Wednesday, July 26, 2006

TTAB Finds "WEARABLE LIP" and "WEARABLE TREATMENT" for Lipstick Not Confusingly Similar

In large part because the cited Supplemental Registration merited a limited scope of protection, the Board reversed a Section 2(d) refusal of the mark WEARABLE LIP for lipsticks and non-medicated lip balm ["WEARABLE" disclaimed], finding the mark not likely to cause confusion with the registered mark WEARABLE TREATMENT for lipstick, non-medicated lip balm, and other cosmetics ["TREATMENT" disclaimed]. In re Bare Escentuals, Inc., Serial No. 76527476 (July 7, 2006) [not citable].

The Board observed that the goods of the parties are in part identical, are deemed to travel in the same channels of trade, and are purchased by the general public, using only ordinary care. However, "the strength of the cited registration, or rather the lack of strength," played a "significant role" in the likelihood of confusion analysis.

"The registration of WEARABLE TREATMENT on the Supplemental Register, rather than on the Principal Register, indicates that it is a merely descriptive term, and therefore is entitled to a limited scope of protection."

Moreover, "the level of descriptiveness of a cited mark may influence the conclusion that confusion is likely or unlikely." When a Supplemental Registration is involved, "likelihood of confusion has normally been found only where the marks and goods are substantially similar."

Examining Attorney Lesley LaMothe argued that the terms LIP and TREATMENT do not distinguish the marks because those words are either highly suggestive or merely descriptive. Applicant Bare Escentuals noted that Registrant disclaimed "TREATMENT" while it disclaimed "WEARABLE," and therefore its mark is dominated by "LIP" while the cited mark is dominated by "WEARABLE." Thus the marks create different commercial impressions.

The Board disagreed. Although disclaimed matter may be given less weight when marks are compared, "in this case consumers are likely to view the marks as a whole and, despite the disclaimers, give equal weight to the various elements." The Board therefore also disagreed with the PTO that the common word "WEARABLE" causes the marks to be similar in appearance, pronunciation, and connotation.

"When the word WEARABLE is combined with LIP, the word WEARABLE conveys this meaning referring to the color of the lipstick, and the resulting mark WEARABLE LIP suggest that the lipstick will look good on the wearer, or will go with outfits of different colors. On the other hand, when WEARABLE is used in the mark WEARABLE TREATMENT, it conveys the idea that the treatment is something that can be worn, and the mark as a whole describes a product that has a therapeutic effect when worn."

Thus, the Board opined, not only does the word WEARABLE have a different meaning in each mark, but the marks as a whole convey different connotations and commercial impressions.

The Board concluded that the differences in the marks, in light of the limited protection accorded the cited mark, made confusion unlikely.

TTABlog comment: My lips got tired when I read this opinion.

Text Copyright John L. Welch 2006.


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