Wednesday, February 19, 2014

WYHA? "ELISA B." Confusable With "LISA B." for Clothing, Says TTAB

The Board affirmed a Section 2(d) refusal to register ELISA B. for various clothing items, including sweaters and dresses, in view of the registered mark LISA B. for various clothing items, including sweaters and dresses. In its brief, Applicant Lipstik argued that, when considered as a whole, the marks are not aurally or visually similar. The Board disagreed. In re Lipstik, Inc., Serial No. 85663715 (January 22, 2014) [not precedential].

As to the overlapping goods in the application and cited registration, the Board presumed that they travel through the same channels of trade to the same classes of consumers. Of course, it is sufficient for Section 2(d) purposes that confusion is likely even as to one item in the application or registration. Therefore the second and third duPont factors favored a finding of likely confusion.

As to the marks, the Board agreed with Examining Attorney Dominick J. Salemi that the proper test is not a side-by-side comparison of the marks, but whether the average consumer, encountering the marks separately and retaining a general rather than a specific recollection of the marks, "would be likely to assume a connection between the parties." Of course, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Here, the Board noted, applicant's mark incorporates the cited mark and simply adds the letter "E." That initial letter slightly distinguishes applicant's mark visually and aurally from the cited mark, but the Board found that distinction to be "minimal." "Considering the marks in their entireties, we find the marks are very similar in sight, sound, connotation, and overall commercial impression."

Weighing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, would you have appealed?

Text Copyright John L. Welch 2014.


At 8:43 AM, Blogger Frank said...

The Board got this one wrong. Consumers can tell ELISA from LISA just as they can tell TBS from CBS.

At 9:31 AM, Anonymous Anonymous said...

John, maybe you need a new WYHA catagory for 'Would You Have (Recommeded) Appling?

At 10:42 AM, Blogger ipWitan said...

I think they rejected it because there is plenty of precedent over rejecting marks that add an "e" in front on the mark. However, the "e" for e-commerce doesn't exactly fit here, though. I think the examiner couldn't help themselves and not reject based on habit.


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