Utopia Optics, LLC

Trademark Trial and Appeal Board

Apr 19, 2001

No. 75599276 (T.T.A.B. Apr. 19, 2001)

4/19/01
Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Utopia Optics, LLC
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Serial No. 75/599,276
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Thomas P. Maloney for Utopia Optics, LLC.
Michael H. Kazazian, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
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Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On Dec. 3, 1998, applicant filed the above-referenced
application to register the mark shown below,
which applicant described in its application as
“U (Stylized),” on the Principal Register for “eyeglasses
and sunglasses, and lenses, frames, and cases therefor,” in
Class 9. The basis for the application was applicant’s
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/599,276
2
assertion that it possessed a bona fide intention to use
the mark in commerce on these goods.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that if
applicant were to use the mark it seeks to register in
connection with the goods specified in the application, it
would so resemble four registered trademarks that confusion
would be likely. He subsequently withdrew the refusal to
register based on one of these registrations, but
maintained the refusal to register based on the other
three, all of which are owned by the same entity, Bausch &
Lomb Inc., a New York corporation. The three registered
marks which the Examining Attorney contends constitute bars
to registration of applicant’s mark are ”U,”1 “U3,”2 and
“U4.”3 The goods identified in each of the cited
registrations are “contact lenses,” in Class 9.
Applicant responded to the refusal to register with
argument that confusion would not be likely between the
mark it seeks to register and any of the marks in the three
1 Reg. No. 1,242,614, issued on the Principal Register on
September 21, 1981; Combined affidavit under Sections 8 and 15
accepted and received
2 Reg. No. 1,242,615, issued on the Principal Register on June
21, 1983; Combined affidavit under Sections 8 and 15 accepted and
received.
3 Reg. No. 1,242,616, issued on the Principal Register on June
21, 1983; Combined affidavit under Sections 8 and 15 accepted and
received.
Ser No. 75/599,276
3
cited Bausch & Lomb registrations. In addition to arguing
that its stylized presentation of the letter “U” differs in
appearance from the typed version of the letter “U” which
the cited registered marks consist of or include, applicant
stated that it had obtained a copy of the file wrapper for
the Bausch & Lomb registration of the “U” mark (Reg. No.
1,242,614), and that the file shows that registration was
initially refused in that case because of a prior
registration of a “fanciful depiction of the letter U” in
connection with “lenses, frames, mountings, and parts
thereof.”4 Applicant quoted from the argument Bausch & Lomb
made to the Examining Attorney in that application against
the refusal to register. Based on the record in that case,
applicant herein contended that the Examining Attorney
there must have concluded that contact lenses and frames
and ophthalmic lenses do not travel in the same channels of
trade, and that this fact, combined with the distinctions
between the registered fanciful “U” in that case and the
“U” that Bausch & Lomb sought to register there were
4 Reg. No. 786,394, issued to Univis, Inc. on March 9, 1965.
Although a copy of this registration was not submitted by
applicant until the filing of its brief, and therefore was not
timely submitted under Trademark Rule 2.142(d) of the Trademark
Rules of Practice, we have considered it because the Examining
Attorney treated it as if it were of record.
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sufficient to make confusion unlikely.
The Examining Attorney in the instant case was not
persuaded by applicant’s arguments, however, and in his
second Office Action, he made the refusal to register final
based on his conclusions that applicant’s mark is virtually
identical to one of the cited registered marks and quite
similar to the other two, and that eyeglasses, sunglasses,
lenses, frames and cases for them are closely related to
contact lenses.
In support of this conclusion, he submitted copies of
many third-party registrations which list both contact
lenses and eyeglasses as the goods in connection with which
the marks are registered, along with excerpts retrieved
from the Nexis database of published articles. The
excerpts state that Bausch & Lomb makes both eyeglasses and
contact lenses, and that eyeglasses and contact lenses are
sold to the public by ophthalmologists and optometrists, as
well as to licensed eyecare professionals over the
Internet.
Applicant timely filed a Notice of Appeal and an
appeal brief. The Examining Attorney filed his brief on
appeal, and applicant filed a reply brief, but no oral
hearing before the Board was requested.
Ser No. 75/599,276
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Based on careful consideration of the record and
arguments before us, we find that the refusal to register
is well taken.
In the case of In re E. I. DuPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to
our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods as set forth in
the application and registration, respectively.
In the case at hand, the record shows that the goods
set forth in the application are closely related to the
goods listed in the cited registrations, and the mark
applicant seeks to register is virtually identical to one
of the cited registered marks, “U,” and creates a
commercial impression which is similar to those engendered
by the other two cited registered marks, “U3” and “U4,” so
use of applicant’s mark in connection with such related
products would be likely to cause confusion.
Turning first to consideration of the relatedness of
the goods in the registrations and the goods identified in
the application, although some of the third-party
registrations submitted by the Examining Attorney were
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registered under Section 44 of the Act, many are based on
use in commerce. These registrations, which list both
contact lenses and eyeglasses, tend to show that these
goods may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Co., 6 USPQ2d 1467 (TTAB 1988). The excerpt from the
interview with registrant’s Chief Executive Officer which
was provided by the Examining Attorney indicates that the
public has been exposed to the notion that the owner of the
cited registration manufactures both contact lenses and
eyeglasses. The other excerpted articles indicate similar
exposure to the idea that optometrists and ophthalmologists
dispense both contact lenses and eyeglasses, and that both
products are sold to such eyecare professionals over the
Internet for subsequent resale to the public. Contact
lenses and eyeglasses obviously are used by the same
people, ordinary consumers, for the same purpose, to
correct vision. The goods set forth in the application are
closely related to the goods identified in the cited
registrations.
Applicant’s contention that the arguments made by the
owner of the cited registration in its application to
register the cited “U” mark are binding on the Patent and
Trademark Office in the instant case is not well taken for
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several reasons. In this proceeding, which is an ex parte
appeal from the refusal to register the mark of Utopia
Optics LLP, Bausch & Lomb’s argument in another application
with respect to another, different, stylized “U,” which was
registered to an entity unrelated either the applicant in
the instant proceeding or to Bausch & Lomb, plainly does
not have the effect, as argued by applicant, of somehow
constituting an estoppel against Bausch & Lomb, which is
also not a party to this proceeding. The propriety of the
registration of the cited mark is not before us in this
appeal. It is well settled that the Board is not bound by
prior decisions of Examining Attorneys to register other
marks, and that each case before us must be resolved on its
own record and merits. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
In the instant case, notwithstanding applicant’s
argument to the contrary, applicant’s mark, which is a
stylized letter “U,” is virtually the same as the
registered mark “U.” Although applicant’s mark is
presented in special form, the stylization is not so
distinctive as to create a commercial impression which is
substantially different from that created by the typed
version of the letter in the cited registration, such that
purchasers are likely to believe that the goods bearing the
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two marks come from a different source. Moreover, as
pointed out by the Examining Attorney, the protection
accorded to a mark registered in typed form extends to all
reasonable depictions of that mark, and in this case, would
include a presentation of the letter “U” in the style in
which applicant intends to use it. Plus Products v. Vita
Plus, Inc., 220 USPQ 922 (TTAB 1983).
In view of the close similarity between the registered
mark “U” and the mark applicant seeks to register, their
use on the closely related goods set forth in the
registration and application, respectively, would be likely
to cause confusion.
Applicant’s stylized “U” is also similar to the other
two registered marks, “U3” and “U4,” cited as bars to
registration. Although the registered marks also contain
the numbers “3” and “4,” when the marks are considered in
their entireties, applicant’s mark and the cited marks
create similar commercial impressions. The numbers would
likely be understood as indications of different models, or
as indications of different features, of “U” brand contact
lenses. In view of the established relationship between
the goods in these registrations and the goods set forth in
the application and the similarities between these marks
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and the mark applicant seeks to register, confusion would
be likely.
Decision: The refusals to register under Section 2(d)
are affirmed.
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