Equity IP Holdings, LLC

Trademark Trial and Appeal Board

Oct 13, 2015

No. 85752736 (T.T.A.B. Oct. 13, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Equity IP Holdings, LLC.
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Serial No. 85752736
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Colin P. Abrahams of Law Office of Colin P. Abrahams,
for Equity IP Holdings, LLC.
Julie Watson, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Kuhlke, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Equity IP Holdings, LLC (“Applicant”) seeks registration on the Principal
Register of the mark FLEXIGLASS (in standard characters) for the following goods
in International Class 9:
Optical lenses, eyeglasses and sunglasses all made of
flexible glass or plastic; glass covering and covering
protection for electronic devices made of flexible glass or
plastic, namely, mobile devices and handheld computer
equipment.1

1 Application Serial No. 85752736 was filed on October 12, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that Applicant’s mark is merely descriptive of Applicant’s identified goods. The
Examining Attorney also refused registration because the wording in the
identification of goods is indefinite.
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.
Identification of Goods
We consider first the Examining Attorney’s partial rejection of Applicant’s last
proposed amendment to the identification of goods. By way of background, the
original identification of goods read as follows:
Flexible glass or plastic, optical lenses, eyeglasses and
sunglasses; glass covering and covering protection for
electronic devices including mobile devices and handheld
computer equipment.
In the first Office action, the Examining Attorney found the identification to be
indefinite and required further specificity. She requested more information about
the nature of “flexible glass or plastic” and suggested replacing the word “including”
with the word “namely.” In the August 12, 2013 Response, Applicant provided
information about the nature of the goods “flexible glass or plastic” and proposed
the following identification:

Trademark Act. The identification of goods reflects Applicant’s proffered amendment in its
February 14, 2014 Response.

Serial No. 85752736
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Flexible glass or plastic, optical lenses, eyeglasses and
sunglasses; glass covering and covering protection for
electronic devices, namely, mobile devices and handheld
computer equipment.
The Examining Attorney refused the amendment because “flexible glass or
plastic” remained too broad and could include goods in other classes. She offered the
following suggestion:
Optical lenses, eyeglasses and sunglasses all made of
flexible glass or plastic; glass covering and covering
protection for electronic devices made of flexible glass or
plastic, namely, mobile devices and handheld computer
equipment.
In the February 14, 2014 Response Applicant amended the identification of
goods to the suggested identification set out above. However, on March 6, 2014, the
Examining Attorney refused the amendment because it remained too broad
inasmuch as “mobile devices” could include electronic devices in other classes, e.g.,
“handheld units for playing electronic games” and the proper International Class for
protection covers for electronic games is International Class 28.
Finally, in the Request for Reconsideration, Applicant sought to amend the
identification to the following:
Optical lenses, eyeglasses and sunglasses all made of
flexible glass or plastic; glass covering and covering
protection for electronic devices made of flexible glass or
plastic, namely, mobile phones, tablets, and handheld
computer equipment; cleaning material and solutions for
optical equipment.
The Examining Attorney did not accept this amendment because the wording
“cleaning material and solutions for optical equipment” is outside the scope of the
Serial No. 85752736
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original and previous amendments to the identification of goods. She suggested the
following:
Optical lenses, eyeglasses and sunglasses all made of
flexible glass or plastic; glass covering and covering
protection for electronic devices made of flexible glass or
plastic, namely, mobile phones, tablets, and handheld
computer equipment.
Under Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), an “applicant may amend
the application to clarify or limit, but not to broaden, the identification of goods
and/or services….” The scope of the identification of goods or services is determined
by the ordinary meaning of the wording. See TMEP § 1402.07(a) (July 2015). Once
an applicant amends the identification of goods or services in a manner that is
acceptable to the examining attorney, the amendment replaces all previous
identifications and restricts the scope of the goods or services to that of the amended
language. TMEP § 1402.07(e).
It is clear from the ordinary meaning of the wording, “cleaning material and
solutions for optical equipment,” that these goods are outside the scope of any of the
previous identifications for products “made of flexible glass or plastic.” As such, this
part of the proposed amendment impermissibly broadens the identification of goods.
In view thereof, the Examining Attorney’s refusal to accept that portion of
proposed amendment is affirmed. Because the Examining Attorney specifically
refused to accept only the wording “cleaning material and solutions for optical
equipment,” the refusal was one “in part” and the remaining amendment was
accepted. See TMEP § 1402.07(d). The Examining Attorney made this clear when
she offered Applicant’s proposed amendment minus the impermissible wording as a
Serial No. 85752736
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suggested amendment. In view thereof, the Examining Attorney’s refusal to accept
the proposed amendment is affirmed and the operative identification of goods is the
accepted portion of the amendment, namely:
Optical lenses, eyeglasses and sunglasses all made of
flexible glass or plastic; glass covering and covering
protection for electronic devices made of flexible glass or
plastic, namely, mobile phones, tablets, and handheld
computer equipment.2
Mere Descriptiveness
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive of goods or services within the meaning of Section 2(e)(1)
“if it immediately conveys knowledge of a quality, feature, function, or characteristic
of the goods or services with which it is used.” In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004) (quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543
(1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of
the qualities, ingredients or characteristics of’ the goods or services related to the
mark.”)); In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015).

2 The electronic trademark file has been corrected to reflect the operative identification set
out above.
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The determination of whether a mark is merely descriptive must be made “in
relation to the goods [or services] for which registration is sought, the context in
which it is being used, and the possible significance that the term would have to the
average purchaser of the goods because of the manner of its use or intended use.”
Bayer Aktiengesellschaft, 82 USPQ2d at 1831 (citing In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). In other words, the question is not
whether someone presented only with the mark could guess the goods or services
listed in the identification of goods or services. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); Abcor Dev. Corp., 200
USPQ at 218. In addition, it is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the goods or services, only that it
describe a single, significant ingredient, quality, characteristic, function, feature,
purpose or use of the goods or services. Chamber of Commerce of the U.S., 102
USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987). Moreover, a descriptiveness refusal is proper with respect to all of the
identified goods or services in an International Class if the mark is descriptive of
any of the goods or services in that class. Chamber of Commerce of the U.S., 102
USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087,
1089 (Fed. Cir. 2005)).
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When two descriptive terms are combined, the determination of whether the
composite mark also has a descriptive significance turns on whether the
combination of terms evokes a new and unique commercial impression. “In
considering a mark as a whole, the Board may weigh the individual components of
the mark to determine the overall impression or the descriptiveness of the mark
and its various components.” Oppedahl & Larson LLP, 71 USPQ2d at 1372. The
mere combination of descriptive words does not necessarily create a nondescriptive
word or phrase. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); In
re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If the
combination retains the descriptive significance of the individual parts, it is itself
merely descriptive. In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB
2009) (BATTLECAM merely descriptive for computer game software). However, a
mark comprising a combination of merely descriptive components is registrable if
the combination of terms creates a unitary mark with a nondescriptive meaning, or
if the composite has a bizarre or incongruous meaning as applied to the goods or
services. See generally In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968). See also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983). “[I]f one
must exercise mature thought or follow a multi-stage reasoning process in order to
determine what product or service characteristics the term identifies, the term is
suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199
USPQ 496, 498 (TTAB 1978).

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Applicant’s Arguments
Applicant argues that FLEXIGLASS is “a newly coined single word which in and
of itself has no specific meaning and no dictionary definition, as far as applicant can
determine.” App. Br., 7 TTABVUE 4. However, the fact that Applicant may be the
first and only one to use the term does not justify registration if the only
significance conveyed by the term is merely descriptive. See In re Nat’l Shooting
Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). In addition, the fact
that a term is not found in a dictionary is not controlling on the question of
registrability. See In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977). In
addition, Applicant’s argument that the term FLEXIGLASS “may relate to many
different products, activities and industries” is misplaced as we must make our
analysis based on the meaning of the term specifically in the context of the applied-
for goods. Bayer Aktiengesellschaft, 82 USPQ2d at 1831.
Applicant also takes exception to the record evidence stating that while “there
are plenty references to ‘flexible glass’ … there are no entries for the exact
trademark or anything similar thereto.” App. Br., 7 TTABVUE 5. However, as
discussed below, evidence for the word “flexible” is relevant to the analysis. Finally,
Applicant asserts that the “combined contraction and word of the mark in its
totality are inherently incongruous and indefinite in meaning, especially since glass
is generally considered to be a brittle and non-flexible material.” Id. Applicant
argues that “the term ‘FLEXIGLASS’ requires mature thought or multistage
reasoning for a reasonable person to arrive at the conclusion that product[s] such as
Serial No. 85752736
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lenses and eyeglasses are being described. …[and the] mental leap from
‘FLEXIGLASS’ to eyeglasses etc. is far from instantaneous, and unlikely to be even
connected at all by a typical consumer or the relevant buying public.” 7 TTABVUE
7-8.
Analysis
In this case, the combined terms are “FLEXI” and “GLASS.” “GLASS” is, on its
face, at minimum, merely descriptive of goods made from glass. “FLEXI” is an
abbreviation for the word “flexible.” Recognized abbreviations for merely descriptive
words may also be merely descriptive. In re Thomas Nelson Inc., 97 USPQ2d 1712,
1715 (TTAB 2011) (citing Foremost Dairies, Inc. v. The Borden Company, 156 USPQ
153,154 (TTAB 1967)). However, “as a general rule, initials [or abbreviations]
cannot be considered descriptive unless they have become so generally understood
as representing descriptive words as to be accepted as substantially synonymous
therewith.” Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293,
295 (CCPA 1956). Therefore, we must determine if FLEXI is a recognized
abbreviation of the word “flexible” and if the purchasing public would understand
FLEXI, in the context of Applicant’s various goods made of flexible glass, to describe
a feature of the goods, i.e., be substantially synonymous with the term “flexible.”
The test has been set out as comprising three parts:
(1) is the applied-for mark (or a portion thereof) an
abbreviation, initialism, or acronym for specific wording;
(2) is the specific wording merely descriptive of applicant’s
goods or services; and
Serial No. 85752736
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(3) would a relevant consumer viewing the abbreviation,
initialism, or acronym in connection with applicant’s
goods or services recognize it as an abbreviation,
initialism, or acronym of the merely descriptive wording
that it represents.
See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (TTAB 2011).
Is FLEXI an abbreviation for “Flexible”?
The Examining Attorney submitted entries from various online references that
identify FLEXI as a prefix or combining form meaning “flexible,” as set forth below:
Flexi- or flex- pref. Flexible: flexitime;3
Flex- a combining form representing flexible in compound
words: flextime. Also, flexi-;4
Flexi- or flex- pref. Flexible: flexitime [from flexible];5
Accordingly we find that “FLEXI” when used in connection with Applicant’s
goods made of “flexible glass” is an abbreviation of “flexible” in the form of a prefix.
Is “Flexible” merely descriptive of Applicant’s goods?
Applicant’s goods are “made of flexible glass.” There can be no question that the
word “flexible” is merely descriptive of a significant feature of Applicant’s “flexible
glass.” The evidence of record provides further support for this finding. For
example, the Corning website discusses a new product that is “new, ultra – slim
flexible glass [that] will also help develop conformable (curved) displays for

3 Yahoo Education (http://education.yahoo.com/reference/dictionary), March 6, 2014 Office
action, TSDR p. 2.
4 Dictionary.com based on Random House Dictionary (2014)
(http://dictionary.reference.com), Id., TSDR p. 3.
5 The Free Dictionary based on The American Heritage Dictionary of the English Language
(4th ed. 2009) (http://www.thefreedictionary.com), Id., TSDR p. 5.
Serial No. 85752736
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immersive viewing or mounting on non-flat surfaces.”6 The MIT Technology Review
includes an article on Corning’s glass product titled “Flexible Glass Could Make
Tablets Lighter and Solar Power Cheaper.”7 The Schott website provides
information on a new product described as “ultra-thin glass” that is “not just
flexible, but even rollable.”8
Would relevant consumers viewing FLEXI in connection with goods made
of flexible glass recognize it as an abbreviation of the term “Flexible”?

As discussed above “FLEXI” is an abbreviation for “Flexible” to be used as a
prefix. Thus, FLEXI, appearing as a prefix in the term FLEXIGLASS, would be
perceived by the relevant consumer to be “substantially synonymous” with the word
“flexible” when purchasing goods made of “flexible glass.”
In view thereof, the term FLEXIGLASS in its entirety would be perceived as
“flexible glass.” This combination, far from being unique or incongruous, employs
the prefix “flexi” in an ordinary way to indicate the type of glass, i.e., flexible glass
or more succinctly flexiglass. No imagination or “mature thought” is needed to
immediately understand that FLEXIGLASS describes a significant feature of the
product, namely that it is made of flexible glass.

6 Corning (www.corning.com), Id., TSDR p. 7.
7 MIT Technology Review (http://www.technologyreview.com), Id., TSDR p. 8.
8 Schott (http://www.us.schott.com), Id., TSDR p. 14.
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Applicant correctly notes that any doubt on the question of mere descriptiveness
must be resolved in favor of Applicant. In re Intelligent Medical Systems Inc., 5
USPQ2d 1674, 1676 (TTAB 1987). We have no such doubt in this case.9
Decision: The refusal to register Applicant’s mark FLEXIGLASS is affirmed.

9 Applicant’s request to remand the application, in the event the Board affirmed the refusal,
“so that applicant may possibly amend this application to the Supplemental Register upon
commencement of use of the trademark” is denied. An application that has been considered
and decided on appeal may not be reopened by the Board except for the entry of a
disclaimer. Trademark Rule 2.142(g). See also In re Phillips-Van Heusen Corp., 63 USPQ2d
1047, 1048 n.2 (TTAB 2002) (request in applicant’s brief that if the refusals are maintained
the application be amended to the Supplemental Register denied because application which
has been decided on appeal will not be reopened); TBMP § 1218 (June 2015).