Refresh Skincare, Inc.

Trademark Trial and Appeal Board

Jan 31, 2006

No. 78231303 (T.T.A.B. Jan. 31, 2006)

Mailed:
January 31, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Refresh Skincare, Inc.
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Serial No. 78231303
_______

Cynthia B. Stevens of Wildman, Harrold, Allen & Dixon for
Refresh Skincare, Inc.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney,
Law Office 110 (Chris A.F. Pedersen, Managing Attorney).1
_______

Before Hairston, Bucher and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Refresh Skincare, Inc. (applicant) has applied to
register the mark set forth below, on the Principal
Register, for goods and services identified after amendment
as "skin care products, namely skin and face moisturizers,
conditioning, firming, smoothing and toning creams and
lotions, skin resurfacing creams, lotions and crystals,

1 Jennifer H. Dixon issued the initial and final office actions.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 78231303
2
skin exfoliating creams, lotions and crystals, all sold at
skin care salons" in Class 3, and for "skin care salon
services" in Class 44.2

Under Section 2(d) of the Lanham Act, 15 U.S.C. §
1052(d), the examining attorney has refused registration of
applicant's mark, in view of the prior registration of the
mark shown below, on the Principal Register, for "personal
soap" in Class 3.

The cited registration, no. 1537128, issued May 2,
1989 and includes a description stating, "The mark consists
of the word 'refresh' overlapping an hibiscus flower
blossom. The lining and/or stippling shown in the mark on

2 The USPTO's database includes an apparently superfluous use of
the word "skin" in the Class 3 identification, which has not been
repeated above.

Ser No. 78231303
3
the drawing is a feature of the mark and does not indicate
color."3
The original drawing of applicant's mark showed the
three elements, i.e., the leaf, the word "refresh" and the
word "skincare" in a vertical format, with no overlap and
with the word "refresh" much larger than the word
"skincare." The drawing, however, was found by the
examining attorney to be unacceptable and a substitute was
required. When the two words in the mark were displayed in
the original drawing with space between them, the examining
attorney required a disclaimer of "skincare." That
requirement was withdrawn when the first amended drawing,
albeit of unacceptable quality, showed the words with no
space between them. A second substitute drawing was filed
with applicant's request for reconsideration of the final
refusal, and the examining attorney has indicated in the
appeal brief that such drawing, showing the mark as
displayed in this decision, is acceptable.
Identification and classification issues were also
resolved during prosecution.4 The refusal under Section
2(d), however, was made final.

3 Section 8 & 15 affidavits, respectively, have been accepted and
acknowledged.

4 The amendment of the Class 3 identification involved, among
other things, deletion of the term "soap."
Ser No. 78231303
4
Applicant has appealed the refusal. Both applicant
and the examining attorney have filed briefs. Applicant
did not request an oral argument.
Our determination under Section 2(d) of the question
of likelihood of confusion is based on an analysis of all
relevant analytical factors for which there is probative
evidence of record. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In the analysis of likelihood of
confusion presented by this case, key considerations are
the similarities of the marks and the related nature of the
goods of applicant and registrant, see Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976), as well as the likely marketing of the goods
to the same class of prospective consumers.
In comparing the marks, we assess their similarities
and differences in appearance, in sound as they would be
spoken, in their meaning, and in the overall commercial
impression they create. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). In doing so, we remain
mindful of the well-settled principal that “there is
nothing improper in stating that, for rational reasons,
Ser No. 78231303
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more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Overall, we find the marks very similar for likelihood
of confusion purposes. While applicant's mark includes a
leaf and registrant's mark includes a flower blossom, both
marks utilize the dominant word "refresh" and display that
word overlapping with, respectively, the leaf and blossom
designs. Words tend to dominate over designs because words
would be used to request products or services by name. In
re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985). Consumers familiar with
registrant's mark for soap, when confronted with
applicant's mark for other skin care products and services
may not note the difference between the word "refresh"
overlapping a blossom and that word overlapping a leaf.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991)(When comparing marks, emphasis is on the likely
recollection of the average customer, who normally retains
a general rather than a specific impression of trademarks
Ser No. 78231303
6
or service marks), aff’d. No. 92-1086 (Fed. Cir. June 5,
1992). Even if consumers noted the differences in the
designs, because the marks share the identical dominant
term there would still be a likelihood of confusion. See
Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983)(Comparing applicant's
mark GIANT HAMBURGERS and design with opposer's GIANT and
GIANT and design marks, the court noted that nothing in
applicant's mark indicated source or origin and purchasers
were left to speculation; and court reasoned that a person
familiar with opposer's products "would likely conclude
that the word 'GIANT' in applicant's mark refers to opposer
as the sponsor, source and origin of applicant's
products"). Thus, we disagree with applicant's suggestion
that the respective designs are dominant and that the
differences in the designs suggest that there is no
likelihood of confusion.
Applicant also argues that the marks differ because
its "mark contains 3 words and 4 syllables; registrant's
mark contains 1 word, 2 syllables." Brief, p. 9.
Applicant's addition of "skincare" to the word "refresh,"
however, is unlikely to serve as a means for consumers to
distinguish the marks, as it is a descriptive or generic
term for applicant's goods or services. National Data, 224
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USPQ at 751 ("That a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark…."). In addition, the first part of
marks is most likely to be impressed on the minds of
consumers and remembered. Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895 (TTAB 1988)
Applicant also argues that the mark in the cited
registration should be accorded a limited scope of
protection, because "there are numerous sellers in the same
market using similar marks" and "the term 'refresh' is
extremely weak and certainly entitled to only a very narrow
and limited scope of protection." Brief, p. 4. Applicant
bases this argument in part on evidence that six other
entities reportedly are using marks which include the term
"refresh," or variations thereof, for products or services
the same as or similar to those involved herein. Brief,
pp. 4-5; Olsen declaration submitted with February 27, 2004
response to initial refusal of registration. Additional
evidence offered to support the argument includes reprints
from USPTO records regarding six registrations and six
applications. Stephens declaration submitted with February
27, 2004 response to initial refusal of registration and
Request for Reconsideration of final refusal of
Ser No. 78231303
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registration.5 Finally, the Stephens declaration also
introduced into the record the results of a search of the
USPTO's TESS (Trademark Electronic Search System) database
for the term REFRESH, yielding 157 applications or
registrations, but without any indication of goods or
services.6
The results of the TESS search are of little, if any,
probative value, as the list does not even reveal the goods
or services of the listed applications and registrations.
As for the evidence of alleged use of certain marks and the
evidence of particular registrations and applications
provided in detail, we have reviewed and cross-referenced
these items and list them below.
Registrations and separate evidence of use:

Refresh & Restore is registered and Jean Olsen, applicant's
declarant states that she "called Bath & Body Works and was
told the mark 'Refresh & restore' was used on 'Bath & Body
Skin Care' products." The registration is apparently owned
by Bath & Body Works and lists numerous class 3 products,
including soap.

re:fresh a day spa is registered in stylized form and the
Olsen declaration introduces an Internet web page showing
that the spa services provider listed as owning the
registration is also listed in the web page domain name.
The web site also shows use of the terms "re:new,"

5 Three applications were referenced in the Stephens declaration.
Another three were referenced in the request for reconsideration.

6 Most of the marks in the TESS (Trademark Electronic Search
System) search results list include the term "refresh," a
phonetic equivalent, or a longer term that includes that letter
string in it. Some results show foreign terms.
Ser No. 78231303
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"re:juvenate," "re:plenish," "re:capture," and
"re:balance."

Evidence of use alone:

An Internet web page shows use of RepHresh for "vaginal
gel."

The Olsen declaration asserts that a web page shows use of
the mark Refresh, by Neways International for a bath and
body gel. The web page attached to the declaration,
however, does not support the declaration, as only the
letters "esh" are visible.

The Olsen declaration also asserts that a web page shows
that "Heather Kleinman's Cosmetic Connection … sells skin
care products under the name 'Refreshing'." In fact, the
web page does not show this. The attached web page is a
review of products of another and it is unclear whether the
discussed products are sold under a mark using the term
"refreshing" or whether the source of the reviewed products
uses that term in a descriptive sense.

The Olsen declaration asserts "I contacted Polardreams
International and was told the mark REFRESH & REVIVE was
currently being used in connection with skin care products
sold at Sam's Club." The declaration does not reference
any corroborating evidence.

Registrations alone:

RE:FRESH is registered for class 3 "cosmetic skin care
products," but not including soap. This registration does
not appear to be owned by the owner of the re:fresh a day
spa mark referenced above.

Refreshing Nourishing is registered for various items,
including soaps, makeup, skin care, and perfume. The word
"nourishing" is disclaimed.

Refresh & Rejuvenate The Body Of Your Soul is registered
for various hair care products and skin care products.

There is a reprint of only some information on the
registration for the mark Refresh Zing Care Package for a
"personal rejuvenation kit" including various items. The
Ser No. 78231303
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middle page of the TARR printout is missing, so the
identification is incomplete.

Applications alone:

Renew & Refresh, for items including soap, wash, lotion,
and creams.

COLOR REFRESHER, for various hair care products; "color" is
disclaimed.

Refresh & Extend, for skin lotion; "extend" is disclaimed.

PURE REFRESH, for a "non-medicated herbal mouthwash and
rinse."

REFRESH YOUR SHAVE!, for "shave foam, shave gel, shave
cream and shave conditioner."

REFRES H AIR, for various hair care products.

We discount the items listed as evidence solely of use
of four marks. We do not find the "RepHresh" mark to
present the same commercial impression as the marks
involved herein, and the evidence regarding the other three
marks is lacking, for reasons stated above in the listings.
Accordingly, applicant has provided evidence of
registration and use of two marks, registration of four
other marks, and the filing of applications for six marks.
We find many of these marks to present different
overall commercial impressions than the two involved marks,
and some are associated with different products, such as
those listed in registrations or applications for hair care
products or shaving products. In short, we do not find
Ser No. 78231303
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this evidence sufficient to warrant according the mark in
the cited registration the narrow scope of protection urged
by applicant. Of all the marks, applicant's is the closest
to the mark in the cited registration. Therefore, even if
the registered mark were entitled to only a narrow scope of
protection, it would be protected against registration of
applicant's mark for the identified goods. On the other
hand, we acknowledge that the registered mark is highly
suggestive and is not entitled to a very broad scope of
protection.
The examining attorney has made of record numerous
third party registrations showing registration of the same
mark for soaps and various skin care products such as those
listed in the applicant's identification. These
registrations also list beauty salon services or skin care
salon services. 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 that may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993) and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). We find these
registrations to suggest that it is not unusual for a spa
or salon to also offer to customers a wide range of
Ser No. 78231303
12
products that they may use at home. Indeed, applicant's
own identification of goods and services supports this
conclusion, as applicant claims use of its mark for skin
care salon services and various skin care products sold at
skin care salons. Nonetheless, the registrations submitted
by the examining attorney do not serve to suggest that the
owner of the cited registration, having registered its mark
only for "personal soap," would find the operation of
beauty salons or skin care salons within its natural zone
of expansion.
We must assume that registrant's personal soap, not
being limited to any particular class of consumers or
channels of trade, will be available to all usual consumers
of soap through all usual channels of trade for such
products. See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). Thus, we must assume
that registrant's soap will be available in salons, as are
applicant's various skin care products. A consumer finding
applicant's products and registrant's soap in a salon would
be likely to conclude they emanate from a common source, or
have the same sponsorship. Indeed, even a consumer
familiar with registrant's soap outside the salon channel
of trade, who may have purchased the product in a retail
store, when confronted with applicant's mark on skin care
Ser No. 78231303
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products in a salon, would likely reach the same
conclusion. Accordingly, we find there is a likelihood of
confusion or mistake among consumers when the respective
marks are used on or in connection with the identified
products. We do not, on the other hand, find a likelihood
of confusion when registrant's mark is used for soap and
applicant's mark is used for skin care salon services.
Decision: The refusal of registration under Section
2(d) is reversed as to applicant's Class 44 services. The
refusal of registration is affirmed as to applicant's Class
3 goods.