American Marazzi Tile, Inc.

Trademark Trial and Appeal Board

Nov 8, 2012

No. 85062835 (T.T.A.B. Nov. 8, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Marazzi Tile, Inc.
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Serial No. 85062835
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Stephen L. Levine of Anderson & Levine, LLP for American Marazzi Tile, Inc.
Brendan D. McCauley, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney)
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Before Quinn, Cataldo and Wolfson, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
American Marazzi Tile, Inc. (“applicant”) seeks registration on the Principal
Register of the mark shown below, for goods ultimately identified in the application
as “wall coverings, namely, non-metal tiles that may be applied to walls; floor
coverings, namely, non-metal tiles that may be applied to floors,” in International
Class 19.1

1 Application Serial No. 85062835 was filed on June 15, 2010, based on applicant’s
allegations of first use and first use of the mark in commerce as of April 27, 2010.
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The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), having
determined that the mark is merely descriptive of the goods involved.2
When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. In its brief, applicant offered to disclaim
the term “3d” apart from the mark, claiming that “by entering a disclaimer of ‘3d’
apart from the mark as a whole” it “moots the issue” as to whether or not the term
“3d” in the mark is merely descriptive. Appeal Brief, p. 18. Although the
examining attorney contends that during prosecution applicant “withdrew the
voluntary disclaimer of ‘3D’ for the mark which was accepted,” we construe
applicant’s statement in its brief as a continuation of its voluntary disclaimer of the
term, should we allow registration of its mark. For the reasons discussed below, we
reverse the refusal to register and require a disclaimer of “3d.”
The Record
To show that the mark is merely descriptive, the examining attorney
submitted copies of dictionary definitions of the term “3-D,”3 the phrase “three-

2 In his appeal brief, the examining attorney contends that “there is no competent evidence
of record that shows that what is sought to be registered does in fact function as a
trademark to identify and distinguish applicant’s goods in commerce to allow registration of
the mark on the Principal Register.” Elsewhere in the application history, specifically in
the initial Office action, the examining attorney asserts that the mark would be perceived
as “informational matter regarding the goods.” We do not construe these statements as
invoking a refusal under Section 2(e)(5) or Sections 1, 2, and 45 of the Trademark Act, 15
U.S.C. §§ 1, 2, 45, that the mark fails to function as a trademark. To be clear, the sole basis
of refusal in this case is under Trademark Act § 2(e)(1).
3 According to the dictionary definitions of record, “three-dimensional” is generally
abbreviated as “3-D.” See the definitions provided by the examining attorney for “3-D” at
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dimensional,” and the words “digital,” “design,” and “definition.” The examining
attorney also submitted copies of web pages from third-party websites (specifically
www.floorbiz.com; http://digital turn-page.com; and Google’s cached website of
http://digital.gnpmedia.com) showing applicant’s use of the phrase “digital design
definition” and the term “3d” in an allegedly descriptive manner.
Applicant has submitted the declaration of its Director of Marketing,
Marianne Cox, together with six exhibits showing the mark as used on the goods
and in promotional literature. In addition, applicant submitted copies of five third-
party registrations for marks containing the term “3D” for goods and services that
utilize 3-D technology.
Applicable Law
A term is merely descriptive if it immediately conveys knowledge of a
significant quality, characteristic, function, feature or purpose of the products or
services it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); see also, In re Intelligent Medical Systems Inc., 5 USPQ2d 1674, 1675 (TTAB
1987) (holding the mark INTELLIGENT MEDICAL SYSTEMS does not
immediately impart information concerning electronic thermometers to an average
prospective purchaser of the goods). Whether a particular term is merely
descriptive is determined in relation to the goods and services for which registration
is sought, and the context in which the term is used, and not in the abstract or on
the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ

dictionary.reference.com and www.merriam-webster.com. We have utilized this
construction when referring generally to 3-D technology.
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215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002) (holding
the mark BIO-CD does not merely describe applicant’s compact discs that are used
to test biological matter). As our primary reviewing court has stated, “[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 and services are will understand the mark to convey information
about them.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 685 F.3d
1046, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), citing In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002).
Applicant’s mark in this case consists of a design portion (the stylized “3d”)
and a literal portion (the wording “digital design definition”). When considering a
composite mark such as the mark at issue herein, we must determine whether the
commercial impression of the entire mark, as a whole, is merely descriptive. It is
error to improperly focus on only one portion of the mark to the exclusion of the
other portions. On the other hand, while we may not impermissibly “dissect” the
mark, we may consider the “meaning and weight” of each of the components of the
mark:
The Board, to be sure, may ascertain the meaning and
weight of each of the components that makes up the
mark. The Board, however, ultimately must consider the
mark as a whole and do so in the context of the goods or
services at issue.
DuoProSS Meditech, 103 USPQ2d at 1757 (internal citations omitted). See, also, In
re Petroglyph Games, Inc., 91 USPQ2d 1332, 1337 (TTAB 2009) (“[I]t is entirely
acceptable to consider the component parts of a composite mark when divining the
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likely perception of the composite.”); In re King Koil Licensing Co., 79 USPQ2d
1048, 1051 (TTAB 2006) (“Nor has the examining attorney engaged in
impermissible dissection of a mark by determining that one term in the mark is
descriptive and another generic. This is all part and parcel of routine examination
of a multiword mark”). Following this approach, we first consider whether the term
“3d” in applicant’s mark is merely descriptive of a significant quality, characteristic,
function, feature or purpose of applicant’s non-metal wall or floor tiles. We then
consider whether the wording “digital design definition” is merely descriptive.
Finally, we consider the mark as a whole to determine the “likely perception of the
composite.” It is this final determination that controls our decision as to whether
the mark is merely descriptive in relation to the goods.
I. The Term “3d”
We first consider whether the term “3d” is merely descriptive in relation to
the goods recited in the application, namely, “wall coverings, namely, non-metal
tiles that may be applied to walls; floor coverings, namely, non-metal tiles that may
be applied to floors.” The examining attorney has submitted dictionary definitions
of the term 3-D and the phrase “three-dimensional,” the most pertinent of which are
as follows:4
“3-D” : a three-dimensional form; also : an image or a
picture produced in it.

4 From www.merriam-webster.com, attached to the Office action, September 27, 2010.
Additional definitions and abbreviations for the terms “3D,” “3-D,” and “3d,” from
http://www.acronyfinder.com, http://en.wiktionary.org, and http://dictionary.reference.com,
were attached to the final Office action, April 19, 2011.
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“three-dimensional” : giving the illusion of depth or
varying distances – used especially of an image or a
pictorial representation on a two-dimensional medium
when this illusion is enhanced by stereoscopic means.
Based on the record evidence, we find that the term “3d” is merely
descriptive. The floorbiz.com article submitted by the examining attorney, entitled
“Coverings ceramic segment invigorated with innovation, style,” included a review of
products displayed at a convention in the flooring industry known as “Coverings
2010.”5 The author of the article, Louis Iannaco, describes applicant’s “3D inkjet
technology” as offering “a fresh take on the popular look of traditional marbles via
state-of-the-art digital printing technology on porcelain stoneware.”6 Applicant’s
promotional materials also make it evident that its goods are printed using a three-
dimensional printing technique. Applicant’s brochures advertise:
“TIMELESS COLLECTION is created using Marazzi’s
state-of-the-art 3-d printing technique”7
…
“Marazzi’s state-of-the-art 3d printing technique uses
the latest in digital print technology, allowing for
infinite design capabilities unique to Marazzi. Marazzi
is the only manufacturer in the US that can do digital
print up to 360 dpi, direct to tile. At this maximum
resolution and with the unique grayscale printing
technique, Marazzi reaches finer, crisper and smoother
definitions for printed designs than other digital
products.”8

5 Office action September 27, 2010, attachment 4.
6 Ibid.
7 Response to Office action, March 28, 2011, exhibit B.
8 Response to Office action, March 28, 2011. This ad copy is repeated in the advertisement
appearing on the website cache from Google that was submitted by the examining
attorney.
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Several of the brochures attached to Ms. Cox’s declaration display the
stylized “3d” alone (i.e., without the phrase “digital design definition”) being used as
an icon, or bullet point in a listing of icons, each one standing for a feature
pertaining to the goods. In the case of the stylized “3d,” it is used as an icon to
indicate that a particular advertised wall or floor tile may be treated with a three-
dimensional printing technique.
For these reasons, we find that the term “3d,” as used in applicant’s mark, is
merely descriptive of a quality or feature of the goods.
II. The Stylization of the Term “3d”
Both applicant and the examining attorney focus a considerable amount of
their attention on the issue of whether the stylization of the term “3d” in the mark
has created a registrable element thereof. Not surprisingly, they disagree as to
how much stylization is required, and have directed the Board’s attention to several
prior cases involving marks comprised of merely descriptive or generic words that
were either registered on the Principal register on the basis of the distinctiveness of
the stylization, or that were refused registration for insufficiently distinctive
stylization. Applicant has also submitted copies of five third-party registrations for
marks containing the term “3D” for goods or services related to 3-D technology
wherein, in all but one case, the mark was registered on the Principal register with
a disclaimer to the term “3D.”
When “words which are merely descriptive, and hence unregistrable, are
presented in a distinctive design, the design may render the mark as a whole
registrable, provided that the words are disclaimed, under Section 6.” In re Clutter
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Control, Inc., 231 USPQ 588, 589 (TTAB 1986) (CONSTRUCT-A-CLOSET
registrable on the Principal register with a disclaimer of all wording). Each case
must be examined on its own set of facts, and with regard to the specific goods or
services involved. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001). “[T]he determination of whether the stylization of an otherwise
unregistrable designation is sufficiently distinctive in character to ‘rescue’ the
designation as a whole is a necessarily subjective one.” In re Bonni Keller
Collections Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987). See also, In re Grande Cheese
Co., 2 USPQ2d 1447, 1449 (TTAB 1986) (“Whether or not the disclaimed literal
components of a designation sought to be registered are displayed in an inherently
distinctive fashion … must be determined based on a viewer’s first impression.”).
In the case at hand, only part of the mark is displayed in a stylized format
and the remainder is a phrase displayed without stylization. The question of
whether any stylization “recues” the registration, however, is typically pertinent
only where a mark is comprised solely of merely descriptive or generic elements,
which are all displayed in a stylized format. Thus, the relevant prior case law and
prior registrations have limited persuasive value. While we have considered them
as guidance, we have judged the necessary degree of stylization required to support
registrability of the term “3d” only in terms of the overall impression the stylization
lends to the mark as a whole, that is, as merely a factor in the determination. The
question of whether the stylized term “3d” would be registrable if standing alone is
not before us.
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III. DIGITAL DESIGN DEFINITION is Not Merely Descriptive
The final portion of the mark is the stacked wording “digital design
definition.” The most pertinent dictionary definitions of the words “digital,”
“design,” and “definition” are as follows:9
“digital” : electronic also : characterized
by electronic and especially computerized technology
“design” : to create, fashion, execute, or construct
according to plan : DEVISE, CONTRIVE
“definition” : clarity of visual presentation : distinctness
of outline or detail
The examining attorney argues that each term in the phrase “digital design
definition” describes an aspect of applicant’s goods, and that therefore, the entire
wording in the mark describes a characteristic or feature of the goods: “namely,
that the tiles contain a three-dimensional image with the digital design printed
with ‘finer crisper and smoother definition’ provided by the 3D digital inkjet
printing technology.”10 We believe, however, that it requires a multi-step reasoning
process to reach this conclusion. None of the evidence shows any combination of the
three words in use, other than as part of the mark. Therefore, it is just as plausible
that prospective purchasers would perceive the phrase as a string of individual, one-
word concepts, as it is that they would perceive them as a unit. Moreover, as a
unitary phrase the words are, at worst, suggestive, and not typically found in
standard English, but rather form an odd combination of words. We would only be

9 The definitions of “three-dimensional,” “digital,” “design,” and “definition” come from
www.merriam-webster.com and were attached to the final Office action, April 19, 2011.
10 Examining attorney’s Brief, p. 12-13 (unnumbered).
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speculating to find it more plausible that consumers would conceptualize the phrase
as being broken up into segments, such as: “digital design” modifying “definition,”
or as “digital” modifying “design definition.” Cf. In re American Academy of Facial
Plastic and Reconstructive Surgery, 64 USPQ2d 148 (TTAB 2002) (vertical
arrangement of words “facial,” “plastic” and “surgery” did not result in registrable
mark; phraseology was “ordinary” and in widespread use).
The only usage of the phrase “digital design definition” comes from Ms. Cox’s
interview with the author of the floorbiz.com article, wherein she describes
applicant’s line of floor and wall tiles as follows: “We call it 3D digital design
definition because that’s what it’s all about. We have digital printing with
litmus designs and we have the best definition any company can offer right
now.” Ms. Cox’s statement does not, however, support a finding that 3D
DIGITAL DESIGN DEFINITION merely describes the recited goods. No real
information is imparted by saying that 3D digital design definition is “what it’s all
about,” and it is equally plausible to simply perceive her use of the phrase in a
trademark manner, rather than in a descriptive sense.
The statements, from the Google website cache, that applicant “uses the
latest in digital print technology, allowing for infinite design capabilities” and
that “Marazzi reaches finer, crisper and smoother definitions for printed designs
than other digital products,”11 as well as Ms. Cox’s statement that applicant has
“the best definition,” also do not show that “digital design definition” would be

11 Office action September 27, 2010. This ad copy is repeated in some of the promotional
material attached to Ms. Cox’s declaration.
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perceived by prospective customers as a kind of shorthand for the ideas
expressed in these statements. The statements are suggestive only of the ideas
that in order to faithfully recreate the appearance of an actual tile of, e.g.,
marble or granite, applicant’s goods have been etched by an exacting electronic
or digital process. The statements do not immediately describe a quality or
feature of the tile itself, and such naturally occurring designs that are present
in granite, marble, wood, and the like, that are reproduced in applicant’s tiles,
have not been shown to be generally referred to as having “definition.” Finally,
we do not agree with the examining attorney that the fact that the mark is used
in proximity to applicant’s corporate name “Marazzi” or the words “Made in the
USA” on some of its advertising and point-of-sale material “reinforces the
descriptive nature of the entire wording.”12
Accordingly, we find that the wording “digital design definition,” whether
considered as a unitary phrase or as three separate words, does not immediately
impart information about a quality, feature, or characteristic of applicant’s wall and
floor tiles and is not merely descriptive in relation to the goods.
IV. The Mark as a Whole is not Merely Descriptive

Having ascertained the “meaning and weight of each of the components that
makes up the mark” we now consider the mark as a whole in the context of the
goods. Our critical determination that the mark is not in its entirety merely
descriptive is derived from an impression of the entire mark as a composite of the

12 Appeal Brief, p. 22 (unnumbered). The use in question appears on one of the specimens
of use filed with applicant’s trademark application.
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stylized “3d” juxtaposed alongside the vertically stacked arrangement of the
wording “digital design definition.” The mark evokes a new and unique commercial
impression apart from its separate components. Prospective purchasers will simply
perceive the mark as a brand for custom-designed wall and floor tiles, or otherwise
will need to engage in a multi-step reasoning process to discern that the goods are
digitally designed and/or etched by electronic means to create designs on wall and
floor tiles that appear three-dimensional, or that simulate naturally occurring
patterns in marble, granite, wood, etc., and which are so well-etched that they have
clarity of visual presentation, i.e., definition. “[I]f one must exercise mature thought
or follow a multistage 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 Nat'l Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB1983) (“Combinations of merely
descriptive components have been found registrable if the juxtaposition of the words
is inventive or evokes a unique commercial impression, or if the term has a bizarre
or incongruous meaning as applied to the goods.”).
Conclusion
The Office bears the burden of proving that a mark is merely descriptive by a
preponderance of the evidence, and “any doubt with respect to the issue of
descriptiveness should be resolved in applicant’s behalf.” In re Grand Metropolitan
Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994). See also, In re Accelerate
s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012); and In re Remacle, 66 USPQ2d at 1224
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(“the examining attorney has the burden of establishing that the mark is merely
descriptive”).
In this case, and resolving all doubt in favor of applicant, we find that the
record does not set forth at least a prima facie case in support of a refusal that the
mark, in its entirety, is merely descriptive.
Decision: The refusal to register the mark is reversed. Because of
our finding that the term “3d” is merely descriptive of applicant’s goods, however,
applicant is not entitled to registration of its mark as a whole absent a disclaimer of
the term “3d.” In light of the fact that applicant has made a voluntary disclaimer of
the term “3d,” the following statement will be entered into the record: No claim is
made to the exclusive right to use “3d” apart from the mark as shown. See TMEP
§1213.01(c) (8th ed. 2011) (voluntary disclaimer).