Clic Goggles, Inc.

Trademark Trial and Appeal Board

May 23, 2014

No. 85880683 (T.T.A.B. May. 23, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Clic Goggles, Inc.
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Serial No. 85880680 & 85880683
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Nathan P. Koenig of Bay Area Technology Law Group PC,
for Clic Goggles, Inc.
Carolyn A. Pendleton, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Greenbaum, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Clic Goggles, Inc. (“Applicant”) seeks registration on the Principal Register of the
marks MAGNETIC READERS and MAGNETIC READING GLASSES (in standard
characters) for
eyewear in International Class 9.1

1 Application Serial Nos. 85880680 & 85880683, respectively, were filed on March 20, 2013,
based upon applicant’s allegation of a bona fide intention to use the marks in commerce
under Section 1(b) of the Trademark Act.
Serial Nos. 85880680 & 85880683
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In each case, the Trademark Examining Attorney has refused registration of
Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
on the ground that the mark is merely descriptive of the identified goods.
After the Examining Attorney made the refusals final, Applicant appealed to
this Board. We affirm the refusal to register in each case.
I. Consolidation
When, as here, Applicant has filed ex parte appeals to this Board in two co-
pending applications, and the cases involve common issues of law or fact, this
Board, upon request by the Applicant or Examining Attorney or upon its own
initiative, may order the consolidation of the appeals for purposes of briefing, oral
hearing, or final decision. TBMP § 1214 (3d ed. rev.2 2013). See also, e.g., In re
Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two
appeals); In re Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB
2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board
sua sponte considered appeals in five applications together and rendered single
opinion). Because the appeals involve common issues, they are hereby consolidated.
The records are essentially identical in each appeal, and references to the record,
whether in the singular or plural form, pertain to both Applications.
II. Applicable Law
A mark is deemed to be merely descriptive of goods, within the meaning of
Section 2(e)(1), if it “immediately conveys knowledge of a quality, feature, function,
or characteristic” of the goods with which it is used. In re Chamber of Commerce of
Serial Nos. 85880680 & 85880683
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the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)); In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of the applicant's
goods in order to be considered merely descriptive; rather, it is sufficient that the
mark describes one significant attribute, function or property of the goods. In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ
338, 339 (TTAB 1973). Whether a mark is merely descriptive is determined not in
the abstract, but in relation to the goods for which registration is sought, the
context in which it is being used on or in connection with the goods, and the possible
significance that the mark would have to the average purchaser of the goods
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). It is settled that “[t]he question is not whether someone presented with only
the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).2

2 Applicant’s reliance on Ex Parte Heatube Corp., 109 USPQ 423 (Comm’r Pats. 1956) as
setting forth the test for determining whether a mark is merely descriptive is misplaced.
See App. Br., p. 4. The test has evolved over time, and we must follow the test as set forth
above by the Court of Appeals for the Federal Circuit, our primary reviewing court. See also
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A
mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the
applicant’s goods and services,” citing In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).
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When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. See, e.g., DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695
F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely
descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration
and injection needles; medical, hypodermic, aspiration and injection syringes”);
Oppedahl, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of
computer software for managing a database of records that could include patents
and for tracking the status of the records by means of the Internet); In re Petroglyph
Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“because the combination of the
terms does not result in a composite that alters the meaning of either of the
elements, refusal on the ground of descriptiveness is appropriate”), cited with
approval in Dalton v. Honda Motor Co., 425 Fed. Appx. 886, 893 (Fed. Cir. 2011)
(not precedential). However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983); and
TMEP § 1209.03(d) (April 2014).
Serial Nos. 85880680 & 85880683
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The Examining Attorney argues that READERS and READING GLASSES are
generic names for eyewear, a position with which Applicant agrees. See App. Br. at
4. The Examining Attorney also argues that MAGNETIC identifies a significant
feature of Applicant’s eyewear in that the frames connect at the bridge of the
wearer’s nose with magnets, so that the applied-for marks MAGNETIC READERS
and MAGNETIC READING GLASSES merely describe the fact that the frames of
Applicant’s readers/reading glasses have a magnetic bridge closure, a position with
which Applicant disagrees.
Although the Applications are based on Applicant’s bona fide intent to use the
marks in commerce, the Examining Attorney made of record with the June 28, 2013
and January 8, 2014 Office Actions evidence that Applicant actually sells
readers/reading glasses with a magnetic bridge closure. In particular, Applicant’s
website features Applicant’s “Clic Smoke Reading
Glasses ‘Long’” and “Clic Black XXL Reading Glasses,” both of which have a “unique
patented neodymium magnetic system [that] allows the glasses to come together at
the bridge.” This evidence also touts the ease with which the wearer can put the
readers on (by letting “the magnets draw together at the bridge”) and take them off
(by “pull[ing] the magnets apart and the glasses will hang comfortably around your
neck. That way you know exactly where they are when you need them again.”).
In addition, the record is replete with evidence of third-party references to the
magnetic bridge closure feature of Applicant’s reading glasses/readers. For example,
the ReadingGlasses.com website, which displays several types of Applicant’s
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reading glasses disconnected at the bridge, describes Applicant’s “Clic Reader
Single Vision Half Frame” as follows:
NEVER LOSE YOUR READING GLASSES AGAIN
CliC Eyewear has a magnetic closure on the bridge and
continuous temples that form a wrap-around neck band.
Place the flexible neckband around your head and the
magnetic closure will ‘clic’ into place. The temple length
will adjust an inch or so. Relax, CliC readers won’t slide
down your nose or slip off if you happen to bend over a bit
too far. When you want to take them off, simply separate
the eye pieces and let them hand around your neck.
TECHNOLOGY
Clever, patented magnetic bridge closure using an “earth
magnet!” Yes, that’s right. The most powerful magnets on
earth are nested in the bridge of these amazing readers.
These magnets are a strong combination of neodymium,
iron and boron. They are so strong that when the magnets
pull towards one another and close, you will hear the
“click.”
Similarly, the screenshot from the Catalog.com website features
different styles of Applicant’s readers that “wrap around the head and close with a
neodymium magnet at the bridge of the nose.” Likewise, The Find website
features various styles of Applicant’s reading glasses, all of which
have a “magnetic closure,” and the YTM website describes
Applicant’s CliC tortoise shell readers as having “a front connection system
attached to an adjustable form fitting headband. The readers connect with a
magnet.” Further, the MagnetGlasses.com website describes
Applicant’s readers as using a “neodymium magnet at the bridge of the nose,” and
the Miami Lighthouse website describes Applicant’s
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readers as having a “magnetic front connection for quick access to readers” and the
ease with which the wearer can “click the two sides together and put them on” when
he or she is “ready to read.”
Applicant argues that MAGNETIC READERS and MAGNETIC READING
GLASSES
could mean a number of things including eyewear which
is made of ferrous materials to enable the eyewear to
adhere to magnets for storage or which would accept add-
ons, such as sunglass lenses to the frames of the eyewear
by magnetic attraction or optical or non-optical devices
such as supplemental lenses or which provide a protective
feature in the event that the eyewear is to be used in high
risk situations where debris could enter one’s eye if left
unprotected. App. Br. at 3-4.
However, Applicant does not contend that any of the alternate meanings is a double
entendre, as was Sugar & Spice for bakery goods in Colonial Stores, or that
MAGNETIC READERS or MAGNETIC READING GLASSES is otherwise
incongruous, nor can we make such findings based on the evidence of record, all of
which points to the magnetic bridge closure of Applicant’s readers/reading glasses
as the main feature thereof. Further, to the extent MAGNETIC READERS or
MAGNETIC READING GLASSES present different meanings, they are all merely
descriptive of the goods in that all of the asserted meanings refer to eyewear with a
magnetic feature, albeit not to eyewear with a magnetic bridge closure.
Each of the words comprising Applicant’s proposed marks is individually
descriptive (and in the case of READERS and READING GLASSES, admittedly
generic, as noted above), and the combination of these terms does not evoke a new
and unique commercial impression. Rather, each component of the composite marks
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retains its merely descriptive significance in relation to Applicant’s identified goods,
thus resulting in composites that are themselves merely descriptive. See Petroglyph
Games, 91 USPQ2d 1331 (BATTLECAM merely descriptive for computer game
software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely
descriptive of real estate brokerage, real estate consultation, and real estate listing
services). No imagination is required by a prospective purchaser or user to discern
that Applicant’s eyewear consists of readers or reading glasses with magnetic bridge
closures. Accordingly, each of the proposed marks, MAGNETIC READERS and
MAGNETIC READING GLASSES, when considered as a whole, is merely
descriptive of Applicant’s goods.
Finally, the fact that Applicant may be the first and only user, as Applicant
contends, does not obviate a mere descriptiveness refusal. In re Nat’l Shooting
Sports Found., Inc., 219 USPQ 1018 (TTAB 1983).
Applicant correctly states that in cases of refusals under Section 2(e)(1), we must
resolve doubt in favor of Applicant; however, we have no such doubt here.
Decision: The refusal to register Applicant’s marks MAGNETIC READERS and
MAGNETIC READING GLASSES is affirmed in each case.