Lancome Parfums et Beaute & Cie.

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75377087 (T.T.A.B. Jul. 20, 2001)

07/20/01

Paper No. 20
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lancome Parfums et Beaute & Cie
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Serial No. 75/377,087
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Karen Wuertz of Baker Botts L.L.P. for Lancome Parfums et
Beaute & Cie.

Dominick J. Salemi, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On October 21, 1997, applicant filed the above-
referenced application to register the mark “LIP PAINT” on
the Principal Register for “makeup preparations, namely
lipstick,” in Class 3. The application was based on:
(i) applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce with the United
States on the specified goods, and (ii) applicant’s claimed
priority based upon its French application. A copy of the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/377,087
2
registration which issued in France as a result of that
application was subsequently submitted, along with an
English translation thereof.
The application filed in the United States is now
before the Board on appeal from a final refusal to register
under Section 2(e)(1) of the Lanham Act on the ground that
applicant’s mark is merely descriptive of the goods set
forth in the application. Simply put, the Examining
Attorney takes the position that “LIP PAINT” is a name for
a type of lipstick or is a synonym for the word “lipstick.”1
Applicant has disclaimed the word “LIP” apart from
the mark as a whole, but contends that the combination of
words sought to be registered is suggestive, rather than
merely descriptive, within the meaning of the Act because
the word “PAINT” is usually encountered in connection with
liquid coloring agents which are brushed or sprayed onto
whatever object is to be painted, whereas applicant’s
products are sticks of colored paste which are applied to
lips as cosmetics to provide both color and moisture.
Applicant further argues that the thought process which

1 Although on p.2 of his appeal brief the Examining Attorney
states that “[t]o one familiar with makeup or cosmetics, the
designation LIP PAINT will be understood as the name of a product
like eyeliner or foundation,” throughout most of the record in
this application he has taken the position that “LIP PAINT” will
be understood to describe or otherwise refer to “lipstick.”
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purchasers would need to go through to attribute
descriptive meaning to “LIP PAINT” in connection with its
product, which is not paint for the lips, makes its mark
suggestive, rather than merely descriptive within the
meaning of Section 2(e)(1) of the Act.
Both applicant and the Examining Attorney filed briefs
on appeal, and applicant filed a reply brief, but applicant
did not request an oral hearing before the Board.
The sole issue before us in this appeal is whether the
mark “LIP PAINT” is merely descriptive as applied to makeup
preparations, namely lipstick. Based on careful
consideration of the record and arguments before us in this
appeal, we find that the record herein does not support the
Examining Attorney’s conclusion that this mark is merely
descriptive of applicant’s goods.
The test for determining whether a mark is merely
descriptive within the meaning of the Lanham Act is well
settled. A mark is unregistrable under Section 2(e)(1) of
the Act if it immediately and forthwith conveys information
about a significant quality, characteristic, function,
feature, purpose or use of the goods with which it is used.
In re Gyulay, 870 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986). The determination of
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descriptiveness must be made not in the abstract, but
rather in relation to the goods as they are identified in
the application, considering the context in which the mark
is or will be used in connection with the goods, and the
possible significance the mark would have in that context
to the average purchaser of such products. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
The Examining Attorney bears the burden of establishing
with evidence that the term sought to be registered is
merely descriptive of the goods specified in the
application. Whether a mark is merely descriptive or is
only suggestive of the goods with which it is or will be
used has been recognized as a question of a highly
subjective nature, and any doubts in regard to this issue
are resolved in favor of the applicant. In re Aid
Laboratories, Inc., 221 USPQ 215 (TTAB 1983).
Simply put, in the case now before us, the Examining
Attorney has failed to meet his burden of establishing that
in this country, if lipstick purchasers were presented with
applicant’s mark, “LIP PAINT,” in connection with
applicant’s product, they would immediately understand the
term sought to be registered as conveying significant
information about the nature of the goods.
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Evidence establishing mere descriptiveness can take
many forms, including dictionary definitions,
advertisements, purchaser declarations, surveys, trade
journals, newspapers and other publications. The only
evidence submitted by the Examining Attorney in support of
his refusal to register in this case are excerpts from
publications retrieved from the Nexis database. Including
the excerpts made of record by the Examining Attorney in
response to the request for reconsideration filed by
applicant after the refusal to register had been made
final, there are twenty-two small segments of articles from
various publications.
If these excerpts had provided the Board with a basis
upon which we could conclude that “LIP PAINT” is often used
in connection with lipstick and therefore would be
understood by purchasers to refer to lipstick or to some
feature or characteristic of lipstick, this evidence would
have satisfied the Examining Attorney’s burden of
supporting the refusal to register. As applicant points
out, however, the majority of the evidence submitted in
support of the refusal to register is irrelevant to our
inquiry, and the few examples which could be interpreted as
supporting the refusal are either unclear or, as applicant
puts it, “scattered, random, idiosyncratic uses,” and as
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such, are not a sufficient basis upon which to conclude
that the mark would be understood to provide descriptive
information about applicant’s goods. If the term “LIP
PAINT” were, as the Examining Attorney contends, in use as
descriptive terminology in connection with a type of
lipstick, surely more evidence than this would be readily
available to demonstrate that purchasers would attribute
such a descriptive meaning to the term.
We turn, then, to an analysis of the twenty-two
excerpts from published articles that constitute the entire
support offered by the Examining Attorney for the refusal
to register. To begin with, more than half of them are
either from foreign publications or show use of the term in
a foreign context. Examples include excerpts of articles
published by The Financial Times (London), The Independent
(London), The Daily Mail (London), and the Calgary Herald.
Others either quote people in Great Britain or indicate a
foreign context by stating the price of products in pounds
sterling.
As this Board has repeatedly held, examples of
descriptive use in foreign publications of the term sought
to be registered have no probative value on the issue of
descriptiveness in this country. A term may be generic for
a product as used in publications in another country, but
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absent a showing that such publications have a significant
circulation in the United States, they can be given no
weight in determining consumer perceptions in the United
States. In re Consolidated Cigar Corp., 13 USPQ2d 1481
(TTAB 1989). In resolving whether a mark is merely
descriptive under the Lanham Act, its meaning to people who
do not constitute the purchasing public for such goods in
this country is irrelevant.
Two of the twenty-two excerpts show use of the term
“lip paint” in what appears to be a historical context.
One refers to “lip paint” in 5000 B.C.; another refers to a
law condemning “lip paint” passed in 1770 by the British
Parliament. Neither of these references is relevant in
determining what significance the mark would have in
contemporary times to people in the United States.
The remaining excerpts submitted by the Examining
Attorney in support of his contention that “LIP PAINT”
would be understood as a reference to the nature of
applicant’s products also fall short of doing so. A 1993
article published in the Washington Post discusses a
prostitute “who covers her scarred face with white-lead
makeup and mercuric sulphide lip paint that will kill her
as surely as labor in the mills is slowly killing Mor’s
sons.” We have no idea what “mercuric sulphide lip paint”
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is, but it does not appear from this quotation to be
ordinary lipstick. Another excerpt, this one from the
Baltimore Sun, mentions “lip paint” in apparent reference
to stage makeup used by clowns to cover only their lower
lips.
Other excerpts do refer to “lip paint,” but it is not
at all clear that the term is being used in reference to
lipstick. For example, a quoted article from Newsday
refers to both “nostril paint” and to “lip paint.” These
do not appear to be ordinary consumer cosmetics like
lipstick. Two of the remaining references refer to the
same product, “Kiehl’s Pink Shine,” as “lip paint,” but
without indicating that it is a lipstick. Another excerpt
refers to “lip-paint as pouted in the film by Uma Thurman,”
which could be a reference to stage makeup. The final
excerpt is from something called Children’s Business, and
although it refers to “cosmetics such as lip paint,” it is
not at all clear that “lip paint” is being used in
reference to or as a synonym for “lipstick.” In other
words, these excerpted stories did not give sufficient
context to understand the term “lip paint” in the stories.
In summary, the evidence submitted by the Examining
Attorney falls far short of establishing that in this
country, prospective purchasers of lipstick would
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understand “LIP PAINT” either as another term for
“lipstick” or as conveying information about a significant
feature or characteristic of lipstick. As noted above,
even if we were to have any doubt on this issue, it would
be necessary to resolve it in favor of the applicant.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed.

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