Grandvision France

This Opinion is Not a
Precedent of the TTAB
Mailed: May 12, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grandvision France
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Serial No. 79389236
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Ellen S. Simpson of Colson Law Group for Grandvision France.
Maureen Milmoe, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Wellington, Larkin, and O’Connor,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Grandvision France (“Applicant”) seeks registration on the Principal Register of
the mark shown below
for goods ultimately identified as “Spectacles; spectacle frames; eyeglasses;
sunglasses; masks for sports in the nature of sports goggles, with the exception of

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fencing masks; spectacle lenses; optical lenses; lenses for sunglasses; correcting
lenses being optical lenses; contact lenses; eyeglass lenses; ophthalmic lenses;
corrective lenses being optical lenses; spectacle cases; eye glass cases; carrying cases
for contact lenses; headbands, cords, chains and ties for holding spectacles, namely,
eye glass cords and eye glass chains; binoculars; optic magnifiers being magnifying
glasses” in International Class 9.1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the mark shown below
registered on the Principal Register for “Beauty masks; Cleaning preparations;
Cosmetic preparations for eyelashes; Cosmetic products in the form of aerosols for
skin care; Cosmetics; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic
purposes; Facial cleansing milk; Lotions for cosmetic purposes; Make up removing
1 Application Serial No. 79389236 was filed on January 16, 2024 under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141(f), seeking the extension of protection of Applicant’s
International Registration No. 1274231 to the United States. Applicant describes its mark as
follows: “The mark consists of the wording ‘EYEXPERT’ in stylized font within a circle; the
circle appears on a rectangle with circular outlines surrounding the circle and expanding
outward.” The application also covers goods in International Class 5 that are not the subject
of this appeal.

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preparations” in International Class 3,2 as to be likely to cause confusion when used
in connection with the goods identified in the application.
When the Examining Attorney made the refusal final, Applicant appealed and
simultaneously requested reconsideration, which was denied. Applicant and the
Examining Attorney have filed briefs.3 We affirm the refusal to register.
I. Prosecution History and Record on Appeal4
We briefly summarize below the prosecution history of the application because it
provides useful background to our disposition of the appeal.
Applicant filed its application to extend the protection of its International
Registration No. 1274231 to the United States for goods in Classes 5 and 9, and
services in Class 44. The Examining Attorney issued an Office Action refusing
registration on two grounds: (1) under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that the mark was merely descriptive of the goods and
services, and (2) under Section 2(d), on the ground of likelihood of confusion with the
marks shown in several registrations.5 The Examining Attorney also raised some
2 The cited Registration No. 5384929 issued on January 23, 2018 and has been maintained.
The registrant describes the mark as follows: “The mark consists of the stylized wording
‘EYEXPERT’ to the right of a design of a stylized fish.”
3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. The number preceding TTABVUE corresponds to the docket entry number, and any
numbers following TTABVUE refer to the page(s) of the docket entry where the cited
materials appear. Applicant’s brief appears at 6 TTABVUE and the Examining Attorney’s
brief appears at 8 TTABVUE.
4 Citations in this opinion to the application record are to pages in the downloadable .pdf
version of the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).
5 August 13, 2024 Office Action at TSDR 2-7. The mere descriptiveness refusal was later
withdrawn, and we will not summarize evidence that is relevant only to that refusal, or only

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informalities. The Examining Attorney made of record USPTO electronic records
regarding the cited Registration No. 5384929,6 dictionary definitions of the words
“eye” and “expert,”7 and third-party webpages that she claimed showed that “the
same entity commonly manufactures, produces, or provides the relevant goods and
markets the goods under the same mark.”8
Applicant responded to the Office Action, argued against the mere descriptiveness
and likelihood of confusion refusals, and addressed some of the informalities.
Applicant made of record webpages from encyclopedia.com and LinkedIn regarding
Applicant’s business.9
The Examining Attorney then issued an Office Action withdrawing the mere
descriptiveness refusal but making final the Section 2(d) refusal in Classes 9 and
44.10 The Examining Attorney made of record additional third-party webpages that
she claimed showed “that the same entity commonly manufactures, produces, or
provides the relevant goods and markets the goods under the same mark.”11
Applicant appealed and simultaneously requested reconsideration. In its Request
for Reconsideration, Applicant amended its Class 9 identification of goods and deleted
to the Section 2(d) refusal based on registrations other than the one at issue on this appeal,
which was also subsequently withdrawn.
6 Id. at TSDR 12-13.
7 Id. at TSDR 16, 21 (vocabulary.com).
8 Id. at TSDR 6, 28-151.
9 February 20, 2025 Response to Office Action at TSDR 22-33.
10 March 13, 2025 Final Office Action at TSDR 2-8.
11 Id. at TSDR 7, 39-115.

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the Class 44 services from its application, but did not make any additional evidence
of record.12
The Examining Attorney denied Applicant’s Request for Reconsideration,
maintaining and continuing the Section 2(d) refusal to register as to Class 9 based on
Registration No. 5384929, and making of record dictionary definitions of the words
“eye” and “expert,”13 USPTO electronic records regarding third-party use-based
registrations of marks covering one or more of the goods identified in the application
and one or more of the goods identified in the cited registration,14 and additional
third-party webpages that the Examining Attorney claimed showed “that the same
entity commonly manufactures, produces, or provides the relevant goods and markets
the goods under the same mark.”15 The appeal was resumed, and is now ready for
decision.
II. Analysis of Likelihood of Confusion Refusal
“The Trademark Act prohibits registration of a mark that so resembles a
registered mark as to be likely, when used on or in connection with the goods or
services of the applicant, to cause confusion [or] mistake, or to deceive.” In re Charger
Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination
of the likelihood of confusion under Section 2(d) of the Trademark Act is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
12 September 15, 2025 Request for Reconsideration at TSDR 1-7.
13 October 6, 2025 Denial of Request for Reconsideration at TSDR 5-9.
14 Id. at TSDR 10-31.
15 October 6, 2025 Denial of Request for Reconsideration at TSDR 3, 32-120.

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confusion factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
(CCPA 1973) (“DuPont”). Charger Ventures, 64 F.4th at 1379. We consider each
DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg.
Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).
“Two key factors in every Section 2(d) case are the first two factors regarding the
similarity or dissimilarity of the marks and the goods or services, because the
fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.” DC Comics
v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *10 (TTAB 2022)
(internal quotations and quotation marks omitted).
Applicant discusses the key first two DuPont factors, as well as the third DuPont
factor, the “similarity or dissimilarity of established, likely-to-continue trade
channels,” DuPont, 476 F.2d at 1361, in arguing that “the Examining Attorney has
committed legal error in this case by failing to establish the relatedness of the goods
and channels of trade as required under the DuPont factors and refusing registration
based solely on the similarities of the marks.” 6 TTABVUE 5. Applicant focuses on
these three factors, claiming that
[t]he Examining Attorney has committed legal error in this
case by (i) dissecting the Cited Mark and Applicant’s Mark
and comparing the word portion of Applicant’s Mark to
only the word portion of the Cited Mark, (ii) disregarding
the clear and significant differences in the goods identified
in the application and in the registration of the Cited Mark,
and (iii) disregarding the differences in the channels of
trade and relevant purchasers.
Id. at 8.

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A. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, “[w]e consider the marks in their entireties as to
appearance, sound, connotation and commercial impression.” Sage Therapeutics, Inc.
v. Sageforth Psych. Servs., LLC, No. 91270181, 2024 WL 1638376, at *5 (TTAB 2024)
(citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 1371 (Fed. Cir. 2005)). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” Id. (quoting In re Inn at St. John’s
LLC, No. 87075988, 2018 WL 2734893, at *5 (TTAB 2018) (citation omitted), aff’d
mem., 777 F. App’x 516 (Fed. Cir. 2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach
Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). “The
focus is on the recollection of the average purchaser, who normally ‘retains a general
rather than a specific impression of marks.’” Id. (quoting In re i.am.symbolic, llc, No.
85916778, 2018 WL 3993582, at *4 (TTAB 2018) (citations omitted)).
For ease of reference in following our analysis, we reproduce the marks again
below:

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Applicant argues that the marks are “dissimilar in visual appearance” and that
the “commercial impression of the marks in their entireties are [sic] different based
on the differences in the prominent designs in both Applicant’s Mark and the Cited
Mark.” 6 TTABVUE 9-10. The remainder of Applicant’s argument under the first
DuPont factor is as follows:
Rather than comparing the overall commercial
impressions of Applicant’s Mark as applied to Applicant’s
identified goods and the Cited Mark as applied to the
Registrant’s goods, the Examining Attorney has
exclusively considered the similarity of the matter shared
between the marks. By ignoring the contribution of the
design to the commercial impression of Applicant’s Mark
and the Cited Mark, the Examining Attorney found that
the wording EYEXPERT was the dominant portion of the
Cited Mark and held that there was a likelihood of
confusion because the dominant portion of the Cited Mark
was identical to a portion of Applicant’s Mark. Applicant
respectfully disagrees with this finding and believes that
the Examining Attorney’s determination ignored the
significant contributions the designs in the respective
marks make to the overall commercial impressions of the
marks in their entireties.
Id. at 10.

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The Examining Attorney responds that “the literal element in the marks is
identical in spelling, sound, and meaning,” and that “because the wording in the
compared marks is identical, these marks are likely to engender the same connotation
and overall commercial impression of ‘having, involving, or demonstrating skill in or
knowledge of vision’ when considered in connection with Applicant’s and Registrant’s
respective goods.” 8 TTABVUE 4 (record citation omitted). The Examining Attorney
further argues that the identical wording “Eyexpert” common to the marks is the
dominant portion of both marks, id. at 5-6, and concludes that “when Applicant’s and
Registrant’s marks are considered in their entireties, the shared wording,
EYEXPERT, is the dominant element of the compared marks and the design
elements in each mark do not change the meaning of the identical wording,” and that
“[f]or these reasons, the marks are identical in sound, meaning and commercial
impression and similar in appearance.” Id. at 6.
Marks must be considered in their entireties, but “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, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” In re Detroit Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). As discussed
above, Applicant suggests that the design elements of the marks are as significant as
their word elements, 6 TTABVUE 10, while the Examining Attorney argues that the

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dominant portions of the marks are their identical telescoped wording “Eyexpert.” We
agree with the Examining Attorney.
“In marks ‘consisting of words and a design, the words are normally accorded
greater weight because they are likely to make a greater impression upon purchasers,
to be remembered by them, and to be used by them to request the goods.’” Sabhnani
v. Mirage Brands, LLC, No. 92068086, 2021 WL 6072822, at *16 (TTAB 2021)
(quoting In re Aquitaine Wine USA, LLC, No. 86928469, 2018 WL 1620989, at *2
(TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)). “‘The
verbal portion of a word and design mark ‘likely will appear alone when used in text
and will be spoken when requested by consumers.’” Id. (quoting Aquitaine Wine, 2018
WL 1620989, at *2).
These general principles apply with full force here to both marks. Applicant’s
mark consists of a rectangular exterior shape, which is a “non-descript ‘carrier’,”
Sabhnani, 2021 WL 6072822, at *16, for concentric circles that draw the eye to an
interior circle containing the telescoped word “eyexpert” in the middle. In the cited
mark, the telescoped word EYEXPERT appears in large bolded capital letters to the
right of a design that contains the fanciful letters “E” and “X,” which reinforce the
telescoped word. We find that the telescoped word “eyexpert” is the dominant portion
of both marks, and we turn now to the required comparison of the marks in their
entireties, giving greater weight in that comparison to the telescoped word “eyexpert”
in each mark than to the other elements of the marks.

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The marks are far more similar than dissimilar in appearance given the common
presence of the dominant telescoped word “eyexpert.” A consumer with a general
rather than specific impression of the cited mark in his or her mind’s eye who
separately encounters Applicant’s mark is not likely to distinguish the source of the
respective goods based on the presence of the modest design elements in Applicant’s
mark, which is dominated by the word “eyexpert.”
With respect to sound, both marks will be verbalized based solely on the telescoped
word “eyexpert,” which has been formed by combining the words “eye” and “expert.”
The telescoped combination of those words is not itself a common word in American
English, and “there is no correct pronunciation of a trademark that is not a recognized
word,” Ston-Cor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332-33 (Fed.
Cir. 2014), but “[a]bsent evidence to the contrary, we must consider all reasonable
possibilities” for the pronunciation of “eyexpert.” Look Cycle Int’l v. Kunshan Quiye
Outdoor Sports Goods Co., No. 92079409, 2024 WL 3739358, at *10 (TTAB 2024)
(citing StonCor, 759 F.3d at 1332). The pronunciation of the telescoped word
“eyexpert” as “eye expert” is the most reasonable possibility because the known words
“eye” and “expert” can both be seen in the word, and “-xpert” would be pronounced as
“expert” because of the pronunciation of the letter “x” in American English as “ex.”
We find that the marks are identical in sound.
With respect to meaning, the record contains evidence of the meaning of the words
“eye” and “expert,” and we have no doubt that in both marks, the telescoped word

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“eyexpert” will connote the same commercial impression of someone who is
knowledgeable about the eyes.
The marks are similar in appearance, and identical in sound and connotation and
commercial impression. The first DuPont factor strongly supports a conclusion that
confusion is likely. Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir.
2024).
B. Similarity or Dissimilarity of the Goods, Channels of Trade, and
Classes of Consumers
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration . . . .” Detroit
Athletic Co., 903 F.3d at 1306. “This factor considers whether ‘the consuming public
may perceive [the goods or services] as related enough to cause confusion about the
source or origin of the goods or services.’” In re St. Helena Hosp., 774 F.3d 747, 752
(Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
1267 (Fed. Cir. 2002)). “In analyzing the [goods], the Board considers ‘[t]he similarity
or dissimilarity and nature of the [goods] as described in an application or
registration.’” In re OSF Healthcare Sys., No. 88706809, 2023 WL 6140427, at *4
(TTAB 2023) (quoting In re Embiid, No. 88202890, 2021 WL 2285576, at *10 (TTAB
2021)).
The goods “‘need not be identical or even competitive to find a likelihood of
confusion.’” Id. (quoting In re Country Oven, Inc., No. 87354443, 2019 WL 6170483,
at *2 (TTAB 2019)). “They need only be ‘related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the

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mistaken belief that [they] emanate from the same source.” Id. (quoting Country
Oven, 2019 WL 6170483, at *2 (quoting Coach Servs., 668 F.3d at 1369 (internal
quotation omitted)).
The relatedness of goods or services may be established based on (1) the language
of the involved identifications of goods or services, which may show, on the face of the
identifications, that the goods or services are literally or legally identical, or otherwise
intrinsically related, and (2) evidence of third-party uses or registrations, which may
show that the identified goods or services are commonly offered by the same entity
under the same mark. See, e.g., id. at *4. As discussed below, the Examining Attorney
relies here on third-party uses and registrations.
The goods identified in the application are “Spectacles; spectacle frames;
eyeglasses; sunglasses; masks for sports in the nature of sports goggles, with the
exception of fencing masks; spectacle lenses; optical lenses; lenses for sunglasses;
correcting lenses being optical lenses; contact lenses; eyeglass lenses; ophthalmic
lenses; corrective lenses being optical lenses; spectacle cases; eye glass cases; carrying
cases for contact lenses; headbands, cords, chains and ties for holding spectacles,
namely, eye glass cords and eye glass chains; binoculars; optic magnifiers being
magnifying glasses” in Class 9. The goods identified in the cited registration are
“Beauty masks; Cleaning preparations; Cosmetic preparations for eyelashes;
Cosmetic products in the form of aerosols for skin care; Cosmetics; Cotton sticks for
cosmetic purposes; Cotton wool for cosmetic purposes; Facial cleansing milk; Lotions
for cosmetic purposes; Make up removing preparations” in Class 3.

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“[W]e must construe the [goods] identified in the cited registration as broadly as
reasonably possible ‘to include all [goods] of the nature and type described therein,’”
OSF Healthcare, 2023 WL 6140427, at *5 (citing In re Solid State Design Inc., No.
87269041, 2018 WL 287909, at *6 (TTAB 2018) (internal quotation omitted)), and
“we must resolve any ambiguities regarding their coverage in favor of the cited
registrant ‘given the presumptions afforded the registration under Section 7(b)’ of the
Trademark Act.” Id. (quoting In re C.H. Hanson Co., No. 77983232, 2015 WL
6121759, at *5 (TTAB 2015) (citing 15 U.S.C. § 1057(b)). We must also give the goods
identified in the application “their full scope in our analysis of the second DuPont
factor.” Id. (citing Country Oven, 2019 WL 6170483, at *5).
The “Examining Attorney need not prove, and we need not find, similarity as to
each [good] listed in the description of [goods]” in Class 9 in the application. Id.
(citation omitted). “It is sufficient for a finding of likelihood of confusion if relatedness
is established for any item encompassed in the identification of goods in a particular
class in an application.” In re Ye Mystic Krewe of Gasparilla, No. 90522364, 2025 WL
2953731, at *3 (TTAB 2025) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
Inc., 648 F.2d 1335, 1336 (CCPA 1981)). Stated simply in the context of the lengthy
identifications here, likelihood of confusion as to the entirety of Class 9 in the
application may be based on the relatedness of any one of the identified Class 9 goods
to any one of the Class 3 goods identified in the cited registration.
The goods identified in the cited registration include “cosmetics,” which in its
singular noun form means, among other things, “a cosmetic preparation for external

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use,” and the adjective “cosmetic” modifying “preparation for external use” means “of,
relating to, or making for beauty especially of the complexion.” MERRIAM-WEBSTER
DICTIONARY (merriam-webster.com, last accessed on May 4, 2026).16 The goods
identified in the cited registration as “cosmetics” thus encompass not only the other
goods more narrowly identified in the registration as “Cosmetic preparations for
eyelashes,” “Cosmetic products in the form of aerosols for skin care,” “Facial cleansing
milk,” “Lotions for cosmetic purposes,” and “Make up removing preparations,” but
also any other “cosmetic preparations for external use” pertaining to “beauty
especially of the complexion.”
Applicant argues that the Examining Attorney has failed to show that the goods
identified in the application as “eyeglasses” and the goods identified in the cited
registration as “cosmetics” are related. 6 TTABVUE 10. Applicant argues that
“[e]yeglasses and cosmetics are fundamentally different product categories with
distinct purposes, manufacturing processes, channels of trade, consumer
expectations, and industry practices,” and that “[t]he record contains no competent
evidence demonstrating that Applicant’s identified goods and Registrant’s identified
goods are complementary, competitive, or otherwise linked in a manner recognized
by the DuPont analysis.” Id. at 12. Applicant characterizes the goods identified in the
cited registration as “all personal care preparations used on the body and face,
typically purchased frequently and at low to moderate price points,” and the goods
16 The Board may take judicial notice of dictionary definitions, including definitions from
online dictionaries that exist in printed format or have fixed regular editions. See, e.g., In re
Nursecon, LLC, No. 88052194, 2024 WL 5265079, at *10 n.64 (TTAB 2024) (citation omitted).

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identified in the application as “optical instruments that require specialized
manufacturing, precise optical standards and, in many cases, regulatory compliance,
are purchased after obtaining a prescription from a licensed eyewear specialist, such
as an optician, optometrist, or ophthalmologist, and are typically sold at a higher
price point.” Id.
Applicant dismisses the Examining Attorney’s third-party use evidence as
showing only that “these entities offer various types of cosmetic preparations, such
as lip & cheek tints, lipstick, nail polish, fragrance spray, skin lotions, etc.” Id.
Applicant “does not dispute that these entities may offer fashion eyeglasses or
sunglasses meant to be fashion accessories only,” but argues that “simply sharing a
retail environment does not establish the relatedness of goods.” Id. Applicant
concludes that
[t]he marketplace evidence produced by the Examining
Attorney does not demonstrate that these goods are
promoted together, used together, or perceived as
connected by consumers. Any connection between the
goods is only consistent with multiple types of goods being
available in a large retail setting which in itself does not
make the goods related. . . . Without more evidence, there
is simply no basis to conclude that consumers encountering
the Cited Mark in use with cosmetics would assume a
connection to a party, such as Applicant, offering eyewear.
Id. at 13.
With respect to the Examining Attorney’s third-party registration evidence that
“identified both cosmetics and eyeglasses,” id., Applicant argues that
similar to the third-party Internet evidence cited by the
Examining Attorney, all of the third-party registrations
relate to fashion brands that sell sunglasses or eyeglasses
as fashion accessories. Not one of the registrations relates

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to optical goods similar to those sold in optical stores. The
mere presence of two types of goods in the same
registration should not, and cannot, lead to a bright line
rule that all such goods are legally related.
Id. at 12-13 (citation omitted).
Applicant also notes
that the Examining Attorney initially refused registration
based on a likelihood of confusion between the goods
identified in the Cited Mark and Applicant’s goods as
identified in Classes 5 and 9, namely, contact lens cleaning
preparations, eye drops, and related goods in Class 5, and
spectacles, eyeglasses, and sunglasses in Class 9. The
Examining Attorney withdrew the refusal to register the
mark as to the goods in Class 5, while maintaining the
refusal to register in Class 9. Applicant’s identified goods
in Class 5 and in Class 9 are highly related to each other.
The Examining Attorney’s continued refusal to register
Applicant’s Mark as to the goods in Class 9 is inconsistent
with the withdrawal of a refusal to register as to the goods
in Class 5.
Id. at 14.
The Examining Attorney responds that her Internet and third-party registration
evidence is sufficient to show that one or more of the goods identified in the
application and one or more of the goods identified in the cited registration are
related. 8 TTABVUE 7-11. She rejects Applicant’s argument that her evidence
“‘relate[s] to fashion brands that sell sunglasses or eyeglasses as fashion accessories,’”
id. at 11 (quoting 6 TTABVUE 13, 15), and argues that “it is common knowledge
among consumers that eyewear and cosmetics may be complementary products in
that consumers may purchase both eyewear and cosmetics as fashion accessories”
and that “some consumers would expect that eyewear and cosmetics identified by
marks with identical wording emanate from the same source.” Id. at 12. She

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concludes that “because the compared goods are commonly provided under the same
mark and in the same channels of trade, the second DuPont consideration weighs in
favor of finding a likelihood of confusion.” Id.
We begin our analysis with the Examining Attorney’s registration evidence. “As a
general proposition, third-party registrations that cover goods . . . from both the cited
registration and an Applicant’s application are relevant to show that the goods . . .
are of a type that may emanate from a single source under one mark.” Country Oven,
2019 WL 6170483, at *5 (citations omitted).17 The Examining Attorney made of record
six subsisting use-based third-party registrations covering both “cosmetics” per se in
Class 3 and “sunglasses” in Class 9,18 and two other registrations covering both
17 Applicant argues that “[t]he mere presence of two types of goods in the same registration
should not, and cannot, lead to a bright line rule that all such goods are legally related.” 6
TTABVUE 13-14 (citing In re Deutsche Calypsogesellschaft MBH, 1983 WL 51898 (TTAB
1983)). In Deutsche Calypsogesellschaft, the examining attorney had made of record only
three third-party registrations, and no evidence of use, to show that various Class 3 goods
were related to jewelry. Id. at *2. Applicant quotes the Board’s statement in Deutsche
Calypsogesellschaft that “it is well known that some marks, e.g. the house marks of large
catalogue distributors, are registered in all classes of goods. To infer based solely on evidence
of the existence of such registrations that goods in all classes are related from the standpoint
of likelihood of confusion issues would, of course, be absurd.” 6 TTABVUE 14 (quoting
Deutsche Calypsogesellschaft, 1983 WL 51898, at *3). This statement appears to be dicta
because the third-party registrations in the record were owned by Avon, Estee Lauder, and
Gucci, which were and are not “large catalogue distributors.” The owners of the third-party
registrations here similarly are not “large catalogue distributors,” and, in any event, the
third-party registrations here are greater in number than in Deutsche Calypsogesellschaft
and corroborate, and are corroborated by, the evidence of third-party use.
18 October 6, 2025 Denial of Request for Reconsideration at TSDR 10-11 (Registration No.
5801686 of AQUASCUTUM), 12-13 (Registration No. 5904341 of ANGELYNE), 16-17
(Registration No. 6177692 of ARIADNE and design), 18-19 (Registration No. 5064682 of
GIRLZ ONLY and design), 22-23 (Registration No. 4194848 of GEORGE GINA & LUCY), 26-
27 (Registration No. 5991393 of GLAMOR LOOKS). Registration Nos. 5008341 and 2953202
covered both “cosmetics” and “sunglasses” when they were issued, but the goods identified as
“cosmetics” were deleted during maintenance. Id. at 20-21, 24-25. As discussed below,
however, Registration No. 2953202 also currently covers “cosmetic preparations for skin
care.”

Serial No. 79389236
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“sunglasses” in Class 9, and Class 3 goods identified as “cosmetic preparations for
bath and shower,” and “cosmetic preparations for skin care,” respectively, which, as
discussed above, are encompassed within the broadest reasonable construction of the
goods identified as “cosmetics” in the cited registration.19
The Examining Attorney also made of record multiple third-party websites
offering sunglasses, and goods falling within the broadest reasonable construction of
the goods identified as “cosmetics” in the cited registration, under the same mark,20
including:
• The website of Burberry at burberry.com, which offers sunglasses and “eye
make-up” for women;21
• The website of H&M at hm.com, which offers women’s sunglasses and
“Makeup Products;”22
• The website of Victoria Beckham at victoriabeckhambeauty.com, which
offers mascara, eye liner, and sunglasses;23
• The website of Zara at zara.com, which offers tints, highlighters, and other
cosmetics, as well as sunglasses;24
19 Id. at TSDR 14-15 (Registration No. 5297581 of PETER MILLAR), 24-25 (Registration No.
2953202 of STELLA MCCARTNEY).
20 With respect to such Internet evidence, the Board has noted that “in determining exactly
what [goods] are offered through the respective websites, we acknowledge that [goods] may
not be explicitly described at all, or may be described in colloquial language that does not
track the technical language of acceptable identifications of goods and services in applications
and registrations, including those involved here. . . . In such instances, we must determine
the nature of the [goods] that are offered, and decide whether they fall within the full scope
of the language in the involved identifications. OSF Healthcare, 2023 WL 6140427, at *10.
21 August 13, 2024 Office Action at TSDR 104-22.
22 Id. at TSDR 123-35.
23 Id. at TSDR 136-50.
24 March 13, 2025 Final Office Action at TSDR 11-22.

Serial No. 79389236
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• The website of & Other Stories at stories.com, which offers “Makeup” and
sunglasses;25
• The website of Dolce & Gabbana at dolcegabbana.com, which offers
“Makeup” and sunglasses;26
• The website of Chanel at chanel.com, which offers “Makeup” and
sunglasses;27
• The website of Giorgio Armani at giorgioarmanibeauty-usa.com, which
offers various skin care products and sunglasses;28
• The website of Gucci at Gucci.com, which offers various cosmetics and
sunglasses;29
• The website of Stella McCartney at stellamccartney.com, which offers
various skin care products and sunglasses;30
• The websites of Yves Saint Laurent at ysl.com and yslbeautyus.com, which
offer “Makeup” and sunglasses;31
• The website of Carolina Herrera at carolinaherrera.com, which offers
“Makeup” and sunglasses;32
• The website of Prada at prada-beauty.com, which offers “Makeup” and
sunglasses;33 and
• The website of Dezi Skin at deziskin.com, which offers various skin care
products and sunglasses.34
25 Id. at TSDR 23-30.
26 Id. at TSDR 39-45.
27 Id. at TSDR 55-66.
28 Id. at TSDR 67-77.
29 Id. at TSDR 78-91.
30 Id. at TSDR 92-106. As noted above, the STELLA MCCARTNEY mark is currently
registered for “sunglasses” and “cosmetic preparations for skin care” in Registration No.
2953202.
31 October 6, 2025 Denial of Request for Reconsideration at TSDR 76-83.
32 Id. at TSDR 85-94.
33 Id. at TSDR 95-102.
34 Id. at TSDR 105-20.

Serial No. 79389236
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Considered in its entirety, the Examining Attorney’s third-party registration and
use evidence is sufficient in quantity and quality to show that goods identified as
“sunglasses” and “cosmetics” are commonly sold by the same entity under the same
mark. See, e.g., Country Oven, 2019 WL 6170483, at *5-6.
Applicant’s challenges to this evidence are unpersuasive. As noted above,
Applicant concedes that the Examining Attorney’s evidence “shows that these entities
offer various types of cosmetic preparations, such as lip & cheek tints, lipstick, nail
polish, fragrance spray, skin lotions, etc.,” and Applicant “does not dispute that these
entities may offer fashion eyeglasses or sunglasses meant to be fashion accessories
only.” 6 TTABVUE 12. Applicant claims, however, that “simply sharing a retail
environment does not establish the relatedness of goods,” id., and that the “Board has
consistently rejected the idea that sharing a location in a department store or use by
a mass retailer proves relatedness.” Id. at 13.
Applicant cites In re Sears, Roebuck & Co., No. 502919, 1987 WL 123813 (TTAB
1987) and In re White Rock Distilleries Inc., No. 77093221, 2009 WL 3401827 (TTAB
2009), in support of its argument that
[t]he marketplace evidence produced by the Examining
Attorney does not demonstrate that these goods are
promoted together, used together, or perceived as
connected by consumers. Any connection between the
goods is only consistent with multiple types of goods being
available in a large retail setting which in itself does not
make the goods related.
Id. at 13. The cited cases do not support Applicant’s argument.
In Sears, Roebuck, the Board considered the relatedness of the applicant’s
brassieres and the registrant’s ladies’ sportswear, namely, tops, shorts, and pants.

Serial No. 79389236
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The Board found that these were “undeniably related goods,” but “with a competitive
distance between them.” Sears, Roebuck, 1987 WL 123813, at *2. The Board found
that “they are different types of clothing having different uses, and are normally sold
in different sections of department stores.” Id. The Board further noted that “this
competitive distance must be considered in light of two additional factors which are
present in this case,” id., specifically a consent agreement between the applicant and
the cited registrant, and the “different meanings which the involved marks
[CROSSOVER for ladies’ sportwear and CROSS-OVER for bras] project when they
are applied to the differing goods of applicant and registrant.” Id. at *2-3. The Board
specifically noted that the record in that case was devoid of evidence supporting the
examining attorney’s assertion during prosecution that “‘it is common for producers
of sportswear to sell undergarments and sell them under the same mark.’” Id. at *2
n.5.
Here, unlike in Sears, Roebuck, there is no consent agreement between Applicant
and the cited registrant, there is no evidence that the word “eyexpert” common to the
marks has one meaning when used for sunglasses, and a second and different
meaning when used for cosmetics, and, most importantly, there is ample evidence
that sunglasses and cosmetics are commonly sold under the same mark.
In White Rock Distilleries, the Board found no likelihood of confusion between the
mark VOLTA for “energy vodka infused with caffeine” and TERZA VOLTA and
design for “sparkling fruit wine; sparkling grape wine; sparkling wine; wines.” The

Serial No. 79389236
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Board found that the examining attorney had failed to establish that the involved
alcoholic beverages were related. The Board noted that
[t]he examining attorney submitted excerpts from several
Internet websites showing that (1) vodka and wine are
offered on the same website to the same consumers, and (2)
there are several vodkas which are made with wine grapes.
This evidence, however, is hardly sufficient to convince us
that applicant’s energy vodka infused with caffeine and
registrant’s wines are related. There is no evidence that
vodka, much less applicant’s specific type of vodka, and
wine emanate from a single source under a single mark.
Also, there is no evidence that energy vodka infused with
caffeine and wine are ingredients for any particular
cocktails such that we could consider them complementary
products that would be bought and used together. Although
vodka and wine may both be described generally as
“alcoholic beverages,” this is insufficient to establish that
applicant’s and registrant’s goods are related.
White Rock Distilleries, 2009 WL 3401827, at *3.
Here, unlike in White Rock Distilleries, there is evidence showing that the specific
involved goods, “sunglasses” and “cosmetics,” are commonly sold under the same
mark, and the goods have been shown to be related.
The record shows that the involved goods are related. The second DuPont factor
supports a conclusion that confusion is likely.
The third DuPont factor involves the “similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 476 F.2d at 1361. Applicant argues,
without citing any record evidence, that “[c]osmetics are primarily sold in beauty
aisles, cosmetic retailers, department stores, and online beauty marketplaces,” while
“[e]yeglasses are primarily sold in optical departments, specialty eyewear boutiques,
vision-care offices, and through prescription eyewear providers—an entirely separate

Serial No. 79389236
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distribution system that does not overlap in any meaningful way with cosmetic sales.”
6 TTABVUE 14-15. According to Applicant,
[t]he Internet evidence provided by the Examining
Attorney does not establish a different finding. The fashion
accessory sunglasses and eyeglasses sold by the retailers
cited by the Examining Attorney appear on different pages
within the retailers’ websites and are not marketed
together. Indeed, all the fashion accessory sunglasses and
eyeglasses shown in the provided Internet evidence are
simply that – fashion accessories – and have nothing to do
with Applicant’s identified goods which are sold through
vision stores and vision retailers. Consumers are quite
unlikely to even encounter Applicant’s and Registrant’s
goods in the same market space, let alone be confused and
believe they come from the same source.
Id. at 15.
The Examining Attorney responds that the third-party use evidence of relatedness
“establishes that Applicant’s eyewear and eyewear accessories and Registrant’s
cosmetics . . . are provided through the same trade channels and used by the same
classes of consumers in the same field of use.” 8 TTABVUE 11. She argues that “[i]n
the absence of limitations as to channels of trade or classes of purchasers in the goods
in the registration, the presumption is that the goods move in all trade channels
normal for such goods and are available to all potential classes of consumers for such
goods.” Id. (citations omitted).35
35 The Examining Attorney also argues that “the goods of the parties have no restrictions as
to nature, type, channels of trade, or classes of purchasers and are ‘presumed to travel in the
same channels of trade to the same class of purchasers.’” 8 TTABVUE 11 (quoting Viterra,
671 F.3d at 1362). The cited presumption applies, however, only where the goods are
identical, which is not the case here.

Serial No. 79389236
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The record evidence regarding relatedness discussed above does not establish all
of the normal channels of trade for goods identified as “cosmetics” and “sunglasses,”
including those claimed by Applicant, but it does show that there is at least one
overlapping channel of trade for those goods, the online stores of sellers of fashion
brands. Cosmetics and sunglasses are offered to the same consumers through these
overlapping channels of trade, and the third DuPont factor supports a conclusion that
confusion is likely.
C. Summary
The key first two DuPont factors, and the third factor, all support a conclusion
that confusion is likely. The marks are similar in appearance, and identical in sound
and meaning, and the record shows that cosmetics and sunglasses commonly
emanate from the same source under the same mark and that the goods are marketed
through at least one overlapping channel of trade to the same classes of consumers.
We conclude that a consumer with a general rather than specific recollection of the
cited mark used for cosmetics who separately encounters Applicant’s mark used for
sunglasses is likely to believe mistakenly that the goods have a common source.
Decision: The refusal to register is affirmed. The application will proceed to
publication for opposition with respect to the Class 5 goods only.