T. Gerald O"Daniel, PLLC

OCR transcription for search; preserved printed pages are authoritative

This Opinion is not a
Precedent of the TTAB

Mailed: April 20, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re T. Gerald O’Daniel, PLLC

Serial Nos. 98287623 (parent)
98287679

Jack A. Wheat of McBrayer PLLC
for T. Gerald O’Daniel, PLLC.

Kareine Johnson, Trademark Examining Attorney, Law Office 131,
Nicholas A. Coleman, Managing Attorney.

Before Lykos, Heasley, and Bradley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Applicant, T. Gerald O’Daniel, PLLC, seeks registration on the Principal Register
of the standard character marks PRESERVATION FACELIFT (with “FACELIFT”
disclaimed) and PRESERVATION FACIAL REJUVENATION (with “FACIAL

REJUVENATION” disclaimed) both for “Healthcare; Cosmetic body care services;

Cosmetic face care services; Cosmetic skin care services; Cosmetic surgery services;

Serial Nos. 98287623 (parent) and 98287679
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Plastic surgery; Providing healthcare information; Providing information in the field
of cosmetic surgery,” in International Class 44.1
The Examining Attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks, as used
in connection with these services, so resemble the following registered marks as to be
likely to cause confusion, to cause mistake, or to deceive:
PRESERVATION AGING (in standard characters) for “Dermatology services,”
in International Class 44,2 and
PRESERVATION FIRST (in standard characters) for
Surgery; orthopedic surgery services; providing information in the field of
orthopedic surgery, sports traumatology, ligament surgery and joint
reconstruction surgery; providing a website featuring information about
orthopedic surgery, sports traumatology, ligament surgery and joint
reconstruction surgery; medical services; medical services in the field of
sports medicine; medical services in the field of surgery; medical services
in the field of minimally invasive surgery; medical services in the field of
orthopedic surgery, sports traumatology, ligament surgery and joint
reconstruction surgery; medical consultation, in International Class 44.3
The Examining Attorney initially made each refusal final based solely on the
PRESERVATION FIRST registered mark. But when Applicant appealed and
requested reconsideration in each case, the Examining Attorney issued superseding
nonfinal actions adding PRESERVATION AGING as a basis for refusal. After
1 Application Serial Nos. 98287623 (for PRESERVATION FACELIFT) and 98287679 (for
PRESERVATION FACIAL REJUVENATION) were filed on November 28, 2023, based on
Applicant’s declared intention to use the marks in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 5292999, issued on the Principal Register on September 19, 2017, Section
8 and 15 declarations accepted and acknowledged.
3 Registration No. 6302138, issued on March 23, 2021.

Serial Nos. 98287623 (parent) and 98287679
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Applicant responded, the Examining Attorney issued superseding subsequent Final
Actions refusing registration to each applied-for mark based on both cited
Registrations. The appeals proceeded, and Applicant’s motion to consolidate the
appeals was granted.4
We focus on the cited Registration for PRESERVATION AGING (in standard
characters) for “Dermatology services.” If the refusal is not affirmed on the basis of
this registered mark, it would not be affirmed on the basis of the other cited mark. In
re Max Cap. Grp., No. 77186166, 2010 WL 22358, *2 (TTAB 2010).
I. Likelihood of Confusion
Section 2(d) of the Trademark Act provides that a mark may be refused
registration if it:
[c]onsists of or comprises a mark which so resembles a mark registered in
the Patent and Trademark Office, or a mark or trade name previously used
in the United States by another and not abandoned, as to be likely, when
used on or in connection with the goods [or services] of the applicant, to
cause confusion, or to cause mistake, or to deceive….
15 U.S.C. § 1052(d).
“Confusion as to source is the bête noire of trademark law—the thing that stands
directly opposed to the law’s twin goals of facilitating consumers’ choice and
4 6-7 TTABVUE. Ex Parte Appeal No. 98287623 was designated as the “parent” appeal. All
citations are to that appeal and its prosecution history unless otherwise noted.
Citations to the briefs and other materials in the appeal record refer to the Board’s TTABVUE
online docket system. Citations to the prosecution file refer to the USPTO’s Trademark
Status & Document Retrieval (“TSDR”) system and identify the documents by title, date, and
page in the downloadable .pdf version.

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protecting producers’ good will.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599
U.S. 140, 147 (2023).
“‘Whether a likelihood of confusion exists’ is ‘aided by application of the thirteen
DuPont factors.’ Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d
1315, 1319 (Fed. Cir. 2018) (citing In re E. I. DuPont DeNemours & Co., 476 F.2d
1357, 1361 (C.C.P.A. 1973)).” Bullshine Distillery LLC v. Sazerac Brands, LLC, 130
F.4th 1025, 1031 (Fed. Cir. 2025). “The weight given to each factor depends on the
circumstances of each case.” In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed.
Cir. 2023). “The likelihood of confusion analysis considers all DuPont factors for
which there is evidence of record but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the [services].’” Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (quoting Han Beauty, Inc.
v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)); see also Sunkist Growers,
Inc. v. Intrastate Distributors, Inc., 144 F.4th 1376, 1379 (Fed. Cir. 2025).
A. Relatedness of the Services, Their Channels of Trade, and Classes
of Customers
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 476 F.2d at 1361; Stone Lion Cap. Partners, L.P.
v. Lion Cap. LLP, 746 F.3d 1317, 1322-23 (Fed. Cir. 2014).
As we consider these factors, “[t]he relevant inquiry in an ex parte proceeding
focuses on the goods and services described in the application and registration.”
Charger Ventures, 64 F.4th at 1383. Here, the respective services, once again, are

Serial Nos. 98287623 (parent) and 98287679
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Registrant’s “Dermatology services” and Applicant’s “Healthcare; Cosmetic body care
services; Cosmetic face care services; Cosmetic skin care services; Cosmetic surgery
services; Plastic surgery; Providing healthcare information; Providing information in
the field of cosmetic surgery.”
As the Examining Attorney correctly points out,5 the respective services overlap
and encompass one another. Applicant’s broadly recited “healthcare” encompasses
Registrant’s narrower “dermatology services,” which are subsumed in their entirety
under Applicant’s broader term. As a Healthline website put it, “[a]dermatologist may
be the first healthcare provider to recognize the signs [of diabetes].”6 However,
“healthcare” is too general and broad a field to prove the relatedness of all the
disciplines it might encompass. See Edwards Lifesciences Corp. v. VigiLanz Corp.,
No. 91154210, 2010 WL 1514315, *12 (TTAB 2010) (“[A] finding that the [services]
are similar is not based on whether a general term or overarching relationship can
be found to encompass them both.”). A shared field does not necessarily equate to an
identical target market or related services.
Registrant’s “dermatology services,” in turn, encompass Applicant’s “Cosmetic
body care services; Cosmetic face care services; Cosmetic skin care services; Cosmetic
surgery services.” The Healthline website adduced by the Examining Attorney
describes dermatologists’ practice areas:
5 Examining Attorney’s brief, 10 TTABVUE 5-6.
6 Healthline.com, July 26, 2025 Subsequent Final Action at 16.

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7
The Registration’s and Applications’ respective recitations of services therefore
are legally identical in part. See In re Hughes Furniture Indus., No. 85627379, 2015
WL 1734918, *3 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.”’), quoted in Conopco, Inc. v. Transom Symphony Opco, LLC,
No. 91256368, 2022 WL 874335, *7 (TTAB 2022). “[T]he [services] are legally
identical in part. It is sufficient for a finding of likelihood of confusion if relatedness
is established for any item encompassed by the identification of [services] within a
particular class in the registration.” Look Cycle Int’l v. Kunshan Qiyue Outdoor
Sports Goods Co., No. 92079409, 2024 WL 3739358, *5 (TTAB 2024) (citing Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981).
To further demonstrate the relatedness of Registrant’s dermatology services and
Applicant’s surgical services, the Examining Attorney has adduced Internet evidence
of ten third-party websites showing single sources operating under the same mark or
7 Healthline.com, July 26, 2025 Subsequent Final Action at 17.

Serial Nos. 98287623 (parent) and 98287679
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trade name offering dermatology services on the one hand and plastic or cosmetic
surgery services on the other. For example:
• Healthline-- “A dermatologist may perform a surgical excision to remove
growths like moles, skin tags, and lesions.”8
• Luxedermgroup--
9
• Plastic Surgery and Dermatology Associates— “Our extensive list of
services is truly comprehensive, and you’ll find any type of plastic surgery or
dermatologic service that you might need here at Plastic Surgery and
Dermatology Associates.”10
• NOVA Plastic Surgery—“What makes NOVA special is we represent the
whole equation: cosmetic surgery, skin care, hair restoration, and dermatology,
all in one cohesive practice.”11
• Advanced Dermatology and Cosmetic Surgery-- “Our trusted providers –
board-certified dermatologists, Mohs and cosmetic surgeons, physician
assistants, nurse practitioners, aestheticians, and our entire support team –
8 Healthline.com, July 26, 2025 Subsequent Final Office Action at 18.
9 Luxedermgroup.com, July 26, 2025 Subsequent Final Office Action at 35.
10 PSDA-Va.com, July 26, 2025 Subsequent Final Office Action at 46.
11 NOVAPlasticSurgery.com, July 26, 2025 Subsequent Final Office Action at 51.

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work together to provide next-generation solutions that meet your unique
needs.”12
• GW Medical Faculty Associates—“We specialize in cosmetic dermatology
and laser surgery, while promoting long standing skin health with our medical
dermatology services.”13
• CULTURA Dermatology & Plastic Surgery—“At Cultura, we are honored
that our 23-year reputation has us respected as one of the top cosmetic
dermatology, laser, and plastic surgery practices in the nation.”14
• UPMC—
15
Applicant responds that, “[t]he Examining Attorney’s identification of numerous
hospitals, surgery centers and clinics to suggest that the various health care services
are related is a bit of a stretch. It could be likened to an argument to the effect that
any two food products are related simply because both could be found in grocery
stores.”16 Applicant continues: “There simply is no realistic basis to contend there is
any appreciable likelihood that patients will mistakenly procure specialized health
12 AdvancedDerm.com, July 26, 2025 Subsequent Final Office Action at 62.
13 GWDocs.com, July 26, 2025 Subsequent Final Office Action at 66.
14 CulturaMed.com, July 26, 2025 Subsequent Final Office Action at 73.
15 UPMC.com, July 26, 2025 Subsequent Final Office Action at 90.
16 Applicant’s reply brief, 11 TTABVUE 3.

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care services from a practice area other than what the patient seeks and needs.”17 “A
patient desiring or needing Applicant’s cosmetic surgery services, … or a patient
desiring or needing the PRESERVATION AGING dermatology services cannot
realistically be expected to confuse the …providers.”18
However, “[t]he issue, of course, is not whether purchasers would confuse the
services, but rather whether there is a likelihood of confusion as to the source of the
services.” In re Binion, No. 76590702, 2009 WL 5194992, *4 (TTAB 2009). That turns
on the consuming public’s perception of the relevant services. A proper comparison
“considers whether ‘the consuming public may perceive [the respective goods or
services of the parties] as related enough to cause confusion about the source or origin
of the goods and services.” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014).
Separately, Registrant’s “dermatology services” are also closely related to
Applicant’s “Plastic surgery”. In this case, as the record evidence demonstrates, a
dermatologist diagnoses and treats skin conditions.19 As this evidence shows, a
patient seeking care for a skin condition can commonly obtain cosmetic dermatology
services and/or plastic surgery from the same health care provider, including small
17 Applicant’s reply brief, 11 TTABVUE 4.
18 Applicant’s main brief, 8 TTABVUE 10. Applicant asserts in passing that “[t]hese are not
inexpensive services impulsively selected by the patient.” Id. Although this point is asserted,
not proven, we may reasonably infer under the fourth DuPont factor that patients will
exercise some heightened degree of care in selecting health care providers appropriate for
their condition. Cf. Mini Melts, Inc. v. Reckitt Benckiser LLC, No. 78814088, 2016 WL
3915987, *9 (TTAB 2016) (“parents of a sick child are likely to make an informed decision
about which product to buy to best address their child’s illness”). But an elevated degree of
care can be overborne by similarity of marks, relatedness of services, and overlap in trade
channels and consumers. In re Samsung Display Co., No. 90502617, 2024 WL 3451873, *10
n.31 (TTAB 2024).
19 Healthline.com, July 26, 2025 Subsequent Final Action at 17.

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clinics and practices. This shows that consumers are accustomed to seeing a single
mark associated with dermatology and plastic surgery services. See, e.g., Naterra
Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1117 (Fed. Cir. 2024); In re Detroit Athl. Co.,
903 F.3d 1297, 1306-07 (Fed. Cir. 2018) (citing Hewlett-Packard v. Packard Press, 281
F.3d at 1267 (evidence that “a single company sells the goods and services of both
parties, if presented, is relevant to a relatedness analysis”)). The relevant patients
would thus tend to view the respective services as related.
Furthermore, because the respective services are legally identical in part, they
presumptively travel through the same or similar channels of trade to the same
classes of consumers: patients seeking treatment for skin conditions. See Stone Lion,
746 F.3d at 1323 (where “[t]he parties’ recited services were in part legally identical,”
the Board properly found that they “covered the same potential purchasers and
channels of trade”); Am. Lebanese Syrian Assoc. Charities, Inc. v. Child Health
Research Inst., No. 91190361, 2011 WL 4090447, *6 (TTAB 2011) (for legally identical
services, marketing channels of trade and targeted classes of consumers are the
same), cited in Monster Energy Co. v. Lo, No. 91225050, 2023 WL 417620, *8 (TTAB
2023). And even if the services are not identical but merely related, third-party
Internet evidence illustrates how the services are promoted and offered together
through the same websites to the same or overlapping classes of consumers. Charger
Ventures, 64 F.4th at 1382 (“Because the record shows that companies are known to
offer both … services under the same mark and, often, on the same website, we find
that substantial evidence supports the Board’s finding on these factors.”); In re
Toshiba Med. Sys. Corp., No. 79046106, 2009 WL 1896059, *7 (TTAB 2009) (website

Serial Nos. 98287623 (parent) and 98287679
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evidence shows same or overlapping channels of trade and classes of customers).
The second and third DuPont factors weigh in favor of a likelihood of confusion.
B. Comparison of the Marks and Strength of the Cited Mark
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 476 F.2d at
1361. “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 WL 2734893,
*5 (TTAB 2018) (citing In re Davia, No. 85497617, 2014 WL 2531200, *2 (TTAB
2014)), aff’d, 777 F. App’x 516 (Fed. Cir. 2019). “[T]he ‘similarity or dissimilarity of
the marks in their entireties’ is a predominant inquiry.” Heil Co. v. Tripleye GmbH,
No. 91277359, 2024 WL 4925901, *29 (TTAB 2024) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002)).
Another consideration that comes into play in this case is the sixth DuPont factor,
“the number and nature of similar marks in use on similar goods [or services].” 476
F.2d at 1361.
We compare Registrant’s mark, PRESERVATION AGING, with the applied-for
marks, PRESERVATION FACELIFT (with “FACELIFT” disclaimed) and
PRESERVATION FACIAL REJUVENATION (with “FACIAL REJUVENATION”
disclaimed), under the first DuPont factor, and also consider the strength of the cited
mark under the sixth DuPont factor.
The Examining Attorney, focusing on the first DuPont factor, posits that the
threemarks “all share the identical dominant first term ‘PRESERVATION’,” followed

Serial Nos. 98287623 (parent) and 98287679
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by descriptive and disclaimed terms.20 “Greater weight is often given to this dominant
feature [‘PRESERVATION’] when determining whether marks are confusingly
similar,” the Examining Attorney contends, such that “services sold under these
confusingly similar marks would be attributed to the same source.”21
Applicant, focusing on the sixth DuPont factor, counters that the marks’ sole
shared term, PRESERVATION, is weak, conceptually and commercially, such that
its use by both parties is unlikely to give rise to consumer confusion.22
We address Applicant’s argument first, before we compare the marks in their
entireties. “The sixth DuPont factor is a measure of the extent to which other marks
weaken the cited registered mark.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362
(Fed. Cir. 2023) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005)). There are two prongs of
analysis for a mark’s strength: conceptual and commercial. Id. (citing In re
Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010)). Conceptual
strength is a measure of a mark’s distinctiveness, and commercial strength is a
measure of the mark’s marketplace recognition. Spireon, 71 F.4th at 1362-63.
Although the Examining Attorney is not expected to adduce evidence of the strength
or fame of the cited registered mark, In re Mr. Recipe, LLC, No. 86040643, 2016 WL
1380730, *2 (TTAB 2016), an applicant may adduce evidence of “[t]he number and
nature of similar marks in use on similar goods [or services]” to show that the cited
20 Examining Attorney’s brief, 10 TTABVUE 9, 11.
21 Examining Attorney’s brief, 10 TTABVUE 9, 12.
22 Applicant’s main brief, 8 TTABVUE 3 et seq.

Serial Nos. 98287623 (parent) and 98287679
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mark is comparatively weak, conceptually or commercially, and has a “comparatively
narrower range of protection.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 1338 (Fed. Cir. 2015).
Applicant argues that “PRESERVATION” is conceptually weak because it is
suggestive in the context of healthcare services: “In Applicant’s cosmetic surgery
field, practitioners can aesthetically enhance appearances associated with the normal
aging processes, but that is not tantamount to permanent ‘preservation.’ Rather, in
this context, ‘preservation’ merely suggests restoration to an extent of a more
youthful appearance.”23 In that sense, then, “[t]he use of the word, PRESERVATION,
as a component of a mark for healthcare services is an inherently weak mark; it is
totally suggestive.”24
Applicant also argues that Registrant’s mark is commercially weak:
Considering the inherent suggestiveness of PRESERVATION, it is not at
all surprising there are a multitude of PRESERVATION-formative marks.
As such this further weakens the scope of the PRESERVATION component
of each of the multiplicity of PRESERVATION-formative marks.
Specifically, numerous disparately owned registrations for other
PRESERVATION-formative marks coexist in connection with assorted
medical services including:
23 Applicant’s reply brief, 11 TTABVUE 4.
24 Applicant’s main brief, 8 TTABVUE 3.

Serial Nos. 98287623 (parent) and 98287679

Mark Registration Goods and Services
No.

PRESERVATION 6.302.138 044: Surgery: orthopedic surgery services:

FIRST [The original providing information in the field of orthopedic

2(d) citation] surgery, sports traumatology, ligament surgery and
joint reconstruction surgery: providing a website
featuring information about orthopedic surgery,
sports traumatology, ligament surgery and joint
reconstruction surgery: medical services: medical
services in the field of sports medicine; medical
services in the field of surgery: medical services in
the field of minimally invasive surgery: medical
services in the field of orthopedic surgery, sports
traumatology, ligament surgery and joint
reconstruction surgery: medical consultation

YOUTH 5.972.478 044: medical services

PRESERVATION

INSTITUTE

JOINT 4,938,584 042: medical and scientific research information in

PRESERVATION the field of orthopedics: medical research

INSTITUTE
044: medical services

HOUSE OF 5.899.197 044: medical spa services in the nature of

PRESERVATION minimally and non-invasive cosmetic treatments,

namely, facials, laser hair removal services, laser
skin resurfacing, cosmetic peels, microneedling
treatment services, cosmetic face care services,
injection of dermal fillers, botulinum toxin, and
platelet-rich plasma to reduce the appearance of
facial fine lines: beauty care services: skin
treatment services, namely, cosmetic skin care
services: hair removal services. namelv. personal

hair removal services: beauty and skin therapy
services, namely, beauty care services and skin
care salon services

- 14-

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25
From this showing of eight third-party registrations (supplemented with the two
cited Registrations) Applicant, citing Juice Generation, infers that “consumers can
distinguish between the multitude of PRESERVATION-formative marks based upon
minute distinctions.”26 For these reasons, Applicant concludes, the cited registered
PRESERVATION-formative marks, including PRESERVATION AGING for
25 Applicant’s main brief, 8 TTABVUE 7-8; Dec. 4, 2024 Response to Office Action/Request
for Reconsideration at 10-52.
26 Applicant’s main brief, 8 TTABVUE 3, 9-10.

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“dermatology services,” are “only afforded a very narrow range of protection.”27
On consideration of Applicant’s arguments, we find that “PRESERVATION,” as
used in the cited mark PRESERVATION AGING, is indeed suggestive of its recited
“dermatology services.” “Preservation” is defined as “the act, process, or result of
preserving something such as … the activity or process of keeping something valued
alive, intact, or free from damage or decay.”28 Dermatology services, like Applicant’s
cosmetic surgery services, “can aesthetically enhance appearances associated with
the normal aging processes, but that is not tantamount to permanent
‘preservation,’”29 Applicant correctly points out. “Rather, in this context,
‘preservation’ merely suggests restoration to an extent of a more youthful
appearance.”30 This dictionary evidence of suggestiveness is corroborated by the
third-party registrations listed above. “[E]vidence of third-party registrations is
relevant to ‘show the sense in which a mark is used in ordinary parlance,’ ...; that is,
some segment that is common to both parties’ marks may have ‘a normally
understood and well-recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak….’” Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374
(Fed. Cir. 2015) (quoting Juice Generation, 794 F.3d. at 1339).
The cited mark, PRESERVATION AGING, is registered on the Principal Register
without a claim of acquired distinctiveness, so it is presumed to be inherently
27 Applicant’s main brief, 8 TTABVUE 11.
28 Merriam-Webster.com, Feb. 15, 2025 Office Action at 10.
29 Applicant’s reply brief, 11 TTABVUE 4.
30 Id.

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distinctive for the services for which it is registered. Trademark Act Section 7(b), 15
U.S.C. § 1057(b); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129,
147 n.7 (Fed. Cir. 2021) (noting the presumption that a registered mark is
distinctive). “Therefore, inasmuch as the cited mark is registered on the Principal
Register, we must assume that it is at least suggestive….” In re Fiesta Palms, No.
76595049, 2007 WL 950952, *3 (TTAB 2007).
Suggestive marks are nonetheless protectable:
The mark is less conceptually strong than an arbitrary mark, but
suggestive marks are inherently distinctive and entitled to protection.
Maytag Co. v. Luskin’s, Inc., [1986 WL 83638, *3] (TTAB 1986) (“there is
nothing in our trademark law which prescribes any different protection for
suggestive, nondescriptive marks than that which is accorded arbitrary
and fanciful marks”); In re Great Lakes Canning, Inc., [1985 WL 71929, *3]
(TTAB 1985) (“the fact that a mark may be somewhat suggestive does not
mean that it is a ‘weak’ mark entitled to a limited scope of protection”).
Sage Therapeutics, Inc. v. Sageforth Psychological Svcs., LLC, No. 91270181, 2024
WL 1638376, *13 (TTAB 2024).
Applicant does not, however, show that “PRESERVATION” is commercially weak,
as the “existence of [third-party] registrations is not evidence of what happens in the
market place or that customers are familiar with them....” AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 1406 (CCPA 1973), cited in In re Morinaga Nyugyo K.K.,
No. 86338392, 2016 WL 5219811, *8 (TTAB 2016) (“But Applicant’s citation of third-
party registrations as evidence of market weakness is unavailing because third-party
registrations standing alone, are not evidence that the registered marks are in use
on a commercial scale, let alone that consumers have become so accustomed to seeing
them in the marketplace that they have learned to distinguish among them by minor
differences.”)

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Thus, unlike Juice Generation and Jack Wolfskin, where the evidence
demonstrated “ubiquitous” and “considerable” use of third-party marks for the same
or similar goods or services, see In re i.am.symbolic, llc, 866 F.3d 1315, 1328 (Fed. Cir.
2017), Applicant fails to prove third-party use so extensive that the relevant public would
be conditioned to distinguish the marks based of minute differences.
Applicant may show disparate third-party registrations using “PRESERVATION”
in the field of healthcare services, but none of those are as similar as Applicant’s and
Registrant’s skin care services. The Registration, it will be remembered, is for
“dermatology services,” which, as found above, is legally identical to Applicant’s
“cosmetic skin care services,” among other services recited in the Applications.
“Because the involved … services are legally identical, the degree of similarity
between the marks necessary to support a determination that confusion is likely
declines.” Monster Energy v. Lo, 2023 WL 417620, at *14 (internal citation and
punctuation omitted).
The involved marks convey similar connotations and commercial impressions
under the first DuPont factor. Registrant’s PRESERVATION AGING on the one hand
and Applicant’s PRESERVATION FACELIFT and PRESERVATION FACIAL
REJUVENATION on the other suggest their symbiosis. All begin with the prominent,
dominant term PRESERVATION, the first term a prospective patient would
encounter. See Naterra v. Bensalem, 92 F.4th at 1119 (approving finding that the
marks “lead words are their dominant portion and are likely to make the greatest
impression on consumers.”). All contain a subordinate suffix—Registrant’s AGING
suggesting the cause of the patient’s presenting condition, and Applicant’s disclaimed

Serial Nos. 98287623 (parent) and 98287679
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FACELIFT and FACIAL REJUVENATION suggesting the treatment of the patient’s
condition. See In re Detroit Athl., 903 F.3d at 1305 (“the non-source identifying nature
of the words … and the disclaimers thereof constitute rational reasons for giving
those terms less weight in the analysis.”). The respective marks thus convey the
opposite sides of the same coin: offering a preservative “FACELIFT” and “FACIAL
REJUVENATION” to counter the effects of “AGING.” A “facelift” is defined as “plastic
surgery on the face and neck to remove or reduce signs of aging (such as wrinkles or
sagging skin).” 31 And “rejuvenation” is the opposite of “aging.” Cf. Downtowner Corp.
v. Uptowner Inns, 1973 WL 19926, *6 (TTAB 1973) (UPTOWNER and
DOWNTOWNER, each for motels and restaurant services, were confusingly similar
because “up and down are associative terms in that one word creates the image or
idea of the other.”).
For these reasons, overall the marks’ carry similar, related connotations and
commercial impressions. Even “careful purchasers who do notice the difference in the
marks will not necessarily conclude that there are different sources for the [services],
but will see the marks as variations of each other, pointing to a single source.” In re
Hitachi High-Tech. Corp., No. 79110412, 2014 WL 879500, *6 (TTAB 2014). See also
In re Toshiba Med. Sys., 2009 WL 1896059, at *5 (VANTAGE TITAN “more likely to
be considered another product from the previously anonymous source of TITAN
medical diagnostic apparatus, namely, medical ultrasound devices”).
31 Merriam-Webster.com, Feb. 15, 2025 Office Action at 17, 21.

Serial Nos. 98287623 (parent) and 98287679
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For these reasons, we find that the cited registered mark is suggestive, but that
the sixth DuPont factor is otherwise neutral. The first DuPont factor weighs in favor
of finding a likelihood of confusion.
II. Conclusion
The final step in analyzing likelihood of confusion is to assess our findings under
the DuPont factors discussed above and determine whether, on balance, confusion is
likely. See Charger Ventures LLC, 65 F.4th at 1379. Where not all of the relevant
factors point in the same direction, we must explain “the weight [we] assigned to the
relevant factors” as well as “the results of that weighing.” Id. (citation omitted).
On careful consideration of the briefs, the record, and the applicable law, we find
that the respective marks are similar in sight, connotation and commercial
impression; that the services are legally identical in part and otherwise overlapping
and related; that those services would travel through the same channels of trade to
the same classes of consumer patients, those seeking skin care; that the patients’
exercise of heightened care in selecting a caregiver would not allay or avert a
likelihood of confusion, given the similarity in the marks and the services, and that
Registrant’s registered PRESERVATION AGING mark, though suggestive, and
therefore somewhat conceptually weak, has not been shown to be commercially weak,
and is entitled to protection against registration of Applicant’s PRESERVATION
FACELIFT and PRESERVATION FACIAL REJUVENATION marks under Section
2(d).
Decision: The refusal to register Applicant’s marks is affirmed.