Samsung Electronics Co., Ltd.

Trademark Trial and Appeal Board

Aug 8, 2019

87553889 (T.T.A.B. Aug. 8, 2019)

Mailed: August 8, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Samsung Electronics Co., Ltd.
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Serial No. 87553889
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Diane J. Mason of Drinker Biddle & Reath LLP for Samsung Electronics Co., Ltd.

Bernice L. Middleton, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Cataldo, Wolfson and Heasley,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Samsung Electronics Co., Ltd., seeks registration on the Principal
Register of the mark SAMSUNG FLIP (standard characters), identifying
Computer monitors; LCD large-screen displays; Large size electronics
digital displays, namely, digital signage; Electronic interactive
whiteboards; Touch panel; Computer software for use in operating,
configuring, and controlling touch screen technology; Computer
software for storing and managing text, audio, video, graphics, audio
visual and multimedia content in International Class 9.1

1 Application Serial No. 87553889 was filed on August 2, 2017, and subsequently amended to
assert Section 44(e) of the Trademark Act, 15 U.S.C. 1126, as a filing basis, with a claim of
priority based on European Union Registration No. 017040106, issued on December 11, 2017.
This Opinion is Not a
Precedent of the TTAB
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Registration has been refused pursuant to Section 6(a) of the Trademark Act, 15
U.S.C. §1056(a), based on Applicant’s failure to comply with the requirement to
disclaim the term FLIP on the ground that it is merely descriptive of Applicant’s
goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1).
When the refusal was made final, Applicant appealed and filed a Request for
Reconsideration. On January 9, 2019, the Examining Attorney denied the request
and maintained the refusal. The appeal was subsequently resumed and fully briefed.
We affirm the refusal of registration in the absence of the required disclaimer.
I. Applicable Law
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a). A disclaimer
is a statement that the applicant does not claim the exclusive right to use a specified
element or elements of the mark in a trademark application or registration. In re
White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013). “The effect of a disclaimer
is to disavow any exclusive right to the use of a specified word, phrase, or design
outside of its use within a composite mark.” Id. (quoting In re Franklin Press, Inc.,
597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979)). Failure to comply with a disclaimer
requirement is a ground for refusal of registration. In re Stereotaxis, Inc., 429 F.3d
1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d

The application includes the following translation: “The English translation of ‘SAMSUNG’
in the mark is ‘THREE STARS.’”
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1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart Inc., 104 USPQ2d 1931, 1933
(TTAB 2012).
Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1)
and, therefore, are subject to disclaimer if the mark is otherwise registrable. A term
is deemed to be merely descriptive of goods or services if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the goods or services. See In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d
1574, 1575 (Fed. Cir. 2015); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). A term that describes any of the goods identified in the application
may be deemed merely descriptive, even if it is suggestive or arbitrary with respect
to other identified goods. See In re Canron, Inc., 219 USPQ 820, 821 (TTAB 1983)
II. Whether FLIP is Merely Descriptive of the Goods
Applicant’s goods are
Computer monitors; LCD large-screen displays; Large size electronics
digital displays, namely, digital signage; Electronic interactive
whiteboards; Touch panel; Computer software for use in operating,
configuring, and controlling touch screen technology; Computer
software for storing and managing text, audio, video, graphics, audio
visual and multimedia content.

The Examining Attorney argues that the term FLIP
merely describes a characteristic and feature of the goods, namely, the
goods have the capability to turn over or move from one position to
another. Further, the software would be a component of the devices. The
identification of goods lists controlling software such that the software
controls the function of a touch screen and other displays. Therefore, a
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feature of the software enables turning from one page to another, as well
as, rolling from one orientation to another such as portrait to landscape.2

In support, the Examining Attorney submitted English-language dictionary
definitions for “flip,” defined, inter alia, as “to cause to turn and especially to turn
over; to turn or roll from one side to the other; to change from one state, position,
subject, etc., to another.”3 The Examining Attorney also provided printouts from an
Internet search showing descriptive uses of the term FLIP in connection with
Applicant’s goods and related goods offered by third parties. These include:
• An article from theverge.com discusses Applicant’s identified goods under
the involved mark. “Samsung is unveiling Flip today at the Consumer
Eletronics Show, a 55-inch digital whiteboard that can be flipped between
portrait and horizontal orientation.”;4
• An article in computerworlduk.com reviewing interactive smart boards for
businesses, discusses Applicant’s goods under the applied-for mark. “A
digital flip chart with a dual-sided stylus combines the feel of traditional
writing with digital display and features including document collaboration,
annotation and searching. It also adds a flip feature that gives the
whiteboard its name, allowing users to pivot it horizontally or vertically
depending on their need…”;5 and
• An article in quartet.com discusses third-party Quartet Kapture Digital
Flipcharts. “With Bluetooth technology, the digital pen and digital
flipchart pads are wirelessly connected to your computer with a USB
receiver. Graphs, drawings and notes written on the digital flipchart pads

2 9 TTABVUE 4.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
3 At https://www.merriam-webster.com/dictionary/flip, attached to the October 3, 2017 first
Office Action, at TSDR 5-9.
4 June 19, 2018 Final Office Action at TSDR 5-8.
5 Id. at TSDR 9-32. It is not clear to what extent this U.K. webpage will be viewed by U.S.
consumers. Nonetheless, this evidence tends to corroborate the other evidence of record.
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are instantly transmitted to your PC. What you see on the screen is
identical to what you wrote on the digital flipchart pad.”6
The Examining Attorney further introduced a copy of Applicant’s prior
Registration No. 4792751 for the mark SAMSUNG FLIP WALLET (standard
characters, “FLIP WALLET” disclaimed), identifying a long list of goods in Class 9
including “electronic whiteboards.”7
In support of its position that “FLIP” is suggestive of its goods, Applicant
introduced a copy of its prior Registration No. 5559700 for the mark
issued on the Principal Register,8 identifying goods identical to those in the involved
application. Applicant also introduced the following third-party registrations, all
issued on the Principal Register:9
Reg. No. 4475431 for the mark identifying “Compartmentalized
protective case for portable electronic devices, namely, cell phones, smart
phones, and media players;”

Reg. No. 4931571 for the mark FLIP WORDS (standard characters, WORDS
disclaimed), identifying “video and computer game programs;”

Reg. No. 4772507 for the mark FLIP SIDE (standard characters), identifying
“dual sided magnetic signs;”

Reg. No. 4168498 for the mark FLIP-FIT (standard characters), identifying
“computer notebook case features, namely, compartments and cushions which

6 Id. at TSDR 33-34.
7 Id. at 40-44.
8 Issued September 11, 2018. No disclaimer is entered in the registration record for this mark.
9 December 19, 2018 Request for Reconsideration at TSDR 8-19, retrieved from the USPTO’s
Trademark Electronic Search System (TESS). Applicant also submitted a copy of a third-
party application having little, if any, probative value. See, e.g., Interpayment Services Ltd.
v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003) (“[T]hird-party applications are
evidence only of the fact that they were filed; they have no other probative value.”).
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permit the user to adjust the case to accept computer notebooks of varying
sizes;”

Reg. No. 4572776 for the mark QUICK FLIPS (standard characters),
identifying “electric switches; electric switch boxes;” and

Reg. No. 5070474 for the mark FLIP IT (standard characters), identifying long
lists of goods and services in multiple classes, including numerous computer-
related products in Class 9.

Whether the term “flip” is merely descriptive is determined, not in the abstract,
but in relation to Applicant’s goods, the context in which the mark is being used, and
the possible significance that the term would have to the average purchaser of the
goods because of the manner of its use. In re Abcor Dev. Corp., 200 USPQ at 218; In
re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). Here, the Examining Attorney has
introduced evidence into the record to show the nature of the goods on which
Applicant uses or intends to use its mark. Applicant’s goods include electronic
interactive whiteboards, digital signage, large screen displays and software for use
therewith. The Examining Attorney’s evidence clearly establishes that at least
Applicant’s digital whiteboards can be “flipped” between portrait and landscape
orientations depending on the content being displayed. The evidence further
establishes that third-parties also market digital flipchart pads similar to Applicant’s
identified goods. Given that the term “flip” may mean “to cause to turn” or “to change
from one position to another,” consumers will expect, upon encountering Applicant’s
mark SAMSUNG FLIP that the term “flip” signifies that the goods may be turned or
changed from one position to another. The term “flip” immediately conveys this
meaning without any need for additional thought or imagination. Accordingly, it is
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merely descriptive of a feature of the goods, in particular, Applicant’s electronic
whiteboards.
Applicant argues that “in these definitions of ‘FLIP,’ the word has the connotation
of an action of physically turning an item over, so that the surface that was
underneath is now on the top.”10 We agree with Applicant that one definition of “flip”
means to turn over an object, e.g., to flip a pancake. However, “flip” also more
generally means to turn an object, e.g., to flip a switch from the off position to on, or
to change its position, in this case, from portrait to landscape. Thus, we do not agree
with Applicant’s rather restrictive view of the definition of “flip,” and find that it may
include the rotation of Applicant’s digital whiteboards. We have stated many times
that our determination is not controlled by the possibility that a term may have other
meanings in different contexts. See, e.g., In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Applicant further argues that the “suggestiveness of the term FLIP is evidenced
by the [above-noted] registrations, in which FLIP was found to be suggestive.”11 With
regard to Applicant’s prior Reg. No. 5559700 for the mark , the
prosecution history of the application underlying that registration is not in the record,
and we cannot determine the examining attorney’s decision to approve that mark for
registration without a disclaimer. Further, while we are not unsympathetic to
Applicant’s situation, we simply are not bound by the decisions of examining

10 7 TTABVUE 7.
11 7 TTABVUE 11.
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attorneys in this or prior cases. The Board must make its own findings of fact, and
that duty may not be delegated by adopting the conclusions reached by an examining
attorney. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). Although consistency in
examination and the register are commendable goals, we are not bound by the
previous examining attorney’s decision that apparently did not view the inverted
term “flip” as merely descriptive of Applicant’s goods. Cf. In re Davey Products Pty
Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009) (“applicant is not automatically entitled to
a return to the status quo...the Board is not bound by the decision of the prior
trademark examining attorney”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB
2007); In re Outdoor Recreation Group, 81 USPQ2d 1392, 1399 (TTAB 2006).
With regard to the third-party registrations Applicant made of record, we note
that the marks and FLIP SIDE appear to be unitary marks that do not
require disclaimers of individual terms. In addition, none of the marks identifies
goods related to the goods in the application at issue. As noted above, the prosecution
histories of the applications underlying these third-party registrations are not of
record and we are unable to determine the examining attorneys’ decisions regarding
the descriptiveness of the term “flip” in these registrations. “It has been said many
times that each case must be decided on its own facts.” In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229
(TTAB 2010) (internal citation omitted). Thus, the fact that the Office has not
required a disclaimer of FLIP in the registrations submitted by Applicant does not
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persuade us that a disclaimer is not required in the case before us. See generally,
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1213 (Oct. 2018).
III. Summary
Based on the record before us, we find that the relevant public, when it considers
FLIP in the context of Applicant’s SAMSUNG FLIP mark, particularly in connection
with “LCD large-screen displays; digital signage; electronic interactive whiteboards”
will understand the term to describe a feature of the goods, namely, that they may be
turned or rotated from portrait to landscape view to accommodate the content
displayed thereupon.
Decision: The refusal to register based on the requirement to disclaim the term
FLIP is affirmed. However, if Applicant submits the required disclaimer of FLIP to
the Board within thirty days, this decision will be set aside, the disclaimer will be
entered, and the application will proceed to registration in due course.12 Trademark
Rule 2.142(g), 37 C.F.R. §2.142(g).

12 The standardized printing format for the required disclaimer text is as follows: “No
exclusive right to use FLIP is claimed apart from the mark as shown.”