THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
April 14, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lee Serota
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Serial No. 85635725
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Jason R. Lee of Lee, Lee & Associates, P.C. for Lee Serota.
N. Gretchen Ulrich, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
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Before Greenbaum, Adlin and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Lee Serota (“Applicant”), an individual, applied to register on the Supplemental
Register the mark VIRTUAL GOGGLES in standard character form for the
following goods:
Wearable personal multimedia viewing device in the
nature of optical glasses for multimedia viewing; wearable
personal entertainment device in the nature of optical
glasses for multimedia viewing; wearable personal
multimedia device with display screens and audio
speakers in the nature of optical glasses for multimedia
viewing with attached audio speakers; goggles with
multimedia display screens in the nature of optical
goggles for multimedia viewing; head worn personal
multimedia viewing device in the nature of optical goggles
Serial No. 85635725
2
for multimedia viewing; head mounted personal
multimedia display screen in the nature of optical glasses
for multimedia viewing; personal multimedia viewing
device in the nature of optical glasses for multimedia
viewing, in International Class 9.1
Applicant originally requested registration on the Principal Register, but the
Examining Attorney refused registration under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark merely describes
the goods. When Applicant amended the application to seek registration on the
Supplemental Register, the Examining Attorney again refused registration, this
time under Section 23(c), 15 U.S.C. § 1091(c), on the ground that Applicant’s mark
is generic as applied to the goods and is incapable of distinguishing them. When the
Examining Attorney made the refusal final, Applicant appealed and Applicant and
the Examining Attorney filed briefs.
Although Applicant states in his brief that the issue on appeal is whether
Applicant’s mark is merely descriptive of the goods, the only question before the
Board is whether Applicant’s mark is the generic name of the goods.2
A mark is generic if it refers to the class or category of goods or services on or in
connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d
1 Application Serial No. 85635725 was filed on May 25, 2012 under Trademark Act § 1(b),
15 U.S.C. § 1051(b). On February 27, 2014, Applicant filed an Amendment to Allege Use
claiming first use and first use in commerce on February 21, 2014, and amended the
application to seek registration on the Supplemental Register.
2 Applicant’s amendment of his application to seek registration on the Supplemental
Register is an effective concession that his mark is merely descriptive. Quaker State Oil
Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363
(C.C.P.A. 1972) (“[W]hen appellant sought registration … on the Supplemental Register, it
admitted that the term was merely descriptive of its goods …”) We note also that during
prosecution, Applicant expressly stated, “Applicant agrees with the examining attorney
that the mark is descriptive in nature.” Response of July 18, 2014 at 10.
Serial No. 85635725
3
1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986) (“Marvin Ginn”). The test for determining whether a mark is generic is its
primary significance to the relevant public. In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and Marvin Ginn, supra. Making this
determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,
228 USPQ at 530. The examining attorney has the burden of establishing by clear
evidence that a mark is generic. In re Merrill Lynch, Pierce, Fenner and Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re American Fertility Society,
supra; and Magic Wand Inc., supra. “Doubt on the issue of genericness is resolved in
favor of the applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB
2005).
Our first task under Marvin Ginn is to determine, based on the evidence of record,
the genus of Applicant’s goods. Applicant’s identification of goods describes, in a
variety of ways, a “wearable personal multimedia viewing device in the nature of
optical glasses”; the identification sometimes describes them as “goggles” and as
“head worn” or “head mounted.” In patent materials, Applicant described his goods
as “A headset with adjustable display and integrated computing system” with
features including a screen, a communications system, a power source, and ear
Serial No. 85635725
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covers with speakers.3 His specimen of use shows the goods as follows:
The Examining Attorney characterizes the genus of the goods as “multimedia
viewing eyewear.”4 Based upon the evidence discussed above, we find that
characterization a fair one.
We next consider whether Applicant’s mark would be understood by the relevant
public primarily to refer to the genus of multimedia viewing eyewear. The
Examining Attorney has submitted evidence from online dictionaries indicating
that the following terms have the meanings set forth below:
virtual being on or simulated on a computer or computer network
… as a : occurring or existing primarily online b : of, relating to, or existing within a virtual
reality
5
of or relating to a computer technique by which a person,
wearing a headset or mask, has the experience of being in
an environment created by the computer, and of
interacting with and causing changes in it;6
Simulated; performing the functions of something that
isn’t really there.7
goggles an electronic apparatus that covers the eyes and is used
to enhance vision (as at night) or to produce images (as of
a virtual reality).8
The Examining Attorney argues as follows:
For a mark that is a generic “compound term,” that is a
combination of two or more words, the evidence of record
must show that each of the constituent words is generic,
and that each word retains its generic meaning when
combined such that the composite formed is generic and
does not create a different, non-generic meaning.
Examining Attorney’s brief, 6 TTABVUE 8, citing In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
The definitions supplied by the Examining Attorney show that the words
GOGGLES and VIRTUAL have meanings that are consistent with multimedia
viewing eyewear. Applicant’s goods are, indeed, GOGGLES in the sense that they
are “an electronic apparatus” that is placed over the eyes and is “used … to produce
5 Definition found at , submitted with Office Action of August 9,
2014 at 12.
6 Collins English Dictionary (10th ed. 2009), found at , submitted
with Office action of September 18, 2012 at 7.
7 The Free On-line Dictionary of Computing (2010), id. at 8.
8 , submitted with Office Action of August 9, 2014 at 9.
Serial No. 85635725
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images” because they are identified as “goggles with multimedia display screens in
the nature of optical goggles for multimedia viewing.” The word VIRTUAL also has
relevant meaning with respect to the goods, because virtual reality devices, which
simulate experiences by means of a computer, are, like Applicant’s goods, often
head-worn multimedia viewing devices that cover the eyes and use a computer to
produce images.
We must also consider the meaning of the phrase VIRTUAL GOGGLES as a
whole. With respect to marks consisting of a phrase, American Fertility Society,
supra, reaffirmed that the correct legal test for genericness is set forth in Marvin
Ginn, “requir[ing] evidence of … the understanding by the general public that the
mark refers primarily to ‘that genus of goods or services.’” The Court went on:
As the PTO produced no evidence at all of the public's
understanding of the phrase as it relates to the Society's
services, it clearly failed to carry its burden. The Board
cannot simply cite definitions and generic uses of the
constituent terms of a mark, or in this case, a phrase
within the mark, in lieu of conducting an inquiry into the
meaning of the disputed phrase as a whole to hold a mark,
or a phrase within in the mark, generic.
51 USPQ2d at 1837 (emphasis added).
The Examining Attorney has submitted evidence to show the public’s
understanding of the phrase VIRTUAL GOGGLES as a whole, as required by
Marvin Ginn and American Fertility. The evidence consists of Internet web pages
that use the phrase VIRTUAL GOGGLES to describe multimedia viewing eyewear,
often referred to as “virtual reality headsets.” We note in particular the following:
2014 may just be the year of virtual goggles. We already
know about Oculus Rift, but Avegant, makers of the
Serial No. 85635725
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intriguing virtual retinal display technology demoed
earlier this year, have unveiled Glyph, its own set of
consumer goggles … [T]he starting price for this funky
flip-down eye/headset is a lofty $499 …
What is a “virtual retinal display?” … [T]he technology
uses a micromirror array and a single LED to project 3D
images crisply, and for many prescriptions, without the
need to wear glasses. … The additional headphone
pairing is being optimized with noise-canceling [ ] … 9
Patients who undergo bone marrow biopsies likely wish
they were on a far away island rather than in the
procedure room during the biopsy.
Nurses at the University of Kansas Hospital’s bone
marrow transplant unit aim to give patients the
opportunity to feel like they are in an exotic, relaxing
location through virtual goggles.
Transplant coordinator Marcia Jacobson … conducted
research on patients who wore virtual goggles during
bone marrow biopsies.
The first phase of their study included 21 patients. All of
these patients had undergone a bone marrow biopsy
before and could compare their level of pain and stress
with and without the virtual goggles.10
During the planning process, we educate the patient in
the breathing technique, providing audible cues as well as
self-regulating feedback with virtual goggles.11
Norwegian army testing Oculus Rift virtual goggles
system for tank drivers.
The Norwegian army has announced that they have
begun testing the possibility of using the Oculus Rift
virtual goggle system in tanks to help expand the field
9 Office Action of August 9, 2014 at 16.
10 Id. at 35.
11 Id. at 37.
Serial No. 85635725
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of view for soldiers inside. The system being tested by the
army allows for 185 degrees of video feed on either side of
the tank, and drivers can also look straight down directly
in front of the tank to see what is being driven over.12
Virtual goggles create out-of-body sensations.13
1 Million Cups gets New York Times pub, virtual
goggles to experience “Game of Thrones.”
[T]he Wall Street Journal published an article on the
strangest tech to come out of the conference. Think virtual
reality goggles that let users experience what it would be
like to go up the wall at Castle Black in HBO’s “Game of
Thrones.”14
Real-World “Pac-Man” Replaces Joystick with Virtual
Goggles.15
An interesting new patent filing from Yahoo raises a
couple of interesting questions … It describes a wearable
computing device that could be used in many ways …
Something else that’s interesting is the apple on sidearm
of the virtual goggles above, which the patent filing
identifies as a visual power indicator.16
Interactive displays and demonstrations of gadgets like
virtual goggles that take visitors into outer space, 3-D
printers, and design-it-yourself lunar landing video
games.17
Lifehacker: Remains of the Day: DIY Virtual Goggles Edition.
DIY virtual reality goggles, Windows 7 in dominoes, and a
worst-case scenario for net neutrality.
12 Id. at 39.
13 Id. at 44.
14 Id. at 50
15 Id. at 54.
16 Id. at 58.
17 Id. at 63.
Serial No. 85635725
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[photo caption] DIY virtual reality glasses
Most of us don’t have augmented reality devices or similar
tools, but these DIY VR goggles seem like a fun way to
put yours to use if you do.18
Great video! I never would of [sic] thought that Jamie was
much of [a] gamer and that he created his own virtual
goggles.19
I am planning on purchasing a pair of virtual goggles
and the up periscope set sold by Caswell. … I was hoping
to hear from some who own or who have operated them.
…
Well, Damit [sic], you’re talking to someone who uses
those things. …
…
As you can see, … as long as its antenna is above water …
you can see all the action through the virtual goggles,
no sweat.20
Fatal Vision – virtual goggles that simulate the affects
[sic] of alcohol (Ages 5 and up).21
The Examining Attorney’s evidence, quoted above, shows use and understanding
of the phrase VIRTUAL GOGGLES by a very broad segment of the general public,
including ordinary consumers with an interest in playing multimedia computer
games; medical professionals; and military personnel. We find the evidence
sufficient to demonstrate that the relevant public understands the phrase
18 Id. at 66.
19 Id. at 72.
20 Office Action of October 18, 2012 at 9-10.
21 Id. at 16.
Serial No. 85635725
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VIRTUAL GOGGLES as referring to multimedia viewing eyewear, also known as
virtual reality goggles.
Applicant, in his brief, primarily argues that his proposed mark requires a
customer to “engage in additional thought and imagination to garner the meaning
of the mark,” and that the proposed mark, at best, conveys only “a general sense
that the goods are eyewear or goggles.”22 This argument, which addresses the
distinction between descriptive marks and suggestive marks, does not address the
refusal that is before us on appeal. The Examining Attorney’s final refusal is based
on Section 23 of the Trademark Act (that the proposed mark is the generic name for
the identified goods) rather than on Section 2(e)(1) of the Trademark Act (that the
proposed mark is merely descriptive of the identified goods). In any event, the
evidence of record does not support Applicant’s position. The evidence from
shows, for example, an online conversation in which the
phrase “virtual goggles” is used and is understood by others without explanation.
The evidence also shows many uses of the phrase in headlines, the purpose of which
is to immediately convey, in few words, the topic of a news article. We see in the
record no evidence indicating that people are puzzled by or do not understand the
meaning of the phrase, or that they ascribe to the phrase any meaning other than
that of virtual reality viewing devices or multimedia viewing eyewear. 23
22 Applicant’s brief, 4 TTABVUE 5.
23 In reviewing the Examining Attorney’s evidence, we have given no consideration to the
evidence from the following news outlets, because they appear to originate in foreign
countries and are not necessarily evidence of how customers in the United States would use
or understand the phrase “virtual goggles”: <3ddienas.lv> (Latvia);
Serial No. 85635725
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Having considered all of the evidence and arguments of record, including those
not expressly discussed herein, we find that Applicant’s proposed mark is a generic
term that is understood by the relevant public primarily to refer to multimedia
viewing eyewear. Accordingly, the proposed mark is not entitled to registration on
the Supplemental Register.
Decision: The refusal under Trademark Act Section 23(c) is AFFIRMED
and registration on the Supplemental Register is refused.
(Turkey); (Canada); (India). (Office Action of August 9,
2014.)
We also give no weight to the results of Google Image searches for the phrase “virtual
goggles.” (Office Action of September 18, 2012 at 14-22; Office Action of October 18, 2012 at
18-26.) There is no evidence that the Google algorithm would produce, in response to such a
search, only images of things that have been associated with the phrase “virtual goggles,”
and there is nothing in the images to indicate that the objects pictured were ever described
by anyone as “virtual goggles” or perceived by the relevant public as multimedia viewing
eyewear.
