In re ic! berlin brillen GmbH

Trademark Trial and Appeal Board

Feb 14, 2008

No. 79005455 (T.T.A.B. Feb. 14, 2008)

Mailed: February 14, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ic! berlin brillen GmbH
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Serial No. 79005455
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Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger,
PLLC for ic! berlin brillen GmbH.

Amy Gearin, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
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Before Hohein, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On July 7, 2004 ic! berlin brillen GmbH filed an
application to register as a trademark on the Principal
Register the design shown below for “spectacles,
sunglasses” in International Class 9.1

1 Serial No. 79005455, filed under the Madrid Protocol, Section
66(a) of the Trademark Act, 15 U.S.C. § 1141(f), based on
International Registration No. 0833581, issued July 7, 2004.
THIS OPINION IS A
PRECEDENT OF
THE TTAB
Ser No. 79005455
2

Applicant subsequently amended the application to seek
registration under Trademark Act Section 2(f). The mark is
described as follows:
The mark consists of an earpiece for frames for
sunglasses and spectacles which comprises three
“fingers” at the end near the hinge connecting
the earpiece with the lens-enclosing portion of
the frame. The three “fingers” are separated by
openings that create two distinct lines. The
upper line of the earpiece is straight and the
bottom line is angled upward toward the portion
that rests on the wearer’s ears. The entire
configuration resembles an asymmetrical fork.
There exists a hinge at the point where the
configuration joins the lens-enclosing portion of
the spectacle or sunglasses frame, but the hinge
feature is not claimed as a part of the
configuration. The broken or dotted lines show
the mark’s position on the goods.

The trademark examining attorney has finally refused
registration under Trademark Act Sections 1, 2, and 45 on
the ground that the design sought to be registered
(hereinafter “earpiece design”) is not inherently
distinctive and that applicant has not established acquired
distinctiveness.
Ser No. 79005455
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Applicant and the examining attorney have filed
briefs.
Since applicant seeks registration under Trademark Act
Section 2(f), the only issue before us is whether applicant
has established acquired distinctiveness.
It is applicant’s position that, as a result of its
use for over five years, sales, and advertising and
promotional efforts, the earpiece design sought to be
registered has become distinctive of applicant’s eyewear.
In support of its claim of acquired distinctiveness,
applicant submitted the declaration and supplemental
declaration of its Director and General Manager, Juliette
Cook. Ms. Cook alleges that the earpiece design has become
distinctive of applicant’s goods through exclusive and
continuous use of the design in commerce in the United
States since at least as early 2001; that applicant markets
dozens of styles of eyewear, with each style featuring the
earpiece design; that from 2001 through October 2006
applicant sold approximately 40,000 units of eyewear in the
United States, including 15,000 units in 2006 alone; that
applicant promotes and advertises its eyewear through
magazine advertisements, product literature, direct sales,
the Internet, celebrity placements, and national and
international trade shows directed at optical products
Ser No. 79005455
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purchasers; and that applicant spent approximately $115,000
marketing its eyewear in 2006 alone. Applicant also
submitted samples of its print and Internet advertising;
photographs of celebrities wearing its eyewear; and ten
uniformly worded customer declarations from opticians.
Attached to each declaration is an exhibit referred to as
“Exhibit A” featuring a photograph of applicant’s earpiece
design. Each declarant states that he/she is a customer of
applicant and is familiar with applicant’s products and
trademarks as a result of purchases made over periods
ranging from 18 months to six years. Further, each
declarant states, in relevant part, that:
I am familiar with the earpiece design of the
spectacle marketed by ic! berlin brillen GmbH that
has the shape shown in the drawing attached hereto
as Exhibit A. When I see this particular shape I
recognize the product as being a product of ic!
berlin brillen GmbH.

It is my understanding that the shape of this
product design indicates products produced by ic!
berlin brillen GmbH and not by any other company.

It is my understanding that the product design
shown in Exhibit A has acquired in the trade the
meaning of spectacles and spectacle frames produced
only by ic! berlin brillen GmbH.

Many of my customers ask for ic! berlin brillen
GmbH spectacles by referring to the design shown in
Exhibit A, and expect that all products comprising
that design will come from the same source and will
be of equal quality with all other products from
that source.

Ser No. 79005455
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The examining attorney takes the position that there
is little evidence that the ultimate purchasers of eyewear
would perceive the earpiece design as an indication of
source and that the evidence submitted by applicant is not
persuasive. Specifically, the examining attorney argues
that there is no evidence of “look for” advertising or
promotion of the earpiece design as a trademark for
applicant’s eyewear. According to the examining attorney,
the mere fact that applicant’s advertisements and
promotional materials contain pictures of its eyewear does
not mean that the ultimate purchasers recognize the
earpiece design as a trademark.
Applicant, in response, maintains that:
…. the absence of “look for” advertising or
promotion does not mean that consumers do not
recognize the design as applicant’s trademark.
Applicant’s goods by their nature, are small,
narrow, and of little mass. The portion of the
goods that is most visible is the earpiece.
Eyewear manufacturers use the earpiece to display
their trademarks. This is the part of the eyewear
that is the most easily viewed portion of the
product. Accordingly, the Spectacle Earpiece
Design mark is immediately viewed and one’s
attention is drawn to that portion of the eyewear
whether it is seen in person or in photographs in
advertisements. This is also why celebrity product
placements are used in the eyewear industry since
it gets the distinctive look of the eyewear into
the public eye. (citations omitted)
(Brief at 10).

Ser No. 79005455
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The burden of proving a prima facie case of acquired
distinctiveness in an ex parte proceeding rests with
applicant. Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 1576, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988);
citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401,
1405, 222 USPQ 939, 942 (Fed. Cir. 1984).
After careful consideration of the evidence submitted
in this case, we are not persuaded that the earpiece design
sought to be registered has become distinctive of
applicant’s eyewear. The chief reason is the absence of
evidence of the advertising and/or promotion by applicant
of the earpiece design as a trademark. While the earpiece
design is visible on the eyewear shown in applicant’s print
advertisements and Internet web pages, and in the celebrity
photographs of record, there is nothing to indicate that
the ultimate purchasers would view this particular feature
as anything more than a component of the eyeglass/sunglass
frame.
In this regard, we note that one of applicant’s
magazine advertisements features a photograph of
applicant’s eyeglasses and states:
The latest German engineering, now in sight.
Presenting ic! berlin’s latest prescription and
sunglass collection for 2005. Available now, and
only at Glance. Highly durable with incredible
fashion sense, the stainless steel frames and
Ser No. 79005455
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patented hinges flex and form to fit your face.
And, as always, you’ll find them to be remarkably
priced.

There is no reference, however, to the earpiece design.
Similarly, applicant’s web pages feature photographs of its
eyewear along with information concerning frame models,
weight, and color options. Again, there is no mention of
the earpiece design.
With respect to the celebrity photographs, they do not
serve to show customer perception of the earpiece design.
They are simply head and body shots of celebrities who are
wearing applicant’s eyewear. Although we recognize that in
most of the photographs the celebrities are posing in such
a manner that the earpiece design is visible, these
photographs do not serve to show customer recognition of
the source-identifying significance of the earpiece design,
nor can we infer such recognition from this evidence. In
short, there is simply no evidence that the earpiece design
has been advanced as a trademark for applicant’s eyewear.
Applicant contends that “look for” advertising and/or
promotion is unnecessary because “[e]yewear manufacturers
use the earpiece to display their trademarks.” (Brief at
10). There is no evidence, however, to support applicant’s
contention that eyewear manufacturers typically display
Ser No. 79005455
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their trademarks on the earpieces of their eyewear. It may
well be that eyewear manufacturers typically display word
and logo marks on the earpieces of their eyewear, but word
and logo marks are different in nature from applicant’s
earpiece design. In short, we are unable to conclude that
the ultimate consumers would view the earpiece design as
applicant’s trademark simply because it is the earpiece
portion of the eyewear frame.
Insofar as the declarations from opticians are
concerned, they are entitled to some weight because each
declarant states: (1) the length of time during which
he/she has purchased goods from applicant, (2) that he/she
understands the earpiece design to indicate eyewear from
applicant; and (3) that many of his/her customers ask for
applicant’s eyewear by the earpiece design. However, the
statements of ten retailers do not establish an association
of the earpiece design with applicant by other than an
extremely small number of the purchasing public.
Further, we find that applicant’s sales and
advertising figures are not especially impressive such that
they establish acquired distinctiveness. Applicant has
provided no evidence which indicates the relative size of
its sales to those of competitors. Nonetheless, we believe
it is safe to say that millions of persons in the United
Ser No. 79005455
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States wear eyeglasses and/or sunglasses. Thus,
applicant’s eyewear sales of 40,000 units from 2001 to
October 2006 would constitute a small portion of the total
sales of eyewear for this period. In any event, even
assuming that applicant’s eyewear is popular, this may well
result from features of its eyewear which are deemed
superior by the purchasing public, e.g., “highly durable;”
“stainless steel frames and patented hinges [which] flex
and form to fit [the] face.” (Applicant’s magazine
advertisement). Moreover, it is well settled that even
compelling sales and advertising figures do not always
amount to a finding of acquired distinctiveness. See In re
Boston Beer Co., L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) ($85,000,000 in annual sales revenues and
$2,000,000 in advertising expenditures found insufficient
to establish acquired distinctiveness); Goodyear Tire &
Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705 (TTAB
1998) ($56,000,000 sales revenues and 740,000 tires sold
insufficient to show acquired distinctiveness of tire tread
design.)
Lastly, with respect to applicant’s declaration of
exclusive and continuous use for a period of five years,
while this may serve as prima facie evidence of acquired
distinctiveness, the language of the statute is permissive
Ser No. 79005455
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and the weight to be accorded this kind of evidence depends
on the facts and circumstances of the particular case. See
Section 2(f) of the Trademark Act, 15 U.S.C. Section
1052(f). Given the absence, however, of any evidence
showing promotion of the earpiece design as a trademark for
applicant’s goods and applicant’s rather limited market
share, a period of five years substantially exclusive and
continuous use is insufficient to establish acquired
distinctiveness.
Accordingly, based upon consideration of all the
evidence of record, we conclude that applicant has failed
to establish that the earpiece design involved in the
application before us has acquired distinctiveness within
the meaning of Section 2(f) of the Trademark Act.
Decision: The refusal to register is affirmed.