Jacob Kaufman

Trademark Trial and Appeal Board

May 2, 2014

No. 85436659 (T.T.A.B. May. 2, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Kaufman
________

Serial No. 85436659
_______

John G. Posa of Gifford, Krass, Sprinkle, Anderson & Citkowski,
P.C. for Jacob Kaufman.

Jaclyn Kidwell Walker, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).1
_______

Before Quinn, Kuhlke, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Jacob Kaufman (“applicant”) filed an application to
register the following mark:

for “headbands” in International Class 25.2

1 The Office reassigned the application to Ms. Walker subsequent to
issuance of the final Office action.
2 Application Serial No. 85436659, filed on September 30, 2011, based
on a bona fide intent to use the mark in commerce under Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85436659

2

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, when used in connection with
headbands, so resembles the previously registered mark FLIP (in
standard characters) for “clothing, namely, coats, jackets, T-
shirts, shirts, hats, caps, and shoes” in International Class 25
as to be likely to cause confusion.3 The examining attorney also
refused registration on the basis of applicant’s failure to
disclaim the wording FLIP BAND, a requirement made by the
examining attorney pursuant to Section 6(a) of the Trademark
Act, 15 U.S.C. § 1056(a).
When the refusals were made final, applicant appealed and
its concurrently-filed request for reconsideration was denied.
Applicant and the examining attorney filed briefs.
Evidentiary Issue
The examining attorney has objected to certain materials
(identified as Exhibits B-D) that were submitted for the first
time by applicant with his appeal brief.4 Because these
materials were not submitted prior to appeal, they are untimely
and have not been considered. Trademark Rule 2.142(d).

3 Registration No. 2914034 issued on December 28, 2004, Section 8
affidavit accepted and Section 15 affidavit acknowledged.
4 Applicant also attached printouts containing dictionary definitions
of the term “flip” (Exhibit A) and a copy of a prior precedential
Board decision (Exhibit E). These materials were not objected to and
have been considered.
Serial No. 85436659

3

Disclaimer
We first address applicant’s failure to comply with the
disclaimer requirement because this issue necessarily involves a
determination as to the meaning of applicant’s proposed mark
which, in turn, will later play a role in the likelihood of
confusion factor involving the similarity or dissimilarity
between the marks.
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a), 15 U.S.C. § 1056(a). Merely descriptive
or generic terms are unregistrable under Trademark Act §
2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore are subject to
disclaimer if the mark is otherwise registrable. Registration
may be refused for failure to comply with a valid disclaimer
requirement. In re Omaha Nat'l Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987). If a mark comprises a word or words that
are telescoped or otherwise misspelled, but nonetheless must be
disclaimed, the examining attorney must require disclaimer of
the word or words in the correct spelling. Id. at 1119, 2 USPQ2d
at 1861; see also, In re Carlson, 91 USPQ2d 1198, 1203 (TTAB
2009).
A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of
the goods or services with which it is used. In re Chamber of
Serial No. 85436659

4

Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012). The determination of whether a term is merely
descriptive must be made in relation to the identified goods,
the context in which the term is being used and the possible
significance the term would have to the average purchaser
because of the manner of its use or intended use. Id. See also
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
The examining attorney argues that the proposed mark is the
combination of two merely descriptive words and thus a
disclaimer requirement is appropriate. Specifically, she relies
on the meanings of the term “flip” (namely, “to turn over or
around, especially with a light quick motion”)5 and “band”
(namely, “a thin strip of flexible material”). She argues that,
given the context of the identified goods, “band is synonymous
with headbands” and “[t]ogether the words ‘FLIP BAND’
immediately inform consumers that applicant (sic) goods are in
the nature of a band that flips up and down.” Brief,
(unnumbered) pp. 19 and 21. In addition, the examining attorney
relies on applicant’s response to a request for further
information wherein he stated that his goods operate “by
flipping the visor portion up and down as desired based upon

5 Definition provided in Office Action issued on August 13, 2012 and
relied on in examining attorney’s brief at (unnumbered) p. 19.
Serial No. 85436659

5

sunlight and/or activity.”6 The examining attorney also points
to third-party use of the term “band(s)” as a descriptive or
generic reference to headbands.
Applicant, on the other hand, contends that the definition
for “flip” upon which the examining attorney relies is ambiguous
and “contains interpretations that do not merely describe an
ingredient, quality, characteristic, function, feature, purpose,
or use of [applicant’s] goods.” Brief, p. 6. Applicant points
to other possible meanings for this term. Applicant also takes
issue with the format of the disclaimer asserting that he should
not disclaim FLIP BAND because the applied for mark has the
letters “p” and “b” combined in a word design without a space
between them. Applicant asserts the examining attorney is
“demanding that [applicant] disclaim a combination that the
applied-for mark does not have.” Brief, p. 5 (italics in
original).
As to the issue involving the format of the required
disclaimer, we find that the stylization or overlap of the
letters “p” and “b” does not create or evoke any new or unique
commercial impression. Essentially, applicant has merely
telescoped the two terms “flip” and “band” by combining the
letters “p” and “b,” and consumers will have little trouble
recognizing the two terms; they will perceive the mark as merely

6 Response to Office action dated July 23, 2012.
Serial No. 85436659

6

a combination of the two words. As already noted, the Federal
Circuit has affirmed disclaimer requirements in the form of two
separate elements when the proposed mark is a combination or
telescoped form of the words. In the In re Omaha Nat'l Corp.
decision, the Court deemed it appropriate to require a
disclaimer of the words “first tier” for the proposed mark
FIRSTIER. To the extent applicant is arguing that the letter
combination design element inextricably links the two words, we
disagree. In considering marks comprised of words and designs,
recognizable words are generally considered to be conceptually
separable from design elements, and they will rarely be found to
be “unitary” with design elements, even when the designs replace
parts of the words. As Section 1213.05(g) of the TMEP (3rd
edition 2013) advises:
Generally, when a design element replaces one or more
letters (or a portion of a letter or letters) in a word
that is merely descriptive, generic, or geographically
descriptive, this combination of word and design element
does not create a “unitary mark” if the word remains
recognizable. Accordingly, the examining attorney must
require a disclaimer of the merely descriptive, generic, or
geographically descriptive word in such cases.

The same section of the TMEP offers several hypothetical
examples of marks that include a design element, but nonetheless
would require disclaimers of unregistrable literal terms,
including the following:
Serial No. 85436659

7

(assuming that wool is an ingredient or feature of any
hypothetical goods, a disclaimer of the merely descriptive term
“wool” would be necessary).
Here, applicant’s “p/b” letter combination design is
certainly less fanciful than the “wool” example shown above (or
any of the other hypothetical examples). The literal terms
“flip” and “band” are visually and conceptually recognizable in
the mark.
With regard to the meaning of the words “flip” and “band,”
we agree with the examining attorney and find that both terms
are merely descriptive of headbands. While there may be several
possible meanings to the term “flip” depending on the context,
consumers encountering applicant’s mark in connection with
headbands will understand that the term “flip” describes a
feature of the goods, namely, the ability to flip the headband
visor up or down in the manner described by applicant. In other
words and as already mentioned, we must consider the mark in the
context of the identified goods and not in a vacuum. The third-
party website evidence also shows that the word “band” may be
used in connection with headbands as an abbreviated or shortened
Serial No. 85436659

8

form of “headbands.” For example, under the category caption of
“HEADBANDS,” one website describes the products in the following
manner: “Bondi bands are a comfy, colorful and creative way to
hold your hair back whether you’re riding in a convertible,
rushing out the door to get your kids, or getting some
exercise.”7 Another website for a “Bam Band” describes the goods
as a “bamboo performance headband” and later uses the term
“Band” by itself to describe the type of goods.8
In sum, we affirm the examining attorney’s requirement for
a disclaimer of the merely descriptive wording FLIP BAND.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We first address the second du Pont factor involving the
similarity or dissimilarity between the goods, as well as other

7 www.bondiband.com, attached to Office action dated August 13, 2012.
8 www.goneforarun.com, attached to Office action dated August 13, 2012.
Serial No. 85436659

9

factors concerning the trade channels and classes of purchasers
for the identified goods.
Again, applicant’s goods are “headbands” and the goods in
the cited registration include “clothing, namely,... caps [and]
hats.” The examining attorney contends that the respective
goods are “highly related” and notes that applicant “does not
controvert this fact.” Brief, p. 10.
While there is no per se rule that all clothing items are
necessarily related, we find the evidence and the nature of the
specific clothing items show that applicant’s headbands are
indeed very closely related to caps and hats. Aside from the
obvious common nature of all the items being intended to be worn
on the head, the evidence shows they are intended to serve the
same purposes, e.g., for recreation, sports, fashion, etc. The
examining attorney has submitted evidence showing several
manufacturers of both headbands and caps (or hats) using the
same mark, i.e., Nike, UnderArmour, The North Face, Asics, on
all goods. The evidence shows these goods being targeted to
consumers interested in apparel for sports or outdoor fitness
activities. The evidence also shows that these same goods are
offered in common trade channels, namely through online retail
outlets. Given there is no restriction on the trade channels or
types of purchasers, we presume the identified goods in the
application and the registration, at least with respect to the
Serial No. 85436659

10

caps and hats, and headbands, are marketed to the same classes
of purchasers, including ordinary purchasers.
In addition, the examining attorney submitted printouts of
numerous use-based, third-party registrations which include both
headbands, as well as caps (or hats), in their identifications
of goods.9 These registrations have probative value to the
extent that they suggest that the headbands, caps and hats are
of a type which could be marketed by a single source under a
single mark. See In re Association of the United States Army,
85 USPQ2d 1264, 1270 (TTAB 2007); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
In view of the above, we find the factors involving the
similarity of the goods, channels of trade and classes of
consumers all favor finding a likelihood of confusion.
We now direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

9 Submitted with Office actions dated January 23, 2012 and August 13,
2012. In her brief, the examining attorney specifically noted that
certain registrations lacked probative value and thus are no longer
relied upon.
Serial

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Serial No. 85436659

12

Finally, although we found the term “flip” to be merely
descriptive of applicant’s identified goods, we cannot make the
same presumption with respect to the registered mark FLIP in
connection with the goods identified in the registration,
including hats and caps. Instead, in the context of this ex
parte proceeding involving a registration on the Principal
Register, without a claim of acquired distinctiveness, the
registered mark must be presumed to be inherently distinctive.
See In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (quoting
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997)). We further note the record does not
establish that the term “flip” is so commonly used by others in
connection with caps or hats that registrant’s mark is entitled
to only a narrow scope of protection in this regard. In
addition, because the mark in the cited registration is in
standard characters that mark is not limited to any particular
depiction. Thus, the minimal stylization in applicant’s mark
cannot serve to distinguish the marks, inasmuch as we must
consider registrant’s mark “regardless of font style, size, or
color.” Citigroup Inc. v. Capital City Bank Group Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
With the above in mind, we find the respective marks are
similar. Consumers will perceive applicant’s mark as
incorporating the word “flip,” a term identical to the
Serial

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Serial No. 85436659

14

In the event that applicant appeals the decision with
respect to the likelihood of confusion refusal, and is
successful on appeal, applicant is allowed thirty days from the
date of any successful ruling to submit the required disclaimer
of FLIP BAND, and the decision will be set aside as to the
affirmance of the disclaimer requirement.10

10 The standardized printing format for the required disclaimer text is
as follows: “No claim is made to the exclusive right to use FLIP BAND
apart from the mark as shown.”