Visor Frames, LLC

Trademark Trial and Appeal Board

Jul 24, 2020

87404778 (T.T.A.B. Jul. 24, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 24, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Visor Frames, LLC
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Serial No. 87404778
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Rebecca L. Wilson of The Dobrusin Law Firm P.C.
for Visor Frames, LLC.

Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____
Before Wellington, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Visor Frames, LLC (“Applicant”) seeks registration on the Principal Register of
the proposed mark VISOR FRAMES, in standard characters, for “frames, namely,
photograph and picture frames” in International Class 20.1 The Examining Attorney

1 Application Serial No. 87404778, filed on April 10, 2017, is based on Applicant’s claim of
first use anywhere and in commerce on December 31, 2011, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
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refused registration of Applicant’s proposed mark under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), finding it merely descriptive of the identified
goods. The Examining Attorney also rejected Applicant’s alternative claim of
acquired distinctiveness.2 When the refusal was made final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration and the appeal resumed. The appeal has been fully briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Whether Applicant’s Mark is Merely Descriptive
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or
services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark need not recite each feature
of the relevant goods or services in detail to be descriptive, it need only describe a

2 During the prosecution of the application, the Examining Attorney also refused to register
Applicant’s mark under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1052
and 1127, on the additional ground that Applicant’s mark is generic for the goods. However,
this refusal was later expressly withdrawn (Office Action issued April 5, 2019).
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single feature or attribute.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citation and internal quotation omitted).
The Examining Attorney contends that VISOR FRAMES is merely descriptive of
photograph and picture frames because the term FRAMES is generic and part of
Applicant’s identification of goods and the term VISOR “immediately conveys
information” about the placement of the frames, namely, that they are intended for
“use on car or sun visors.”3 In support, the Examining Attorney relies on Applicant’s
advertisement of the goods, including the specimen submitted with the application
stating that the frame “easily clips to the vehicle sun visor.”4 Applicant’s website also
touts the goods as “thin durable frames that clip to the car visor.”5 Third-party retail
store, K Mart, advertises Applicant’s goods as having the ability to “clip to any and
all sun visors . . . both driver and passenger sun visors.”6 A similar third-party product
is listed on Amazon as “Set of 2 – Drive Safe Family Photo Frame – Car Visor Clip-
On . . .” and further described as a “photo frame designed to attach to vehicle ’s sun
visor.”7
Based on the evidence before us and the plain meaning of the composite terms of
Applicant’s mark, we find VISOR FRAMES is merely descriptive of photograph and
picture frames designed for vehicle sun visors. We agree with the Examining

3 9 TTABVUE 6.
4 Specimen submitted April 10, 2017, TSDR p. 1.
5 Attached to Office Action issued August 23, 2018, at TSDR p. 6.
6 Id., p. 11.
7 Id., p. 15.
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Attorney that the mark immediately informs consumers that the goods are picture or
photo frames that can be attached to the sun visor of a car. The fact that the proposed
mark’s constituent terms are frequently interspersed within the descriptions of
Applicant’s goods rather than joined together as a phrase does not change this
conclusion. Indeed, the similar third-party photo frame for car visors and Applicant’s
own identification of goods demonstrate the descriptiveness of and need to use these
terms in describing the goods. There is thus no question that the component terms,
VISOR and FRAMES, retain their respective descriptive meanings when combined
and the mark, as a whole, is thus merely descriptive. DuoProSS Meditech Corp. v.
Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012). To
be clear, the combination of terms does not convey “any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.” In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1515-16 (TTAB 2016) (quoting In re Oppedahl
& Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2003)).
We have no doubt that consumers of picture and photo frames will immediately
understand Applicant’s mark, VISOR FRAMES, as conveying information about a
significant feature of the goods, namely, that the picture and photo frames may be
placed on a car’s sun visor. We find Applicant’s mark is not only merely descriptive
of the goods but highly descriptive as well. See Royal Crown Co. v. Coca-Cola Co., 892
F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (instructing Board to first
determine whether a proposed mark is highly descriptive rather than merely
descriptive before assessing acquired distinctiveness).
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II. Whether Applicant’s Mark Has Acquired Distinctiveness

“Under Section 2(f) of the Trademark Act [15 U.S.C. § 1052(f)], matter that
is merely descriptive under Section 2(e)(1) may nonetheless be registered on the
Principal Register if it ‘has become distinctive of the applicant ’s goods . . . in
commerce.”’ In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, **9-10
(TTAB 2019) (quoting 15 U.S.C. § 1052(f)).
We determine whether Applicant’s mark has acquired distinctiveness based on
the entire record, keeping in mind that “[t]he applicant ... bears the burden of proving
acquired distinctiveness.” Id. (citing In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
116 USPQ2d 1262, 1264 (Fed. Cir. 2015)). “‘To show that a mark has acquired
distinctiveness, an applicant must demonstrate that the relevant public understands
the primary significance of the mark as identifying the source of a product or service
rather than the product or service itself.”’ Id. at *11 (quoting In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)). In this case, the relevant
public are consumers of frames for photographs and pictures.
The Federal Circuit has “long held that ‘the applicant’s burden of showing
acquired distinctiveness increases with the level of descriptiveness; a more
descriptive term requires more evidence of secondary meaning.”’ Royal Crown Cola
v. Coca-Cola, 127 USPQ2d at 1047 (quoting Steelbuilding.com, 75 USPQ2d at 1424).
Accordingly, the Board “must make an express finding regarding the degree of [a]
mark’s descriptiveness on the scale ranging from generic to merely descriptive, and
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it must explain how its assessment of the evidentiary record reflects that finding.” Id.
at 1048.
As already stated, we find the term VISOR FRAMES is highly descriptive of
frames for pictures and photographs for use on vehicle sun visors, and, accordingly,
Applicant has a commensurately higher burden of proving that its mark has acquired
distinctiveness.
The types of evidence to be assessed and weighed in determining acquired
distinctiveness include: (1) actual purchasers’ association of the mark with the goods;
(2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4)
amount of sales and number of customers; (5) intentional copying; and (6) unsolicited
media coverage. See Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128
USPQ2d 1538, 1546 (Fed. Cir. 2018); see also Virtual Indep. Paralegals, 2019
USPQ2d 111512 at *11. We weigh all of the factors for which there is evidence in the
record in this case to determine whether Applicant has established secondary
meaning. Id.
In support of its acquired distinctiveness claim, Applicant relies mainly on the
evidence it submitted with its request for reconsideration,8 that includes the
following:
 The sworn declaration of its vice president, who makes several averments,
including that Applicant first began using its mark in commerce as early as

8 4 TTABVUE. Applicant attached many of the same materials to its appeal brief; this was
unnecessary and is discouraged. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) (2020) §§ 1203.01, 1203.02(e) (evidence should not be resubmitted as
exhibits to the brief, but relied-upon materials can be cited to by their location in the
prosecution history).
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December 31, 2011, and that it thus has over five years of “substantially
exclusive and continuous use of the mark in commerce”; that Applicant
“prominently and consistently uses and places” its mark on “product
packaging, point-of-purchase displays, advertisements, product website and
promotional material”; and that Applicant has “expended significant capital to
educate the public to associate the VISOR FRAMES designation as a source
indicator for Applicant’s goods.”9

 Copies of two prior registrations owned by Applicant: Reg. No. 4450940 (for the
mark VISOR FRAMES stylized with a design, VISOR FRAMES disclaimed)
and Reg. No. 4295193 (for the mark VISOR FRAMES FRAME IT. CLIP IT.
GO. in standard characters, VISOR FRAMES disclaimed), both registrations
covering photograph and picture frames.10

 Internet printouts from the YouTube website involving Applicant’s goods,11
Google search result pages for the wording “visor frames,”12 and screenshots
from Applicant’s Facebook page.13

 A chart indicating Applicant’s “marketing costs” and “total income” for each
year during the period of 2012-2017.14

 Copies of press releases, media attention and promotional materials for
Applicant’s goods.15

Upon careful review of the entire record, including the evidence listed above, we
find Applicant has failed to meet its burden of showing acquired distinctiveness of
the highly descriptive term VISOR FRAMES. We initially note the absence of any
evidence, such as declarations from actual consumers, showing the purchasers’
association of the term VISOR FRAMES with Applicant. We hasten to add, however,

9 Id. at 17-18.
10 Id. at 83-86.
11 Id. at 29-43.
12 Id. at 20-25.
13 Id. at 52-74.
14 Id. at 44-45.
15 Id. at 26-28.
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that while such evidence has often been found to be persuasive, it is not crucial and
its absence is not outcome determinative. The Board must consider the entire record
and other circumstances, if present, may ultimately show that an otherwise merely
descriptive term has become distinctive as a source identifier in the eyes of
consumers.
In this case, the totality of the evidence is insufficient to persuade us that the
mark has acquired distinctiveness. Specifically, Applicant’s use of its mark since the
end of 2011 is not very convincing without additional information to gauge the degree
of exposure of the mark to the relevant public during this time. In re Kalmbach Publ’g
Co., 14 USPQ2d 1490, 1492 (TTAB 1989) (deeming Section 2(f) claim with more than
10 years of use insufficient for a highly descriptive mark “without specific evidence of
the extent of the mark’s exposure to the purchasing public and of the purchasers’
perception of the asserted mark”); In re Synergistics Research Corp., 218 USPQ 165,
167 (TTAB 1983) (“we have consistently held that a declaration or affidavit of
continuous and exclusive use as a mark for an extended period of years is insufficient
in and of itself to support registrability under Section 2(f) of the Trademark Act where
the term sought to be registered is highly descriptive in character”).
Applicant’s “total income” and “marketing costs” for the time period 2012-2017 are
not negligible, but are also not so significant that we can assume extensive sales and
advertising campaigns took place during those years and ultimately have led
consumers to come to view the highly descriptive term VISOR FRAMES as a source
indicator. For example, although Applicant states that its “total income” for 2017 was
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$105,538, it remains unclear how many actual picture and photograph frames were
sold in that year, the number of actual purchasers, and whether such sales reached
a sizable number of consumers nationwide. Also, Applicant’s expenditures of $857,
$1,276 and $431 in the same year for, respectively, “Amazon Ads,” “Ad Word
campaigns” and “Print Media,” are not extraordinary and do not suggest widespread
consumer exposure; in fact, if anything they suggest the opposite. Again, although
Applicant claims to have spent $5,183 for “sponsorships” in 2017, there is no further
detail about what was being sponsored or any notoriety that the proposed mark may
have achieved through the sponsorships.
With respect to Applicant’s evidence showing its proposed mark on the YouTube
website and Applicant’s own Facebook page, we find little probative value in this
evidence because there is, again, no way of determining what degree of exposure,
whether minimal or extensive, Applicant’s mark may have had on prospective
consumers. Specifically, the screenshots from the YouTube website and Applicant’s
Facebook page, on their face, only indicate that Applicant was involved in promoting
its goods through an “America Music Awards Gift Suite” or on radio and television
programs. Importantly, the printouts do not reveal the way Applicant promoted goods
through these programs or how many prospective consumers actually encountered
these promotional efforts.16 We further note that the listed number of “views” on the
YouTube printouts hardly demonstrate notoriety, but in some cases show that the

16 The printouts from Applicant’s Facebook page and the YouTube website are merely
screenshots and any video content that can be accessed via a link on the website has not been
made of record.
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YouTube linked videos have been seen on relatively very occasions (e.g., the “How To
Use A Visor Frame” screenshot lists “162 views”).17 Similarly, the printouts from the
websites www.prweb.com; “Insurancenewsnet.com”;
“patch.com/Michigan/Macomb/Business”; and www.theoaklandpress.com, are from
2012-2013 and comprise press releases or articles in local online news outlets. There
is no further information regarding the circulation or geographic reach of these
announcements or articles, and we cannot assume that they have been widely
disseminated to consumers.
Finally, Applicant’s two registrations for marks that include the disclaimed term
VISOR FRAMES have little probative value regarding acquired distinctiveness. As
the Examining Attorney correctly pointed out in her brief, Applicant has disclaimed
the wording and, generally, registrations with disclaimed terms do not help establish
that the disclaimed terms have acquired distinctiveness. See 15 U.S.C. §1052(f);
Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007); In re Candy
Bouquet Int’l Inc., 73 USPQ2d 1883, 1890 (TTAB 2004); In re Helena Rubinstein, Inc.,
131 USPQ 152, 153 (TTAB 1961). Indeed, by its very language, a disclaimer
statement in a registration consists of the registrant stating that no claim is being
made to an exclusive right to use the disclaimed term separate from the registered
mark.18 See In re La. Fish Fry Prods., 116 USPQ2d at 1264. In addition, regardless

17 4 TTABVUE 38. Additional screenshots for other videos on YouTube list “65 views,” “531
views,” “1003 views,” and “317 views.” Id. at 29-43.
18 See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.08 (Oct. 2018)
regarding standardized disclaimer language.
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of the age of the registrations, without more, they are not evidence that a mark has
been used extensively, or even at all, in commerce.
In sum, Applicant’s evidence does not show that Applicant’s use of VISOR
FRAMES in connection with frames for photographs and pictures has reached a
significant level whereby we can conclude that the relevant public have come to view
the highly descriptive term as a source identifier uniquely pointing to Applicant.
Decision: The refusal to register the mark on the ground that it
is merely descriptive under Trademark Act Section 2(e)(1) and has not acquired
distinctiveness under Trademark Act Section 2(f) is affirmed.