L. C. Licensing, Inc.

Trademark Trial and Appeal Board

Nov 23, 1998

No. 75132969 (T.T.A.B. Nov. 23, 1998)

Paper No. 10
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 23, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re L.C. Licensing, Inc.
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Serial No. 75/132,969
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David B. Kirschstein of Kirschstein, Ottinger, Isreal &
Schiffmiller, P.C. for applicant.
Ann E. Sappenfield, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hohein and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
L. C. Licensing, Inc. has filed an application to
register the mark LIZSPORT for “perfume; cologne; body
creams; body lotions; talcum powder; skin soap; toilet
soap; bath gel; shower gel; and non-medicated bath salts.”1

1 Ser. No. 75/132,969, filed July 11, 1996, based on a bona fide
intent to use. Ownership is claimed of the following
registrations:
No. 1,371,423 for the mark LIZ SPORT for “pants,
Ser No. 75/132,969
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Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground of likelihood of confusion with the registered mark
LIZ, in the stylized format reproduced below, for
“perfumes; toilet waters; and beauty and toilet
preparations, namely, makeup foundation, skin basis makeup,
lipstick, eyelash mascara, blush, eyebrow pencils, skin
oils, skin creams, skin milk, toilet soaps, nail varnish
and polish, hair lotions, skin cleaning lotions.”2

skirts, culottes, one-piece suits, blouses, sweaters, T-
shirts and jackets”, issued Nov. 19, 1985;
No. 1,463,606 for the mark LIZSPORT and Design for
“pants, skirts, culottes, jumpsuits, blouses, sweaters,
T-shirts and jackets”, issued Nov. 3, 1987;
No. 1,534,435 for the mark LIZSPORT for “shorts, dresses
and hats,” issued Apr. 11, 1989;
No. 1,736,582 for the mark LIZSPORT for “handbags”, issued
Dec. 1, 1992;
No. 1,751,840 for the mark LIZSPORT for “eyewear, namely,
sunglasses", issued Feb. 9, 1993;
No. 1,768,101 for the mark LIZ SPORT for “footwear, namely,
shoes, sneakers, sandals, slippers and boots”, issued
Apr. 27, 1993; and
No. 1,792,715 for the mark LIZSPORT ALL YOU REALLY NEED for
“pants, shirts, culottes, jumpsuits, blouses, sweaters, T-
shirts, jackets and shorts”, issued Sept. 14, 1993.
2 Reg. No. 1,169,797, issued Sept. 22, 1981, claiming first use
dates of May 1970. Section 8 affidavit filed.
Ser No. 75/132,969
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Applicant and the Examining Attorney have filed
briefs,3 but no request was made for an oral hearing.
In any determination of the likelihood of confusion,
we look to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),
with particular attention being given to the factors most
relevant to the case at hand.
Turning first to the similarity or dissimilarity of
the goods involved in the present case, we must agree with
the Examining Attorney that the application and
registration include several identical goods, e.g.,
perfume, body lotion or cream, and toilet soap. If this
were not enough in itself, the Examining Attorney has made
of record copies of several third-party registrations to
demonstrate the close relationship of the remaining goods
of applicant to those of registrant, by showing that each
of the third-party registrants has adopted a single mark
for the various personal care products falling within both
applicant’s and registrant’s recited goods. See In re

3 The Examining Attorney has objected to the evidence which
applicant has first submitted in connection with its brief,
namely, copies of third-party registrations designated as
Exhibits C and D. Inasmuch as this evidence was not made of
record by applicant prior to filing of the appeal, the Board has
given no consideration to Exhibits C and D or the arguments
directed thereto. See Trademark Rule 2.142(d). Similarly, no
consideration has been given to applicant’s unsupported reference
to the allowance of its pending application for a different mark.
Ser No. 75/132,969
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Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In
re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Thus, we readily conclude that the goods of the parties are
in part the same and otherwise closely related, and, in
fact, applicant has made no argument to the contrary.
In view of this similarity between the respective
products, the goods must be deemed to travel in the same
channels of trade, be purchased by the same consumers, and
potentially be viewed in close proximity to each other.
Furthermore, it is well accepted that when the goods are
identical or otherwise closely related, the degree of
similarity in the marks necessary to conclude that there
will be the likelihood of confusion declines. See Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Taking this into consideration, we turn to the
similarity or dissimilarity of the marks used on these
identical, or closely related, fragrance and personal care
products. The Examining Attorney takes the position that
applicant’s mark consists merely of the registered mark LIZ
(stylized) and the highly suggestive term SPORT. Arguing
that “LIZSPORT merely suggests a second, sporty line of LIZ
personal care products”, the Examining Attorney has made of
record several registrations demonstrating adoption by a
Ser No. 75/132,969
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single entity of a mark for a line of fragrances and
personal care products and of the same mark plus the term
“Sport” for a second line of similar products. For
example, the combinations BILL BLASS and BILL BLASS SPORT,
PACO RABANNE and PR SPORT de PACO RABANNE, and CANOE and
CANOE SPORT have each been registered by a single entity
for products of this type. The Examining Attorney has also
made of record excerpts from three articles obtained from
the Nexis database referring to fragrances in the “Sport
line”, and has pointed to evidence submitted by applicant
with respect to the introduction of LIZSPORT as a woman’s
fragrance and CLAIBORNE SPORT as the man’s version in an
article entitled “Claiborne to Try the Sporting Life.”
(Women’s Wear Daily, Mar. 1997).
Applicant, on the other hand, argues that its mark
LIZSPORT cannot be likened to these other “Sport” marks
because its mark is a unitary term. Furthermore, according
to applicant, the present LIZSPORT mark would be recognized
by consumers as an extension of the use by applicant’s
parent, Liz Claiborne, Inc., of the same “extremely well-
known” mark for a line of apparel and accessories,
including sunglasses and handbags. As previously noted,
ownership of registrations for the mark as so used has been
claimed by applicant in the present application. Applicant
Ser No. 75/132,969
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contends that the refusal to register the present LIZSPORT
mark in view of the registered LIZ mark, presented in what
applicant claims to be a “distinctive” script, makes no
sense, if consideration is given to the familiarity of the
trade and the public at large with LIZSPORT products and
with the prior expansion of use of the mark from apparel to
accessories.
We find the evidence made of record by the Examining
Attorney adequately establishes the practice in the
fragrance field of designating a new “Sport” line, one
adapted for use for more casual wear, by adding the word
“Sport” to the prior known mark for the fragrance. Even
applicant itself has done just this by the introduction of
CLAIBORNE SPORT. For applicant to argue that the same
analysis is not relevant to the mark LIZSPORT because it is
a single word, and not LIZ SPORT, is putting form over
substance. Whether unitary or two separate words, the
commercial impression is the same, namely, that this is a
“Sport” line fragrance. Since LIZ has already been
registered for fragrances, consumers would be likely to
assume that this new “Sport” line, that is, LIZSPORT, is
associated with the LIZ fragrances. The script form used
for the registered LIZ mark is not so distinguishing that
presentation of LIZSPORT in a different type style would
Ser No. 75/132,969
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detract from this association by purchasers. Moreover,
applicant has applied for its mark in a typed drawing and
thus is not restricted to any particular style, but rather
could present its mark in a style very similar to
registrant’s. See Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937 (Fed. Cir. 1983); Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).
Applicant, however, insists that the only real
association that would be made by consumers would be
between the LIZSPORT mark as previously used and registered
for apparel and accessories and the new fragrance and body
care products bearing the same mark. The goods in the
registrations, however, are limited to clothing items and
such accessories as sunglasses and handbags. There are no
fragrances, cosmetics, or body care products of any type.
Furthermore, although applicant argues that LIZSPORT
is a “well-known” or even “famous” mark for clothing and
accessories, even if applicant had submitted evidence of
this alleged fame, which it has not, it would be immaterial
here. Applicant cannot rely upon use and registration of
the LIZSPORT mark in connection with different goods,
namely, apparel and accessories, as a defense against the
likelihood of confusion with the previously registered mark
LIZ for fragrances and personal care products, when it is
Ser No. 75/132,969
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seeking to register the LIZSPORT mark for the same goods as
those listed in the cited registration. See Key Chemicals,
Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99
(CCPA 1972). See also In re Sunmarks, Inc., 32 USPQ2d 1470
(TTAB 1994)[each application must be separately examined,
even if applicant owns prior registrations for the
identical mark for goods closely related to those in the
application].
Accordingly, upon considering the marks LIZ (stylized)
and LIZSPORT, when used upon the closely related and
identical goods listed in the application and the cited
registration, we find there is a likelihood of confusion on
the part of the purchasing public as to the source of
applicant’s fragrances and body care products.
Decision: The refusal to register under Section 2(d)
is affirmed.
E. J. Seeherman
G. D. Hohein
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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Ser No. 75/132,969
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