Lipstik, Inc.

Trademark Trial and Appeal Board

Sep 6, 2006

No. 76623522 (T.T.A.B. Sep. 6, 2006)

Mailed: September 6, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lipstik, Inc.
________

Serial No. 76623522
_______

Michael A. Painter of Isaacman, Kaufman & Painter for Lipstik,
Inc.

S. Michael Gaafar, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Quinn, Hohein and Cataldo, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Lipstik, Inc., by assignment from Goat Wear, Inc., is
the owner of an application to register on the Principal Register
in standard character form the mark "EVERY GIRL WANTS TO WEAR
LIPSTIK" for "beach wear, blouses, coats, coveralls, dresses,
head wear, jackets, jeans, jogging suits, jumpers, leg warmers,
leggings, lingerie, loungewear, neckwear, pants, scarves, shirts,
ski wear, slacks, sleepwear, T-shirts, tank tops, socks, [and]
vests" in International Class 25.1

1 Ser. No. 76623522, filed on December 7, 2004, which alleges a date of
first use anywhere and in commerce of January 2001. Applicant claims
ownership of Reg. No. 2,943,570, issued on April 26, 2005, for the
mark "LIPSTIK GIRLS" and design for the same goods as those set forth
herein.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76623522
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "LIPSTICK," which is registered on the Principal Register in
standard character form for "junior apparel, namely, slacks,
jeans, shorts, skirts, dresses, blouses, knit tops, halters,
swimwear, robes, sweaters, coats, jackets, rainwear, vests,
scarves, belts, socks and hosiery,"2 as to be likely to cause
confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.

2 Reg. No. 2,218,837, issued on January 19, 1999, which sets forth a
date of first use of the mark anywhere of October 1, 1997 and a date
of first use in commerce of December 1, 1997; combined affidavit §§8
and 15.

3 The Examining Attorney, in his brief, "objects to the pending
application (Ser. No. 76/399,500) referenced in the applicant's ...
[brief] because the applicant failed to make such application properly
of record." According to the Examining Attorney, "[r]egistrations and
pending applications may be made of record when accompanied by
legible, soft copies of the registrations [and applications]
themselves or the electronic equivalent thereof," citing Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). Here, the Examining
Attorney asserts, inasmuch as "the applicant has not proffered copies
of the pending application, it is not ... considered part of the
record," citing In re Hungry Pelican, Inc., 219 USPQ 1202, 1204 n.5
(TTAB 1983); In re Delbar Products, Inc., 217 USPQ 859, 861 (TTAB
1981); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The
Examining Attorney also "objects to the pending application (Ser. No.
78/399,500) [sic] referenced in the applicant's ... [brief] on the
additional grounds that the present submission of such document as an
exhibit is untimely," arguing that "[e]xhibits that were not properly
made of record during examination are untimely when submitted with an
appeal, and, absent prior stipulation into the record, generally will
not be considered." We note, however, that in its response to the
initial Office action, applicant in its remarks not only indicated
that it "is the owner of the registered trademark LIPSTIK GIRLS [and
design] which is registered for the purpose of designating the same
goods identified in this application," but stated that, "[i]n
addition, Applicant is the owner of the allowed application Serial No.
76/399,500 to register LIPSTICK [sic] GIRLS [and design] in
Ser. No. 76623522
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.4
Here, due to the broad manner in which applicant's items of
apparel are identified,5 it is plain that its goods are either in
part legally identical to certain of registrant's items of
"junior apparel" (e.g., "blouses," "coats," "dresses," jackets,"
"jeans," "scarves," "socks" and "vests") or are otherwise closely

International Classes 3 and 14." Inasmuch as the Examining Attorney,
in his final refusal issued in response, raised no objection to
applicant's failure to include a copy of such application with its
response, the Examining Attorney's objections are considered waived.
It is nonetheless pointed out that, in any event, applicant's
application Ser. No. 76399500 for the mark "LIPSTIK GIRLS" and design
is evidence only of the filing thereof and is otherwise without any
probative value with respect to the registrability of the subject mark
in this application.

4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
192 USPQ at 29.

5 It is well established that the issue of likelihood of confusion is
determined on the basis of, among other things, the goods as they are
identified in the application and cited registration, without
limitations or restrictions that are not reflected therein. See,
e.g., Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); and Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973).

Ser. No. 76623522
4
related thereto in a commercial sense, and thus the respective
goods would necessarily be sold through the same channels of
trade to the same classes of customers,6 the focus of our inquiry
is accordingly on the similarity or dissimilarity of the
respective marks.
Turning, therefore, to such issue, applicant in its
brief contends that "the position taken by the Examiner totally
fails to consider that Applicant is the owner of the registered
trademark LIPSTIK GIRLS & Design (Registration No. 2,943,570)
which is registered for the purpose of designating the same goods
[as] identified in the subject application." Applicant, in
particular, insists that:
The weakness of the cited reference is
evident from the action taken by the Office
in connection with Appellant's pending
application and its registered trademark. In
the prosecution of the Appellant's
application to registration of LIPSTIK GIRLS
& Design, the Examiner initially refused
registration on the same basis as now
asserted in this application (i.e.,
Registration No. 2,218,837 for the mark
LIPSTICK). Most importantly, in response to
Appellant's position that LIPSTIK GIRLS was
clearly distinguishable from the reference
when the marks were considered in their
entireties, the position of the Examiner was
withdrawn and the mark LIPSTIK GIRLS [&
Design] registered in International Class 25
on April 26, 2005.

6
Applicant, we observe, does not contend otherwise in its brief. In
any event, it is well settled that a refusal under Section 2(d) is
proper if there is a likelihood of confusion involving any of the
goods listed in the application and any of the goods set forth in the
cited registration. See, e.g., Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Shunk
Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA
1963).

Ser. No. 76623522
5
Applicant argues, in view thereof, that because it presently
"owns the registered mark LIPSTIK GIRLS & Design for precisely
the same goods identified by the subject mark" herein, its
"Registration No. 2,943,570 and the prosecution history thereof
constitute probative evidence in this matter to show the scope of
protection to be afforded the mark relied upon by the Examiner is
limited."
Applicant further contends that "[w]hen comparing
marks, the test is overall impression, not a dissection of
individual features," inasmuch as "the marks must be compared in
their entireties" (underlining in original). Applicant therefore
urges that confusion is not likely because (footnotes omitted;
underlining in original):
The words "EVERY GIRL WANTS TO WEAR" are
an integral part of Applicant's composite
mark. The Examiner has ignored the most
important fact: the subject mark
incorporates Applicant's registered mark
LIPSTIK GIRLS, not the mark comprising the
reference. A mark must still be regarded as
a whole in evaluating similarity to other
marks. [In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985).]
The refusal to register the subject mark
fails to consider the commercial impression
of all portions of Applicant's composite
mark. There is no general rule as to which
feature of a mark will dominate. However,
the Federal Circuit has established a
principle which is applicable in this case:

"No element of a mark is ignored
simply because it is less dominant,
or would not have trademark
significance if used alone."
(Emphasis added[.])

[In re Electrolyte Laboratories Inc., 913
F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir.
1990).] Where non-common portions of marks
are sufficient to distinguish the marks as a
Ser. No. 76623522
6
whole, the inclusion of a common element may
be insufficient to predicate a holding of
confusing similarity. [Red Carpet Corp. v.
Johnston American Enterprises Inc., 7 USPQ2d
1404, 1406 (TTAB 1988).]

We agree with the Examining Attorney, however, that
confusion is likely. As a preliminary matter, we note that
"[w]hen marks would appear on virtually identical goods ..., the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines," Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994), and
that, as correctly pointed out by the Examining Attorney in his
brief, the same is likewise true with respect to closely related
goods. See In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987); and ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980). Moreover, we
observe that the word "LIPSTICK," which constitutes registrant's
mark, and the phonetic equivalent thereof, namely, "LIPSTIK,"
which forms a significant portion of applicant's "EVERY GIRL
WANTS TO WEAR LIPSTIK" mark, are arbitrary or fanciful terms when
used in connection with items of wearing apparel and thus, unlike
suggestive designations, are strong indicators of product source.
As the Examining Attorney persuasively contends in his
brief, "[a]lthough the applicant's mark employs a non-traditional
spelling of the term 'lipstick,' the difference between the terms
'lipstick' and lipstik' is minor, and the pronunciation of the
term remains unchanged." In fact, to us, the difference in such
terms is barely perceptible, even on the basis of a side-by-side
Ser. No. 76623522
7
comparison of the marks at issue,7 and the ordinary consumer
would find it difficult to distinguish such terms.8 Furthermore,
we concur with the Examining Attorney's additional contention
that:
[T]he structure of the applied-for mark
in relation to the registered mark provides a
commercial impression such that consumers are
likely to believe that identical goods
offered in connection with the marks at issue
emanated from a common source. When viewing
or hearing the applied-for mark, consumers
are likely to interpret it to mean, "every
girl wants to wear LIPSTICK [brand
clothing]," rather than denoting a separate
and unique source of goods.

Noting, with respect thereto, that "[a]s evidence of
the confusing nature of the applied-for mark, the Examining
Attorney [has] previously attached evidence gathered from
internet [sic] research that indicated use of the phrase
'everybody [or a gender specific variation thereof] wants to
wear' prior to a specific brand name or retailer specific item or
brand of clothing, such as Armani or Jordan," the Examining

7 A side-by-side comparison of the respective marks, of course, is not
the proper test to be used in determining the issue of likelihood of
confusion inasmuch as it is not the ordinary way that customers will
be exposed to the marks. Instead, it is the similarity of the general
overall commercial impression engendered by the marks which must
determine, due to the fallibility of memory and the concomitant lack
of perfect recall, whether confusion as to source or sponsorship is
likely. The proper emphasis is accordingly on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of marks. See, e.g., Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA
1973); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB
1981); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).

8 Even applicant, as noted in footnote 5 of this opinion, mistakenly
referred in its response to the initial Office action to being "the
owner of the allowed application Serial No. 76/399,500 to register
LIPSTICK [sic] GIRLS [and design] in International Classes 3 and 14."

Ser. No. 76623522
8
Attorney insists that "[b]ecause usage of the phrase 'everybody
wants to wear' has become prevalent in consumer culture,
consumers are likely to view the phrase 'every girl wants to wear
lipstik' as an elaboration or marketing slogan referring to the
currently registered mark LIPSTICK, rather than serving as an
indicator of a unique source of goods." Such evidence consists,
in relevant part, of the following six examples from an Internet
search conducted on November 14, 2005 (emphasis added):9
"Now that's groovy! Everybody wants to
wear a CyberDodo's baseball cap!" -- www.-
toyshop.uptoten.com/product_info.php?-
products_id=70;

"Which is why, quite simply, everybody
wants to wear an Arai [motorcycle crash]
helmet. After all, why settle for anything
less than the best?" -- www.sportbikeshop.-
co.uk/motorcycle_parts/content_cat/2;

"Commenting on the ongoing trend of a
ready acceptance of designer wear, Zahir
feels that, 'It is a worldwide phenomenon.'
He adds, 'As the mid income group grows their
need for identification grows. This is
happening in Pakistan too. Everybody wants
to wear a Boss suit or an Armani shirt,
because it is a sense of identification of
having reached a certain standard. It's all
marketing." -- www.jang.com.pk/thenews/mar-
2003-weekly/nos-30-03-2003/instep.htm;

"'If Michael Jordan wears Nikes,
everybody wants to wear Nikes,' Singer

9 While three of the six excerpts are obviously from foreign websites
(specifically, the United Kingdom, Pakistan and Taiwan as respectively
indicated by the terms "uk," "pk" and "tw"), we have considered such
evidence inasmuch as it is as readily available to consumers in the
United States as are the three other excerpts of record from websites
which are based in the United States. See generally, In re Cell
Therapeutics Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) ["we believe
that communications have changed dramatically ... such that by now it
is by no means uncommon for even ordinary consumers ... to receive
news not only via tangible newspapers and magazines, but also
electronically through personal computers"].

Ser. No. 76623522
9
continues." -- rgp.ufl.edu/publications/-
explore/v03n1/excerc.html;

"TRENDY PROCESS DEVELOPMENT LTD.
EVERYBODY WANTS TO WEAR KNITS!! We have 10
years Exporting Experience!!!" -- www.trendy-
com.tw/woven.htm; and

"Everybody wants to wear the famous Cat
in the Hat hat." -- www.nea.org/readacross/-
basics.html.

Here, it is plain that in terms of overall commercial
impression, applicant's "EVERY GIRL WANTS TO WEAR LIPSTIK" mark
creates a double entendre in that it not only has its literal
meaning of "EVERY GIRL WANTS TO WEAR LIPSTICK," that is, the
cosmetic product, but as the Examining Attorney has pointed out,
and given that the terms "LIPSTIK" and "LIPSTICK" are virtually
indistinguishable in sound, appearance and meaning, such mark
also readily projects the connotation, especially to those who
are familiar with or have otherwise heard of registrant's
"LIPSTICK" brand junior apparel, that "EVERY GIRL WANTS TO WEAR
LIPSTICK," that is, registrant's "LIPSTICK" brand of junior
apparel. Confusion is thus likely from contemporaneous use of
the mark "EVERY GIRL WANTS TO WEAR LIPSTIK" by applicant for
various items of wearing apparel and the mark "LIPSTICK" by
registrant for articles of junior apparel.
Finally, as to applicant's argument that confusion is
not likely and that it is entitled to registration of its "EVERY
GIRL WANTS TO WEAR LIPSTIK" mark in view of the fact that its
Reg. No. 2,943,570 for the mark "LIPSTIK GIRLS" and design, as
shown below,
Ser. No. 76623522
10

registered over the same registration for the mark "LIPSTICK" as
has been cited as a bar to registration herein, the Examining
Attorney maintains that "applicant's position is contrary to the
longstanding, well-settled precedent indicating that prior
decisions and actions of other trademark examining attorneys in
registering different marks are without evidentiary value and are
not binding upon the Office." According to the Examining
Attorney:
Each case is decided on its own facts, and
each mark stands on its own merits. AMF Inc.
v. American Leisure Products, Inc., [474 F.2d
1403,] 177 USPQ 268, 269 (C.C.P.A. 1973); In
re International Taste, Inc., 53 USPQ2d 1604
(TTAB 2000); In re Sunmarks Inc., 32 USPQ2d
1470 (TTAB 1994); In re National Novice
Hockey League, Inc., 222 USPQ 638, 641 (TTAB
1984); In re Consolidated Foods Corp., 200
USPQ 477 (TTAB 1978). ....

The Examining Attorney is correct. As our principal
reviewing court observed in, for instance, In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001),
"[e]ven if some prior registrations had some characteristics
similar to [applicant's] application, the ... allowance of such
prior registrations does not bind the Board or this court." See
also, In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 (TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d
1753, 1758 (TTAB 1991). Applicant's prior registration,
therefore, does not justify allowance of the registration which
it presently seeks.
Ser. No. 76623522
11
Moreover, the Examining Attorney points out that in any
event:
[I]n response to the applicant's
arguments as to the mark in ... Registration
No. 2,943,570, it should be noted that there
are significant differences in the appearance
of the currently applied-for mark and the
referenced mark. In the registration
referenced by the applicant, the mark is
presented in a highly stylized format, with
the focus of such mark being the large
depiction of a pair of lips. The wording
"lipstik girls" appears in a highly cursive
font inside the pair of lips and the wording
is partially obscured by the image of the
lips. Because the placement and font of such
wording, the wording can appear to be, upon
cursory review of the mark, a depiction of
teeth inside the lips, as opposed to wording
serving an independent source indicating
function. The highly stylized mark therefore
has little bearing on the relative "weakness"
... of the registration cited by the
examining attorney. ....

In addition, we note that allowance of applicant's "LIPSTIK
GIRLS" and design mark over the registration for the "LIPSTICK"
mark cited herein is arguably explained not only by the presence
in the former of the prominent pair of lips incorporated therein
as a design feature, but by the additional term "GIRLS," which is
lacking in the "LIPSTICK" mark. See In re Hearst Corp., 982 F.2d
493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) [due to the
"significant contribution from the component 'girl,'" the marks
"VARGA GIRL" and "VARGAS," both for calendars, "are sufficiently
different in sound, appearance, connotation, and commercial
impression, [as] to negate likelihood of confusion"].
Lastly, we further observe that contrary to applicant's
argument that "[t]he Examiner has ignored the most important
fact: the subject mark incorporates Applicant's registered mark
Ser. No. 76623522
12
LIPSTIK GIRLS," it is plain that its subject "EVERY GIRL WANTS TO
WEAR LIPSTIK" mark does not include its "LIPSTIK GIRLS" and
design mark. Applicant, as shown by the specimen of use of its
applied-for mark, which is reproduced below,

instead actually uses a "LIPSTIK" and design logo in conjunction
with its "EVERY GIRL WANTS TO WEAR LIPSTIK" mark. Such use
clearly serves to enhance the likelihood of confusion of its
applied-for mark with the cited registrant's "LIPSTICK" mark.
Accordingly, we conclude that consumers, who are
familiar or acquainted with the cited registrant's "LIPSTICK"
mark for its "junior apparel, namely, slacks, jeans, shorts,
skirts, dresses, blouses, knit tops, halters, swimwear, robes,
sweaters, coats, jackets, rainwear, vests, scarves, belts, socks
and hosiery," would be likely to believe, upon encountering
applicant's similar "EVERY GIRL WANTS TO WEAR LIPSTIK" mark for
its "beach wear, blouses, coats, coveralls, dresses, head wear,
jackets, jeans, jogging suits, jumpers, leg warmers, leggings,
lingerie, loungewear, neckwear, pants, scarves, shirts, ski wear,
Ser. No. 76623522
13
slacks, sleepwear, T-shirts, tank tops, socks, [and] vests," that
such legally identical in part and otherwise closely related
goods emanate from, or are sponsored by or affiliated with, the
same source.
Decision: The refusal under Section 2(d) is affirmed.