Solutia, Inc.

Trademark Trial and Appeal Board

Jan 25, 2013

No. 77959894 (T.T.A.B. Jan. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Solutia, Inc.
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Serial Nos. 77959894 and 779600711
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John E. McKie of Ladas & Parry LLP for Solutia, Inc.

Renee Servance, Senior Trademark Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
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Before Seeherman, Greenbaum and Masiello, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Solutia, Inc. has appealed from the final refusal of the trademark examining
attorney to register FLEXVUE, in standard characters, and

for goods ultimately identified in each application as:

1 On March 28, 2012, the Board granted the examining attorney’s motion (filed March 20,
2012) to consolidate the two cases for purposes of this appeal. Accordingly, our decision
addresses the appeals in both applications.
Serial Nos. 77959894 and 77960071
2

Functional thin plastic films for sale to manufacturers of
photovoltaic modules suitable for use in cleanroom
environments, for use as a substrate component of
photovoltaic modules onto which semiconductor material
coating is applied, with the coated component used in the
manufacture of thin film photovoltaic modules;
Functional thin plastic films coated with transparent
conductive oxide suitable for use in cleanroom
environments and sold to original equipment
manufacturers for use in thin film plastic photovoltaic
modules; Functional transparent conductive coated thin
plastic film suitable for use in cleanroom environments
and sold to original equipment manufacturers for use as a
component within the sensors of touch screen displays;
Functional transparent conductive coated thin plastic
films suitable for use in cleanroom environments and sold
to original equipment manufacturers for use as
components in the manufacture of e-readers and other
electronic ink and electronic paper displays, all of the
foregoing not for use in glass or metal based substrate
photovoltaic cells, and all not for labeling, decorative or
nameplate uses
in International Class 17.2
Registration has been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to
applicant’s goods, so resembles the previously registered mark FLEX-VU (in
standard characters) for “adhesive-backed films for labels, decals, nameplates, and
decorative trim” in International Class 16,3 as to be likely to cause confusion.

2 Serial Nos. 77959894 and 77960071, respectively, both filed on March 16, 2010, based on
Section 1(b) of the Trademark Act. The latter application includes a disclaimer of FILMS,
and the following description of the mark: “The mark consists of the word ‘FLEXVUE’ with
the letter ‘X’ presented in larger lettering. The wording ‘FILMS WITH TECHNOLOGY
INSIGHT’ appears under ‘FLEXVUE’”.
3 Registration No. 1683774, issued April 21, 1992, renewed.

Serial Nos. 77959894 and 77960071
3

We reverse the refusals of registration.
Before turning to the substantive ground for refusal, we note that in both
appeals the examining attorney has objected to Exhibit A, consisting of a one-page
printout from a website, www2.dupont.com, for the DuPont Company, which
applicant submitted with its appeal briefs.4 Trademark Rule 2.142(d) normally
precludes the introduction of additional evidence with an appeal brief. However, in
this case, the examining attorney previously had made of record two pages from the
same website. In these circumstances, because the examining attorney had the
opportunity to review the entire website at the time she submitted the excerpts, the
Board will treat the additional webpage as part of the record. See TBMP § 1208.01
for the analogous situation involving the submission of excerpts of articles from
publications; see also In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818,
820 (Fed. Cir. 1986), in which the Court treated as part of the record entire articles
that were submitted with the applicant’s brief because the examining attorney had
submitted excerpts of the articles during examination.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of

4 For each appeal, applicant submitted both an electronically filed copy of the appeal brief
and a printed, mailed copy. It is not necessary to mail a second copy of a brief, and doing so
can cause confusion for the Board and the examining attorney. The preferable procedure is
to file a single copy of a brief electronically through the Board’s ESTTA system. Further,
Exhibit A to the printed copy of the brief in Serial No. 77959894 includes as an attachment
a copy of an appeal brief filed in an unrelated ex parte proceeding. The examining attorney
has objected to the unrelated material as untimely, and applicant asserts that it did not
include this material in its brief. Whether applicant included this material inadvertently,
or the Office mistakenly associated it with applicant’s brief, it is clear that it does not
belong with applicant’s brief and therefore we have not considered the material.

Serial Nos. 77959894 and 77960071
4

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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the factor of the similarity or dissimilarity of the goods. We
base our evaluation on the goods as they are identified in the cited registration and
the subject applications. Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also In re Total Quality
Group Inc., 51 USPQ 1474, 1476 (TTAB 1999).
Registrant’s goods are identified as “adhesive-backed films for labels, decals,
nameplates and decorative trim.” Applicant produces functional thin plastic films
for use as a component of photovoltaic (PV) products, touch screen displays and
electronic ink/paper displays. In the December 14, 2010 Response to Office Action,
applicant explains that its goods:
are highly specialized and embody sophisticated
technology. Photovoltaic modules are solar panels, e.g.,
packaged interconnected assemblies of solar cells used to
generate and supply electricity in commercial and
residential applications. Touch screens are electronic
visual displays that can detect the presence and location
of a touch within the display area. Electronic paper and
electronic ink are electronic displays that mimic the
appearance of ordinary ink on paper, for example the kind
of display found in e-readers. … Applicant’s goods are
used to make sophisticated electric/electronic devices:
solar panels and electronic displays with specialized
characteristics, requiring exacting specifications for
proper interaction with other components in a demanding
technical environment. Components in electrical and
electronic applications have to prevent improper
Serial Nos. 77959894 and 77960071
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interaction between the other components in the view
screen, or the photovoltaic module, for example.
In the March 25, 2011 Request for Reconsideration, applicant further explains that
its goods “feature specialized contaminant-protective, antistatic, electrically
conductive or non-conductive properties, and/or light manipulation properties.
Applicant’s goods are sold directly to manufacturers, OEMs, who utilize the
Applicant’s goods, specifically for the properties they embody, in the manufacture of
an end product.”
In an effort to show that the goods are related, the examining attorney made
of record screenshots from third-party websites showing various types of film. The
most probative examples are from the Dunmore Corporation, the Lamart
Corporation and the DuPont Company: The Dunmore website indicates that
Dunmore offers a wide variety of film products, including thin plastic films used in
the PV industry, and printable films used for labels, decals and tags
(www.dunmore.com); the Lamart website lists the custom and standard products it
provides, including printable films and laminates with various uses, such as label
stock and printing, and thin film solar PV films and laminates
(www.lamartcorp.com); and the DuPont website indicates it produces films for PV
modules, as well as “polyester film for packaging converters and label
manufacturers” and “anti-counterfeiting films and labels” (www.dupont.com).5

5 While we accept applicant’s statement that DuPont is a large company that manufactures
many items in many countries under many different marks, the nature of the company
reduces, but does not eliminate, the probative value of this particular piece of evidence.
Serial Nos. 77959894 and 77960071
6

The examining attorney also submitted an article from the on-line
publication, PFFC (“Paper, Film & Foil Converter”), which discusses registrant’s PV
activities, including the production of thin film PV products for manufacturers who
use PV laminates for renewable energy platforms:
As the photovoltaic industry continues to ramp up
technologies to harness the power of the sun, FLEXcon
has dedicated full-time resources to meet the increasing
demands from solar module and encapsulant producers
who require FLEXcon’s photovoltaic backsheet protective
laminates for their renewable energy platforms.
(www.pffc-online.com).
Although the third-party websites and the above-noted article suggest that
the goods identified in the application and the registration are of types that can be
manufactured by the same companies, there is no indication that the purchasers of
the goods are the same. Significantly, the purchasers of applicant’s goods are OEMs
of PV products and consumer electronics—products that could include labels and
nameplates.6 However, registrant’s goods are adhesive-backed films for labels and
nameplates, and not the labels and nameplates themselves. There is no evidence
that these OEMs would purchase adhesive-backed film to be applied to labels and
nameplates separately from the finished labels and nameplates that are applied to
PV modules and/or consumer electronics.
Each of the du Pont factors may play a dominant role in any particular case.
du Pont, 177 USPQ at 567 (CCPA 1973). See also, Kellogg Co. v. Pack’em

6 The examining attorney submitted a screenshot from registrant’s website
(www.flexcon.com) discussing the need for manufacturers of consumer electronics products
to affix warning/instructional labels and notices of compliance with regulatory standards to
their goods.
Serial Nos. 77959894 and 77960071
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Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“[w]e know
of no reason why, in a particular case, a single du Pont factor may not be
dispositive.”). The differences in the potential purchasers is the determinative
factor in this case. Based on the record, it appears that applicant’s goods and the
registrant’s goods would not be encountered by the same class of purchasers, and
therefore, despite the close similarity between the marks, there would be no
opportunity for confusion to occur.

Decision: The refusals under Section 2(d) of the Trademark Act are reversed.