Alliance Concrete Concepts Inc.

Trademark Trial and Appeal Board

Oct 28, 2003

No. 76149957 (T.T.A.B. Oct. 28, 2003)

Mailed: October 28, 2003
Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Alliance Concrete Concepts Inc.
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Serial No. 76149957
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Malcolm L. Moore of Moore & Hansen for Alliance Concrete
Concepts Inc.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______
Before Chapman, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 19, 2000, Alliance Concrete Concepts Inc.
(a Minnesota corporation) filed an application to register
the mark STONESKIRT on the Principal Register for goods
identified as “composite blocks for skirting a mobile home”
in International Class 19. The application is based on
applicant’s claimed date of first use and first use in
commerce of April 28, 2000.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76149957
2
The Examining Attorney required that applicant amend
the identification of goods to indicate their material
composition (suggesting, if accurate: “non-metal composite
blocks for skirting a mobile home”); and refused
registration on the ground that applicant’s mark,
STONESKIRT, is merely descriptive of applicant’s goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
Applicant ultimately amended the identification of
goods to read as follows: “molded, non-metal composite
blocks for forming a decorative wall around the periphery
of a mobile home,” which was accepted by the Examining
Attorney.
When the refusal to register the mark as merely
descriptive was made final, applicant appealed to this
Board, and concurrently therewith filed a request for
reconsideration, which was denied by the Examining
Attorney.
Both applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested by applicant.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
Ser. No. 76149957
3
of the goods or services in connection with which it is
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the term or phrase is being used on or
in connection with those goods or services, and the impact
that it is likely to make on the average purchaser of such
goods or services. See In re Consolidated Cigar Co., 35
USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co.,
20 USPQ2d 1753 (TTAB 1991). That is, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
The Examining Attorney’s position is summarized as
follows in her brief (p. 4):
The goods have the appearance of being
stone. When used on the applicant’s
modular blocks for building walls to
skirt mobile homes, consumers will
immediately understand the ‘STONESKIRT’
Ser. No. 76149957
4
mark to refer to a characteristic and
use of the goods, namely, skirting that
has the appearance of stone.
…
Although the applicant’s goods are not
attached to the mobile home, they are
used to form a border, or outer edge,
of the mobile home. As set forth in
applicant’s identification, the goods
form a decorative wall around the
periphery of a mobile home. Therefore,
the goods are used to create a “skirt”
around a mobile home. (Italics
emphasis in original.)
Further, she contends that “the combination of the
words STONE and SKIRT into ‘STONESKIRT’ creates a compound
term with a meaning identical to that which common usage
would ascribe to those individual words as a compound
term.” (Brief, p. 3).
In support of her position, the Examining Attorney
relies on, inter alia, the following: (i) The American
Heritage Dictionary (Third Edition 1992) definitions of
“skirt” as “An outer edge; a border or margin,” and “stone”
as “Concreted earthy or mineral matter; rock”; (ii)
printouts of excerpted stories retrieved from the Nexis
database and printouts of pages from a few Internet web
sites, all to show that “‘stone skirt’ is a term used in
the construction industry” (Final Office action, p. 2); and
(iii) applicant’s specimen of record and its statement
(response to first Office action, p. 2) that applicant’s
Ser. No. 76149957
5
products have “a roughened surface so as to provide a
natural, stone-like appearance on their exposed faces.”
Some examples of the Nexis database and Internet evidence
are reproduced below:
Headline: 10 New Units in Potomac Get
Two Builders’ Custom Touch
…These dramatic Colonial-style homes
will feature concrete siding with a
brick or stone skirt, a side-loading
three-car garage, a spacious wooden deck
with stairs to the second level of the
house, “The Washington Times,” April 17,
1998;
Headline: Hoosier Company Gets City Hall
Contract
…In fact, to also help get the bid down
to a manageable figure, some items were
deleted from the building plan that
included a stone skirt and arch return,
a decorative fence, and basement
partitions. “South Bend Tribune,”
January 26, 1997;
Headline: Sequoia National Park…
…The buildings are constructed of cedar,
with river-stone skirts, and thus blend
in well with their surroundings… “The
Orange County Register,” April 30, 2000;
The Mobile Home Store
Description: Roomy, Very energy
efficient, All electric w/Central
Air/Heat, Shingle roof, Faux Stone
Skirt, Huge bathtub w/Skylight,
Appliances. www.themobilehomestore.com.;
and
Metroland New Homes
Laurel View Homes, Inc.
…the brick or stone skirt with vinyl
siding…, www.metrolandnewhomes.com.
Ser. No. 76149957
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Applicant essentially argues that “STONE” is not
descriptive of its goods which are molded blocks formed
from a concrete composite, and therefore the mark, in its
entirety, is not descriptive. Applicant acknowledges that
“the term ‘SKIRT’ might arguably be generic and
descriptive.” (Applicant’s response filed September 17,
2001, p. 2.)1 Specifically, applicant contends that the
Examining Attorney has improperly dissected the mark into
its component words; that applicant’s “arbitrary and coined
mark STONESKIRT, when considered properly in its entirety,
does not describe the molded composite block product”
(brief, p. 8)2; that applicant’s goods are man-made blocks,
1 Applicant offered to disclaim the word “skirt.” However,
compound word marks are considered unitary, and the Examining
Attorney would not require a disclaimer. See TMEP §1215.05(a)(3d
ed. 2002).
2 In its brief on appeal (pp. 8-9, applicant, for the first time,
referred to five third-party registrations, and including a typed
listing thereof as an attachment to applicant’s brief. The
Examining Attorney objected to the evidence as untimely; and her
objection is sustained. The record in an application should be
complete prior to the filing of an appeal, and additional
evidence filed after appeal will ordinarily be given no
consideration by the Board. See Trademark Rule 2.142(d).
Moreover, mere typed listings of third-party registrations are
not an appropriate way to enter such material into the record,
and the Board does not take judicial notice of registrations in
the USPTO. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); Cities Service Company v. WMF of America, Inc., 199 USPQ
493 (TTAB 1978); and In re Duofold Inc., 184 USPQ 638 (TTAB
1974). Accordingly, applicant’s references to third-party
registrations have not been considered in making our decision.
Ser. No. 76149957
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not naturally occurring irregularly-shaped stones; and that
the mark is suggestive rather than descriptive of a feature
of the goods.
We agree with the Examining Attorney that the asserted
mark STONESKIRT immediately describes a characteristic or
feature and purpose of the goods on which applicant uses
its mark. The term immediately informs consumers that
applicant’s goods, “molded, non-metal composite blocks for
forming a decorative wall around the periphery of a mobile
home,” consist of faux stone blocks which go around the
periphery of a mobile home. Applicant has stated in the
record, and the specimen shows, that applicant’s molded
composite blocks are made to appear as roughened stone.
The fact that applicant’s molded composite blocks are not
naturally formed stones is not persuasive. Rather, the
fact that applicant intentionally makes its composite
blocks to appear as stone, is sufficient to find the term
STONESKIRT merely descriptive of composite blocks formed to
look like stone, which form a decorative wall (or skirt)
around the base of a mobile home.
When the evidence is viewed in its entirety, we are of
the opinion the term STONESKIRT is no more than a
combination of two merely descriptive terms, with the
composite mark remaining merely descriptive. See In re
Ser. No. 76149957
8
Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987) (SCREENWIPE held generic for wipes that clean
computer and television screens). That is, consumers for
applicant’s molded composite blocks for skirting a mobile
home would readily understand that the term STONESKIRT
refers to faux-stone blocks used to form a decorative wall
(skirt) around the mobile home. As such, the term
immediately and without conjecture or speculation,
describes a significant characteristic or feature and
purpose of applicant’s goods.
The term does not create an incongruous, creative, or
unique mark. To the contrary, STONESKIRT, considered as a
whole, when applied to applicant’s goods, is merely
descriptive of a significant characteristic or feature (the
stone like appearance) and purpose (skirting a mobile home)
of the goods. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987) (APPLE PIE merely descriptive for
potpourri); In re Omaha National Corporation, 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (FIRSTIER (in stylized
form) merely descriptive for banking services); In re
Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE merely descriptive of disposable cryosurgical
probes); In re Copytele Inc., 31 USPQ2d 1540 (TTAB
1994)(SCREEN FAX PHONE merely descriptive of facsimile
Ser. No. 76149957
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terminals employing electrophoretic displays); and In re
Truckwriters Inc., 219 USPQ 1227 (TTAB 1983), aff’d unpub’d
Appeal No. 84-689 (Fed. Cir., November 1, 1984)
(requirement for a disclaimer of the merely descriptive
term “writers” for insurance agency services affirmed).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) of the
Trademark Act is affirmed.