J&J Technology, Inc.v.Ralph Edward Taylor

Trademark Trial and Appeal Board

Dec 17, 2007

No. 91165996 (T.T.A.B. Dec. 17, 2007)

Mailed:
December 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

J&J Technology, Inc.
v.
Ralph Edward Taylor
_____

Opposition No. 91165996
to application Serial No. 76597002
filed on June 14, 2004
_____

Jordan S. Weinstein of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. for J&J Technology, Inc.

Ralph Edward Taylor pro se.
______

Before Hohein, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On June 14, 2004, Ralph Edward Taylor filed an intent-
to-use application to register the mark RE-NEW-IT, in
standard character form, for goods ultimately identified as
“household fabric spray for releasing wrinkles, softening
fabric, firming fabric, stiffening fabric, and easing the
ironing of cotton and cotton blend clothing; household spray
for softening towels,” in International Class 3 (Serial No.
76597002).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91165996
2
J&J Technology, Inc. filed an opposition to the
registration of applicant’s mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground of
priority of use and likelihood of confusion. Opposer
alleged that applicant’s mark, when used in connection with
applicant’s goods, so resembles opposer’s mark RENUIT for
use in connection with cleaning preparations as to be likely
to cause confusion. In the notice of opposition, opposer
claimed ownership of two intent-to-use applications, filed
on March 28, 2003 and set forth below, for the mark RENUIT,
in standard character form:
1. Serial No. 76501897 for “cleaning products,
namely, exterior wood cleaner for decks, fences, lawn
furniture, and buildings, interior wood and floor cleaner,
aluminum and vinyl siding cleaner, concrete and asphalt
cleaner, mold and mildew cleaner, multi purpose cleaner for
household, commercial and industrial use, all purpose
degreasing preparations not for use in manufacturing
processes for use in the household, commercial and
industrial fields, house wash, super metal polish, cleaning
preparations for use on marine vehicles, carpet cleaners,
floor cleaners, spot and spray cleaners for clothing and
fabrics,” in International Class 3;1 and,

1 This application matured into a registration on October 16,
2007 (Registration No. 3313015). Opposer claimed January 2005 as
its dates of first use anywhere and first use in commerce.
Opposition No. 91165996
3
2. Serial No. 76976334 for “cleaning products for
vehicles, namely, waterless car wash preparations,” in Class
3.2 Because Serial No. 76501897, now Registration No.
3313015, supra, has the more relevant description of goods,
we will focus our decision on this registration, and give no
further consideration to Serial No. 76776334.
Applicant denied the salient allegations in the notice
of opposition. The opposition was fully briefed.

The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
1. Declaration trial testimony of Joseph D.
Blankenship, M.D., President and CEO of opposer, with
attached exhibits;3
2. Notice of reliance on applicant’s responses to
specific interrogatories and requests for admission;
3. Notice of reliance on the following items:

2 This application was published for opposition on May 31, 2005.
The notice of allowance issued on August 23, 2005. The fourth
extension of time to file a statement of use was granted on
September 12, 2007.
3 Pursuant to Trademark Rule 2.123(b), 37 CFR §2.123(b), the
parties stipulated to the submission of testimony by written
declarations or affidavits.
Opposition No. 91165996
4
a. A copy of the file history for opposer’s
application Serial No. 76501897;
b. A copy of the file history for opposer’s
application Serial No. 76976334;
c. Copies of printouts of third-party
registrations from the U.S. Patent and
Trademark Office electronic database
purporting to show that household cleaning
products and fabric softeners may emanate
from a single source;
d. A copy of the Webster’s II new College
Dictionary (2001) providing the definition of
the word “renew”; and,
e. A copy of the Merriam-Webster’s Collegiate
Dictionary (10th ed. 1997) providing the
definition of the word “renew”; and,
4. The rebuttal testimony declaration of Georgia
Blankenship with attached exhibits.
B. Applicant’s evidence.
Applicant filed his own testimony declaration.

Standing
A party who demonstrates a real interest in the
proceeding has standing to litigate. Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188
Opposition No. 91165996
5
(CCPA 1982). Opposer may establish its standing by proving
that it has a real commercial interest in its own mark, and
a reasonable basis for its belief that it would be damaged
by the registration of applicant’s mark. Id at 213 USPQ
189. To establish a reasonable basis for a belief that one
is damaged by the application sought to be registered, an
opposer, as in the case sub judice, may assert a likelihood
of confusion that is not wholly without merit. Id. See
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000) (petitioner’s production and
sale of merchandise bearing its mark is sufficient to
establish standing).
Opposer has proven that it has a real commercial in
this proceeding by the testimony of Joseph Blankenship that
opposer has used the mark RENUIT on exterior wood and deck
cleaner, house siding cleaner vehicles, namely waterless car
wash preparations, metal cleaner, brick, stone, and concrete
cleaner, carpet cleaner, universal cleaner/degreaser, window
cleaner, and jewelry cleaner,4 and that it has filed
applications for the mark RENUIT for its goods, including
cleaning products, namely, interior wood and floor cleaner,
mold and mildew cleaner, multi-purpose cleaner for household
use, and floor cleaners, and spot and spray cleaners for
clothing and fabrics. Because opposer’s claim of likelihood

4 J. Blankenship Dec., ¶¶12 and 13.
Opposition No. 91165996
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of confusion is not wholly without merit, opposer has
established its standing. Lipton Industries, Inc. v.
Ralston Purina Co., supra 213 UPSQ at 189.

Priority
Applicant is entitled to rely upon the June 14, 2004
filing date of his intent-to-use application as his
constructive use date for purposes of priority in this
opposition proceeding, subject to applicant's establishment
of constructive use by filing an acceptable allegation of
use resulting in issuance of a registration. See Section
7(c) of the Trademark Act of 1946, 15 U.S.C. 1057(c). See
also, Larami Corp. v. Talk To Me Programs, Inc., 36 USPQ2d
1840, 1844 (TTAB 1995); and Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
Likewise, the earliest date upon which opposer may rely for
purposes of priority in this opposition proceeding is the
March 28, 2003 filing date of its intent-to-use application,
subject to opposer’s establishment of constructive use by
filing an acceptable allegation of use resulting in issuance
of a registration (which opposer has attained). See Section
7(c) of the Trademark Act of 1946. See also, Larami Corp.
v. Talk To Me Programs, Inc., supra at 1845 n.7 Because
opposer’s application filing dates are earlier than
applicant’s filing date, opposer has priority of use.
Opposition No. 91165996
7
Likelihood Of Confusion
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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997); Federated Foods, Inc. v. Fort Howard
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The first du Pont factor focuses on the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In re E. I. du Pont De Nemours & Co., supra. In a
particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re Lamson
Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). See also, In re
White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988). In
comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a
Opposition No. 91165996
8
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB
1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
We begin our analysis of the marks by noting that the
marks are phonetically identical.
Also, the marks have the identical meaning (i.e., to
restore), and when they are used in connection with the
cleaning products offered by the parties, the marks engender
the same commercial impression (i.e., to restore or revive
something). Mr. Blankenship testified that opposer selected
RENUIT to suggest that its products would “bring the
materials to which they were applied back to life.”5

5 J. Blankenship Declaration, ¶7.
Opposition No. 91165996
9
Likewise, applicant testified that he selected RE-NEW-IT
“because it will do exactly what the word means according to
Webster’s New Twentieth Century Dictionary RE-NEW or RE-NEW-
It in the same dictionary has the meaning of ‘to make new’,
or as if new again, to make young, fresh or strong again, to
bring back to into good condition, to become restored or new
again.”6
While the marks are not identical in appearance, the
visual differences between the marks does not outweigh the
identity of the sound, meaning, and commercial impression of
the marks. In view thereof, the similarity of the marks is
a factor that favors finding a likelihood of confusion.
B. The similarity or dissimilarity and nature of the
goods.

Applicant is seeking to register RE-NEW-IT for
“household fabric spray for releasing wrinkles, softening
fabric, firming fabric, stiffening fabric, and easing the
ironing of cotton and cotton blend clothing; household spray
for softening towels.” Opposer’s application Serial No.
76501897 (now Registration No. 3313015) for the mark RENUIT
includes spot and spray cleaners for clothing and fabrics.
The products of both parties are fabric sprays. Applicant’s
fabric spray is an alternative to starch7 while opposer’s
fabric spray is for cleaning clothing and fabrics.

6 Taylor Declaration, ¶6.
7 Taylor Declaration, ¶4, 5, and 10.
Opposition No. 91165996
10
Opposer’s fabric spray is applied to clothing before
laundering while applicant’s fabric spray will be applied to
clothing after laundering.8 Because the products of parties
are fabric sprays used in connection with clothing,
consumers encountering the products of the parties may
mistakenly believe that they emanate from the same source
because of the similarity of the marks. Contrary to
applicant’s arguments, the differences between the fabric
sprays is not sufficient to dissuade us from finding that
the products of the parties are similar. In re Albert
Trostel & Sons, Co., 29 USPQ2d 1783, 1785 (TTAB 1993) (goods
are considered similar/related if the conditions surrounding
their marketing are such that they would encountered by the
same persons under circumstances that could, because of the
similarity of the marks used thereon, give rise to the
mistaken belief that the emanate from or associated with a
single source).
The fact that applicant’s goods are closely related to
some of opposer’s opposer’s goods is sufficient to support a
finding of likelihood of confusion. The listing of
additional products in opposer’s registration does not
obviate the relatedness of the parties’ fabric sprays.
Tuxedo Monopoly, Inc. v. General Mills Fund Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion

8 Taylor Declaration, ¶¶9 and 10.
Opposition No. 91165996
11
must be found if there is likely to be confusion with
respect to any item that comes within the identification of
goods in the application).
However, the similarity of the goods is not limited to
fabric spray. Opposer also uses its mark in connection with
cleaning products, namely, interior wood and floor cleaner,
mold and mildew cleaner, multi-purpose cleaner for household
use, carpet cleaners, and floor cleaners. To prove that
opposer’s cleaning products are related to applicant’s
fabric spray for softening fabrics and towels, opposer
introduced into evidence nine (9) use-based, third-party
registrations for both cleaning products and fabric spray.
Third-party registrations based on use in commerce that
individually cover a number of different items may serve to
suggest that the listed goods are a type that may emanate
from a single source. In re Albert Trostel & Sons Co.,
supra at 1785-1786; In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). Opposer introduced the
following third-party registrations into evidence:9
Mark Reg. No. Goods

HYPOALLERGENIC
PRODUCTS THAT WORK
31331196 All purpose cleaner; fabric
softener

PRO VALUE 2838632 All purpose cleaner; fabric
softener

9 In the following table, we have not included the entire
description of goods for each of the subject registrations. Only
the goods analogous to those found in the application and
opposer’s application/registration are listed.
Opposition No. 91165996
12

Mark Reg. No. Goods

PRO PRIDE 2840101 All purpose cleaner; fabric
softener

OSI 2992790 All purpose cleaner; fabric
softener

USA and design 1691110 All purpose cleaner; fabric
softener

REGENCY 2044282 All purpose cleaner; fabric
softener

STANPRO 1766492 All purpose cleaner; fabric
softener

NO-SCRUB 1678207 All purpose cleaner; fabric
softener

NATURE 1669992 All purpose cleaner; fabric
softener

In view of the foregoing, we find that the goods of the
parties are closely related.
C. The similarity or dissimilarity of established, likely-
to-continue trade channels.

When the goods in the application and registration at
issue are broadly identified, and there are no limitations
in either opposer’s registration or the subject application,
we must presume that the goods of the parties will be sold
in the same channels of trade and will bought by the same
classes of purchasers. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1984). Because both fabric sprays identified by the parties
Opposition No. 91165996
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may be used in connection with clothing, they clearly move
in the same channels of trade and share the same customer
base. Moreover, because there are no restrictions on how or
to whom applicant’s fabric spray is sold, or on how or to
whom opposer’s cleaning products are sold, these products
must be presumed to move in all channels of trade normal for
such goods and to be available to all consumers likely to
purchase such goods. Fabric sprays and cleaning products
are sold in a wide variety of venues, including
supermarkets, convenience stores, and department stores, and
they are purchased by virtually every household. In view
thereof, applicant’s fabric sprays and opposer’s cleaning
products move in the same channels of trade and are sold to
the same classes of consumers.
In view of the foregoing, the similarity of the trade
channels is a factor that favors finding that there is a
likelihood of confusion.
D. Balancing the factors.
After carefully reviewing the relevant facts regarding
the likelihood of confusion, we find that because the marks
of the parties are similar and because the goods set forth
in opposer’s registration are in part closely related and
move in the same channels of trade, there will be a
likelihood of confusion. In view thereof, applicant’s mark
RE-NEW-IT when used in connection with “household fabric
Opposition No. 91165996
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spray for releasing wrinkles, softening fabric, firming
fabric, stiffening fabric, and easing the ironing of cotton
and cotton blend clothing; household spray for softening
towels,” so resembles opposer’s mark RENUIT used in
connection with spot and spray cleaners for clothing and
fabrics as to be likely to cause confusion.
Decision: The opposition is sustained and registration
to applicant is refused.