IP Law Daily, TRADEMARK—TTAB: REVIVERITE INSIDE! not confusable with REVIVE for rubber flooring, reversing Examining Attorney, (Apr 7, 2025)

By Jonathan Anderson

The term REVIVE is somewhat weak and is entitled to slightly less than the normal scope of protection.

The Trademark Trial and Appeal Board has reversed the Examining Attorney’s refusal to register the composite mark REVIVERITE INSIDE! for rubber flooring, concluding that confusion is not likely with the cited mark REVIVE. Although Applicant’s and Registrant’s goods are similar and are sold through the same trade channels, the Board found that the term REVIVE is somewhat weak and is entitled to slightly less than the normal scope of protection. Further, the Board determined that Applicant’s and Registrant’s marks are dissimilar in appearance, sound, connotation, and commercial impression (In re New Rubber Technologies Holdings, Inc., No. 97577543 (T.T.A.B. Apr. 4, 2025)).

Background. The Applicant, New Rubber Technologies Holdings, Inc., sought registration on the principal register of the composite mark REVIVERITE INSIDE! for “Rubber, thermoplastic, and thermoplastic elastomer flooring; flooring made of rubber, devulcanized rubber, recycled rubber and rubber alternatives” in International Class 19 and for “Floor mats; and floor mats made of rubber, devulcanized rubber, recycled rubber, thermoplastics, thermoplastic elastomers, and rubber alternatives” in International Class 27.

The mark consists of the word REVIVERITE in capital letters with a check mark over the second letter ‘I’ followed by the word INSIDE with the letter ‘I’ capitalized and the remainder of the word in lower case letters all followed by an exclamation mark. Color was not claimed as a feature of the mark.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the applied-for mark is likely to cause confusion with the standard-character mark REVIVE, registered on the principal register, for “Vinyl floor coverings; Decorative slip resistant floor covering in sheet form” in International Class 27. Applicant appealed.

Likelihood of confusion. Applying DuPont factors for which there was evidence and argument, the Board reversed the refusal to register as to both classes of goods. Because of the overall differences between the marks and the weakness of the term REVIVE shared by them, the Board found that confusion was not likely between Applicant’s mark and the mark REVIVE in the cited registration.

Similarity or dissimilarity of the goods and trade channels. These factors weighed in favor of likelihood of confusion. The Board found that Applicant’s goods, namely rubber flooring and floor mats, including rubber mats, are related to Registrant’s goods, namely vinyl flooring and decorative slip resistant floor coverings. The Board further found that rubber flooring, floor mats, and vinyl flooring are sold through the same trade channels, namely flooring companies on the internet.

The Board made these findings based on third-party registration evidence submitted by the Examining Attorney showing that companies that offer floor mats or rubber floor mats also offer vinyl flooring or decorative slip resistant floor coverings under the same mark, and that companies that offer rubber flooring also offer vinyl flooring or decorative slip resistant floor coverings under the same mark. The Examining Attorney also submitted internet evidence showing that dealers and manufacturers offer rubber flooring and vinyl flooring, and some dealers offer rubber flooring, floor mats, and vinyl flooring.

Strength of the cited mark. This factor weighed slightly against likelihood of confusion. The Board found that the term REVIVE is somewhat weak and is entitled to slightly less than the normal scope of protection. Applicant challenged the conceptual and commercial strength of the cited mark, arguing the public has been accustomed to seeing “REVIV” formative marks in numerous different variations as a trademark or brand identifier for flooring materials and related services and are able to distinguish among the sources. Applicant also argued that REVIV formative marks are diluted commercially.

The Board found that the shared term REVIVE/REVIVAL is somewhat weak conceptually as used with flooring to suggest restoration, renewal, refreshing, or bringing back to life, and that consumers have been exposed to third-party uses of the shared term and formatives in connection with flooring goods and floor care products and services. Overall, the Board found the evidence suggested that consumers of flooring will look not just to the REVIVE/REVIVAL portion of the marks containing the term to identify and distinguish the source, but other parts of the marks.

Similarity or dissimilarity of the marks. This factor weighed against the likelihood of confusion. The Board found that Applicant’s and Registrant’s marks are dissimilar in appearance, sound, connotation, and commercial impression. Although the word REVIVE appears in both marks, Applicant’s mark contains additional language, namely the term RITE with a check mark and the term INSIDE with an exclamation mark, which emphasizes the term RITE in the composite mark. Considering that the term REVIVE has some conceptual and commercial weakness, the marks are different by virtue of the additional terms and visual elements in Applicant’s mark. Further, the additional terms in Applicant’s mark as a whole yield a different connotation and commercial impression from the cited mark as used in connection with the goods.

The Case is Serial No. 97577543.

Judge: Goodman, C.

Attorneys: Colleen F. Goss (Lippes Mathias LLP) for New Rubber Technologies Holdings, Inc. Mildred Black for the USPTO.

Companies: New Rubber Technologies Holdings, Inc.

Cases: Trademark USPTO