Corning Inc.

Trademark Trial and Appeal Board

Sep 28, 1999

No. 75160655 (T.T.A.B. Sep. 28, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB SEPT. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Corning Inc.
________
Serial No. 75/160,655
_______
Paul R. A. Burke for Corning Inc.
Jill C. Alt, Trademark Examining Attorney, Law Office 114,
(Mary Frances Bruce, Managing Attorney).
_______
Before Cissel, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 4, 1996, applicant applied to register
the mark "GLARECUTTER" on the Principal Register for
"ophthalmic lenses," in Class 9. The basis for the
application was applicant’s assertion that it possessed a
bona fide intention to use the mark in interstate commerce.
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that the
mark sought to be registered is merely descriptive of the
Ser No. 75/160, 655
2
goods identified in the application. She took the position
that "GLARECUTTER" immediately describes a feature of
ophthalmic lenses, i.e., that they cut glare. As support
for the refusal to register, she made of record excerpts
from Webster’s Ninth New Collegiate Dictionary, wherein the
word "glare" is defined as "a harsh uncomfortably bright
light… especially painfully bright sunlight"; and the word
"cut" is defined as "to reduce in amount."
Also included with the Office Action in which the
refusal to register was made were copies from the records
of the Patent and Trademark Office of several third-party
registrations. In one, the mark "GLARE FREE" is shown to
be registered on the Supplemental Register for ophthalmic
lenses and lens kits.1 The second registration is for the
mark "GLARELESS" for coated ophthalmic lenses,2 and is also
on the Supplemental Register. The third registration made
of record by the Examining Attorney shows that the mark
"GLARE FREE 2000" is registered for ophthalmic lenses and
lens kits.3 That registration is on the Principal Register,
but the descriptive term "GLARE FREE" is disclaimed apart
from the mark as shown.

1 Reg. No. 1,903,896.
2 Reg. No. 1,714,758.
3 Reg. No. 1,916,009.
Ser No. 75/160, 655
3
Applicant’s response to the refusal was to argue that
the term sought to be registered is not merely descriptive,
but rather is only suggestive, in that when a potential
purchaser considers the term in its entirety, "an element
of doubt arises as to what the particular goods might be."
(p. 2 of the response). Applicant also listed six third-
party registrations of marks for various glass and optical
products wherein the term "GLARE" was a component. In
addition, applicant submitted a copy of a dictionary
listing for the word "cutter." Among the definitions were
both "an instrument… that cuts"; and "a ship's boat for
carrying stores or passengers." Applicant argued that "its
mark is capable of a double meaning and does not convey an
immediate notion as to any particular characteristic,
quality or ingredient of the applicant's product," because
"'cutter' also alludes to a boat and is suggestive of
people who wear ophthalmic lenses while boating." (p. 3).
The Examining Attorney was not persuaded, and in the
second Office Action she made the refusal to register
final. Submitted with the final refusal was a copy of an
article from "Primary Care Optometry News" which discusses
the "glare-reducing" filter technology in applicant's
"glare-control products." The article discusses
applicant's lenses, which are designed and prescribed to
Ser No. 75/160, 655
4
help people with "sensitivity to bright sunlight and glare
outdoors."
Applicant timely filed a Notice of Appeal and a
request for reconsideration, attached to which was a copy
of an information packet applicant distributes to the eye-
care professionals who sell applicant’s products to
consumers. Also included were copies of the printed
advertisements for applicant’s "GLARECONTROL" line of
lenses. Additionally, applicant submitted a copy of a
technical definition of the word "glare" which shows that
there are several different phenomena referred to as
"glare." Applicant postulated that "GLARECUTTER does evoke
a unique commercial impression, namely of some instrument
or machine cutting through the glare," yet applicant
nonetheless maintained that the term is not merely
descriptive, but rather only suggestive of applicant’s
lenses.
Not surprisingly, the Examining Attorney was not
convinced by this argument. With her response to the
request for reconsideration, she submitted copies of a
number of excerpts from articles retrieved from the Nexis
database of publications. One article uses the term
"glare-cutters" in reference to polarized glasses. Another
uses "glare cutters" in connection with computer monitor
Ser No. 75/160, 655
5
shields. Other excerpts use various wording such as "cut
the glare," "cuts the glare" and "cutting the glare" in
reference to lenses, glass, and even a window treatments
which reduce the effects of bright light.
Action on the appeal was resumed. Applicant and the
Examining Attorney both filed briefs, but applicant did not
request an oral hearing. Accordingly, we have resolved
this appeal based on the written record and arguments.
The test for determining whether a trademark is merely
descriptive of the goods or services with which it is used
or with which it is intended to be used is well settled. A
mark need not name the goods or services in order to be
considered merely descriptive of them. Rather, a mark is
merely descriptive if, as used in connection with the goods
or services, it immediately describes, i.e., immediately
conveys information about, an ingredient, quality,
characteristic, or feature thereof, or if it directly
conveys information regarding the nature, function,
purpose, or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Ethan Foods, Inc., 24 USPQ2d 1757 (TTAB 1992); and In
re American Screen Process Equipment Co., 175 USPQ 561
(TTAB 1972). Further, the question of whether a mark is
merely descriptive must be determined not in the abstract,
Ser No. 75/160, 655
6
that is, not by asking whether one can guess from the mark
itself, considered in a vacuum, what the goods or services
are, but rather in relation to the goods or services for
which registration is sought, that is, by asking whether,
when the mark is seen on the goods or in connection with
the services, it immediately conveys information about
their nature. In re Abcor Development Corp., supra. We
must determine the question of registrability based on the
identification of goods or recitation of services as set
forth in the application for registration, subject only to
such limitations as to scope, channels of trade, etc. as
are specified therein, or which are normal for goods of the
same nature. In re Allen Electric and Equipment Co., 458
F.2d 1404, 173 USPQ 689 (CCPA 1972); In re Vehicle
Information Network, Inc., 32 USPQ2d 1542 (TTAB 1994); and
In re Cryomedical Services Inc., 32 USPQ2d 1377 (TTAB
1994).
When this test is applied to the facts in the case at
hand, we find that the mark applicant seeks to register is
clearly merely descriptive of the goods set forth in the
application. We agree with the Examining Attorney that the
proposed mark conveys the fact that a characteristic of
applicant’s ophthalmic lenses is that they cut glare. The
record in this application plainly shows that applicant’s
Ser No. 75/160, 655
7
lenses filter high-energy blue light, and that this type of
light constitutes glare, which causes discomfort and vision
problems for some people. As the Examining Attorney points
out, glare occurs when more blue light is allowed to reach
and interact with the eye, and glare cutting occurs when
less blue light is allowed to reach and interact with the
eye. Although applicant’s products cut or reduce glare in
a way that differs from the way that polarized lenses cut
glare, the fact that applicant’s technique for
accomplishing this is different or more technologically
advanced does not alter the fact that applicant’s lenses
cut glare.
Applicant makes several arguments on the issue of
descriptiveness, but none is persuasive. To begin with,
applicant argues that the Examining Attorney has not met
her burden of proof. We disagree. As noted above, this
record establishes that the term applicant seeks to
register immediately and forthwith conveys significant
information about the function of applicant’s products.
Applicant next argues that the Examining Attorney
improperly dissected the mark in order to get the
descriptive meaning from it. To the contrary, the record
establishes that the descriptive connotation of
"GLARECUTTER" is immediately understood when the mark in
Ser No. 75/160, 655
8
its entirety is considered. The plain meanings of each of
the components of the mark result in the obvious meaning of
the combination. Contrary to applicant’s argument, the
term sought to be registered possesses no double meaning or
incongruity, and does not create any doubt as to its
meaning in connection with applicant’s goods. Again, the
test is not whether potential purchasers can surmise the
nature of applicant’s goods from consideration of the mark
alone, but rather whether the mark sought to be registered,
when viewed in connection with the goods specified in the
application, immediately and forthwith conveys information
about a significant characteristic of those goods.
Applicant’s suggestion that "cutter" alludes to a boat
and that the mark therefore is suggestive of people who
wear ophthalmic lenses while boating borders on the
disingenuous. We agree with the Examining Attorney’s
contention that it is difficult to understand how
applicant’s mark could be considered incongruous.
"GLARECUTTER" clearly conveys the fact that applicant’s
lenses cut glare. It is difficult to think of a way to
make this statement with any more clarity or simplicity.
Applicant’s argument that the term sought to be
registered does not describe applicant’s products because
they do not "cut off" the blue spectrum of light at a
Ser No. 75/160, 655
9
particular point or eliminate it altogether, but rather
only filter it, is also not well taken. The record clearly
establishes that applicant’s lenses reduce the amount of
blue light allowed through the lens, cutting glare by a
certain amount in a lightened state, and by another amount
in a darkened state. Reducing the transmission of blue
light constitutes cutting the glare.
Applicant argues that the purchasers of its goods are
professional vision practitioners who are technically
sophisticated, and therefore would appreciate the
incongruity of using the term "GLARECUTTER" in connection
with lenses which have no specific cut off point for the
filtering of blue light. It is well settled that the fact
that purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are
sophisticated or knowledgeable with regard to trademarks,
however. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Further, we agree with the Examining Attorney that it is
more likely that even sophisticated eye-care professionals
understand "GLARECUTTER," when the term is used in
connection with ophthalmic lenses which are promoted in the
advertising material of record as being for use by patients
with "light sensitivity" and "glare problems," indicates
that the lenses reduce glare in some way.
Ser No. 75/160, 655
10
Ordinarily, the third-party registrations listed by
applicant in its response to the refusal to register would
not be considered because copies of the registrations were
not properly made of record. In the case at hand, however,
the Examining Attorney addressed applicant’s arguments
based on in the listed registrations, so we will consider
them as if they had been properly made of record.
They do not, however, establish that the mark sought
to be registered is suggestive, rather than merely
descriptive. The Board is not bound by decisions of
Examining Attorneys to pass particular marks to
publication. Moreover, two of the registrations listed by
applicant have been canceled, and there appear to be
reasonable explanations for the others. For example, the
registration for "GLARE-OUT"4 lists the goods as chemical
lens cleaning preparations, not the lenses themselves, and
the mark "GLAREBAN"5 would appear to be only suggestive in
connection with non-reflecting glass.
In summary, the record in this application establishes
that "GLARECUTTER" conveys the fact that applicant’s
ophthalmic lenses cut glare. This is a significant
characteristic for such products. Notwithstanding

4 Reg. No. 1,479,672;
5 Reg. No. 1,479,672;
Ser No. 75/160, 655
11
applicant’s arguments to the contrary, the mark is
therefore merely descriptive within the meaning of Section
2(e)(1) of the Act. Accordingly, the refusal to register
is affirmed.
R. F. Cissel
G. D. Hohein
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 75/160, 655
12