RTS Laboratories

Trademark Trial and Appeal Board

Jul 31, 1998

No. 74607079 (T.T.A.B. Jul. 31, 1998)

Hearing: Paper No. 18
October 29, 1997 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 30 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re RTS Laboratories
________
Serial No. 74/607,709
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Michael M. Zadrozny of Shlesinger, Arkwright & Garvey LLP for
RTS Laboratories.
Jeffrey Martin, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 5, 1994, applicant filed the above-referenced
application to register the mark “NAIL RESTORE” on the
Principal Register for a “treatment for cuticles and nail
bed,” in Class 3. The application was based on applicant’s
claim of use of the mark in interstate commerce on the filing
date of the application.
The Examining Attorney refused registration under Section
2(d) of the Lanham Act on the ground that applicant’s mark, as
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applied to the goods set forth in the application, so
resembles the marks “RESTOR” and “RESTORE PLUS” that confusion
is likely. The former is registered for, inter alia, “nail
treatment preparations,”1 and the later is registered for,
inter alia, “nail care preparations.”2
Applicant amended the identification-of-the goods clause
to read as follows: “nail care preparations, namely treatments
for nail cuticles and nail beds,” and disclaimed the right to
use the word “NAIL” apart from the mark as shown.
Applicant also included with its response to the refusal
to register copies of five third-party registrations. These
registered marks, most of which are on the Principal Register,
are as follows: “Lip Restore” (in stylized script) for
cosmetics, namely lip cream; “RESTORA” for conditioning
ingredient in a hair relaxer; “RESTOR SKIN” for funeral
cosmetics, namely masking sprays; “RESTORE” for contact lense
cleaning enhancer preparations; and “PROTECT & RESTORE” (on
the Supplemental Register) for skin cream.
Applicant argued that confusion is not likely because the
marks in their entireties are not similar, the commercial
impressions created by the marks are not similar, and the term
“RESTORE” is weak in source-identifying significance, so that

1 Reg. No. 747,038, issued to Buty-Wave Products Company on March
19, 1963; affidavits under Sections 8 and 15 filed; renewed July 26,
1983.
2 Reg. No. 1,795,524, issued to Buty-Wave Products Company on
September 28, 1993.
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its inclusion in applicant’s mark, the cited registrations,
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and the five third-party registrations submitted by applicant
is not likely to confuse prospective purchasers of the goods
bearing applicant’s mark or either of the cited marks.
The Examining Attorney was not persuaded, and in the
second Office Action, he made the refusal to register final.
Applicant filed a notice of appeal, followed by a timely-filed
appeal brief. The Examining Attorney then filed his brief on
appeal, after which applicant requested an oral hearing before
the Board.
Applicant next filed a supplement to its brief, attached
to which was a copy of an entry from a then-recently-published
edition of the Official Gazette in which another third-party
mark had been published. The mark is “RES•TOR WITH HUMAN HAIR
KERATIN” and design, and the goods are listed as “hair
shampoo, hand and body lotion, bubble bath, hair conditioner,
hair spray and hair gel.” Applicant argued that this
information shows that the word “restore” has a normally
understood meaning or suggestiveness in the field of
cosmetics, and that “marks containing the term have been
registered for the same or similar goods because the remaining
portions of the mark (sic) are sufficient to distinguish the
marks as a whole from one another.”
The Board suspended action on the appeal and remanded the
application to the Examining Attorney for consideration of the
additional evidence. He issued an Office Action in which he
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explained why he remained convinced that confusion is likely,
and then the requested oral hearing was conducted before the
Board on October 29, 1997.
After careful consideration, we hold that confusion is
likely because the marks at issue are similar and the products
with which they are used are closely related.
As to the first issue, when the marks are considered in
their entireties, they are quite similar. As the Examining
Attorney points out, the word “RESTORE” is the dominant
portion of applicant’s mark because the other component, the
word “NAIL,” is merely descriptive as applied to applicant’s
product. “NAIL” has, in fact, been disclaimed apart from
applicant’s mark in its entirety. The same word that
dominates applicant’s mark, “RESTORE,” or its phoenetic
equivalent, “RESTOR,” is also the dominant portion of the mark
in one of the cited registrations, and the word is the entire
mark in the other registration. The marks “RESTOR,” “RESTORE
PLUS,” and “NAIL RESTORE” are similar in appearance,
pronunciation, and connotation in connection with preparations
used to treat nails. They all create similar commercial
impressions, and each suggests that the product with which it
is used can restore or repair nails.
Applicant’s argument that the term is weak in trademark
significance is not persuasive of a different conclusion. The
third-party registrations (as well as the reference to the
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published application wherein the goods are hair care
products) do serve to establish the meaning of the term
“restore” as applied to the cosmetic products listed therein.
However, these third-party registrations and the third-party
application do not establish use of the marks therein, nor do
they show that the consuming public is familiar with the marks
in connection with the listed goods, much less that such
familiarity has resulted in any loss of source-identifying
significance for the term “restore.” Significantly, the goods
listed in the application and the registrations are lip cream,
skin cream, hair relaxer ingredients, masking sprays for
funeral cosmetics, and hair and skin products. Even if we
were presented with evidence of the use and promotion of these
goods under these marks, such evidence would not establish
that the term “restore” is weak in trademark significance as
applied to nail care products.
The goods with which applicant uses its mark are closely
related to the goods identified in the cited registrations.
All are nail care preparations. Use of these three similar
marks, all of which are suggestive as applied to such
products, is quite likely to cause confusion, especially when
the nature of the goods is considered. These nail-care
preparations are not expensive products purchased by
sophisticated purchasers. Instead, they are identical
inexpensive consumer goods purchased by ordinary people, often
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on impulse. Under these circumstances, where particular care
is not necessarily exercised by the buyers, the use of these
similar marks on the same kinds of goods is surely likely to
cause confusion.
If we were left with any doubt on the issue of whether
confusion is likely, such doubt would necessarily be resolved
in favor of the prior registrant. Applicant, as the newcomer
in this particular segment of the cosmetic market, had a duty
to select a mark that would not cause confusion. By adopting
the equivalent of one of the registered marks and the dominant
portion of the other, and adding only the merely descriptive
word “NAIL,” applicant has failed to steer clear of the
previously registered marks. Burroughs Wellcome Co. v.
Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
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Accordingly, the refusal to register based on the
likelihood of confusion with the two cited marks is affirmed,
and registration to applicant is denied.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial & Appeal Board
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