Restokleen USA, Inc.

Trademark Trial and Appeal Board

Dec 11, 2020

88138020 (T.T.A.B. Dec. 11, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: December 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Restokleen USA, Inc.
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Serial No. 88138020
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Francis John Ciaramella of Francis John Ciaramella PLLC
for Restokleen USA, Inc.
Michael FitzSimons, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Zervas, Wellington and English,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Restokleen USA, Inc. (“Applicant”) seeks registration on the Principal Register of
the standard character mark Restokleen for “Building construction services;
Building construction, remodeling and repair; Construction consultation; Custom
construction and building renovation; Housing services, namely, repair,
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improvement, and construction of residential real property” in International Class
37.1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), because Applicant’s mark, when used in
connection with the identified services, so resembles the registered standard
character mark RESTO CLEAN (with a disclaimer of CLEAN) for “Building
restoration; Restoration services in the field of water, smoke and fire damage;
Disaster Clean-up services” in International Class 37,2 as to be likely to cause
confusion, to cause mistake or to deceive.
After the refusal was made final, Applicant concurrently filed an appeal and a
request for reconsideration of the refusal. The Examining Attorney denied the
request for reconsideration and the appeal was resumed. The appeal has been briefed.
We affirm the refusal to register.
Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of

1 Application Serial No. 88138020was filed on October 1, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use in
commerce on January 1, 2018.
2 Registration No. 5594132 issued on October 30, 2018, based on an application filed January
12, 2018, with an allegation of first use in commerce on January 1, 2011.
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confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the relatedness between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other factors that are
relevant or for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (Board considers each DuPont
factor for which there is evidence and argument).
A. Relatedness of Services and Trade Channels
We first consider the DuPont factors involving the relatedness of the services and
their channels of trade. In making our determination, we must look to the services as
identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011).
We agree with the Examining Attorney’s contention that Applicant’s “Building
construction, remodeling and repair housing . . . and building renovation . . . [and]
housing repair and improvement” services are encompassing of one another and thus
in-part legally identical. That is, in the context of buildings, “restoration” is defined
as “[t]he action of building up again or reconstructing; (now) spec. the process of
carrying out alterations and repairs with the idea of restoring a building to something
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like its original form; a general renovation.”3 Put simply, a “restoration” building
project may involve “repairs” and is synonymous with or could include a “general
renovation” of the building. The following excerpt from an online article submitted by
the Examining Attorney corroborates that a “Restoration” building project may
involve building repairs and renovation:4

Thus, according to this article and the definition we have located, “building
restoration” services includes home repair, improvement, and renovation services.
In addition to the overlap, and thus in-part legal identity of the services, the
Examining Attorney submitted evidence showing several different third-party

3 We take judicial notice of the definition for “restoration,” from the online Oxford English
Dictionary (www.oed.com) that also appears in print “OED (Second Edition)” in the United
States). 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) (the Board may take judicial
notice of dictionary definitions); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006)
(judicial notice of online dictionaries that exist in printed format or regular fixed editions).
4 Article attached to January 23, 2019 Office Action, TSDR pp. 8-12.
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companies that offer both building restoration services as well home repair and
improvement services.5 For example, Hoffman Weber Construction services
advertises “fire damage restoration” services and “remodeling and repairs” of
residential housing.6 The Examining Attorney also attached approximately 18 third-
party, use-based registrations covering restoration and/or cleanup services, as well
as services listed in the application like building renovation, construction and repair.7
This evidence shows that Applicant’s and Registrant’s respective services are of a
kind that may emanate from a single source under a single mark. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Thus, taken in its entirety, the evidence
shows that, aside from their in-part legal identity, there is also an otherwise clear
and very close relationship between the involved services.
To the extent that Registrant’s building restoration services encompass
Applicant’s building renovation and home repair and improvement services, the
services are in-part legally identical and we must presume these services will be
offered in the same trade channels customary for such services and offered to the
same classes of purchasers. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671

5 Internet printouts attached with Office Actions issued on January 23, 2019 (TSDR pp. 9-
29) and October 15, 2019 (TSDR pp. 2-10).
6 January 23, 2019 Office Action, TSDR pp. 17-20.
7 Attached to Office Actions issued on January 23, 2019 and October 15, 2019.
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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). In
any event, the Internet evidence, discussed supra, demonstrates that these are
indeed the types of services that may be offered by the same company to the same
class of consumers, i.e., homeowners in need of repairs or renovations to their home.
Accordingly, we find that some of the services are legally identical because they
encompass one another and are otherwise very closely related. The services will be
offered in the same channels of trade to the classes of consumers. These DuPont
factors therefore strongly favor a finding of likelihood of confusion.
B. Comparison of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion, 110
USPQ2d at 1160; DuPont, 177 USPQ at 567. The issue 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 that
confusion as to the source of the services offered under the respective marks is likely
to result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser,
who normally retains a general rather than specific impression of trademarks. Geigy
Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA
1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp.
Serial No. 88138020
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v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We do not predicate our analysis
on a dissection of the involved marks; we consider the marks in their entireties. Stone
Lion, 110 USPQ2d at 1160; Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”).
We are also mindful that when the involved services are legally identical and
otherwise very closely related, as is the case here, the degree of similarity between
the marks necessary to find likelihood of confusion need not be as great as where
there is no identity or less of a relationship between the services. Coach Servs., Inc.,
101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).
At the outset, we find the involved marks, RESTOKLEEN and RESTO CLEAN,
to be visually similar in that they both begin with the same RESTO element. The
marks also will be pronounced the same because KLEEN is a slight misspelling of
the word “clean.”
In terms of the overall commercial impressions and connotations of the marks, the
Examining Attorney asserts they are “essentially identical,” given that each mark is
the “combination of ‘RESTO,’ connoting restoration, and ‘CLEAN’ or ‘KLEEN,’ which
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conveys the impression that the services involve cleaning.”8 The Examining Attorney
concludes that both marks “suggest[] restoration and cleaning.”9
Applicant acknowledges that the term “RESTO in the [registered] mark is short
for RESTORATION.”10 Applicant, however, does not explain why the same RESTO
element in its own mark does not possess the same suggestive connotation given
Applicant’s building renovation services are encompassed by building restoration
services.
We find that the marks have the same connotation and commercial impression.
Specifically, both marks will be understood as the composite of RESTO, short for
restoration, and CLEAN (or its misspelled equivalent, KLEEN). In the context of
building renovation or restoration services, the marks convey the same suggestive
meaning, namely, that a building will be restored rendering it clean.
Accordingly, the factor of the similarity of the marks also strongly favors a finding
of likelihood of confusion.
C. Alleged Weakness of the Cited Mark
Applicant argues, “other marks besides those belonging to the Applicant and Prior
Owner have used the word RESTO or RESTORATION for similar goods or services.
As a result of such registrations continued co-existence, it cannot be said that

8 8 TTABVUE 6.
9 Id.
10 6 TTABVUE 9.
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Applicant’s mark will create a likelihood of confusion.”11 In support, Applicant points
to nine registrations of record for marks that contain the word RESTORATION and
two registrations of record for marks with the term RESTO.12
The sixth DuPont factor considers “‘[t]he number and nature of similar marks in
use on similar goods [or services].”’ Omaha Steaks Int’l, Inc. v. Greater Omaha
Packaging Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting
DuPont, 177 USPQ at 567). “The purpose of introducing evidence of third-party use
is ‘to show that customers have become so conditioned by a plethora of such similar
marks that customers ‘have been educated to distinguish between different [such]
marks on the bases of minute distinctions.’” Id. (quoting Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005)). Third-party registration evidence, however, “does not equate to
proof of third-party use [but] may bear on conceptual weakness if a term is commonly
registered for similar goods or services.” Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (citing Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)). See also, In re Guild Mortg. Co.,
2020 USPQ2d 10279, *3 (TTAB 2020) (“[E]vidence of third-party registrations is
relevant to ‘show the sense in which ... a mark is used in ordinary parlance.”’).

11 6 TTABVUE 8.
12 Id. at 9; copies of the registrations were submitted by Applicant with its Request for
Reconsideration filed April 15, 2020. All of the registrations with the word RESTORATION
contain a disclaimer of that term.
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Because Applicant’s third-party registration evidence is not evidence of actual use
of those registered marks, it does not help show that consumers have been
“conditioned” or “educated” for purposes of distinguishing RESTO-formative marks.
Applicant’s submission of only two third-party registrations for marks that contain
the term RESTO, with no evidence of actual use of these marks, falls far short of
approaching the type and amount of evidence needed to show commercial weakness.
See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015)
(discussing “voluminous evidence” of registration and use of paw print design
elements). The nine registrations of record for marks that contain the word
RESTORATION, all with a disclaimer of that term, are only probative to show what
may seem obvious, namely, that the word “restoration” is descriptive of restoration
or building related services.
At best, the third-party registrations merely serve to corroborate the previously-
discussed, suggestive connotation conveyed by the term RESTO. That is, the
registrations help show that the term is likely to be understood as short for
“restoration,” and thus connotes the nature of the involved services. The record,
however, is void of any others registering, let alone using, marks that combine the
terms RESTO and CLEAN (or KLEEN, or any other similar misspelling).
In sum, although we find the cited mark is suggestive in the context of building
repair, renovation and restoration services, it is registered on the Principal Register
without a claim of acquired distinctiveness and must be considered an inherently
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distinctive mark. We must also assume, on this record, that Applicant and Registrant
are the only ones who have adopted marks that combine the terms RESTO and
CLEAN (or KLEEN, or any other similar misspelling). Thus, we find Registrant’s
mark in its entirety is entitled to an appropriate level of protection against the
registration of similar marks, and particularly against marks containing the same or
nearly the same two elements for overlapping and closely related services.
D. Other Factors Argued
Applicant argues that “[t]here has been no documented evidence that shows that
any consumers have confused the respective marks in commerce.”13 Applicant’s
unsupported statement of no known instances of actual confusion is of little
evidentiary value. In re Majestic Distilling Co., 65 USPQ2d 1201, 1205 (Fed. Cir.
2003). See also In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973). In the context of an ex parte appeal, there is no opportunity to hear from the
Registrant about whether they are aware of any instances of confusion. In re Opus
One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (“The fact that an applicant in an ex
parte case is unaware of any instances of actual confusion is generally entitled to
little probative weight in the likelihood of confusion analysis, inasmuch as the Board
in such cases generally has no way to know whether the registrant likewise is
unaware of any instances of actual confusion, nor is it usually possible to determine
that there has been any significant opportunity for actual confusion to have

13 6 TTABVUE 8.
Serial No. 88138020
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occurred.”) (citations omitted). Moreover, in this case, we note that Applicant has
alleged use since 2018 (see Note 1); without evidence regarding widespread promotion
or use of its mark, we must conclude that there has been relatively little time and
opportunity for instances of actual confusion to occur. Thus, the factor involving the
nature and extent of any actual confusion remains neutral in our likelihood of
confusion analysis.
Applicant further asserts that “any potential confusion between the respective
marks would be de minimis.”14 We disagree, especially given our findings as to the
legal identity of the services, which travel in trade channels presumed to be the same,
and strong similarity of the marks.
Applicant also argues that “the USPTO has consistently allowed registration of
similarly situated applications,” referencing six sets of registrations involving marks
that Applicant contends are “more similar to their respective cited prior marks than
the current Application and [the cited registered] Mark.”15 Although the sets of
registrations cover services that are the same or related to those involved in this
proceeding, the registered marks are wholly different from the involved marks here.
As we have often stated, “[t]he Board must decide each case on its own merits.” In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1567 (Fed. Cir. 2001); In re
Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001) (“the Board is not bound by prior
decisions of Trademark Examining Attorneys, and ... each case must be decided on

14 Id. at 9.
15 Id. at 10.
Serial No. 88138020
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its own merits and on the basis of its own record, in accordance with relevant
statutory, regulatory and decisional authority.”). After all, we do not have
information or evidence from the registration files as to why the referenced sets of
registrations may have been allowed to coexist, including, e.g., evidence
demonstrating weakness of the common terms in the sets of registered marks or a
filed consent agreement. We again point out that in this case there is no evidence of
any other entities, aside from Applicant and Registrant, who have adopted marks
that combine the same two elements, RESTO and CLEAN (or KLEEN).
Finally, Applicant contends that “the buyers of the respective services will be a
[sic] sophisticated. In other words, consumers making purchases of services from
either the Applicant or [Registrant] are well educated, and not likely to make such
purchases on impulse.”16 Applicant asserts that “[s]pecifically, construction or
restoration services may cost many thousands of dollars.”17 These statements,
however, are not supported by evidence and hence are not persuasive. In addition,
the services, as identified, are not limited to those who are real estate professionals
and we cannot assume that all building renovation or restoration services will be
large-scale projects involving large expenses. Accordingly, we find consumer
sophistication or level of purchasing care a neutral factor in our analysis. That said,
even if Applicant’s unsupported argument is credited, purchaser sophistication does
not always result in a finding that confusion is unlikely, especially where legally

16 Id. at 6.
17 Id.
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identical services are involved and the marks are very similar. Weiss Assocs. v. HRL
Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of
goods and marks outweighed sophisticated purchasers, careful purchasing decision,
and expensive goods).
E. Conclusion
In conclusion, both the application and cited registration identify services that are
in-part legally identical and otherwise very closely related. We also presume, and as
the evidence establishes, the legally identical services are offered in the same trade
channels and to the same classes of purchasers. In view of the foregoing, and because
Applicant’s marks are very similar and have the same connotation and commercial
impression, we conclude that confusion is likely to occur.
Decision: The refusal to register Applicant’s mark is affirmed.