Diversified Products, Inc.

Trademark Trial and Appeal Board

Feb 28, 2013

No. 85475145 (T.T.A.B. Feb. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Diversified Products, Inc.
_____

Serial No. 85475145
_____

Stanley H. Cohen of Daesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. for
Diversified Products, Inc.
Leigh A. Lowry, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Bucher, Wolfson and Gorowitz, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Diversified Products, Inc. (“applicant”) seeks registration on the Principal
Register of the mark FLIP EYEWEAR (in standard characters) for “reading glasses
and sunglasses,” in International Class 9, based on applicant’s bona fide intent to
use the mark in commerce.
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having
determined that registration would lead to a likelihood of confusion in view of the
following registrations, owned by three separate entities:
Serial No. 85475145

2

Reg. No. 2024695 for the mark FLIP-FOCALS (in
standard character format) for “eyeglasses” in
International Class 9;1
Reg. No. 3837521 for the mark FLIP8 (in standard
character format) for “sunglasses” in International Class
9;2 and
Reg. No. 4134004 for the mark easyflip (in standard
character format) for “eyeglass frames; eyeglasses” in
International Class 9.3
When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.4
Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary
matter. Applicant filed a copy of a web page from “www.urbandictionary.com”
together with its reply brief. While the Board may take judicial notice of dictionary
definitions, including online dictionaries which exist in printed format, the Urban
Dictionary appears to be solely an online publication that does not exist in printed
format. We therefore decline applicant’s request to take judicial notice of the
definition contained therein. See In re Future Ads LLC, 103 USPQ2d 1571 (TTAB
2012); In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002); and University
of Notre Dame du Lac v. J. C. Gourmet Foot Imports Co., Inc., 213 USPQ 594 (TTAB

1 Registered December 17, 1996; renewed.
2 Registered August 24, 2010.
3 Registered May 1, 2012 under Section 2(f), 15 U.S.C. § 1052(f).
4 Because the issue is not before us, we make no determination as to whether the applied-
for term is inherently distinctive or might be considered merely descriptive or generic under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
Serial No. 85475145

3

1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Moreover, applicant
may not use its brief as a vehicle to introduce the evidence; the record must be
complete prior to appeal. See Trademark Rule 2.142 (d); In re Quantum Foods Inc.,
94 USPQ2d 1375, 1377 n.2 (TTAB 2010); and TBMP § 801.01 (3d ed. rev. 1 2012).
The Record on Appeal
The examining attorney has submitted:
1. A dictionary definition of “eyewear” as – 1.
Eyeglasses, goggles, or other objects worn over the
eyes 2. Fashionable eyeglasses.5
2. A dictionary definition of “spectacles” as 1. A pair of
glasses for correcting defective vision Often
(informal) shortened to specs 2. See pair of
spectacles.6
3. A dictionary definition of “eyeglasses” as 1. Mainly
US another word for spectacles.7
4. An entry from Wikipedia for “Glasses” that defines
glasses as “eyeglasses (formal), spectacles or simply
specs (informal) [that] are frames bearing lenses
worn in front of the eyes.” Sunglasses are
described as a type of glasses that “allow better
vision in bright daylight.”8 Reading glasses are also
discussed in a sub-section headed “Ready-made
reading glasses.”9
5. Copies of web pages showing online retailers
advertising sunglasses and reading glasses under

5 At www.education.yahoo.com/reference/dictionary, attached to Office action dated March
14, 2012.
6 At www.collinsdictionary.com, attached to Office action dated March 14, 2012.
7 Id.
8 At http://en.wikipedia.org, attached to Office action dated March 14, 2012.
9 Id.
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Serial No. 85475145

5

Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Goods
We first address the similarity of the goods described in the application and
registrations. Applicant acknowledges in its brief that it “has never contested the
examining attorney’s contentions that applicant’s goods are the same as, or closely
related to, the goods in the cited registrations.”12 Further, the examining attorney
has shown that applicant’s “reading glasses and sunglasses” are legally identical to
the eyewear named in the registrations. The examining attorney has submitted
copies of several use-based, third-party registrations showing that companies have

12 Applicant’s Brief, p. 5.
Serial No. 85475145

6

registered sunglasses, eyeglasses and eyeglass frames under a single mark.13
Copies of use-based, third-party registrations may serve to suggest that the goods
are of a type which may emanate from a single source. In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988).
See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). In
addition, the examining attorney has submitted copies of web pages from two
websites showing online retailers advertising sunglasses and reading glasses under
the same mark;14 and two websites showing sunglasses and regular eyeglasses
under the same mark.15
Accordingly, the du Pont factor regarding the similarity of the goods weighs
in favor of a finding of likelihood of confusion.
B. Comparison of the Marks
Because the goods in this case are legally identical, to find likelihood of
confusion, the degree of similarity between the marks need not be as great as where
there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-

13 For example, Reg. No. 2775520 for the mark EYEWEARHAUS FACTORY DIRECT
EYEWEAR and design covers these items, plus additional eyewear and related goods, such
as protective eyewear and eyeglass chains; Reg. No. 3104710 for the mark INTEGRITY has
been registered for, inter alia, “eyeglass frames, sunglasses, clipon sunglasses, reading
glasses”; and Reg. No. 3080571 for the mark SAMURAI has been registered for “eyeglasses,
sunglasses, reading glasses and frames of eyeglasses”; attached to Final Office action dated
August 7, 2012.
14 At www.select-a-vision.com and www.fostergrant.com, attached to Final Office action
dated August 7, 2012.
15 At www.johnvarvatos.com and http://eyeglasses.go-optic.com, attached to Final Office
action dated August 7, 2012.
Serial No. 85475145

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Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. However,
different features may be analyzed to determine whether the marks are similar.
Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ
266, 268 (CCPA 1955); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). The essential issue before us is whether applicant’s mark is
sufficiently distinguishable from the three registrations that have been cited
against applicant’s mark, but which co-exist on the Principal Register, to avoid a
likelihood of confusion with the cited registrations.
Applicant argues that because “two of the three remaining relied-on marks
also contain descriptive words in addition to the suggestive or descriptive word
FLIP,”16 buyers have been conditioned to distinguish between the marks based on
their differences, allowing for applicant’s FLIP EYEWEAR mark to co-exist with the
marks FLIP-FOCALS, FLIP8 and easyflip. Applicant argues that because these
terms are weak, and because “flip” itself is weak, even the addition of “eyewear,” a
generic term, to the word “flip’ is a sufficient basis upon which its mark can be
distinguished from each mark of the cited registrations. As detailed above,
applicant submitted copies of the specimens of use filed in connection with the cited

16 Reply Brief, p. 3.
Serial No. 85475145

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registrations, to show the weakness of the term “flip” when used in connection with
the goods of the cited registrations.
The short answer to applicant’s argument is that while “flip” may be highly
suggestive (or worse) when used in connection with eyewear having a feature that
“flips,” each of the registered marks contains an additional component having at the
very least a modicum of distinctiveness within the respective composite mark. By
contrast, the additional component in applicant’s mark is a generic term devoid of
any distinctiveness.17 That “eyewear” is generic has been shown by the record. The
dictionary definition of “eyewear” names the genus as “objects worn over the eyes,”
which would include all the goods of applicant and the registrants. Further, the
website for the designer John Varvatos, submitted by the examining attorney,
advertises both sunglasses and regular glasses under the link “eyewear.”18 The
website “www.select-a-vision.com” also has a link to “eyewear care.”19 These uses
show that “eyewear” describes the genus that includes eyeglasses, reading glasses,
sunglasses and frames. As such, while the mark must be considered in its entirety,
within applicant’s composite mark, only the word FLIP may be capable of serving a
source-identifying function. Even if the word “flip” is considered descriptive of

17 Unlike applicant’s mark, where the term “eyewear” is generic, the composite mark in the
cited registrations has been shown to be distinctive, or the additional terms are suggestive.
Specifically, in the mark FLIP8, the numerical designation “8” in the mark appears to be
inherently distinctive. As to the mark FLIP-FOCALS, this composite seems to be a play on
the terms bifocals or trifocals. Finally, while easyflip was initially apparently considered
merely descriptive, the mark has been registered under Section 2(f) as having acquired
distinctiveness. In all three cases, no disclaimers were required inasmuch as the mark are
all considered to be unitary.
18 At www.johnvarvatos.com, attached to Final Office action dated August 7, 2012.
19 At www.select-a-vision.com, attached to Final Office action dated August 7, 2012.
Serial No. 85475145

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eyewear having various features that “flip,” this does not assist applicant in
reconciling the fact that its mark, alone among the marks involved in this case, does
not include a source-identifying component other than the word “flip,” by which
prospective buyers may distinguish its goods. A generic term, by its nature, must
be accorded less weight than either a descriptive or a highly suggestive term,
because there is a competitive need for manufacturers, retailers, and prospective
purchasers to use the generic term to name their product. Essentially, there is no
source-indicating significance to a generic term, which must be kept free for use by
all.
Comparing each of the registered marks with applicant’s mark, we find that
the marks are confusingly similar. The mark FLIP-FOCALS suggests bifocal or
trifocal eyeglasses, two types encompassed by the generic term “eyewear.” Thus,
the commercial impression of the mark FLIP EYEWEAR is similar to that of the
mark FLIP-FOCALS; a prospective consumer may mistakenly believe that the
goods sold under the mark FLIP-FOCALS represent a line of glasses, within the
FLIP EYEWEAR collection, specifically designed for bifocals or trifocals. With
respect to the mark FLIP8, the word “flip” represents four of the five characters
making up the mark, and appears as the first word in the composite mark. See
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.”). The mark is similar in both appearance
and pronunciation to applicant’s mark and the word “flip” has the same meaning in
Serial No. 85475145

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both marks. Finally, we find that the mark easyflip is also dominated by the term
“flip” and creates a similar commercial impression to applicant’s mark. Despite the
position of the word “easy” as the first term in the cited mark, it merely modifies
“flip” and will thus make less of an impression on consumers. Consumers would
likely believe that the cited mark describes a desirable feature of a single product
line within applicant’s “Flip eyewear.”
Although all of the cited marks contain suggestive elements, it is established
that “suggestive marks are still entitled to protection against the registration of
very similar marks for identical goods, as is the case here.” See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). When
used in connection with its eyewear, applicant’s mark engenders substantially the
same overall commercial impression as each of the registrants’ marks for eyewear.
Prospective buyers, acquainted with these third-party marks, might well view
applicant’s FLIP EYEWEAR as an overarching house mark for their products.
Confusion as to the source or sponsorship of such goods, when marketed under the
respective marks, is therefore likely to occur.
Accordingly, this du Pont factor also weighs in favor of a finding of likelihood
of confusion.
C. Balancing the factors.
In view of the fact that the goods are legally identical and the cited marks are
each similar to applicant’s mark, and while distinguishable from each other are not
distinguishable from applicant’s mark, we find that applicant’s registration of the
Serial No. 85475145

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mark FLIP EYEWEAR is likely to cause confusion among relevant purchasers.
Decision: The refusal to register applicant’s mark FLIP EYEWEAR is
affirmed.