ETA Fabrique d'Ebauches, S.A.v.TCJC

Trademark Trial and Appeal Board

Sep 24, 2002

No. 91104498 (T.T.A.B. Sep. 24, 2002)

Mailed: September 24, 2002
Paper No. 33
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
ETA Fabrique d’Ebauches, S.A.
v.
TCJC, Inc.
_______
Opposition No. 104,498
to Application No. 74/655,295
filed on March 31, 1995
_______
Jess M. Collen, Esq. for ETA Fabrique d’Ebauches, S.A.
Gregory J. Battersby and Joanne A. Romantello of Grimes &
Batterby for TCJC, Inc.
_______
Before Cissel, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
ETA Fabrique d’Ebauches, S.A. filed its opposition to
the application of TCJC, Inc. to register the mark FLIP
WATCH for “clocks, travel alarm clocks, wristwatches, pocket
watches and pendant watches,” in International Class 14.1

1 Application Serial No. 74/655,295, filed March 31, 1995, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 104,498
2
The application includes a disclaimer of WATCH apart from
the mark as a whole.
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to the goods specified in the
application, so resembles opposer’s previously used and
registered mark FLIK FLAK, in the format shown below,
for “watches, watch cases, watch dials, watch straps, and
parts therefor”2 as to be likely to cause confusion, under
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d); and,
alternatively, under Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), that applicant’s mark is merely
descriptive and has not acquired distinctiveness in
connection with its goods, which opposer alleges are watches
that flip from one side to another, permitting one watch to
have two different faces.
Applicant, in its answer, denied the salient
allegations of the claim; admitted that its mark has not
acquired distinctiveness; asserted affirmatively that there
is no likelihood of confusion; and that the marks have
significantly different commercial impressions.

2 Registration No. 1,504,800, issued September 20, 1988, in
International Class 14. Sections 8 and 15 affidavits accepted and
acknowledged, respectively.
Opposition No. 104,498
3
Only opposer filed evidence in this case. The record
consists of the pleadings; the file of the involved
application; third-party registrations of marks containing
the word “flip”; printouts of excerpts from various Internet
web sites; and dictionary definitions of “flip,” made of
record by opposer by notices of reliance.3 Only opposer
filed a brief on the case and an oral hearing was not
requested.
In its brief, opposer makes statements about itself and
the nature of its business and products. Opposer also makes
statements in its brief about the nature of the goods set
for in the opposed application. However, opposer submitted
no evidence during trial that is probative of, or
establishes, any of these statements or any of the
allegations made in its notice of opposition.
While opposer sufficiently pleaded standing, opposer
has not established its standing, i.e., it has not
demonstrated a real interest and a reasonable basis for its
belief that it will be damaged. See Richie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Opposer did not
even put a status and title copy of its registration in the
record.
Even if opposer had established standing, opposer has
not established its rights in any mark for any goods. Thus,

3 Evidence submitted by opposer or applicant in connection with motions
Opposition No. 104,498
4
opposer has not established any basis for its claim of
likelihood of confusion. Nor has opposer supported its
alternative claim that applicant’s mark is merely
descriptive. The evidence submitted is insufficient to
warrant the conclusion that FLIP WATCH is merely descriptive
in connection with the identified goods.
Decision: The opposition is dismissed.

in this case does not form part of the record for trial.