GNLV Corp.

Trademark Trial and Appeal Board

Sep 4, 2008

No. 78747772 (T.T.A.B. Sep. 4, 2008)

Mailed: September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GNLV Corp.
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Serial No. 78747772
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Lauri S Thompson of Greenberg Traurig for GNLV Corp.

Mary E Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Walters, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

GNLV Corp. has filed an application to register the
stylized mark shown below on the Principal Register for
“shampoo, hair conditioner, hand and body lotion, shower
gel, facial soap and bath soap,” in International Class 3.1
The application includes the statements “the foreign wording
in the mark translates into English as restores or

1 Serial No. 78747772, filed November 4, 2005, based on an allegation of
a bona fide intention to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78747772

2
rejuvenates” and “the mark consists of ‘Renove’ in stylized
letters with an accent over the first ‘e.’”

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the previously registered mark shown below that, if used on
or in connection with applicant’s goods, it would be likely
to cause confusion or mistake or to deceive.2
Mark: RENOVER [registered February 25, 2003]
Services: “skincare salon services,” in International
Class 42
Owner: Renover Skincare Corporation
Translation: “The foreign wording in the mark
translates into English as to rejuvenate.”

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and

2 The examining attorney included Registration No. 2109746 as a basis
for the refusal under Section 2(d). However, in her appeal brief, the
examining attorney withdrew the refusal as to this registration.
Serial No. 78747772

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Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average

Further, this registration has been cancelled under Section 8. Thus,
Serial No. 78747772

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purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case,
the average purchasers are consumers of skincare products
and skincare salon services. Furthermore, although the
marks at issue must be considered in their entireties, it is
well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
The examining attorney contends that, while not
identical, the overall commercial impressions of the marks
are the same because they look and sound very similar. She
argues, further, that if both marks are translated from
French into English, they have the same connotation, as both
marks translate into English as the same word.
Applicant contends that if we apply the doctrine of
foreign equivalents and translate the marks, the registered
mark is extremely weak and diluted; whereas, if we do not
apply the doctrine of foreign equivalents because consumers
are unlikely to translate the marks, then the marks are
readily distinguishable because they have entirely different

the refusal is moot as to this registration.
Serial No. 78747772

5
commercial impressions. Applicant submitted third-party
registrations to establish that there are several different
registered marks that include the term RESTORE for skin care
products. Applicant argues that, if applicant’s and
registrant’s marks are translated into English, they are
merely part of a crowded field of RESTORE marks for skin
care products and services.3
Whether or not we translate the marks from French to
English, we find that applicant’s mark and the cited
registered mark are substantially similar. RENOVE and
RENOVER are almost identical in appearance, differing by
only the final letter “R” in the registered mark and they
have essentially the same commercial impression. In this
regard, we note that the “er” suffix at the end of the
registered mark is “used in forming nouns designating
persons from the object of their occupation or labor.”4
Especially if we translate the marks, then the applicant’s
mark conveys the commercial impression of products that
“restore” the skin while the registered mark conveys the
commercial impression of people that help restore the skin

3 Applicant also submitted copies of search results from the Google
search engine for the term “restore,” which is of no probative value
both because the excerpts are truncated and because the subjects to
which they pertain are unrelated to skin care.

4 The Random House Dictionary of the English Language (Unabridged), p.
657 (2nd ed. 1987). We may take judicial notice of dictionary
definitions. University of Notrue Dame du Lac v. J. C. Gourmet Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 IS{Q 505 (Fed.
Cir. 1983)

Serial No. 78747772

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(i.e., restorers). Additionally, while the mark in the
application is presented in a stylized font, the stylization
is minimal and does not add significantly to the commercial
impression of this mark. Moreover, the registered mark is
in standard character format and, thus, may be represented
using any number of stylized fonts, including using the same
font as the applied-for mark. The fact that the cited
registered mark does not include an acute accent over the
“e,” but the applied for mark does, does not distinguish
these marks.
If we translate both of these marks from French to
English, they have the same meaning, i.e., “restore.”5 Even
if we consider the English translation of the marks and
weigh them in the context of the third-party registrations
submitted by applicant, we do not find that this evidence
establishes that the registered mark is sufficiently weak
that applicant’s mark and the registered mark can coexist.
While each of the third-party registrations has additional
wording and, in some cases, different skin care products and
services, both of the marks herein are almost identical
forms of the identical word. Moreover, each case must be
decided on its own merits.

5 We take judicial notice of the translation of “rénover” in the Pocket
Oxford-Hachette French Dictionary (2005)(wordreference.com) as “to
restore,” noting that “rénové” is the past participle “rénover.”

Serial No. 78747772

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Thus, we begin our consideration of the respective
goods and services with the premise that, because the marks
at issue are so similar, the extent to which the applicant’s
goods and registrant’s services must be related to support a
finding of likelihood of confusion is lessened. See In re
Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only
necessary that there be a viable relationship between the
two to support a finding of likelihood of confusion. See In
re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods and services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
Serial No. 78747772

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they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
Acknowledging that the goods and services are
different, the examining attorney contends that they are
complementary goods and services that are likely to be
encountered together by consumers in the same channels of
trade. In support of her position, the examining attorney
submitted third-party registrations including both the
identified goods and services registered in connection with
the same mark; and numerous excerpts from Internet websites
showing salons offering skin care services and their own
lines of skin and hair care products.
Applicant argues that it owns a resort hotel casino and
that its products are intended to be offered to hotel
guests; that its products are for general personal use and
Serial No. 78747772

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are not intended for sale in salons; and, therefore, there
is no overlap in the trade channels.6
The examining attorney has clearly established a close
relationship between applicant’s identified goods, which
consist of skin and hair care products, and the skin care
salon services recited in the cited registration.
Further, inasmuch as the identification of goods in the
involved application and the recitation of services in the
cited registration are not limited to any specific channels
of trade, we presume that the goods and services would be
offered in all ordinary trade channels for these goods and
to all normal classes of purchasers. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992). Because the evidence
establishes that skin care salons also sell skin care
products, there is clearly an overlap in the channels of
trade for these goods and services. Further, such goods and
services will be purchased by the general public, which
includes all levels of sophistication and purchasing care.

6 Applicant includes in its brief a request, should the Board not
be convinced to reverse the refusal, to remand the application to the
examining attorney so that applicant can amend its identification of
goods to limit its trade channels. However, at this point in the
proceeding it is too late for applicant to request a remand. If
applicant had wanted to amend its identification of goods, it was
required to do so prior to appeal or, with the approval and remand
request of the examining attorney, prior to the issuance of a final
decision by the Board. Moreover, as the examining attorney correctly
noted, restricting the trade channels in the application would not
resolve the issue because the trade channels in the registration are
broadly stated and it is reasonable to assume that registrant’s skin
care salon services could be offered in a resort hotel, so that the
trade channels would overlap.

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When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark and registrant’s mark, their
contemporaneous use on the closely related goods and
services involved in this case is likely to cause confusion
as to the source or sponsorship of such goods and services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.