Samsung Electronics Co., Ltd.Download PDFTrademark Trial and Appeal BoardAug 8, 201987553889 (T.T.A.B. Aug. 8, 2019) Copy Citation Mailed: August 8, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Samsung Electronics Co., Ltd. _____ Serial No. 87553889 _____ Diane J. Mason of Drinker Biddle & Reath LLP for Samsung Electronics Co., Ltd. Bernice L. Middleton, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Cataldo, Wolfson and Heasley, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Samsung Electronics Co., Ltd., seeks registration on the Principal Register of the mark SAMSUNG FLIP (standard characters), identifying Computer monitors; LCD large-screen displays; Large size electronics digital displays, namely, digital signage; Electronic interactive whiteboards; Touch panel; Computer software for use in operating, configuring, and controlling touch screen technology; Computer software for storing and managing text, audio, video, graphics, audio visual and multimedia content in International Class 9.1 1 Application Serial No. 87553889 was filed on August 2, 2017, and subsequently amended to assert Section 44(e) of the Trademark Act, 15 U.S.C. 1126, as a filing basis, with a claim of priority based on European Union Registration No. 017040106, issued on December 11, 2017. This Opinion is Not a Precedent of the TTAB Serial No. 87553889 - 2 - Registration has been refused pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), based on Applicant’s failure to comply with the requirement to disclaim the term FLIP on the ground that it is merely descriptive of Applicant’s goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1). When the refusal was made final, Applicant appealed and filed a Request for Reconsideration. On January 9, 2019, the Examining Attorney denied the request and maintained the refusal. The appeal was subsequently resumed and fully briefed. We affirm the refusal of registration in the absence of the required disclaimer. I. Applicable Law An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a). A disclaimer is a statement that the applicant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013). “The effect of a disclaimer is to disavow any exclusive right to the use of a specified word, phrase, or design outside of its use within a composite mark.” Id. (quoting In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979)). Failure to comply with a disclaimer requirement is a ground for refusal of registration. In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d The application includes the following translation: “The English translation of ‘SAMSUNG’ in the mark is ‘THREE STARS.’” Serial No. 87553889 - 3 - 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012). Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. A term is deemed to be merely descriptive of goods or services if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217- 18 (CCPA 1978). A term that describes any of the goods identified in the application may be deemed merely descriptive, even if it is suggestive or arbitrary with respect to other identified goods. See In re Canron, Inc., 219 USPQ 820, 821 (TTAB 1983) II. Whether FLIP is Merely Descriptive of the Goods Applicant’s goods are Computer monitors; LCD large-screen displays; Large size electronics digital displays, namely, digital signage; Electronic interactive whiteboards; Touch panel; Computer software for use in operating, configuring, and controlling touch screen technology; Computer software for storing and managing text, audio, video, graphics, audio visual and multimedia content. The Examining Attorney argues that the term FLIP merely describes a characteristic and feature of the goods, namely, the goods have the capability to turn over or move from one position to another. Further, the software would be a component of the devices. The identification of goods lists controlling software such that the software controls the function of a touch screen and other displays. Therefore, a Serial No. 87553889 - 4 - feature of the software enables turning from one page to another, as well as, rolling from one orientation to another such as portrait to landscape.2 In support, the Examining Attorney submitted English-language dictionary definitions for “flip,” defined, inter alia, as “to cause to turn and especially to turn over; to turn or roll from one side to the other; to change from one state, position, subject, etc., to another.”3 The Examining Attorney also provided printouts from an Internet search showing descriptive uses of the term FLIP in connection with Applicant’s goods and related goods offered by third parties. These include: • An article from theverge.com discusses Applicant’s identified goods under the involved mark. “Samsung is unveiling Flip today at the Consumer Eletronics Show, a 55-inch digital whiteboard that can be flipped between portrait and horizontal orientation.”;4 • An article in computerworlduk.com reviewing interactive smart boards for businesses, discusses Applicant’s goods under the applied-for mark. “A digital flip chart with a dual-sided stylus combines the feel of traditional writing with digital display and features including document collaboration, annotation and searching. It also adds a flip feature that gives the whiteboard its name, allowing users to pivot it horizontally or vertically depending on their need…”;5 and • An article in quartet.com discusses third-party Quartet Kapture Digital Flipcharts. “With Bluetooth technology, the digital pen and digital flipchart pads are wirelessly connected to your computer with a USB receiver. Graphs, drawings and notes written on the digital flipchart pads 2 9 TTABVUE 4. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders on appeal are to the Board’s TTABVUE docket system. 3 At https://www.merriam-webster.com/dictionary/flip, attached to the October 3, 2017 first Office Action, at TSDR 5-9. 4 June 19, 2018 Final Office Action at TSDR 5-8. 5 Id. at TSDR 9-32. It is not clear to what extent this U.K. webpage will be viewed by U.S. consumers. Nonetheless, this evidence tends to corroborate the other evidence of record. Serial No. 87553889 - 5 - are instantly transmitted to your PC. What you see on the screen is identical to what you wrote on the digital flipchart pad.”6 The Examining Attorney further introduced a copy of Applicant’s prior Registration No. 4792751 for the mark SAMSUNG FLIP WALLET (standard characters, “FLIP WALLET” disclaimed), identifying a long list of goods in Class 9 including “electronic whiteboards.”7 In support of its position that “FLIP” is suggestive of its goods, Applicant introduced a copy of its prior Registration No. 5559700 for the mark issued on the Principal Register,8 identifying goods identical to those in the involved application. Applicant also introduced the following third-party registrations, all issued on the Principal Register:9 Reg. No. 4475431 for the mark identifying “Compartmentalized protective case for portable electronic devices, namely, cell phones, smart phones, and media players;” Reg. No. 4931571 for the mark FLIP WORDS (standard characters, WORDS disclaimed), identifying “video and computer game programs;” Reg. No. 4772507 for the mark FLIP SIDE (standard characters), identifying “dual sided magnetic signs;” Reg. No. 4168498 for the mark FLIP-FIT (standard characters), identifying “computer notebook case features, namely, compartments and cushions which 6 Id. at TSDR 33-34. 7 Id. at 40-44. 8 Issued September 11, 2018. No disclaimer is entered in the registration record for this mark. 9 December 19, 2018 Request for Reconsideration at TSDR 8-19, retrieved from the USPTO’s Trademark Electronic Search System (TESS). Applicant also submitted a copy of a third- party application having little, if any, probative value. See, e.g., Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003) (“[T]hird-party applications are evidence only of the fact that they were filed; they have no other probative value.”). Serial No. 87553889 - 6 - permit the user to adjust the case to accept computer notebooks of varying sizes;” Reg. No. 4572776 for the mark QUICK FLIPS (standard characters), identifying “electric switches; electric switch boxes;” and Reg. No. 5070474 for the mark FLIP IT (standard characters), identifying long lists of goods and services in multiple classes, including numerous computer- related products in Class 9. Whether the term “flip” is merely descriptive is determined, not in the abstract, but in relation to Applicant’s goods, the context in which the mark is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use. In re Abcor Dev. Corp., 200 USPQ at 218; In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). Here, the Examining Attorney has introduced evidence into the record to show the nature of the goods on which Applicant uses or intends to use its mark. Applicant’s goods include electronic interactive whiteboards, digital signage, large screen displays and software for use therewith. The Examining Attorney’s evidence clearly establishes that at least Applicant’s digital whiteboards can be “flipped” between portrait and landscape orientations depending on the content being displayed. The evidence further establishes that third-parties also market digital flipchart pads similar to Applicant’s identified goods. Given that the term “flip” may mean “to cause to turn” or “to change from one position to another,” consumers will expect, upon encountering Applicant’s mark SAMSUNG FLIP that the term “flip” signifies that the goods may be turned or changed from one position to another. The term “flip” immediately conveys this meaning without any need for additional thought or imagination. Accordingly, it is Serial No. 87553889 - 7 - merely descriptive of a feature of the goods, in particular, Applicant’s electronic whiteboards. Applicant argues that “in these definitions of ‘FLIP,’ the word has the connotation of an action of physically turning an item over, so that the surface that was underneath is now on the top.”10 We agree with Applicant that one definition of “flip” means to turn over an object, e.g., to flip a pancake. However, “flip” also more generally means to turn an object, e.g., to flip a switch from the off position to on, or to change its position, in this case, from portrait to landscape. Thus, we do not agree with Applicant’s rather restrictive view of the definition of “flip,” and find that it may include the rotation of Applicant’s digital whiteboards. We have stated many times that our determination is not controlled by the possibility that a term may have other meanings in different contexts. See, e.g., In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Applicant further argues that the “suggestiveness of the term FLIP is evidenced by the [above-noted] registrations, in which FLIP was found to be suggestive.”11 With regard to Applicant’s prior Reg. No. 5559700 for the mark , the prosecution history of the application underlying that registration is not in the record, and we cannot determine the examining attorney’s decision to approve that mark for registration without a disclaimer. Further, while we are not unsympathetic to Applicant’s situation, we simply are not bound by the decisions of examining 10 7 TTABVUE 7. 11 7 TTABVUE 11. Serial No. 87553889 - 8 - attorneys in this or prior cases. The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). Although consistency in examination and the register are commendable goals, we are not bound by the previous examining attorney’s decision that apparently did not view the inverted term “flip” as merely descriptive of Applicant’s goods. Cf. In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009) (“applicant is not automatically entitled to a return to the status quo...the Board is not bound by the decision of the prior trademark examining attorney”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB 2007); In re Outdoor Recreation Group, 81 USPQ2d 1392, 1399 (TTAB 2006). With regard to the third-party registrations Applicant made of record, we note that the marks and FLIP SIDE appear to be unitary marks that do not require disclaimers of individual terms. In addition, none of the marks identifies goods related to the goods in the application at issue. As noted above, the prosecution histories of the applications underlying these third-party registrations are not of record and we are unable to determine the examining attorneys’ decisions regarding the descriptiveness of the term “flip” in these registrations. “It has been said many times that each case must be decided on its own facts.” In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (internal citation omitted). Thus, the fact that the Office has not required a disclaimer of FLIP in the registrations submitted by Applicant does not Serial No. 87553889 - 9 - persuade us that a disclaimer is not required in the case before us. See generally, TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1213 (Oct. 2018). III. Summary Based on the record before us, we find that the relevant public, when it considers FLIP in the context of Applicant’s SAMSUNG FLIP mark, particularly in connection with “LCD large-screen displays; digital signage; electronic interactive whiteboards” will understand the term to describe a feature of the goods, namely, that they may be turned or rotated from portrait to landscape view to accommodate the content displayed thereupon. Decision: The refusal to register based on the requirement to disclaim the term FLIP is affirmed. However, if Applicant submits the required disclaimer of FLIP to the Board within thirty days, this decision will be set aside, the disclaimer will be entered, and the application will proceed to registration in due course.12 Trademark Rule 2.142(g), 37 C.F.R. §2.142(g). 12 The standardized printing format for the required disclaimer text is as follows: “No exclusive right to use FLIP is claimed apart from the mark as shown.” Copy with citationCopy as parenthetical citation