Rodolfo Fernandez

Trademark Trial and Appeal Board

Nov 14, 2016

No. 86487796 (T.T.A.B. Nov. 14, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Rodolfo Fernandez
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Serial No. 86487796
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Thomas D. Foster of TDFoster - Intellectual Property Law
for Rodolfo Fernandez.

Josette M. Beverly, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Bergsman, Wolfson and Larkin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Rodolfo Fernandez (“Applicant”) seeks registration on the Principal Register of
the mark DESERT TAN (in standard characters) for “Natural rocks and stone used
for landscape decorative purposes” in International Class 19.1

1 Application Serial No. 86487796, filed December 22, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first use in commerce dates of
January 26, 2004. A disclaimer to “Tan” has been entered in the application.
Serial No. 86487796

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The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s proposed
mark, when applied to Applicant’s goods, is merely descriptive thereof.
After the Examining Attorney made the refusal final, Applicant timely appealed
to the Board. The case is fully briefed. We affirm the refusal to register.
Before we address the substantive refusal, we address an evidentiary issue. The
Examining Attorney objects to Applicant’s introduction of pages from several
websites submitted for the first time with Applicant’s brief. “The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.” Trademark Rule
2.142(d). In this case, Applicant has provided additional pages from websites that the
Examining Attorney already made of record. See In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 181, 820 (Fed. Cir. 1986) (if only a portion of an article is
submitted, that portion is not thereby insulated from the context whence it came);
Trademark Board Manual of Procedure (“TBMP”) § 1207.01 (October 2016). We have
exercised our discretion to consider the additional pages.
Turning to the merits of the appeal, Applicant argues that its proposed mark is
only suggestive, and not merely descriptive. More specifically, Applicant contends
that a consumer would need to engage in “mature thought or follow a multi-stage
reasoning process” to determine any specific attributes of Applicant’s product beyond
its general “tan” coloration.2

2 Applicant concedes that “tan” is merely descriptive of the color of the landscape rocks that
Applicant’s sells. Applicant’s brief, p. 13. 4 TTABVUE 14.
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[F]irst, a consumer must connect the term “desert” to an
image of a warm and soothing landscape, and then must
connect “tan” to a color. After making these respective
connections, the consumer is then forced to make some
sense out of the various meanings conveyed by the
incongruous combination of the two terms. This need to
resort to imagination renders the mark only suggestive.
The Examining Attorney maintains that the proposed mark is merely descriptive
of the color of Applicant’s natural rocks and stone used for landscape decorative
purposes and that the “combined wording ‘desert tan’ is used to describe a variation
of the color tan.”3 In support of the refusal, the Examining Attorney introduced
dictionary definitions and excerpts of third-party websites as showing that the term
“desert tan” is commonly used to describe the color appearance of decorative rock and
stone.
A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is
determined in relation to the goods for which registration is sought and the context
in which the term is used or intended to be used, not in the abstract or on the basis
of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not
immediately convey an idea of each and every specific feature of the goods in order to

3 Examining Attorney’s Brief, unnumbered p. 2, 6 TTABVUE 3.
Serial No. 86487796

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be considered merely descriptive; it is enough if it describes one significant attribute,
function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The
analysis requires consideration of the possible significance that the mark would have
to the average purchaser of the goods in the relevant marketplace. See In re Chamber
of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ
at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). “The question is
not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods and
services are will understand the mark to convey information about them.” DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB
2002)). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the goods, the combination results in a composite that is itself merely descriptive.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)
Serial No. 86487796

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(PATENTS.COM merely descriptive of computer software for managing a database
of records that could include patents, and for tracking the status of the records by
means of the Internet). See also In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB
2009) (BATTLECAM merely descriptive for computer game software); In re Carlson,
91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower Tech,
Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and
industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) (AGENTBEANS merely descriptive of computer programs for use in developing
and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry). However, a mark comprising a
combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a non-descriptive meaning, or if the composite has
a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal
hand tool having a handle with a snow-removing head at one end, the head being of
solid uninterrupted construction without prongs”). “If one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what
characteristics the term identifies, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See
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also In re Shutts, 217 USPQ at 364-365; In re Universal Water Systems, Inc., 209
USPQ 165, 166 (TTAB 1980).
As a noun, the word “desert” is defined as:
1. A barren or desolate area, especially:
a. A dry, often sandy region of little rainfall, extreme
temperatures, and sparse vegetation.
b. A region of permanent cold that is largely or
entirely devoid of life.
c. An apparently lifeless area of water.4
As an adjective, “desert” is defined as:
1. Of, relating to, characteristic of, or inhabiting a desert:
desert fauna.
2. Barren and uninhabited; desolate: a desert island.5
One of the definitions of the term “tan” as a noun is “a light or moderate yellowish
brown to brownish orange.”6 The color “tan” is listed as a color with unique “Hex” and
“RGB” numbers (Hex FAA76C and RGB 250, 167, 108) on the Pantone color table
presented at http://wvffl.novact.info/id40.html.7 There is no equivalent unique color
tone listed on the pantone table for the color “desert tan,” although it is listed in
Encycolorpedia.com as a matching paint color for “#b1a688 Hex” that is

4 At https://www.ahdictionary.com, attached to the Examining Attorney’s denial of
Applicant’s request for reconsideration. Other definitions are “an empty or forsaken place; a
wasteland: a cultural desert” and “a wild, uncultivated, and uninhabited region (Archaic).”
These definitions are not relevant to our decision.
5 Id.
6 Other definitions are “a suntan,” “an artificially created suntan,” “tanbark,” “tannin” and
“a solution derived from tannin.” These definitions are not relevant to our decision. At
https://www.ahdictionary.com, attached to the Examining Attorney’s denial of Applicant’s
request for reconsideration.
7 At http://www.novact.info/id40.html, attached to Office Action dated April 8, 2015.
Serial No. 86487796

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manufactured by Humbrol Paint.8 Encycolorpedia.com also lists the color “desert”
under #c19a6b.9
The Examining Attorney introduced excerpts of several third-party websites to
show that others in the decorative stone industry commonly use the words “desert
tan” to describe the color feature of ornamental stone and rocks. For example:
1. Jody’s Trucking, at jodystrucking.com, advertises a delivery service including
“desert tan” decorative rocks.10

2. Desert Rock Co. Landscape Center, at desertrockco.com, offers “Colored
Gravel,” including the following stone mix identified as “Desert Tan.”11

3. A. Montaño & Associates, at montanosandandgravel.com, offers a decorative
stone labeled “3/4” Desert Tan.”12

8 At http://encycolorpedia.com/b1a688, attached to Office Action dated April 8, 2015.
9 Id.
10 http://www.jodystrucking.com/landscape-rock-gallery/, attached to Office Action dated
April 4, 2015.
11 At http://www.desertrockco.com/product1/, attached to Final Office Action dated November
8, 2015.
12 At http://www.montanosandandgravel.com/decorative-landscaping-rock-santa-fe-nm/,
attached to Final Office Action dated November 4, 2015.
Serial No. 86487796

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4. Stone Gallery Landscape & Masonry Supplies, at
https://www.outdoorstonegallery.com, offers “Desert Tan Brownstone,”
advertising a “natural stone [that] has warm brown colors with light swirls
from its natural sedimentary layers. Its earthy tone makes it a popular
choice….”13
14
5. Cascade Paving Hardscape Stones LLC, at
http://www.cascadepavingstone.com, offers “Holland Stone” in four colors,
one of which is “Desert Tan.”15

13 At https:/www.outdoorstonegallery.com/desert-tan-brownstone.html, attached to denial of
Applicant’s request for reconsideration.
14 Applicant contends that the pillar caps shown here are not comparable to its natural rocks
and stone because the third party’s product is a “custom fabricated architectural stone
feature” and not a natural rock or stone product for landscape decorative purposes.
Applicant’s Brief, p. 7, 4 TTABVUE 8. We find the goods related because both products are
designed for use in outdoors landscaping projects. Even without this reference, we would find
that the proposed mark is merely descriptive.
15 At http://www.cascadepavinqstone.com/oreqon-landscaping-stone-materials.php, attached
to Final Action dated November 4, 2015.
Serial No. 86487796

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6. BuildDirect, at http://www.builddirect.com, offers building materials, one of
which is advertised as “Black Bear Pallets Manufactured Stone – Stack-N-
Tack.” The product is labeled “Desert Tan/ Stacked Stone 6 Sq. ft. Flat.”16

7. Anchor Block Company, at http://www.anchorblock.com, offers Windsor
Stone® retaining wall systems in a “premium color palette” option and a “solid
color palette” option. Examples of the solid color palette stone include “Desert
Tan.”17

18
8. Kiel Sand & Gravel, at http://www.kielsandandgravel.com, offers a “light tan
fractured stone available in ¾” and 1 ½” that it identifies as “Desert Tan.”19

16 At http://www.builddirect.com/Manufactured-Stone-Veneer/Desert-Tan/ProductDisplay,
attached to Final Action dated November 4, 2015.
17 At http://www.anchorblock.com/products/walls/windsor-stone-retaining-wall/, attached to
Final Action dated November 4, 2015.
18 Applicant argues that this product is unrelated to its natural rocks and stone. However,
both products may be used in landscaping projects, and therefore the website evidence is
relevant to our decision. We hasten to add that even without this reference, the evidence
would still compel a finding that the proposed mark is merely descriptive.
19 At http://www.kielsandandgravel.com/landscape products.htm, attached to the March 10,
2016 denial of Applicant’s request for reconsideration.
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9. Kafka Granite LLC, at http://www.kafkagranite.com, offers decomposed
granite standard pathway mix in a variety of colors, including “Desert Tan
Marble.”20

10. Masonry Club, at http://www.masonryclub.com offers boulders under the tag
“landscape supplies.” There are several illustrations of different types, all
categorized as “Desert Tan Cobbles.”21

Applicant argues that the Examining Attorney has erred in relying upon the
third-party websites. “In actuality [the third-party websites] show that the term
DESERT TAN is but one of a number of trademarks used by these rock and stone

20 At http:/www.kafkaqranite.com/pathway-materials/standard-pathway-mix-2/, attached to
the March 10, 2016 denial of Applicant’s request for reconsideration.
21 At http://www.masonryclub.com/landscape-supplies-boulders.html, attached to the March
10, 2016 denial of Applicant’s request for reconsideration.
Serial No. 86487796

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suppliers.”22 Applicant contends that his competitors identify each separately colored
product in its product line by way of a trademark, and that he is “the first user of the
‘desert tan’ mark in connection with landscape materials.”23 Upon receiving a
registration, he “would, of course, be able to take appropriate action to deal with these
junior trademark uses of the DESERT TAN mark by competitors.” This argument is
unpersuasive. The fact that Applicant’s competitors appear to use many different
names for their landscape products in addition to “desert tan” does not mean that it
or any of these terms are proprietary names and not mere color descriptors. For
example, Applicant supplemented the pages from the website of A. Montaño &
Associates with a page about the company’s “Decorative Rock Santa Fe” product that
contains a chart of its somewhat lengthy product list. The first portion of the chart is
reproduced below:24

22 Applicant’s brief, p. 5, 4 TTABVUE 6.
23 Applicant’s reply brief, p. 2, 7 TTABVUE 3.
24 At http://www.montanosandandgravel.com/decorative-landscaping-rock-san.., attached to
Applicant’s Brief.
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Along with other terms, “Desert Tan” appears in this chart. Applicant contends
these terms are all trademarks. However, in promoting the product, the chart uses
the heading “Decorative Gravel Colors” to identify the listed items, and the text
immediately preceding the chart includes reference to the color of the rock: “The large
selection of different types and colors of decorative rock offered … makes every
landscaping project a breeze.”25 This evidence tends to support, rather than refute,
our finding that the proposed mark is merely descriptive of the color of Applicant’s
natural rocks and stone. Even if it did not, we must decide the case before us on the
basis of what the evidence shows concerning the mark Applicant seeks to register,
not on the basis of whether other words or terms may qualify for registration.
Moreover, the fact that Applicant may be the first, or even only, user of a merely
descriptive designation does not justify registration if the only significance conveyed

25 Id.
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by the term is merely descriptive. See In re Phoseon Tech., Inc., 103 USPQ2d 1822,
1826 (TTAB 2012).
Applicant also asserts that even if third parties are using the term “desert tan”
descriptively, that because some of them are using the term to describe a landscape
product that appears reddish, while others use the term to describe a yellowish “or
even tan” colored stone product, the term “desert tan” does not describe a single,
uniform color, and thus consumers are unable to “immediately identify with any
specificity to what color DESERT TAN refers.”26 While the third-party websites use
the term “desert tan” to identify a mix of stones or rocks having a general tan
appearance with nuances in the color schemes selected, the overall look of the goods
in each instance is that of rocks and stones that are tan in color and resemble the
color of desert sand. Just as the term “tan” designates a spectrum of colors ranging
from light or moderate-yellowish brown to brownish orange, the term “desert tan”
can, without losing its descriptive connotations, denote a range of colors reminiscent
of the tan colors of the desert. In any event, the fact that third parties employ a range
of color shadings for “desert tan” does not mean the term fails to describe to
consumers the color of Applicant’s goods. As stated earlier in this opinion, the
descriptiveness of a term is not decided in the abstract, but rather is decided in
relationship to the goods for which registration is sought. Abcor Dev. Co., 200 USPQ
at 218. Here, Applicant has submitted as a specimen of use of his mark, a photograph

26 Applicant’s Brief, p. 13, 4 TTABVUE 14.
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of a bag of landscaping rock, wherein the rock is shown to be of a tan coloration and
the words “Desert Tan” appear across the front of the bag:

Just as the third-party websites show that decorative rocks and stone commonly
are sold in a variety of color combinations, such as brown, charcoal, gray and tan, and
that the term “desert tan” is used in a similar fashion to describe the color of the
product, Applicant also uses his proposed mark as part of a series, to describe the
color scheme of his line of products of colored landscaping rock. The line of products
is identified by the color descriptors “Desert Tan,” “Crystal White,” “Mesa Red” and
“Rustic Red.”27 Photographs of these products were placed in the record, and
illustrate how “Desert Tan” fits into this pattern:

27 Attached to Applicant’s Response of October 8, 2015.
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When the terms “desert” and “tan” are combined, “the mark as a whole, i.e., the
combination of the individual parts,” does not convey “any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a
prospective purchaser or user” of Applicant’s goods, “because … the combination of
the terms does not result in a composite that alters the meaning of [any] of the
elements … refusal on the ground of descriptiveness is appropriate.” In re Petroglyph
Games, 91 USPQ2d at 1341. Based on the commonly understood meanings of the
words “desert” and “tan,” together with the third-party evidence and Applicant’s own
use, we conclude that consumers familiar with Applicant’s natural rocks and stone
used for landscape decorative purposes would immediately understand, upon seeing
Applicant’s proposed mark, that the goods are natural rocks and stone that are
available in warm, brownish colors ranging from lighter to darker tones. Consumers
will understand “desert tan” to indicate a color within this range of colors, just as
they understand “tan” to indicate a color ranging from yellowish brown to brownish
Serial No. 86487796

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orange. No imagination or thought is required by a prospective purchaser to discern
that a significant characteristic or feature of Applicant’s rocks and stone is that they
are available in such color. There is nothing incongruous about the proposed mark;
rather, the mark as a whole immediately describes a quality, characteristic, or
feature of the goods. See. e.g., Genesee Brewing Co. v. Stroh Brewing Co., 43 USPQ2d
1734, 1743 (2d Cir. 1997) (HONEY BROWN is descriptive of beer that “is sweet,
flavored with honey, and deep brown in color”); Ferro Corporation v. SCM
Corporation, 219 USPQ 346 (TTAB 1983) (TITANIUM YELLOW is generic for “a
calcinated yellow pigment”); In re SCM Corporation, 206 USPQ 538 (TTAB 1979)
(TITANIUM YELLOW is merely descriptive for calcine yellow pigment; affidavit in
support of Section 2(f) showing insufficient).
Accordingly, we find that the proposed mark DESERT TAN is merely descriptive
of Applicant’s “natural rocks and stone used for landscape decorative purposes.”
Decision: The refusal to register is affirmed.