Mannington Mills, Inc.Download PDFTrademark Trial and Appeal BoardMay 18, 2010No. 77566702 (T.T.A.B. May. 18, 2010) Copy Citation Mailed: May 18, 2010 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Mannington Mills, Inc. ________ Serial No. 77566702 _______ Sherry H. Flax of Saul Ewing LLP for Mannington Mills, Inc. Myriah A. Habeeb, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Bucher, Grendel and Wellington, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Mannington Mills, Inc. seeks registration on the Principal Register of the term ETCHED (in standard character format) for goods identified as “non-metal cove bases; rubber cove bases; rubber floor tiles; [and] rubber flooring” in International Class 19.1 1 Application Serial No. 77566702 was filed on September 10, 2008 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77566702 - 2 - The Trademark Examining Attorney refused registration on the ground that the term is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register. In support of registrability, applicant argues that the term “Etched” is not merely descriptive of the goods identified in the application; that the purported evidence does not support the Trademark Examining Attorney’s position; and that the applied-for designation is, at worst, suggestive, and therefore deserving of registration. By contrast, the Trademark Examining Attorney contends that this term conveys an immediate idea of a salient feature of the identified goods. Merely Descriptive under Section 2(e)(1) A mark is merely descriptive, and therefore unregistrable pursuant to the provisions of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys “knowledge of a quality, feature, function, or characteristic of the goods or services.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d Serial No. 77566702 - 3 - 1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive of analgesic product]. See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD are merely descriptive of applicant’s “affinity” credit card services; a “mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service”]; In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK is merely descriptive of bicycle racks]; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE is merely descriptive of a potpourri mixture]; and In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). To be “merely descriptive,” a term need only describe a single significant quality or property of the goods [or services]. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought. That is, when we analyze the evidence of record, we must keep in mind that the test is not whether prospective purchasers can guess what applicant’s goods [or services] are after seeing only applicant’s mark. In re Abcor Development Corp., 588 F.2d Serial No. 77566702 - 4 - 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely descriptive of a “gas monitoring badge”; “Appellant’s abstract test is deficient – not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark ‘when applied to the goods’ as required by statute.”]. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); and In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). In addition to considering the applied-for mark in relation to the goods or services for which registration is sought, the proper test for descriptiveness also considers the context in which the mark is used and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). A mark is suggestive, and therefore registrable on the Principal Register without a showing of acquired Serial No. 77566702 - 5 - distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services. “Whether a given mark is suggestive or merely descriptive depends on whether the mark ‘immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods … with which it is used,’ or whether ‘imagination, thought, or perception is required to reach a conclusion on the nature of the goods.’” (citation omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). Hence, the ultimate question before us is whether the term ETCHED conveys information about a significant feature of applicant’s goods with the immediacy and particularity required by the Trademark Act. Analysis The Trademark Examining Attorney has made of record dictionary definitions as well as information drawn from public media sources and applicant’s own literature. From a dictionary definition of the term “etched,” the Trademark Examining Attorney focuses on the meaning of “cut or impressed into a surface.” Serial No. 77566702 - 6 - etch transitive verb 1.a. To cut into the surface of … etched adjective Cut or impressed into a surface … [syn: engraved] 2 The Trademark Examining Attorney has also introduced into the record several pieces of information about applicant’s sculpted cove or wall bases. Applicant’s online promotional materials include both “etched” and “double etched” edge effects: 3 One of applicant’s technical specifications documents listed thirteen “physical characteristics” of the edge effects of its sculpted wall bases, of which “Etched” and “Double Etched” were two of the thirteen listings, and described as having surface notching: 2 http://www.thefreedictionary.com/etched 3 Trademark Examining Attorney’s denial of request for reconsideration, October 6, 2009, at TICRS 32 and 33 of 71. Serial No. 77566702 - 7 - ARCHITECTURAL GUIDE SPECIFICATIONS Mannington Mills, Inc. P. O. Box 30 Salem, NJ 08079 Section 09 65 13.13 … PART 2 PRODUCTS 2.01 RESILIENT RUBBER FLOORING MATERIALS … B. Physical Characteristics … 7. [Etched] … high flat surface wall base profile with an angular top and a surface notch … 8. [Double Etched] … high flat surface wall base profile with two square notches … 4 In further support of the refusal to register, the Trademark Examining Attorney included a dictionary entry for the word “notch”: notch –noun 1. an angular or V-shaped cut, indentation, or slit in an object, surface, or edge. 5 In response, applicant argues that while the applied- for term might well be suggestive of a feature of the wall bases, it is certainly not merely descriptive inasmuch as the term “Etched” is too vague when used in connection with these goods. While its architectural guide specification describes the sculpted wall bases as having “a surface notch,” applicant argues that a surface notch “has absolutely nothing to do 4 Office action of December 18, 2008, Att. 2, at TICRS 9. 5 http://dictionary.reference.com/browse/notch, Office action of December 18, 2008, Att. 4, at TICRS 59. Serial No. 77566702 - 8 - with ‘etching’.” In fact, applicant concedes that the term “Notched” might be a merely descriptive term for these goods, but that consumers would not immediately understand the term “Etched” to refer to a salient feature of these goods because “the goods are not etched.” [emphasis in original]. These cove or wall bases do not have a design feature “etched” into the surface of them if one limits the meaning of the word “etched” to concepts like “ingrained,” “imprinted,” “stamped,” “embossed” or “impressed.” However, as shown by the dictionary entries above, “etched” also has the connotation of “lined,” “cut-into,” “carved” or “engraved.” The fact that a sculpted wall base known as “Etched” has a single surface notch (see photograph, profile and description of base above), and the fact that “Double Etched” contain two lines or notches (again, see the relevant photograph, profile and description), separately and taken together, immediately convey information about these wall bases consistent with a standard, ordinary meaning of the word “Etched” as meaning “cut-into.” As shown by pictures above, the wall bases are clearly “etched” / “cut into.” In this context, the word “Etched” is neither vague nor incongruous. This connotation is obvious enough that competitors should be free to use this term, even if it is possible that applicant is the first or only Serial No. 77566702 - 9 - manufacturer of these goods currently using the word “Etched” in this manner. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting, and outdoor sports products field]. Additionally, the fact that other words (e.g., “Notched”) might be equally available does not make the word “Etched” any less descriptive. Applicant’s own use in its “Architectural Guide Specifications,” equating “Etched” with a single surface notch and “Double Etched” with two square surface notches supports a finding of mere descriptiveness. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) [applicant’s own specimen describing product as “a … wipe … for … screens” supports holding of SCREENWIPE as generic]. We find that the above evidence demonstrates the descriptiveness of the word “Etched” as applied to applicant’s cove or wall bases. The identification of goods also includes “rubber flooring.” As to the use of the word “Etched” in connection with rubber or laminate flooring, the Trademark Examining Attorney also included another possible descriptive significance: Serial No. 77566702 - 10 - Laminates Follow Wood Trends Although Mannington began production of its laminate flooring almost a decade ago at the High Point facility, the design and production process continues to evolve. For design inspiration, "they go to the real stone and wood," Brown says. Dryden adds that, in keeping with Mannington's emphasis on style -- "it sets us apart from the competition" -- 99 percent of the designs are proprietary. "They're not off the shelf," Dryden says. For example, Mannington's prize-winning laminate design in cherry copied hardwood's "aged" appearance, right down to the hand-scraped look which was achieved through embossed-in-register technology. In embossed-in-register, the indentations that the press plate makes in the plank exactly follow the wood or stone pattern of the décor paper. The pattern of the décor paper then is repeated on the beveled tongue- and-groove edges through a special thermofoil process that Mannington implemented in 2005. "Hand-rubbing," achieved by machine etching, removes color from the papers "knotholes," giving them an appropriately dull surface. According to Dryden, it results in an appearance that is more authentic-looking than a lacquer coating… 6 Unlike the usage of the term “Etched” with the cove or wall bases, where we found the term to be descriptive in the sense of “cut-into,” applying the term “Etched” in the context of this latter usage describes the results of applicant’s special thermofoil process for flooring (“machine etching”) inasmuch as it fits the definitions of the word “etched” in the sense of “ingrained,” “imprinted,” “stamped,” “embossed” or “impressed.”7 6 http://www.thefreelibrary.com/Mannington+floors+the+ competition+with+product+diversity%3a+having+its...-a0163198214, Office action of December 18, 2008, Att. 5, at TICRS 67. 7 We note that our finding the term “Etched” merely descriptive as to applicant’s cove or wall bases is sufficient to support the refusal to register these goods in International Class 19. However, inasmuch as the Trademark Examining Attorney included this additional evidence, in the interest of completeness, we find that applicant has also used the term “Etched” in a merely descriptive manner as to flooring. Serial No. 77566702 - 11 - Hence, we conclude that whether one focuses on the cove bases or the flooring, the word “Etched” appears to have merely descriptive meanings with nuanced differences for each type of product. Finally, applicant argues that its mark should be allowed to register because the Office previously has registered composite marks containing within them terms such as “Etch,” “Etched,” “Carved” and “Cut” in registrations for similar goods. However, third-party registrations are not conclusive on the question of descriptiveness inasmuch as each case must be considered on its own merits. As noted by the Trademark Examining Attorney, an applied-for mark that is merely descriptive does not become registrable simply because other similar terms appear within marks subsisting on the register. In re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977). Decision: The Trademark Examining Attorney’s refusal to register under Section 2(e)(1) of the Act the term ETCHED in connection with cove bases and rubber flooring is hereby affirmed. Copy with citationCopy as parenthetical citation