2(f) claim. See TMEP § 1212.04 and 37 C.F.R. § 2.41(a)(1).
Further, the record must be complete prior to the filing of an appeal and Applicant may not
“reserve” the right to submit additional evidence. Trademark Rule 2.142(d).
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describes a “quality, feature, function, or characteristic” of Applicant’s paint. In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
Decision: The refusals to register Applicant’s mark REJUVENATE under
Sections 2(d) and 2(e)(1) of the Trademark Act are affirmed.