Flipside Vision Ltd.

Trademark Trial and Appeal Board

Jun 6, 2008

No. 78896726 (T.T.A.B. Jun. 6, 2008)

Mailed: June 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Flipside Vision Ltd.
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Serial No. 78896726
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Andrew S. Ehard of Merchant & Gould P.C. for Flipside
Vision Ltd.

Karen Bracey, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Kuhlke, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Flipside Vision Ltd. to
register the mark shown below on the Principal Register for
the following goods, as amended: “Books, namely, anthology
of calendar page designs; photographs; posters; stationery;
postcards; greeting cards; diaries; desk diaries;
calendars” in International Class 16.1

1 Application Serial No. 78896726 was filed on May 31, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce on the goods. In addition, applicant
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78896726
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark FLIPSIDE, previously
registered on the Principal Register in typed or standard
character form for “greeting cards, calendars, gift wrap
paper, paper gift bags” in International Class 16,2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d

submitted the following color statement: “Color is not claimed
as a feature of the mark.”

2 Registration No. 2693852 issued on March 4, 2003.

Ser No. 78896726
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1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first du Pont factor is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods or services
offered under the respective marks is likely to result.
Ser No. 78896726
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The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). We further note that
under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. See Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In this case, applicant’s mark, FLIP SIDE and the
design of a split globe is similar to the registered mark
FLIPSIDE in that both contain wording that is identical in
appearance and sound. The mere presence of a space between
the words FLIP SIDE in applicant’s mark is insufficient to
create a commercial impression that is separate from the
words FLIPSIDE that comprise registrant’s mark. The
presence or absence of a space between virtually the same
words is not a significant difference. See Stockpot, Inc.
v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983),
aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There
is no question that the marks of the parties [STOCKPOT and
STOCK POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical”); and
In re Best Western Family Steak House, Inc., 222 USPQ 827,
Ser No. 78896726
5
827 (TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”).
In addition, applicant’s mark contains the design
element of a split globe. Applicant strenuously argues
that the presence of the design in its mark results in a
“highly distinctive composite” that is “very different in
appearance, meaning and overall commercial impression from
the cited mark” (brief, p. 6). However, the split globe
design, while visually prominent, is hardly the dominant
feature of applicant’s mark. The split globe is
approximately the same size as the wording FLIP SIDE in
applicant’s mark, and the wording and design are positioned
diagonally to each other such that the words respectively
appear above and below the split halves of the globe. Such
positioning of the split globe appears to visually
reinforce the wording FLIP SIDE. Indeed, it is impossible
to view the split globe design without also viewing the
words comprising the mark.
We find, therefore, that the words FLIP SIDE,
displayed in bold capital letters, is the most visually
prominent portion of applicant’s mark, and accordingly it
is entitled to more weight in our analysis. It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
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confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Further, when a mark
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
The presence of the design in applicant’s mark,
particularly inasmuch as it is inextricably entwined with
the words FLIP SIDE, is insufficient to create a commercial
impression that is separate from that of registrant’s
FLIPSIDE mark. We are not persuaded by applicant’s
argument that consumers will view its mark as meaning “flip
side of the world” such that it conveys a different meaning
from that of registrant’s mark. Applicant has presented no
evidence of consumer perception of its mark. Rather,
applicant submitted with its response to the examining
attorney’s first Office action printed screen shots from
third-party Internet web pages displaying the term “flip
side of the world” in connection with goods unrelated to
those in its application. Such evidence fails to support
Ser No. 78896726
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its rather speculative contention regarding the manner in
which consumers will perceive its applied-for mark in
connection with its recited goods.
Based upon the above analysis, we find that when the
marks FLIPSIDE and FLIP SIDE and split globe design are
viewed in their entireties, the similarities in appearance,
sound, connotation and commercial impression outweigh the
differences. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra.
The Goods
We next compare applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
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76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, the recitations of both applicant’s and
registrant’s goods include “greeting cards” and
“calendars.” Thus, the goods in the application and cited
registration are identical in part. In addition, we find
that applicant’s “books, namely, anthology of calendar page
designs” would appear on their face to be related to
“calendars” inasmuch as the former may be used to design or
decorate the latter. We are not persuaded by applicant’s
argument that because some of the identified goods are
different, confusion as to the source of those goods is
unlikely. The identity of “greeting cards” and “calendars”
is not lessened by the fact that applicant and registrant
offer additional paper products under their respective
marks.
Channels of Trade
We are not persuaded by applicant’s unsupported
argument that “the conditions surrounding the marketing of
the goods is not such that they would be encountered by the
same purchasers under circumstances that would give rise to
the mistaken belief that they come from a common source”
Ser No. 78896726
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(brief, p. 9). As noted above, we must look to the
identification of goods in the involved application and
cited registration to determine whether any recited
limitations in trade or marketing channels suggest that
such goods will be encountered by different consumers. See
Octocom Systems, Inc., supra; and Paula Payne Products,
supra. In this case, neither applicant’s nor registrant’s
identification of goods contains any limitations regarding
the channels of trade therefor or the consumers to whom the
goods are marketed. Accordingly, both applicant’s and
registrant’s goods are presumed to be suitable for any use
that is normal therefor, and also to move in all normal
channels of trade and be available to all classes of
potential consumers. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Strength of the Registered Mark
Finally, applicant, with its response to the first
Office action, submitted copies of third-party
registrations from the United States Patent and Trademark
Office’s Trademark Electronic Search System (TESS) search
engine for various FLIPSIDE marks. Applicant argues that
these registrations illustrate “that consumers are used to
seeing this wording used in the marketplace by unrelated
parties, and that small differences between the marks, the
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goods and services, or the channels of trade through which
they travel are sufficient to avoid a likelihood of
confusion” (brief, p. 10). In this case, and as discussed
above, applicant’s goods are identical in part to those of
registrant and are presumed to move in the same channels of
trade. Further, applicant’s evidence of third-party
registrations is entitled to limited probative value.3 The
registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Moreover,
the probative value of the third-party registrations is
significantly diminished by virtue of the fact that the
trademarks cover a wide variety of goods and services
(including manipulable puzzles, retail clothing stores,

3 Applicant has included several marks that have not registered.
These applications are irrelevant. See In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While applicant
also submitted a copy of a third-party application …, such has no
probative value other than as evidence that the application was
filed”); and Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5
(TTAB 1981) (“Introduction of the record of a pending application
is competent to prove only the filing thereof”). See also
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ
1090, 1092 n.5 (TTAB 1979).

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video projection screens, and self-mounting desktop
organizers), none of which are related to the types of
goods involved herein. See Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d
unpub., (Appeal No. 92-1086, Fed. Cir., June 5, 1992). In
any event, even if we were to find, based on applicant’s
evidence, that registrant’s mark is weak and entitled to a
narrow scope of protection, the scope is still broad enough
to prevent the registration of a highly similar mark for
goods that are identical in part. See In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal of registration is affirmed.