Supplementary Terms and Shared Term Weakness Overcome 2(d) Refusal

Overview

While the goods were found to be highly related and sold through overlapping trade channels, the Board ultimately determined that the inherent weakness of the term "REVIVE" in the flooring industry, combined with the distinct connotation created by the Applicant's additional wording and design elements, precluded a finding of likelihood of confusion.

The case demonstrates that even a "modest" showing of third-party marketplace use can be probative in narrowing the scope of protection afforded to a registered mark. Furthermore, the decision underscores the importance of analyzing the commercial impression of a composite mark as a whole. Rather than focusing solely on a shared literal element, the Board examined how supplementary terms like "RITE" and "INSIDE," along with punctuation and graphic symbols, can shift the meaning of a mark to suggest specific product attributes (such as the proper recycling of interior materials), thereby creating a distinct identity from a more general cited mark.

Background

The Applicant, New Rubber Technologies Holdings, Inc., filed an application seeking to register the mark REVIVERITE INSIDE!. The mark consists of the word "REVIVERITE" in capital letters, featuring a check mark over the second letter "I," followed by the word "INSIDE" with the letter "I" capitalized and the remaining letters in lower case, all concluding with an exclamation mark.

The goods listed include:

• rubber, thermoplastic, and thermoplastic elastomer flooring; flooring made of rubber, devulcanized rubber, recycled rubber and rubber alternatives in International Class 19; and
• floor mats; and floor mats made of rubber, devulcanized rubber, recycled rubber, thermoplastics, thermoplastic elastomers, and rubber alternatives in International Class 27.

The Trademark Examining Attorney refused registration of the mark under Section 2(d) of the Trademark Act, asserting that the mark was likely to cause confusion with the registered standard-character mark REVIVE. The cited mark is registered for vinyl floor coverings and decorative slip-resistant floor covering in sheet form in International Class 27.

After the refusal was made final, the Applicant appealed the decision to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #2 & #3: Similarity of the Goods and Trade Channels

The Board first examined the similarity or dissimilarity of the goods as identified in the application and the cited registration. The Board noted that the Applicant did not address this factor in its brief, interpreting this omission as an apparent concession of the issue.

In determining relatedness, the Board focused on the identifications provided in the record. The Applicant’s goods consisted of various types of rubber and thermoplastic flooring and mats, while the Registrant’s goods included vinyl floor coverings and slip-resistant floor coverings in sheet form.

To establish relatedness, the Examining Attorney provided internet evidence from several companies showing that businesses offering rubber flooring often also offer vinyl flooring. Furthermore, evidence from dealers demonstrated that single entities simultaneously offer rubber flooring, floor mats, and vinyl flooring. The Board found this internet evidence highly relevant to the relatedness of the Class 19 and Class 27 goods to the Registrant’s goods.

The Examining Attorney also submitted nine use-based, active third-party registrations showing that companies offer both floor mats (Class 27) and vinyl or decorative slip-resistant flooring under the same mark. Additionally, eight use-based registrations showed the offering of rubber flooring and vinyl flooring under a single mark, and two more registrations showed the offering of all three categories (rubber flooring, floor mats, and vinyl flooring) under the same mark.

The Board concluded that the goods are related and sold through the same trade channels, weighing these factors in favor of a likelihood of confusion.

DuPont #6: Strength of the Cited Mark

The Board then turned to the strength of the cited mark, REVIVE, assessing both its conceptual and commercial aspects. The Applicant challenged the mark's strength by arguing that consumers are accustomed to seeing various "REVIV"-formative marks in the flooring industry and can easily distinguish between sources. The Board took judicial notice of dictionary definitions, noting that "revive" means to return to consciousness or life, become active or flourishing again, or restore from a depressed or unused state. "Revival" was similarly defined as an act or instance of reviving.

The Applicant provided several third-party registrations that the Board deemed probative. The Board observed that these terms suggest "bringing back to life" as a way to refresh or renew a property with new flooring, which is the same connotation as the cited mark. The Applicant also introduced registrations for REVIVE or REVIVAL used for other building materials, such as window casements and surface renewal coatings, reflecting a broader industry use for products that restore or renew properties.

The Applicant submitted marketplace evidence of flooring products incorporating these terms. While the Board noted that evidence regarding floor cleaners and restoration products was less probative than replacement flooring, it still carried value because consumers might choose cleaning over replacement as an economical solution.

The Board concluded that the eleven uses of REVIVE or REVIVAL with different flooring types constituted a "modest" but probative showing of commercial weakness. Overall, the Board found that REVIVE is somewhat weak conceptually and commercially because it suggests restoration or renewal. As a result, the mark was entitled to slightly less than the normal scope of protection, and this factor weighed slightly against a likelihood of confusion.

DuPont #1: Similarity of the Marks

In the final major component of the analysis, the Board compared the marks in their entireties. The Applicant’s mark is a composite mark, REVIVERITE INSIDE!, featuring a check mark and specific capitalization. The cited mark is the standard-character word REVIVE. While both marks share the word "REVIVE," the Board found them dissimilar in appearance and sound due to the Applicant’s additional terms "RITE" and "INSIDE," as well as the visual punctuation.

The Board then analyzed the connotation of the components. "RITE" was identified as the phonetic equivalent of "RIGHT," which is defined as being in a correct or proper state. The check mark over the "i" in RITE reinforced this meaning of being correct or dealt with properly. "INSIDE" was defined as an interior part or inner surface, and the exclamation point indicated forceful utterance or strong feeling.

The Board reasoned that while the cited mark REVIVE generally connotes renewal, the Applicant’s mark REVIVERITE INSIDE! yields a different connotation. It indicates that the material inside the goods, such as the recycled rubber, was renewed or restored in a proper or "rite" manner. The Board stated that the additional wording "RITE INSIDE" creates a different commercial impression that outweighs the shared wording. Therefore, the Board found the marks to be dissimilar in appearance, sound, connotation, and commercial impression, weighing this factor against a likelihood of confusion.

Board’s Decision

The Board concluded that although the goods were related and sold through similar trade channels, the overall differences between the marks and the established conceptual and commercial weakness of the term "REVIVE" were dispositive. The Board determined that the shared term "REVIVE" is not a strong source identifier in the flooring industry and that consumers would look to the additional elements of the Applicant's mark to distinguish the source.

Ultimately, the Board found that confusion was not likely between the Applicant’s composite mark and the Registrant's standard-character mark.