OMNOVA Solutions Inc.

Trademark Trial and Appeal Board

Aug 29, 2007

No. 78322941 (T.T.A.B. Aug. 29, 2007)

Mailed:
Aug. 29, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re OMNOVA Solutions Inc.
________

Serial No. 78322941
_______

Daniel J. McMullen of Calfee, Halter & Griswold LLP for
OMNOVA Solutions Inc.

Carolyn V.C. Gray, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Grendel, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of THE FLEXIBLE WHITEBOARD in the stylized manner depicted
below
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78322941
2

for goods identified in the application as “wall coverings”
in Class 27.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register the mark on the ground
that it is either merely descriptive of the goods or is
deceptively misdescriptive of the goods, and thus is
unregistrable pursuant to Trademark Act Section 2(e)(1), 15
U.S.C. §1052(e)(1).
The appeal is fully briefed. After careful
consideration of the evidence of record and the arguments
of counsel, we affirm the Section 2(e)(1) refusal to
register based on mere descriptiveness. Because we find
the mark to be merely descriptive, we do not reach the
Trademark Examining Attorney’s alternative deceptive
misdescriptiveness refusal.

1 Serial No. 78322941, filed on November 4, 2003. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). October 20, 2003 is alleged in
the application as the date of first use of the mark anywhere and
as the date of first use of the mark in commerce.
Ser. No. 78322941
3
Applicant’s goods are identified in the application as
“wall coverings.” The record shows that applicant’s
product is, in essence, vinyl wallpaper which, once it is
applied to a wall, can be written upon with dry-erase
markers. In its appeal brief, applicant explains that its
product comprises “a continuous, dry-erase surface that can
be adhered to walls, pillars and other multi-planar
surfaces of almost any size and shape.” It consists of
“thin, treated vinyl sheets than can be formed and applied
continuously in a wide range of configurations.”
Applicant’s brochure, made of record by applicant, informs
purchasers that “MemErase® The Flexible Whiteboard™ dry-
erase surface offers limitless possibilities for
collaboration and communication. Wrap it around columns,
run it down hallways, or innovate the conference room.”
The brochure also informs purchasers that the product is
“Functional and Flexible,” and that it “provides a dry-
erasable writing area for a myriad of applications and can
be used with any dry-erase marker. MemErase surfaces
install horizontally to seamlessly cover a wall, an entire
room, even wrap corners and follow curves.” The brochure
includes photographs of what appear to be an office
conference room in which the walls and round pillars or
Ser. No. 78322941
4
columns are covered by a white surface, upon which people
are writing with markers (and erasing with erasers).
The record includes a dictionary definition of
“flexible” which reads, in pertinent part, “capable of
being bent or flexed; pliable.” The American Heritage
Dictionary of the English Language (4th ed. 2000). Also of
record are two definitions of “whiteboard”: “a white
surface for use as a blackboard but accepting felt-tipped
pens and wax crayons” (Oxford English Dictionary (2d ed.
1989)); and “a smooth, glossy sheet of white plastic that
can be written on with a colored pen or marker in the
manner of a blackboard” (Random House Unabridged Dictionary
(1997)). Further with respect to the references to
“blackboard” in these definitions of “whiteboard,”
applicant has submitted various definitions of “blackboard”
similar to one which reads “a smooth, hard, dark-colored
panel for writing on with chalk.” The American
Heritage Dictionary of the English Language (4th ed. 2000).
A term is deemed to be merely descriptive of goods or
services, 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 or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
Ser. No. 78322941
5
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. 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 or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
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, 593 (TTAB 1979).
Moreover, it is settled that “[t]he 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).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
Ser. No. 78322941
6
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applicant argues that

a whiteboard is a specific type of dry-erase
surface, particularly one that (like a
blackboard) is hard, board-like and requires
mechanical mounting – i.e., with screws, braces,
etc. – to attach to a wall. ... Wallboards, white
or black, historically have been the only type of
dry erasable wall-mounted surface available.
However, by definition, such wallboards are hard
panels affixed to the single plane of a wall. In
distinct contrast, a wall covering is not
mechanically affixed, and instead is adhered to a
surface. Moreover, the wall covering goods with
which the instant mark is associated – thin,
treated vinyl sheets that can be formed and
applied continuously in a wide range of
configurations – are not hard, size-defined
panels. As the images in the product brochure
submitted by Applicant illustrate, Applicant’s
goods comprise a continuous, dry-erase surface
that can be adhered to walls, pillars and other
multi-planar surfaces of almost any size and
shape. ... Thus, Applicant’s goods function as
dry-erase surfaces that can be deployed in novel
configurations and architectural applications,
not as mere whiteboards. Consequently, when
considered in relation to Applicant’s goods, the
term “whiteboard” is not descriptive.

(Applicant’s brief at 4-5.) In essence, applicant’s
primary argument appears to be that (a) its product is not
a “whiteboard” because it is not a blackboard-like hard
panel and because it is not mechanically affixed to a wall
but rather is adhered to the wall, and that (b) because its
Ser. No. 78322941
7
product for these reasons technically is not a whiteboard,
“whiteboard” is not merely descriptive of the product.
Applicant also argues, with respect to the word
FLEXIBLE in the mark, that because whiteboards by nature
are hard panels, they are not “flexible.” Therefore,
applicant contends, THE FLEXIBLE WHITEBOARD is an oxymoron,
and oxymorons are not merely descriptive.2
We are not persuaded by applicant’s arguments. First,
we find that the presence of the word THE in the mark does
not affect our mere descriptiveness determination in this
case. That is, if FLEXIBLE WHITEBOARD is merely
descriptive of applicant’s goods, then the addition of the
word THE does not negate the mere descriptiveness of the
mark as a whole.
Next, we find that FLEXIBLE merely describes a key
characteristic or feature of the product, i.e., its
flexibility. The wall covering is pliable and flexible, so
that it may be wrapped around corners or around curves.
We further find that WHITEBOARD merely describes a key
purpose or function of the product – once it is attached to
the wall, it is used exactly like a whiteboard and for the

2 Applicant has not argued that the mark is not merely
descriptive due to the stylized manner in which the words THE
FLEXIBLE WHITEBOARD are depicted in the mark. We find in any
event that the stylization of the wording does not negate the
mere descriptiveness of the wording.
Ser. No. 78322941
8
same purpose as a whiteboard, i.e., as a dry erase writing
surface. Applicant’s argument that “whiteboard” doesn’t
describe the product because the product is not technically
a whiteboard (in that it is a wallcovering adhered to the
wall rather than a hard panel screwed or otherwise mounted
on the wall) is not persuasive. Even if the product does
not display those particular characteristics of a
whiteboard, it clearly embodies one other key feature of a
whiteboard, i.e., it is a dry erase surface that, when
attached to the wall, functions exactly like a whiteboard.
The word WHITEBOARD directly and immediately informs
purchasers of this key feature and function of the
product.
Finally, we are not persuaded by applicant’s argument
that FLEXIBLE WHITEBOARD is not merely descriptive because
it is an oxymoron. That is, we find that the combination
of the two words does not result in a composite which, as
applied to applicant’s goods, is incongruous or otherwise
inherently distinctive. Applicant’s wall covering is
flexible, and it functions exactly like a whiteboard and
will in fact be used as a whiteboard. Applicant’s
contention that a product which is used as a whiteboard is
not a whiteboard merely because it is not non-flexible is
not persuasive. Purchasers will immediately understand THE
Ser. No. 78322941
9
FLEXIBLE WHITEBOARD to describe, directly and without
incongruity, the two key features of applicant’s product,
i.e., it is a wall covering surface which can be written on
and erased exactly like a whiteboard, and it is flexible
enough to be attached to the wall and wrapped around
corners and curves. Competitors (current or future) need
to and are entitled to use the words “flexible” and
“whiteboard,” whether separately or together, to describe
these key features of their competing products.
For these reasons, we find that applicant’s mark THE
FLEXIBLE WHITEBOARD is merely descriptive of applicant’s
goods.

Decision: The Section 2(e)(1) mere descriptiveness
refusal to register is affirmed.