Masonite International Corporation

Trademark Trial and Appeal Board

Sep 9, 2016

No. 86070610 (T.T.A.B. Sep. 9, 2016)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Hearing: Mailed:
August 16, 2016 September 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Masonite International Corporation
________

Serial No. 86070610
_______

Joseph W. Berenato, III and David S. Taylor of Berenato & White, LLC
for Masonite International Corporation.

Daniel Stringer, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_______

Before Quinn, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Masonite International Corporation (“Applicant”) filed an application to register
on the Supplemental Register the designation SOLIDOOR (in standard characters)
for “doors not made of metal” in International Class 19.1

1 Application Serial No. 86070610, filed September 20, 2013 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce. Applicant originally sought registration on the Principal Register. When the
refusal to register was made final, Applicant amended its application to seek registration on
the Supplemental Register, and contemporaneously filed, on November 7, 2014, an
amendment to allege use, alleging first use anywhere and first use in commerce on November
6, 2014.
Application Serial No. 86070610

2

The Trademark Examining Attorney refused registration under Section 23(c) of
the Trademark Act, 15 U.S.C. § 1091(c), on the ground that the term is generic.
When the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney filed briefs. Applicant’s counsel and the
Examining Attorney appeared at an oral hearing.
Evidentiary Issues
Before we turn to consider the merits of the appeal, a few evidentiary matters
require our attention.
Applicant attached to its brief hundreds of pages of exhibits. All of this evidence,
except for twenty-two third-party registrations, was made of record during
prosecution of the application. With respect to the evidence already of record,
Applicant should note for future reference that it is not necessary to attach as exhibits
to a brief such evidence because the appeal brief is associated with the application.
Thus, such evidence should not, as a matter of course, be resubmitted as exhibits to
the brief. See In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice
of attaching to appeal brief copies of the same exhibits submitted with responses is
discouraged); TBMP § 1203.02 (e) (2016).
As just noted, however, Applicant also attached new evidence to its appeal brief,
namely third-party registrations (Exhibits Y-AT). The Examining Attorney properly
objected to this evidence as untimely and, at the oral hearing, Applicant’s attorney
acknowledged that this evidence was not timely introduced into the record. Indeed,
Trademark Rule 2.142(d) provides that the record in an application should be
Application Serial No. 86070610

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complete prior to the filing of an appeal. Exhibits attached to a brief that were not
made of record during examination, as in the case of Exhibits Y-AT, are untimely,
and will not be considered. In re Fiat Group Marketing & Corporate Communications
S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014); In re District of Columbia, 101 USPQ2d
1588, 1591-92 (TTAB 2012) (third-party registrations submitted for first time with
appeal brief are not considered), aff’d sub nom., In re City of Houston, 731 F.3d 1326,
108 USPQ2d 1226 (Fed. Cir. 2013). See TBMP §§ 1203.02(e); 1207.01. Accordingly,
this evidence is stricken and we have not considered it.
A second matter involves Applicant’s objection to certain evidence made of record
by the Examining Attorney during examination. Applicant states the following:
The SOLIDOOR mark was not initially refused as being
generic. Rather, it was not until after those amendments
[an amendment to allege use and an amendment to seek
registration on the Supplemental Register], i.e., a year and
three Office actions subsequent to Appellant filing the ‘610
application, that the Trademark Attorney for the first time
raised the genericness refusal that is the subject of this
appeal.
(4 TTABVUE 6)

Applicant then essentially argues that the Examining Attorney’s evidence relating to
the mere descriptiveness refusal when Applicant was seeking registration on the
Principal Register, accompanying the Office action dated November 18, 2013 and the
final refusal dated June 2, 2014, should not be considered because that evidence “was
introduced and used by the Examining Attorney only in connection with a totally
different (descriptiveness) refusal not at issue on appeal.” (7 TTABVUE 6). Applicant
contends that neither the Office action dated November 21, 2014 nor the final refusal
Application Serial No. 86070610

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to register on the Supplemental Register dated June 4, 2015 “contains any hint that
the Section 2(e)(1) descriptiveness evidence would be used for the entirely different
purpose of supporting a genericness refusal, which notably was not raised until after
the descriptiveness refusal was withdrawn.” (emphasis in original) (7 TTABVUE 7).
Thus, Applicant contends, it “did not address the Examining Attorney’s
descriptiveness exhibits or submit counter-exhibits when responding to the
genericness refusal set forth in the Office Actions of November 21, 2014 and June 4,
2015.” (7 TTABVUE 8). As support for its position, Applicant points to TBMP
§ 1203.02(b), indicating that “while [the] Examining Attorney need not limit
arguments in [an] appeal brief to those raised in Office actions, using the evidence
for a totally different purpose not hinted at in the Office actions [is] unfair based on
[the] circumstances of [the] case.” (7 TTABVUE 7). Thus, Applicant “objects to and
respectfully requests that the Board not consider the evidence discussed in the final
paragraph of page 3 and in the bullet points at page 4 (lines 1-32) of the Examining
Attorney’s Appeal Brief.” (7 TTABVUE 8).
Because Applicant’s objection was made in the reply brief, the Examining
Attorney did not have an opportunity to respond in writing. The Board, however, at
the oral hearing asked for the Examining Attorney’s response to the objection.
As spelled out in TMEP § 1209.01 (2016), “[w]ith regard to trademark
significance, matter may be characterized along a continuum, ranging from marks
that are highly distinctive to matter that is a generic name for the goods or services.”
TMEP § 1209.02(a) further provides as follows:
Application Serial No. 86070610

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A designation that is merely descriptive must be refused
registration under § 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1). The examining attorney must not
initially issue a refusal in an application for registration on
the Principal Register on the ground that a mark is a
generic name for the goods or services, unless the applicant
asserts that the mark has acquired distinctiveness under
§ 2(f) in the application itself. See TMEP § 1209.02(b). Even
if it appears that the mark is generic, the proper basis for
the initial refusal is § 2(e)(1) descriptiveness. If there is
strong evidence that the proposed mark is generic, a
statement that the subject matter appears to be a generic
name for the goods or services should be included in
conjunction with the refusal on the ground that the matter
is merely descriptive. It has been said that a generic term
is “the ultimate in descriptiveness.”

TMEP § 1209.02(a)(i) further indicates:
If the applicant responds to a § 2(e)(1) descriptiveness
refusal by amending its application to the Supplemental
Register, this amendment presents a new issue requiring
consideration by the examining attorney (unless the
amendment is irrelevant to the outstanding refusal). See
TMEP § 714.05(a)(i). If the examining attorney determines
that the designation is a generic name for the applicant’s
goods or services, the examining attorney must then issue
a nonfinal action refusing registration on the
Supplemental Register. The statutory basis for such a
refusal is §§ 23(c) and 45 of the Trademark Act. See 15
U.S.C. §§ 1091(c), 1127.

As indicated, genericness is the ultimate in descriptiveness. See In re Merrill
Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir.
1987); In re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014). Thus, any evidence going
to mere descriptiveness, which was submitted while Applicant sought registration on
the Principal Register, also should be considered in deciding whether or not the
applied-for term is generic. The Examining Attorney was not obligated to introduce
Application Serial No. 86070610

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additional evidence relating to genericness until such time as Applicant amended its
application to seek registration on the Supplemental Register.2 After the genericness
refusal issued, Applicant had the opportunity to counter the evidence of record. It is
clearly appropriate for the Board to consider all of the evidence related to the degree
of distinctiveness, if any, of the term sought to be registered. Accordingly, Applicant’s
objection is overruled, and we will consider all of the Examining Attorney’s evidence
and accord it whatever probative value it merits.
Genericness
We now turn to consider the merits of whether or not the term SOLIDOOR is
generic for “doors not made of metal.” To address this issue, we must consider first
whether SOLID DOOR is generic for doors not made of metal. If we determine that
it is, secondly we must consider whether the “telescoped” spelling of SOLIDOOR, that
is, merging the two words and dropping one letter “D,” is sufficient to render
SOLIDOOR capable of functioning as a mark and registrable on the Supplemental
Register. See In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010).
A mark is generic if it refers to the class or category of goods or services on or in
connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). See

2 Given the nature of the mark, as reflected by our decision herein, a possible shortcoming of
the examination might be the lack of a statement in the final refusal on the Principal
Register, as suggested by TMEP § 1209.02(a), that the subject matter appears to be a generic
name for the goods in conjunction with the refusal on the ground that the matter is merely
descriptive. But the lack of such statement does not violate any Trademark Rule of Practice
and, moreover, is of no relevance to the merits of the genericness refusal.
Application Serial No. 86070610

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In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir.
2015). The test for determining whether a mark is generic is its primary significance
to the relevant public. In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed.
Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991); and Marvin Ginn, supra. Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at issue? Second, is the term
sought to be registered ... understood by the relevant public primarily to refer to that
genus of goods or services?” Marvin Ginn, 228 USPQ at 530. The Examining Attorney
has the burden of establishing by clear evidence that a mark is generic. In re Merrill
Lynch, Pierce, Fenner and Smith, Inc., 4 USPQ2d at 1143; In re Am. Fertility Soc'y,
supra; and Magic Wand Inc., supra. “Doubt on the issue of genericness is resolved in
favor of the applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
Genus of Applicant’s Goods
The genus of goods is often defined by an applicant’s identification of goods or
services. This case is no exception. In re Meridian Rack & Pinion, 114 USPQ2d 1462,
1463-64 (TTAB 2015), citing Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1552. In
fact, Applicant and the Examining Attorney agree that the genus of goods is “doors
not made of metal.” (4 TTABVUE 11; 6 TTABVUE 7).
Public Understanding of the Term SOLIDOOR
We next consider the relevant public’s understanding of the term SOLIDOOR.
Here the relevant public comprises general consumers of doors not made of metal.
Application Serial No. 86070610

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The word “solid” means “having no space inside: not hollow.” The word “door” is
defined as “a movable piece of wood, glass, or metal that swings or slides open and
shut so that people can enter or leave a room, building, vehicle, etc.” (merriam-
webster.com).3
The record is replete with uses of “solid door” in connection with doors, both non-
metal and metal, having solid cores.4 Because Applicant’s identification reads “doors
not made of metal,” we have focused our attention on the substantial evidence related
to doors not made of metal. Contrary to Applicant’s contention (7 TTABVUE 9-11),
the record includes numerous examples of generic use of the term “solid door” in
connection with solid doors not made of metal, of which the following comprise a
representative sample:
Solid Wood Doors

3 Applicant argues “[t]he Examining Attorney’s parsing of the SOLIDOOR mark using
dictionary definitions provides no evidence that consumers associate the term ‘solid’ or ‘door,’
alone or in combination, with doors not made of metal.” (4 TTABVUE 6). To argue that the
dictionary definition does not show that “door” alone is generic is, at the very least,
disingenuous. Further, the lack of a dictionary listing for “solid door” is of no consequence.
See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977).
4 Applicant and the Examining Attorney argued over whether the evidence relating to metal
doors is relevant to the determination of whether the term SOLIDOOR is generic for doors
not made of metal. The fact that the genus may be conceptually broader or narrower than
the identification of goods does not inexorably lead to the conclusion that a term, such as
SOLIDOOR, is not generic. In re DNI Holdings Ltd., 77 USPQ2d at 1437-38
(SPORTSBETTING.COM is generic for provision of casino games on and through a global
computer network); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998)
(MASSFLO held generic for flowmeters for the measurement of flow of mass of fluids); In re
Central Sprinkler Co., 49 USPQ2d at 1197 (ATTIC held generic for automatic sprinklers for
fire protection); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997)
(COMPRESSION held generic for hosiery); In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic for soil and stain removers for
permanent press fabrics); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 10
USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for a wide range of
electronic products in International Class 9).
Application Serial No. 86070610

9

Elite Moulding offers a wide variety of hollow and solid
doors.
(elitemouldings.com)

From 100% Solid Doors, Semi-solid with MDF/Plywood
Veneered Flat Panels….
(montecarlodoors.com)

Interior Solid Doors
Lowest Prices in Florida
Solid Wood Doors Custom Sizes
(esdoors.com)

Modern interior doors made with 100% natural wood
materials.
The heavy feel of these doors comes from the fact that there
is no paper filling inside, no honeycomb, or traditional
hollow-core used here. Our unique dense slab construction
makes these solid doors behave like virtual sound barriers
in your home.
(27estore.com)

Interior Door Buying Guide
Homeowners can choose solid or hollow constructed
doors….With low-traffic areas, such as basements or attics,
homeowners may spend less and install a hollow core door
while solid doors built from fiber core materials or
particleboard are best in high-traffic areas like bedrooms
and bathrooms.
(ebay.com)
Solid doors
Solid wood doors
Solid panel doors
(smpm-woodwork.com)

Doors may be solid wood or may be a combination of solid
and veneer over an engineered core….Solid wood doors are
fairly good insulators and sound-blockers….Solid

Application Serial No. 86070610

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doors can be trimmed or shaved to fit if necessary.
(books.google.com)

Carpentry
Floyd Vogt (4th ed.)
Door Construction
Doors are also classified by their construction as solid or
paneled. Solid doors are made of plywood, particleboard, or
solid lumber….Matched boards with V-grooves and other
designs, such as used for wall paneling, are often used to
make solid doors….Both solid doors and paneled doors may
be hinged in overlay, lipped, or flush fashion.
(books.google.com)

Door Emporium FAQs
1. What are solid doors and hollow doors?
Doors that have a solid wood core are generally preferable
over hollow core doors….Solid wood doors have more
soundproof qualities compared to hollow ones….Compared
to hollow doors, solid doors are sturdier and offer better
protection for homes and against different weather
conditions.
(dooremporium.com)

Solid Wood Doors
Solid Wood Doors come in a large array of styles and
shapes….They are, as the name suggests, made of solid
wood, which means they are usually heavy. So if you see a
large door with only two hinges, it is most likely not a solid
door, but a hollow core door. The types of woods that can be
used are endless and the quality of the wood determines
the cost of the door.
(doornmore.com)

All exterior doors need to be solid and kick-proof. That
means you want a solid wood door, or at the very least, a
door with a solid-wood core. A solid door, quality deadbolt,
and reinforced frame and doorjamb will make it nearly
impossible to kick in your door.
(safety.com)

Highly compressed particleboard or other wood product,
which is always painted offers the strength and contours of
Application Serial No. 86070610

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a solid door without the cost of wood….a solid door is the
best choice for its insulation factor.
(Housebirth; books.google.com)

Close a solid door, whether it’s the entry to your house or
to a bedroom, and you’ll feel a satisfying sense of
security….Solid doors were once made out of solid planks
of wood – and still are.
(Lou Manfredini’s House Smarts; books.google.com)

Timber Solid Door
(haibodoor.com)

Without a doubt you are going to pay more for solid doors,
whether they are made from solid wood or some sort of
“solid” board.
Solid Doors
When we talk about doors being solid (and not “solid core”)
we mean that they are made of solid wood.
(professorshouse.com)

Solid Wood Doors
Solid doors certainly have benefits but they also cost
approximately 50% more.
(charlesandhudson.com)

The beautiful wooden solid doors add beauty….
(impactpreciouswood.com)

This evidence is substantial, clearly showing that “solid door” identifies a type or
category of non-metal door, namely one that is made of solid wood or similar non-
metal materials (as opposed to a hollow door).
Therefore, we must now consider whether the display of SOLID DOOR as
SOLIDOOR is capable of functioning as a mark for doors not made of metal. We
conclude that there is no meaningful distinction between the two, and therefore, that
SOLIDOOR, like SOLID DOOR, is generic and incapable of functioning as a mark for
doors not made of metal. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d
Application Serial No. 86070610

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1859, 1860 (Fed. Cir. 1987) (FIRSTIER is merely descriptive of banking services); In
re Greenliant Sys. Ltd., 97 USPQ2d at 1083 (NANDRIVE, a telescoped version of the
generic term “nand drive,” is generic of flash memory drives); In re DNI Holdings
Ltd., 77 USPQ2d at 1443 (SPORTSBETTING.COM held generic for providing casino
games on and through a global computer network, where the record included multiple
examples of use of the term “sports betting” by applicant and competitors to refer to
sports wagering, and there was no indication of a realistic alternative connotation of
the compound term). The mere merging of the words and dropping of one letter “D”
is insufficient to elevate this generic term from the generic status and render it
capable of functioning as a mark.
In the MASSFLO case the Board stated:
Further, the fact that MASSFLO is a telescoped, slightly
misspelled version of “mass flow” does not compel a
different result. The deletion or change in one letter
normally does not transform a generic form into a source
indicator. See, e.g., In re Stanbel, Inc., 16 USPQ2d 1469
(TTAB 1990), aff’d without pub. op., 20 USPQ2d 1319
(Fed.Cir. 1991) [where the record established that the term
“ice pack” was a generic designation for a “nontoxic
reusable ice substitute for use in food and beverage
coolers,” applicant's asserted mark ICE PAK was held
generic and, therefore, unregistrable]. See also cases cited
at McCarty on Trademarks and Unfair Competition, supra
at Sections 11:31 and 12:38. Moreover, the misspelling here
still results in the phonetic equivalent of the generic term.
The terms “mass flow” and “massflo” are pronounced the
same and, given the commonly understood meaning of the
term “mass flow” in the trade, we have no doubt that the
two terms would be viewed as having the same meaning.
That is to say, applicant's use of the term MASSFLO would
be understood by relevant purchasers as primarily naming
a category of meters, namely mass flowmeters.

Application Serial No. 86070610

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Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d at 1631.
Likewise in this case, neither the merger of the terms, that is, the deletion of a
space between SOLID and DOOR, nor the dropping of one letter “D,” can transform
SOLID DOOR into something that is capable of functioning as a source identifier. In
re 3Com Corp., 56 USPQ2d 1060, 1061 (TTAB 2000) (ATMLINK held generic for
computer hardware components used for enabling connection of asynchronous
communication networks). The pronunciation of either version, SOLID DOOR or
SOLIDOOR, is identical, and the difference in appearance between the two versions
is very subtle, to the point of being essentially meaningless in terms of overall
commercial impression. There is simply no evidence or other basis to find that
SOLIDOOR is somehow not generic when SOLID DOOR clearly is.
Applicant’s evidence and arguments that SOLIDOOR is registrable on the
Supplemental Register are not persuasive. Although the term “solid door” may
indicate that the door is of high-quality construction and is more expensive, it also
acts to designate a particular type or category of door, namely one that is solid. The
fact that the term “solid door” also may refer to a door with a metal core does not
diminish the genericness of the term when used in connection with doors not made of
metal. The evidence reveals widespread generic uses of SOLID DOOR for non-metal
doors. Further, to the extent Applicant would have us conclude that the proper
generic term for the goods is “solid wood door” or “solid core door,” the evidence clearly
shows that the term “solid door” is also generic for doors not made of metal. See In re
Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (“[A] product may have
Application Serial No. 86070610

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more than one generically descriptive name.” (Rich, J., concurring)). See also In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978)
(GASBADGE is at least descriptive for “gas monitoring badge”; “the users of language
have a universal habit of shortening full names--from haste or laziness or just
economy of words….I regard it as inevitable that a gas monitoring badge will be called
a gas badge as the name of the goods to the same extent as gas monitoring badge is
the name.” (Rich, J., concurring)). Applicant’s reliance on several third-party
registrations of SOLID-formative marks is not persuasive of a different result. In re
Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
prior registrations had some characteristics similar to [applicant's] application, the
PTO's allowance of such prior registrations does not bind the Board or this court.”).
We have considered all of the evidence made of record, as well as all of the
arguments related thereto, including any evidence and/or arguments not specifically
discussed in this opinion. We conclude that SOLIDOOR, like SOLID DOOR, is generic
and incapable of functioning as a trademark for doors not made of metal.
Decision: The refusal to register is affirmed.