Jakks Pacific, Inc.

Trademark Trial and Appeal Board

Mar 14, 2012

No. 77404047 (T.T.A.B. Mar. 14, 2012)

Mailed:
March 14, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jakks Pacific, Inc.
________

Serial No. 77404047
_______

Larry Miller of Feder Kaszovitz LLP for Jakks Pacific, Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Zervas and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Jakks Pacific, Inc. seeks registration on the Principal
Register of the mark BIONICAM (in standard character format)
for goods identified in the application, as amended, as
follows:
magnifying glasses, cameras, video cameras
and microscopes; video output machines for
use with microscopes; video output machines
for use with cameras; video output machines
for use with video cameras; batteries in
International Class 9; and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77404047
2
toy magnifying glasses, toy microscopes, toy
cameras, toy video cameras; electronic
learning toys in International Class 28.1
The Trademark Examining Attorney refused registration
for the goods in International Class 9 only on the ground
that applicant failed to provide a specimen that shows use
of the mark in commerce as a trademark for the goods
identified in this class under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1127.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
In a combined (or multiple-class) application, there
must be one specimen of the mark for each class. 15 U.S.C.
§ 1051(a)(1); 37 C.F.R. §§ 2.56(a) and 2.86(b). While in
some cases a single specimen might well support registration
in multiple classes, the Trademark Examining Attorney argues
that is not the case herein. We agree and, hence, the
majority of this panel affirms the refusal to register.
Prosecution History:
In the initial Office action of May 27, 2008, the
Trademark Examining Attorney asked applicant whether the
term BIONICAM has any significance in the trade. Applicant,

1 Application Serial No. 77404047 was filed on February 22,
2008, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. On November 24, 2009, applicant
filed a Statement of Use (SOU) alleging use anywhere and use in
commerce since at least as early as July 31, 2008.
Serial No. 77404047
3
in its response of November 25, 2008, replied that “The
word BIONICAM is a made-up word; the good itself is a camera
that is used in conjunction with the EYECLOPS brand toy
which applicant has referred to as a ‘bionic eye,’ but which
functions as a kind of microscope.”
The single specimen of record accompanying the
Statement of Use (SOU), submitted on November 24, 2009,
included the following piece of product packaging:

In the Office action of February 2, 2010, the Trademark
Examining Attorney took the position that this specimen
shows use of the mark for applicant’s Class 28 goods, but
fails to support registration of the mark in connection with
the goods identified in International Class 9. He cited,
inter alia, to information from www.amazon.com:
Product Features
• The Bionic Cam … is the next generation of the award winning
Bionic Eye, with a full color LCD screen, Multiple lenses and
battery pack. Everyone can take EyeClops on the go [to]
explore the wor[l]d around you indoor[s] and outdoors
• Use the LCD screen as a viewfinder for specimens, zoom in with
one of three powerful new magnifications (100x, 200x and an
Serial No. 77404047
4
eye-popping 400x) and take digital pictures and video of your
amazing discoveries, and send around the world via the internet.
• Save and share your findings with the built-in flash drive and
removable USB key – view on any standard television and
upload your files to your PC to email and send to friends [-] USB
key included
• Portable and recordable, the EyeClops BioniCam is the ultimate
Bionic Eye
• Winner of Many of this year[']s Toy Awards
Product Description
Amazon.com Review
The EyeClops BioniCam Video Microscope from JAKKS Pacific opens
up a world of microscopic fun for kids to explore. This bionic eye
makes it easy to take digital pictures and capture video that
documents new discoveries. Designed to keep inquisitive children
aged eight and up entertained and interested in the world around
them, the BioniCam is also engaging enough to capture [sic] adults.

An adult user of this product wrote the following
review further down on this same website:
If they would have had this thing when I was a kid (a few decades
back), I would have gone crazy with it. It is a TOY, not a real
scientific instrument, but it’s the kind of toy that can good and truly
make a kid fall in love with science. …

In its reply of August 2, 2010, applicant took issue
with the refusal, arguing as follows:
The submitted specimen of use does show the use of the
mark with respect to the goods in class 9. …
Applicant avers that the goods in question function as
magnifying glasses, cameras, video cameras, etc., and
that all function with video output devices of the sort
falling under class 9 … (class heading of class 9
includes “amusement apparatus adapted for use with an
external display screen or monitor”); See attachments
hereto. Furthermore, the BIONICAM is a multipurpose
composite object so that it may be classified in both
classes 9 and 28. Applicant also avers that the PTO
has allowed its EYECLOPS mark to register in class 9
and 28 for similar goods in class 9 (Magnifying glasses
Serial No. 77404047
5
and microscopes; video output machines for use with
microscopes); the refusal of the instant specimen of
use is inconsistent with the prior PTO allowance.

Attachments included article excerpts such as follows:
Kids can zoom in on scientific fun with the EyeClops BioniCam, an
updated take on last year’s best-selling EyeClops BionicEye
“microscope.” The BioniCam features an adjustable multizoom lens
with 100x, 200x and 400 x magnification, a color display screen, a
built-in camera and a USB key that lets kids transfer pictures and
videos of specimens to a computer. Like the original model from
Jakks Pacific, it also connects to a TV. For kids 6 and up, it will go
on sale in the fall for $80. 2

EyeClops BioniCam (Jakks Pacific, $79.99, ages 6 up)
You have to love a toy that sneaks in a science lesson. We loved the
BioniCam that allows you to move around and capture images at
100x, 200x or 400x magnification. You can record the images and
view them on the color LCD screen, so no fussy slides, eyedroppers
or one-eye focusing problems we’ve encountered with traditional
microscopes. Then you can take images on the enclosed [flash
drive] to your television or computer and look at them on a larger
screen and print or e-mail your findings. Holding the focus steady
was a bit tricky for the two 6-year-olds who tried it out, but they
mastered it eventually. The three 10-year-olds had no problem
coming up with nifty images of their hair, pencil erasers, leaves and
the god’s ear. The gross-out factor of a dirty toenail magnified 100
times was high (and we mean that as a compliment). Your young
scientist will enjoy this one. 3

EyeClops BioniCam (Jakks Pacific Inc.), $79.99, ages 8 and up.
This “BioniCam” is much more than a microscope – Parents’ Choice
calls it an “eyeball on a stick.” It lets kids zoom in on their own
sweat, an ant, a penny, and other images. Photos taken with the
camera can also be uploaded to a computer for even closer
inspection.

PhotoGallery – Top Ten Science Toys for Kids:
Perfume Science
EyeClops BioniCam … 4

2 Having a citation to www.jakks.com, but drawn from a Gannett
News Service release of February 29, 2008, written by Deborah
Porterfield.
3 The Monterey County Herald (California), December 12, 2008,
by Sherry Robinson of the St. Petersburg Times (Florida).
4 U.S. News & World Report, December 9, 2008.
Serial No. 77404047
6
5

SCIENTIFIC VISION
* EyeClops BioniCam (Jakks Pacific, $79.99): The EyeClops
BionicEye, a microscope that plugs into most TVs, was one of last
year’s hottest holiday toys. It’s trying to top itself with the
EyeClops BioniCam, a portable version with three levels of
magnification, an LCD screen on the toy itself, and a built-in digital
camera and flash drive allowing children to snap pictures and
video of magnifications. Arriving in August; recommended for
ages 8 and older. 6

Despite this showing, in his Final Office action of
August 24, 2010, the Trademark Examining Attorney maintained
the refusal:
In this case, the specimen shows use of the
mark for a toy, not the non-toy items listed
in the identification. The previously
attached internet evidence from the website
address listed on the specimen shows that the
goods are toys. The previously attached
additional internet evidence from amazon.com
shows that the goods are intended to be a toy
for use by children and that the product is
the winner of toy awards. Therefore, the
specimen is not acceptable for the non-toy
goods in International Class 9.

5 http://www.toysrus.com. The continuing page from the
Toys R Us website highlights features such as the fact that it
captures detailed scenery, has it own digital video screen and
has “incredible connectivity” to a TV or PC.
6 The Atlanta Journal-Constitution, July 15, 2008, article by
Jon Waterhouse.
Serial No. 77404047
7
In applicant’s request for reconsideration of February
24, 2011, applicant attached additional copies of screen
prints from Amazon.com, showing more recent promotional
materials for applicant’s “EyeClops Portable Recordable
BioniCam Video Microscope that Plugs to Your TV with
Removable USB Drive, LCD Video Screen, Digital Control
Panel, EZ Grip Texture and Multi-Zoom Adjustment
Magnification (100x, 200x and 400x)”:

Product Features
• With a built in video screen and battery pack, you can take the
BioniCam video microscope on the go. Explore you[r] world like
never before!
• Capture images and video of your amazing discoveries with the
built-in digital camera. Then save to your PC with the BioniCam
USB Drive. Email friends and post on your own blog or website!
• The powerful, new Multi-Zoom feature provides a bigger, eye
popping peek at the world around you! Now examine objects in
100x, 200x and 400x eye-popping magnifications!
• Require[s] 5 "AA" batteries (Not included)
• For age 8 and up
Product Description
The all new EyeClops BioniCamTM Video Microscope is the next
generation of EyeClops® and boasts three exciting new features.
First, with a simple flip of a switch, kids can adjust the new multi-
Serial No. 77404047
8
zoom lens for an eye-popping peek at the world in 100x, 200x or
400x magnification. With BioniCam's new portability feature, kids
can now take EyeClops on-the-go. A color LCD screen and clip-on
battery pack allows kids to view amazing discoveries right on the
hand-held EyeClops unit! And finally, the built-in digital camera and
flash drive empowers kids to capture images and video of specimens
and, with the included USB key, upload them to a computer to be
printed, emailed, posted and shared. The EyeClops BioniCam plugs
into the A/V jacks of any standard television, allowing young
explorers to see their discoveries right on their TV. Portable and
recordable, the EyeClops BioniCam has it all!

In his denial of applicant’s request for
reconsideration of March 15, 2011, the Trademark Examining
Attorney again contended that:
The specimen [accompanied by declaration]
submitted with the request for
reconsideration shows use of the mark for a
toy microscope that is specifically used as a
toy and is marketed to children; the specimen
itself is from the toy section of AMAZON.COM
and the goods description shows that the
goods are toys for children “ … age 8 and
up.”
Analysis:
This appeal involves the intersection of two related
concerns – the practices of the United States Patent and
Trademark Office’s Trademark Examining Operation designed to
ensure accurate identifications of goods as well as the
process of correctly classifying goods in the International
Classification system. We have very little precedent in the
area of intersection presented by this case, inasmuch as
these types of concerns are most often resolved during
ex parte examination.
Serial No. 77404047
9
Identification of Goods
Prior to a substantive examination, and certainly
before being able to determine the proper classification for
goods, one needs to settle on the correct identification of
the involved goods.7 When terms are used in the
identification of goods within a trademark application, the
common meaning of the words, phrases, names and other
terminology (as generally understood by the average English-
speaking consumer) determines the nature and scope of the
goods. See TMEP § 1402.01(a).
Over the past two dozen years since the passage of the
Trademark Law Revision Act of 1988, we have entertained
ex parte appeals on identifications of goods where the issue
is whether an applicant’s proposed amendment to an
identification of goods exceeds the limits of the earlier
established identification of goods. E.g., In re Swen Sonic
Corp., 21 USPQ2d 1794 (TTAB 1991). However, for much longer
than that, the prototypical identification of goods issue
coming before his Board has involved the case where the
Trademark Examining Attorney alleges that the proffered

7 Because this case involves goods, we will restrict our focus
to goods generally rather than using the phraseology “goods and
services” throughout. In addition to simplifying the verbiage,
this tack also makes sense inasmuch as the specimen issues that
come to this Board in service mark appeals often have
significantly different nuances unique to demonstrating the
promotion or advertising of a service.

Serial No. 77404047
10
language is unacceptable because of indefiniteness or
ambiguity in the wording, requiring a more specific
identification of goods. For example, is the term “slot
machines” definite? Does an applicant need to clarify all
the possible uses of a “gear bag” it has placed in
International Class 18? Is the term “chronographs”
ambiguous for registration purposes inasmuch as it would
include both watches (International Class 14) and time
recording devices (International Class 9)? See, e.g., In re
Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
However, ambiguity of the wording in applicant’s
identification of goods contained in International Class 9
is not the nature of the issue before us. Rather, there are
times when a definite identification of goods is
unacceptable if it results in an improper classification of
goods. In re Omega, 83 USPQ2d at 1544. For example, an
identification of goods is unacceptable if it is
inconsistent with the goods as indicated by the specimens or
any other part of the record. TMEP § 1402.05.
The words crafted by applicant in International Class 9
represent a definite identification of goods in that class.
However, the question raised by the Trademark Examining
Attorney is whether this otherwise definite identification
is acceptable. Specifically, based on the specimens and
Serial No. 77404047
11
other parts of this record, is applicant marketing goods
that are appropriate for International Class 9 under the
Nice Classification system?8
Determining International Classification
Once the identification of goods is definite, the next
logical challenge is classification. In some cases, such as
In re Omega, 83 USPQ2d at 1544, and in the case at bar,
these concerns are inextricably tied together.
The Office classification is based upon the Nice
Agreement Concerning the International Classification of
Goods and Services, to which the United States is a party.
Each of the countries party to the Nice Agreement is obliged
to apply the Nice Classification in connection with the
registration of marks.9 Consistent with this system, the
United States Patent and Trademark Office has the discretion
to require the degree of particularity deemed necessary to
clearly identify the goods covered by the mark. Id.; TMEP

8 A related question that the Trademark Examining Attorney
does not explore at length is whether applicant’s mark identifies
numerous products or a single, unitary product having numerous
features. Query, for example, does applicant, under the applied-
for mark, actually sell a “camera” as a separate item, or is this
simply a reference to the image recordation function of the toy
microscope?
9 The most recent guidance is contained in “International
Classification of Goods and Services for the Purposes of the
Registration of Marks” (10th ed. 2011), published by the World
Intellectual Property Organization (“WIPO”).
http://www.wipo.int/classifications/en/index.html

Serial No. 77404047
12
§ 1402.01. Consistent with this structure, matters relating
to identification/classification are governed by the U.S.
Acceptable Identification of Goods and Services Manual (I.D.
Manual), available on the United States Patent and Trademark
Office website.10 The classification system has been set up
for the convenience of trademark offices worldwide, and
hopefully serves well the interest of merchants and
manufacturers who own marks in the United States, as well as
their trademark counsel.11
However arbitrary the classification system may seem at
times to some, the U.S. Patent and Trademark Office
Acceptable Identification of Goods and Services Manual
controls in all U.S. applications. For the Office, for
applicants and for panels of this Board, the most vexing
classification issues often involve defining the boundaries
between two or more classes when faced with goods that seem
perfectly to straddle the lines.
The magnitude of the challenge here is apparent: the
classification system forces trademark owners to place each

10 http://tess2.uspto.gov/netahtml/tidm.html
11 In the United States, a registrant’s rights are determined
by the wording contained in the identification of goods. By
contrast, in countries that permit an applicant to include “all
the goods” within a particular class, the classification system
is more critical in determining the trademark owner’s rights.
See Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d
1771 (Fed. Cir. 1993).

Serial No. 77404047
13
commercialized product or service for which registration of
a mark is sought into one of forty-five distinct classes.
The classification of items is determined first and foremost
by the Nice Classification System, through its panel of
experts who are delegates from the member countries.
Nonetheless, within the United States Patent and Trademark
Office, the Trademark Examining Operations rely upon the
continuing guidance provided by the professionals from the
Office of the Administrator for Trademark Identification,
Classification and Practice.12
As noted above, in cases such as In re Omega, 83 USPQ2d
at 1544, and in the case at bar, these concerns are
inextricably tied together. Turning then to the specific
international classes involved in this case, Office manuals
and guidance from the Nice Classification system reveal that
products identified as “toys” are placed in International
Class 28. This class, covering thousands of specific
playthings, includes for our purposes, inter alia, apparatus
for games and amusement, including, for example, hand held
game apparatus with liquid crystal displays.

12 We presume that the Trademark Examining Attorney followed
the guidance of TMEP § 1402.01(e) to consult with the Office of
the Administrator in connection with this final refusal and
appeal.

Serial No. 77404047
14
By contrast, International Class 9 includes,
inter alia, microscopes and their parts, computer monitors
and other peripheral devices, scientific apparatus and
instruments, digital recording media, and apparatus for
recording, transmitting or reproducing images. Although
historically, this class included all types of apparatus for
video game consoles adapted for use with an external display
screen or monitor, we note that in the “Tenth Edition” of
the Nice Agreement Concerning the International
Classification of Goods and Services, the “Explanatory
Notes” on International Class 9 specifically excludes from
class 9 “amusement and game apparatus adapted for use with
an external display screen or monitor” – instead placing
them in International Class 28. Class 9 continues to
include game controllers and game accessories therefor sold
separately.13 Thus, to answer one of applicant’s
contentions, these accessories (sold with the amusement

13 As a general rule, under the Nice Classification system, a
finished product is classified according to its primary function
or purpose. By contrast, the same finished product, if intended
to form part of another product (including when “sold as a unit”)
will be classified in the same class as that primary product.
This means that batteries, battery chargers, power supplies,
transformers, cables, or even pre-made wraps and skins for hand
held units for playing video games, if sold individually, will be
in International Class 9. On the other hand, if sold as a unit
with a Class 28 apparatus, these same accessories will be
included in International Class 28.

Serial No. 77404047
15
device, or separately) would appear to be goods that
straddle the boundaries of these two classes.
In support of classification of its goods in
International Class 9, applicant also points to the Office’s
placement in class 9 of “video output machine for use with
cameras (and a separate monitor)” as well as “batteries.”
Applicant’s Brief at 3.
However, we agree with the Trademark Examining Attorney
that in arguing against the position the Office has taken on
this classification issue, applicant has conflated several
terms used in its identification of goods that individually
may point toward International Class 9 goods, but on
balance, the words do not accurately describe applicant’s
goods. All the evidence of record, whether submitted by
applicant or by the Trademark Examining Attorney, describes
the involved goods as a toy video microscope. Yet, in its
response to the final refusal and in its appeal brief:
[a]pplicant avers that the goods in question
… function with video output devices of the
sort falling under class 9.

Apparently this toy video microscope does contain a camera
(i.e., has a recording function) and can be connected by a
cable to a television monitor to display the images in real
time. However, from this fact, it does not follow logically
that applicant’s toy video microscope (International Class
Serial No. 77404047
16
28) must be classified along with these larger video output
machines (International Class 9). Classification of new
types of products are generally grouped using analogies to
items in the I.D. Manual. For a long time, International
Class 28 has been the home for video input devices whether
the input is described as originating with a “video game
consoles, controllers and software,” “video game player
machines for use with television or computer,” “digital
video cameras,” etc. In fact, as noted above, under the
“Tenth Edition” of the Nice Agreement, it is absolutely
clear that whether one analogizes applicant’s product to
“amusement and game apparatus adapted for use with an
external display screen or monitor” (such as X-BOX, Wii, or
PlayStation) or “hand held units for playing video games other
than those adapted for use with an external display screen
or monitor” (such as Nintendo Game Boy or Sega Game Gear), those
ubiquitous hand-held game apparatus having small built-in
displays -- all such electronic gaming devices and their
accessories sold as a unit are classified in International
Class 28.14 Finally, while this toy requires batteries for

14 While our dissenting colleague (in footnote 34) appears to
take issue with this clarification of where the lines should be
drawn between two particular International Classes, we should
hasten to add that we do not view applicant’s strenuous arguments
for reversal based upon this rather tangential point to be at the
heart of our disagreement with our dissenting colleague.
Serial No. 77404047
17
its operations, applicant does not argue that it markets
batteries separately under the BIONICAM mark.15
Accordingly, in reviewing the prosecution of this
application, we find no fault with the position of the
Office in carrying out what is largely a ministerial
function involving the correct classification of goods.
Analysis
We begin our analysis by acknowledging that, the same
item may be identified in more than one way, such that it
could be registered in two or more classes. Perhaps the
closest Board precedent actually involves the reversal of an
examiner’s refusal to register more than forty years ago in
a case captioned In re International Salt Company, 166 USPQ
215 (TTAB 1970). Registration was refused, according to the
Office, because the specimen showed use of the mark for salt
for food purposes rather than for salt to be used in
chemical industries. The packages submitted as specimens
were 100-pound bags stamped with the mark TX-10 and the word
“Salt.” In short, this appears to be a case where
factually, 100-pound bags of salt are substantially the same
product without regard to later uses and/or channels of

15 Moreover, according to the specimens, batteries are not
included with the sale of this item.
Serial No. 77404047
18
trade, and a product such as salt may fall into a number of
different classes, depending upon its further uses.
The Office also permits applicants a certain amount of
latitude in identifying and classifying their goods (and
services), provided, of course that the “specimens filed in
any particular class should reflect use of the mark in
connection with the product for the use set forth in the
application.” Id. at 216.
The rule of the International Salt case also
contemplates situations where the specimens may be “of a
nature or contain language which would, on their face,
restrict the product to but a single purpose or use.” Id.
at 216. For example, if the hangtag says XYZ Earmuffs, and the
involved goods are identified as “earrings,” it is
appropriate for the Trademark Examining Attorney to inquire
about the seeming contradiction before approving the
application in International Class 14.16 A basic principle
lies at the very heart of the trademark registration system
in the United States: the involved applicant must be
manufacturing or marketing goods, or own a foreign or
international registration covering goods, that are
accurately identified and properly classified for each class
in which registration is sought.

16 TMEP § 1401.03(a).
Serial No. 77404047
19
In a combined (or multiple-class) application, the rule
says that there must be one specimen of the mark for each
class. 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.56(a) and
2.86(b). However, applicant is also correct in noting that
in some combined-class applications, Office practice
anticipates that a single type of specimen might well
support use in connection with goods placed in more than one
international class. Agreeing that a single type of
specimen can support multiple classes, the Trademark
Examining Attorney contends that this is not such a case,
and we agree.
In the case of a finished product that functions as a
multipurpose object (e.g., a clock-radio combination), how
the applicant describes it determines the class. For
example, the same specimen could support “radios
incorporating clocks” in Class 9 or “clocks incorporating
radios” in Class 14.17 Or it may be a case where industry
practice involves “specimens of general utility” like
identical hangtags, where a house mark may be used on

17 Committee of Experts of the Nice Union and set forth in the
International Classification of Goods and Services for the
Purposes of the Registration of Marks, (10th ed. 2011), “General
Remarks,” Goods, remark (b); also see TMEP §§ 1401.02(a), 1401.05
and 1401.07.
Serial No. 77404047
20
clothing, as well as on related accessories placed in
various non-clothing classes.18
In the present case, we appreciate the fact that
particularly for youngsters, a learning tool like this toy
microscope could represent a wonderful introduction to an
exciting world of scientific inquiry, and that a youngster
might well view applicant’s product as a “real” microscope.
However, it is also clear that microscopes as scientific
instruments are classified in Class 9, while toy microscopes
are classified in International Class 28.
We agree with applicant that deference should be given
to the language set forth by the applicant in its original
application.19 On the other hand, in an application under
§ 1(b), for example, the applicant must file an acceptable
specimen for each class with its SOU under 15 U.S.C.
§ 1051(d). In the event that the Trademark Examining
Attorney raises questions about whether the file contains
appropriate specimens for each class, applicant’s successful
explanation will be critical to overcoming such a refusal in
any application containing allegations of use in commerce.
In this case, we agree with the Trademark Examining
Attorney that the evidence in this record, including several

18 TMEP § 1401.07.
19 TMEP § 1401.02(a).

Serial No. 77404047
21
images submitted by applicant that serve as valid specimens,
fails to show the applied-for mark used by applicant in
connection with “microscopes” qua scientific instruments in
Class 9. Rather, the specimens of record demonstrate use of
the BIONICAM mark in connection with a mere toy. That is,
the specimens of record do not show applicant’s use of its
mark in association with the sale of any of the goods
specified in International Class 9 in the application.
Trademark Examining Attorney Pino is not arbitrarily
shoehorning this video microscope into only one class – he
is following guidance from the United States Patent and
Trademark Office and an international classification treaty
to which the United States is a signatory.
Applicant takes the position that because the toy video
microscope is capable of four hundred power magnification
(400x zoom), the microscope is arguably not a toy. In
response, the Trademark Examining Attorney notes that the
involved product is a testament to “how far toy
manufacturers have come in the use of cheap and efficient
modern technology,” but that this “single feature does not
transform the toy video microscope” into a scientific
apparatus or instrument. Nowhere in this record does
applicant argue that it is involved in the field of
scientific apparatus and instruments (i.e., marketing
Serial No. 77404047
22
primarily to universities, hospitals, laboratories, etc.).
In fact, everything in this record supports the conclusion
that no scientist would ever use applicant’s toy video
microscope for scientific research. Among other
testimonials from users of the device, one review notes that
despite the exciting possibilities for scientific
exploration by youngsters, “It is a TOY, not a real
scientific instrument.” (EMPHASIS in original). In another
review, six-year-olds reportedly used the device out of the
box with minimal supervision.

Other reviews in the record point out severe
limitations of the device as to focusing, dim lighting,
difficulties in using the 400x magnification, etc. Of
course, even if current challenges related to lighting,
focusing and extreme magnification were to be resolved, as
long as the trade dress on the specimens of record
demonstrates that this item is being marketed to young
children, it remains a toy microscope. If the Office were
Serial No. 77404047
23
to water down the essential concept of a Class 9
“microscope” as a scientific instrument, as urged by our
dissenting colleague, by ignoring the context of the class
and referring only to the basic dictionary definition of an
item having remarkable powers of magnification, then the
word “microscope” retains no meaning whatsoever when used in
an identification of goods in International Class 9. The
broad, common definitions drawn from several dictionary
entries certainly do not trump the realities of the actual
marketplace combined with decades of experience in
deciphering the tricky boundaries between two International
Classes under the Nice Agreement. Rather, we find that
merely because certain toys may contain technological
capabilities unheard of a decade earlier, a merchant or
manufacturer whose market involves high-tech learning toys
for young children is still not marketing scientific
apparatus or instruments.
Another useful analogy (i.e., in addition to handheld
gaming devices, supra) comes to mind. Under this analogue,
the manufacturer of the Easy-Bake toy oven would not be
entitled to a registration for “ovens” in International
Class 11 for this product – a toy oven is not an oven for
International Class 11 purposes, even if it may be capable
of baking a cupcake. In this hypothetical, should the
Serial No. 77404047
24
specimen being challenged reveal a toy oven, prior to
securing a registration for ovens in Class 11, it would not
be unreasonable for the Trademark Examining Attorney to ask
that applicant (e.g., the manufacturer of the toy oven) to
demonstrate with a specimen and/or other evidence that it
also sells full-sized appliances.
In thousands of ex parte examinations every week,
Trademark Examining Attorneys assist applicants in correctly
classifying their goods (and services). This system has
proven to be fairly efficient in protecting the interests of
new registrants as well as the interests of applicants who
file later. A much less efficient method would be to force
unnecessary ex parte appeals or inter partes litigation
(e.g., under Section 18) later to correct a classification
that is misleading as to the applicant’s actual goods.
Contrary to applicant’s contention, the distinctions we
are drawing herein are not based on “the subjective view of
the examiner” but rather reflect a factual determination
based on “the nature of the goods themselves,” as shown by
the specimens and other evidence of record. Specifically,
we find that Trademark Examining Attorney Pino factually and
correctly determined the true nature of applicant’s goods.
Applicant points out that in its earlier application to
register its EyeClops mark, applicant relied on the same
Serial No. 77404047
25
specimen that accompanied applicant’s initial SOU in this
application.20 That Trademark Examining Attorney found
nothing in the specimen or elsewhere in the record to
suggest that the mark may not be used in connection with
scientific instruments in International Class 9, and so made
no further inquiries or requirements. In the prosecution of
this application, the issue was raised when applicant
correctly characterized the involved product as a “toy,” by
seeking registration in Class 28, in addition to Class 9,
but relying on the same specimen for each class. We find no
fault with the resulting inquiry by the Trademark Examining
Attorney herein. While the Trademark Examining Operation
attempts to achieve maximum consistency, we are certainly
not persuaded to reverse this Trademark Examining Attorney
on this record merely because another Trademark Examining
Attorney, reviewing another record, did not make the same
inquiry. In the event that applicant, in another
application, was awarded protection in International Class 9
to which it may not have been entitled, this is a situation
that need not be repeated here. TMEP §§ 1401.02 and
1401.10.

20 The EYECLOPS application matured into Registration No.
3415269.

Serial No. 77404047
26
In the abstract, as discussed above, it is true that
the same mark can be used in connection with a variety of
different goods. However, in the specific facts of the case
at bar, viewing the matter within the four corners of these
specimens and other information contained elsewhere in the
record, we agree with the Trademark Examining Attorney that
this particular mark is not associated with any goods
applicant has listed in International Class 9.
The “customer focus” of the Trademark Examining
Operation means that the organization defers where
appropriate to applicants’ identifications of goods (and
recitations of services) when trademark owners are seeking
federal statutory protection for their intellectual property
interests. However, under the facts of the case at bar, the
majority herein supports the ministerial function of the
Office of the Administrator for Trademark Identification,
Classification and Practice by refusing to adopt the
position of applicant and of our dissenting colleague:
namely, encouraging an “eyeball on a stick” to masquerade as
an actual scientific instrument in International Class 9.
Decision: The refusal to register is affirmed on the
ground that the specimens do not show use of the mark in
connection with the goods listed in International Class 9.
Serial No. 77404047
27
The application will proceed to registration with the goods
listed in International Class 28 only.
- o O o –
Mermelstein, Administrative Trademark Judge, dissenting:
Because I disagree with the majority that the refusal
to register in this case is appropriate, I respectfully
dissent.
I. Relevant Facts
Applicant’s identified goods include “microscopes” in
International Class 9, and “toy microscopes” in
International Class 28.21 I note that applicant’s
identification of goods in both classes has been accepted by
the examining attorney, and no issue has been raised as to
the adequacy of applicant’s specimen for its International
Class 28 goods. The only issue before us is the adequacy of
either of applicant’s specimens in support of applicant’s
International Class 9 goods.
At the heart of this case is the fact that the goods
upon which applicant relies to support its application in

21 Applicant identifies other goods in Class 9. However, because
I would find that applicant’s specimen is adequate to demonstrate
use of the mark on microscopes, it is unnecessary to determine
whether it would be acceptable evidence of use with respect to
any of applicant’s other Class 9 goods. See TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 904.01 (8th ed. 2011) (only one specimen
per class required).
Serial No. 77404047
28
both Class 9 (microscopes) and in Class 28 (toy microscopes)
are apparently the same product. Upon filing its statement
of use, applicant initially submitted the same specimen as
evidence of its use of the mark in both classes:

This specimen appears to be the image of a panel from a
box (i.e., packaging) for applicant’s goods. The mark –
BIONICAM – appears on the specimen, below which are the
words “video microscope.” Notwithstanding that the specimen
itself actually describes applicant’s product as a “video
microscope,” the examining attorney rejected it, relying on
extrinsic evidence to argue that “the specimen shows use of
the mark for a toy, not the non-toy items listed in the
identification.” Office Action, Feb. 2, 2010. Following
the refusal, applicant submitted a substitute specimen for
Class 9 – an online advertisement depicting the mark and the
goods – although it was rejected for the same reason.22

22 Because I would find the original specimen acceptable, I do not
discuss applicant’s substitute specimen, although I believe that
it would also be acceptable.
Serial No. 77404047
29
The examining attorney’s position is that applicant’s
specimens23 are inadequate to show use of the mark on the
identified Class 9 goods, see Ex. Att. Br. at 2, and I agree
that is the only issue properly before us. In my opinion,
applicant’s specimens are adequate evidence of its use and
none of the other evidence of record is sufficient to reach
a different conclusion.
II. Applicable Law
In some cases an applicant may seek registration in
more than one International Class on the basis of its use of
the mark on a single product. Of course, the identification
of goods in each class must be appropriate, and the specimen
or specimens must be acceptable as evidence of use of the
mark on the goods as identified in each class. For example,
in In re Int’l Salt Co., 166 USPQ 215 (TTAB 1970), applicant
filed two applications, one for “salt for food purposes” and
one for “salt for use in chemical industries,” using

23 The astute observer will note that there is little or nothing
in the file explaining why applicant’s original or substitute
specimen is itself lacking. Rather, the examining attorney’s
case is built largely on the basis of other evidence (extrinsic
to the specimens) about applicant’s BIONICAM product and the fact
that applicant also applied for registration in Class 28 based on
its sale of the same product. In other words, applicant’s
statement of use has been rejected not because of its specimens,
but in spite of them. Nonetheless, because I believe that the
examining attorney’s evidence does not demonstrate that
applicant’s Class 9 specimens are inadequate, I assume the
propriety of this evidence and discuss it below.

Serial No. 77404047
30
identical specimens. The examiner in the second (chemical)
application refused registration, arguing that the specimen
only showed use of the mark on salt for food purposes. We
explained:
There can be no question but that a product such
as salt may be used both for food purposes and for
use in chemical industries. It is settled,
moreover, that the owner of a trademark has a
right to register the trademark for a particular
product in a plurality of classes covering the
different purposes or uses of the article that
happen to fall within two or more classification
classes instead of the usual single class. See
Mead Johnson Co. v. Watson, 112 USPQ 284 (D.D.C.
1957); aff’d 117 USPQ 13 (D.C. Cir. 1958). The
only possible restriction on this right is that
the specimens filed in any particular class should
reflect use of the mark in connection with the
product for the use set forth in the application
or, conversely, the specimens should not be of a
nature or contain language which would, on their
face, restrict the product to but a single purpose
or use. In those instances where the specimens
are of a general utility, and there is nothing on
their surface or in the record to suggest that
they cannot possibly be used in connection with a
product when employed for the purpose enumerated,
the examiner is obligated to accept the statement
under oath in the application that the specimens
are so being used.

In the instant case, the specimens filed are
photographs of the packages in which the salt is
shipped; the packages are 100-pound bags; the only
product identification thereon is simply the word
“Salt” without any indication thereon as to any or
all intended uses of the product; and applicant,
under oath, has alleged that “The mark is used by
imprinting it on packages containing the
goods....”

Serial No. 77404047
31
Id. at 215-16 (citations revised). We reversed, finding
“that the examiner erred in refusing to accept the specimens
filed as evidence of use of the mark.” Id. at 216.
The TMEP likewise recognizes this principle:
1401.07 Classification and Plurality of Uses
A product or service that has a plurality of uses
or aspects is ordinarily classified in a single
class. Ex parte Schatz, 87 USPQ 374 (Comm’r Pats.
1950). However, if it can be shown that a product
or service has a plurality of uses or aspects so
that two or more classes apply, multiple
classification may be permissible. However,
identical language cannot be used as the
identification of goods in more than one class.
The identification must clearly indicate the basis
for multiple classification with language that is
appropriate for the respective classes. For
example, the USPTO will not accept the
identification “clock radios,” because it is
unclear what the goods are and in which class the
goods fall – Class 9 for radios or Class 14 for
clocks. However, the applicant may adopt either
or both of the following identifications – “radios
incorporating clocks” in Class 9 or “clocks
incorporating radios” in Class 14.

In an application under § 1 of the Trademark Act,
the specimen(s) should reflect acceptable use of
the mark for each of the specified classes or
should be of a general utility nature (e.g.,
labels for goods). In the case of general-utility
specimens, there must be nothing in the record
indicating only one use or aspect. See The
Procter & Gamble Co. v. Econ. Lab., Inc., 175 USPQ
505 (TTAB 1972), modified without opinion, 498
F.2d 1406, 181 USPQ 722 (CCPA 1974); In re Int’l
Salt Co., 166 USPQ 215 (TTAB 1970); Mead Johnson
Co. v. Watson, 112 USPQ 284 (D.D.C. 1957), aff’d
253 F.2d 862, 117 USPQ 13 (D.C. Cir. 1958).

Where a single product or service is classified in
more than one class, the applicant must file an
acceptable specimen for each class with an
Serial No. 77404047
32
application under §1(a) of the Act, or an
allegation of use (i.e., either an amendment to
allege use under 15 U.S.C. § 1051(c) or statement
of use under 15 U.S.C. § 1051(d)) in an
application under § 1(b). However, where a single
specimen supports multiple classes, the examining
attorney need not require multiple copies of the
specimen. See TMEP § 904.01.
...

904.01 Number of Specimens
One specimen for each class is required in an
application for registration under § 1(a) of the
Trademark Act, or in an allegation of use in an
application under § 1(b). If a single specimen
supports multiple classes, the applicant should
indicate which classes are supported by the
specimen. The examining attorney need not require
multiple copies of the specimen. ....

TMEP §§ 1401.07, 904.01 (citations revised).
III. Discussion
As noted, applicant’s identified Class 9 goods comprise
“microscopes.” But what is a microscope? There is nothing
in applicant’s identification of goods or in the record
which would indicate that its use of this term in its Class
9 identification has any meaning other than its ordinary
one. See TMEP § 1401.02 (“The identification should set
forth common names, using terminology that is generally
understood.”). Although more specific identifications are
also listed, the Office’s online U.S. Acceptable
Identification of Goods and Services Manual lists
Serial No. 77404047
33
“microscopes” without further qualification as an acceptable
identification of goods in International Class 9.24
As is relevant to the facts of this case, “microscope”
has been defined variously as follows:25
• “[A]n optical instrument having a magnifying lens
or a combination of lenses for inspecting objects
too small to be seen or too small to be seen
distinctly and in detail by the unaided eye.”
DICTIONARY.COM UNABRIDGED (Based on the RANDOM HOUSE
DICTIONARY (2012)).

• “Any of various instruments used to magnify small
objects that are difficult or impossible to
observe [by] the naked eye.” AMERICAN HERITAGE
SCIENCE DICTIONARY (2002) (online).

• “[A]n optical instrument consisting of a lens or
combination of lenses for making enlarged images
of minute objects.” MERRIAM-WEBSTER DICTIONARY (2012)
(online).

From applicant’s specimens and the other evidence of
record, we learn that applicant’s actual BIONICAM brand
device has optical lenses and can capture images of small
objects at 100x, 200x, and 400x power magnification for

24 For instance, the Manual lists biological microscopes, electron
microscopes, metallurgical microscopes, polarizing microscopes
and microscopes for operations.
25 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
While I am cognizant of the danger of slavish reliance on the
minutiae of dictionary definitions, I note that the referenced
definitions are both general and consistent, and they comport
with the general understanding of the term “microscope.” While
other types of microscopes exist (e.g., x-ray microscopes,
electron microscopes), I have not included such definitions, as
they have no relevance to these facts.
Serial No. 77404047
34
display on a built-in LED screen, on a television screen or
on a computer. In other words, it is an optical microscope
with a video display, and as such clearly meets the
definition of a “microscope.”26 This is supported by an
excerpt from the Amazon.com website advertising applicant’s
product and offering it for sale:
Amazon.com Review
The EyeClops BioniCam Video Microscope from JAKKS
Pacific opens up a world of microscopic fun for
kids to explore. This bionic eye makes it easy to
take digital pictures and capture video that
documents new discoveries. Designed to keep
inquisitive children aged eight and up entertained
and interested in the world around them, the
BioniCam is also engaging enough to captive [sic]
adults.[27]

...

What We Think
Fun Factor:
Durability:
...

The Good: Look at familiar objects in a whole new
way; review images on a TV or computer

The Bad: Learning to focus the eye takes practice

In a Nutshell: Unique video microscope provides
creepy close-ups and informal science lessons

At a Glance
Ages: 8 and older

26 My colleagues suggest that I am “urg[ing]” the USPTO to “water
down the essential concept of a Class 9 ‘microscope.’” Supra at
22-23. To the contrary, I urge only that the ordinary meaning of
that term be applied.
27 I assume the author meant that applicant’s product is engaging
enough to captivate adults. (There is no indication in the
record that applicant’s goods are particularly suited for use by
those confined to correctional facilities.)
Serial No. 77404047
35
Requires: 5 AA batteries; TV and/or computer for
full effect

Amazon.com, www.amazon.com (Jan. 26, 2010) (submitted by
examining attorney). Applicant submitted a similar entry
from the Toys-R-Us web page:
Product Description
The EyeClops BioniCam Video Microscope helps you
see the world around you like you've never seen it
before. Table salt looks like blocks of ice and
fine hair looks like twisted rope. Even your own
skin looks alien. Now imagine seeing all these
cool things and more with three times the
magnification. With magnification of 100x, 200x
and 400x, the powerful multi-zoom lens provides a
bigger, eye-popping look at the world around you.
A built-in digital video screen and battery pack
lets you take the BioniCam on the go to explore
your world like never before. Like the Bionic
Eye, the BioniCam plugs into any standard
television for cool magnifications on the big
screen. Capture images and videos of your amazing
discoveries with the built-in digital camera. You
can then save the video to your PC using the
included USB drive.

www.toysrus.com.
The examining attorney notes in his brief that “[t]he
specimens submitted by the applicant all describe the goods
as a video microscope.” Ex. Att. Br. at 3. Nonetheless,
the examining attorney contends that this is not sufficient,
as he alleges that applicant’s goods are in fact toy
microscopes. “Calling the toy video microscope by another
name does not transform the toy video microscope into
another good. In other words, the specimens and evidence
plainly show that the goods are toy video microscopes that
Serial No. 77404047
36
can only be classified in International Class 28.” Id. at
3-4.
I think the examining attorney is correct, up to a
point. For these purposes at least, I will presume (without
deciding) that applicant’s BIONICAM product is indeed a “toy
microscope,” at least in part. Applicant submitted an
acceptable identification of its goods as such in
International Class 28, and the examining attorney accepted
applicant’s specimen as evidence of use of the mark on “toy
microscopes” in that class.28 But I do not believe that
applicant’s identification of its goods in Class 28 as “toy
microscopes” necessarily limits our consideration of the
same goods (albeit described differently) in Class 9. In
order to determine whether applicant’s Class 9 specimen is
acceptable, I would consider whether the specimen evidences
use of the mark on at least one of the identified Class 9
goods. Whether the specimen is also acceptable evidence of
use with respect to applicant’s identified Class 28 goods is
not relevant.
Applicant’s identified Class 9 goods comprise
“microscopes,” and as already discussed, applicant’s actual
BIONICAM product clearly meets the definition of a

28 Thus the acceptability of applicant’s specimen as evidence of
its use of the mark on its identified International Class 28
goods is not before us.
Serial No. 77404047
37
“microscope.” Applicant’s original specimen clearly and
prominently describes the device as a “video microscope.”
While much of the remaining print on the specimen is very
small, under careful inspection (and magnification), I can
discern nothing that would indicate that the BIONICAM
product is not a microscope.29 Indeed, although the
examining attorney accepted the same specimen as to Class
28, there is nothing on the specimen which would indicate
that the BIONICAM is – as the examining attorney contends –
a toy microscope at all, let alone exclusively a toy
microscope.
Perhaps the examining attorney reasons that if goods
can be described as toy microscopes, then by necessity they
cannot also be described as (non-toy) microscopes. (“Do any
of the specimens show use of the mark for the goods in
International Class 9 when the specimens and evidence show
that the goods are award winning toys properly classified in
International Class 28...?” Ex. Att. Br. at 2; “Calling the
toy ... video microscope by another name does not transform
[it] into another good.” Id. at 3.) This position has a

29 The specimen does urge one to “Look for these other EyeClops
items,” above two pictures of boys using what appear to be other
products sold by applicant under different marks. There is no
question that applicant’s goods are primarily directed to young
people, although I can see no reason why that would banish such
goods from International Class 9.

Serial No. 77404047
38
certain logical attraction. But I am not at all sure that
for purposes of a trademark application, the BIONICAM video
microscope cannot accurately be described as both a
“microscope” and a “toy microscope,” much the same way as
the same substance can comprise salt for food use on the one
hand, and salt for non-food use on the other, see Int’l Salt
Co., 166 USPQ at 215, or the very same clock radio can be
identified and registered as either a radio incorporating a
clock or a clock incorporating a radio, or both. TMEP
§ 1401.07. USPTO practice clearly permits such a result in
some circumstances. The fact that some may use applicant’s
goods for sheer amusement (i.e., as a plaything) does not
necessarily preclude others from employing the same item as
a microscope. Thus, I do not consider International Class 9
and International Class 28 to be mutually exclusive in this
regard. Again, the issue before us is not whether
applicant’s goods can be identified as “toy microscopes” in
International Class 28, or whether applicant’s specimen
supports such use; the issue here is only whether
applicant’s specimen is acceptable as evidence of
applicant’s use of the mark on “microscopes” in Class 9.
In any event, the examining attorney, supported by
extrinsic evidence, argues that the only use to which
applicant actually puts its goods is as a toy. This
Serial No. 77404047
39
evidence, attached to the examining attorney’s February 2,
2010, Office action consists of one page from what seems to
be applicant’s own website and several pages (including the
evidence discussed earlier) from Amazon.com.
As noted by the majority, the word “toy” is used
several times in customer30 posts on Amazon.com reviewing or
commenting on applicant’s BIONICAM video microscope. But I
think it would be a mistake to make too much of such
references to applicant’s goods. When considered in
context, these posts do not suggest that applicant’s
BIONICAM video microscope is a toy – and only a toy. For
example:
• “If they would have had this thing when I was a
kid (a few decades back), I would have gone crazy
with it. It is a TOY, not a real scientific
instrument, but it's the kind of toy that can good
and truly make a kid fall in love with science.
It turns the world into a puzzle – What would that
thing look like if I were the size of an ant? It
offers the ability to capture and share images,

30 I assume for the sake of argument that the posters are
customers. But the truth is that we know little about them or
their familiarity with the goods from their very brief posts.
Further, I would not readily assume that they are knowledgeable
about the identification and classification of goods in trademark
applications.
To the extent the posters express their own characterization or
perception of applicant’s goods, it is unclear whether such
statements are either relevant or representative. While the
perception of a mark by potential or actual consumers is highly
relevant when considering likelihood of confusion, it is not
clear to me that consumer opinion about the goods necessarily
carries the same weight when the issue is the acceptability of
specimens of use or the identification and classification of
goods.

Serial No. 77404047
40
and compare them with each other. ... [F]or an 8
– to 14-year-old child, this is a portal into
interesting worlds, and a possible introduction to
science and nature that could result in a lifelong
appreciation of discovery. ...” Greg Peterson
(Minneapolis, MN).

• “This is a pretty cool toy. I’m 31 years old and
I purchased it for my gardening needs to diagnose
different mites and pests on them and it’s a
pretty handy and fun device.” Andrew J. Hermann
(emphasis added).

• “This is a great toy AND a useful tool for
recording close-up images of a variety of
objects.” “AUgie the Prospector” (emphasis
added).

• “This toy seems like a great idea, basically an
electronic microscope. However, it is difficult
to focus and the illuminating light is so dim that
it is unusable.” “crtee” (emphasis added).

• “This is a great toy for the whole family. Once
you get the focusing part down and taking a
picture at the same time, it is great. We also
bought some pre-made slides that are great to look
at as well. I have not used the video function
yet, but that should be pretty cool once we get
there. Great toy for Christmas.” Jason Berchek
(San Diego, CA).

• “Fun but can be hard to focus for kids. I need my
dad to help. The pictures look great on our big
tv. The weirdest thing to look at was arm hair.”
I am 8 years old. Unsigned.

• “We bought the bionicam for our son's 5th
birthday, thought he would absolutely LOVE it! He
does enjoy it and finds it fascinating to see what
some things look like magnified. “Sharra."

Serial No. 77404047
41
Although some of these posters indeed call applicant’s
product a “toy,”31 it is clear from the context that their
use of that word does not exclude use of applicant’s goods
as a scientific, technical, or educational tool, and that
applicant’s goods do in fact meet the definition of a
“microscope.” While some adult posters noted that they or
their children found the product to be entertaining, those
comments were balanced by others (sometimes by the same
poster) noting that the product was useful (e.g., for
identifying garden pests) or that it provided a means for
younger children to begin their exploration of science and
nature.
Notably, it is not clear that any of the material on
the Amazon.com or Toys-R-Us web pages constitutes
applicant’s own characterization or advertising of the
goods.32 Although the examining attorney submitted one page
from what appears to be applicant’s website, the only

31 One of the Amazon.com pages notes briefly that applicant’s
product is the “Winner of Many of this years [sic] Toy Awards.”
While this indicates that applicant’s product is considered a toy
(at least by some people or for some purposes), that comes as no
surprise. The issue here is not whether the product associated
with the specimen is a toy, but whether it is (or is also) a
microscope. The fact that applicant won toy awards sheds no
light on this question.
32 It is possible that applicant supplied the product descriptions
on both websites quoted earlier in this opinion, although there
is no evidence of this.

Serial No. 77404047
42
information on that page is supportive of applicant’s
position that the goods are, in fact, a “microscope”:
3 x THE POWER
With magnifications of 100x, 200x and 400x, the
powerful, new multi-zoom lens provides a bigger, eye
popping look at the world around you!

PORTABLE:
With a built-in digital video screen and battery
pack, you can take BioniCam video microscope on-the-
go – explore your world like never before! And like
the Bionic Eye, the [text does not continue]

http://eyeclops.com/ (Jan. 26, 2010).
As noted by the majority, in his first Office action
(i.e., prior to submission of applicant’s Statement of Use
and specimens), the examining attorney required that
applicant provide information about whether the mark has any
significance as applied to the goods or in the relevant
trade or industry. Applicant responded as follows:
Answer: Not really. The word BIONICAM is a made-
up word; the good itself is a camera that is used
in conjunction with the EYECLOPS brand toy which
applicant has referred to as a "bionic eye", but
which functions as a kind of microscope. It does
not have any other significance in the industry.

Response (Nov. 25, 2008).
Similar to the online customer posts, applicant’s brief
response to the examining attorney’s query points in two
directions. On the one hand, applicant says that the
BIONICAM product “is used in conjunction with the EYECLOPS
brand toy....” On the other, applicant describes the same
Serial No. 77404047
43
item as “a camera ... which functions as a kind of
microscope.” Again, applicant describes its product in
words suggesting that it is both a toy and a microscope.
Applicant’s response clearly does not indicate that the
BIONICAM product is exclusively a toy.33
Considering all of the evidence of record, it is clear
that applicant’s goods are primarily marketed for the use of
children, although some adults find them both entertaining
and useful. Further, while there is no evidence that the
goods are (or are likely to be) used for advanced education,
research, or diagnostic purposes, the goods are seen by some
as educational tools (albeit at a level appropriate for 8-
year-olds). As noted, customers in online posts reported
that both children and adults use the BIONICAM video
microscope to explore the realm of microscopy, including
adults who indicated use of it for the identification of
plant pests and for viewing and recording other small
objects.

33 While applicant’s response seems vague and ambiguous when
regarded in light of the question at hand, it should be noted
that the examining attorney asked only whether applicant’s mark
had any significance as applied to the goods or in the relevant
trade or industry. Applicant was not requested to provide
information about the nature of the goods. (The response was
apparently adequate as to the significance of the mark, as no
further mention of that issue appears in the file, and the mark
was approved for publication.)
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In fairness, it should be added that a number of
posters commented on what they perceived to be shortcomings
of applicant’s microscope, including difficulty in focusing,
limited display, and poor built-in illumination. But the
disappointment of some with the aspects of applicant’s video
microscope highlights the fact that the posters considered
the device as a microscope, and not simply as a toy. Even
if it could be said that applicant’s BIONICAM video
microscope is not a high-quality microscope, that does not
mean that it is not a microscope at all.34
As far as I am aware, International Class 9 is not an
exclusive club that may only be joined by microscopes used
by post-doctoral researchers in white lab coats, or ones
that cost a certain amount of money, are of a certain
quality, or are even used by anyone over eight years old.

34 The majority notes that “those ubiquitous hand-held game
apparatus having small built-in displays” are properly classified
in International Class 28, and that by “analog[y],” so are
applicant’s video microscopes. See supra at 16. With respect to
my colleagues, the analogy is inapt. As the majority points out,
applicant said that its goods “function with video output devices
of the sort falling under class 9.” While the majority is
correct that not all video output devices fall in Class 9, the
point is not relevant here. Applicant did not say that all video
output devices fall in Class 9, only that its goods are similar
to such devices which do “fall[] under class 9.” In any event,
applicant does not identify or describe its goods as a “game
apparatus,” nor is there any evidence of record to support such a
conclusion. The fact that applicant’s video microscope is hand-
held and has a small built-in display does not make it a game,
nor is there anything about a small hand-held display which
requires that a product be identified exclusively as a toy or
placed in Class 28.
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(Every student of science has to begin at some point.) As
can be seen from the definitions quoted above, the term
“microscope” is ordinarily understood as focusing on the
nature of the instrument, not the age or occupation of its
intended user. And while some trademark applicants may
choose to more narrowly identify their microscopes by a
specific function, use, or user, the Office has apparently
determined that they need not do so. In this case,
applicant acceptably identified its goods as “microscopes,”
and its specimen shows use of the mark on packaging for a
good which meets that definition.
IV. Conclusion
To sum up, in my view, applicant’s first specimen
(packaging for the goods) demonstrated use of the mark on
“microscopes.” Applicant’s packaging describes the goods as
a “video microscope,” and nothing on that specimen limits
its use to that of a toy. Further, while the examining
attorney’s extrinsic evidence does show that some customers
are entertained by applicant’s goods or describe it as a
“toy,” this evidence also shows use of it as a “microscope.”
All of that is entirely consistent with the application
claiming use in both International Classes 9 and 28.
In order to reject applicant’s Class 9 specimen, I
think it is insufficient to ask merely whether some
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customers consider or use applicant’s goods as a toy, or
even whether a majority of them do. Here, applicant’s
specimen did in fact “reflect use of the mark in connection
with the product for the use set forth in the [Class 9]
application,” and the specimen was “not ... of a nature
[n]or [did it] contain language which would ... restrict the
product to but a single purpose or use.” Int’l Salt,
166 USPQ at 215 (emphasis added). Finally, the extrinsic
evidence does not show that applicant’s microscope is only
and exclusively sold or used as a mere toy. In the language
of the TMEP, “there [is] nothing in the record indicating
only one use or aspect” of applicant’s goods. TMEP
§ 1401.07 (emphasis added).
I would therefore find that the original specimen
adequately evidences applicant’s use of the applied-for mark
on microscopes, and I respectfully dissent from my
colleagues’ contrary holding.

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