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`ESTTA Tracking number:
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`ESTTA1201644
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`Filing date:
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`04/07/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex parte appeal
`no.
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`88848727
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`Appellant
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`vivawave Co., Ltd.
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`Applied for mark
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`MOOD NARRATIVE
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`Correspondence
`address
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`Submission
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`Attachments
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`Appealed class
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`SANG HO LEE
`NOVICK, KIM & LEE, PLLC
`3251 OLD LEE HIGHWAY
`SUITE 500
`FAIRFAX, VA 22030
`UNITED STATES
`Primary email: docket@nkllaw.com
`Secondary email(s): djung@nkllaw.com, slee@nkllaw.com
`703-745-5495
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`Appeal brief
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`TL5691744-AppealBrief.pdf(756435 bytes )
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`Class 003.
`All goods and services in the class are appealed, namely: Non-medicated skin
`care preparations being functional cosmetics; Nail cosmetics; Lip glosses; Non-
`medicated lip balm; Non-medicated make-up; Cosmetic preparations for baths;
`Body care cosmetics; Beauty care cosmetics; Non-medicated shampoos; Non-
`medicated toiletry preparations; Non-medicated cosmetic preparations for skin
`care; Hair rinses; Cosmetic creams;Mask pack for cosmetic purposes; Cosmetic
`oils; Make-up removing preparations; Cosmetics
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`David Youngjoon Jung
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`docket@nkllaw.com, slee@nkllaw.com, djung@nkllaw.com, sykim@nkllaw.com
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`/David Youngjoon Jung/
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`04/07/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Application No.: 88848727
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`Filing Date: March 26, 2020
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`Mark: mood narrative
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`In re vivawave Co., Ltd., Applicant
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`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`For online submission via ESTTA
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`Applicant, vivawave Co., Ltd., respectfully appeals to the Trademark Trial & Appeal
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`APPEAL BRIEF
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`Board (Board) from the Trademark Examining Attorney’s refusal of Applicant’s application for
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`Applicant’s mark “mood narrative” under Section 2(d) over registered marks “NARRATIVE”
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`and “NARRATIVE COSMETICS.” The Board instituted the appeal on February 9, 2022, and
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`allowed Applicant sixty days from the date of the Order to file a brief (or by April 10, 2022).
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`Accordingly, Applicant’s appeal is timely.
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`DESCRIPTION OF THE RECORD
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`Applicant filed a Section 1(b) and 44(d) application, Serial Number 88/848,727, for
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`“mood narrative” (hereinafter, Applicant’s mark) on March 26, 2020.
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`On May 12, 2020, a non-final office action was issued in which the Examining Attorney
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`partially refused registration of Applicant’s mark for the entire Class 3 goods, and particular
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`services in Class 35, alleging a likelihood of confusion with marks NARRATIVE and
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`NARRATIVE COSMETICS (hereinafter “cited marks” or “registered marks”) under Section
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`2(d) of the Trademark Act. Applicant filed a timely Response on November 8, 2020.
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`On March 4, 2021, the Trademark Examining Attorney suspended action on Applicant’s
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`application pending the foreign application on which this application claims priority. In the
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`examining attorney’s suspension letter, he maintained his partial Section 2(d) refusal. Applicant
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`submitted foreign registration documents in its response to Suspension Letter on December 16,
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`2021, thereby perfecting the Section 44(d) basis to the Section 44(e) basis.
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`On February 7, 2022, the Trademark Examining issued a final office action, rendering his
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`partial Section 2(d) refusal final. On February 9, 2022, applicant filed a notice of appeal without
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`filing a request for reconsideration after final office action.
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`STATEMENT OF THE ISSUES
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`The sole contested issue in this case is whether Applicant’s mark is likely to cause
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`confusion with the cited marks.
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`RECITATION OF THE FACTS
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`Applicant’s mark MOOD NARRATIVE is for:
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`Non-medicated skin care preparations being functional cosmetics; Nail cosmetics; Lip glosses;
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`Non-medicated lip balm; Non-medicated make-up; Cosmetic preparations for baths; Body care
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`cosmetics; Beauty care cosmetics; Non-medicated shampoos; Non-medicated toiletry
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`preparations; Non-medicated cosmetic preparations for skin care; Hair rinses; Cosmetic
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`creams; Mask pack for cosmetic purposes; Cosmetic oils; Make-up removing preparations;
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`Cosmetics in International Class 3; and Advertising services; Marketing services; Import-export
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`agency services; Comprehensive shopping mall by the internet; Sales brokerage services
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`featuring telecommunications via electronic communications; Promotional services; Retail store
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`services featuring cosmetic utensils; Wholesale store services featuring cosmetic utensils; Sales
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`agency services featuring cosmetic utensils; Sales brokerage services featuring cosmetic
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`utensils; Wholesale store services featuring cosmetics; Retail store services featuring cosmetics;
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`Sales agency services featuring cosmetics; Sales brokerage services featuring cosmetics in
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`International Class 35.
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`The cited mark, NARRATIVE, registration number 2579928 is for:
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`Retail store services in the field of apparel, fashion accessories, footwear, jewelry, cosmetics,
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`fragrances, small leather goods and eyewear in International Class 35 (hereinafter “928
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`registration”).
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`The cited mark, NARRATIVE COSMETICS, registration number 5825710 is for:
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`Theatrical make-up in International Class 3 (hereinafter “710 registration”).
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`ARGUMENTS
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`Applicant submits that there is no likelihood of confusion between Applicant’s mark and
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`the cited marks because of the outweighing DuPont factors that there is no confusing similarity
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`between Applicant’s mark and the cited marks due to differences in appearance, meaning and
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`sound of the marks. Furthermore, Applicant’s mark imparts a different commercial impression
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`on the purchaser’s mind than that imparted by the cited marks. It has been held that these
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`distinctions alone can be dispositive of the case. See Kellogg Co. v. Pack’em Enterprises, Inc.,
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`21 U.S.P.Q.2d 1142, 951 F.2d 330, 333 (Fed. Cir. 1991) (affirming dissimilarity of the marks
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`was dispositive of the likelihood of confusion issue); see also In re Covalinski, 113 U.S.P.Q.2d
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`1166, Serial No. 85685983, 2014 WL 7496055, at *4 (T.T.A.B. Dec. 18, 2014) (finding the first
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`DuPont factor, the differences between the marks, outweighs the other factors).
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`I.
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`Applicant’s Mark Has a Different Appearance Than the Cited Marks
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`Applicant’s Mark consists of two separate non-related words “MOOD” and “NARRATIVE.”
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`On the other hand, the 928 registration only consists of the single word “NARRATIVE” and the
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`710 registration also consists of one distinctive word, “NARRATIVE” with “COSMETICS”
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`only used descriptively.
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`The Examining Attorney argues that adding a term to a registered mark generally does not
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`obviate the similarity between the compared marks, as in the present case, nor does it overcome a
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`likelihood of confusion under Section 2(d). In coming to this conclusion, the Examining
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`Attorney essentially argues that NARRATIVE has the most source identifying significance in
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`Applicant’s mark. However, applicant argues that the addition of the term “MOOD” to
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`NARRATIVE is sufficient to distinguish Applicant’s mark and the cited marks in their entireties
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`because NARRATIVE is relatively a weak and diluted term. Applicant’s third-party registration
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`evidence is relevant to the conceptual strength of the cited marks, not their commercial strength.
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`Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043 (TTAB 2017) (“Use evidence
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`may reflect commercial weakness, while third-party registration evidence that does not equate to
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`proof of third-party use may bear on conceptual weakness if a term is commonly registered for
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`similar goods or services.”) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
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`693, 694-95(CCPA 1976)).
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`Aside from the two coexisting cited marks (NARRATIVE and NARRATIVE
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`COSMETICS), applicant submits that there are additional 73 live third-party registrations in
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`which their marks contain the term NARRATIVE by itself or combined with other wording(s)
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`(see Exhibit 1). Of the 73 live third-party registrations, applicant submits that there are at least 6
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`marks that cover the goods related to applicant’s goods. For example, “N/C NARRATIVE” with
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`registration number 5800244 covers “theatrical makeup” in International Class 3, and the
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`“IDENTITY NARRATIVE” with registration number 5693644 covers “body and beauty care
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`cosmetics” in International Class 3; “WP NARRATIVE” with registration number 5460767
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`covers “advertising, marketing and promotional services” in International Class 35; “GUIDING
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`NARRATIVE” with registration number 5411418 covers “marketing services” in International
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`Class 35; and “INARRATIVE WOMAN” with registration number 5552502 covers “body and
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`beauty care cosmetics” and “INARRATIVE MAN” with registration number 5552501 covers
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`“cosmetic creams for skin care” in International Class 35. Thus, the term “NARRATIVE” is
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`diluted given the evidence of 8 live third-party registrations using the term NARRATIVE which
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`appear on their face to be related to applicant’s goods and services.
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`Even if the term “Narrative” were found not to be diluted, Applicant’s mark “MOOD
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`NARRATIVE” must be examined as a whole, and the addition of a distinctive term “MOOD” is
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`sufficient to distinguish Applicant’s mark from the cited marks because such addition alters the
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`overall commercial impression when compared with “NARRATIVE” marks standing alone.
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`“Marks that are descriptive or highly suggestive are entitled to a narrower scope of protection,
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`i.e., are less likely to generate confusion over source identification, than their more fanciful
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`counterparts.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 U.S.P.Q.2d 1671
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`(Fed. Cir. 2015). The Court in Juice Generation ruled that the Board paid insufficient heed to the
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`important principle in analyzing the three-word combination “PEACE LOVE AND JUICE”
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`when the Board found likelihood of confusion with opposer’s “PEACE & LOVE” phrase by
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`finding that “PEACE LOVE” is the dominant portion and ignoring the extra word “JUICE” in its
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`analysis. Id. at 1341. The Court ruled that the “Board did not set forth an analysis showing that it
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`avoided the error of giving no significance to the term, which is impermissible notwithstanding
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`that the term is generic and disclaimed.” Id. at 1341.
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`Here, Applicant’s mark is “MOOD NARRATIVE” and the term “MOOD” is neither generic
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`nor descriptive. The term mood is defined as “a conscious state of mind or predominant
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`emotion” according to Merriam-Webster (see Exhibit 2) and is an arbitrary word in relation to
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`Applicant’s goods, namely, cosmetics, body and hair care products. On the other hand, narrative
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`is defined as “something that is narrated: story, account” or “a way of presenting or
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`understanding a situation or series of events that reflects and promotes a particular point of view
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`or set of values” according to Merriam-Webster (see Exhibit 3). The word “NARRATIVE” in
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`relation to cosmetics and make-up is a highly suggestive word since make-up is a way of
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`presenting oneself to the world by enhancing or dramatically changing the looks. Thus, the term
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`“MOOD” in Applicant’s mark is entitled to greater significance in the analysis than the word
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`“NARRATIVE” because “MOOD” is an arbitrary term in relation to cosmetics, which makes it
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`the most source identifying term and is sufficient to avoid any likelihood of confusion with the
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`cited marks which evidently lack the term “MOOD.”
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`When the marks are considered in their entireties, purchasers are not likely to dismiss the
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`inherently distinctive term “MOOD” in Applicant’s mark and view that “MOOD
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`NARRRATIVE” identifies another product in each of Registrant’s “NARRATIVE” product
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`lines. In addition, within a two-word mark, as Applicant’s mark, the first word is the more
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`prominent of the two—both to the eye and to the ear. See Presto Prods., Inc. v. Nice-Pak Prods.,
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`Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most
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`likely to be impressed upon the mind of a purchaser and remembered”).
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`These differences in the appearance of the marks and especially the prominent part of
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`“MOOD” in Applicant’s mark create distinct, significant commercial impressions in the
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`purchaser’s mind such that this alone should dictate no likelihood of confusion.
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`II.
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`Applicant’s Mark Has a Different Meaning Than the Cited Mark.
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`Applicant’s mark and the cited marks have completely different meanings due to the addition
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`of the word “MOOD.” As aforementioned, the word “narrative” is defined as “something that is
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`narrated: story, account” or “a way of presenting or understanding a situation or series of events
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`that reflects and promotes a particular point of view or set of values”; the word “mood” is
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`defined as a “conscious state of mind or predominant emotion: feeling.” Therefore, the words
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`“mood” and “narrative” signify different things—one is an emotion, and another is a story. Since
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`make-up can be applied in a manner that reflects one’s mood (e.g., glitter, festive eye makeup),
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`Applicant’s mark “MOOD NARRATIVE” suggests that Applicant’s makeup can be used to
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`express or narrate one’s feelings. Due to various studies that have been conducted to examine the
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`relationship between applying make-up and its impact on one’s mood, Applicant’s mark also
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`suggests that their makeup and cosmetics can boost one’s mood. Notably, the key word here is
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`“mood”—boosting one’s mood or expressing one’s mood (see Exhibit 4).
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`On the other hand, the cited marks “NARRATIVE” and “NARRATIVE COSMETICS” are
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`devoid of any emotive word. The mental association from the word “NARRATIVE” to the word
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`“MOOD” is tentative, if not outright unattainable, and at best, in a literature context, mood is one
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`of many literary devices that writers can use to weave a compelling narrative- a far-fetched
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`mental gymnastics that is simply unreasonable to expect from average American consumers.
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`Accordingly, Applicant’s mark connotes an emotion and or an atmosphere. On the other
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`hand, the cited marks consist of passive, non-emotive words “narrative” and “cosmetics,” and
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`emotive word is key to creating a unique commercial impression in Applicant’s mark. These
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`differences in meaning alone imparts a different commercial impression between the marks.
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`III. Applicant’s Mark Sounds Different Than the Cited Mark.
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`In addition to the differences in appearance, meaning, and commercial impression between
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`Applicant’s mark and the cited marks, the marks also sound different.
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`Applicant’s mark sounds significantly different than the cited marks because an arbitrary
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`term “mood” is the first word within Applicant’s two-word mark. Within a two-word mark, the
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`first part, namely, “MOOD,” is the more prominent of the two—both to the eye and the ear.
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`Applicant’s mark gives an elongated sound with the use of “moo” [u sound], whereas the cited
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`marks noticeably lack any word that precedes the shared term “NARRATIVE.” The length of the
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`marks is different and the number of syllables in each mark is also different.
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`Because of the differences in appearance, meaning and sound between the marks,
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`Applicant’s mark “MOOD NARRATIVE” inevitably imparts a completely different commercial
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`impression than “NARRATIVE COSMETICS” and “NARRATIVE”. See In re Hartz Hotel
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`Services, Inc., 102 U.S.P.Q. 2d 1150 (TTAB 2012) (finding that “GRAND HOTEL” is not likely
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`to cause confusion with the mark “GRAND HOTEL NYC” because the of the highly suggestive
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`nature of the mark “Grand Hotel” and the number of third-party “Grand Hotel” marks).
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`SUMMARY
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`In view of the foregoing, there is clearly no likelihood of confusion between Applicant’s
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`mark “MOOD NARRATIVE” and cited marks “NARRATIVE” and “NARRATIVE
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`COSMETICS,” and it is respectfully requested that the Section 2(d) refusal be withdrawn, and
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`that Applicant’s trademark application be remanded for publication.
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`Date: April 7, 2022
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`Respectfully submitted,
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`/Sang Ho Lee/
`Sang Ho Lee
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`David Youngjoon Jung
`Soyeon Kim
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`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway
`Suite 500
`Fairfax, VA 22030
`Telephone: (703) 745-5495
`Facsimile: (703) 563-9748
`Email:
`Email:
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`Attorneys for Applicant vivawave Co., Ltd.
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`EXHIBIT 1
`EXHIBIT 1
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`Live third-party registrations of TESS Search current up to March 28, 2022 excluding the
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`cited marks
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`NARRATIVE HEALING (6612096), REDEFINING OUR NARRATIVE (6551364), CTRL
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`THE NARRATIVE (6505409), NARRATIVE IMAGES (6459336), THE NARRATIVE
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`TRUST (64115512), THE NEXT DOOR NARRATIVE (6398232), THE FAMILY
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`NARRATIVE (6007467), NARRATIVE (6592697), NARRATIVE PLENIITUDE (6577418),
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`ONE WORD CAN CHANGE THE NARRATIVE (6571859), SMART NARRATIVE
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`(6548057), NARRATIVE BALLISTICS (6503341), BETTER NARRATIVE (6495897),
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`NARRATIVE COFFEE ROASTERS (6207391), NARRATIVE (6190809), NARRATIVE413
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`(6167477), CHANGE THE NARRATIVE (6077764), NEW YORK & NARRATIVE
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`(6074529), THE NARRATIVE INITIATIVE (5907317), NARRATIVE DYNAMICS
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`(5883439), THE LOVE NARRATIVE (5834088), SCAN-STRATEGIC CULTURAL
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`AGILITITY NARRATIVE (5811309), IDENTITY NARRATIVE SCENT AS ART (5759417),
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`MR. NARRATIVE (5906082), NARRATIVE SCIENCE (5865083), NARRATIVE N
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`SCIENCE (5865082), NARRATIVE ANCHOR (6455896), INVISIBLE NARRATIVES
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`(6364745), NARRATIVE IMPRINTING (5367584), NARRATIVE (6185519), NARRATIVE 4
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`(5356037), THE NARRATIVE SALON (5874804), NARRATIVE GROUP (5865177),
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`VISUAL ART NARRATIVE (5788838), EXOVERA NARRATIVES (5776690), WP
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`NARRATIVE (5700967), IDENTITY NARRATIVE (5693644), IN IDENTITY NARRATIVE
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`(5587858), NARRATIVE A.W.E. (5548886), NARRATIVES FROM THE BLACK
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`DIASPORA AND BEYOND (5444542), THE NARRATIVE SALON (5521391), THE
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`NARRATIVE METHOD (5505119), NARRATIVE (5288889), NARRATIVE (5288882),
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`NAKED NARRATIVES (527538), THE NEW NARRATIVE (5317653), MASTER
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`NARRRATIVES(5064998), NARRATIVE ANLAYTICS(5064945), TRAUMA ART
`NARRRATIVES (5064998), NARRATIVE ANLAYTICS (5064945), TRAUMA ART
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`NARRATIVE THERAPY(4862429), MAY THE NARRATIVE BE WITH YOU(4681408),
`NARRATIVE THERAPY (4862429), MAY THE NARRATIVE BE WITH YOU (4681408),
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`NARRATIVE CAPITAL(5899929), NARRATIVE HEALTH STRATEGIES(5070326,
`NARRATIVE CAPITAL (5899929), NARRATIVE HEALTH STRATEGIES (5070326,
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`5079891), COLOR NARRATIVE (5187684), AGILE NARRATIVE(5258003), DOUBLEBIT
`5079891), COLOR NARRATIVE (5187684), AGILE NARRATIVE (5258003), DOUBLEBIT
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`NARRATIVE(5120973), PANIC PURPOSE AETHETIC NARRATIVE INFLUENCE
`NARRATIVE (5120973), PANIC PURPOSE AETHETIC NARRATIVE INFLUENCE
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`CRAFTSMANSHIP (5051377), PUBLIC NARRATIVE P. (5010805), “THE ONLY WAY TO
`CRAFTSMANSHIP (5051377), PUBLIC NARRATIVEP. (5010805), “THE ONLY WAY TO
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`CHANGE THE NARRATIVE IS TO WRITE THE NARRATIVE”(4993345), PUBLIC
`CHANGETHE NARRATIVE IS TO WRITE THE NARRATIVE”(4993345), PUBLIC
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`NARRATIVE(4966527), NARRATIVE SCIENCE(4057283), NARRATIVE(4313648), H
`NARRATIVE (4966527), NARRATIVE SCIENCE (4057283), NARRATIVE (4313648), H
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`NARRATIVES(4645889), NARRATIVE(5010393), NARRATIVEBRANDING(0910225),
`NARRATIVES (4645889), NARRATIVE (5010393), NARRATIVEBRANDING (0910225),
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`NARRATIVE PRESS (2859113), NARRATIVE SOUND DESIGN (3625474), “N/C
`NARRATIVEPRESS (2859113), NARRATIVE SOUND DESIGN (3625474), “N/C
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`NARRATIVE” (5800244), “IDENTITY NARRATIVE” (5693644), “WP NARRATIVE”
`NARRATIVE?”(5800244), “IDENTITY NARRATIVE?”(5693644), “WP NARRATIVE”
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`(5460767), “GUIDING NARRATIVE” (5411418), “INARRATIVE WOMAN”(5552502)
`(5460767), “GUIDING NARRATIVE?”(5411418), “INARRATIVE WOMAN”(5552502)
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`“INARRATIVE MAN” (5552501)
`“INARRATIVE MAN?”(5552501)
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`EXHIBIT 2
`EXHIBIT 2
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`x
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`Oo
`-
`x |
`1 =) Mood Definition & Meaning-
`~@ £ & ©
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`GA (@_https://www.merriam-webster.com/dictionary/mood
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`GAMES & QUIZZES|THESAURUS|WORDOFTHEDAY|FEATURES|SHOP V|SUBSCRIBE eel) ie
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`bores
`£34.99 vorime|addtecat|
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`Peet's Coffee, Dark Roast K-Cup Podsfor...
`esteteete20,950
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`SINCE 1828
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`fiineteyel
`Pears
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`x Q
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`mood noun(1)
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`.
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`Srey
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`\'mid @\
`Definition of mood (Entry 1 of 2)
`1
`:aconscious state of mind or predominant emotion : FEELING
`TCL10L, Unlocked Android Smartphone...
`// He's been in a good moodall week.
`WwwWL 4168
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`also : the expression of moodespecially in art orliterature $279.99 vprime[Shopnow|
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`EXHIBIT 3
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`0 Narrative Definition & Meaning
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`// He is writing a detailed narrative ofhislife on the island.
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`reflects and promotesa particular point of view or set of values
`/1 Therise of the Tea Party and the weaknessof the Obama economy have
`fueled a Republican narrative about Big Governmentas a threattoliberty...
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`Old Dominion University
`ODU Digital Commons
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`STEM Education & Professional Studies
`OTS Master's Level Projects & Papers
`
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`2010
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`Makeup's Effects on Self-Perception
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`Lauren Silverio
`Old Dominion University
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`Follow this and additional works at https ///digitalcommons.odu_edu/ots_masters_projects
`
`
`Recommended Citation
`Silverio, Lauren, "Makeup’s Effects on Self-Perception’ (2010). OTS Master's Level Projects & Papers. 49.
`https.//digitalcommons.odu_edu/ots_masters_projects/49
`
`This Master's Project is brought to you for free and open access by the STEM Education & Professional Studies at
`ODU Digital Commons. it has been accepted for inclusion in OTS Master's Level Projects & Papers by an authorized
`administrator of ODU Digital Commons. For more information, please contact digitelcommons@odu.edu.
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`EE 6 Ways Makeup Can Actually Im
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`US MARKETS CLOSED
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`~~ Dow Jones +0.97%
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`‘Nasdaq #1.84%
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` “ S&P500 41.23%
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`‘TSLA+0.28%
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`INSIDER
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`6 ways makeupcanactually improve your mental health
`srr:
`Ruby Buddemeyer, StyleCaster Aug 4, 2017, 3:16 PM
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` es make-up make you feel=
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`RVARD UNIVERSITY
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`Rocco Palumbo, Ph.D.
`VA Healthcare System
`50 South Huntington Ave, Boston, MA 02130
`Contact
`
`
`
`Home
`
`Publications
`
`Contacts
`
`HOME | PUBLICATIONS /
`
`Does make-up make youfeel smarter? The
`“lipstick effect” extended to academic
`achievement
`Citation:
`N., & Di Domenico, A. (2017), Does make-up make you
`8., Mammaretla,
`Palumbo, R., Fairfield,
`
`feel smarter? The “lipstick effect”
`extended to academic achievement Cogent Psychology, 4 (1).
` DownioadCi
`Abstract:
`Previous studies have shownthathigherleveis of self-esteem are associated with better academic
`performance. However,
`there is no evidence if make-up canindirectly influence academic
`achievementandcognition throughself-esteem.
`In this study, we examined the possibility that make-
`up canaffect academic performance by asking 186 female undergraduate studentsto take a
`simulated university examination. Participants were randomly assigned to three groups, which
`
`Recent Publications
`Editorial: New boundaries between aging
`cognition, and emotions
`Testing factor structure and measurement
`invariance across genderwithItalian Geriatric
`Anxiety Scale
`Whenand wherein aging:
`source monitoring
`Commentary:
`Interaction between facial
`expression and color
`Does make-up makeyoufee! smarter? The
`lipstick effect” extended to academic
`achievement
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`the role of music on
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`-20 -
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