Sweet and Vicious, LLC

Trademark Trial and Appeal Board

Nov 1, 2016

No. 86636337 (T.T.A.B. Nov. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sweet and Vicious, LLC
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Serial No. 86636337

Ernest B. Lipscomb of Barnwell Whaley
for Sweet and Vicious, LLC
John M. Gartner, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Mermelstein, Shaw, and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Sweet and Vicious, LLC (“Applicant”) seeks registration on the Principal Register
of the mark PICK ME UP (in standard characters) for
“Bodyshaping undergarment clothing worn over the
buttock that lifts the buttocks without padding,” in
International Class 25.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. was filed on May 20, 2015, based upon Applicant’s allegations of first
use of the mark anywhere and first in commerce on or before March 31, 2009, under Section
1(a) of the Trademark Act.
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Applicant’s mark so resembles the registered mark PICK-ME-UP (in standard
characters) for “body tape in the nature of a bra consisting of breathable fabric backed
with an adhesive layer for enhancing body contour by lifting the breasts,”2 as to cause
confusion, mistake, or to deceive.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed and filed a request for reconsideration. When the request for
reconsideration was denied, the appeal resumed. We affirm the refusal to register.
I. Likelihood of confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
A. Similarities or dissimilarities of the marks.
We start our analysis with a determination of the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and

2 Registration No. 3442096, issued June 3, 2008; Section 8 declaration accepted.
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commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Applicant’s mark is PICK ME UP and the cited mark is PICK-ME-UP. The only
difference between the marks is the use of hyphens in the cited mark. It has long been
held that when the only difference between two marks is the use of hyphens in one of
the marks, the marks are substantially identical. Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1712 (TTAB 2010). (In comparing the marks MAG-NUM
STAR and MAGNUM CROSSFIRE, “the initial term in both marks is essentially
identical; the hyphen in the Mag Instrument’s mark does not distinguish them.”). See
also, Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042
(TTAB 1989) (PRO-PRINT identical except for hyphen to PROPRINT); Goodyear Tire
& Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n. 1 (TTAB 1978) (“Fast-Finder”
with hyphen is in legal contemplation substantially identical to “Fastfinder” without
hyphen); and In re Champion Int’l Corp., 196 USPQ 48, 49 (TTAB 1977) (“[N]o
distinction, vague or otherwise, can be drawn between ‘CHECK MATE’ with or
without a hyphen between the words so that for purposes herein they are identical.”).
Accordingly, we find that Applicant’s mark is essentially identical to the mark in
the cited registration and thus, the first du Pont factor strongly favors a finding of
likelihood of confusion.
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B. Number and nature of similar marks in use on similar goods.
Applicant contends that there is no likelihood of confusion because the cited mark
is only entitled to a narrow scope of protection because “the USPTO register reflects
a plethora of identical PICK ME UP and closely similar marks some of which are in
the same class as the Registrant’s mark.” Appeal Brief, 8 TTABVUE 9. With its
request for reconsideration, Applicant submitted copies of fourteen applications and
registrations from the Trademark Status & Document Recovery Database (TSDR).
Three of these documents were applications. Third-party applications have no
evidentiary value, other than to show the applications were filed. In re Toshiba
Medical Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC,
85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1st USA Realty Professionals Inc., 84
USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1049 n.4 (TTAB 2002). Therefore, we give no consideration to the three applications.
As for the registrations, Applicant argues that “[t]he law recognizes the
marketplace reality that, where the same and similar marks are widely used,
consumers are able to differentiate among them.” App. Brief at 7. According to
Applicant, the third-party registrations are evidence that the cited registration has
little marketplace strength. We disagree.
While the registrations do show that several parties
have seen fit to register RAINIER marks, “[t]he purchasing
public is not aware of registrations reposing in the Patent
[and Trademark] Office.” Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 462-63 (CCPA
1973). Referring to this type of strength, precedent dictates
that “registration evidence may not be given any weight.”
E.g., Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
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22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (citing AMF Inc. v.
Am. Leisure Prods., Inc., 474 F.2d 1407, 177 USPQ 268, 269
(CCPA 1973)). In any event, “the existence of confusingly
similar marks already on the register will not aid an
applicant to register another confusingly similar mark.”
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (CCPA 1967) (citing In re Helene Curtis
Indus., Inc., 305 F.2d 492, 134 USPQ 501 (CCPA 1962)).
In re Morinaga Nyugyo Kabushiki Kaisha, — USPQ2d —, App. No. 86338392, slip
op. at 16 (TTAB July 16, 2016) (precedential).3 In addition, Applicant’s third-party
registrations are significantly different from the registration Applicant seeks. While
ten of the registrations are for marks consisting of or containing the phrase PICK ME
UP, none of these are for articles of clothing.4 The submission of ten registrations for
similar marks covering unrelated goods and services does not establish that the mark
PICK ME UP is only entitled to a narrow scope of protection. See Juice Generation,
Inc. v. GS Enters. LLC, 740 F.3d 1334, 115 USPQ 2d 1671, 1675 (Fed Cir. 2015)

3 While it is true that other cases indicate that third-party registrations are relevant —
sometimes highly relevant — those cases concern not marketplace strength, but rather a
mark’s conceptual strength, i.e., its distinctiveness. In that situation, third-party
registrations are probative of how a term is used, and whether it is suggestive of the relevant
goods or services. See In re Morinaga Nyugyo Kabushiki Kaisha, slip op. at 15-17. For
instance, Applicant quotes Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671 (Fed. Cir. 2015). But as can be seen from the quoted passage, “[a] real
evidentiary value of third party registrations per se is to show the sense in which . . . a mark
is used in ordinary parlance.” App. Brief. at 10 (citing 2 McCarthy on Trademarks and Unfair
Competition § 11:90 (4th ed. 2015)) (underlining added; alteration in original). But Applicant
does not suggest that the registrations demonstrate that the registered marks are suggestive,
descriptive, or generic with respect to Applicant’s goods, and therefore weak.
4 The final registration, Registration No. 3899206, is for the mark for “duffel
bags; handbags, headwear; hoods; T-shirts; visors.” While this registration includes articles
of clothing, given the differences in the marks, this registration does not affect the strength
of the mark in the cited registration.

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(record of 25 registered or unregistered marks in the food service industry that
included the phrase “PEACE LOVE” evidenced that the phrase was weak). Further,
our determination would not change if we had found the mark to be weak because
even a weak mark is entitled to protection against the registration of a similar mark
for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
C. Similarities or dissimilarities of the goods.
Next, we look at the similarity of the goods, the channels of trade, and the class of
customers. When determining the relationship between the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-62 (Fed. Cir. 2014).
Applicant’s goods are identified as “bodyshaping undergarment clothing worn over
the buttock that lifts the buttocks without padding” and the registrant’s goods are
identified as “body tape in the nature of a bra5 consisting of breathable fabric backed
with an adhesive layer for enhancing body contour by lifting the breasts.”

5 A bra or brassiere is “a woman’s undergarment for supporting the breasts.” brassiere.
Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary
.com/browse/brassiere.
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As identified, both Applicant’s goods and Registrant’s goods are undergarments
used to shape portions of the body. The Examining Attorney has established that both
products are sold on the same websites. For example,
• Applicant’s website – www.lovemybubbles.com
offers bodywear products, including “breast lift
tape,” “padded underwear,” “butt bras,” “butt
lifters,” “waist cinchers & body slimmers,” and “bra
accessories” (Denial of Request for Reconsideration
TSDR pp. 3-8);
• Registrant’s website – www.purestylegirl
friends.com, offers a number of products, including
“rear-enhancing padded briefs,” “convertible
adhesive bras,” and “breast tape” (Denial of Request
for Reconsideration TSDR pp. 9-14); and
• The Laurensilva website – www.lauren silva.com
offers body shaping products, i.e. “adhesive breast
lifts and tape,” “waist cinchers,” “bodysuit
shapewear,” “open bottom girdles,” and “butt lifter
body shapers” (Denial of Request for
Reconsideration TSDR pp. 15-18).
In fact, Applicant acknowledges that it sells both products, however, Applicant
argues that the goods are not related because “Applicant sells its ‘breast lift tape’
under an entirely different name than Registrant’s PICK-ME-UP breast lift tape.”
Appeal Brief, 8 TTABVUE 12. Applicant’s choice of trademark for its breast lift tape
does not alter our conclusion that the sale of these products in close proximity
evidences the relationship of the goods.

The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014).

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Further, Applicant’s argument that the goods are not related because “Applicant’s
butt lift garment and the Registrant’s body tape not only are structurally different
but use different means to achieve their objective and are offered to the marketplace
for entirely different purposes” is not persuasive. Id. at 13. This argument implies
that the goods must be identical to be related. However, the goods need not be
identical or even competitive to find a likelihood of confusion. See On-line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).
The respective goods need only be “related in some manner and/or if the
circumstances surrounding their marketing [be] such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
Since the purpose of both Applicant’s and Registrant’s goods is to shape parts of
the body and the goods are sold on the same websites in proximity to each other, use
of similar (or as in this case, virtually identical) marks could give rise to the mistaken
belief that the goods emanate from the same source. On similar evidentiary records,
both the Court of Customs and Patent Appeals6 and the Board have held that for
likelihood of confusion purposes, many different articles of clothing are related. See
Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549, 550
(CCPA 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc.

6 The predecessor to our primary reviewing court, the Court of Appeals for the Federal
Circuit.
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v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related
to neckties); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-399 (TTAB 1982) (TTAB
1982) (hosiery related to trousers). The fact that the goods at issue have a common
use and function supports a finding that they are related.
The evidence also establishes that the goods are sold in the same channels of trade
to the same customers (on-line on websites selling shapewear clothing to women).
Accordingly, we find that the goods are closely related and that the second and
third du Pont factors favor a finding of likelihood of confusion.
D. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, we find that Applicant’s mark PICK ME UP, in standard characters, when
used in connection with “bodyshaping undergarment clothing worn over the buttock
that lifts the buttocks without padding” is likely to cause confusion with the cited
mark PICK-ME-UP, in standard characters, when used in connection with “body tape
in the nature of a bra consisting of breathable fabric backed with an adhesive layer
for enhancing body contour by lifting the breasts.”
Decision: The refusal to register Applicant’s mark PICK ME UP is affirmed.