Forrester Laboratories

Trademark Trial and Appeal Board

Sep 26, 2001

No. 75605331 (T.T.A.B. Sep. 26, 2001)

9/26/01

Paper No. 10
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Forrester Laboratories
________

Serial No. 75/605,331
_______

Keith A. Vogt of Niro, Scavone, Haller & Niro for Forrester
Laboratories.

Maureen L. Dall, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Forrester Laboratories to
register the mark RE-GEN for "non-medicated skin care
preparations."1
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when used in connection with applicant's goods,

1 Application Serial No. 75/605,331, filed December 14, 1998; alleging
dates of first use on November 15, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/605,331
2
so resembles the registered mark REGENERATION for "skin
moisturizing creams and lotions" as to be likely to cause
confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
In any likelihood of confusion analysis, we look to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to the goods, since registrant's skin
moisturizing creams and lotions are fully encompassed by
applicant's broadly described non-medicated skin care
preparations, the goods must be considered legally identical,
directly competitive products. As such they are deemed to travel
in the same channels of trade to the same purchasers. See In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Applicant does
not dispute the identity of the goods but, instead, essentially
argues that because of the dissimilarity of the marks and the

2 Registration No. 1,853,990; issued September 13, 1994; combined
Sections 8 & 15 affidavit accepted and acknowledged, respectively.

Ser No. 75/605,331
3
sophistication of the purchasers, confusion is not likely to
occur.
We disagree that the purchasers of skin creams are
sophisticated. While some of these consumers may care about the
products they are purchasing or exercise a certain degree of care
in selecting these products, they are not necessarily
sophisticated purchasers or likely to exercise a high degree of
care in terms of examining the trademarks. In addition, the
respective goods are relatively inexpensive and the types of
products which are likely to be purchased casually and on
impulse, thus increasing the risk of confusion. Kimberly-Clark
Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 1146, 227 USPQ
541, 542 (Fed. Cir. 1985).
Thus we turn our attention to the marks. The Examining
Attorney argues that the marks RE-GEN and REGENERATION sound
alike because applicant's mark is the phonetic equivalent of the
first two syllables of registrant's mark. The Examining Attorney
points to a dictionary definition of "re," of which we take
judicial notice, as a prefix meaning "again; anew: rebuild" and
relies on excerpts of articles taken from the NEXIS database to
support her contention that "gen" is a recognized abbreviation
for "generation" "in a wide variety of industries and commercial
activities." Representative examples of these stories are set
forth below (emphasis added):
Ser No. 75/605,331
4
The Internet is producing a new type of consumer,
predominantly made up of young people. The Net generation,
or N-Gen, demands more options.... The Des Moines Register
(January 1, 2000).

The current generation [of night-vision technology] – called
Generation 3 or "Gen 3" – image intensifier tube consists of
a vacuum "envelope" holding three active components:.... The
Richmond Times Dispatch (March 16, 2000).

And so did the sewage treatment plant's backup co-
generation, or "co-gen," system, which relies on methane to
keep all waste water flowing smoothly.... Albuquerque
Journal (March 20, 2000).

The Examining Attorney has also relied on the following
NEXIS and Internet references to "regen" (emphasis added):
Just like the gen-x'ers of the last decade, the "re-gens"
will not go unnoticed. That's what the creator of a new
radio show believes. "'Re-gen' stands for Re-
Generation...." PR Newswire (April 7, 2000).

Welcome to our online list of projects, undergoing
environmental analyses on the Beaverhead-Deerlodge National
forest.... Some commonly used abbreviations in this column
are:... REGEN (regeneration).... www.fs.fed.us/rl/b-
d/quarterly.htm 6/28/00.

Knowledge and Innovation in Chemical Waste Destruction....
Building on our pioneering developments and world leadership
in sulfuric acid regeneration (regen), Rhodia has developed
techniques of co-processing a wide range of hazardous wastes
in our regeneration facilities.
www.ecoservices.us.rhodia.com 6/28/00.

Water Softeners from Freshwater Systems Ltd...A regen or
regeneration is when the softener recharges its self by
using salt. E.g. a TT or TR10 softener will regenerate
every two days for a favour, using 1.4kg salt each regen.
www.watersoft.freeserve.co.uk/water...htm 6/28/00.

Finally, the Examining Attorney has made of record NEXIS and
Internet articles "showing the highly suggestive use of the term
Ser No. 75/605,331
5
'REGENERATION' for skin care products." The Examining Attorney
maintains that consumers of skin care products are familiar with
the word "regeneration" in relation to those products and would
therefore be likely to interpret RE-GEN as REGENERATION.
Examples of these articles appear below (emphasis added):
...quickly launched into the skin care regiment for me,
including a French-milled soap,...at prices ranging from $
18 to $ 36. She didn't mention any of the special treatment
items such as Lift Serum or the skin regeneration
treatment...The skin regeneration treatment, she explained,
is a "nourishing formula of almost pure protein designed
to...stimulate cell regeneration,...." WWD (Women's Wear
Daily) (March 13, 1987).

Clarins claims its Anti-Aging Total Skin supplement
addresses regeneration, nutrition, hydration, oxygenation
and protection of the skin. WWD (Women's Wear Daily) (July
26, 1985).

Both Chanel and Clinique are expanding present product
lines. At Chanel these include an eye cream, a moisture
mask, a hand cream,...and a skin-regeneration treatment.
The New York Times (December 9, 1984).

The Examining Attorney also notes the use of the word
"regeneration" in a product called "Alpha-Hydroxy Regeneration
Creme Cleanser" as advertised on the website of "Makeup Artist's
Choice."
Applicant, on the other hand, argues that the marks are
visually and phonetically dissimilar. Applicant argues that the
marks create different commercial impressions and disputes the
Examining Attorney's contention that "gen" is a shortened form of
the word "generation" or that it would be recognized as such in
Ser No. 75/605,331
6
the context of skin care products. Applicant points to a
dictionary entry for "gen," of which we take judicial notice,
showing it to be an abbreviation for words including "gender,"
"genus" and "genitive," but not "generation."
We agree with applicant that the marks, REGENERATION and
RE-GEN, when considered in their entireties, are dissimilar in
sound, appearance and meaning. Although there are some
similarities in the marks, the similarities are outweighed by
their differences. Registrant's mark consists of a single, five-
syllable word whereas applicant's mark is a two-syllable term
separated by a hyphen. Moreover, the principle that there is no
correct pronunciation of a trademark is particularly applicable
where, as here, the mark is not a dictionary word. See, e.g., In
re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). In
this case, the term RE-GEN is just as likely to be pronounced
with a hard "G" sound as a soft "G," thereby making RE-GEN even
less similar to REGENERATION when spoken. Nevertheless,
regardless of the particular pronunciation, the two marks are
dissimilar in terms of sound.
Moreover, the marks are not similar in meaning. The cited
mark REGENERATION is a dictionary word which, as the Examining
Attorney points out and the evidence shows, is highly suggestive
of products such as applicant's and registrant's skin creams,
whose purpose is to regenerate cells of the skin thereby
Ser No. 75/605,331
7
improving its appearance. The question is whether RE-GEN would
convey that meaning to the purchasers of applicant's skin creams.
The evidence does not convince us that it would. RE-GEN is not a
dictionary word, and the evidence submitted by the Examining
Attorney does not persuade us that the term would otherwise be
perceived or recognized by the consumers of the identified
products as an abbreviated form of "regeneration."
As noted earlier, the purchasers of applicant's and
registrant's skin care products are ordinary consumers. However,
apart from one newswire story, the evidence relied on by the
Examining Attorney shows use of "regen" or "re-gen" in highly
technical or specialized fields, such as water softeners or
sewage treatment, none of which remotely relates to consumer
products. It is not likely that the average consumer of
applicant's skin care products would be familiar with or even
aware of such usage. The newswire story is of little value
because it refers to "re-gen" in the unrelated context of an age
demographic rather than skin restoration, and because there is no
indication that the newswire story has appeared in any
publication available to the consuming public. See In re Urbano,
51 USPQ2d 1776 (TTAB 1999).
Nor is the evidence persuasive that "gen" would necessarily
be recognized as a shortened form of "generation." Applicant
points out that the term "gen" has a number of dictionary
Ser No. 75/605,331
8
meanings, none of which is "generation." Several articles
submitted by the Examining Attorney show use of the basic term
"gen" with other prefix designations such as "Co-gen," "N-Gen" or
"Net-Gen" and with suffixes such as "gen A" or "gen 3." The term
"gen" in each of these articles refers to "generation" in the
context of an age group or a level of technology. Because those
other arguably accepted meanings of "gen" have no inherent
relation to the skin care products herein, it cannot be presumed,
on the basis of this evidence, that purchasers would associate
the word "generation" with the term "GEN" in applicant's mark.
Even if we assume that purchasers would make that
association and that the two marks would therefore convey the
same meaning, in view of the highly suggestive nature of that
meaning in relation to the goods herein, the differences in sound
and appearance would be sufficient to distinguish the marks. It
is settled that highly suggestive marks are weak and are
generally accorded a more limited scope of protection than an
arbitrary mark. See The Drackett Company v. H. Kohnstamm & co.,
Inc., 160 USPQ 407 (CCPA 1969) ["The scope of protection afforded
such highly suggestive marks is necessarily narrow and confusion
is not likely to result from the use of two marks carrying the
same suggestion as to the use of closely similar goods."]; and
Sure-Fit Products Company v. Saltzson Drapery Company, 117 USPQ
295 (CCPA 1958).
Ser No. 75/605,331
9
In view of the foregoing, notwithstanding the identity of
the goods in this case and the nature of the purchasers of those
goods, we conclude that the differences in the respective marks
makes confusion unlikely.
Decision: The refusal to register is reversed.