Test Your TTAB Judge-Ability: Are These Two Marks Confusingly Similar?
Okay, all you judicial wannabes out there. How would you decide this one? Applicant sought to register the mark ICE AGE FULL LIP SERVICE LIP PLUMPER for "non-medicated lip preparations" [LIP PLUMPER disclaimed]. Registration was refused under Section 2(d) in view of the registered mark LIP SERVICE for "non-medicated lip balms" [LIP disclaimed]. It's your call. In re Flageoli, Ltd., Serial No. 78969164 (June 4, 2010) [not precedential].
The goods: The Board found that Registrant's goods are encompassed by Applicant's identification of goods. Applicant argued that its mark "will be used to identify a 'lip plumper' used to make lips appear larger and more attractive while the cited registration is for lip balms used to relieve the discomfort of chapped lips." [I thought a "lip plumper" was something that Ralph Kramden threatened to give Alice on the "Honeymooners." - ed.]
The Board pointed out, however, that the Section 2(d) issue must be decided on the basis of the goods set forth in the subject application and registration, and not on what the goods actually are in the real world.
The marks: Based on definitions of "lip" and "service," the Board found that "lip service" means "to aid or restore lips." According to the Board, this "is further corroborated by the applicant's addition of the word 'Full' before 'Lip Service' creating the term 'Full Lip Service" further emphasizing the highly suggestive, if not descriptive, nature of the term 'Lip Service' as used by applicant." [Huh? - ed.]
Therefore, the term "Ice Age" is the dominant portion of Applicant's mark, and its appearance as the first part of the mark reinforces that dominance.
Although "Lip Service" is a suggestive term that "limits the scope of exclusivity afforded the registered mark," the appearance of the identical term in the applied-for mark cannot be ignored. However, comparing the marks in their entireties, "the addition of the term 'Ice Age' to applicant's mark serves to distinguish the marks because consumers are likely to regard “Lip Service” as used in applicant’s mark as indicating the function of applicant’s lip preparation, and to look to the other elements in the mark to indicate the source of applicant’s product.
As the CCPA stated in Sure-Fit Products Company v. Saltzson, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility for confusion that exists in the latter case.
Concluding that the dissimilarities between the marks outweigh the other relevant du Pont factors, the Board reversed the refusal.
TTABlog comment: A tip of the TTABlog fedora to Applicant's attorney and loyal reader Daphne Sheridan Bass.
Text Copyright John L. Welch 2010.