Loops, LLC

Trademark Trial and Appeal Board

Aug 21, 2013

No. 85203745 (T.T.A.B. Aug. 21, 2013)

Mailed:
August 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Loops, LLC
________

Serial No. 85203745
_______

Timothy W. Fitzwilliam of Lewis Kohn & Fitzwilliam LLP for
Loops, LLC.

Lief Martin, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Seeherman, Zervas and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Loops, LLC has appealed from the final refusal of the
trademark examining attorney to register FLOSS LOOPS, in
standard characters, for dental floss.1 As part of its
initial application papers, applicant claimed acquired
distinctiveness pursuant to Section 2(f), asserting that
“the mark has become distinctive of the goods/services

1 Application Serial No. 85203745, filed December 22, 2010, and
claiming first use and first use in commerce as early as July 1,
1996.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85203745
2
through the applicant’s substantially exclusive and
continuous use in commerce for at least the five years
immediately before the date of this statement.”
Subsequently applicant amended its Section 2(f) claim, to
assert acquired distinctiveness for the word LOOPS in its
mark. This triggered a requirement that applicant submit a
disclaimer of exclusive rights to the word FLOSS, which
applicant provided.
Registration has been refused pursuant to 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
its identified goods, and that applicant’s evidence is
insufficient to show that its mark has acquired
distinctiveness and is therefore registrable pursuant to
the provisions of Section 2(f).
The appeal has been fully briefed.2
Because applicant seeks registration pursuant to
Section 2(f), we must treat the mark as not being
inherently distinctive, i.e., without proof of acquired
distinctiveness, it is merely descriptive. See Yamaha

2 At the end of its reply brief applicant states that its mark
is entitled to registration on the Supplemental Register.
Applicant did not amend its application to the Supplemental
Register, or seek registration on that register in the
alternative. Therefore, the question of whether or not
applicant’s mark is registrable on the Supplemental Register is
not before us.
Ser. No. 85203745
3
Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an
applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact.”)
The burden is on applicant to show that its applied-for
mark has acquired distinctiveness as an indicator of
source.3 The question for us to determine, then, is whether
applicant has demonstrated that its mark, and specifically
the term LOOPS as used in its mark, has acquired
distinctiveness for its goods. To determine this, we must
first consider the degree of descriptiveness of FLOSS
LOOPS, since the greater the degree of descriptiveness the
term has, the heavier the burden to prove it has attained
secondary meaning. Id., 6 USPQ2d at 1008.
The examining attorney has submitted as evidence of
descriptiveness various dictionary definitions of “loop”
and “floss,” including definitions from the Encarta World

3 In its main brief, and again in its reply brief, applicant has
made some comments that its mark is inherently distinctive, and
takes issue with the examining attorney’s position and evidence
that it is merely descriptive. We reiterate that it is not the
examining attorney’s burden to show the descriptiveness of
applicant’s mark since applicant has admitted such
descriptiveness by seeking registration pursuant to Section 2(f);
therefore, applicant’s statements that the mark “may reasonably
be deemed merely suggestive and not merely descriptive,” reply
brief, p. 8, have been given no consideration.

Ser. No. 85203745
4
Dictionary © 2009 of “loop” as “circle or oval: a circular
or oval shape formed by a line or something such as a piece
of string” and “floss” that states it is “same as dental
floss”; a copy of applicant’s registration for FLOSS LOOPS
in stylized form, , in which applicant disclaimed
the words FLOSS LOOPS;4 and internet evidence, including the
following:
Webpage from SWS Detention, using a heading
identifying goods as “Dental Floss-Floss Loops”
www.swsdetention.com5

Webpage from Patentstorm, headed “Dental floss
loop devices, and methods of manufacture and
packaging same,” which describes, in the
Abstract, “Dental floss loop devices are formed
by a pair of parallel floss strands extending
between and having their ends secured to a pair
of spaced apart gripping elements.”
www.patentstorm.us

Yahoo! Answers, in which a person asks about what
retainer to choose, stating “I’m tired of using
the floss loops to get around my braces.”
…

4 Registration No. 2439791. This registration was cancelled on
November 4, 2011 (after the examining attorney pointed out
applicant’s disclaimer), because of applicant’s failure to file a
Section 8 affidavit. Although this registration is now dead, and
therefore does not have the probative value of an active
registration, we can take note of the fact that applicant
disclaimed the words FLOSS LOOPS.
5 Applicant has pointed out that SWS Detention is an authorized
third-party dealer, and “all trademark usage therein [the
website] has been authorized” by applicant. This does not affect
the fact that the website uses the term “floss loops” in what
viewers would be perceived as the name of the goods, i.e., as a
category of “dental floss,” rather than as a trademark.
Ser. No. 85203745
5
“You have to use the floss loops, you have to
brush behind your teeth really good….”
http://answers.yahoo.com

Webpage from Iowa Department for the Blind,
regarding Threading a Needle
You can purchase self-threading needles…. You
can also use dental floss loops, which are
available at a drug store.
www.blind.state.ia.us

A directive from the Minnesota Department of
Corrections which lists items that indigent
offenders may receive free of change, and
includes as personal care items “toothbrush,
toothpaste, razor, comb, deodorant, soap,
shampoo, dental floss loops….”
www.doc.state.mn.us

In addition, the examining attorney has submitted
copies of patents which describe dental floss loops in
connection with flossing teeth. See, for example, Patent
No. 5,086,792, entitled “Dental floss loop devices, and
methods of manufacture and packaging same.”
The examining attorney also made of record a webpage
in which “floss loops” is used as a generic descriptor of
applicant’s own goods; the American Institutional Supply
webpage features applicant’s dental floss and describes it
as “Floss Loops 30 dental floss loops Sold by the Package.”
www.amerisup.com. Further, we note that applicant’s
specimen uses “floss loops” as the name of the product,
identifying the contents of the package as “30 Floss
Loops”:
Ser. No. 85203745
6

The foregoing evidence shows that “floss loops” is at
the very least a highly descriptive term for dental floss.6
Therefore, applicant has a heavy burden to demonstrate that
the mark, and more particularly the LOOPS portion of the
mark, has acquired distinctiveness, such that the mark as a
whole is registrable pursuant to Section 2(f).
In support of its claim that LOOPS has acquired
distinctiveness, applicant relies on its own registrations
that include the word LOOPS, use of “the LOOPS family of
trademarks,” its corporate existence under the name Loops
LLC since 1996, letters to retailers, advertising
brochures, trade show participation, sales, articles,
Master Product Lists from the Florida Department of

6 Although the examining attorney stated in an Office action
that he was not suggesting that applicant amend its application
to the Supplemental Register because the mark “appears to be
generic,” Office action mailed August 31, 2011, the examining
attorney did not actually refuse registration on this ground, and
therefore we will treat the term as highly descriptive but not
generic.
Ser. No. 85203745
7
Corrections, and definitions of “floss” taken from a slang
dictionary. We will examine each piece of evidence in
turn.
First, we give no probative value to the slang
definitions of “floss.” Applicant’s goods are identified
as “dental floss.” When FLOSS LOOPS is used in connection
with dental floss, consumers will understand the word FLOSS
to mean dental floss. Applicant has in effect acknowledged
this both by its initial claim that FLOSS LOOPS has
acquired distinctiveness, and therefore that “floss loops”
is descriptive for dental floss, and because, after it
amended its claim of acquired distinctiveness to LOOPS, it
agreed to disclaim exclusive rights to FLOSS.
As for the Florida Department of Corrections product
lists, these are approved canteen lists from 2001 and 2003.
The 2001 lists include “FLOSS LOOPS 30ct” in the same group
of “sundry items” in which, inter alia, “HAIR BRUSH, NO
HANDLE,” “COMB, POCKET,” “TOOTHBRUSH, SOFT, 6/12” and
“TOOTHBRUSH HOLDER, TWO PIECE” are listed. Given that all
of these terms are the generic names for the foregoing
sundry items, the inclusion of “FLOSS LOOPS 30ct” in this
list gives the impression that FLOSS LOOPS is, or is
regarded as, a generic term as well. As for the 2003
canteen product lists, it is not clear how the listings
Ser. No. 85203745
8
would be perceived. On the MALES CANTEEN PRODUCT LIST it
is shown as “FLOSS LOOPS 30 CT LLP,” so the inclusion of
“LLP” may indicate that that this is meant to refer to a
particular company (although applicant’s name is “Loops,
LLC”). The other items on the list seem to be a
combination of generic terms, trademarks, and company
names, e.g., “TOOTHBRUSH, SOFT, COLGATE 6/12”; “TOOTHBRUSH
HOLDER, TWO PIECE, CLEAR, PRO; EMERY BOARDS, CARDED, TRIM
10 CT”; SHOWER SLIDES, V-STRAP, MEDIUM, IMPORT”; “SNICKERS
2.7 OZ” and “CHIPS, PLAIN 1 OZ.” On the FEMALE CANTEEN
PRODUCT LIST the product is listed as “FLOSS LOOPS, LLP 30
CT,” and therefore “LOOPS, LLP” may have been listed as a
company name. At most, we regard this evidence as
equivocal, and we cannot conclude from the appearance of
these terms on these lists that FLOSS LOOPS per se is
perceived as a trademark for dental floss.
There are two newspaper articles from 20127 reporting a
prisoners’ lawsuit for the right to use dental floss. The
Hernando Today” article, published November 17, 2012,8 has
the following statement:

7 Applicant submitted three articles, but one is from the AP
website and the second is a copy of it that was printed in “The
Seattle Times.” Whether we view these as two separate articles
or one has no effect on our decision herein.
8 The article states, after “Hernando Today,” “An edition of THE
TAMPA TRIBUNE and THE TAMPA TIMES.”
Ser. No. 85203745
9
However, Florida’s state prison officials say
that they have found a solution. At the state’s
prison canteens they sell to inmates “security
oriented floss loops.” A 30-loop bag costs
$2.26, said Ann V. Howard, communications
director for the Florida Department of
Corrections.

In contrast to traditional string and nylon
floss, the “Floss Loops Safety Dental Floss” is
designed to break easily, can’t be made into a
rope, can’t be used to pick locks or handcuffs,
and can’t be used as a weapon or a saw, according
to the manufacturer. Each safety loop consists
of a pair of parallel rubbery floss strands
extending between a pair of grips. The loops
require using both the flosser’s hands to hold
the grips….

Prodded by the inmates’ lawsuit, officials at the
Westchester County Department of Correction have
announced that inmate-safe floss loops will be
sold at the jail commissary….

… it can hardly be a huge hardship for the Palm
Beach County Jail to sell the safety floss loops
to inmates….

We do not find this article to be persuasive that
FLOSS LOOPS will be perceived as a trademark. Although
there is a reference to “Floss Loops Safety Dental Floss”
in the manner of a trademark, with quotation marks and
initial capital letters, the rest of the article is replete
with generic uses of “floss loops.”
The second article, published in “The Seattle Times”
on October 26, 2012, does show “Floss Loops” with proper
trademark usage, although one of the mentions incorrectly
uses the term “Floss Loop”:
Ser. No. 85203745
10
Deputy Commissioner Justin Pruyne said the jail
is not required to supply floss to inmates and
said floss posed security risks. But the jail
has since brought in a supply of Kayser’s9 “Floss
Loop,” [sic] circles of rubbery floss with no
hard plastic that are designed to break easily
before they can be used as a weapon.

…

In California, the state approves Floss Loops.
Regular floss can be used as a garrote….

However, because the article is primarily concerned with
problems with dental floss in jails (the article is
entitled, “Prisoners sue to get dental floss, but jailers
say it’s a weapon”), and “Floss Loop” is not mentioned
until the middle of the article, and “Floss Loops” is not
mentioned again until six paragraphs later, it is not clear
to what extent FLOSS LOOPS makes an impression as a
trademark on the reader.
Applicant has stated, through its attorney, that
between 1998 and 2007 it sent approximately 5,000 direct
mailings to prison institutions and correctional
facilities. The examples of these mailings submitted by
applicant are generally letters, product specification
sheets and order forms. The letters identify “Floss Loops®
Dental Floss” in the “Re” and the same phrase appears

9 Steven Kayser is identified in many of applicant’s submissions
as its president, and was identified earlier in this article with
the statement, “whose company sells a floss product advertised as
prison-safe.”
Ser. No. 85203745
11
prominently in the product specification sheet and order
form.
Applicant also submitted an “Invitation to Bid” from
the Florida Department of Corrections, issued on March 19,
1998, for “Dental Floss Loops.” Rather than supporting
applicant’s claim of acquired distinctiveness of LOOPS,
this document shows generic usage of “dental floss loops”
and “floss loops,” e.g., the introduction section states
that “it is estimated that the department will purchase
approximately 30,000 packages containing thirty (30) floss
loops per package.” The contract that resulted from the
invitation to bid states, in a “whereas” clause, that
applicant “is a qualified and willing participant with the
department to provide dental floss loops to various
institutions throughout the state of Florida.”
With respect to its promotional activities involving
correctional institutions, applicant has exhibited in trade
shows directed to Correctional Health Care in 2001 and
2002, as well as at the Las Vegas Merchandise Expo in 2002
in which it used a banner featuring its stylized FLOSS
LOOPS mark (shown in its cancelled registration No.
4239791, discussed supra, in which FLOSS LOOPS has been
disclaimed).
Ser. No. 85203745
12
It also appears that, at least at one time, applicant
targeted the general public as its customers: its 1998
packaging stated that it was “great for kids and adults”;
in November 2002 it sent a letter to Vons stating that the
product was currently sold in Sav-On Stores and offering to
introduce the product to Vons, and enclosing packages in
mint and cherry berry flavors; two typed pages listing the
“benefits” of FLOSS LOOPS and product information bear
handwritten notations that they were sent to Longs Drugs
Stores on April 5, 2003; and an additional sheet listing
benefits of the product for consumers and kids bears a
handwritten notation of October 17, 2003--there is no
further information as to whom this may have been
distributed.
The sales information provided by applicant consists
of applicant’s sales receipts showing sales of 285 cases of
its dental floss product, all to correctional institutions.
Each case contains 144 packages, and each package contains
30 loops (a one-month supply). In 2002 the packages were
priced at $1.89, with a suggested retail price of $2.99;
the 2012 “Hernando Today” article reports that the price is
$2.26 (presumably this is the price that the institution
would pay).
Ser. No. 85203745
13
Applicant has pointed to other registrations it owns
for marks containing the term LOOPS, and claims ownership
of a LOOPS family of marks, in order to show that LOOPS in
the subject mark has acquired distinctiveness. The
registrations are for the following marks:
LOOPS FLEXIBLE TOOTHBRUSH HOLDER, with FLEXIBLE
TOOTHBRUSH HOLDER disclaimed, for toothbrush
holders (Registration No. 3383396);

LOOPS for dental floss, toothbrush holders;
toothbrushes, registered pursuant to Section 2(f)
(Registration No. 3714032);

LOOPS MINI-FLEXBRUSH for toothbrushes (Reg. No.
3254567);

LOOPS FLEXBRUSH for toothbrushes (Reg. No.
3146009);

DENTALOOPS for dental floss (Reg. No. 2743767);
and

for personal hygiene items, namely, toothbrushes,
toothbrush holders, combs (Registration No.
3748113).

Applicant, through the response filed by its attorney,
states that it has used its “LOOPS family of trademarks”
since 1996, and has averaged sales of 400,000 units of
product per year since 2000.
Ser. No. 85203745
14
We are not persuaded by this evidence that LOOPS, as
used in the mark FLOSS LOOPS, has acquired distinctiveness
as a trademark for dental floss. First, many of
applicant’s registrations are for marks that use LOOPS as
the first or only word of the trademark; these
registrations convey a different commercial impression from
FLOSS LOOPS, where LOOPS appears as the second word in the
mark, and is used as a descriptive term for the shape of
the dental floss. Because applicant uses FLOSS LOOPS in a
different manner from its other LOOPS marks, such as LOOPS
FLEXIBLE TOOTHBRUSH HOLDER, consumers would not be likely
to view the usage of LOOPS in FLOSS LOOPS as being the same
as the marks where LOOPS is the first term. Further, mere
ownership of registrations does not establish that a party
has a family of marks; there must not only be a showing of
use of the marks, but of promotion of a family having the
common “surname” element. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991). Applicant has not provided any evidence of such
promotion that would establish a family based on LOOPS, let
alone that FLOSS LOOPS would be perceived as part of such a
family.
As for applicant’s evidence of sales, the annual sales
of 400,000 units appear to be for all of applicant’s
Ser. No. 85203745
15
products under all of its marks, not just for applicant’s
sales of dental floss under the mark FLOSS LOOPS. Sales of
different goods under different marks are not probative
evidence of acquired distinctiveness of LOOPS in the mark
FLOSS LOOPS for dental floss. As noted, the only evidence
of sales of floss under this mark are the 285 cases
applicant referenced in its response to the February 29,
2012 Office action, and for which it has submitted
invoices. Given the highly descriptive nature of FLOSS
LOOPS for dental floss, these sales are simply not
sufficient to meet applicant’s burden to show that LOOPS,
in the mark FLOSS LOOPS, has acquired distinctiveness.
After reviewing all of the evidence of record, we find
that applicant has failed to show that LOOPS in the mark
FLOSS LOOPS has acquired distinctiveness, such that the
mark as a whole is a source-indicator. With respect to
applicant’s use of FLOSS LOOPS for dental floss sold to the
general public, the evidence of such promotion is minimal,
and there is no evidence of any sales (applicant’s
statement in its letter to Vons about the product being
available in certain Sav-On stores is not evidence of
sales). Because applicant’s identification of goods is not
restricted to any particular trade channel or group of
consumers, and dental floss is a product that is purchased
Ser. No. 85203745
16
by the general public, it is appropriate to consider
whether the mark, or the word LOOPS as used in the mark,
has acquired distinctiveness with respect to this group.
Clearly it has not, and on this basis alone applicant has
not met its burden.
Applicant does have another channel of trade, selling
the dental floss to and in prisons, and it has provided
evidence of its promotional efforts in this area, e.g., the
letters it has written to buyers for prisons, and
exhibiting at trade shows directed to such customers, as
well as actual sales. The examining attorney has dismissed
much of this evidence as not being directed to the ultimate
purchasers, i.e., the inmates. Although the evidence
regarding canteen lists indicates that dental floss may be
purchased by prisoners, it is also possible that the
correctional facilities themselves may purchase the goods
for distribution, rather than sale, to prisoners, so we
think it appropriate to consider the buyers for the
institutions and/or the institutions that may purchase the
goods as relevant purchasers. Even so, it is not clear
that even among this portion of its consumer base that
FLOSS LOOPS, or LOOPS within that mark, has acquired
distinctiveness as a source-indicator: as previously noted,
the 1998 Florida Department of Corrections request for bids
Ser. No. 85203745
17
and the resulting contract uses “dental floss loops” in a
generic manner; the canteen list on the 2001 Florida
Department of Corrections canteen product list shows “FLOSS
LOOPS 30ct” in the same manner as other generic terms, and
the significance of the terms as used on the 2003 canteen
lists is equivocal. There is a 2006 contract resulting
from solicitations by the State of New Jersey, which was
extended in 2007, in which goods provided by Keefe Supply
Co. include “loops dental floss, breakable loops” which
identify the brand as “FLOSS LOOPS.” However, in 2009 a
solicitation by the State of New Jersey Purchase Bureau
lists the “brand” as “LOOPS LLC” for the item described as
“loops dental floss, breakable loops...” Thus, this raises
a question as to whether this agency recognizes LOOPS as
used in FLOSS LOOPS, or FLOSS LOOPS per se, as a source-
indicator for applicant’s goods. The final piece of
evidence regarding applicant’s sales is a purchase order
for the California State Prison at Corcoran in 2012, in
which the item is identified as “Floss Loops, 144pk/cs,”
which we agree shows recognition of FLOSS LOOPS as a
trademark. However, the limited evidence that is of
record, including sales and promotion activities, is not
sufficient for us to find acquired distinctiveness even in
the correctional institution channel of trade.
Ser. No. 85203745
18
In short, applicant’s evidence of use and promotion of
its mark is not sufficient to demonstrate that FLOSS LOOPS,
or the word LOOPS as used in the mark, has acquired
distinctiveness. Therefore, in view of the fact that
applicant has failed to show that LOOPS in the mark FLOSS
LOOPS has acquired distinctiveness as a mark for dental
floss, we find that the applied-for mark is merely
descriptive of applicant’s goods.
Decision: The refusal of registration on the ground
that the mark is merely descriptive, and that LOOPS in the
mark FLOSS LOOPS has not acquired distinctiveness, is
affirmed.