Oralabs, Inc.

Trademark Trial and Appeal Board

Jan 31, 2006

No. 76569020 (T.T.A.B. Jan. 31, 2006)

Mailed: January 31, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Oralabs, Inc.
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Serial No. 76569020
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John L. Welsh of Welsh & Flaxman LLC for Oralabs, Inc.

William T. Verhosek, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Hohein, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Oralabs, Inc. (applicant)
to register the mark GENTLE LIPS ("LIPS" disclaimed) for "non-
medicated lip balm" in International Class 3.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles

1 Application Serial No. 76569020 was filed on March 14, 2005, based on
an allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76569020
2
the registered mark GENTLE GEL ("GEL" disclaimed) for "non-
medicated lip and gum gel" in International Class 3 as to be
likely to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue,
including the similarities of the marks and the similarities of
the goods. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
We turn first to a consideration of the goods. Applicant
argues that the goods are not similar and are not sold in the
same channels of trade. Pointing to a page from registrant's
website, applicant argues that, unlike applicant's product which
is a balm for lips, registrant's product is a gel used by
dentists to desensitize the affected area of a patient's mouth
after dental surgery, and that the gel, in fact, has nothing to
do with lips. Applicant has also submitted the original drawing
page from the file of the cited registration showing that
registrant's goods were originally identified as "non-medicated
gel for use by dental professionals in combination with a dental
electro-surgical product." Based on the above evidence,

2 Registration No. 2655354, issued December 3, 2002.
Serial No. 76569020
3
applicant concludes that, in contrast to applicant's goods which
would be sold to the public at retail stores and used for
treating chapped lips, registrant's gel product would be used and
sold by professionals, i.e., dentists, and that consumers would
not request registrant's goods by name from dentists. Further,
according to applicant, while applicant's goods would be
considered an impulse purchase, registrant's product would not,
because a consumer "does not impulsively run to their dentist and
buy products." Brief, p.7.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. It is sufficient if the respective goods are related
in some manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the same
persons under circumstances that could, because of the similarity
of the marks used thereon, give rise to the mistaken belief that
they emanate from or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant's "non-medicated lip balm" and registrant's "non-
medicated lip and gum gel" are very closely related, if not
virtually identical, products. We take judicial notice of the
definition of "balm" in The New Oxford American Dictionary (2nd
ed. 2005) as meaning, "a fragrant ointment or preparation used to
heal or soothe the skin" and from that same dictionary, a
Serial No. 76569020
4
definition of "gel" as meaning, "a jellylike substance containing
a cosmetic, medicinal or other preparation."3 Registrant itself
refers to its lip and gum gel on the website as a "balm" that
"soothes...the affected area and helps promote healing...." It
is clear that both applicant's and registrant's products are lip
care preparations with soothing and healing properties. Thus,
the respective goods are very similar products having
overlapping, if not interchangeable, functions and purposes.
In addition, the examining attorney has submitted a number
of use-based third-party registrations showing, in each instance,
that the same mark has been registered for lip balm, on the one
hand, and for lip gel, on the other. Although such third-party
registrations are not evidence of use of the marks in commerce,
the registrations have probative value to the extent that they
suggest that the respective goods are of a type which may emanate
from the same source. See In re Albert Trostel & Sons Co.,
supra; and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB
1988).
These closely related, if not virtually identical, goods are
presumed to be marketed through the same channels of trade to the
same retail consumers. In this regard, we note that the Internet

3 We will not take judicial notice of the dictionary definitions from
encarta.msn.com and dictionary.com attached to the examining attorney's
brief because there is no indication that those dictionaries exist in
printed form. See In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB
1999).
Serial No. 76569020
5
printouts submitted by the examining attorney show that lip balms
and lip gels are advertised and displayed together on the same
websites, often under the same or similar marks. For example,
www.dermadoctor.com offers "English Ideas Hint of Color SPF 18
Lip Balm" as well as English Ideas Lip solution Hydrating Lip
Gel"; and www.westons.com offers both "Chapstick Lip Balm" and
"Chapstick Lip Gel."
In arguing that the goods are not similar and are not in the
same channels of trade, applicant has read impermissible
limitations into the application and registration. As our
primary reviewing court has often stated, the question of
likelihood of confusion is determined on the basis of the
identification of goods set forth in the application and
registration, rather than on what any extrinsic evidence might
show the actual nature or function of the goods or their channels
of trade to be. See J & J Snack Foods Corp. v. McDonald's Corp.,
932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937,
942, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Registrant's product, as described, includes a lip gel.
There are no limitations on the function or purpose of
registrant's lip gel or the channels of trade for those goods.
Nor is there anything inherent in the nature of registrant's
Serial No. 76569020
6
goods which would limit the channels of trade to dispensing by
dentists or other professionals. We must assume that applicant's
as well as registrant's lip care products are sold through all
normal channels of trade for those goods, including all the usual
retail outlets, and that the goods reach all the usual classes of
purchasers. In this regard, we note that the purchasers of these
products are ordinary members of the general public who,
especially considering the inexpensive nature of these products,
would not be expected to exercise a high degree of care and thus
would be more prone to confusion.
It is clear that these nearly identical lip care products,
if offered under similar marks, would be perceived as emanating
from the same source.
We turn then to a consideration of the marks. Applicant
contends that GENTLE LIPS and GENTLE GEL are different in
appearance, arguing that the marks are different in style, length
and composition; that applicant's mark is composed of ten letters
whereas the registered mark is nine letters; and that the words
GEL and LIPS look nothing alike. Applicant further argues that
the marks have different tones and inflections; and that while
applicant's mark suggests that "gentle lips" can be achieved by
use of its product, the mark GENTLE GEL suggests that the product
itself is gentle when used.
Serial No. 76569020
7
While marks must be considered in their entireties, it is
well settled that "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties." See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). When registrant's mark GENTLE GEL and applicant's
mark GENTLE LIPS are compared in their entireties, giving
appropriate weight to the features thereof, we find that the
marks are similar in sound, appearance, meaning and overall
commercial impression, and that the similarities far outweigh
their differences.
The shared term, GENTLE, is visually and aurally the most
significant portion of both marks. It is the first word in each
mark and, moreover, it is the only nondescriptive portion of the
marks. See In re National Data Corp., supra at 751 ("That a
particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark"). See also Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (noting the importance of the first part of a mark as
"most likely to be impressed upon the mind of a purchaser and
remembered."). The identical first word GENTLE is followed in
both marks by short, one-syllable words, LIPS and GEL, having
Serial No. 76569020
8
only one letter difference in length. As a result, the two marks
as a whole have a visually similar structure and a similar sound
and cadence.
The word GENTLE is also significant in conveying the meaning
of the marks and their overall commercial impressions. While the
individual words GEL and LIPS have specifically different
meanings, when GENTLE LIPS and GENTLE GEL are viewed as a whole
and in the context of the goods, the two marks suggest products
with similar or at least complementary benefits, i.e.,
preparations that provide soothing or healing relief to injured
lips. Keeping in mind that the comparison of the marks is not
made on a side-by-side basis and that recall of purchasers is
often hazy and imperfect, it is the overall "gentleness" concept
and impression that purchasers are likely to remember when seeing
these marks at separate times on virtually identical goods, not
the slight difference in meaning.
Applicant argues that the term GENTLE is weak in the
cosmetics field and is used "by many others" to describe their
cosmetic products. Brief, p. 8. In support of this contention,
applicant has submitted six third-party registrations of marks
that include the word "GENTLE" for various cosmetic products;4

4 Applicant submitted printouts of five of these six third-party
registrations for the first time with its appeal brief, and the
examining attorney has objected to the printouts as untimely. During
prosecution, applicant had initially submitted only a list of these
registrations. When applicant was advised by the examining attorney in
Serial No. 76569020
9
and printouts from two third-party websites showing use of the
term "Gentle Gel" for cosmetics.5 The website of walgreens.com
offers "Almay Moisturizing Gentle Gel Eye Makeup Remover" and an
unidentified website offers "Gentle Gel Cleanser," also a makeup
remover.
While GENTLE is suggestive of registrant's lip gels, the
evidence fails to establish that the term is highly suggestive or
weak in relation to these goods.6 Of the marks in the third-
party registrations, one is for completely unrelated goods
(Registration No. 2830135 for "dental bleaching gel"); at least
one other mark conveys a completely different commercial
impression than the marks herein (Registration No. 2647243 for
GENTLE BREEZE); and none of the marks in the third-party
registrations is as similar to the cited mark as applicant's
mark. In addition, third-party registrations are not evidence of

his final refusal that a list is insufficient to make the third-party
registrations of record, applicant responded in a request for
reconsideration that "it now provides copies of the ... registrations."
The copies were apparently not provided, as applicant claimed, but the
examining attorney did not mention the omission in his denial of the
request for reconsideration. Under the circumstances, the objection is
considered waived, and the printouts are treated as properly of record.

5 The examining attorney's objection to the additional Internet
evidence submitted by applicant for the first time with its appeal
brief (as exhibit D) is sustained. This evidence is untimely and will
not be considered. Trademark Rule 2.142(d).

6 Relying on Sears Mortgage Corp. v. Northeast Savings, F.A., 24 USPQ2d
1227 (TTAB 1992), applicant argues that having the same word does not,
in itself, establish a likelihood of confusion. However, in that case,
unlike the present one, the only shared portion of the marks
("APPROVAL") was found to be merely descriptive of the parties'
services, not distinctive of the goods as is the case here.
Serial No. 76569020
10
use, and merely because other marks containing the suggestive
term GENTLE exist on the register does not mean the public could
distinguish the two marks at issue here, which are very similar
and are used for virtually identical goods. Furthermore,
evidence of two third-party uses of GENTLE GEL is insufficient to
show widespread use of the term to establish that registrant's
mark is weak in relation to the identified goods, or that the
public is so familiar with marks containing the word GENTLE that
they will rely on other portions of the marks to distinguish
them. In addition, there is no information as to how extensive
the two third-party uses are or the extent of public exposure to
the sites.
We find, in view of the similarity of the marks, and because
the marks are used in connection with at least very closely
related goods that are sold in the same channels of trade to the
same ultimate consumers, that confusion is likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.