FSG Flooring Sales Group, LLC

Trademark Trial and Appeal Board

Mar 18, 2003

No. 76238600 (T.T.A.B. Mar. 18, 2003)

Paper No. 9
TJQ
Mailed: 3/18/03
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re FSG Flooring Sales Group, LLC
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Serial No. 76/238,600
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Keith D. Grzelak of Wells St. John for applicant.
Khanh Le, Trademark Examining Attorney, Law Office 104
(Michael Hamilton, Managing Attorney).
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Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by FSG Flooring Sales Group,
LLC to register the mark GREAT FLOORS (“FLOORS” disclaimed)
for “floor coverings of ceramic tile” (in International
Class 19) and “floor coverings of vinyl, linoleum, wood,
stone, marble, granite, plastic, and artificial stone;
carpets; rugs; floor mats and floor matting of vinyl,
textile and rubber.”1
1 Application Serial No. 76/238,600, filed April 5, 2001,
alleging a bona fide intention to use the mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/238,600
2
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, if used in connection with
applicant’s goods, would be merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Applicant argues, in urging that the refusal to
register be reversed, that the mark is just suggestive. In
connection with its argument, applicant has relied upon
seven third-party registrations and one third-party
application of marks which are combinations of the word
“GREAT” with other terms; according to applicant, the
registered marks issued on the Principal Register.2 Thus,
applicant contends, the Examining Attorney’s refusal herein
is inconsistent with the state of the register. Applicant
2 Applicant did not submit copies of the registrations. A mere
listing of third-party registrations is generally insufficient to
make them of record. In re Duofold Inc., 184 USPQ 638 (TTAB
1974). The Examining Attorney, however, considered the
registrations as if properly made of record. One disadvantage of
such practice is that in the absence of copies of such
registrations, the Board is unaware of certain information
pertaining to the registrations. See: Beech Aircraft Corp. v.
Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB 1986)[the Board does
not take judicial notice of registrations]. This disadvantage is
highlighted by the fact that the Examining Attorney later pointed
out that one registration includes a disclaimer, while another
issued pursuant to a claim of acquired distinctiveness under
Section 2(f). Nonetheless, in view of the Examining Attorney’s
consideration of the third-party registrations, we likewise have
considered the evidence in reaching our decision.
Ser No. 76/238,600
3
asserts that its examples of third-party registrations are
“more germane” to this appeal than are the Examining
Attorney’s examples.
The Examining Attorney maintains that the involved
mark is laudatorily descriptive, that is, the mark
immediately conveys the meaning that applicant’s floors are
superior in quality. The Examining Attorney submitted
dictionary meanings of the words “great” and “floor.” Also
made of record by the Examining Attorney are ten third-
party registrations showing “GREAT” marks registered on the
Supplemental Register or with disclaimers of the word
“GREAT” on the Principal Register. In addition, as noted
earlier, the Examining Attorney points out that one of the
registrations relied upon by applicant includes a claim of
acquired distinctiveness, and another includes a disclaimer
of the word “great.”
It is well settled that a term is considered to be
merely descriptive of services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes a quality, characteristic or feature thereof or
if it directly conveys information regarding the nature,
function, purpose or use of the services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
Ser No. 76/238,600
4
properties or functions of the services in order for it to
be considered to be merely descriptive thereof; rather, it
is sufficient if the term describes a significant attribute
or feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the services for which registration is sought.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The word “great” is defined as “superior in quality or
character; very good; first rate.” The term “floors” means
“the surface of a room on which one stands.” The American
Heritage Dictionary of the English Language (3rd ed. 1992).
There can be no dispute that “great” is a laudatory term
which attributes superior quality or excellence to a
product. The involved mark combines this laudatory term
with the generic and disclaimed name of the goods and,
accordingly, we find that the mark as a whole is merely
descriptive. Applicant’s mark would be immediately
perceived by consumers as nothing more than the name of the
goods which is modified by a laudatory adjective indicating
the superior quality of its goods. As such, GREAT FLOORS
merely describes applicant’s goods. See, e.g.: Quaker
State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d
1296, 172 USPQ 361, 363 (CCPA 1972)[SUPER BLEND held merely
descriptive of “motor oils” as designating “an allegedly
Ser No. 76/238,600
5
superior blend of oils”]; In re U.S. Steel Corp., 225 USPQ
751 (TTAB 1985)[SUPEROPE viewed as merely descriptive of
wire rope since “combination of the word ‘SUPER’ with the
apt descriptive term ‘ROPE’ results in a term which would
be perceived as nothing more than the name of the goods
modified by a laudatory adjective indicating the superior
quality of appellant’s wire rope”]; In re Carter Wallace,
Inc., 222 USPQ 729, 730 (TTAB 1984)[SUPER GEL held merely
descriptive of a “lathering gel for shaving” because term
“would be perceived as nothing more than the name of the
goods modified by a laudatory adjective indicating the
superior quality of applicant’s shaving gel”]; In re Samuel
Moore & Co., 195 USPQ 237, 241 (TTAB 1977)[SUPERHOSE! found
merely descriptive of “hydraulic hose made of synthetic
resinous materials” since term “would be understood as the
name of the goods modified by a laudatory adjective which
would be taken to mean that applicant’s hose is of superior
quality or strength”].
Although we have considered the third-party
registrations showing that “GREAT” formative marks have
issued on the Principal Register, they do not compel a
different result herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some
prior registrations had some characteristics similar to
Ser No. 76/238,600
6
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”]. We recognize that the competing registration
evidence submitted by applicant and the Examining Attorney
show the Office’s somewhat inconsistent treatment of
“GREAT” marks. However, while uniform treatment under the
Trademark Act is an administrative goal, our task in this
appeal is to determine, based on the record before us,
whether applicant’s particular mark sought to be registered
here is merely descriptive. As is often stated, each case
must be decided on its own merits. See, e.g.: In re Best
Software Inc., 58 USPQ2d 1314 (TTAB 2001).
We find that the mark GREAT FLOORS, when used in
connection with a variety of floor coverings and floor
products, is laudatorily descriptive thereof as
contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.