Johns Manville

Trademark Trial and Appeal Board

Aug 31, 2009

No. 78820051 (T.T.A.B. Aug. 31, 2009)

Mailed:
August 31, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Johns Manville
________

Serial No. 78820051
_______

David E. Sipiora and Shelley B. Mixon of Townsend and
Townsend and Crew LLP for Johns Manville.

Paul F. Gast, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On February 21, 2006, Johns Manville (applicant)
applied to register the proposed mark FORMALDEHYDE-FREE on
the Principal Register for goods identified as “building
insulation” in International Class 17. The application is
based on a claim of first use of the mark anywhere and
first use of the mark in commerce on March 1, 2001.
Applicant seeks registration based on a claim that
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78820051
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FORMALDEHYDE-FREE has acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
The Examining Attorney has issued a final refusal
under Trademark Action Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1), on the grounds that FORMALDEHYDE-FREE is
merely descriptive of the identified goods and that
applicant has failed to establish that FORMALDEHYDE-FREE
has acquired distinctiveness under Trademark Act Section
2(f).
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Procedural History
We begin by recounting some of the procedural history
of this application which led to this appeal. The
Examining Attorney first refused registration under Section
2(e)(1) in an Office action dated June 7, 2006. Applicant
responded on December 7, 2006. Applicant did not dispute
the fact that FORMALDEHYDE-FREE was merely descriptive of
building insulation, but argued that FORMALDEHYDE-FREE had
acquired distinctiveness and submitted evidence in support
of that claim. Following that response, the Examining
Attorney approved the application for publication, and it
published on February 20, 2007.
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In response to publication, Georgia-Pacific Chemicals
LLC, Owens-Corning Fiberglas Technology, Inc., and
CertainTeed Corp. all filed requests for extensions of time
to oppose the application, and the Board approved those
requests.
In addition, Georgia-Pacific Chemicals LLC (opposer)
filed a notice of opposition. On September 1, 2007, the
Board advised opposer that the Office of the Assistant
Commissioner for Trademarks had accepted a letter of
protest with respect to the application and restored
jurisdiction to the Examining Attorney. The Board advised
opposer that the notice of opposition was moot as a result
of this action and that “… opposer’s time for filing an
opposition will commence when/if the applicant’s mark is
republished.”
After jurisdiction had been restored to the Examining
Attorney, in an Office action dated November 20, 2007, he
again refused registration on the grounds that
FORMALDEHYDE-FREE was merely descriptive and found that
applicant’s evidence of acquired distinctiveness was
insufficient, that is, the same evidence applicant had
submitted prior to publication. The Examining Attorney
based the refusal on the evidence of descriptive use of
FORMALDEHYDE-FREE provided through the referenced letter of
Serial No. 78820051
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protest. In re Candy Bouquet International Inc., 73 USPQ2d
1883, 1884 n.2 (TTAB 2004). After applicant responded, the
Examining Attorney issued the final refusal which resulted
in this appeal. Applicant did not attempt to submit any
new evidence in response to the two actions following the
withdrawal of the application from publication.
Objections to Evidence
Before addressing the merits of the appeal we must
attend to certain evidentiary matters. Although applicant
did not submit any evidence in response to the two actions
leading to this appeal, applicant did submit new evidence
with its appeal brief. Specifically, in its brief
applicant refers to several third-party registrations for
marks which end in “-FREE,” such as, POISON-FREE. The
Examining Attorney objects to this evidence because
applicant failed to submit copies of the registrations and
also because the submission was late.
The Examining Attorney is correct on both counts. The
record must be complete prior to appeal, subject to certain
exceptions not relevant here. See 37 C.F.R. § 2.142(d).
Applicant’s submission here is manifestly late. Therefore,
we exclude this evidence from consideration. We note
further that, even if applicant had submitted this evidence
prior to appeal, it is not in acceptable form. The Board
Serial No. 78820051
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does not take judicial notice of office records related to
third-party registrations; applicants must submit
appropriate copies of USPTO records to make registrations
of record in an appeal. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n.2 (TTAB 1998); In re Wada, 48 USPQ2d 1689,
1689 n.2 (TTAB 1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539
(Fed. Cir. 1999).
Furthermore, even if we had considered this evidence,
we would reach the same conclusions in this appeal.
Actions by examining attorneys on other applications do not
dictate the Board’s determination in an appeal. We must
decide each case on its unique facts and record. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Also, with its appeal brief applicant submitted copies
of a listing of results of a search for FORMALDEHYDE-FREE
BUILDING INSULATION from the Google® Search Engine and
copies of selected pages from the greenerbuldings.org
website. Applicant offers this evidence to show that a
high percentage of the top-listed results refer to
applicant. Although the Examining Attorney has not
objected to this evidence, neither has the Examining
Attorney discussed it or otherwise treated it as part of
Serial No. 78820051
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the record. Accordingly, we also exclude this evidence
from consideration as late.
Here too, we add that, even if we had considered this
evidence, we would reach the same conclusions in this
appeal. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Bayer asserts that the
list of GOOGLE search summaries is of lesser probative
value than evidence that provides the context within which
a term is used. We agree. Search engine results – which
may provide little context to discern how a term is
actually used on the webpage that can be accessed through
the search result link – may be insufficient to determine
the nature of the use of a term or the relevance of the
search result to registration considerations.”).1 Also, the
frequency and placement of results associated with a
particular entity, which are a function of the internal
operation of the search engine, lack probative value.
Summary of Arguments
Turning to the merits, the Examining Attorney argues
that FORMALDEHYDE-FREE is not only merely descriptive but
highly descriptive, and therefore, that applicant’s

1 Applicant also appears to argue that the search-engine evidence was
not previously available. We find this premise dubious at best, and we
reject this argument. If applicant wished to present new evidence, the
procedure for doing so would be to request a remand for that purpose.
See 37 C.F.R. § 2.142(d). Applicant has not done so.
Serial No. 78820051
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evidence of acquired distinctiveness is insufficient to
support registration under Section 2(f).
Applicant argues that its evidence that FORMALDEHYDE-
FREE has acquired distinctiveness is sufficient,
specifically, its prima-facie claim of substantially
exclusive and continuous use under Section 2(f), its
evidence of substantial sales, and its evidence of
extensive advertising and promotion of FORMALDEHYDE-FREE as
a mark.
Applicant also makes the following assertion
repeatedly in one form or another: “Applicant is the sole
seller of the complete line of ‘FORMALDEHYDE-FREE’ building
insulation products. Customers and competitors both
recognize Applicant as the sole manufacturer of
FORMALDEHYDE-FREE building insulation products, as
evidenced by the sales figures and advertising
expenditures.” Applicant’s Brief at 5.
Applicant also argues that we should disregard all of
the evidence included with the letter of protest, which the
Examining Attorney submitted for the record, because most
of this evidence post dates the sales and advertising
evidence applicant presented, because the uses by
competitors fail to show “use in commerce” and for other
reasons.
Serial No. 78820051
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Applicant also presents arguments as to specific items
of evidence. For example, applicant argues that we should
disregard evidence of use of FORMALDEHYDE-FREE by Dow
Chemical because, “… this document does not show use of the
term as a trademark.” Applicant’s Brief at 9. We will
address these specific arguments, as appropriate, below.
Background Regarding Formaldehyde and Building Insulation
Before proceeding further it would be helpful to
review the evidence regarding the properties of
FORMALDEHYDE itself. The Examining Attorney has provided a
dictionary entry from Dictionary.com indicating that
FORMALDEHYDE is “a colorless, toxic, potentially
carcinogenic, water-soluble gas, CH20, having a suffocating
odor, usually derived from methyl alcohol by oxidation:
used chiefly in aqueous solution, as a disinfectant and
preservative, and in the manufacture of various resins and
plastics.” FORMALDEHYDE is present in many forms of
building insulation. There is no dispute on these basic
points. Also, as we stated, applicant did not dispute the
fact that entire term, FORMALDEHYDE-FREE, is merely
descriptive. The questions before us are the degree of
descriptiveness and the sufficiency of applicant’s evidence
of acquired distinctiveness.
Serial No. 78820051
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Evidence That FORMALDEHYDE-FREE Is Highly Descriptive
The Examining Attorney relies on the following
evidence, received through the letter of protest, that
FORMALDEHYDE-FREE is highly descriptive of building
insulation:
A page from the dow.com website, retrieved
1/25/2007, connected with Dow Chemical discusses
building insulation and states: “Further, all
Dow core materials are formaldehyde-free and are
not known food sources for mold or mildew.

An undated brochure from Dow Chemical includes
the following statement: “Dow produces
insulating foams that: … · are formaldehyde-
free” under the heading “Build Green with Dow.”

A page from cocooninsulation.com, retrieved
1/16/2007, discusses building insulation and
states: “Cocoon insulation: It’s your absolute
best defenses against rising utility costs. … ·
safe, non-toxic, non-carcinogenic and
formaldehyde-free….”

A page from guardianbp.com, retrieved 1/16/2007,
connected with Guardian Building Products
discusses building insulation and states: “Attic
Guard® is non-corrosive, non-combustible, non
flammable and pest resistant. It is also
formaldehyde-free.”

A page from bondedlogic.com, retrieved 1/25/2007,
connected with Bonded Logic discusses building
insulation and states: “The Insulator brings
fire, fungi and corrosive resistance to an
insulation product that is formaldehyde and
resin-free.

A brochure from Armacell Engineered Foams, with a
copyright notice dated 2005, discusses insulation
for use in healthcare facilities and states: “AP
Armaflex is and always has been formaldehyde-
free.”
Serial No. 78820051
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An undated leaflet with the title “Questions and
Answers About Formaldehyde and Fiber Glass
Insulation,” from CertainTeed Corp., reports
information from the World Health Organization,
International Agency for Research on Cancer
(IARC) and states: “On June 9, IARC announced
that it reclassified formaldehyde from a 2A,
Probable Human Carcinogen, to 1, Known Human
Carcinogen.” The leaflet also states that,
“There is a small amount of free formaldehyde
present in today’s fiber glass insulation
products.” The leaflet ends with the following:
“Will CertainTeed launch a formaldehyde-free
product? CertaniTeed is and has been evaluating
formaldehyde-free resins for the past ten years.
We see no technical advantage in implementing
such a change as our products are essentially
formaldehyde-free today.”

Pages from knaufusa.com, retrieved 1/16/2007,
connected with Knauf Insulation discusses
building insulation and states: “What about so-
called formaldehyde-free insulation products?”
The response uses formaldehyde-free three more
times.

A page from ecoproducts.com, retrieved 1/25/2007,
a site connected with Eco-Products, discusses
building insulation and states: “Our cotton
insulation is made from all natural fibers.
Using recycled trimmings from the Denim industry
our cotton insulation is formaldehyde free.”

A brochure from Eco-Products, dated December 28,
2006, includes a bullet point “ · Formaldehyde-
free” under the heading “Compared to fiber
glass.”

A page from homedepot.com, retrieved 1/25/2007,
related to Reflectix Insulation, discusses
building insulation and refers to the product as
being “fiber and formaldehyde free.”

A page from advancedbuildings.org, retrieved
1/29/2007, discusses building products and
includes the heading “Formaldehyde-Free MDF,” a
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photo caption stating “Formaldehyde-Free MDF is
used in institutional, commercial and industrial
designs” and includes one further use of
“formaldehyde-free” in the text.

Pages from thegreeguide.com, retrieved 1/29/2007,
include the following statement: “Formaldehyde-
free: labeled products may contain chemicals
like benzaldehyde, closely related to
carcinogenic formaldehyde.”

Two undated pages of charts connected with the
“Ca Integrated Waste Management Board” presents
one chart addressing “Structural Fiberboard:
Acoustical Ceiling Tiles” where “Formaldehyde-
Free” is referenced, and another chart addressing
“Fiberglass Insulation” where the reference
indicates “no formaldehyde” in relation to
applicant and certain of its competitors’
products.

A “Fact Sheet,” dated August 2004, titled
“REDUCING YOUR EXPOSURE TO FORMALDEHYDE,” from
the California Environmental Protection Agency
includes the following statements: “Consider
using formaldehyde-free materials such as solid
wood, gypsum board…. Use formaldehyde-free
insulation.”

Another publication from the California
Environmental Protection Agency, also dated
August 2004, titled “Formaldehydes in the Home,”
discusses insulation and other building products
and states: “Use formaldehyde-free building
materials.”

Pages from peakstoprairies.org, retrieved
1/29/07, includes a check list for building with
the following item under “STRUCTURE: Insulation”:
“Is the insulation that will be used
formaldehyde-free?”

Pages from insulation.org, retrieved 1/29/2007,
the website of the National Insulation
Association, include an article, dated
March/April 2004, with the following statement:
Serial No. 78820051
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“When you think about sustainable design you look
for products that are formaldehyde-free….”

A publication of the United States Environmental
Protection agency, dated March 2006, titled
“Residential Green Building Guide,” includes the
following reference under the heading
“Insulation”: “Recycled Content, Formaldehyde-
free Fiberglass Search Terms.”

Pages from greenhomeguide.com, retrieved
1/16/2007, discuss Cocoon insulation from U.S.
GreenFiber and state: “Because the product uses
a formaldehyde-free binder, indoor air quality
concerns are limited….”

Pages from motherearthnews.com, retrieved
1/25/2007, from Mother Earth News discuss
building insulation and state: “Some
manufacturers, such as Owens Corning and Johns
Manville, have introduced formaldehyde-free
insulation products.

Pages from formaldehyde-free.org, retrieved
1/29/2007, a website connected with the
“Formaldehyde-Free Coalition” includes
references, such as “If you are interested in
becoming a member of the Formaldehyde-Free
Coalition please call…” and “ Recent News,
October 23, 2006, “CARB [California Air Resources
Board]… determines substituting formaldehyde-free
wood products adds only 0.2 percent to overall
costs…” and “NRDC joins Formaldehyde-free
Coalition” and several more similar uses of
formaldehyde-free.

An article, dated Fall 2004, at Home in the
Capital Region titled “Green on the Inside”
states, “By using building materials that are
non-toxic and formaldehyde-free, plus proper
ventilation, … you can prevent mold, mildew,
allergens and other indoor air quality problems.”

A pamphlet, dated 10.03.02, from MANNA discussing
PATH, a program funded by the U.S. Department of
Housing and Urban Development, with a heading
“PATH’s 10 Low Cost/No Cost Starter Steps to
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Promote Green Building” includes the following
statements: “Use formaldehyde-free insulation.”
and “Formaldehyde-free insulation eliminates
formaldehyde emissions.”

and

Pages from checnet.org, dated February 7, 2007,
with an article from CHEC’s HealtheHouse, titled,
“Managing the Hazards of Insulation:
Alternatives and Solutions” includes the
statement: “Formaldehyde-free insulation is also
on the market.”

Attachments to Office Action of November 20, 2007 (emphasis
in bold added).
The Examining Attorney had also provided seven
examples from websites of descriptive uses of FORMALDEHYDE-
FREE with the first Office action in the case. Applicant
argued then and still argues that six of the seven examples
refer to applicant’s products. For purposes of our
decision, we assume that these six examples do refer to
applicant’s products. Nonetheless, we conclude that
FORMALDEHYDE-FREE is used descriptively in these examples.
Ultimately, we need not rely on this evidence as a basis
for our decision here in view of the other evidence now in
the record.
In view of the nature of the term FORMALDEHYDE-FREE,
as well as the extensive descriptive use of that term by
third parties, we find that FORMALDEHYDE-FREE is highly
Serial No. 78820051
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descriptive when used in connection with building
insulation.
Evidence of Acquired Distinctiveness
On the other hand, applicant bases its claim of
acquired distinctiveness on a prima facie claim of
substantially exclusive and continuous use and evidence of
sales and advertising related to its FORMALDEHYDE-FREE
products.
First, with regard to applicant’s prima facie claim
under Section 2(f), the claim is not only insufficient
under the circumstances of this case, but it is
fundamentally defective. Applicant submitted the claim in
an affidavit accompanying its response of December 7, 2006.
The affidavit, in relevant part, states, “The mark
FORMALDEHYDE-FREE has become distinctive of the goods sold
under the mark through Applicant’s substantially exclusive
and continuous use in commerce for a period of in excess of
four and one half years prior to date of execution of this
declaration.” Attachment to Response of December 7, 2006
(emphasis in bold added).
In applicant’s response which included this
declaration, applicant refers to its claim of use “for a
period of in excess of four and one half years” and states:
“Such exclusive and continuous use is sufficient for
Serial No. 78820051
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Applicant to demonstrate acquired distinctiveness. See 15
U.S.C. § 1052(f) (stating ‘the commissioner may accept as
prima facie evidence that the mark has become distinctive,
as used on or in connection with the applicant’s goods in
commerce, proof of substantially exclusive use thereof as a
mark by the applicant in commerce for the five years
preceding the date on which the claim of distinctiveness is
made.’).” Response of December 7, 2006 at 2 (emphasis in
bold added). For the purpose of the prima facie claim, the
statute requires use for at least five years, not a period
of “in excess of four and one half years.” Thus,
applicant’s claim is defective. Furthermore, although
applicant had ample opportunity to correct or update this
statement, applicant did not do so. Furthermore, we note
applicant’s dubious claim that its use ever was
substantially exclusive. The record belies that claim.
Also, we reject applicant’s argument that other uses are
either insignificant or infringing as recognized in L.D.
Kichler Co. v. Davoil Inc., 52 USPQ2d 1307 (Fed. Cir.
1999). In this case, the evidence of widespread use of
FORMALDEHYDE-FREE by a diverse group of parties also belies
that argument.
More importantly, even a proper prima facie, five-year
claim of substantially exclusive and continuous use would
Serial No. 78820051
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not be sufficient under the circumstances of this case.
The Examining Attorney has the discretion to reject and
should reject such a claim in a case such as this one where
the designation at issue is at least highly descriptive.
In re Gray Inc., 3 USPQ2d 1558 (TTAB 1987) (“… a showing
considerably stronger than a prima facie statement of five
years’ substantially exclusive use is required…” to
register PROTECTIVE EQUIPMENT for “alarm security and
surveillance systems, namely, burglar and fire alarms” and
“burglar and fire alarm surveillance services”).
Apart from the prima facie, five-year statement, we
may consider long use, along with other evidence, in
determining whether a mark has acquired distinctiveness.
In this case, we have considered applicant’s use of
FORMALDEHYDE-FREE from March 1, 2001, applicant’s claimed
date of first use in commerce, up to the present. Here
again, we find this evidence, along with applicant’s other
evidence, insufficient to show acquired distinctiveness.
Stuart Spector Designs Ltd. et al. v. Fender Musical
instruments Corp., __ USPQ2d __, Opposition No. 91161403 et
al., Slip Opinion at 60 (TTAB, March 25, 2009) (use for
fifty years held insufficient to show mark had acquired
distinctiveness); In re Packaging Specialists, Inc., 221
USPQ at 920 (use of “Packaging Specialists, Inc.” for
Serial No. 78820051
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sixteen years held not sufficient to establish acquired
distinctiveness). Accordingly, we find that applicant’s
use for nearly eight years, when considered with the other
evidence, is not sufficient to establish that FORMALDEHYDE-
FREE has acquired distinctiveness.
In its affidavit, dated December 4, 2006, applicant
also presents evidence with regard to sales and
advertising. Specifically, applicant states:
2. Johns Manville’s sales of goods bearing
the mark FORMALDEHYDE-FREE have totaled in excess
of $2 billion since 2002. Annually sales of
FORMALDEHYDE-FREE branded products have ranged
from approximately $420 million to well over $600
million. In terms of unit volume, Applicant has
sold more than 57 million units of product
bearing the mark FORMALDEHYDE-FREE over the past
four and one-half years and has sold those
products in all 50 states.

3. Since 2002, Applicant has devoted
considerable time and energy into promoting its
mark. Johns Manville has promoted FORMALDEHYDE-
FREE through, among other means, promotion on
John Manville’s website, advertising, tradeshows,
and word of mouth. Attached please find some
examples of our promotional literature that
feature our mark FORMALDEHYDE-FREE. Johns
Manville has distributed thousands of copies of
these materials and/or similar materials bearing
the mark FORMALDEHYDE-FREE during the past four
years in connection with the promotion and sale
of building insulation products bearing the mark.
Since 2002, Johns Manville has spent at least $28
million in advertising for FORMALDEHYDE-FREE
products.

Affidavit of Scott DeShetler, Director, Marketing
Communications, attached to Response of December 7, 2006.
Serial No. 78820051
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High sales are of little probative value in a case
such as this; high sales do not necessarily translate into
recognition of highly descriptive wording, such as,
FORMALDEHYDE-FREE, as a mark. Target Brands Inc. v.
Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (“… the sales
figures show only the popularity of applicant's product,
not that the relevant customers of such products … have
come to view the term ULTIMATE POLO as applicant's source-
identifying mark.”). See also Braun Inc. v. Dynamics Corp.
of America, 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed. Cir.
1992); Pingel Enterprise Inc., 46 USPQ2d 1811, 1822 (TTAB
1998). Accordingly, we find that applicant’s sales, when
considered with the other evidence, are not sufficient to
establish that FORMALDEHYDE-FREE has acquired
distinctiveness.
Also, with regard to applicant’s advertising, we find
no evidence that any of applicant’s advertising has been
directed to the promotion of FORMALDEHYDE-FREE, in
particular, as a mark. The examples applicant provided,
like the specimen, show use of FORMALDEHYDE-FREE merely to
identify a highly desirable attribute of its products. In
re Packaging Specialists, Inc., 221 USPQ at 920. Applicant
asserts that the use of the ™ symbol with FORMALDEHYDE-FREE
in these ads is significant. We disagree. We find this
Serial No. 78820051
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argument too facile. This device cannot transform an
otherwise highly descriptive term into a trademark.
Accordingly, we find that applicant’s advertising and
promotional efforts, when considered with the other
evidence, are not sufficient to establish that
FORMALDEHYDE-FREE has acquired distinctiveness.
Analysis/Conclusions
The applicant bears the burden of establishing
acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008
(Fed. Cir. 1988); In re Packaging Specialists, Inc., 221
USPQ at 919 (“‘Packaging Specialists, Inc.’ is highly
descriptive of distributorship services for packaging
material and equipment, contract packaging services, and
design services for design of packages.”). We conclude
that applicant has failed to meet that burden in this case.
We find the evidence that FORMALDEHYDE-FREE is highly
descriptive overwhelming while we find the evidence that
FORMALDEHYDE-FREE has acquired distinctiveness not only
underwhelming, but seriously lacking in credibility.
We stop short of stating whether this evidence shows
that FORMALDEHYDE-FREE is generic only because the refusal
at issue does not go that far. Cf. See Micro Motion Inc.
v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) (MASSFLO held
Serial No. 78820051
20
generic for flowmeters for the measurement of flow of mass
of fluids); In re Central Sprinkler Co., 49 USPQ2d 1194
(TTAB 1998) (ATTIC held generic for automatic sprinklers
for fire protection); Stromgren Supports Inc. v. Bike
Athletic Co., 43 USPQ2d 1100 (TTAB 1997) (COMPRESSION held
generic for hosiery); In re Reckitt & Colman, North America
Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic
for soil and stain removers for permanent press fabrics);
In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988),
aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held
generic for a wide range of electronic products).
The simple dictionary meanings of the components of
FORMALDEHYDE-FREE and applicant’s own use evidence the fact
that the relevant public would perceive FORMALDEHYDE-FREE
as highly descriptive as applied to building insulation.
See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987). In view of the carcinogenic concerns
related to FORMALDEHYDE in building insulation and other
products, it is obvious that products which are FREE of
FORMALDEHYDE or FORMALDEHYDE-FREE are desirable. The use
of FORMALDEHYDE-FREE by applicant on the specimen of record
and elsewhere simply communicates that the product
possesses this attribute.
Serial No. 78820051
21
The evidence that the Examining Attorney presents
shows at least highly descriptive use of FORMALDEHYDE-FREE
by applicant, by applicant’s competitors, by a retailer, by
federal and state regulatory authorities, by the insulation
industry trade association, by public interest groups and
by the press. In the face of this evidence applicant
claims that its use is “substantially exclusive” and that
the relevant public will perceive FORMALDEHYDE-FREE as a
source identifier. Based on the record, we find
applicant’s claims lacking in both credibility and
evidentiary support.
As we noted, applicant argues repeatedly that it “… is
the sole seller of the complete line of ‘FORMALDEHYDE-FREE’
building insulation products.” This argument is not only
unpersuasive, but it misses the point. We cannot and do
not render an opinion here as to whether applicant’s claim
in this regard is true. Nor can we or do we render an
opinion as to whether applicant or any of its competitor
offer a product which is truly FORMALDEHYDE-FREE. The
argument does point to the fact that FORMALDEHYDE-FREE is a
desirable, and perhaps even essential, attribute of
building insulation products. The argument supports,
rather than contradicts, the conclusion that FORMALDEHYDE-
FREE is at least highly descriptive. The record also
Serial No. 78820051
22
suggests that the most common way to identify this
attribute is by identifying the product as FORMALDEHYDE-
FREE. Accordingly, we reject this argument.
Applicant’s attacks on the evidence that FORMALDEHYDE-
FREE is highly descriptive also largely miss the point.
The point of the evidence is to show that the relevant
public will perceive FORMALDEHYDE-FREE as highly
descriptive in relation to building insulation. The fact
that competitors are not using FORMALDEHYDE-FREE as a
trademark is not relevant. The fact that competitors and
so many others are using FORMALDEHYDE-FREE in a highly
descriptive manner is relevant because this evidence shows
that consumers will likely perceive applicant’s use as
highly descriptive also.
We likewise do not understand applicant’s argument
that the uses are not “in commerce.” The widespread use by
a diverse group in a public forum supports the conclusion
that the relevant public both use and perceive
FORMALDEHYDE-FREE as a term which is at least highly
descriptive. Accordingly we reject this argument.
Also, even if applicant had claimed to be the first
and only user of FORMALDEHYDE-FREE, we would reach the same
conclusion here because it is highly descriptive. See In
Serial No. 78820051
23
re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB
2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985).
We also reject applicant’s arguments regarding the
timing of the evidence. On the one hand, applicant
attempts to introduce new evidence, the Google® search
engine results listing, to show the current state of
affairs with regard to FORMALDEHYDE-FREE. On the other
hand, applicant asks us to reject the Examining Attorney’s
evidence because it “post dates” its promotional efforts.
Based on the record as a whole, we conclude that
FORMALDEHYDE-FREE was, at all relevant times, at least
highly descriptive of building insulation. The evidence,
which is dated, covers a range of dates from the time early
in applicant’s claimed period of use to more recent times.
We do not assume that the materials retrieved from websites
appeared first or only on the dates those materials were
retrieved. We infer, due to the nature of the materials,
that they appeared earlier than the retrieval date and that
they were available for some period of time. We recognize,
as applicant argues in one instance, that certain of the
materials may no longer be available online. This is a
circumstance we take into account in all cases where we
must consider evidence from online sources.
Serial No. 78820051
24
More generally, we find applicant’s claim that it was
“blind-sided” by this evidence not credible. Applicant’s
Response of May 20, 2008 at 1. As a leader in the building
insulation industry, applicant must have been aware of the
widespread use of FORMALDEHYDE-FREE. We find it hard to
believe that all of these uses arose suddenly from nowhere.
We also reject applicant’s arguments with regard to
uses which may relate to building materials other than
insulation. The vast majority of the uses are in relation
to building insulation. These is the most probative uses.
The few uses in relation to other types of building
materials, such as wood products, are still somewhat
probative.
Finally, based on all evidence of record, we conclude
that FORMALDEHYDE-FREE is highly descriptive of building
insulation and that applicant has failed to establish that
FORMALDEHYDE-FREE has acquired distinctiveness as a source
indicator for its building insulation products.
Decision: We affirm the refusal under Trademark Act
Section 2(e)(1) and the finding that applicant’s evidence
of acquired distinctiveness is insufficient.