Tuesday, February 14, 2006

"GENTLE LIPS" and "GENTLE GEL" Confusingly Similar for Lip Balm, Says TTAB, Unconvincingly

In a decision as irritating as a chapped lip, the Board affirmed a Section 2(d) refusal to register the mark GENTLE LIPS for "non-medicated lip balm" ("LIPS" disclaimed), finding the mark likely to cause confusion with the registered mark GENTLE GEL for "non-medicated lip and gum gel" ("GEL" disclaimed). In re Oralabs, Inc., Serial No. 76569020 (January 31, 2006) [not citable].

Applicant Oralabs got nowhere with its argument that the involved goods are dissimilar. It first pointed to Registrant's website, which indicates that Registrant's product is "a gel used by dentists to desensitize the affected area of a patient's mouth after dental surgery." Thus, Oralabs asserted, Registrant's gel "in fact, has nothing to do with lips." Oralabs the pointed to Registrant's original identification of goods, which read: "non-medicated gel for use by dental professionals in combination with a dental electro-surgical product." Moreover, Oralabs asserted that, unlike its product, Registrant's gel would not be sold to the public in retail stores and would not be an impulse purchase.

The Board once again noted that its likelihood of confusion determination must be made in light of the goods as identified in the involved application and registration, regardless of the actual nature of the goods or their channels of trade. Thus Oralabs' attempt to introduce such limitations was pointless.

The Board then found the involved products to be "very closely related, if not virtually identical": both are lip care products with soothing and healing properties. Internet and third-party registration evidence confirmed that lip balm and lip gel are products that may emanate from the same source.

Turning to the marks, Oralabs contended that they differ in appearance, sound, and connotation (i.e., the applied-for mark suggests that "gentle lips" may be achieved by use of Applicant's product, whereas the cited mark suggest that the product itself is gentle). The Board, however, found the opposite.

"The shared term, GENTLE, is visually and aurally the most significant portion of both marks. It is the first word in each mark and, moreover, it is the only nondescriptive portion of the marks. *** The identical first word GENTLE is followed in both marks by short, one-syllable words, LIPS and GEL, having only one letter difference in length. As a result, the two marks as a whole have a visually similar structure and a similar sound and cadence."

Noting that marks are not to be compared side-by-side and that the recall of purchasers is "often hazy and imperfect," the Board concluded that "it is the overall 'gentleness' concept and impression that purchasers are likely to remember when seeing these marks at separate times on virtually identical goods, not the slight difference in meaning."

Lip service?

Finally, Oralabs submitted Internet and third-party registration evidence in arguing that the term GENTLE is a weak formative in the cosmetics field and is used by "many others" to describe their products. The Board agreed that GENTLE is suggestive of Registrant's lip gel, but it found the evidence insufficient to show that the public would be so familiar with marks containing the word GENTLE as to "rely on other portions of the marks to distinguish them."

The Board therefore affirmed the Section 2(d) refusal.

TTABlog comment: The Board's comparison of the marks was less than convincing. Who cares if the second word in both marks is a short, one-syllable word? Aren't the overall appearance and sound more important? GENTLE LIPS and GENTLE GEL don't look or sound similar to me. And isn't the word GENTLE highly suggestive, not just suggestive, and therefore a very weak formative? Frankly, I don't think consumers are as dumb as the TTAB makes them out to be.

In any event, an Applicant in Oralabs' position might that a look at Section 18 of the Trademark Act, which permits partial cancellation of a registration if the identification of goods is overly broad. See, for example, the TTABlog discussion of the Gospel Music Association case (here).

Text and Lip photo Copyright John L. Welch 2006.


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