SunTiger, Inc.

Trademark Trial and Appeal Board

Apr 4, 2019

EX (T.T.A.B. Apr. 4, 2019)

Mailed: April 4, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re SunTiger, Inc.
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Serial Nos. 87339291, 87339305 and 87380164
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Colin P. Abrahams of the Law Office of Colin P. Abrahams
for SunTiger, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Taylor, Adlin and Hightower, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant SunTiger, Inc. seeks Principal Register registrations for the proposed
standard character marks 2 IN 1, 3 IN 1 and 4 IN 1, each for “Eyeglass cases;
Eyeglass chains; Eyeglass cords; Eyeglass frames; Eyeglass lanyards; Eyeglass
lenses; Eyeglasses; Eyewear; Optical frames; Optical lenses; Spectacle holders;
Spectacles; Sunglasses.”1 The Examining Attorney refused registration under Section

1 Application Serial Nos. 87380164 (the “’164 Application”), 87339291 (the “’291 Application”
and 87339305 (the “’305 Application”), respectively, each filed under Section 1(b) of the
Trademark Act, based on an alleged intent to use the proposed mark in commerce. Applicant
filed the ’291 and ’305 Applications on February 16, 2017 and the ’164 Application on March
21, 2017.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 87339291, 87339305 and 87380164
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2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the proposed
marks are each merely descriptive of the identified goods. After the refusals became
final, Applicant appealed and filed requests for reconsideration which were denied.
At the Examining Attorney’s request, the appeals were consolidated and Applicant
and the Examining Attorney filed briefs.
I. The Record
The Examining Attorney relies on two dictionary definitions of “in one;” third-
party uses of the term 2 IN 1 in connection with eyewear; another third-party’s use
of 2 IN 1, 3 IN 1 and 4 IN 1 in connection with eyewear; and one publication discussing
a third-party’s use of 3-IN-1 for glasses. The dictionary definitions are:
IN ONE─“combined in a single thing,” using as an
example “a DVD and VCR player in one.”2

IN ONE─“combined; united,” indicating that the term is a
“phrase” and that “You can use in one to indicate that
something is a single unit, but is made up of several
different parts or has several different functions.”3

Office Action of May 17, 2017 in ‘291 Application TSDR 5, 12 (printouts from
“merriam-webster.com” and “collinsdictionary.com”).

2 merriam-webster.com/dictionary/in%20one.
3 collinsdictionary.com/dictionary/english/in-one.
Serial Nos. 87339291, 87339305 and 87380164
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Specsmakers’s use of 2 IN 1 in connection with glasses is depicted below:

Denial of Request for Reconsideration of August 21, 2018 in ‘164 Application TSDR 3
(printout from “specsmakers.in”).4 According to Specsmakers’s website, the
“cumbersome” task of “carrying a separate pair of sunglasses” is a “thing of the past”
for customers using its “2 IN 1 glasses.” Uriah Choe uses the term 2 IN 1 similarly:

4 While the Specmakers website is accessible via a “.in” Internet address, the country code
top level domain for India, the site’s use of the phrase “it’s always sunny in Philadelphia”
appears to be an indication that Specmakers offers its products to United States consumers.
Serial Nos. 87339291, 87339305 and 87380164
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Id. TSDR 8 (printout from “uriahchoe.com”). However, in this example, 2 IN 1 refers
to “two different frame styles in one singular unit.” Id. Third party Eagle Eyes uses
2 IN 1, 3 IN 1 and 4 IN 1 in connection with glasses:

Serial Nos. 87339291, 87339305 and 87380164
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Office Action of December 26, 2017 in ‘291 Application TSDR 5 (printout from
“eagleeyes.com”). Eagle Eyes describes the 3 IN 1 glasses as follows: “Imagine 24/7,
3-way eye protection contained in a single pair of stylish frames. Whether day, night
or digital light, these glasses are ready for your eyes.” Id. TSDR 6. Eagle Eyes also
offers a 4 IN 1 system, which includes attachable lenses “for sun,” “for night,” “for low
light” and “for digital light”:

Serial Nos. 87339291, 87339305 and 87380164
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Office Action of August 21, 2018 in ‘305 Application TSDR 3-10 (printout from
“amazon.com”); see also Office Action of December 26, 2017 in ‘305 Application TSDR
11-12 (printout from “eagleeyes.com”) (“Imagine 24/7 4-way eye protection contained
in a single pair of stylish frames.”). Eagle Eyes also uses 2 IN 1 in connection with
glasses featuring both “UV and blue light protection.” Office Action of December 26,
2017 in ‘164 Application TSDR 12 (printout from “eagleeyes.com”).
A portion of the article about another third-party’s 3 IN 1 glasses is depicted be-
low:

Denial of Request for Reconsideration of August 21, 2018 in ‘291 Application TSDR
3-10 (printout from “digitaltrends.com”). According to the article, while “eyewear
traditionally does one job,” today’s gadgets typically perform “more than one,” and
the Jins product “is a pair of prescription glasses that performs three functions,”
Serial Nos. 87339291, 87339305 and 87380164
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including vision correction, filtering blue light from screens and sun protection. Id.
The article concludes that “[t]here’s no need to …be forced to buy a pair of regular
glasses, a pair of sunglasses, and a third pair of glasses for looking at a screen at
night. The Frontswitch does it all-in-one.” Id.
Thus, all told, the Examining Attorney has established use of 2 IN 1 for glasses
by three third parties, use of 3 IN 1 for glasses by two third parties and use of 4 IN 1
for glasses by one third party. Applicant did not introduce any evidence.
II. Analysis
The record leaves no doubt that each of the proposed marks, 2 IN 1, 3 IN 1 and 4
IN 1, is merely descriptive, because each mark immediately conveys knowledge of a
quality, feature, function, characteristic or purpose of the goods for which it is used.
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)
(quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). In fact, each term
conveys that the stated number (“2,” “3” or “4”) of eyewear-related products or
functions are combined into a single (“1”) item, package or unit. This essentially
reflects the dictionary definition of “in one,” and it makes no difference that Applicant
uses the number “1” rather than the word “one,” as “1” and “one” convey identical
meanings in this context.
The evidence fully supports the conclusion that the proposed marks are merely
descriptive and convey the ordinary, dictionary-defined meaning of “in one” (or “in
1”). In each of the use examples introduced by the Examining Attorney, the products
Serial Nos. 87339291, 87339305 and 87380164
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are specifically promoted as eliminating the need to carry or use multiple items rather
than just one. Furthermore, the items are promoted as performing multiple functions
for which consumers ordinarily require multiple items. The “digitaltrends.com”
article perhaps said it best: “[t]here’s no need to … be forced to buy a pair of regular
glasses, a pair of sunglasses, and a third pair of glasses for looking at a screen at
night. The Frontswitch does it all-in-one.” Denial of Request for Reconsideration of
August 21, 2018 in ‘291 Application TSDR 3-10 (printout from “digitaltrends.com”).
While the Examining Attorney’s evidence mostly relates to glasses as opposed to
eyewear accessories and Applicant’s other identified goods, this supports the refusal
under Section 2(e)(1). Indeed, if a proposed mark is descriptive for any of the goods
identified in a particular class, registration is properly refused. See In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (quoting Application of
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 48 (CCPA 1975) (“Our predecessor
court … has stated that ‘registration should be refused if the mark is descriptive of
any of the goods [or services] for which registration is sought.’”)); In re Quick-Print
Copy Shop, Inc., 616 F. 2d 523, 205 USPQ 505, 507 (CCPA 1980).
Applicant’s arguments in support of registration are unpersuasive. While it is not
clear from the proposed marks which “2,” “3” or “4” of Applicant’s specifically
identified eyewear-related goods are combined into a single unit, the point is that
each of the proposed marks merely describes that the stated number of goods are
combined into one. “The question is not whether someone presented with only the
mark could guess what the goods or services are. Rather, the question is whether
Serial Nos. 87339291, 87339305 and 87380164
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someone who knows what the goods or services are will understand the mark to
convey information about them.” In re Tower Tech Inc., 64 USPQ 2d 1314, 1316-17
(TTAB 2002). Here, someone who knows that Applicant offers eyewear cases, chains,
cords, frames, lanyards and lenses, as well as eyeglasses and sunglasses, will
immediately know that units bearing the proposed marks will be comprised of the
stated number of these specific items combined into one.
Applicant’s argument that the Office has previously registered marks containing
2 IN 1, 3 IN 1 or 4 AND 1 is not well-taken, because Applicant failed to introduce any
such registrations into the record. We therefore do not know: if Applicant’s
representation is correct; whether the alleged registrations are on the Supplemental
Register, include disclaimers or are registered under Section 2(f) of the Act; or for
which goods or services the alleged marks are allegedly registered.
III. Conclusion
The record reveals that Applicant’s proposed marks 2 IN 1, 3 IN 1 and 4 IN 1 are
each merely descriptive of a characteristic, feature, function or purpose of Applicant’s
identified goods.

Decision: The refusals to register Applicant’s proposed marks under Section 2(e)(1)
of the Trademark Act are each affirmed.