Lens.com, Inc.

Trademark Trial and Appeal Board

Apr 17, 2007

No. 78076812 (T.T.A.B. Apr. 17, 2007)

Mailed: April 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lens.com, Inc.
________

Serial No. 78076812
_______

Anthony DeGidio of Law Office of Anthony DeGidio for
Lens.com., Inc.

Kimberly Boulware Perry,1 Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Hairston, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Lens.com, Inc. has applied to register the mark LENS
in standard character form on the Principal Register for
“retail store services featuring contact eyewear products
rendered via a global computer network.”2

1 The above application originally was examined by another
examining attorney.

2 Application Serial No. 78076812 was filed August 1, 2001, based
upon applicant’s assertion of May 1, 1995 as the date of first
use of the mark anywhere and in commerce in connection with the
services. Applicant subsequently amended the application to seek
registration under Trademark Act Section 2(f).

THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78076812
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s services. In response, applicant
argued that its mark is suggestive, and in the alternative,
amended its application to seek registration under
Trademark Act Section 2(f). The examining attorney then
refused registration under Trademark Act Section 2(e)(1) on
the ground that the mark is generic.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that its LENS mark is suggestive of
the services recited in its challenged application.
Applicant argues in the alternative that its mark has
acquired distinctiveness as used in connection with its
services. Finally, applicant argues that the examining
attorney failed to provide sufficient support for her
argument that LENS is generic for applicant’s services.
The examining attorney argues that LENS merely
describes a function, feature, quality or use of
applicant’s services. The examining attorney further
argues that “LENS also identifies the generic designation
of the goods featured in the retail services at issue”
(brief, p.7). The examining attorney argues that, as a
Ser No. 78076812
3
result, the designation is incapable of acquiring
distinctiveness and is unregistrable under Trademark Act
Section 2(f).
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that the examining attorney has submitted several
exhibits with her brief. These exhibits consist of printed
copies of search summaries and results from the examining
attorney’s search by Internet search engines and web sites.
We note that some of the printouts are substantially
similar to material previously made of record by the
examining attorney. Nonetheless, we find that to the
extent they differ from the materials properly made of
record, the exhibits submitted with her brief are untimely,
and they have not been considered. See Trademark Rule
2.142(d) (the record in the application should be complete
prior to the filing of an appeal). In addition, the
examining attorney submitted additional definitions of
“lens” in her brief on appeal. Although these definitions
appear to be cumulative of the definition previously made
of record, we will exercise our discretion to take judicial
notice of them. The Board may take judicial notice of
dictionary definitions. See University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
Ser No. 78076812
4
(TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Issues on Appeal
The issues on appeal are (1) whether the term LENS is
generic for applicant's services; and, alternatively (2) if
such term is not generic, whether it is merely descriptive
thereof; and, if so, (3) whether it has acquired
distinctiveness.
Genericness
A term is generic and not a mark if it refers to the
class, genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 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). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also 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 H. Marvin Ginn Corp., supra. The examining attorney
has the burden of establishing by clear evidence that a
mark is generic and thus unregistrable. See In re Merrill
Ser No. 78076812
5
Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987). Evidence of the relevant
public’s understanding of a term may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
In this case, the examining attorney has submitted the
following definition of “lens”:
a ground or molded piece of glass, plastic, or
other transparent material with opposite surfaces
either or both of which are curved, by means of
which light rays are refracted so that they
converge or diverge to form an image;

and the following definition of “contact lens”:
a thin lens designed to fit over the cornea, and
usually worn to correct defects in vision.3

In addition, we take judicial notice of the following
definition of “eyewear”:
any of various devices, as spectacles, contact
lenses, or goggles, for aiding the vision or
protecting the eyes.4

We further take judicial notice of the following definition
in which “lens” is defined, inter alia, as follows:

3 The examining attorney relies upon dictionary.reference.com and
www.m-w.com for these definitions.

4 The Random House Unabridged Dictionary (Random House, Inc.,
2006).

Ser No. 78076812
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short for CONTACT LENS.5
See University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., supra.
The examining attorney further has submitted evidence
from commercial Internet websites indicating that the term
“lens(es)” is used to refer to contact lenses. See, for
example (emphasis added):

The Contact Lens Store
Your Online Discount Source for Contact Lenses

Browse by Lens
Disposable
Daily Wear
Extended Wear
Colored Lenses
Toric Lenses
(www.contactlensstore.com)

The Highest Quality Lenses – 1-800-CONTACTS
customers receive the exact same contact lenses
as they do from their eye care provider,
including all of the major brands…as well as
hard-to-find specialty lenses such as toric
contact lenses, colored contacts, bifocal
contacts and multifocal lenses.
(www.1800contacts.com)

Contact Lens
Product Locator
Accessories
Bifocal
Daily Wear

5 New Oxford American Dictionary, (2d ed. 2005).
Ser No. 78076812
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Disposable Lenses
Gas Permeable Lenses
Reading Glasses
Solutions
Sunglasses
Tinted
Toric
(www.parknicollet.com)

Xpress deluxe.com
Top online Contact Lens stores
Top Brands…
Categories…
Most Popular Lenses…
(www.xpressdeluxe.com)

The evidence of record thus supports a finding that the
term “lens” is used as shorthand for “contact lens.”
The determination of whether a term is generic
involves a two-part inquiry: First, what is the category
or class of the goods or services at issue? Second, is the
term sought to be registered understood by the relevant
public primarily to refer to that category of goods or
services? See H. Marvin Ginn Corp., supra. With respect
to the first part of the genericness inquiry, we find based
upon the above evidence that the class or category of
services at issue here is that of retail Internet store
services featuring contact lenses. Indeed, we note that
applicant’s substitute specimens, consisting of a
“screenshot” from applicant’s Internet website, indicates
that applicant sells contact lenses. We next turn to the
Ser No. 78076812
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second step of the Ginn inquiry, that is, whether the
relevant public understands the term LENS to refer to that
category of services. We find that the term is so
understood.
Because “lens” is a name for the contact eyewear which
comprises the subject matter of applicant's services, the
term is likewise a generic name for the retail Internet
store services themselves. See In re Candy Bouquet
International, Inc., 73 USPQ2d 1883 (TTAB 2004) [because
CANDY BOUQUET is generic for gift packages of candy, it
also is generic for applicant's retail, mail and computer
ordering services therefor]; In re A La Vieille Russie
Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIANART generic for
particular field or type of art and also for dealership
services directed to that field]; In re Log Cabin Homes
Ltd., 52 USPQ2d 1206 (TTAB 1999) [because LOG CABIN HOMES
is generic for a particular type of building, it is also
generic for architectural design services directed to that
type of building, and for retail outlets featuring kits for
construction of that type of building]; In re Web
Communications, 49 USPQ2d 1478 (TTAB 1998) [because WEB
COMMUNICATIONS is generic for publication and communication
via the World Wide Web, it is also generic for consulting
services directed to assisting customers in setting up
Ser No. 78076812
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their own Web sites for such publication and
communication); and In re Harcourt Brace Jovanovich, Inc.,
222 USPQ 820 (TTAB 1984) [LAW & BUSINESS incapable of
distinguishing applicant's services of arranging and
conducting seminars in the field of business law].
The mere fact that “lens” may have other meanings in
connection with other goods or services does not diminish
the genericness of the term as defined in connection with
applicant’s services. Those wishing to provide retail
services via the Internet involving lenses would need to
use, and are entitled to use, the generic term “lens” in
connection with such services.
In the present case, although the recitation of
services does not specifically use the term “lens,” we have
found based upon the evidence of record that the "contact
eyewear products" listed in the present application
encompass the more specific term “lens.” And, if
applicant's mark LENS is generic as to part of the services
applicant offers under its mark, the mark is unregistrable.
See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB
1988), aff'd without pub. op., 871 F.2d 1097, 10 USPQ2d
1879 (Fed. Cir. 1989); and In re Allen Electric and
Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972)
[genericness is determined on the basis of the goods and/or
Ser No. 78076812
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services identified in the involved application].
Applicant's ownership by assignment of the previously
issued Registration No. 21753346 for LENS for “computer
software featuring programs used for electronic ordering of
contact lenses in the field of ophthalmology, optometry and
opticianry" does not compel a different result herein,
particularly given the obvious distinctions between the
goods identified in that registration and the services
recited in the application at issue herein. Furthermore,
while uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to
determine, based on the record before us, whether
applicant's particular mark sought to be registered here is
generic. As is often stated, each case must be decided on
its own merits. See, e.g., In re Best Software Inc., 58
USPQ2d 1314 (TTAB 2001). Neither the current examining
attorney nor the Board is bound by the prior action of the
examining attorney who examined the earlier-filed
application, now registration. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
["Even if some prior registrations had some characteristics

6 Assignment of this registration to applicant pursuant to
settlement of Cancellation No. 92032926 was recorded on May 1,
2003 with the Assignment Branch of the United States Patent and
Trademark Office at Reel 2722/Frame 0851.

Ser No. 78076812
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similar to [applicant's] application, the PTO's allowance
of such prior registrations does not bind the Board or this
court."].
In short, the proposed mark is a common designation
used in the industry to identify retail services in the
field of contact eyewear. The designation LENS is generic
and does not and could not function as a service mark to
distinguish applicant's services from those of other
contact eyewear providers and serve as an indication of
origin. The designation sought to be registered should not
be subject to exclusive appropriation, but rather should
remain free for others in the industry to use in connection
with their contact eyewear services. See In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Therefore, we conclude that the examining attorney has
met the substantial burden of establishing that LENS is
incapable of identifying and distinguishing the source of
the identified services.
Mere Descriptiveness
Implicit in our holding that the evidence before us
establishes that LENS is generic for applicant’s services
is a holding that LENS is at least merely descriptive of
applicant’s services under Section 2(e)(1). “The generic
Ser No. 78076812
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name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn Corp., supra, at 530.
Acquired Distinctiveness
In finding that the designation LENS is incapable of
being a source identifier for applicant's services, we have
considered, of course, all of the evidence touching on the
public perception of this designation, including the
evidence of acquired distinctiveness. As to acquired
distinctiveness, applicant has the burden to establish a
prima facie case of acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Applicant submitted the declaration under Trademark
Rule 2.20 of Cary Samourkachian, its President, stating the
following:
(1) applicant owns prior Registration No. 2175334 for
the mark LENS for “computer software featuring programs
used for electronic ordering of contact lenses in the field
of ophthalmology, optometry and opticianry” in Class 9;
(2) applicant has made substantially exclusive and
continuous use of LENS in commerce in connection with the
goods and services provided by applicant for over five
years prior to the date upon which the claim of
distinctiveness is made; and
Ser No. 78076812
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(3) applicant provides its goods and services in over
30 countries, applicant’s sales in 2004 will exceed
$4,000,000, since 1995 applicant has developed a customer
file of over 130,000 customers, applicant expends
“significant resources” to promote its LENS mark through
Internet advertisements in the US and foreign commerce, and
applicant has expended over $1,400,000 since 1998 on
advertising through various Internet search engines.
Applicant's long use and revenues suggest that
applicant has enjoyed a degree of business success.
Nonetheless, this evidence demonstrates only the popularity
of applicant's services, not that the relevant customers of
such services have come to view the designation LENS as
applicant's source-identifying service mark. See In re
Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d
1275 (TTAB 1997). The issue here is the achievement of
distinctiveness, and the evidence falls far short of
establishing this. Notably, applicant's evidence fails to
indicate whether its advertising and sales figures are
related to its LENS designation, or other designations such
as its name, LENS.COM. Of equal significance, the record
is completely devoid of direct evidence that the relevant
classes of purchasers of applicant's services view LENS as
Ser No. 78076812
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a distinctive source indicator for applicant's services.
Accordingly, even if the designation LENS were found to be
not generic, but merely descriptive, given the highly
descriptive nature of the designation LENS, we would need
to see a great deal more evidence (especially in the form
of direct evidence from customers) than what applicant has
submitted in order to find that the designation has become
distinctive of applicant's services. That is to say, the
greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. See Yamaha Int'l. Corp. v. Hoshino Gakki
Co., supra; and In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., supra. The sufficiency of the evidence
offered to prove secondary meaning should be evaluated in
light of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
evidence of secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the proposed mark is generic is
affirmed; the refusal under Section 2(e)(1) of the Act on
Ser No. 78076812
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the ground that the mark is merely descriptive and the
Section 2(f) showing is insufficient is likewise affirmed.