Lancetti Cosmetics

Trademark Trial and Appeal Board

Nov 14, 2006

No. 76438105 (T.T.A.B. Nov. 14, 2006)

Mailed:
November 14, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lancetti Cosmetics d/b/a Prestige Cosmetics
________

Serial No. 76438105
_______

Myron Amer of Myron Amer, P.C. for Lancetti Cosmetics d/b/a
Prestige Cosmetics.

Midge F. Butler, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Bucher and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Lancetti Cosmetics d/b/a Prestige Cosmetics seeks
registration on the Principal Register of the mark LIP
CONCENTRATE (in standard character format) for goods
identified in the application as “lip color, lip gloss, lip
pencils [and] lipliner pencils” in International Class 3.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the

1 Application Serial No. 76438105 was filed on August 5, 2002
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76438105
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Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “lip concentrate”
immediately informs potential purchasers about the nature of
applicant’s goods.
Applicant and the Trademark Examining Attorney have
each filed briefs on the issues involved in this appeal.
We affirm the refusal to register.
Preliminary matter
Applicant’s entire “reply brief” consists of the
following:
Applicant stands on its APPEAL BRIEF.

In addition, applicant files the within
Amendment to allege use pursuant to 37 C.F.R.
§ 2.76, and requests that this application be
amended to seek registration on the
Supplemental Register.

Having taken the position that its mark is not merely
descriptive, applicant is permitted to take the alternative
position that the mark is, in any event, registrable on the
Supplemental Register. TBMP § 1206.01 (2d ed. rev. 2004);
and TMEP § 1212.02(c).
However, inasmuch as applicant is not backing off the
arguments in its main brief on appeal, the position of its
reply brief would appear to be little more than an
alternative position (without being explicitly stated) at
Serial No. 76438105
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final hearing in the event the Trademark Examining
Attorney’s refusal on the Principal Register is affirmed.
The record and the issues to be considered in an
ex parte appeal must, at some point, be concluded. Fairness
herein does not demand that we permit applicant to avoid an
adverse determination on the only issue litigated, namely,
mere descriptiveness, by countenancing an alternative
amendment to the Supplemental Register filed with the reply
brief.
Even at this late date, had applicant requested an
unequivocal amendment to the Supplemental Register, we may
well have chosen, as would be within our discretion, to
remand for a consideration of this issue. This was not
done.
Accordingly, given our § 2(e)(1) determination, infra,
that is adverse to applicant, we will not consider
applicant’s alternative amendment to the Supplemental
Register filed at such a late juncture of the appeal, and
the proffered amendment to allege use is hereby moot. See
TBMP § 1206.01 (2d ed. rev. 2004).
Refusal under Section 2(e)(1) of the Act
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
Serial No. 76438105
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of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes or
uses of the goods or services with which it is used or is
intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”]. See also In re
MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD merely
descriptive of “credit card services.” The Court found that
a “mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic of
the product or service.”]. Hence, the ultimate question
before us is whether the term LIP CONCENTRATE conveys
information about a significant feature or characteristic of
applicant’s goods with the immediacy and particularity
required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri
mixture: “Whether a given mark is suggestive or merely
Serial No. 76438105
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descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence of record, we must keep in mind that
the test is not whether prospective purchasers can guess
what applicant’s goods are after seeing applicant’s mark
alone. In re Abcor, supra at 218 [“Appellant’s abstract
test is deficient – not only in denying consideration of
evidence of the advertising materials directed to its goods,
but in failing to require consideration of its mark ‘when
applied to the goods’ as required by statute”]; In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990) [NEW HOME BUYER’S GUIDE
merely descriptive of “real
estate advertisement
services”]; and In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985) [APRICOT is merely descriptive of
apricot-scented dolls]. Rather, the proper test in
determining whether a term is merely descriptive is to
Serial No. 76438105
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consider the alleged mark in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
is likely to have on the average purchaser encountering the
goods or services in the marketplace. See In re Omaha
National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)
[the term “first tier” describes a class of banks]; In re
Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996)
[the term VISUAL DESIGNER is merely descriptive of “computer
programs for controlling the acquisition of data from
measurement devices”]; In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991) [MULTI-VIS is merely descriptive of
“multiple viscosity motor oil”]; In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely
descriptive of computer graphics programs]; and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS
merely descriptive of a coaster suitable for direct
mailing].
The Trademark Examining Attorney herein argues that
“the term CONCENTRATE, when used as a noun, is defined as ‘a
product that has been reduced in volume or bulk by the
removal of liquid.’” She has placed into the record copies
of web pages demonstrating that the term “lip concentrate”
Serial No. 76438105
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is commonly used in the cosmetic industry to describe a
product used on the lips that has been reduced in volume or
bulk by the removal of liquid.
While applicant concedes that lip color and lip gloss
have a fluid content and, thus, might technically be subject
to a reduction in volume by the removal of liquid, applicant
contends that while “the words ‘lip concentrate’ appears
[sic] in trade literature,” they are not used “in reference
to either ‘lip color’ per se or to ‘lip gloss’ per se.”
We turn then to look at the evidence the Trademark
Examining Attorney has placed into the record.
Yves Saint Laurent Parfums Eye & Lip Concentrate2
3
Chen Yu Biolia Anti-Wrinkle Eye & Lip Zone – A special eye & lip concentrate …4
Orlane-Paris, Line Reducing Lip Care (Energizing Concentrate)5
IHB Excellence #11 Lip and Eye Concentrate with Retinol6
Hydra Complete – Multi-Level & Concentrate for lip7

2 http://www.saksfifthavenue.com/main/ and
http://perfumebay.com/
3 http://www.pevonia.com.au/b-prod-lip.htm and
www.dayspaescape.com/
4 http://www.cosmeticmall.com/, http://www.edirectory.co.uk/
http://www.mr-shopping.net/shop/Cosmetics-Fragrance/Skincare/ and
www.strawberrynet.com/
5 http://www.tanaz.com/
6 http://www.excellenceskin.com/
7 http://www.dealdawg.com/
Serial No. 76438105
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Aveda Lip Color Concentrate8
Lisse Expert Eye & Lip Anti-Wrinkle Concentrate9
Watkins Marine Lip Concentrate: a source of Omega-3 fatty acids, which are
necessary for the body’s production of biochemical[s] which help to maintain the
health of skin, hair and nails.10
As noted earlier, in analyzing mere descriptiveness, we
must consider the mark as applied to the specific goods
identified in the application. Based on this record, we are
comfortable finding that each of the terms “lip” and
“concentrate” is descriptive when applied to applicant’s
products such as lip color and lip gloss. Specifically, all
of applicant’s identified products are clearly applied to
ones “lips.” Applicant acknowledges that its lip color and
lip gloss have a fluid content and thus, might technically
be subject to a reduction in volume by the removal of
liquid.
We also find that these individual words do not somehow
lose this descriptiveness in the combination LIP
CONCENTRATE. While a combination of words may be
registrable if it creates a unitary mark with a unique,
nondescriptive or incongruous meaning, in this case each

8 Id.; www.clothingcellar.com/
9 http://www.mr-shopping.net/shop/Cosmetics-
Fragrance/Skincare/
10 http://www.18hrwk.com/

Serial No. 76438105
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component of applicant’s mark LIP CONCENTRATE retains its
descriptive significance when used in the combination, and
the combination as a whole is also merely descriptive of
applicant’s goods. When applied to lip color and lip gloss,
there is nothing which would require the exercise of
imagination, cogitation or mental processing or necessitate
the gathering of further information in order for the merely
descriptive significance of the term to be readily apparent
to consumers of applicant’s goods, namely that the product,
in a concentrated form, is for use on the lips.
Accordingly, we find that the term LIP CONCENTRATE,
when used in connection with lip color and lip gloss, would
be merely descriptive of the nature of the goods, as
contemplated under Section 2(e)(1) of the Act. The record
also demonstrates, as contended by the Trademark Examining
Attorney, that the term “lip concentrate” is used in the
cosmetic industry to describe a variety of cosmetic and
restorative products used on the lips that have been reduced
in volume or bulk by the removal of liquid. These uses in
the trade that the Trademark Examining Attorney found on the
Internet buttress her claim – even if many of these products
are in the nature of anti-wrinkle or anti-aging products to
smooth the texture of the lips, rather than products
Serial No. 76438105
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designed for appearance – to color ones lips or to make them
shine.
Finally, even if applicant had been the first and/or
only entity to use the term “Lip Concentrate” for such goods
(which it is not), this fact would not be dispositive [In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609
(CCPA 1969); and In re Central Sprinkler Co., 49 USPQ2d
1194, 1199 (TTAB 1998)] where, as here, the term
unequivocally projects a merely descriptive connotation.
See In re Polo International Inc., 51 USPQ2d 1061, 1063
(TTAB 1999); and In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994).
In any case, the several uses in the record of “AVEDA
Lip Color Concentrate” demonstrate that at least one of
applicant’s competitors was using a substantially similar
term in a highly descriptive, if not generic manner, on lip
color products prior to applicant’s first claimed use during
July 2006. Similarly, we find that yet other merchants and
manufacturers in the cosmetic trade would certainly have a
competitive need to use this term on such goods. See 2 J.T.
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 11:18 (4th
ed. 2001).
Decision: We find the well-crafted arguments of the
Trademark Examining Attorney to be most convincing, and
Serial No. 76438105
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hence, her refusal to register this mark on the Principal
Register based upon Section 2(e)(1) of the Lanham Act is
hereby affirmed.