I.C. International Inc.

Trademark Trial and Appeal Board

Feb 5, 2021

87795512 (T.T.A.B. Feb. 5, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re I.C. International Inc.
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Serial No. 87795512
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Thomas D. Foster of TDFoster Intellectual Property Law,
for I.C. International Inc., Applicant.
Annie M. Noble, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Cataldo, Adlin, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
I.C. International Inc. (“Applicant”) seeks registration on the Principal Register of
the mark (CONTACT LENSES disclaimed) for
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goods amended to “contact lenses sold to eye care practitioners” in International Class
9.1 The application states:
The mark consists of word “I-DEAL” in Italic uppercase letters, letter “I” is
transparent and outlined, letters “-DEAL” are solid. Below “I-DEAL” are the
words “contact lenses” written in lowercase. Under -in depth - “I-DEAL” are 2
“contact lenses” placed at about 90 degrees, clamshell-style. Slightly under - in
depth - the letter I is the image of a stylized eye, with a broken circular line
marking the iris and a solid pupil with two small transparent circles
symbolizing light reflecting off the pupil. The color(s) gray, silver gray is/are
claimed as a feature of the mark.

The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the marks IDEAL VISION
CENTER, one stylized and one with design, owned by the same registrant, for “retail
stores featuring eyewear products and accessories, eyeglasses, and contact lenses,” in
International Class 35,2 as to be likely to cause confusion, to cause mistake, or to
deceive.
Registration No. 4003489 Registration No. 4090369

(VISION CENTER disclaimed)

(VISION CENTER disclaimed)

1 Application Serial No. 87795512 filed on February 13, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as February 13, 2018. The goods originally were
identified as “contact lenses” and were amended as part of Applicant’s June 6, 2019 request
for reconsideration.
2 Registration No. 4003489 issued July 26, 2011 and No. 4090369 issued January 24, 2012,
Section 8 filings accepted.
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The color(s) blue and red is/are claimed
as a feature of the mark.
The color(s) dark blue, blue, grey,
orange, red, and white is/are claimed as
a feature of the mark.

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co. (DuPont), 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). However, the likelihood of confusion analysis
may focus on dispositive factors, such as similarity of the marks and relatedness of
the goods and services. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744,
1747 (Fed. Cir. 2017).
A. Similarity or Dissimilarity of the Marks
The first DuPont factor requires consideration of “[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression.” DuPont at 567. The test, under the first DuPont factor, is whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods and services offered under the respective
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marks is likely to result. Coach Servs. Inc. v. Triumph Learning, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW
Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Although we consider the
marks as a whole, “in articulating reasons for reaching a conclusion on the issue of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark. . . .” In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
There is no mechanical test to select the dominant element of a mark. Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017). In
general, words are considered more significant features of marks than designs (In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)), disclaimed or
descriptive terms are considered less significant features of marks (In re Dixie Rests.,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)), and the first or initial
term in a mark may be considered the feature which will be called for, and so
remembered, by consumers (In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d
1047 (Fed. Cir. 2018)). Comparing the literal elements, Applicant’s and Registrant’s
marks I-DEAL CONTACT LENSES and IDEAL VISION CENTER both combine an
essentially identical prefatory term with the generic, and disclaimed, terms for the
goods and services with which the marks are used.
We find the distinctive first words I-DEAL and IDEAL form the dominant
commercial impression of their respective marks, and the commercial impression is
the same. The record defines the term IDEAL as “a conception of something in its
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perfection.”3 The terms look very much the same. Inasmuch as IDEAL is a dictionary
term, its pronunciation is known, and Applicant does not suggest that the
pronunciation of I-DEAL would be different. In fact, Applicant states “a portion of the
marks are similar in appearance and sound.”4 We find the presence of the hyphen in
Applicant’s term I-DEAL does not alter the connotation of the term IDEAL in the
registered marks. Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712
(TTAB 2010) (“the initial term in both marks [MAG-NUM STAR and MAGNUM
MAXFIRE] is essentially identical; the hyphen in the Mag Instrument’s mark does
not distinguish them.”); Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2042 (TTAB 1989) (“It is also quite obvious that the marks
[PROPRINT and PRO-PRINT] are identical except for the division of registrant’s
mark by a hyphen between the syllables.”); Goodyear Tire & Rubber Co. v. Dayco
Corp., 201 USPQ 485, 488 n. 4 (TTAB 1978) (mark [FASTFINDER] is in legal
contemplation substantially identical to the mark “FAST-FINDER” without a
hyphen”).
We disagree with Applicant’s argument that the presence of the hyphen in
Applicant’s mark creates a different connotation from the term IDEAL because “the
letter ‘I’ is commonly used to indicate that the relevant services or goods are
accessible via the internet or have some relationship to the internet,” and so the term
I-DEAL in its mark “suggests one can get inexpensive contacts by purchasing one’s

3 December 2, 2018 Office Action TSDR 10, citing dictionary.com.
4 10 TTABVUE 11.
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contacts through applicant’s online store.”5 The only evidence offered in support of
this proposition is a third party registration certificate for the mark I/NET for
networked building control systems (Registration No. 4612037).6 This single
registration does not establish any nexus between the letter “I” as the first letter of a
mark and the internet. We find on this record that prospective consumers will
perceive both marks as connoting the dictionary term IDEAL.
We turn to the nonliteral elements of the marks. In addition to the wording IDEAL
VISION CENTER, Registrant employs stylized lettering and color in one mark, and
stylized lettering, color, a triple column of dots, and a rectangular background in the
other. None of these additional elements, taken together or separately, create a
separate commercial impression apart from, or which alters, the commercial
impression created by the wording IDEAL VISION CENTER. More specifically, the
stylized lettering of the mark in Registration No. 4003489 comprises one italicized
word and two words in block lettering, and this stylization is so minimal that it does
not make much of a commercial impression. Similarly, the lower case lettering
employed in Registration No. 4090369 is not an elaborate stylization which strikes
the eye or contributes much to the mark. See In re 1st USA Realty Professionals Inc.,

5 10 TTABVUE 12-13.
6 June 6, 2019 response TSDR 15-16. Applicant also submitted two cancelled third party
registration certificates (Registration Nos. 2764791 and 3385357, June 6, 2019 response
TSDR 13-14 ) for marks which begin with the letter I and were used with internet related
goods and services. A cancelled or expired registration is not evidence that it was ever used,
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018), and
so cannot serve as evidence that the registered mark contributed to any consumer perception
of the mark.
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84 USPQ2d 1581, 1584 (TTAB 2007) (“The registered mark is for the words FIRST
USA in a slightly stylized typestyle. However, the stylization is so minimal that it
does not make a real commercial impression.”).
Similarly, while the registered marks are shown in color, the use is unobtrusive
rather than notable. See In re Serial Podcast, LLC, 126 USPQ2d 1061, 1073 (TTAB
2018) (“The coloring of letters does not generally tend to render a mark distinctive.”);
TMEP § 807.14(e)(ii) (“In most cases, the color in the lettering is unlikely to have a
significant impact on the commercial impression created by the mark.”). The use of
the rectangular background in Registration No. 4090369 does not add or alter the
impression created by the wording IDEAL VISION CENTER. See In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Neither the design
element nor the generic term ‘café’ offers sufficient distinctiveness to create a
different commercial impression. Indeed, as the board found, the design is an
ordinary geometric shape that serves as a background for the word mark.”). Finally,
the column of darkly colored dots which appears in Registration No. 4090369
comprises less than 20 percent of the composite mark, and presents less visual impact
than the larger stark white wording against the blue background. See In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (“the knife-and-fork design
included in Applicant’s mark is a relatively small element of the mark”), aff’d mem.,
777 F. App’x 516 (Fed. Cir. 2019). In short, despite the additional elements, the
distinctive term IDEAL forms the dominant element of the registered marks.
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Turning to Applicant’s mark, the background design for the wording I-DEAL
CONTACT LENSES is not a common geometric shape, but a design of an eye and two
contact lenses, a background design which directly reinforces the descriptive term
CONTACT LENSES. See Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d 1375,
1380 (Fed. Cir. 2002) (“[T]he puzzle design does not convey any distinct or separate
impression apart from the word portion of the mark. Rather, it serves only to
strengthen the impact of the word portion in creating an association with crossword
puzzles.”). Here, too, the design element does not alter the dominant commercial
impression created by the term I-DEAL.
Accordingly, despite the fact that there are some specific differences in the marks
I-DEAL CONTACT LENSES and IDEAL VISION CENTER, overall they convey the
same commercial impression, and the similarities in appearance, sound and meaning
caused by the almost identical dominant word element outweighs the differences due
to the generic wording, stylization of the words, coloring, and the presence of the
design elements. The DuPont factor of the similarity of the marks favors a finding of
likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services, Channels of
Trade, and Sales Conditions
We turn to the DuPont factors regarding the similarity or dissimilarity of the
goods and services, channels of trade, and sales conditions. As to the first, the issue
is not whether the goods and services will be confused with each other, but rather
whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton,
214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). It is sufficient that the
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goods and services of the applicant and the registrant are related in some manner or
that the conditions surrounding their marketing are such that they are likely to be
encountered by the same persons under circumstances that, because of the marks
used in connection therewith, would lead to the mistaken belief that they originate
from the same source. See On-line Careline Inc. v. America Online Inc., 229 F.3d 1080,
56 USPQ2d 14711, 1476 (Fed. Cir. 2000) (“although the services are different, it is
reasonable to believe that the general public would likely assume that the origin of
the services are the same”). “Evidence of relatedness may include news articles or
evidence from computer databases showing that the relevant goods and services are
used together or used by the same purchasers; advertisements showing that the
relevant goods and services are advertised together or sold by the same manufacturer
or dealer; or copies of use-based registrations of the same mark for both the
applicant’s services and the goods listed in the cited registration.” In re Country Oven,
Inc., 2019 USPQ2d 443903, *4-5 (TTAB 2019).
As set forth above, the registered marks are used in connection with “retail stores
featuring eyewear products and accessories, eyeglasses, and contact lenses” and
Applicant’s mark is used on “contact lenses sold to eye care practitioners.” The
application and registrations themselves may provide evidence of the relationship
between the goods. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002). It is plain from the recitation in the application
and registration that Applicant’s goods and Registrant’s services are related. Both
offer contact lenses, Applicant to eye care practitioners, and Registrant to customers
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of its retail stores. “It is … well established that confusion may be likely to occur from
the use of the same or similar marks for goods, on the one hand, and for services
involving those goods, on the other.” In re Detroit Athletic Co., 128 USPQ2d at 1051
(emphasis in original) (confusion likely because “the Detroit Athletic Club’s clothing
goods are ‘very general’ in nature and cover ‘all types of clothing,’ including the
clothing sold through DACo’s sports apparel retail services.”). Accord In re Country
Oven, Inc., 2019 USPQ2d at *5-6 (“Thus, we must consider Applicant’s [retail bakery
shop] services to encompass a broad spectrum of bakery products that quite obviously
includes goods of the type identified in the cited registration, i.e., ‘bread buns’.”); In
re United Service Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986) (“We believe
that this class of customer [retailers of health and beauty aid products], familiar with
health and beauty aid products sold under a particular mark, upon coming into
contact with a distributor of health and beauty aid products whose distributorship
services are rendered under a similar mark, would erroneously believe that said
distributorship services and the beauty aid products were somehow sponsored by or
associated with the same source.”).
Corroborating the identifications of goods and services themselves is the record
evidence of use-based third party registrations showing the same mark
(ULTRAHEALTH, LOTOS, NOH NOBLE OPTIC HOUSE, EYE CARE UNIVERSE,
LUMEN OPTICAL, COASTAL, CAROLINA LEMKE, VISIONQUEST EYECARE,
1800CONTACTS, WICKEDEYEZ, OCEANVIEW, LUNETTE OPTIC, VISIONPROS,
D.F. WEBER, ANESTHESIA) listing both contact lenses, such as those offered by
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Applicant, and retail store services including, inter alia, contact lenses, such as those
offered by Registrant.7 “Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in commerce, although not evidence
that the marks shown therein are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of a type which may
emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988) (unpublished table decision).
Accord In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (third party
registrations support finding “optical lenses, namely, corrective lenses sold through
eye care professionals” related to “spectacles, spectacle cases, spectacle lenses,
spectacle settings, spectacle frames, glasses for sport, protective helmets for sports,
binoculars, parts of these goods included in this class” and “ski glasses, ski goggles,
goggles for sports, protective sport helmets; sunglasses, bags specifically adapted for
protective helmets”).
Applicant contends that confusion is not likely based on the difference in the
channels of trade and sales conditions for the respective goods and services, with its

7 June 4, 2018 Office Action TSDR 63-92; December 6, 2018 Office Action TSDR 51-80.
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contact lenses not being sold through retail stores such as Registrant’s, but only to
eye care practitioners.8 More specifically, Applicant contends:9
Recognizing that ECPs [eye care practitioners] will only (sic) able to “keep”
their customers if prices are the same as or better than other sellers’ prices or
if ECPs find a “unique” way to sell or distribute the same contact lenses on a
different way to their customers, applicant has developed an integrated
system. This system involves offering private label/own branded as well as
branded contact lenses through an online portal that is tied into the websites
of each individual ECP. Only customers of ECPs will be able to access their eye
care prescription information on the sales website. Thus, the general public
will not be able to visit the website and order contact lenses - only customers
with a need to order a contact lenses prescription will be able to do so.

In fact, the Examining Attorney provides persuasive evidence that the industry
includes significant overlap between eye care practitioners who offer contact lenses
for sale and retail stores featuring contact lenses and the services of eye care
practitioners. The record includes website pages for eyewear stores and eye care
practitioners (America’s Best Contacts & Eyeglasses, Visionworks, Lenscrafters,
Optical Outlets, Eyetique, MyEyeDr, EyeGlassWorld, Eyeconic, Ridgeview Eye Care,
Insight Optical, Park Professional Eyecare) which allow the visitor both to purchase
contact lenses and to make an appointment for an eye exam by an eye care
practitioner.10 That is, even with Applicant’s restricted channels of trade and sales
conditions, prospective contact lens customers who encounter Applicant’s exclusive

8 10 TTABVUE 9-11. Applicant also contends that “Registrant’s services are offered through
physical retail stores.” 10 TTABVUE 10. Because the cited registrations are not limited to
physical retail stores, they are assumed to encompass online stores. In re Detroit Athletic Co.,
128 USPQ2d at 1052 (“The third DuPont factor—like the second factor—must be evaluated
with an eye toward the channels specified in the application and registration, not those as
they exist in the real world.”).
9 10 TTABVUE 9-10.
10 June 4, 2018 Office Action TSDR 25-62; December 6, 2018 Office Action TSDR 9-50.
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portal for I-DEAL CONTACT LENSES contact lenses sold to eye care practitioners
and then encounter Registrant’s IDEAL VISION CARE retail services featuring
contact lenses are likely to be confused.
We find these DuPont factors also weigh in favor of finding a likelihood of
confusion.
II. Balancing the Factors
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. When we balance the DuPont factors, we conclude that confusion is
likely to occur between Applicant’s mark and Registrant’s marks for their respective
goods and services.
Decision: The refusal to register Applicant’s mark is
affirmed.