Columbia Insurance Company

Trademark Trial and Appeal Board

May 3, 2021

88243811 (T.T.A.B. May. 3, 2021)

Mailed: May 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Columbia Insurance Company
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Application Serial No. 88243811
_____

Lisa Iverson of Iverson IP for Columbia Insurance Company.

Sara Anne Helmers, Trademark Examining Attorney, Law Office 130,
John Lincoski, Managing Attorney.
_____

Before Taylor, Bergsman and Kuczma, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Columbia Insurance Company (Applicant) seeks registration on the Principal
Register of the mark REPEL and design, reproduced below, for “floor coverings,” in
International Class 27.1

1 Serial No. 88243811 was filed on December 28, 2018, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce. On June 12, 2019, Applicant filed a Statement of Use claiming January 4, 2017
as Applicant’s date of first use of its mark anywhere and in commerce.
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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“The mark consists of a water drop to the left of the literal element ‘REPEL’.”
Applicant disclaims the exclusive right to use the word “Repel.”
The Examining Attorney refused to register Applicant’s mark on the ground that
the specimen does not show the mark used in connection with “floor coverings,” in
International Class 27. Sections 1(a) and 45 of the Trademark Act, 15 U.S.C.
§§ 1051(a) and 1127. In other words, according to the Examining Attorney, the
product identified in the specimens is not a “floor covering,” in International Class
27, within the meaning of the Nice Classification system and the common meaning
of the term.
In this case, neither the spec sheet specimen nor the
product label specimen show use of the mark with the class
27 “floor coverings” identified in the statement of use;
instead, both appear to depict laminate flooring, which is a
class 19 building material.2
I. Relevant prosecution history
In the Statement of Use, Applicant identifies the specimen showing use of the
mark REPEL and design as a “Selling/specification sheet showing the mark used in
connection with the goods.”3 We reproduce below the original specimen (two pages):

2 Examining Attorney’s Brief (9 TTABVUE 4).
3 June 12, 2019 Statement of Use (TSDR 2 and 3).
Citations to the examination record are to the USPTO Trademark Status and Document
Retrieval system (TSDR) by page number in the downloadable .pdf format.
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The Examining Attorney refused to register Applicant’s mark on the ground that
the above-noted “selling/specification sheet” specimen is advertising, not technical
trademark use. In addition, “the application identifies class 27 ‘floor coverings’ while
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the specimen appears to show wood flooring, which would be a building material in
class 19.”4
In response, Applicant explained how retailers use the “selling/specification sheet”
as point-of-sale displays.5 The Examining Attorney accepted the “selling/specification
sheet” as point-of-sale displays, but issued a final refusal on the ground “the specimen
depicts laminate flooring, which is a class 19 building material, and not the class 27
‘floor coverings’ identified in the statement of use.”6
In response, Applicant submitted a “product label” as a substitute specimen
indicating that the product has a “floating – LocNPlace profile.”7 The product label
specimen does not refer to the material composition of the product. We reproduce
below a copy of the product label.

4 July 9, 2019 Office Action (TSDR 1-2). Because the specimen clearly states “Laminate,” it
is not clear why the Examining Attorney refers to wood flooring.
5 January 8, 2020 Response to Office Action (TSDR 4).
6 February 10, 2020 Office Action (TSDR 2).
7 March 17, 2020 Request for Reconsideration (TSDR 2 and 3).
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In response to Applicant’s March 17, 2020 Request for Reconsideration, the
Examining Attorney did not accept or reject the substitute specimen. The Examining
Attorney noted that the Request for Reconsideration included “a document showing
that the applicant’s product uses a ‘Floating – LocNPlace ®’ installation method and
the argument that ‘[a] floating installation indicates ‘floor coverings’ as recited in the
identification of goods.’” (Emphasis added). Even though the substitute specimen or
“document” does not refer to the material composition of the product, based on
excerpts from Applicant’s website advertising REPEL laminate flooring,8 the
Examining Attorney concluded, “that the goods pictured in the specimens are floor
construction material in class 19 and not the identified class 17 floor coverings.”9
II. Basic principles of classification and identification of goods.
A. Classification
Trademark Rule 2.85(a), 37 C.F.R. § 2.85(a), provides:
(a) International classification system. Section 6.1 of this
chapter sets forth the international system of classification
for goods and services, which applies for all statutory
purposes to:
(1) Applications filed in the Office on or after September
1, 1973, and resulting registrations; and
(2) Registrations resulting from applications filed on or
before August 31, 1973, that have been amended to
adopt international classification pursuant to
§ 2.85(e)(3).

8 February 10, 2020 Office Action (TSDR 14-15).
9 April 20, 2020 Denial of Request for Reconsideration (TSDR 2). The Examining Attorney
did not request any information regarding the material composition of the REPEL product
pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), and Applicant does not proffer and
testimony or evidence regarding the material composition of its floor coverings.
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See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) (2018) §§ 1401.02
and 1401.05.
“International trademark classification, and the headings of the international
trademark classes, are established by the 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 (Nice Classification) published annually by the World
Intellectual Property Organization (‘WIPO’) on its website.” TMEP § 1401.02(a). The
Nice Classification includes the Alphabetical List of goods and services providing
guidance as to classification. TMEP §§ 1401.02(c) and 1401.05.
To determine the classification of particular goods and
services, it is necessary to refer to the Alphabetical List,
the class headings of the international classes, and
explanatory notes in the [Nice Classification], published
annually by WIPO on its website. …
As the Alphabetical List was developed to classify goods
and services and not to identify specific goods and services,
most entries in the Alphabetical List will not be sufficiently
definite to use in an identification of goods and/or
services. If such entries are provided as identifications, the
USPTO exercises its discretion to require greater
particularity. See In re Omega SA, 494 F.3d 1362,
83 USPQ2d 1541 (Fed. Cir. 2007).
TMEP § 1401.02(c).
Generally, the USPTO retains the class number designated by the applicant when
it files its application. TMEP § 1401.03(a). If the applicant does not designate a class
number(s) in its application, the USPTO will do so. If the class number(s) indicated
by the applicant is clearly wrong (e.g., goods are classified in a service class), the
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USPTO will change the classification, either prior to or during examination. TMEP
§ 1401.03(b).
Sometimes, a product could be classified in more than one
class. Some products are classified differently depending
on the type of material of which the product is composed or
a particular use of the product. ... The applicant may be
asked for further clarification for classification of goods of
this type during the examination of the application. If the
wording in the identification is broad enough to encompass
more than one class, amendment will be required. See In re
Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir.
2007) (affirming decision that the examining attorney
properly required amendment of the term “chronographs”
in the identification of goods so that proper classification
could be determined). Also, if the examining attorney
determines that the class designated by the applicant is
incorrect, the examining attorney will require
reclassification.
TMEP § 1401.03(a).
Nevertheless, the USPTO generally classifies a product with a plurality of uses or
aspects in a single class. TMEP § 1401.05(c) (citing Ex parte Schatz, 87 USPQ 374
(Comm’r Pats. 1950) (“[W]here an applicant is seeking registration in a single class,
division should not be required when it clearly appears from the description of the
goods that registration is sought on only a single item of merchandise, even though
it is marketed bearing a statement of multiple use.” )).
When classification in multiple classes is appropriate, the
identification must clearly indicate the basis for multiple
classifications with language that is appropriate for the
respective classes. Identical language cannot be used in
multiple classes. …
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 and the record must not
indicate that the product has only one use or aspect. See
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The Procter & Gamble Co. v. Economics Laboratory, Inc.
modified without opinion, 495 F.2d 1360, 181 USPQ 722
(C.C.P.A. 1974); In re International 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 specimen supports multiple classes, the
examining attorney need not require multiple copies of the
specimen. See TMEP § 904.01.
TMEP § 1401.05(c). See also Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d
1771, 1774 (Fed. Cir. 1993) (applicant “has shown use of its mark on only a single
product, a product which, by reason of its various properties and uses can reasonably
be categorized as either a cosmetic or a pharmaceutical and thus be entitled to
registration in more than one classification.”) (citing In re Int’l Salt Co., 166 USPQ
215, 216 (TTAB 1970) (trademark for common salt registrable in two classes because
of multiple uses).
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, * * *”.
Considering these facts in light of the criteria indicated
above, it is concluded that the examiner erred in refusing
to accept the specimens filed as evidence of use of the mark
“TX-10” for “salt for use in chemical industries”.
Int’l Salt Co., 166 USPQ at 216.
The specimen helps the USPTO determine proper classification because it insures
that the identification of goods is accurate. “If the information on the specimen and
the wording of the identification differ, or if some significant characteristic shown in
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the specimen is omitted from the identification, the assigned class number may be
incorrect.” TMEP § 1401.06. For example, the USPTO classifies products according
to their function or purpose. TMEP §§ 1401.02(a) and 1401.07.
When a specimen discloses that use of the identified goods
is limited to a particular function or purpose, classification
may be impacted. For example, orthopedic shoes are
classified in Class 10 as medical apparatus, and ordinary
shoes are classified in Class 25. If the specimen in an
application for “shoes, in Class 25” shows that the goods
are orthopedic shoes, the identification and classification
must be amended to “orthopedic shoes, in Class 10.” If the
specimen indicates that the goods are promoted for
industrial use only, this should be reflected in the
identification when it affects the designation of the correct
class. For example, detergents for industrial use are
classified in Class 1, not in Class 3 where most other
detergents are classified.
TMEP § 1401.07.
B. Identification of goods
A written application must specify the particular goods or services on or in
connection with which the applicant uses, or has a bona fide intention to use, the
mark in commerce. Sections 1(a)(2) and 1(b)(2) of the Trademark Act, 15 U.S.C.
§§ 1051(a)(2) and 1051(b)(2); Trademark Rule 2.32(a)(6); 37 C.F.R. § 2.32(a)(6). The
purpose of the identification of goods is to provide an understandable description of
the goods, which an applicant accomplishes by using the common commercial name
for the goods. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1402.01
(2018) (“[A]n identification [of goods] should set forth the common name of a good or
service using terminology that is generally understood.”). See also In re Sones,
590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (quoting 3 MCCARTHY ON
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TRADEMARKS AND UNFAIR COMPETITION § 19:48 (4th ed. 2008) (“The applicant’s
identification of goods … should identify the goods by their common, ordinary name
so that the average person would recognize what they are.”); In re Thor Tech, Inc.,
85 USPQ2d 1474, 1477 (TTAB 2007) (“park trailer” held to be an acceptable
identification, where the applicant’s evidence showed that it is a term of art generally
understood by those in the industry and by consumers as a designation for a type of
recreational vehicle).
The language used to describe goods and/or services should
be understandable to the average person and should not
require an in-depth knowledge of the relevant field. An
identification may include terms of art in a particular field
or industry that are definite and limited to a single class,
but, if these terms are not widely understood by the general
population, the identification should include an
explanation of the specialized terminology.
The identification of goods and/or services must be specific,
definite, clear, accurate, and concise. …
The applicant must identify the goods and services
specifically to provide public notice and to enable the
USPTO to classify the goods and services properly and to
reach informed judgments concerning likelihood of
confusion under 15 U.S.C. § 1052(d). An identification that
fails to identify the goods and services with specificity is
indefinite, either because the nature of the goods or
services is not clear or because the wording is so broad that
it may include goods or services in more than one class. The
USPTO has discretion to require the degree of particularity
deemed necessary to clearly identify the goods and/or
services covered by the mark. In re Omega SA, 494 F.3d
1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
TMEP § 1402.01.

“An identification is unacceptable if it is inconsistent with the goods or services
indicated by the specimens or if the ordinary meaning of the identification language
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is at variance with the goods or services evidenced by the specimens or any other part
of the record.” TMEP § 1402.05.
[F]or the purpose of determining the scope of an
identification, the examining attorney should consider the
ordinary meaning of the wording apart from the class
number designation. The class number (see TMEP
§§ 1401.03 et seq.), whether inserted by the applicant or the
USPTO, does not limit the scope of permissible
amendments. 37 C.F.R. § 2.85(f). If the applicant
designates the class by number, this information may be
weighed with other factors for the benefit of the applicant
in determining the scope of permissible amendments.
TMEP § 1402.07(a).
III. The meaning of “floor coverings.”
We turn first to the identification of goods to analyze the products that are the
subject of this classification dispute. In this appeal, the identification of goods is “floor
coverings.” There is no issue regarding the accuracy of Applicant’s identification of
goods.
First, Applicant submits that the goods are appropriately
identified as “floor coverings” in International Class 27.
While the Examining Attorney attempts to pigeon-hole the
goods as building materials in International Class 19,
“floor coverings” clearly and concisely identifies Applicant’s
goods. In particular, the common understanding of “floor
covering” by consumers and the relevant industry is the
ultimate top layer of the flooring layers. The products
shown in the specimens [a floating, laminate floor]
submitted by the Applicant is exactly as defined – the
ultimate top layer of all the flooring layers.10

10 Applicant’s Brief, p. 6 (6 TTABVUE 7). A declaration by Applicant or another person
competent to testify about how the flooring industry and consumers use and perceive the
terms “floor,” “flooring,” and “floor coverings” would have been useful to corroborate or
supplement the evidence of record and more persuasive than counsel’s explanation of what
the evidence shows.
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The following definitions help us identify the common commercial name for the
product at issue:
● The RANDOM HOUSE UNABRIDGED DICTIONARY (2021) defines “floor,” inter alia,
as “that part of a room, hallway, or the like, that forms its lower enclosing surface
and upon which one walks.”11
● The COLLINS DICTIONARY (collinsdictionary.com/us) defines “flooring” as “a
material that is used to make the floor of a room.”12
● The RANDOM HOUSE UNABRIDGED DICTIONARY (2021) defines “floor covering” as
a “material, especially a nonfabric material, as linoleum, vinyl tile, or ceramic tile,
used to cover a floor.”13
● “Floor covering,” ENCYCLOPAEDIA BRITANNICA (britannica.com) defines “floor
covering” as follows:
Floor covering, material made from textiles, felts, resins,
rubber, or other natural or man-made substances applied
to or fastened to, or laid upon, the level base surface of a
room to provide comfort, durability, safety, and decoration.
Such materials include both handmade and machine-made
rugs and carpets and smooth-surfaced floor coverings. …

11 Dictionary.com accessed April 19, 2021. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
12 February 10, 2020 Office Action (TSDR 7).
13 Dictionary.com accessed April 19, 2021. We note that COLLINS DICTIONARY offers a British
and an American version. The “floor covering” entry by the Examining Attorney (February
10, 2020 Office Action (TSDR 8)) is from the British version, which does not necessarily
evidence perceptions of the term by consumers in the United States. See In re Manwin/RK
Collateral Trust, 111 USPQ2d 1311, 1313 n.18 (TTAB 2014) (finding such definitions from
the British version of the COLLINS DICTIONARY to be “of little or no probative value”).
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Smooth-surfaced coverings generally adhere to a subfloor
and are manufactured as sheet goods or tiles.14
● Washington [State] Administrative Code, Title 296, Section 296-17A-0502-04
applies to the installation or removal of floor coverings. It defines floor coverings as
including, but not limited to, carpet, vinyl, laminate, tile, terrazzo, or parquet.15
We find that Applicant’s product as displayed in the specimens of use meets the
definition of a floor covering.16
IV. Public use of the terms “floor,” “flooring,” and “floor coverings.”
There is little evidence that those in the flooring or floor covering industries
adhere to the definitions of the applicable terms. In fact, they use the terms
interchangeably. For example:
● The specimen supporting Registration No. 5867633 for the mark ECOSYTEM
for “resilient floor coverings,” in International Class 27, shows ECOSYSTEM used to
identify a smooth-surfaced covering in the nature of a sheet or tile visually similar to
the product that Applicant displays in its original specimen. The ECOSYSTEM
specimen refers to the product as “commercial flooring.”17

14 February 10, 2020 Office Action (TSDR 9).
15 August 10, 2020 Request for Reconsideration (TSDR 503).
16 The Examining Attorney does not contest the fact that Applicant’s laminate flooring is a
floor covering. “The issue at hand is not whether products made of laminate or vinyl can fall
into category of ‘floor coverings,’ but whether the specific products displayed in applicant’s
specimens are class 27 floor coverings (as identified in the application) or whether they are
class 19 building materials.” September 12, 2020 Denial of Request for Reconsideration
(TSDR 2).
17 January 8, 2020 Response to Office Action (TSDR 18-20).
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● A blog “What is Laminate Made Of?” (November 6, 2017) posted on The Spruce
website (thespruce.com) refers to products visually similar to the products displayed
in Applicant’s and the ECOSYSTEM specimen as “laminate flooring.”18
● An article “Floating Flooring Review: Pros and Cons” posted on The Spruce
website (February 12, 2020) mixes the use of the terms “floor,” “flooring,” and “floor
covering.”
Flooring installations in which the flooring material
“floats” over the subfloor and underlayment have become
increasingly popular for many types of floor coverings. The
term “floating floor” does not refer to a type of flooring
material, but rather to a method of installation that can be
used with a variety of materials, including laminates,
engineered hardwood, and luxury vinyl flooring.19
● An excerpt from Applicant’s website (shaw.com) refers to the REPEL “water
resistant laminate” as a “floor” and “flooring.”20
● The BuildDirect website (builddirect.com) refers to products similar to the
product at issue as a “floor” and “flooring.” In addition, the website article explains
“Laminate flooring is generally made up of various layers fused together to form a
flooring board.”21
● The DIY Network website (diynetwork.com) also refers to products similar to
the products at issue as both a floor and flooring.

18 February 10, 2020 Office Action (TSDR 10). The USPTO ACCEPTABLE IDENTIFICATION OF
GOODS AND SERVICES MANUAL places “laminate flooring” in International Class 19. Id. at
TSDR 13.
19 April 20, 2020 Denial of a Request for Reconsideration (TSDR 6-7).
20 February 10, 2020 Office Action (TSDR 14-15).
21 April 20, 2020 Denial of a Request for Reconsideration (TSDR 3).
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How to Install a Laminate Floating Floor
Installing laminate flooring is a snap literally. A laminate
floor is a “floating floor,” meaning it is not fastened directly
to the subfloor. It can be installed over any other tightly
bonded flooring, making it ideal for retrofits.22
● The Lumber Liquidators website (lumberliquidators.com) (June 22, 2012)
discusses floating floors.
What is a Floating Floor?
___
[A] floating floors [sic] generally click or snap together and
float above the subfloor instead of being nailed or glued into
place. Floating floors make an excellent choice over radiant
heat, concrete, linoleum, and to remove or correct surfaces.
___
All of Lumber Liquidators laminate floors, many of vinyl
wood plank flooring, and most of our engineered hardwood
floors can be used as floating floors.23
● “Stats 2019: Laminate faces headwinds head-on,” Floor Covering Weekly
website (floorocoveringweekly.com) (August 5, 2020) notes “Laminate flooring
accounted for an estimated 3.2 percent of total floor coverings dollar sales and 4
percent total square foot sales in 2019.”24
The USPTO follows suit by registering products similar to Applicant’s products as
floor coverings. Applicant proffered copies of 139 registrations for, inter alia, floor
coverings where the USPTO purportedly accepted the same type of specimens as the

22 April 20, 2020 Denial of a Request for Reconsideration (TSDR 4).
23 April 20, 2020 Denial of a Request for Reconsideration (TSDR 5).
24 August 10, 2020 Request for Reconsideration (TSDR 507).
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Applicant has submitted.25 The following registrations and their associated
specimens are representative:
● Registration No. 4974217 for the mark OSSET ROCK for “non-metal flooring;
vinyl flooring,” in International 19, and “floor coverings,” in International Class 27,
has the same specimen for both classes.26

25 August 10, 2020 Request for Reconsideration (TSDR 24-487). Not all of the third-party
registrations are probative inasmuch as the specimen may display the mark on a product
other than a non-textile floor covering (e.g., Registration No. 5963409 for the mark LIVING
ENVIRONMENTS for “floor coverings,” in International Class 27, where the specimen show
use of the mark on carpet). August 10, 2020 Request for Reconsideration (TSDR 7-8).
26 August 10, 2020 Request for Reconsideration (TSDR 33-35). See also the registrations listed
below with the same or similar goods in both classes and one specimen:
● Registration No. 4974218 for the mark PICKWICK LANDING (TSDR 36-38), Registration
No. 4974219 for the mark PROEDGE (TSDR 39-41) for the same goods and one specimen for
both classes;
● Registration No. 5162579 for the mark COLORWIN for “non-metal flooring; vinyl flooring,”
in International Class 19, and “floor coverings; vinyl floor coverings,” in International Class
27, and the same specimen for both classes (TSDR 55-56); Registration No. 5407930 for the
mark DECORART for the same goods and one specimen for both classes (TSDR 57-58).
● Registration No. 5530994 for the mark NATURAL PERSONALITY for “floors, not of metal;
laminate flooring; tile flooring, not of metal; vinyl flooring,” in International Class 19, and
“floor coverings; hard surface coverings for floors; vinyl floor coverings,” in International
Class 27, with specimens showing one product (TSDR 77-81).
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● Registration No. 2115966 for the mark BRUCE for “hard surface covering for
floors,” in International Class 27.27

● Registration No. 5109802 for the mark FAST CLICK for “coverings for existing
floors; floor coverings; floor coverings made of vinyl; vinyl floor coverings,” in
International Class 27.28

27 August 10, 2020 Request for Reconsideration (TSDR 42-43).
28 August 10, 2020 Request for Reconsideration (TSDR 168-269). The USPTO ACCEPTABLE
IDENTIFICATION OF GOODS AND SERVICES MANUAL places “vinyl floor coverings” in
International Class 27, but “vinyl flooring” in International Class 19.
There is little difference between laminate and vinyl flooring. See “What is the difference
between laminate flooring and vinyl?,” The Flooring Girl website (theflooringgirl.com)
(August 20, 2020 Request for Reconsideration (TSDR 497).
There seems to be a lot of confusion between laminate flooring
and vinyl flooring.
Here in Westchester NY, many customers get these terms mixed
up … they say vinyl when they mean laminate or laminate when
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● Registration No. 5823358 for the mark UNINTERRUPTED for “vinyl floor
coverings,” in International Class 27.29

they mean vinyl. So, part of my job is to help clarify which type
of flooring they mean as well as which type of flooring makes the
most sense for them.
The main difference is that laminate flooring is a floating floor that is not waterproof whereas
installers glue down vinyl flooring and vinyl flooring is waterproof or water resistant. Id. at
TSDR 498 and 500.

See also Registration No. 5109646 for the mark UNISNAP for the same goods and a similar
specimen (TSDR 170-171).

29 August 10, 2020 Request for Reconsideration (TSDR 129-130). The specimen displays a
product similar to the product displayed in Applicant’s original specimen. See also the
following Registrations having specimens displaying a product similar to the product in
Applicant’s original specimen:
● Registration No. 5886131 for the mark CHROMATRU for “vinyl floor covering, sold in a
roll or tile form, including a digital image layer incorporated within such vinyl floor covering,”
in International Class 27 (TSDR 136-137).
● Registration No. 5356221 for the mark SPRK for “flooring products, namely, hard solid
vinyl coverings for floors,” in International Class 27 (TSDR 161-164).
● Registration No. 5566318 for the mark NATURAL CREATIONS for “vinyl floor coverings,”
in International Class 27 (TSDR 165-167).
● Registration No. 5413395 for the mark SERENBE for “hard solid vinyl coverings for floors,”
in International Class 27 (TSDR 174-175).
● Registration No. 4864669 for the mark AVA for “hard solid vinyl coverings for floors,” in
International Class 27 (TSDR 189-190).
● Registration No. 4864570 for the mark NOVALAY for “hard solid vinyl coverings for floors,”
in International Class 27 (TSDR 191-192).
● Registration No. 4864473 for the mark BIRKDALE for “hard solid vinyl coverings for
floors,” in International Class 27 (TSDR 193-194).
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The specimen submitted with Registration No 4544364 for the mark NOVACLIC
and design for “vinyl floor covering,” in International Class 27, is the “Floating
Luxury Vinyl Tile and Plank Installation Guide.”30 It refers to the product as “floating
solid vinyl floors” and “flooring.”31 “NovaClic™ FD is designed to be a ‘floating’ floor
installation.”32
The Examining Attorney dismisses the probative value of the proffered third-
party registrations and specimens arguing that the USPTO must decide each case on

● Registration No. 4864328 for the mark SNSE for “hard solid vinyl coverings for floors,” in
International Class 27 (TSDR 195-196).
● Registration No. 4864319 for the mark STYL for “hard solid vinyl coverings for floors,” in
International Class 27 (TSDR 200-201).
● Registration No. 4614334 for the mark ENVEE for “floor coverings, namely, flooring made
of vinyl,” in International Class 27 (TSDR 221-225).
● Registration No. 4506323 for the mark PREP, PLACE, PRESS, DONE for “floor coverings;
vinyl floor coverings,” in International Class 27 (TSDR 226-229).
30 August 10, 2020 Request for Reconsideration (TSDR 208).
31 Id. at TSDR 209.
32 Id. at TSDR 211.
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its own merits “based on the current evidentiary record.”33 The Examining Attorney
continues contending that even if some of the goods in the prior registrations have
some characteristics similar to those in the application at issue, the issuance of those
registrations does not bind the USPTO because the USPTO must examine all
applications for compliance with the rules even if the USPTO mistakenly issued
similar registrations suffering from the same defect.34 The proffered third-party
registrations and the accompanying specimens, however, are part of the evidentiary
record. While they are not probative to show how we must decide this appeal, they
are probative to show how other applicants and the USPTO interpret and apply the
term “floor coverings.” Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (“A real evidentiary value of third party
registrations per se is to show the sense in which … a mark is used in ordinary
parlance.”) (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90
(4th ed. 2015); Institut National des Appellations D’Origine v. Vintners International
Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party
registrations show the sense in which a word is used in ordinary parlance and that a
particular term has descriptive significance as applied to certain goods or services);
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151,
153 (CCPA 1978) (“we find no error in the citation of nine third-party registrations
‘primarily to show the meaning of * * * [‘zing’] in the same way that dictionaries are

33 Examining Attorney’s Brief (9 TTABVUE 10).
34 Examining Attorney’s Brief (9 TTABVUE 10-11).
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used.’”); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-
party registrations can be used in the manner of a dictionary definition to illustrate
how a term is perceived in the trade or industry”).
We find that the terms floor, flooring, and floor covering are interchangeable.
V. Classification
The Nice Classification heading and notes for International Class 27
(wipo.int/classifications/nice) state that Class 27 goods includes “materials for
covering existing floors” and excludes floors, floorings, and floor boards.
Class 27
Carpets, rugs, mats and matting, linoleum and other
materials for covering existing floors; wall hangings, not of
textile.
Explanatory Note
Class 27 includes mainly products intended as coverings to
previously constructed floors and walls.35

35 The record shows that laminate floors are “intended as coverings for previously constructed
floors.” For example,
● “Stats 2019: Laminate faces headwinds head-on,” Floor Covering Weekly website
(floorocoveringweekly.com) (August 5, 2020) (August 10, 2020 Request for Reconsideration -
TSDR 508) (“laminate’s unique ability to float above existing floors ‘makes it an excellent
DIY choice without demolition involved.’”).
● “What is the difference between laminate flooring and vinyl?,” The Flooring Girl website
(theflooringgirl.com) (August 10, 2020 Request for Reconsideration - TSDR 498) (“Laminate
flooring is usually around 3/8 of an inch and can often be placed on top of existing flooring –
whether it’s concrete, tile, or even hardwood (assuming the floor underneath is stable and
even.”)).
●“The Benefits of a Floating Laminate Floor,” BuildDirect website (builddirect.com) April 20,
2020 Denial of Request for Reconsideration - TSDR 3) (“[Floating laminate floors] can be
easily installed over many different types of existing floors, whatever materials the subfloor
is made of. Whether it is plywood, concrete slab, or OSB, a floating laminate floor can be
installed by simply floating the floorboards over the original flooring or subfloor.”).
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This Class includes, in particular:
- automobile carpets;
- mats being floor coverings, for example, bath mats, door
mats, gymnastic mats, yoga mats;
- artificial turf;
- wallpaper, including textile wallpaper.
This class does not include, in particular:
- floors, floorings and floor tiles of metal (Cl. 6) and not of
metal (Cl. 19), wooden floor boards (Cl. 19);
- electrically heated carpets (Cl. 11);
- geotextiles (Cl. 19);
- mats for infant playpens (Cl. 20);
- wall hangings of textile.36

● “How to Install a Laminate Floating Floor,” DIY Network (diynetwork.com) (April 20, 2020
Denial of Request for Reconsideration - TSDR 4) (“A laminate floor is a ‘floating floor meaning
it is not fastened directly to the subfloor. It can be installed over any other tightly bonded
flooring, making it ideal for retrofits.”).
● “What is a Floating Floor?” Lumber Liquidators website (lumberliquidators.com) (April 20,
2020 Denial of Request for Reconsideration - TSDR 5) (“[A] floating floors [sic] generally click
or snap together and float above the subfloor instead of being nailed or glued into place.
Floating wood floors make an excellent choice over radiant heat, concrete, linoleum, and hard
to remove or correct surfaces. … Floating floors are great because if they are the click variety,
they can be pulled up an[d] used somewhere else. All of Lumber Liquidators laminate floors
… can be used as floating floors.”).
● “Floating Flooring Review: Pros and Cons,” The Spruce website (thespruce.com) (February
12, 2020) (April 20, 2020 Denial of Request for Reconsideration - TSDR 6) (“Flooring
installations in which the flooring material ‘floats’ over the subfloor and underlayment have
become increasingly popular for many types of floor coverings … including laminates.”).
36 February 10, 2020 Office Action (TSDR 5). See also TMEP § 1401.02(a) (Class 27 (Floor
Coverings) Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors; wall hangings (non-textile). Explanatory Note Class 27 includes mainly
products intended to be added as furnishings to previously constructed floors and walls. This
Class does not include, in particular: wooden flooring (Cl. 19)).
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As noted above, Nice Classification provides that “floor coverings” in International
Class 27 include other materials for covering existing floors but excludes floors,
flooring, and non-metal floor tiles, even though contractors/installers/home owners
use floors, flooring, and non-metal floor tiles to cover existing floors.
The application of the Nice Classification is not a beacon of clarity or consistency.
On the one hand, laminate flooring, like linoleum and vinyl, is a material for covering
existing floors. On the other hand, the “Explanatory Note” advises that International
Class 27 “does not include floors, floorings and floor tiles …. not of metal (Cl. 19).”
However, linoleum is a floor or flooring not of metal37 and USPTO ACCEPTABLE
IDENTIFICATION OF GOODS AND SERVICES MANUAL places linoleum, linoleum for use on
floors, and linoleum for covering existing floors in International Class 27. Likewise,
the USPTO Acceptable Identification of Goods and Services Manual places “vinyl
floor coverings” in International Class 27, and “vinyl flooring” in International Class
19. However, laminate flooring is a floor or flooring not of metal that
contractors/installers/home owners use to cover existing floors but USPTO
ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL places it in

37 Linoleum: MERRIAM-WEBSTER DICTIONARY (merriam-webster.com) (accessed April 21,
2021) (“a floor covering made by laying on a burlap or canvas backing a mixture of solidified
linseed oil with gums, cork dust or wood flour or both, and usually pigments.”);
Dictionary.com derived from THE RANDOM HOUSE UNABRIDGED DICTIONARY (2021) (accessed
April 21, 2021) (“a hard, washable floor covering formed by coating burlap or canvas with
linseed oil, powdered cork, and rosin, and adding pigments to create the desired colors and
patterns.”); ENCYCLOPAEDIA BRITANNICA (accessed April 21, 2021) (“Linoleum, smooth-
surfaced floor covering made from a mixture of oxidized linseed oil, gums and resins, and
other substances, applied to a felt or canvas backing.”); Floor covering: ENCYCLOPAEDIA
BRITANNICA (accessed April 21, 2021) (“Smooth-surfaced floor coverings include linoleum,
rubber floor coverings, cork tile, asphalt tile, printed felt base, and the vinyl types.”).
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International Class 19, and apparently not in International Class 27, even though
laminate flooring is an alternative to vinyl and linoleum flooring and floor coverings
and it is used to cover existing floors.
As specifically noted in the Lumber Liquidators website (lumberliquidators.com)
(note 23 above), a laminate floating floor makes an excellent choice over linoleum.38
The USPTO places linoleum in International Class 27 because it is a material for
covering existing floors. However, a laminate floating floor used to cover a linoleum
floor, is not a material for covering existing floors in International Class 27 because
it is a non-metal flooring in International Class 19.
We turn to the TMEP for assistance. TMEP § 1401.02(a) provides, in pertinent
part,
GENERAL REMARKS
The indications of goods or services appearing in the class
headings are general indications relating to the fields to
which, in principle, the goods or services belong. The
Alphabetical List should therefore be consulted in order to
ascertain the exact classification of each individual product
or service.
Goods
If a product cannot be classified with the aid of the List of
Classes, the Explanatory Notes and the Alphabetical List,
the following remarks set forth the criteria to be applied:
(a) A finished product is in principle classified according to
its function or purpose. If the function or purpose of a
finished product is not mentioned in any class heading, the
finished product is classified by analogy with other
comparable finished products, indicated in the
Alphabetical List. If none is found, other subsidiary

38 April 20, 2020 Denial of Request for Reconsideration - TSDR 5.
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criteria, such as that of the material of which the product
is made or its mode of operation, are applied.
(b) A finished product which is a multipurpose composite
object (e.g., clocks incorporating radios) may be classified
in all classes that correspond to any of its functions or
intended purposes. If those functions or purposes are not
mentioned in any class heading, other criteria, indicated
under (a), above, are to be applied.
The International Class 27 Class heading “Floor Coverings” includes “Carpets,
rugs, mats and matting, linoleum and other materials for covering existing
floors; wall hangings, not of textile.” (Emphasis added). Floating, laminate flooring
falls within the penumbra of “other materials for covering existing floors.” There is
nothing in the International Class 27 to preclude a floating, laminate floor from being
a Class 27 product. In this regard, we note the USPTO classifies “vinyl flooring” in
International Class 19 and “vinyl floor coverings” in International Class 27.
As noted above, “a finished product is in principle classified according to its
function or purpose.” Contractors, installers, and homeowners use floating, laminate
flooring, inter alia, to cover existing floors. Because a floating, laminate floor is a non-
metallic material that contractors, installers and homeowners may use to cover an
existing floor, it meets the criteria of a Class 27 product.
We find there is nothing in the Nice Classification prohibiting the classification of
a floating, laminate floor used to cover an existing floor from falling within
International Class 27.
VI. Conclusion
In assessing whether the specimens of use show the REPEL and design mark used
for “floor coverings,” in International Class 27, we make the following finding of facts:
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● Under certain circumstances an identification of goods may be properly
classified in more than one International Class.
● Applicant’s product as displayed in the specimens of use meets the definition of
a floor covering.
● People in the flooring industry use the terms “floor,” “flooring,” and “floor
coverings” interchangeably.
● The Nice Classification is unclear as to whether floor coverings encompass
laminate flooring in International Class 27. The Nice Classification states that goods
in International Class 27 include “materials for covering existing floors” and the
evidence shows that laminate flooring is a floor covering that may be used to cover
existing floors. However, the “Explanatory Notes” provide that products in
International Class 27 do not include floors, floorings and floor tiles not of metal (Cl.
19), even though linoleum, linoleum for use on floors, and linoleum for covering
existing floors classified in International Class 27 are floorings not made of metal.
Likewise, the USPTO classifies vinyl floor coverings that are analogous to laminate
floor coverings in International Class 27.
● Applicant’s second specimen does not refer to a material composition and
indicates that it has a floating, lock in place profile inferring that it may be used to
cover an existing floor.
Therefore, we find that Applicant’s second specimen shows the REPEL and design
mark used to identify “floor coverings,” in International Class 27.
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Decision: The refusal to register Applicant’s mark on the ground that the
specimen does not show the mark used in connection with the identified goods is
reversed. Accordingly, the application will proceed to publication.