Metzeler Schaum GmbH

Trademark Trial and Appeal Board

Aug 15, 2011

No. 79041878 (T.T.A.B. Aug. 15, 2011)

Mailed: August 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Metzeler Schaum GmbH
________

Serial No. 79041878
_______

Ralph E. Locher of Lerner Greenberg Stemer LLP for Metzeler
Schaum GmbH.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Metzeler Schaum GmbH has filed an application to
register on the Principal Register the stylized mark
, for goods ultimately identified as “Non-
inflatable mattresses for medical purposes and made of
polyurethane-foam or latex” in International Class 10;
“Upholstery for seats of land vehicles, aircrafts and
watercrafts” in International Class 12; and “Non-inflatable
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 79041878

2
mattresses for non-medical purposes and made of
polyurethane-foam or latex” in International Class 20.1
The trademark examining attorney finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1) on the grounds that applicant’s mark
TUBES is merely descriptive or, alternatively, deceptively
misdescriptive of a feature or characteristic of the goods
indentified in Classes 10 and 20.
Applicant appealed and requested reconsideration of
the final refusal. On reconsideration, applicant sought to
divide the Class 12 goods from the application and argued
against the refusals. We note that in the request
applicant particularly indicated, with regard to the
deceptively misdescriptive refusal, that its mattress
“replaces tradition [sic] metal coil springs with a
plurality of foam tubes.” Req. for recon. unnumbered p. 1
(emphasis supplied). Applicant further explained that “it
does not sell a traditional air tube mattress but notes
that the limitation is whether Applicant’s goods contains
[sic] tubes, which it does. … Clearly Applicant’s
mattresses have a core formed from a plurality of
cylindrical structures (e.g. tubes).” Req. for recon.

1 Application Serial No. 79041878 filed August 9, 2007, pursuant
to Trademark Act § 66(a), 15 U.S.C. § 1141f.
Ser No. 79041878

3
unnumbered pp. 1-2. In response, the examining attorney
issued a non-final action “superseding” the original final
action advising applicant on the procedure to divide the
application, withdrawing the deceptively misdescriptive
refusal and maintaining the mere descriptiveness refusal.
The examining attorney ultimately issued a second “final
refusal” solely on the ground that the mark is merely
descriptive of the identified goods, which was considered
as a denial of the request for reconsideration as to that
ground.2 Proceedings were resumed on September 28, 2010
with regard to that issue.
Both applicant and the examining attorney have filed
briefs.3 For the reasons discussed, we affirm the refusal
to register.
A term is deemed to be merely descriptive of goods,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods. See, e.g., In re Gyulay, 820 F.2d 1216, 3

2 For completeness, we note that the Class 12 goods were divided
from the application.
3 Applicant included two exhibits with its brief. Because the
record in an application should be complete prior to the filing
of an appeal, to the extent that the materials differ from those
previously submitted during the prosecution of the application,
they have not been considered. See Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d); and TBMP § 1203.02(e) (3rd ed. 2001).

Ser No. 79041878

4
USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant’s goods in order to be considered
merely descriptive; it is enough that the term describes
one significant attribute, function or property of the
goods. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods for which
registration is sought, the context in which it is being
used in connection with those goods, and the possible
significance that the term would have to the average
purchaser of the goods because of the manner of its use;
that a term may have other meanings in different contexts
is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). It is settled that “the question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Applicant, in urging reversal of the refusal,
maintains that its mark does not describe mattresses, but
Ser No. 79041878

5
is at worst suggestive of the goods. Applicant, citing to
thefreedictionary.com’s definition of “tubes”4, particularly
contends that the term TUBES, with regard to mattresses,
does not describe an ingredient, quality, characteristic,
function purpose or use of the goods. Applicant goes on to
state:
Applicant’s foam springs may technically fit
the definition of a TUBE but Applicant notes
that it is an unorthodox definition as that
term is known in the mattress industry. In
other words, no other manufacture [sic] uses
this type of tube in its mattresses and
generally consumers are not aware of foam
springs being used in mattresses and therefore
[TUBES] cannot be descriptive.

Br. p. 8. Applicant also states that it “purposefully”
identified its goods as non-inflatable mattresses to make
clear that applicant is not selling a typical water or air
bed containing a cavity to be filled with air or water so
as to avoid the descriptive term TUBES.

4 “Tube” is defined as:
a. A hollow cylinder, especially one that conveys a fluid
or functions as a passage
b. An organic structure having the shape or function of a
tube; a duct; a bronchial tube.
c. A small flexible cylindrical container sealed at one
end and having a screw cap at the other, for pigments,
toothpaste, or other pastelike substances (emphasis
added).

Ser No. 79041878

6
Applicant, with its request for reconsideration, made
of record the following additional definition of “tube”
from Webster’s Online Dictionary: “1: any of various usu.
cylindrical structures or devices: as a: a hollow
elongated cylinder.”
The examining attorney, on the other hand, maintains
that the designation TUBE immediately conveys information
about the nature of applicant’s non-inflatable mattresses
made of polyurethane-foam or latex and, is therefore,
merely descriptive of them.
In support of the refusal, the examining attorney
cites to applicant’s admission that its mattresses contain
tubes,5 and has submitted:
1. Documents retrieved from a search of the Google
search engine for “foam tube mattresses.” Some of the
results (emphasis supplied) follow:

5 The examining attorney at unnumbered page 3 of its brief
points to the following statements made by applicant during the
course of the prosecution of the application: “[the] foam
springs [in applicant’s mattress] may technically fit the
definition of a tube” (br. p. 7); “[applicant’s mattress] is
formed from a plurality of foam cylinders or tubes replacing the
function of metal springs,” “the tubes in applicant’s mattresses
are not visible to the consumer” and “[applicant’s] use of foam
tubes to replace metal springs is not believed to be in use by
other traditional mattress manufacturers” (applicant’s December
8, 2008 response, unnumbered pp. 1 and 2).

Ser No. 79041878

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a. a webpage from the website of
Onlinestoreinc (www.onlinestoreinc.com) showing
a specialty mattress from Boyd Specialty Sleep
comprised of foam tubes. The web page
identifies the mattress as “Boyd Shallow fill
145 (Essex) w/Foam Tubes”;

b. a webpage showing the Interzum award
(http://www.interzum-award.com/47.html) awarded
to applicant for the “Tubes 126 Prestige
Mattress.” The mattress is described as
follows: “The heart of the Metzeler Mattress
Line Tubes 126 Prestige is the newly developed
Rubex-Tubes System. The 126 cold-foam tubes in
the mattress form a vertical tube system for
perfect air circulation. The tubes, which
differ in colour according to their degree of
hardness, are integrated into the complete
surface….”6

2. Documents retrieved from a search of the Google
search engine for “tube mattresses.” Some of the results
(emphasis supplied) follow:
a. a patent excerpt from US Patent Reference
4720807 issued June 4, 1991 (retrieved from the
website Patent Storm on November 23, 2007)
discussing an invention described to “generally
relate[] to fluid filled beds, such as water
beds, or inflated tube mattresses…”; and

b. a product listing from the website of Mr.
Mattress
(http://mrmattressnj.com/productsservices/)
listing Cylinder & Tube Mattresses as
products.7

6 Final Office Action issued January 23, 2009. The search also
included web pages from the websites www.sortprice.com and
www.justmyofficefurniture.com, but these sites also featured the
previously referenced Boyd Foam mattress. As such, their
submission is superfluous.

7 Also of record is a copy of a webpage from the website of
Accelant.com, but the website does not include a reference to
tube mattresses. As such it will not be considered further.
Ser No. 79041878

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We find the record sufficiently demonstrates that the
designation TUBES immediately conveys a salient feature or
attribute of applicant’s non-inflatable mattresses made of
polyurethane-foam or latex, namely that the mattresses
contain cylindrical structures or tubes.
Applicant nonetheless argues that the average consumer
is not aware of the internal construction of a mattress
(including box and spring or shaped memory foam) and,
therefore, the consumer’s perspective of whether a mattress
has box springs or cylindrical foam spring elements is
irrelevant. Thus, applicant essentially contends that the
“hidden TUBE content” of its mattresses is not a
significant attribute. We not only find this argument
unsupported and unpersuasive, but it is severely undercut
by evidence of industry and public recognition of the
“tubes” feature. Indeed, as evidenced by the description
of applicant’s Interzum Award winning “Tubes 126 Prestige
Mattress,” the purchasing public would perceive the
designation TUBES as descriptive of a significant attribute
of applicant’s non-inflatable mattresses. The copy
includes the following (emphasis supplied):
The heart of the Metzeler Mattress Line Tubes
126 Prestige is the newly developed Rubex-Tubes
System. The 126 cold-foam tubes in the
mattress form a vertical tube system for
perfect air circulation. …
Ser No. 79041878

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(http://www.interzum-award.com/47.html).8

It is apparent by this copy that the “tubes” feature of
applicant’s mattresses is a significant attribute that
applicant want consumers to be aware of. Indeed,
applicant’s advertising materials prominently show the
inner “tubes” construction of applicant’s mattresses.9
We also are not persuaded by applicant’s contention
that because the term “tube” can refer to many different
aspects of a mattress, i.e., its shape, its spring type,
and its construction, the term cannot be considered merely
descriptive of applicant’s “non-inflatable” mattresses. As
noted previously, descriptiveness is determined in relation
to the goods sought to be registered. See In re Bright-
Crest, supra. Here, the record clearly demonstrates the
descriptive significance of the term “Tubes” in relation to
applicant’s identified non-inflatable mattresses which, by
applicant’s admission, feature “a plurality of foam tubes.”
Simply because the record additionally shows that the term
“Tubes” may be descriptive in relation to other types of

8 Exhibits to the Final Office issued January 23, 2009.

9 The record also shows that other mattress companies display
the inner construction of mattresses in their advertising. See
exhibits to the Final Office Action issued January 23, 2009,
e.g., the Boyd shallow fill 145 (Essex) w/Foam Tubes mattress
(www.onlinestoresinc.com) and The Savannah Box Double Sixe
Waterbed F4 Bladder Set With Memory Foam (www.sortprice.com).

Ser No. 79041878

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mattresses does not obviate its descriptive significance in
relation to applicant’s mattresses.
Applicant also argues of the previously referenced
“Boyd shallow fill 145 (Essex) w/foam tubes” memory foam
mattress, that the advertising improperly refers to the
foam members as tubes, as they are “simply rectangular foam
members … and are believed to not be the commonly accepted
term for TUBES.” Br. p. 10. We find this argument
unavailing. Notwithstanding applicant’s opinion regarding
this advertising language, it is clear that at least one
other mattress manufacturer refers to the internal
construction of its mattresses as containing “foam tubes.”
Further, even if applicant were the only user of the term,
that fact does not mean that its mark is not descriptive.
In re Sun Microsystems, Inc. 59 USPQ2d 1084, 1087 (TTAB
2001) (“The fact that AGENTBEANS does not appear in the
dictionary in not determinative. Likewise, the fact that
applicant may be the first and/or only entity using the
phrase AGENTBEANS is not dispositive where, as here, the
term unequivocally projects a merely descriptive
connotation” (citation omitted); In re Acuson, 225 USPQ
790, 792 (TTAB 1985) (“A descriptive term used first or
even only by applicant is not registrable as long as the
relevant purchasing public perceives of the term as
Ser No. 79041878

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describing the good”); and In re Gould, 173 USPQ 243, 245
(TTAB 1972) (“The fact that applicant may be the first and
possibly the only one to utilize this notation in
connection with its services cannot alone alter the basic
descriptive significance of the term and bestow trademark
rights therein”).
Here, based on the evidence of record, we conclude
that the designation TUBES immediately describes, without
any kind of mental gymnastics or the need for additional
information, a feature of applicant’s identified non-
inflatable mattresses for medical and non-medical purposes
made of polyurethane foam or latex, namely that they
feature foam cylinders or tubes.

Decision: The refusal to register under Section
2(e)(1) of the Trademark Act in Classes 10 and 20 is
affirmed.