Duro-Last, Inc.

Trademark Trial and Appeal Board

Nov 28, 2011

No. 77835207 (T.T.A.B. Nov. 28, 2011)

Mailed: November 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Duro-Last, Inc.
________

Serial No. 77835207
_______

Richard W. Hoffmann of Reising, Ethington PC for Duro-Last,
Inc.

Kevon L. Chisolm, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Wellington, Shaw, and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Duro-Last, Inc. filed an application to register the
mark SOLAR-READY, in standard character format, for
“roofing membranes” in International Class 19.1
Registration was refused on the ground that the
proposed mark is merely descriptive of the identified
goods. Section 2(e)(1) of the Lanham Act, 15 U.S.C.

1 Application Serial No. 77835207, filed September 25, 2009,
based on applicant’s stated intent to use the mark in commerce.
Section 1(b) Trademark Act.

THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Serial No. 77835207
2
§1052(e)(1). When the refusal was made final, applicant
appealed. Both applicant and the examining attorney filed
briefs, including a reply brief from applicant.
The examining attorney, in his brief, contends that
SOLAR-READY is merely descriptive of roofing membranes
because it is “a common descriptive term for roofing that
use (sic) special technology, devices and equipment to
prepare roofing membranes for solar energy.” Brief, p. 2.
In support, he submitted: a copy of an online article and
printouts from websites of several companies, including
applicant, involved in the solar roof industry.2
Applicant asserts that the evidence submitted by the
examining attorney does not establish that its proposed
mark is descriptive of the identified goods. Applicant
also takes issue with examining attorney’s explanations in
the office actions regarding the descriptiveness of the
mark. Ultimately, in addressing the examining attorney’s
stated reason in his brief as to why applicant’s mark is
descriptive, applicant references the evidence and
contends:
[E]ach of those systems relied upon include mounting
structure for photovoltaic cells or electrical
components or the photovoltaic cells themselves. That
is, there is something in addition to merely a roof

2 Attached to office actions dated January 5, 2010 and July 21,
2010.
Serial No. 77835207
3
covering that comprises part of the system. None of
the evidence supplied by the Examining Attorney
support (sic) the conclusion that ‘solar ready’ is
merely descriptive for roofing membranes themselves.

Reply brief, p. 2.

A term is merely descriptive if it immediately conveys
information concerning a significant quality,
characteristic, function, feature or purpose of the goods
with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods for
which registration is sought and the context in which the
term is 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). In other words, the issue is
whether someone who knows what the goods are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
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 UPSQ 365, 366 (TTAB 1985). A
mark that informs the consumer of the identified goods’
intended use or key feature is merely descriptive. See,
Serial No. 77835207
4
e.g., In re Clover Club Foods Co., 173 USPQ 693 (TTAB
1972)(READY TO EAT found “highly descriptive” of food
products which need no further preparation).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Based on the evidence of record, we find that
applicant’s proposed mark SOLAR-READY is merely descriptive
of the identified goods, i.e., roofing membranes. The term
“solar-ready,” when used in connection with roofing
products, immediately describes a key feature or purpose of
roofing products, namely, that they are designed to be used
in a solar roof system or a roof system that will
accommodate future installation of solar energy panels.
Applicant’s own website touts the ability of its roofing
products to “accommodate[] any new penetrations that may be
required – whether for solar systems or other rooftop
equipment.” Indeed, it advertises to those who are looking
to replace their roof and are “not yet in the market for PV
Serial No. 77835207
5
[photovoltaic cells or solar panels]” because “the
formulation of [applicant’s] membrane will allow for the
application of solar equipment down the road.” Notably,
applicant itself uses the term “solar-ready” in a
descriptive manner. The portion of its website that is in
the record ends the text with, “[b]y installing a Duro-Last
roof, you are uniquely ‘solar-ready’.” Although applicant
uses quotation marks around its proposed mark shown in
lower-case lettering, these quotation marks do not suffice
to convert this descriptive use into a trademark use.
As to the news article submitted by the examining
attorney, it is titled “Solar-ready roof installed under
budget at Somerset Highway Department” and describes the
new roof of a municipal building as having “all of the
equipment needed to install solar panels” or “ready to
receive solar panels.” Several of the third-party websites
also describe a “solar-ready roof” as one that has been
built specifically to accommodate a PV system to harness
solar energy. For instance, the Single Source website
(www.singlesourceroofing) describes the company as “a
leading designer of solar-ready and traditional roofing
systems” and, with respect to the “solar-ready roofing
systems...clients can buy the roof today and install (plug
and play) PV as the policy evolves in their area.” The
Serial No. 77835207
6
fact that the “solar-ready” roofing systems described in
these third-party websites do not reference the actual
roofing membrane materials is not crucial. Rather, the
evidence shows that term “solar-ready” is simply used
broadly to describe a roof or roofing system designed to
accommodate PV (or solar panels) and may be constructed
with different materials, including roofing membranes.
Consequently, consumers of roofing membranes will
immediately understand the merely descriptive significance
of applicant’s proposed mark.
In sum, we have no trouble concluding that applicant’s
proposed mark SOLAR-READY conveys to potential consumers a
significant feature and purpose of applicant’s identified
goods without the need for any multi-stage reasoning.
Accordingly, the mark is merely descriptive of the
identified goods.
Decision: The refusal to register is affirmed and
registration to applicant is refused.