Scandinavian Frames AB

Trademark Trial and Appeal Board

Apr 9, 2019

EX (T.T.A.B. Apr. 9, 2019)

Mailed: April 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re Scandinavian Frames AB
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Serial No. 87926087
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John Alumit of Alumit IP,
for Scandinavian Frames AB.
Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Taylor, Ritchie, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Scandinavian Frames AB (“Applicant”) seeks registration on the Principal
Register of the mark SCANDINAVIAN FRAMES and design (SCANDINAVIAN
FRAMES disclaimed), as displayed below, for “Eyeglasses; Eyewear; Goggles for
sports; Sports glasses; Sunglasses; Eye glass cases; Eyeglass frames; Eyewear
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87926087
2
accessories, namely, straps, neck cords and head straps which restrain eyewear from
movement on a wearer; Optical frames; Spectacle frames” in International Class 9.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark SCANDINAVIAN EYEWEAR (in standard
characters; EYEWEAR disclaimed) registered on the Principal Register under
Section 2(f) of the Trademark, 15 U.S.C. § 1052(f), for “Spectacle frames, spectacles,
sunglasses and fitted cases for spectacles” in International Class 9.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.3

1 Application Serial No. 87926087, filed on May 17, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a) (based on first use dates of 1999) and under Section 44(d) of the
Trademark Act, 15 U.S.C. § 1126(d) (based on a Swedish application filed on May 8, 2018).
The description of the mark reads as follows: “The mark consists of two circles, and below,
the wording SCANDINAVIAN FRAMES.” Color is not claimed as a feature of the mark.
2 Registration No. 4111591; issued on March 13, 2012; Section 8 Affidavit accepted.
3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 87926087
3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A. Similarity of the Goods
We initially turn to the comparison of the goods under the second du Pont factor.
In making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. 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 In
re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Serial No. 87926087
4
Applicant’s identified goods are “Eyeglasses; Eyewear; Goggles for sports; Sports
glasses; Sunglasses; Eye glass cases; Eyeglass frames; Eyewear accessories, namely,
straps, neck cords and head straps which restrain eyewear from movement on a
wearer; Optical frames; Spectacle frames.” The goods identified in the cited
registration are “Spectacle frames, spectacles, sunglasses and fitted cases for
spectacles.” Applicant’s identified goods and those set forth in the cited registration
are identical in-part inasmuch as they both include “sunglasses and spectacle
frames.” Furthermore, Applicant’s “eyeglasses” and Registrant’s “spectacles” are
effectively the identical goods since these terms are synonyms for the same product.4
Accordingly, these particular goods are also identical in-part. A likelihood of
confusion may be found with respect to a particular class in an application based on
any product within the identification of goods for that class. See In re Wacker Neuson
SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
Additionally, the Examining Attorney submitted Internet evidence consisting of
screenshots of third-party websites showing that a single entity offers both
Applicant’s eyewear accessories, namely, straps, neck cords and head straps which
restrain eyewear from movement on a wearer and Registrant’s spectacles and
sunglasses under the same mark.5 As example:

4 We take judicial notice of the dictionary definition of the term “spectacles” which is defined
as “eyeglasses, especially with pieces passing over or around the ears for holding them in
place.” See www.dictionary.com based on the Random House Unabridged Dictionary (2019).
5 September 10, 2018 Office Action, TSDR pp. 13-22.
Serial No. 87926087
5
• “Corinne McCormack” offers eyeglasses as well as eye wear accessories,
such as eyeglass straps for retaining eyeglasses from movement on a
wearer, under the same mark;

• “REI” shows that sunglasses and eyewear straps for retaining eyewear
from movement on a wearer; and

• “Kate Spade” offers sunglasses as well as sunglass straps for retaining
sunglasses from movement.

This Internet evidence demonstrates that third-parties manufacture and sell both
eyewear accessories, namely, straps, neck cords and head straps which restrain
eyewear from movement on a wearer and sunglasses and spectacles under the same
mark.
Because (1) both Applicant’s and Registrant’s identifications include the identical
goods, namely, “sunglasses and spectacle frames,” (2) Applicant’s “eyeglasses” are
effectively identical to Registrant’s “spectacles” and therefore these particular goods
are legally identical in-part, and (3) the Internet evidence of record demonstrates that
Applicant’s eyewear accessories are related to Registrant’s sunglasses and spectacles
because these goods are commonly offered under the same mark, we find that the
second du Pont factor regarding the similarity of the respective goods strongly favors
a finding of likelihood of confusion.6
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications of the goods are legally identical in-part and

6 Applicant does not contest the Examining Attorney’s determination that its goods and
Registrant’s goods are identical in-part or related for purposes of likelihood of confusion.
Serial No. 87926087
6
are unrestricted as to channels of trade or classes of customers, it is presumed that
their trade channels and classes of purchasers are the same for the legally identical
in-part goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (legally identical goods are presumed to travel in same channels of trade
to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); In re Am. Cruise Lines, Inc.,
128 USPQ2d 1157, 1158 (TTAB 2018). Accordingly, the classes of purchasers and
channels of trade, at a minimum, overlap.
Thus, the third du Pont factor also weighs in favor of finding a likelihood of
confusion.
C. Similarity of the Marks
We consider next the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted).
Serial No. 87926087
7
Applicant’s mark is . The cited mark is SCANDINAVIAN EYEWEAR
in standard characters. The marks are similar to the extent that they both include
the word SCANDINAVIAN as the first literal element or first element. Consumers
are generally more inclined to focus on the first word, prefix, or syllable in any
trademark or service mark. See Palm Bay Imps. Inc., 73 USPQ2d at 1692 (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); see also Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers will first notice the identical lead
word); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(stating that “it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”).
Moreover, although Applicant’s mark includes the word FRAMES as compared to
the inclusion of the visually and aurally different term EYEWEAR in Registrant’s
mark, we find these terms nonetheless are similar in commercial impression. The
evidence of record includes the dictionary definition of each term as follows: “frames”
is defined as “framework for a pair of eyeglasses” and “eyewear” is defined as “glasses
and contact lenses.”7 Thus, the term “EYEWEAR” describes eyeglasses, and the term
“FRAMES” describes a component of eyeglasses. As such, the marks convey similar

7 September 10, 2018 Office Action; TSDR pp. 9 and 12.
Serial No. 87926087
8
overall commercial impressions, and consumers are likely to perceive Applicant’s
mark as an extension of Registrant’s brand identifying an expanded product line.
Notwithstanding the foregoing, consumer confusion has been held likely for marks
that do not necessarily sound or look alike but convey the same idea, stimulate the
same mental reaction, or may have the same overall meaning, as is the case here.
See, e.g., Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304
(C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on
competing cleaning products); In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984)
(holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for
a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ
257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with
BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning
Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned
chicken likely to be confused with CHICKEN OF THE SEA for canned tuna);
Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding
UPTOWNER for motor inn and restaurant services likely to be confused with
DOWNTOWNER for the same services); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) §1207.01(b) (Oct. 2018).
Additionally, the terms FRAMES and EYEWEAR are the generic designations of
Applicant’s and Registrant’s respective goods, which we have found to be identical-
in-part and otherwise closely related, and both terms have been appropriately
disclaimed. As such, the terms FRAMES and EYEWEAR are less likely to make an
Serial No. 87926087
9
impact in the minds of consumers. See In re Dixie Rests., Inc., 41 USPQ2d at 1533-34
(disclaimed matter that is descriptive of or generic for a party’s goods is typically less
significant or less dominant when comparing marks); see also In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 753 (Fed. Cir. 1985).
Moreover, although Applicant’s mark includes a design element, “the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co., KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015)
(citing CBS Inc. v. Morrow, 708 F.2d 1579, 21 USPQ 198, 200 (Fed. Cir. 1983)).
Greater weight is often given to the wording because it is the wording that purchasers
would use to refer to or request the goods or services. See, e.g., In re Viterra, Inc., 101
USPQ2d at 1911. In any event, the two circles appearing above and to the left of the
wording SCANDINAVIAN FRAMES in Applicant’s mark is likely to be viewed by
consumers as a fanciful pictorial representation of the term FRAMES, regardless of
Applicant’s reference to the design element as “two circles” in the description of the
mark set forth in its involved application. Therefore, the design element merely
reinforces the non-source indicating nature of the term FRAMES.
Finally, while the literal portion of Applicant’s mark, i.e., SCANDINAVIAN
FRAMES, appears in a particular stylization, this is also insufficient to distinguish
the marks. The cited mark is a standard character mark, and marks appearing in
standard character form may be displayed in any stylization, font, color and size,
including the identical stylization of Applicant’s mark, because the rights reside in
Serial No. 87926087
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the wording and not in any particular display or rendition. See Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011)
(“‘Standard character’ or ‘typed’ registrations are federal mark registrations that
make no claim to any particular font style, color, or size of display and, thus, are not
limited to any particular presentation.”); see also Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a difference
in type style is not viable where one party asserts rights in no particular display. By
presenting its mark merely in a typed drawing, a difference cannot legally be asserted
by that party.”). Thus, because the font style of the cited mark may be displayed in
the identical manner as the literal portion of Applicant’s mark, the stylization of the
literal portion of Applicant’s mark is insufficient to distinguish the respective marks.
Applicant argues that the term SCANDINAVIAN is geographically descriptive
and is entitled to a narrow scope of protection such that the additional wording
FRAMES versus EYEWEAR, combined with Applicant's design feature, is sufficient
to avoid confusion.”8 While we recognize that the cited mark is registered under the
provisions of Section 2(f) of the Trademark Act, marks that are deemed “weak” or
merely descriptive, however, are still entitled to protection under Section 2(d) of the
Trademark Act against the registration by a subsequent user of a similar mark for
goods that are legally identical in-part, as is the case here. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).

8 Applicant’s Appeal Brief, p. 2; 4 TTABVUE 3.
Serial No. 87926087
11
In its Request for Reconsideration, Applicant submitted copies of third-party
registrations arguing that marks with geographically descriptive wording, such as
“AMERICAN” and “NY” or “NEW YORK”, combined with highly descriptive or
generic wording are coexisting on the register. Although the geographic terms
“AMERICAN” and “NY” or “NEW YORK” may appear to be diluted on the register,
this evidence does not support that the geographic term “SCANDINAVIAN” is also
diluted in connection with either Applicant’s or Registrant’s identified goods.
Nevertheless, prior decisions and actions of other trademark examining attorneys in
registering other marks, however, have little evidentiary value and are not binding
upon the USPTO or the Board. TMEP §1207.01(d)(vi); see also In re USA Warriors
Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is
decided on its own facts, and each mark stands on its own merits. In re USA Warriors
Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t,
334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
We recognize that in comparing the marks, we must consider Applicant’s and
Registrant’s marks in their entirety. Thus, while we have taken into account the
differences between them, we nonetheless find that despite the differences, given the
similarities between the marks due to the shared term SCANDINAVIAN and the
similar commercial impressions conveyed by the terms FRAMES and EYEWEAR, the
marks, as a whole, are similar in appearance, pronunciation, and connotation and
engender very similar overall commercial impressions. This especially holds true
when the goods are legally identical in-part, as is the case here. See Coach Servs. Inc.,
Serial No. 87926087
12
101 USPQ2d at 1722 (“When trademarks would appear on substantially identical
goods, ‘the degree of similarity necessary to support a conclusion of likely confusion
declines.’”) (internal citations omitted).
Accordingly, the first du Pont factor also favors a finding of likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We have found that
(1) the marks at issue are similar in appearance, sound, connotation and commercial
impression; (2) Applicant’s and Registrant’s goods are identical in-part inasmuch as
the parties’ respective identifications both include “sunglasses and spectacle frames,”
as well as the effectively identical goods “eyeglasses” and “spectacles;” (3) Applicant’s
“eyewear accessories, namely, straps, neck cords and head straps which restrain
eyewear from movement on a wearer” are related to Registrant’s “sunglasses and
spectacles;” and (4) the legally identical in-part goods are presumed to move in
identical or overlapping trade channels and that they would be offered to the same or
overlapping classes of purchasers. We conclude, therefore, that Applicant’s
mark, as used in connection with the goods identified in its involved application, so
resembles the cited mark SCANDINAVIAN EYEWEAR used in association with the
goods identified in the cited registration as to be likely to cause confusion or mistake,
or to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.