Shelby A. Tarleton

Trademark Trial and Appeal Board

Jun 4, 2020

88030290 (T.T.A.B. Jun. 4, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Shelby A. Tarleton
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Serial No. 88030290
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Joshua G. Jones of Law Office of Joshua G. Jones PLLC,
for Shelby A. Tarleton.
Grace Duffin, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Cataldo, Wolfson, and Larkin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Shelby A. Tarleton, seeks registration on the Principal Register of the
mark LASH BOSS, in standard characters, identifying: “artificial eyelashes; eyelash
extension application accessories sold only to salons and licensed professionals” in
International Class 3; and “shirts; hoodies; leggings; hats” in International Class 25.1

1 Application Serial No. 88030290 was filed on July 9, 2018, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). In response to the Examining Attorney’s requirement, Applicant
disclaimed “LASH” as to the goods identified in Class 3.

Serial No. 88030290
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The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground of likelihood of confusion with the cited registered mark LASHBOSS (in
standard characters) identifying “mascara” in International Class 3.2
In addition, the Examining Attorney refused registration on the basis of
Applicant’s failure to submit an acceptable amendment to the wording “eyelash
extension application accessories sold only to salons and licensed professionals” in
the identification of goods in Class 3.
After the Trademark Examining Attorney made the refusals final, Applicant
appealed to this Board. We affirm the refusals to register as discussed below.
I. Requirement for Amendment to Identification of Class 3 Goods
We first turn to the Examining Attorney’s requirement for an amendment to the
identification of Class 3 goods pursuant to Trademark Rule 2.32(a)(6), 37 C.F.R. §
2.32(a)(6). In her brief, the Examining Attorney outlines the procedural history of the
requirement in the involved application:
Applicant’s original identification of goods in International Class 003
was, “Artificial eyelashes; adhesives for affixing false eyelashes; eyelash
extension application accessories”. Applicant subsequently revised this
identification to, “Eyelash extensions and application accessories sold
only to salons and licensed professionals”. See Response to Office Action
dated 04/26/19. In a Final Office Action the examining attorney required
further amendment to the identification of goods as the wording,
“application accessories sold only to salons and licensed professionals”
remained indefinite. Additionally, the examining attorney rejected the

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 5370202 issued on the Principal Register on January 2, 2018.
Serial No. 88030290
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amendment of “artificial eyelashes” to “eyelash extensions” as this
amendment identified different goods. In applicant’s Request for
Reconsideration dated 9/20/2019 applicant indicated, “As to the request
to amend the identification of goods, Applicant respectfully requests and
[sic] decision on its above arguments first before it is forced to pay
additional filing fees for additional classes of goods.”3 Applicant did not
further revise the identification of goods.4

The filing of a notice of appeal has the effect of appealing all refusals or
requirements made final. In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985).
However, an applicant’s failure to address the refusals or requirements in its appeal
brief is a basis for affirming an examining attorney’s refusal of registration on those
grounds. See In re Rainier Enters., LLC, 2019 USPQ2d 463361, *5 (TTAB 2019)
(Board has discretion to “treat the failure as the equivalent of not filing a brief on
that issue and dismiss the appeal, or to consider any challenge to that requirement
or refusal waived and affirm.”); In re Harley and Jones, 119 USPQ2d 1755, 1757
(TTAB 2016) (refusing registration based on failure to address or argue in its appeal
brief any of the examining attorney’s refusals or requirements); In re DTI P’ship, LLP,
67 USPQ2d 1699, 1701-02 (TTAB 2003) (refusing registration based on failure to
address request for information requirement, finding Section 2(e)(1) refusal moot); In
re The Ridge Tahoe, 221 USPQ 839, 840 (TTAB 1983) (failure to argue correctness of
requirement may result in refusal on that ground alone); In re Big Daddy’s Lounges
Inc., 200 USPQ 371, 372 (TTAB 1978) (failure to respond or argue correctness of
requirements on appeal could result in a decision refusing registration by default); cf.

3 Applicant submitted a filing fee for only one International Class of goods.
4 Examining Attorney’s brief; 10 TTABVUE 22.
Serial No. 88030290
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Hyatt v. Dudas, 551 F.3d 1307, 89 USPQ2d 1465, 1469 (Fed. Cir. 2008) (an appellant
who fails to provide any argument in the appeal brief directed to rejected claims has
waived a challenge to that ground of rejection, and the Board of Patent Appeals has
the discretion to simply affirm any rejections against such claims).
In her brief, Applicant failed to address the Examining Attorney’s outstanding
requirement for an amendment to the identification of Class 3 goods, or argue the
merits thereof.5 See, e.g., In re Harley and Jones, 119 USPQ2d at 1757-58. In view
thereof, the refusal based on the requirement that Applicant submit an acceptable
amendment of her identification of Class 3 goods is hereby affirmed.
Applicant’s failure to comply with the requirement is a sufficient basis, in itself,
for affirming the refusal of registration of Applicant’s mark, and deeming moot the
refusal of registration under Trademark Act Section 2(d). In re DTI P’ship, LLP, 67
USPQ2d at 1701-02. Nonetheless, we exercise our discretion to determine below the
merits of the Section 2(d) refusal of registration.
II. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).

5 Applicant did not submit a reply brief.
Serial No. 88030290
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We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”));
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (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.”); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
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567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-
Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)
(“It is sufficient if the similarity in either form, spelling or sound alone is likely to
cause confusion.”) (citation omitted).” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018).
Applicant’s standard character LASH BOSS mark embodies the registered
standard character LASHBOSS mark in its entirety, merely adding a space between
the component terms. The presence or absence of a space between the same two words
is not a significant difference. Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54
(TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no
question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and visually almost identical”); In
re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There
can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”). Applicant’s LASH BOSS mark is nearly identical in
appearance to the registered LASHBOSS mark, and is identical in sound. The marks
are also identical in meaning or connotation, suggesting a beneficial effect on the
user’s eyelashes, and convey identical commercial impressions.
Serial No. 88030290
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We find, as a result, the Applicant’s LASH BOSS mark is legally and virtually
identical to the registered LASHBOSS mark. The first DuPont factor thus weighs
heavily in favor of finding a likelihood of confusion.
B. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion, 110
USPQ2d at 1159, and the third DuPont factor concerns “[t]he similarity or
dissimilarity of established, likely-to-continue trade channels.” Id. at 1161 (quoting
DuPont, 177 USPQ at 567).
With respect to the second DuPont factor, the question of likelihood of confusion
must be determined based on an analysis of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration. See Stone Lion, 110
USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Further, “even when goods or services are not competitive or intrinsically related,
the use of identical marks can lead to an assumption that there is a common source.”
Shell Oil Co., 26 USPQ2d at 1689; see also Amcor, Inc. v. Amcor Indus., Inc., 210
USPQ 70, 78 (TTAB 1981) (When both parties are using or intend to use the identical
designation, “the relationship between the goods on which the parties use their marks
need not be as great or as close as in the situation where the marks are not identical
or strikingly similar”). Applicant’s goods are “artificial eyelashes; eyelash extension
Serial No. 88030290
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application accessories sold only to salons and licensed professionals,” in Class 3 and
“shirts; hoodies; leggings; hats” in Class 25. Registrant’s goods are “mascara” in Class
3.
In support of the refusal of registration, the Examining Attorney introduced with
her October 26, 2018 first Office Action,6 June 25, 2019 final Office Action,7 and
October 17, 2019 denial of Applicant’s Request for Reconsideration,8 printouts from
the following third-party internet websites offering both artificial eyelashes, eyelash
adhesive and applicators, on the one hand, and mascara on the other, under the same
marks: Sephora; Nars Cosmetics; Ulta; Revlon; Nordstrom Rack; and Beauty Grade.
The evidence further shows the following third-party websites offering, under the
same mark, mascara as well as various items of clothing, including shirts, hoodies,
leggings and hats: Yves Saint Laurent, Dior, Marc Jacobs, Tom Ford and Giorgio
Armani.
These websites demonstrate that goods of the type identified in both classes and
the goods identified in the cited registration are marketed and sold together online
under the same marks. See Hewlett-Packard Co., 62 USPQ2d at 1004 (evidence that
“a single company sells the goods and services of both parties, if presented, is relevant
to the relatedness analysis”). “We find that consumers would readily perceive these

6 At .pdf 116-188.
7 At .pdf 6-43.
8 At .pdf 56-91.
Serial No. 88030290
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types of [goods] as being sufficiently related as to be offered by a single business.” In
re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016).
In addition, the Examining Attorney introduced into the record with her October
17, 2019 denial of Applicant’s Request for Reconsideration,9 copies of at least ten use-
based, third-party registrations issued on the Principal Register for marks
identifying mascara as well as various clothing items, including shirts, hoodies,
leggings and hats. These include:10
Reg. No. 4392836 for the mark GRETCHEN CHRISTINE, identifying, inter
alia, shirts, hats and mascara;

Reg. No. 5229094 for the mark CARLA ANGOLA, identifying, inter alia, hats,
shirts, hooded sweatshirts and mascara; and

Reg. No. 5510777 for the mark EVE BY EVE’S, identifying, inter alia, hats,
hooded sweatshirts, shirts of various types, leggings and mascara.

“As a general proposition, although use-based, third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have some probative value to the extent they may
serve to suggest that the goods are of a kind that emanate from a single source.” In
re I-Coat Co., LLC, 126 USPQ2d 1730, 1738 (TTAB 2018) (citing Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1004).
With regard to her goods identified in Class 25, Applicant argues:
the examiner has not demonstrated that consumers would tend to
believe that mascara and clothing products emanate from the same
source. The Board and the Federal Circuit have said that “the mere fact
that goods and services are ‘used together’ does not, on its own, show

9 At .pdf 6-55.
10 All listed marks are in standard characters.
Serial No. 88030290
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relatedness.” In re St. Helena Hosp., 774 F. 3d 747, 753 (Fed. Cir. 2014).
“In situations like the present, in which the relatedness of the goods and
services is obscure or less evident, the PTO will need to show ‘something
more’ than the mere fact that the goods and services are ‘used together.’”

Id.11
We disagree. Unlike the circumstances in St. Helena Hosp. in which the Federal
Circuit found that the relatedness of hospital-based weight and lifestyle services and
printed materials on the subject of physical activity and fitness was not clearly
evident, the record here shows that the relatedness of artificial eyelashes and eyelash
extension apparatus and clothing, especially fashion-forward designer clothing, is
more apparent. “That is to say, purchasers acquainted with the fact that companies
are selling items of clothing and cosmetic or toiletry products under the same
designer’s name are not likely to engage in the kind of reasoning applicant advances
but are rather most likely to believe, because of the close relationship and association
of names in these related fields, that applicant’s clothing items and opposer’s
cosmetic and beauty care products and services have the same source, or at least are
produced under license from the designer.” Seligman & Latz, Inc. v. Merit Mercantile
Corp., 222 USPQ 720, 723 (TTAB 1984); see also, e.g., Faberge, Inc. v. Madison Shirt
Corp., 192 USPQ 223 (TTAB 1976) (holding applicant’s mark BRUTUS for men’s
dress wear and sportswear so similar to opposer’s BRUT marks previously used for
men’s toiletries as to be likely to cause confusion). The Examining Attorney’s evidence
shows that these goods are produced and marketed under the same trademarks by

11 Applicant’s brief, 8 TTABVUE 3-4.
Serial No. 88030290
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common sources. As a result, consumers would expect these goods “to be offered by a
single business.” In re Integrated Embedded, 120 USPQ2d at 1515.
Applicant further argues that her “products are limited to salons and licensed
professionals while the registrant’s products are consumer facing mascara
products.”12 While Applicant has attempted to restrict her products to use by salons
and professionals, the goods in the cited registration are unlimited as to their
intended end users and must be viewed as encompassing all types of mascara,
including such products used in salons by licensed professionals as well as by
ordinary consumers. “We have no authority to read any restrictions or limitations
into the registrant’s description of goods.” In re Thor Tech Inc., 90 USPQ2d 1634,
1638 (TTAB 2009). Nor may an applicant restrict the scope of the goods covered in
the cited registration by argument or extrinsic evidence. In re Midwest Gaming &
Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86
USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986).
In the absence of limitations in the cited registration, we must presume that the
goods travel through all usual channels of trade and are offered to all normal
potential customers―in this case, salon professionals and ordinary consumers. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017). The
Examining Attorney has introduced third-party evidence showing that both
Applicant’s goods and the goods identified in the cited registration are available on

12 8 TTABVUE 2.
Serial No. 88030290
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the websites of third-party manufacturers and retail stores, and are offered to the
same consumers, including salons and licensed beauty professionals. Therefore,
under the second and third DuPont factors, Applicant’s and Registrant’s goods are
considered related, and their channels of trade are the same or overlap for likelihood
of confusion purposes.
C. Conditions of Purchase

Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant asserts that “given Applicant’s goods are limited to licensed
professionals and salons, the purchasers are sophisticated such that they would
exercise care in purchasing products that would minimize the potential for
confusion.13 However, Applicant’s argument is predicated on her attorney’s assertion,
which is not evidence and no substitute for it. Cai, 127 USPQ2d at 1799 cited in
Performance Open Wheel Racing, Inc. v. U. S. Auto Club Inc., 2019 USPQ2d 20891,
*8 n.62 (TTAB 2019). There is nothing in the nature of the goods that would suggest
that their purchasers are particularly sophisticated or careful. See In re I-Coat, 126
USPQ2d at 1739. In fact, the standard of care is that of the least sophisticated
potential purchaser. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC,
126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be
based on the least sophisticated potential purchasers.”)). In the absence of any

13 8 TTABVUE 3.
Serial No. 88030290
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evidence relating to the degree of care purchasers exercise, the identity of the marks
and relatedness of the goods outweigh Applicant’s assertion that purchasers are
sophisticated or careful in their purchases. See HRL Assocs., Inc. v. Weiss Assocs., Inc.,
12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Assocs., Inc. v. HRL Assocs., Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks
outweigh sophisticated purchasers, careful purchasing decision, and expensive goods).
Moreover, even sophisticated purchasers are not immune from source confusion,
especially in cases such as the instant one involving virtually identical marks. See In
re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing
Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not
infallible.”)).
All in all, we have no basis to find that consumers, even salon professionals, would
exercise more than an ordinary degree of care. The fourth DuPont factor is neutral.
III. Conclusion

When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with Registrant’s
goods offered under its mark would be likely to believe, upon encountering
Applicant’s proposed mark used in connection with the goods identified in the
application, that the goods originated with or are associated with or sponsored by the
same entity.
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Decision: The refusals to register the mark in subject application Serial No.
88030290:
(1) under Section 2(d) of the Trademark Act; and
(2) on the basis of the Examining Attorney’s requirement for Applicant’s to submit
an acceptable identification of Class 3 goods under 2.32(a)(6), 37 C.F.R. § 2.32(a)(6),
are affirmed.