TTABlog Test: Is "LIP TAR" Confusable with "THE LIP BAR" for Lip Gloss?

The parties to this opposition proceeding filed cross-motions for summary judgment but stipulated that the Board could decide the case on the merits based solely on the summary judgment papers, including resolution of any genuine disputes of material facts. The Board treated these stipulations as an agreement to go forward under the Accelerated Case Resolution (ACR) procedure. Applicant Metro1 sought registration of the mark LIP TAR for "lip gloss" [LIP disclaimed]]. Opposer claimed likelihood of confusion with its registered mark THE LIP BAR for, inter alia, lip gloss [LIP disclaimed]. How do you think this came out? The Lip Bar, Inc. v. Metro1 Solutions, LLC, Opposition No. 91289231 (August 22, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Since the goods overlap, they presumably travel in the same channels of trade to the same classes of consumers. Actually, Metro1 so stipulated. It also stipulated that the relevant consumers would exercise only ordinary care in their purchasing decisions.

The Board found opposer’s mark to be "inherently distinctive–at least suggestive–because it is registered on the Principal Register," although its strength is "somewhat limited by its disclaimer of LIP which is descriptive or generic for cosmetics for the lips such as lip gloss or lipstick." As to commercial strength, opposer's evidence and testimony was unimpressive. And so, the Board concluded that opposer's mark "is entitled to a normal scope of protection of an inherently distinctive mark.

Turning to the key issue, the similarity of the marks, the Board found that TAR and BAR are the dominant elements of the marks. Metro1 conceded that the marks are "somewhat similar" in appearance and sound. The Board went a step further:

The marks are similar visually, with both marks containing the term LIP, with the dominant portion of each mark differing by one letter, BAR/TAR. The marks also sound similar because although Opposer’s mark includes THE, both marks contain the descriptive if not generic term LIP followed by a three-letter word with a similar “AR” construction–BAR/TAR.

Metro1 argued that the differences in connotation and commercial impression avoid confusion: i.e., Opposer’s mark connotes that it is sold in bar form or is manufactured or sold by a retail store called “The Lip Bar,” whereas the word “tar’ in its mark "suggests to consumers that its lip gloss is a viscous and durable substance that fully covers and sticks to one’s lips." The Board agreed that the marks have somewhat different connotations.

Nonetheless, we find that when considered in their entireties, the similarities in sound and appearance outweigh the differences in meaning resulting from the words BAR/TAR, or the addition of THE in Opposer’s mark, particularly because “the average customer ... retains a general rather than specific impression of marks.”

And so, the Board found that the first DuPont factor favored Opposer.

Finally, Metro1 pointed out that Opposer’s mark previously co-existed with a LIP TAR mark on the trademark register and that Opposer was not harmed by its co-existence. Although acknowledging that expired registrations have no probative value and that the Board is not bound by prior examining attorney decisions, Metro1 contended that consistency and predictability in examination should be considered. In short, if the marks co-existed in the past, they should be able to co-exist now. The Board was not impressed: "The fact that Opposer’s THE LIP BAR mark co-existed on the trademark register with another LIP TAR mark does not prove that they coexisted during that time without confusion in the marketplace."

And so, the Board sustained the opposition.

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TTABlogger comment: FWIW, I think the Board got this wrong.

Text Copyright John L. Welch 2024.