From: Mucha, Evan
`
`
`
`Sent: 11/29/2017 7:53:15 AM
`
`
`
`To: TTAB EFiling
`
`
`
`CC:
`
`
`
`Subject: U.S. TRADEMARK APPLICATION NO. 87012713 - UNBREAKABLE FRAMES - N/A - Request for
`Reconsideration Denied - Return to TTAB - Message 1 of 2
`
`
`
`
`
`
`
`*************************************************
`
`Attachment Information:
`
`Count: 32
`
`Files: unbreakable sunglasses - amazon optix 55.jpg, unbreakable sunglasses - amazon ki et la.jpg,
`unbreakable sunglasses - sharper image.jpg, unbreakable sunglasses - toys r us.jpg, UNBREAKABLE -
`Boston Globe -Lexis_Page_1.jpg, UNBREAKABLE - Boston Globe -Lexis_Page_2.jpg, UNBREAKABLE -
`Detroit News 2 -Lexis_Page_1.jpg, UNBREAKABLE - Detroit News 2 -Lexis_Page_2.jpg, UNBREAKABLE -
`Detroit News 2 -Lexis_Page_3.jpg, UNBREAKABLE - Detroit News -Lexis_Page_1.jpg, UNBREAKABLE -
`Detroit News -Lexis_Page_2.jpg, UNBREAKABLE - Detroit News -Lexis_Page_3.jpg, UNBREAKABLE -
`Green Bay Press-Gazette -Lexis_Page_1.jpg, UNBREAKABLE - Green Bay Press-Gazette -Lexis_Page_2.jpg,
`UNBREAKABLE - Herald News -Lexis_Page_1.jpg, UNBREAKABLE - Herald News -Lexis_Page_2.jpg,
`UNBREAKABLE - LA Times 2 -Lexis_Page_1.jpg, UNBREAKABLE - LA Times 2 -Lexis_Page_2.jpg,
`UNBREAKABLE - LA Times 3 -Lexis_Page_1.jpg, UNBREAKABLE - LA Times 3 -Lexis_Page_2.jpg,
`UNBREAKABLE - LA Times -Lexis_Page_1.jpg, UNBREAKABLE - LA Times -Lexis_Page_2.jpg,
`UNBREAKABLE - LA Times -Lexis_Page_3.jpg, UNBREAKABLE - New Press Fort Woth -Lexis_Page_1.jpg,
`UNBREAKABLE - New Press Fort Woth -Lexis_Page_2.jpg, UNBREAKABLE - NY Daily News -
`Lexis_Page_1.jpg, UNBREAKABLE - NY Daily News -Lexis_Page_2.jpg, UNBREAKABLE - NY Daily News -
`Lexis_Page_3.jpg, UNBREAKABLE - NY Daily News -Lexis_Page_4.jpg, UNBREAKABLE - Pittsburgh Tribine
`Review -Lexis_Page_1.jpg, UNBREAKABLE - Pittsburgh Tribine Review -Lexis_Page_2.jpg, 87012713.doc
`
`
`
`
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`
`U.S. APPLICATION SERIAL NO. 87012713
`
`
`
`MARK: UNBREAKABLE FRAMES
`
`
`
`CORRESPONDENT ADDRESS:
` PHILIP M. WEISS
`
` WEISS AND WEISS
`
`
`
`*87012713*
`
`
`
`GENERAL TRADEMARK INFORMATION:
`
`http://www.uspto.gov/trademarks/index.jsp
`
` 410 JERICHO TURNPIKE SUITE 105
`
`
`
` JERICHO, NY 11753
`
`
`
`APPLICANT: My First Shades, Inc.
`
`
`
`CORRESPONDENT’S REFERENCE/DOCKET NO:
`
` N/A
`
`CORRESPONDENT E-MAIL ADDRESS:
`
` weissandweiss@aol.com
`
`VIEW YOUR APPLICATION FILE
`
`
`
`
`
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION DENIED
`
`ISSUE/MAILING DATE: 11/28/2017
`
`
`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following refusals made final in the Office action dated 5/5/2017 are maintained and
`continue to be final:
`
`
`
`• Section 2(e)(1) Refusal – Merely Descriptive
`• Sections 1, 2, and 45 Refusal – Failure to Function as a Trademark
`
`

`

`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`
`In the present case, applicant’s request has not resolved all the outstanding issues, nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issues in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
`
`
`
`Specifically, with regard to the Section 2(e)(1) refusal, applicant contends that the examining attorney
`“has not found any trademarks on any goods or packing for this mark” and offers the conclusory
`argument that “the mark is not merely descriptive, but at most suggestive” because “the combination of
`the terms ‘unbreakable frames’ creates a unique non-descriptive meaning in the goods.” Applicant has
`provided no explanation or evidence to support the contention that the combination of terms in the
`mark creates a unique and nondescriptive meaning.
`
`
`
`Further, the applicant’s contention that no evidence has been found of “any trademarks on any goods or
`packaging for this mark” suggests a misunderstanding of the refusal. Refusal based on Section 2(e)(1)
`has been made precisely because the wording “UNBREAKABLE” or “UNBREAKABLE FRAMES” is used in
`connection with the relevant goods to describe the nature or features of the goods rather than their
`source.
`
`
`
`Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive
`mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
`infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
`811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free
`to use descriptive language when describing their own goods and/or services to the public in advertising
`and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
`
`
`
`The Internet evidence attached to the previous Office actions dated 8/14/2016 and 5/5/2017 as well as
`the additional attached evidence consisting of websites and newspaper articles shows that the terms
`UNBREAKABLE or UNBREAKABLE FRAMES are commonly used in the relevant industry to describe
`eyewear or eyewear frames that can bend or flex without breaking or shattering. This evidence
`demonstrates a competitive need to use these terms in the marketplace and indicates that consumers
`are accustomed to seeing this wording used to describe a feature or characteristic of such goods, as
`opposed to their source.
`
`
`
`

`

`Moreover, the fact that an applicant may be the first or only entity to use a merely descriptive
`designation as its trademark does not necessarily render a word or term incongruous or distinctive; as in
`this case, the evidence shows that UNBREAKABLE FRAMES is merely descriptive. See In re Fat Boys
`Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822,
`1826 (TTAB 2012); TMEP §1209.03(c).
`
`
`
`Next, with regards to the Sections 1, 2 and 45 refusal, applicant contends that the examining attorney
`“has cited to cases relating to common laudatory common phases to which applicant's trademark does
`not apply” and broadly argues that “a consumer in the sunglasses industry would understand the term
`sought to be register would identify the source of goods as applicant.” Applicant’s argument is
`unfounded and unpersuasive.
`
`
`
`The Internet evidence attached to the previous Office actions dated 8/14/2016 and 5/5/2017 as well as
`the additional attached evidence consisting of websites and newspaper articles shows that the wording
`UNBREAKABLE or UNBREAKABLE FRAMES is commonly used by those in applicant’s industry to provide
`information about the goods, specifically that the manufacturer’s sunglasses, eyeglasses or components
`therefor are not susceptible to breaking. Slogans and terms that are merely informational in nature,
`such as statements or laudatory phrases about goods ordinarily used in business or in a particular trade
`or industry, are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).
`
`
`
`Furthermore, as explained in the 5/5/2017 Office action, the applied-for mark, as shown on the
`specimen, does not function as a trademark because consumers would not view the mark as indicating
`the source of the goods. The specimen shows the applied-for mark, UNBREAKABLE FRAMES, displayed
`within a product booklet attached to the goods. The booklet describes certain features or
`characteristics of the goods, such as the facts that they are “sized to fit” and “doctor recommended.” In
`addition, the booklet states that the goods contain “unbreakable frames.” Consumers will not view the
`wording UNBREAKABLE FRAMES as indicating the source of the goods and distinguishing the goods from
`those of others.
`
`
`
`It is noted that applicant has submitted substitute specimens for the intended purpose of showing that
`the mark is not merely descriptive and that it functions as a trademark. However, the specimens
`actually support the contention that the wording UNBREAKABLE FRAMES is information in nature and
`does not function as a trademark. Consumers encountering these advertising materials and package
`inserts will view REAL SHADES as the source of the goods and the wording UNBREAKABLE FRAMES as
`indicating that the goods feature frames that are break-proof or break-resistant—particularly when
`viewed in connection with the adjacent wording “Backed by free replacement guarantee.”
`
`
`
`Furthermore, the newly submitted specimens are described by applicant as advertising material and
`package inserts and therefore fail to show the applied-for mark in use in commerce. Trademark Act
`
`

`

`Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
`Package inserts such as invoices, announcements, order forms, bills of lading, leaflets, brochures,
`printed advertising material, circulars, press releases, and the like are not acceptable specimens to show
`use on goods. See In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979).
`
`
`
`In sum, applicant’s arguments against the refusals made final are unpersuasive. Accordingly, the
`request for reconsideration is denied.
`
`
`
`PROCEDURAL INFORMATION
`
`
`
`If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
`
`
`
`If no appeal has been filed and time remains in the six-month response period to the final Office action,
`applicant has the remainder of the response period to (1) comply with and/or overcome any
`outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP
`§715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay
`or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
`
`
`
`
`
`
`
`
`
`
`
`/J. Evan Mucha/
`
`J. Evan Mucha
`
`Examining Attorney
`
`Law Office 106
`
`(571) 270-1989
`
`evan.mucha@uspto.gov
`
`
`
`

`

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`SKU: 77E70734
`UPCJEANIISBN: 81107102032?
`Manutaduter #: ZUV
`Pmdud Weight: 0.25 pounds
`Pradum Dimenslun; (In Inches): 4.00 x 51m x 1.25
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`111231931?
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`Search - 538 Results - unbreakable wJB tsungass! or eyegasses or gasses or eyeweer or shades or frames or lenses)
`
`Copyright 1998 Globe Newspaper Company
`The Boston Globe
`
`July 7, 1998, Tuesday, City Edition
`
`SECTION: LIVING; Pg. C4
`
`LENGTH: 461 words
`
`HEADLINE: Looking for friends who are more mature;
`ASK BEFH
`
`BODY:
`Dear Beth:
`
`My daughter is 14 and doesn't seem to have many friends her own age. She mostly hangs out with her
`older brother and his friends, who are 18 and involved in some pretty serious relationships. I try to get
`her to spend more time with her classmates, but she says they're "babyish." I wonder if this is a good
`thing for her, or if I should try to discourage it. MRS. MacN.
`
`Although your instincts are right — at her age, four years is a large gap — trying to discourage it may
`backfire. Most people, young or old, don‘t like to be told to stay away from their friends.
`
`Some teenagers are normally more mature than their peers and do have a hard time finding friends
`who truly interest them. She must love being included by her brother and his friends. Ask her why her
`classmates seem babyish. Find out if she feels isolated at school. If she does, suggest that she might
`have a better time if she can develop a few friends there. Ask if there is anyone she does respect
`whom she might get to know. Investigate activities for all ages where she might meet her peers, such
`as dance or art classes, a volunteer group, or an outing club. Ask her to go with you.
`
`Work to have good, open communication with her so she will talk over any problems or pressures she
`has. Talk privately with your son. Ask him what he thinks and impress on him the need to look out for
`her.
`Dear Beth :
`
`Hope P. wrote about her son and his "need" for protective glasses. She iisted many sports involving
`physical contact wherein a participant with giasses could be harmed. As a wearer of glasses myself, I
`know how annoying they are when it comes to sports. I am not, however, scared of breaking them or
`injuring myself because of them.
`
`What I saw in that mother who wrote to you was overprotectiveness. She should remember how young
`boys and girls treat peers who are different or treated differently. If she makes her son wear
`protective eye wear, he will almost undoubtedly be ridiculed.
`
`Parents should allow their children to be who they are and do what they want (within reason, of
`course} because that is how children enjoy childhood. Children already have to worry about more now
`than they did 30 years ago. To this mother, I say, let your son play tennis. Let him wear his glasses.
`Maybe they will get broken. Maybe he'll have fun. Which is more important? JODIE FERGUSON Age 16
`
`I appreciate your views! Overprotectiveness may be something for Hope to let go of. I do think adults
`can help their kids figure out ways to be safe and deal with any peer pressure or teasing that might
`come from that. Safety glasses do not have to be geeky-looking. We are such an appearance-focused
`society that he should be able to find unbreakable glasses that look good.
`
`LOAD-DATE: July I", 1998
`
`SOL-W391 News a. Business > Combined Sources > US Newspapers l i:
`Terms: unbreakable w/3 (sunglass! or eyeglasses or glasses or eyewear or shades or frames or
`lenses} (Suggest Terms for My Search)
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`hflpJawwwlexis.comkesearchitetrievelm=4a4e33995e9623fi4?4m5?dmm_brmseType=TEXTONLYanum:411&_fmist'=FULL&_siartcloc=alD1&wc...
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`View: Full
`Datefl'ime: Tuesday, November 28; 201? - 12:23 PM EST
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`| (30%
`I Terms 3:. Conditions
`IPrivacy Polio}r
`cg. About LexisNexis
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`'
`‘
`“ LEXISNEXIS Copyright
`201? LexisNexis, a division of Reed Elsevier Inc. AI
`
`BELEKQrOUp
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`111231901?
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`Search - 538 Results - unbreakable wJB tsungass! or eyegasses or gasses or eyewear or shades or frames or lenses)
`
`Copyright 2003 The Detroit News
`All Rights Reserved
`The Detroit News
`
`June 4, 2003 Wednesday No dot Edition
`
`SECTION: HEALTH&FFFNESS; Pg. 6H
`
`LENGTH: 1041 words
`
`HEADLINE: Sunglasses: More than a fashion statement;
`UV—protected lenses can prevent eye damage and skin cancer
`
`BYLINE: Mary Beth Faller
`
`BODY:
`As Neo, Trinity and Morpheus battle to save humankind, one thing they won't have to worry about is
`ultraviolet rays from the sun damaging their eyes. The ultra-cool, black-leather ensembles in "The
`Matrix: Reloaded" include sunglasses, the best way to protect eyes from UV radiation.
`
`The Matrix characters are more concerned with running up walls while dodging bullets than practicing
`sun safety, but ultraviolet light can damage the eyes of mere mortals in several ways.
`
`Ultraviolet light is a part of the light spectrum that is invisible to the human eye. Part of sunlight is UV
`light, which creates warmth, light, photosynthesis in plants and vitamin 0 synthesis in the body. But UV
`also can damage the surface of the eye, called the cornea, and cause cataracts, macular degeneration,
`scarring on the cornea and skin cancer of the eyelids and area around the eye.
`
`"You don't go out in the sun one day and find your eyes damaged the next. It is a cumulative problem,"
`says Bill Koppin, optometrist and owner of Shades Optical in Birmingham, Royal Oak and Northville.
`
`Not only should everyone wear sunglasses, especially children, but regular glasses and contact lenses
`should be coated to make sure they block UV rays as well.
`
`"You want to get your glasses from a reputable place that uses a UV meter for proper protection,"
`Koppin says. "Nearly any sunglass maker can claim UV protection but not all are equal, any more than
`sunscreen protection in lotions. Go for what works best. "
`
`Also, anyone who is out in the sun should wear a wide—brimmed hat for further protection.
`
`"You need to put sunscreen on before you go out, and you need to put it on the eyelids. But be careful
`not to get it into the eyes," says Robert Fucigna, an ophthalmologist with a practice in Stamford, Conn.
`"Women should apply sunscreen before putting their makeup on.ll
`
`Makeup that incorporates sunscreen isn‘t as effective as using separate products, he says, but it's
`better than nothing.
`
`Blue—eyed people are especially vulnerable to sun damage. "Blue eyes are a sign of less density of
`pigment in your body, which includes the eyes as well as the skin, " he says.
`
`The sun's UV radiation contains two kinds of radiation, UVA and UVB, and both can damage your eyes.
`UVB can cause a sunburn on the cornea, the clear membrane that covers the front of your eyes.
`Corneal sunburn, called photokeratistis, can occur after long hours at the beach or on the ski slopes
`without sunglasses or goggles. It isn't permanent, but it can be painful and cause temporary vision
`loss.
`
`Sun damage also can cause scars on the surface of the eye, called pinquecula, which are raised,
`yellowish, benign lumps that grow near the nose. If the growth covers the cornea, it's called a
`pterygium. These can be removed with surgery.
`
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`hflpJawww.lexiscomlresearchii'elrim?_m=fic0?bc?1GbCQaQQOaSUQFBeCBBStfim_brMseType=T NONLYadmnum =352&_fl1115tr=F ULL&_stsrldoc=3<51&w...
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`Search - 538 Results - unbreakable wB (sungsss! or eyegasses or gasses or eye-veer or shades or frames or lenses)
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`More serious effects of UV radiation are cataracts and macular degeneration, Fucigna says. Cataracts —
`- the clouding of the lens of the eye, the No. 1 cause of reversible blindness -- and macular
`degeneration are the leading causes of decreased vision among people older than 60. Cataracts can be
`treated with surgery. Macular degeneration, a progressive, painless deterioration of the macula -- the
`area at the center of the retina responsible for detailed vision —— has no known cure.
`
`Ultraviolet radiation is not limited to the sun. People who use indoor tanning salons are exposed to UV
`rays as weil.
`
`He would like tanning salons to be required to provide clients with UV—protective eyewear. "It's the
`same UV rays as the sun," he says.
`
`Tanning goggles that are not UV protective can cause damage by blocking the light, which allows the
`pupils to dilate and exposes the retina to more UV rays, Fucigna says.
`
`"If you're a frequent user, buy your own
`
`it will save you a fortune down the road," he says.
`
`Don‘t forget your sunscreen
`
`Beyond protecting your eyes, you should take steps to protect your skin. The Environmental Protection
`Agency recommends watching for the UV Index each day. [It was 3 in Metro Detroit on Tuesday.)
`
`The EPA UV index forecast is available at iwin.nws.noaagovfiwinfus/ultraviolet.htmland
`www.epa.goy/sunwise/uvindex.html.
`
`The EPA's Sunwise program recommends these steps for each UV level:
`
`0—2 (minimal): People with very sensitive skin and infants should always be protected from prolonged
`sun exposure.
`
`3—4 (low): Wear a hat with a wide brim and sunglasses to protect your eyes. Use a sunscreen with an
`SPF of at least 15 and wear long—sleeved shirts and long pants when outdoors.
`
`5—6 (moderate): Use sunscreen if you work outdoors and remember to protect sensitive areas such as
`the nose and the rims of the ears. Sunscreen prevents sunburn and some of the sun's damaging effects
`on the immune system. Use a lip balm or lip cream containing a sunscreen. Up balms can help protect
`some people from getting cold sores.
`
`?—9 (high): Wear long—sleeved shirts and trousers made from tightly woven fabrics. UV rays can pass
`through the holes and spaces of looseiy knit fabrics.
`
`10 or more {very high): Avoid being in the sun as much as possible. Wear sunglasses that block 99 to
`100 percent of all UV rays {both UVA and UVB). Some reduction in blue light also might be beneficial,
`but colors should not be severely distorted. Wear a cap or hat with a wide brim, which will block
`roughly SCI percent of UV radiation from reaching the eyes. Wearing sunglasses as well can block the
`remainder of UV rays.
`
`Take safety measures with children
`
`Though many parents never put sunglasses on their children, experts say eye protection should be
`considered a basic necessity for little ones. Prevent Blindness America recommends parents keep these
`tips in mind when selecting sunglasses for children:
`
`* Pick sunglasses that suit children's active lifestyles. The glasses should be impact resistant (made of
`polycarbonate), should not pop out of the frames, and the frames should be bendable, unbreakable
`and/or have snap—on temples.
`
`* Lenses should be large enough to shield the eyes from most angles and to block light that leaks in
`around the frames.
`
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`hflpVMww.|exiscornkesearchltelrieye?_m=fh:0?bc?13bc9a9213a569?3ec68555?2&_brmseType=T 3(TON LYadmnum =352&_finistr=FULL&_starldoc= 351 My.
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`Search - 533 Resdls - mtreakeble vw'3 [SUFgEBSl or eyeglasses or gasses cr eyeweer or Shades cr frames tr lenses)
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`* Check the sunglasses periodically to make sure they fit well and are not damaged.
`
`* Choose a wide—brimmed hat for your child to maximize protection.
`
`LOAD-DATE: June 4. 2003
`
`SUUVCE: News 3: Business :=- Combined Sources > US Newspapers 'i
`Terms: unbreakable NIB (sunglass! or eyeglasses or glasses or eyewear or shades or frames or
`lenses) (Suggest Terms for My Search)
`View: Full
`DatefTime: Tuesday, November 28. 201? - 12:18 PM EST
`
`. LEXlSNEXIS Copyright
`201? Le><is|'\le><isJ a division of Reed Elsevier Inc. Al
`BELeKQlOUp
`'
`5‘
`'
`' 5. About LexisNexis
`|Privacy Policy
`| Terms 8:. Conditions
`| (3th
`'"
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`111231291?
`
`Search - 538 Results - unbreakable wJB tsungass! or eyegasses or gasses or eyewaar or shades or frames or lenses)
`
`Copyright 2005 The Detroit News
`All Rights Reserved
`The Detroit News {Michigan}
`
`May 25, 2005 Wednesday
`
`SECTION: HEALTH 8: FITNESS; Pg. 3H
`
`LENGTH: 813 words
`
`HEADLINE: Health News
`
`BYLINE: Tracy Boyd
`
`BODY:
`
`Allergy
`
`You can prevent indoor environment reactions
`
`Spring cleaning is essential for people who live with environmental allergies, says the Allergy and
`Asthma Foundation of America. Tlps:
`
`Y Vacuum regularly with a double-bag or HEPA—equipped vacuum cleaner.
`
`Y Encase pillows and mattresses in air-tight covers.
`
`Y Wash bed linens in 130-degree hot water once a week.
`
`Y Fix leaky pipes to limit moisture in the house.
`
`Y Use exhaust fans to increase kitchen and bathroom ventilation.
`
`Y Clean and kill mold spores on hard surfaces with a bleach solution.
`
`For more information, visit ?a href:“www.aafa.org"?www.aafa.org .
`
`Senior heal