Summit Entertainment, LLC

Trademark Trial and Appeal Board

Apr 11, 2016

No. 77921983 (T.T.A.B. Apr. 11, 2016)

This Opinion is Not a
Precedent of the TTAB

Hearing: February 10, 2016 Mailed: April 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Summit Entertainment, LLC
_____

Serial No. 77921983
_____

Jill M. Pietrini and Paul Bost of Sheppard Mullin Richter & Hampton LLP,
for Summit Entertainment, LLC.
Priscilla Milton, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.1
_____

Before Kuhlke, Taylor and Goodman,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Summit Entertainment, LLC (“Applicant”) seeks registration on the Principal
Register of the mark ECLIPSE (in standard characters) for goods ultimately
identified as:
Backpacks adapted for holding computers, camera cases,
decorative magnets sold in sheets, decorative wind socks
for indicating wind direction and intensity, eyeglasses and
eyeglass cases, laptop carrying cases, magnets, mousepads,
slot machines, sunglasses and sunglass cases, computer

1 Trademark Examining Attorney Deborah Meiners argued on behalf of the USPTO at oral
hearing.
Serial No. 77921983
- 2 -
storage devices, namely, flash drives; covers for cell
phones, portable and handheld electronic digital devices for
playing music, namely, MP3 and MP4 players, laptop
computers, personal digital assistants, namely, PDAs, and
gaming devices, namely, gaming machines, all relating to
motion pictures and entertainment, in International Class
9.2
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 that
Applicant’s mark, when used in connection with the identified goods, so resembles
the registered marks shown below, as to be likely to cause confusion, mistake or
deception:3
ECLIPSE (in typed form)4 for “magnets,” in International
Class 9;5

2 Application Serial No. 77921983 was filed on January 28, 2010, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation of a bona fide intention to use the mark in
commerce. The original application included several other goods discussed, infra.

3 The Examining Attorney also cited the following registrations that cancelled under Section
8 during prosecution of the application:
for backpacks especially adapted for holding laptops;
backpacks especially adapted for holding laptops and notebook
computers; laptop carrying cases; messenger bags especially
adapted for holding laptops (Reg. No. 3515398); and
ECLIPSE DOGGY for, inter alia, Decorative wind socks;
Electronic action toys; Electronic educational game machines for
children; Electronic learning toys; (Reg. No. 3544541).
4 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (October
2015).

5 Registration No. 799454, issued on November 30, 1965, renewed. The registration also
includes the following goods that were not cited as a bar to registration “magnetic chucks,
magnetic holders, magnetic holdfasts, magnetic bases, magnetic v-blocks, magnetic
positioners, magnetic adjustable links, magnetic floaters, [magnetic racks, magnetic door
Serial No. 77921983
- 3 -
ECLIPSE (in typed form) for “mobile sound equipment and
accessories, namely, am-fm tuners, cassette, cd and
speakers, amplifiers and equalizers”;6
for “mobile sound equipment and
accessories, namely, am-fm tuners, cassette, cd and dat
players, speakers, amplifiers and equalizers”;7
SOLAR ECLIPSE (in typed form) for “sunglasses”;8
for “audio and visual equipment, namely,
radios, CD players, DVD players, hard disc players, and
audio equipment for vehicles, namely, equalizers,
amplifiers, speakers, and combination CD/DVD players;
navigation apparatus for automobiles in the nature of on-
board computers”;9
ECLIPSE (in standard characters) for “computer
keyboards, computer mice; mouse pads; wireless presenter
in the nature of a wireless remote pointer”;10
for “computer keyboards computer mice;
mouse pads; Wireless presenter in the nature of a wireless
remote pointer”;11
MIDNIGHT ECLIPSE (in standard characters) for
“gaming machines, namely, devices which accept a
wager”;12 and

catches, magnetic quick lifters, magnetic vices and magnetic conveyors,] and all the parts of
the aforesaid goods,” in International Class 7. (The bracketed text indicates goods that have
been deleted from the registration.)
6 Registration No. 1526584, issued on February 8, 1989, renewed.
7 Registration No. 1581195, issued on February 6, 1990, renewed.
8 Registration No. 2109357, issued on October 28, 1997, renewed.
9 Registration No. 3503154, issued on September 16, 2008, Sections 8 and 15 combined
declaration accepted and acknowledged.
10 Registration No. 3986292, issued on June 28, 2011.
11 Registration No. 3986293, issued on June 28, 2011.
12 Registration No. 4150483, issued on May 29, 2012.
Serial No. 77921983
- 4 -
CASH ECLIPSE (in standard characters) for “gaming
devices, namely slot machines, with or without video
output.”13
When the refusal was made final, Applicant appealed, moved to divide the
application and requested reconsideration.14 After the application was divided and
the Examining Attorney denied the request for reconsideration, the appeal was
resumed. Applicant and the Examining Attorney filed briefs. We affirm in part and
reverse in part.

13 Registration No. 4202676, issued on September 4, 2012.
14 The request to divide was granted and Applicant’s child Application Serial No. 77975668
survived publication, without opposition, for:
(Based on Intent to Use) Cases for mobile phones, protective
carrying cases for PDAS, cell phones, computer games,
decorative charms for cell phones, digital trading cards in the
nature of multimedia software recorded on magnetic media
featuring films, music and entertainment, video game software,
and video game cartridges and discs; disposable cameras,
downloadable computer wallpaper software and screen saver
software, digital media, namely, downloadable audio files
featuring films, music and entertainment and video recordings
featuring films, music and entertainment, electric door bells,
electronic diaries, headphones and earphones, juke boxes,
motion picture films in the fields of drama and romance, musical
sound recordings, neon signs, decorative switch plate covers,
tape measures, downloadable television programs and
documentaries featuring drama, comedy, horror, romance, and
variety provided via a global computer network or video-on-
demand service, trading cards in the form of CDs, video game
software, and video game cartridges and discs; pre-recorded
DVDs, videotapes, and other audiovisual recordings, namely,
DVDs featuring motion pictures, television programs, and
documentaries; and downloadable software that provides access
to movie and entertainment-related content and allows users to
socialize and interact with other users; (Based on Use in
Commerce) digital media, namely, downloadable multimedia
files containing images relating to motion pictures, television
programs, music and documentaries.”
Serial No. 77921983
- 5 -

Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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 (CCPA 1976). These factors and others are discussed
below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944
(Fed. Cir. 2006) (even within the du Pont list, only factors that are “relevant and of
record” need be considered).
As a preliminary matter, we note that generally once likelihood of confusion is
found as to one good in an International Class the entire Class fails. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981) (it is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods within a
particular class in the application); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1745 (TTAB 2014); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1847 n.9 (TTAB 2004). However, when a refusal is made specifically to certain
goods, the remaining goods are not affected.
Serial No. 77921983
- 6 -
In this case, the Examining Attorney refused registration as to specific goods and
indicated the application would proceed for the “remaining goods.”15 Applicant’s
subsequent request to divide the application and place the “remaining goods” into a
child application was granted on May 13, 2013. While the Examining Attorney did
not explicitly state that the refusal to the other goods is directed to the goods
individually, her approach, citing a multitude of registrations, each against a
particular good in Class 9, and carving out other goods, effectively does just that. In
addition, we find it to be an appropriate approach given the multitude of registrations
(some cited, some not) with marks that contain the word ECLIPSE for various goods
in Class 9 co-existing on the Principal Register, and the vast differences between
goods in Class 9 (e.g., magnets, wind socks and slot machines).
In addition, throughout the prosecution and briefing, the Examining Attorney and
Applicant have misinterpreted the identification of goods.16 The original
identification in the application reads as follows (emphasis added):
Backpacks adapted for holding computers, camera cases,
cases for mobile phones, cases for PDAs, cell phones,
computer games, decorative charms for cell phones,
decorative magnets sold in sheets, decorative wind socks,
digital trading cards, disposable cameras, downloadable
computer wallpapers and screen savers, downloadable files
and recordings featuring music, downloadable widgets,
electric door bells, electronic diaries, eyeglasses and
eyeglass cases, headphones and earphones, juke boxes,
laptop carrying cases, magnets, motion picture films in the

15 See September 22, 2014 Office action p. 1.
16 At oral hearing Applicant noted that the identification for MP3 players may be interpreted
as covers for MP3 and MP4 players, rather than the actual players, as it comes after “covers
for cell phones.” In fact, as discussed above, that is the only way it properly may be
interpreted.
Serial No. 77921983
- 7 -
fields of drama and romance, mousepads, musical sound
recordings, neon signs, slot machines, sunglasses and
sunglass cases, switch plate covers, tape measures,
television programs and documentaries, trading cards in
the form of CDs, video game software, and video games;
pre-recorded DVDs, videotapes, and other audiovisual
recordings featuring motion pictures; computer storage
devices, namely, flash drives; covers for cell phones,
portable music players, laptops, PDAs, and gaming devices;
and downloadable software that provides access to movie
and entertainment-related content and allows users to
socialize and interact with other users
We must interpret an identification of goods as written and, here, the listing for
“covers” is set off by a semicolon and all goods following it are divided by commas.
The only way to read this identification is that the category of “covers” is created by
the preceding semicolon and the items set off by commas within that category define
the type of cover. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163,
1166 (TTAB 2013). See also TMEP § 1402.01(a) (October 2015) (semicolons are used
to separate distinct categories of goods or services within a single class and commas
are used in the identification to separate items within a particular category of goods
or services).17
The final identification of goods includes the following:
; covers for cell phones, portable and handheld electronic
digital devices for playing music, namely, MP3 and MP4
players, laptop computers, personal digital assistants,

17 By contrast, use of the commas in the beginning of the identification sets off different
categories of goods (backpacks adapted for holding computers, camera cases, cases for mobile
phones, cases for PDAs, cell phones, computer games, decorative charms for cell phones,
decorative magnets sold in sheets, decorative wind socks … mousepads, … slot machines,
sunglasses and sunglass cases,…”). However, once the semicolon is used at the end of the
prior list it serves to create a distinct category.
Serial No. 77921983
- 8 -
namely, PDAs, and gaming devices, namely, gaming
machines,
The identification, as amended, correctly continues to divide “covers” as a separate
category of goods and lists the types of covers with further modifying language to
clarify, for example, that the covers for a “portable music player” are covers for an
“MP3 player.” To interpret it otherwise would be outside the scope of the original
identification, which clearly creates a category of “covers.” Trademark Rule 2.71(a),
37 CFR § 2.71(a). See also TMEP § § 1402.06(b), 1407 (October 2015).
The Examining Attorney argued that Applicant’s MP3 and MP4 players and
gaming machines are related to audio equipment and gaming devices in the cited
registrations. However, this argument was based on the apparent misunderstanding
that Applicant’s identification included such devices, which it does not. We address
the relatedness of goods issue as to these goods as they are identified, i.e., as
various types of “covers,” infra.
We note that the wording “all relating to motion pictures and entertainment” is
only separated by a comma within this “covers” category. However, the wording is no
longer part of a list of types of covers and the stated intent in Applicant’s request for
reconsideration is to restrict all of the goods in the identification by this limiting
language.18 In view thereof, we apply the wording “all relating to motion pictures and
entertainment” to all of the goods in the identification.

18 March 25, 2015, Req. for Recon. p. 2 (“Applicant wishes to divide its application to divide
the Approved Goods into a child application to proceed to publication and to keep the Refused
Goods in the present parent application for amendment and reconsideration by the
Examining Attorney. … Applicant has amended the identification of the remaining goods to
restrict them to those relating to motion pictures and entertainment.”)
Serial No. 77921983
- 9 -
Applicant is the producer and distributor behind the Twilight motion picture
franchise and ECLIPSE refers to the third film in the Twilight saga. 8 TTABVUE
11.19 Applicant has obtained several registrations for the mark ECLIPSE for various
goods (cosmetics, action figures, cloth bags, pillows and bandages for skin wounds)
and for “licensing of merchandise associated with motion pictures.”20 It is, of course,
common practice for companies to use the title of a film on various merchandising
goods. L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (the
licensing of commercial trademarks on “collateral products” has become a part of
everyday life). The USPTO routinely registers such marks even if the use is
ornamental because it serves as collateral use or secondary source. In re Paramount
Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982) (MORK & MINDY registrable for
decals and primary significance was to indicate television series). See also TMEP §
1202.03(c) (October 2015).
In making our determination, we first consider three issues highlighted by
Applicant: (1) what effect, if any, does the addition of the wording “all relating to
motion pictures and entertainment” to Applicant’s identification of goods have on the
likelihood of confusion equation in this case; (2) do the relevant consumers exercise
care in purchasing the various goods; and (3) how narrow is the scope of protection
for the ECLIPSE marks for the various goods in Class 9.

19 Citations to TTABVUE refer to the docket history system for the Trademark Trial and
Appeal Board by entry and page number.
20 August 21, 2014 Response, pp. 219-227.
Serial No. 77921983
- 10 -
Effect of Wording “all relating to motion pictures and entertainment”
Applicant argues that:
[Its goods are] marketed through mass market retailers
and other affordable channels of commerce [and] [g]oods
marketed under Applicant’s ECLIPSE mark are often sold
using imagery from the Twilight Motion Pictures in order
to further distinguish those goods in the marketplace. … In
recognition of this marketplace reality, Applicant’s
identification of goods expressly contains a restriction,
namely, they are all products “relating to motion pictures
and entertainment.”
App. Br., 8 TTABVUE 28 (emphasis in original).
While this may serve to restrict Applicant to selling only products that relate to
motion pictures and entertainment, the Registrants’ various identifications have no
restrictions and we must consider all ordinary channels of trade for the respective
goods, not the Registrants’ actual channels of trade. The question would be, do the
ordinary channels of trade for the various cited goods include goods sold in relation
to motion pictures and entertainment? If they do, then Applicant’s “restriction” does
not obviate the refusal.
Applicant has stated that its channels of trade are “mass market retailers and
other affordable channels of commerce.” Id. These channels are certainly included in
the ordinary channels of trade for the various cited goods. Applicant licenses use of
its mark ECLIPSE for use on various goods, which could include the cited goods. The
Registrants are the types of companies that could license such use on the various
goods. The “all relating to” language does not eliminate the Registrants’ goods which,
without restrictions, would presumptively include marketing their goods relating to
motion pictures and entertainment. Thus, “we do not see the language as imposing a
Serial No. 77921983
- 11 -
meaningful limitation on Applicant's goods in any fashion, most especially with
respect to either trade channels or class of purchasers.” In re i.am.symbolic, llc, 116
USPQ2d 1406, 1410 (TTAB 2015).
Applicant argues this language limits the nature of the goods in the sense that
consumers purchasing Applicant’s goods “do so because they relate to the Twilight
Motion Pictures.” App. Br., 8 TTABVUE 35. However, if the marks are identical and
the goods, as identified, are identical and are a type of good that could be sold in
relation to a motion picture, we must consider the nature of the goods to be the same.
Moreover, the “relating to” language in Applicant’s identification of goods does not
avoid reverse confusion where a Registrant’s identification is not limited by channels
of trade or classes of purchasers. As just stated, if the marks are identical and the
goods, as identified, are identical and are a type of good that could be sold in relation
to a motion picture, we must consider the nature of the goods to be the same. Despite
any motion picture connection that may be claimed by Applicant, the statute still
“protects the registrant and senior user from adverse commercial impact due to use
of a similar mark by a newcomer.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993). As the Federal Circuit stated:
The term “reverse confusion” has been used to describe the
situation where a significantly larger or prominent
newcomer “saturates the market” with a trademark that is
confusingly similar to that of a smaller, senior registrant
for related goods or services. Sands, Taylor & Wood Co. v.
Quaker Oats Co., 978 F.2d 947, 957 & n.12, 24 USPQ2d
1001, 1010 & n.12 (7th Cir. 1992), cert. denied, 61 U.S.L.W.
3621 (U.S. Apr. 19, 1993) (No. 92-1400). The junior user
does not seek to benefit from the goodwill of the senior user;
however, the senior user may experience diminution or
Serial No. 77921983
- 12 -
even loss of its mark’s identity and goodwill due to
extensive use of a confusingly similar mark by the junior
user. Banff, Ltd. v. Federated Department Stores, Inc., 841
F.2d 486, 490, 6 USPQ2d 1187, 1191 (2d Cir. 1988);
Ameritech, Inc. v. American Information Technologies
Corp., 811 F.2d 960, 966, 1 USPQ2d 1861, 1866 (6th Cir.
1987).
The avoidance of confusion between users of disparate size
is not a new concept; however, the weighing of the relevant
factors must take into account the confusion that may flow
from extensive promotion of a similar or identical mark by
a junior user. See DeCosta v. Viacom International Inc., 981
F.2d 602, 607-10, 25 USPQ2d 1187, 1191-93 (1st Cir. 1992).
Thus, because of the presumptions we must accord the cited registrations, the
unilateral restrictions “essentially [are] a distinction without a difference for
purposes of our likelihood of confusion analysis.” In re i.am.symbolic, llc, 116 USPQ2d
at 1410.
Applicant argues that the goods are “often sold using imagery from the Twilight
Motion Pictures.” However, the phrase “all relating to motion pictures and
entertainment” does not require such specific limitation and the argument recognizes
the option of marketing without such imagery by using the word “often.”
Applicant argues that because its goods are used in connection with motion
pictures and entertainment and the Applicant is the producer and distributor behind
the Twilight saga motion pictures, this presents a different context and as such a
different meaning and commercial impression of its mark in contrast to the cited
marks. Similar to the trade channels issue, the Registrants’ marks do not exclude use
Serial No. 77921983
- 13 -
in relation to a movie and, accordingly, the meaning and commercial impressions of
the cited marks could include such context.21
Applicant also points to what it is (movie producer) and what the Registrants are
(magnetics company, consumer electronics company, sunglass manufacturer, gaming
and computer accessory electronics company, manufacturer of gambling devices,
seller of slot machines to casinos) essentially arguing that who owns the respective
marks should impact how we view the similarity or dissimilarity of the marks (and
the goods) based on context derived from ownership of the respective registrations.
First, several of these types of companies could be potential licensees of a company
like Applicant. Second, these arguments are more directed to an infringement claim
drawing upon real world use of the marks, but our inquiry is confined to the register.
It is possible to have the register reflect more accurately the real world facts on the

21 We note that Applicant stresses the renown of its mark in connection with a movie. To the
extent this has an impact in the determination, it would serve to increase likelihood of
confusion by making it more likely that purchasers will remember the famous mark and
think of it when encountering similar goods sold under a similar mark. Such likelihood of
confusion is only a reason to refuse a new registration, not grant one. To the extent that the
mark is well known, such fact supports refusal of Applicant’s application, “because when
confusion is likely, it is the prior Registrant that must prevail. Even if it eclipses the renown
of the prior Registrant, Applicant’s fame does not entitle it to usurp the cited Registrant’s
rights in the mark.” In re i.am.symbolic, 116 USPQ2d at 1413 n.7.
Further as explained in In re i.am.symbolic, “[t]he purported lack of fame of Registrant's
mark, as argued by Applicant, is of little consequence. See TMEP § 1207.01(d)(ix). Because
of the nature of the evidence required to establish the fame of a registered mark, the Board
normally does not expect the Examining Attorney to submit evidence as to the fame of the
cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB
2006). And, in an ex parte analysis of the du Pont factors for determining likelihood of
confusion, the “fame of the mark” factor is normally treated as neutral when no evidence as
to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark
“is not particularly significant in the context of an ex parte proceeding”).” Id. at 1413.
Serial No. 77921983
- 14 -
ground as Applicant seeks to do with its addition of the wording “all related to motion
pictures and entertainment”; however to achieve the full picture, in particular where
there are no differences in the marks, Applicant would have to seek to restrict the
cited registrations to their respective trade channels through a petition for partial
cancellation.22
Sophistication of Purchasers
Applicant argues that the potential purchasers of the Registrants’ goods would
exercise a high degree of care. Again, Applicant’s arguments impermissibly narrow
the unrestricted identifications in the cited registrations which are not limited by, for
example, price point, and there is nothing inherent in the identification of, e.g.,
“magnets” which would limit the price point of all of the goods sold in the ordinary
channels of trade for magnets which would include mass retailers. In our analysis,
we must consider all potential customers, including the less sophisticated. In re
Bercut-Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986) (average ordinary wine
consumer must be looked at in considering source confusion). There is nothing in the
record that purchasers of the applied-for goods, including mouse pads and magnets,
in retail stores exercise more than the usual care taken in purchasing such items,
and such items can be subject to impulse purchasing. However, even if we were to
assume that purchasers of Registrants’ various goods are discriminating, it is settled
that even sophisticated purchasers are not immune from source confusion, especially

22 See Section 18 of the Trademark Act, 15 U.S.C. § 1068. See also TBMP § 309.03(d) (2015)
and cases cited therein.
Serial No. 77921983
- 15 -
where the marks and goods are identical. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers … are not infallible.”)). See also In re
Shell Oil Co., 26 USPQ2d at 1690; In re Decombe, 9 USPQ2d 1812 (TTAB 1988). The
identity of the marks and the relatedness of the goods sold thereunder outweigh any
presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d
1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods). See also Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-
63 (Fed. Cir. 2014).
Strength/Weakness of the ECLIPSE Marks
Applicant argues that the term ECLIPSE is widely used as a mark for various
goods in relevant industries encompassing Applicant’s various goods in Class 9. The
record establishes the weakness of this mark for all of Applicant’s identified goods
and we apply a very narrow scope of protection in our determination. Because there
are so many ECLIPSE marks in Class 9 and several in the relevant fields (e.g.,
computer accessories, glasses), any addition to the marks, including differences in
meaning and commercial impression based on the context of Applicant’s goods, is
Serial No. 77921983
- 16 -
sufficient to obviate likely confusion. We particularly note that the record includes
over 70 third-party registrations in the electronics industry including:23
ECLIPSE for microfilm and microfiche, scanners (Reg. No.
2800500);24
ECLIPSX for computer software programs for operating
informational displays (Reg. No. 2957083);25
ECLIPSEPLUS for computer software for managing,
tracking, scheduling and deploying advertising and
commercials; computer software for billing advertisers and
for planning advertising sales (Reg. No. 3767129);26
ECLIPSE for building access control system for personnel
comprised of personnel identification cards and recognition
devices, data entry pads and biometric recognition devices,

23 In Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed.
Cir. 2015) the Court found third-party registrations “in the food service industry” which
included goods (various food items) and services (restaurants, cafes, bars) to be relevant to
the question of weakness of a mark for restaurant services. In this case, where there are over
100 live registrations in Class 9 for marks with the word ECLIPSE along with the third-party
registrations referenced by the Examining Attorney to show the relatedness of goods, it is
clear goods in this Class can inhabit a broad category. See, e.g., Reg. No. 4640039 for audio
recorders, cases for mobile phones, computer hardware and computer peripherals, computer
keyboards, laptop carrying cases, MP3 players; Reg. No. 4621038 for cell phone cases, cell
phone covers, computer keyboards, computer mouse, mouse pads; and Reg. No. 4032679 for
sunglasses, carrying case for cell phones, headphones, etc. June 15, 2015 Denial Req. for
Recon., pp. 120, 179, 132. In view thereof, we find it appropriate to define the relevant
industries broadly for the respective goods.
We further note, that despite these third-party registrations seemingly pointing to a
relationship between, for example, sunglasses and cell phone covers, and the existence of
third-party registrations for a variety of cameras, Applicant’s ECLIPSE mark was approved
for “cases for mobile phones” and “disposable cameras” in the child application over the
ECLIPSE registrations for various electronic items, sunglasses and cameras, which indicates
the Office recognizes the narrow scope of protection to be accorded the ECLIPSE marks in
these goods categories.
24 August 21, 2014 Response, p. 72.
25 Id. at 73.
26 Id. at 77.
Serial No. 77921983
- 17 -
electronic data processors, alarm devices and door locks
(Reg. No. 3808558);27
ECLIPSE for infrared and thermal imaging cameras and
accessories therefor, namely, video transmitting devices,
digital cameras, digital video recorders, glare reduction
shields, retractable attachment straps, shoulder straps,
monocular eyepieces, extendable camera booms, camera
tripods, and receiving and transmitting antennae; all for
use in the field of firefighting operations (Reg. No.
3854539);28
DRI ECLIPSE for bed-wetting treatment alarm (Reg. No.
3887344)29
ECLIPSE for computer software for improving
performance of micro-lithographic processes (Reg. No.
3922222);30
ECLIPSE for jeweler’s magnifying glasses with lights for
examining diamonds and other precious gemstones (Reg.
No. 4007223);31
ECLIPSE for cytometers (Reg. No. 4013645);32
SOLAR ECLIPSE for remote video monitoring system
consisting primarily of a camera and video monitor for
recording and transmitting images to a remote location
(Reg. No. 4357374);33
ECLIPSAIR for apparatus, namely, electronic instruments
for the operation of audio-visual WLAN infotainment
systems in aircrafts; apparatus, namely, electronic

27 Id. at 79.
28 Id. at 80.
29 Id. at 82.
30 Id. at 83.
31 Id. at 86.
32 Id. at 87.
33 Id. at 93.
Serial No. 77921983
- 18 -
instruments for in-flight communication in aircrafts (Reg.
No. 4438238);34
for computer software for use by
physicians and other healthcare practitioners and
healthcare providers for office management (Reg. No.
3134758);35
ECLIPSE for electrical voice intracommunications systems
for use in the production of live musical performances,
theatre, and other live events, namely, electrical voice
intracommunications systems comprising control station,
interface modules, frames, controller cards, connectors,
power supplies, panels and mountings, software for
operation of the foregoing, and user manuals sold as a
package therewith (Reg. No. 3315056);36
for security products, namely
surveillance cameras, camera mounting brackets, camera
housing, quads, switchers, multiplexors, monitors, and
digital video recorders (Reg. No. 3316904);37
ECLIPSE iLM for software for managing databases (Reg.
No. 3478560);38
ECLIPSE for wireless communications systems, namely,
digital modems, multiplexers, microwave radio
transmitters and receivers, antennas, and related
operating firmware, all sold separately, or as a unit used
together to interconnect stations in mobile networks or
provide local access to telecommunications systems for

34 Id. at 94.
35 Id. at 101.
36 Id. at 102.
37 Id. at 103.
38 Id. at 106.
Serial No. 77921983
- 19 -
voice and/or data services, and manuals sold as a unit (Reg.
No. 3737252);39
ECLIPSE for microscopes and parts therefor (Reg. No.
2092155);40
for apparatus for recording, transmission or
reproduction of images, namely, machine readable media
cartridges; data processing equipment; recorded media,
namely, DVDs featuring graphical data in the field of
personal crafting and child education; computer software
for use in authoring, downloading, transmitting, receiving,
editing, extracting, encoding, decoding, playing, storing
and organizing graphical data in the field of personal
crafting and child education; structural parts and
structural fittings for all the aforesaid goods (Reg. No.
4080586);41 and
ECLIPS for apparatus for recording, transmission or
reproduction of images, namely, machine readable media
cartridges; data processing equipment; recorded media,
namely, DVDs featuring graphical data in the field of
personal crafting and child education; computer software
for use in authoring, downloading, transmitting, receiving,
editing, extracting, encoding, decoding, playing, storing
and organizing graphical data in the field of personal
crafting and child education; structural parts and
structural fittings for all the aforesaid goods (Reg. No.
4080585).42
Other third-party registrations in the different fields covered by Class 9 relevant
to Applicant’s identified goods include:

39 Id. at 119.
40 Id. at 133.
41 This registration was initially cited against this application but was withdrawn during
prosecution.
42 This registration was initially cited against this application but was withdrawn during
prosecution.
Serial No. 77921983
- 20 -
ECLIPSE SHADES for protective eyewear to view solar
events (Reg. No. 3094455);43
ECLIPSE for contact lens (Reg. No. 1670064);44
ECLIPSE for safety spectacles (Reg. No. 1808360);45 and

SOLAR ECLIPSE for sunglasses (Reg. No. 2109357).46
The Examining Attorney argues that third-party registrations support that
several of these goods are related. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). While that may be so, given the weakness of ECLIPSE in the relevant
fields, we only hold on the refusals where the marks are identical without any other
matter to serve to distinguish them and the goods are identical. We address the
refusals based on the groupings made by the Examining Attorney.
1. Decorative magnets sold in sheets … Magnets
The registration cited against Applicant’s decorative magnets sold in sheets and
magnets is:
Reg. No. 799454 ECLIPSE (in typed form) for “magnets.”
Applicant’s mark ECLIPSE (in standard characters) is identical to Registrant’s
mark ECLIPSE (in typed form). Applicant’s “magnets” are identical to Registrant’s
“magnets” and its “decorative magnets sold in sheets” are legally identical as they are

43 Id. at 100. This registration was initially cited against this application but was withdrawn
during prosecution.
44 Id. at 122.
45 Id. at 125.
46 Id. at 135. This registration is cited against the sunglasses, eyeglasses and cases therefor.
Serial No. 77921983
- 21 -
encompassed by Registrant’s broad and unlimited identification “magnets.” Even
assuming the wording “all relating to motion pictures and entertainment” in
Applicant’s mark serves to limit Applicant’s goods, there are no such limitations in
Registrant’s identification and it encompasses magnets sold “relating to motion
pictures and entertainment.” Under such circumstances, we must presume the goods
travel in the same channels of trade and are offered to the same classes of consumers.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Applicant’s arguments and evidence regarding Registrant’s actual use are
unavailing because they impermissibly narrow the scope of the registration by
extrinsic evidence. It is well-established that the question of likelihood of confusion
must be determined on the basis of an analysis of the mark as applied to the goods
and/or services recited in an applicant’s application vis-à-vis the goods and/or services
recited in the cited registration, rather than what the evidence shows the goods
and/or services to be. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB
1999). Accord, Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). In view thereof, the refusal is affirmed
as to “decorative magnets sold in sheets” and “magnets.”
2. Backpacks adapted for holding computers, laptop carrying cases, mousepads,
computer storage devices, namely, flash drives; covers for … laptop computers47

47 The Examining Attorney included “laptop computers” in this grouping but as explained
supra “laptop computers” are not part of the identification only “covers for … laptop
computers” are part of the identification.
Serial No. 77921983
- 22 -
The registrations owned by the same registrant cited against Applicant’s
backpacks adapted for holding computers, laptop carrying cases, mousepads,
computer storage devices, namely, flash drives, and covers for laptop computers, are:
Reg. No. 3986292 for the mark ECLIPSE (in standard
characters) for “computer keyboards; computer game
joysticks; computer mice; mouse pads; wireless presenter
in the nature of a wireless remote pointer”; and
Reg. No. 3986293 for the mark for “computer
keyboards; computer game joysticks; computer mice;
mouse pads; wireless presenter in the nature of a wireless
remote pointer.”
Registrant’s mark ECLIPSE (in standard characters)48 is identical to Applicant’s
mark ECLIPSE (in standard characters). Applicant’s “mousepads” (or “mousepads …
relating to motion pictures and entertainment”) are identical to or encompassed by
Registrant’s unlimited identification “Mouse pads” and are presumed to travel in the
same channels of trade and be offered to the same classes of consumers. Viterra, 101
USPQ2d at 1908. In view thereof, the refusal is affirmed as to “mousepads.”
However, given the narrow scope of protection to be accorded ECLIPSE marks in
the electronic field, we find Applicant’s “backpacks adapted for holding computers,
laptop carrying cases, computer storage devices, namely, flash drives; covers for …
laptop computers” sufficiently different from Registrant’s “computer keyboards;
computer mice; mouse pads; wireless presenter in the nature of a wireless remote
pointer” to avoid likelihood of confusion.

48 We only consider the registration for the standard character mark as it is closer than
Registrant’s design mark .
Serial No. 77921983
- 23 -
In this regard, we observe that the Examining Attorney originally cited
Registration No. 3515398 for “backpacks especially adapted for holding laptops;
backpacks especially adapted for holding laptops and notebook computers; laptop
carrying cases; messenger bags especially adapted for holding laptops” against
Applicant’s “backpacks adapted for holding computers, laptop carrying cases”;
however, after that registration cancelled,49 the Examining Attorney lumped these
goods in with the goods barred by the “mouse pads” registrations.
The refusal is reversed as to “backpacks adapted for holding computers, laptop
carrying cases, computer storage devices, namely, flash drives, and covers for
laptops.”
3. Covers for … portable and handheld electronic digital devices for playing music,
namely, MP3 and MP4 players
The registrations, owned by the same entity, cited against Applicant’s covers for
the MP3 and MP4 players are:
Reg. No. 1526584 ECLIPSE (in typed form) for “mobile
sound equipment and accessories, namely, am-fm tuners,
cassette, cd and speakers, amplifiers and equalizers”;
Reg. No. 1581185 for “mobile sound
equipment and accessories, namely, am-fm tuners,
cassette, cd and dat players, speakers, amplifiers and
equalizers”; and
Reg. No. 3503154 for “Audio and visual
equipment, namely, radios, CD players, DVD players, hard
disc players, and audio equipment for vehicles, namely,
equalizers, amplifiers, speakers, and combination CD/DVD

49 This registration co-existed under different ownership with the two cited registrations.
Serial No. 77921983
- 24 -
players; navigation apparatus for automobiles in the
nature of on-board computers.”
As noted above, Applicant’s goods are covers for MP3 and MP4 players. The record
does not support a finding that such covers are sufficiently related to Registrant’s
goods in this case and the USPTO has already approved Applicant’s mark for mobile
phone covers. In view thereof, the refusal is reversed as to “covers for portable and
handheld electronic digital devices for playing music, namely, MP3 and MP4 players.”
4. Eyeglasses and eyeglass cases, sunglasses and sunglass cases
The registration cited against Applicant’s eyeglasses and eyeglass cases,
sunglasses and sunglass cases is:
Reg. No. 2109357 SOLAR ECLIPSE (in typed form) for
“sunglasses.”
The record includes the following third-party registrations for eyewear:
ECLIPSE SHADES for protective eyewear to view solar
events (Reg. No. 3094455);50
ECLIPSE for contact lens (Reg. No. 1670064);51 and
ECLIPSE for safety spectacles (Reg. No. 1808360).52
In addition, we take judicial notice of the definition for the word ECLIPSE as “any
obscuration of light.”53 The definition of ECLIPSE further supported by the third-

50 August 21, 2014 Response p. 100. This registration was originally cited but withdrawn
during prosecution.
51 Id. at 122.
52 Id. at 125.
53 Dictionary.com based on the RANDOM HOUSE DICTIONARY (2016) (www.dictionary.com).
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (the Board may take judicial notice of
dictionary definitions). See also In re Driven Innovations, Inc., 115 USPQ2d 1261, 1266 n.18
Serial No. 77921983
- 25 -
party registrations indicate this term has a suggestive connotation used in connection
with eyewear, in particular sunglasses, namely, that light is obscured. We further
note the record suggests some of the ECLIPSE registrations for electronic accessories
have some relevance to the weakness of this term. See Reg. No. 4032670, for the mark
EXPERIMENT WITH NATURE for, inter alia, cases for spectacles and sunglasses;
eyeglasses; sunglasses; audio headphones; carrying cases for cell phones; cases for
mobile phones; and earphones and headphones.54 Although the marks may share the
same suggestive connotation of obscuring light, in view of the weakness of the term
ECLIPSE in this field, the addition of SOLAR to Registrant’s mark is sufficient to
distinguish these marks. The refusal as to eyeglasses and eyeglass cases, sunglasses
and sunglass cases is reversed.
5. Slot machines and covers for … gaming devices, namely, gaming machines
The registrations, owned by different entities, cited against Applicant’s slot
machines and covers for gaming devices, namely, gaming machines are:
Reg. No. 4150483 MIDNIGHT ECLIPSE (in standard
characters) for “gaming machines, namely, devices which
accept a wager”; and
Reg. No. 4202676 CASH ECLIPSE (in standard
characters) for “gaming devices, namely slot machines,
with or without video output.”
As noted above Applicant’s goods are “covers for … gaming devices, namely,
gaming machines.” The record does not support a finding that such covers are related

(TTAB 2015); In re Petroglyph Games Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009); In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
54 June 15, 2015 Denial Req. for Recon., pp. 120-122.
Serial No. 77921983
- 26 -
to Registrants’ goods, and the refusal is reversed as to covers for gaming devices,
namely, gaming machines.
Further, we find the additional wording in the Registrants’ marks, co-existing
with different owners, to be sufficient to distinguish them from Applicant’s mark, in
particular, CASH ECLIPSE which clearly would not share the movie connotation
with Applicant’s mark.
The refusal is reversed as to “slot machines” and “covers for gaming devices,
namely, gaming machines.”
6. Decorative wind socks for indicating wind direction and intensity
The registration cited against these goods has been cancelled and is no longer a
bar to the registration. No other cited registration has similar or related goods on
their face and there is no evidence to support a finding that these goods are related
to any of the goods in the remaining cited registrations. The refusal is reversed as to
“decorative wind socks for indicating wind direction and intensity.”
7. Camera cases, covers for cell phones and personal digital assistants, namely PDAs
The Examining Attorney did not specifically address these goods. None of the cited
registrations contain these goods or serve as a bar to these goods.55 The refusal is
reversed as to “camera cases,” and “covers for cell phones and personal digital
assistants, namely PDAs.”

55 As previously noted the USPTO allowed Applicant’s child application for cases for mobile
phones, protective carrying cases for PDAS, cell phones, computer games, headphones and
earphones.
Serial No. 77921983
- 27 -
Decision: The refusal to register Applicant’s mark is affirmed as to decorative
magnets sold in sheets, magnets, mousepads, and reversed as to backpacks
adapted for holding computers, camera cases, decorative wind socks for
indicating wind direction and intensity, eyeglasses and eyeglass cases,
laptop carrying cases, slot machines, sunglasses and sunglass cases,
computer storage devices, namely, flash drives; covers for portable and
handheld electronic digital devices for playing music, namely, MP3 and
MP4 players, laptop computers, personal digital assistants, namely, PDAs,
and gaming devices, namely, gaming machines, all relating to motion
pictures and entertainment. The decorative magnets sold in sheets, magnets, and
mousepads will be deleted from the application and it will proceed to publication.