Prestige Cosmetics

Trademark Trial and Appeal BoardJun 10, 2009

No. 76691045 (T.T.A.B. Jun. 10, 2009)

Mailed: June 10, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Prestige Cosmetics ________ Serial No. 76691045 _______ Myron Amer of Myron Amer, P.C., for Prestige Cosmetics. Hanno Rittner, Trademark Examining Attorney, Law Office 117 (Loretta C. Beck, Managing Attorney). _______ Before Zervas, Kuhlke, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Prestige Cosmetics, applicant herein, filed an application on the Principal Register to register LOVE & KISSES LIPCOLOR, in standard character format, for goods ultimately identified as “cosmetics, namely, lipstick, lip gloss and lip pencil, and not including hand cream,” in International Class 3.1 1 Application Serial No. 76691045, filed July 7, 2008, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), claiming a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76691045 2 The trademark examining attorney issued a requirement for applicant to disclaim the term “LIPCOLOR.” Trademark Act Section 6, 15 U.S.C. §1056. The examining attorney also issued a refusal to register under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark LOVE & KISSES, as shown below, for “hand cream,” in International Class 3,2 that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: When the requirement and the refusal were made final, applicant appealed. Both applicant and the examining attorney filed briefs. Upon careful consideration of the evidence of record and the arguments of counsel, we affirm the requirement for a disclaimer as well as the refusal to register under Section 2(d) of the Trademark Act. 2 Registration No. 0805324, issued March 8, 1966, claiming first use and first use in commerce on March 11, 1965; Sections 8 and 15 affidavits accepted and acknowledged. Renewed. Serial No. 76691045 3 1. Requirement for a Disclaimer We begin with an analysis of the first ground for refusal. A term must be disclaimed from a mark if it is deemed to be merely descriptive of the subject goods or services. The Office may require a disclaimer of words individually or together if they “form a grammatically or otherwise unitary whole with a single descriptive significance.” Trademark Manual of Examination Procedure §1213.08(b) (5th ed. 2007) (TMEP); See in re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006). A term is deemed to be merely descriptive within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Serial No. 76691045 4 Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Serial No. 76691045 5 The word “lipcolor” is a compound word comprising the words “lip” and “color.” To assist in our analysis, we take judicial notice of the dictionary definitions of “lip,” “color,” and “lipstick,” as set forth in relevant part below (American Heritage Dictionary of the English Language (4th ed. 2000)):3 “Lip”: noun 1. Anatomy Either of two fleshy folds that surround the opening of the mouth. Verb 1a. To touch the lips to; b. To kiss. “Color”: noun 1a. The appearance of objects or light sources described in terms of the individual’s brightness, and saturation for light sources. 3.a. The general appearance of the skin; complexion. verb 1. To impart color or to change the color of. “Lipstick”: noun A small stick of waxy lip coloring enclosed in a cylindrical case. The definition of “lipstick,” one of applicant’s identified goods, actually includes the term “lip color[ing].” This evidences the descriptive (if not generic) nature of that term vis-à-vis applicant’s identified “lipstick.” As further evidence on that point, the examining attorney submitted third-party registrations that use the words “lip color” as part of an identification of goods. In particular, Registration No. 3428631 (SKIN FRUIT) identifies “lip color” as a genre of goods which 3 The Board may take judicial notice of dictionary definitions not included in the record. The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. 213 USPQ 594, 596 (TTAB Serial No. 76691045 6 includes “lipstick” (listing “lipcolor in the nature of lipstick and lip liner”), while Registration No. 2999274 identifies “lip colour” as a subset of “cosmetic preparations.” The examining attorney also submitted printouts of third-party websites, showing various well- known cosmetic companies referring to “lipcolor” as part of their product descriptions of lipstick. Some examples include the following: Maybelline® advertises “Lipcolor: Break out of your routine with our palette of fresh, luscious lipcolors” for its product called “Moisture Extreme Lipcolor,” alongside a picture of lipstick, on www.mabelline.com. Covergirl® advertises “Outlast all-day lipcolor” alongside a picture of lipstick, on www.covergirl.com. Lancome® advertises “lipcolor” as a feature of its “lipstick”, touting “COLOR DESIGN: Sensational Effects Lipcolor” alongside a picture of lipstick, on www.lancome-usa.com/makeup/lipcolor. Loreal Paris® advertises “HiP high intensity pigments™ Intensely Moisturizing Lipcolor” alongside a picture of lipstick, on www.lorealparisusa.com. The identifications in the third-party registrations and the product descriptions on the websites serve the same purpose as the dictionary definitions. That is, they show the relevant public’s understanding that the term or compound word “lipcolor” refers to lipstick. Applicant has 1982) aff’d, 703 F.3d 1372, 217 USPQ 505 (Fed. Cir. 1983); and In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006). Serial No. 76691045 7 objected to the disclaimer requirement as “prolix.” Specifically, applicant’s brief states: “The ‘computerized printing format for the Office’s Trademark Official Gazette’ is obviously prolix and is objected to.” (Appl’s brief at unnumbered 3 of 5). Although the nature of applicant’s objection is not clear, what is clear is that applicant has understood the disclaimer requirement and fully briefed its argument against it. Accordingly, the objection is overruled. Applicant has further argued that the disclaimer requirement should be reversed since 1) it is not in applicant’s own identification of goods; and 2) it is not on the list of words disclaimed for various cosmetics on the list of registrations cited by applicant. Applicant’s arguments are unavailing. It is clear that the relevant public would perceive “lipcolor” as merely describing a characteristic, function, or purpose of applicant’s “lipstick, lip gloss and lip pencil, and not including hand cream.” See In re Abcor, 200 USPQ at 217. The disclaimer requirement is affirmed. 2. Refusal to register under Section 2(d) We turn next to the refusal to register under Section 2(d) of the Trademark Act. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. Serial No. 76691045 8 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 or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The mark in the cited registration consists solely of the phrase LOVE & KISSES in stylized form. Applicant’s mark consists of the same three words, presented in the same sequence, followed by the term LIPCOLOR, which we have deemed to be merely descriptive. Because it is presented first, we consider the phrase LOVE & KISSES to be the Serial No. 76691045 9 dominant portion of applicant’s mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”) Frequently, as is likely here, the first word (or, as in this case, the first three-word phrase) of a mark is deemed to be the dominant portion. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE” and “JOSE GASPAR GOLD”); Lilly Pulitzer, Inc. v. Lilly Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967)(“THE LILLY” and “LILLI ANN”); In re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985)(“CAREER IMAGE” AND “CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985)(“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). Furthermore, disclaimed or descriptive matter, such as the term LIPCOLOR in applicant’s mark, is often “less significant in creating the mark’s commercial impression.” In re Code Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) Serial No. 76691045 10 (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion’”). With respect to the stylization of the mark in the cited registration, since there is no design in the mark other than the words themselves, there is no question that the words are the dominant portion of the mark. Furthermore, since applicant’s mark is in standard character format, an “argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party.” Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Therefore, applicant’s mark can be displayed in the same stylization as the mark in the cited registration. Accordingly, the only overt difference between the marks visually or phonetically is the addition in applicant’s mark of the term LIPCOLOR, which merely describes the goods identified in the application. As such, the commercial impression of the marks is similar. Serial No. 76691045 11 In view of the foregoing, we find that the first du Pont factor weighs in favor of finding a likelihood of confusion. The Goods, Classes of Consumers and Channels of Trade In determining the similarity or dissimilarity of the goods, we note that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be 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). We begin by observing that the identification of goods in the cited registration is limited to “hand cream” whereas applicant has included a negative limitation in the application, which specifies “not including hand cream.” Unfortunately, this does not, by itself, obviate a likelihood of confusion. This is so because, as the examining attorney pointed out, applicant’s identification Serial No. 76691045 12 of goods -- i.e., “lipstick, lip gloss, and lip pencil” – is understood to not include hand cream. Thus, we proceed with our analysis regarding the similarity or dissimilarity of the goods. In order to demonstrate the similarity of the goods identified in the application to those in the cited registration, the examining attorney submitted dozens of use-based, third-party registrations that identify both “hand cream” as identified by the cited registration, and either “lipstick,” “lip gloss, or “lip pencil,” as identified by the application. These include several registrations from very well-known companies, such as Registration No. 1226396 for CALVIN KLEIN; Registration No. 1545983 for MARY KAY; Registration No. 3405857 for FREDERICK’S OF HOLLYWOOD; Registration No. 3134240 for AMERICAN GIRL; and Registration No. 3416287 for HIGH SCHOOL MUSICAL. Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). In its reply brief, applicant pointed out that some of the submitted registrations only contained “lip balm,” rather than lipstick, lip gloss, or lip pencil. Applicant’s point is well taken, as are the other minor Serial No. 76691045 13 oversights applicant points out in its reply brief. However, there are still dozens of use-based, third-party registrations of record that show the strong relatedness of “hand cream” to applicant’s identified goods, even considering the negative limitation in the application. Indeed, applicant identifies its goods as “cosmetics,” which is defined in The Cambridge Advanced Learner’s Dictionary (2009) as “substances that you put on your face or body which are intended to improve its appearance.” We note that this definition clearly includes registrant’s goods as well as applicant’s. Accordingly, we find the goods to be related. In the absence of specific limitations in the registration, we must presume that registrant’s goods will travel in all normal and usual channels of trade and methods of distribution. Squirtco v. Tomy Corporation, supra, 216 USPQ at 939. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or classes of purchasers in either the application or the cited registration, it is presumed that the services in the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of purchasers for the listed services). Since there are no Serial No. 76691045 14 limitations on the channels of trade in applicant’s identification of goods either, we must make the same presumption with regard to applicant’s goods. In other words, there is nothing that prevents the registrant’s hand cream from being sold in the same channels of trade and to the same classes of consumers that purchase applicant’s lipstick, lip gloss, and lip pencil (and vice versa). Accordingly, we find that these du Pont factors weigh in favor of finding a likelihood of consumer confusion. Balancing the Factors In view of our findings that the marks are similar, the goods are similar, and the goods move in some of the same channels of trade, we find that applicant’s mark is likely to cause confusion with the mark in the cited registration. Decision: We affirm the requirement to disclaim “LIPCOLOR,” as well as the refusal to register in absence of a disclaimer. We also affirm the refusal to register under Section 2(d) of the Trademark Act.