Eliane S/A - Revestimentos Ceramicos

Trademark Trial and Appeal BoardAug 1, 2019

87581122 (T.T.A.B. Aug. 1, 2019)

This Opinion is not a Precedent of the TTAB Mailed: August 1, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Eliane S/A - Revestimentos Ceramicos _____ Serial No. 87581122 _____ Scott W. Johnston of Merchant & Gould P.C., for Eliane S/S - Revestimentos Ceramicos Collier L. Johnson II, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Bergsman, Ritchie and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Eliane S/A - Revestimentos Ceramicos (“Applicant”) seeks registration on the Principal Register of the mark DecorTiles and design, reproduced below, for “ceramic coverings and porcelain tiles for floors and walls,” in Class 19.1 1 Application Serial No. 87581122 was filed on August 23, 2017, based on Applicant’s claim of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. Serial No. 87581122 - 2 - According to the description of the mark and color claim in the application, The mark consists of the word “DECOR” in gold, fading from dark gold at the top to light in the middle, back to dark gold at the bottom, followed by a red capital letter “T” before the letters “iles” again fading from dark gold at the top to light in the middle, back to dark gold at the bottom, underlined with a gold line. The color(s) Gold and Red is/are claimed as a feature of the mark. The Trademark Examining Attorney has required Applicant to disclaim the exclusive right to use the term “DecorTiles” on the ground that it is merely descriptive of Applicant’s “ceramic coverings and porcelain tiles for floors and walls.”2 Section 6 of the Trademark Act, 15 U.S.C. § 1056. A requirement under Section 6 of the Trademark Act, 15 U.S.C. § 1056, for a disclaimer of unregistrable matter in a mark is appropriate when that matter is merely descriptive of the goods. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Merely descriptive or generic terms are unregistrable 2 December 13, 2017 Office Action (TSDR 2); July 10, 2018 Office Action (TSDR 2); Examining Attorney’s Brief (6 TTABVUE 2 and 4). Applicant incorrectly states that the Examining Attorney refused to register the trademark DECORTILES for “ceramic coverings and porcelain tiles for floors and walls” on the ground that it is merely descriptive. Applicant’s Brief, p. 1 (4 TTABVUE 2); Applicant’s Reply Brief, p. 1 (7 TTABVUE 2). Nevertheless, we are satisfied that Applicant understands the final requirement for a disclaimer because Applicant contends that the mark sought to be registered is not merely descriptive and is registrable without a disclaimer. Id. Serial No. 87581122 - 3 - under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and therefore are subject to a disclaimer requirement if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1266 (Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012). Section 2(e)(1) of the Trademark Act precludes registration of a mark on the Principal Register that, when used in connection with an applicant’s goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark as a whole and do so in the context of the goods or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (emphasis added); In re Calphalon, 122 USPQ2d 1153, 1162 (TTAB 2017). Indeed, “[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, 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). “The major reasons for not protecting such [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular Serial No. 87581122 - 4 - goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Stereotaxis Inc., 77 USPQ2d at 1090 (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)). It is the examining attorney’s burden to show that a term is merely descriptive of an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts to Applicant. Id. The Examining Attorney contends that the term DecorTiles in the mark sought to be registered is merely descriptive because it consists of the descriptive word “Decor” and the generic term “Tiles” which retain their descriptive significance in the composite term DecorTiles that describes a feature of Applicant’s products, namely, that Applicant’s tiles will have a specific decor, style, or layout.3 Applicant argues, to the contrary, that DecorTiles is a unitary term because “Decor” and “Tiles” are so merged together that they cannot be regarded as separate elements.4 Also, Applicant contends that while “Tiles” is generic, the word “Decor” is suggestive when used in connection with “ceramic coverings and porcelain tiles for floors and walls.”5 3 Examining Attorney’s Brief (6 TTABVUE 4-5). 4 Applicant’s Brief, p. 4 (4 TTABVUE 5). Throughout its brief, Applicant inaccurately refers to its mark as DECORTILES. The mark is DecorTiles and design as reproduced at the beginning of the decision. Further, the word portion of the mark at issue in this appeal is presented in a stylized form, DecorTiles, rather than DECORTILES in a standard character format. Throughout this decision, we will refer to the term at issue as DecorTiles. 5 Id. Serial No. 87581122 - 5 - We now turn to the evidence of record. The word “decor” is defined, inter alia, as “decoration” or “the style and layout of interior furnishings.”6 Applicant submitted copies of 10 third-party registrations purportedly consisting of the word “Decor” to show that the USPTO does not consider the term “Decor” to be descriptive of goods in Class 19.7 The registrations are listed below: 1. Registration No. 5471581 for the mark BUILD DECOR for “ceramic tiles; terra-cotta floor tiles; wood tile floors” registered on the Supplemental Register;8 2. Registration No. 2297947 for the mark CLASSIC DECOR for “doors, door panels, door frames, door casings and door units; not of metal”;9 3. Registration No. 5353477 for the mark DecoraStone & Tile and design, reproduced below, for “wall coverings, namely, non-metal tiles that may be 6 Merriam-Webster.com attached to the December 13, 2017 Office Action (TSDR 4); see also Dictionary.com (“style or mode of decoration, as of a room, building or the like” or “decoration in general; ornamentation”) attached to Applicant’s June 13, 2018 Response to an Office Action (TSDR 10); CAMBRIDGE ACADEMIC CONTENT DICTIONARY (Dictionary.Cambridge.org) attached to Applicant’s June 13, 2018 Response to an Office Action (TSDR 11); MACMILLAN DICTIONARY (macmillandictionary.com) (“the style of decoration and furniture in a building”) attached to Applicant’s June 13, 2018 Response to an Office Action (TSDR 12). 7 June 13, 2018 Response to Office Action (TSDR 2). Application Serial No. 87157883 for the mark DECORBRICK has not registered. Id. at TSDR 20. A pending application is evidence only that an application has been filed as of a specific date. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). 8 Id. at TSDR 13. A mark registered on the Supplemental Register is registrant’s concession that the mark is merely descriptive. In re France Croissant, Ltd., 1 USPQ2d 1238, 1239 n.2 (TTAB 1986). 9 Id. at TSDR 14. Serial No. 87581122 - 6 - applied to walls made of nonmetallic material, namely, marble, granite, travertine, quartz and natural stones”;10 The description of the mark in the registration reads as follows: The color(s) red, gray, and white is/are claimed as a feature of the mark. The mark consists of the stylized letter “D” in red; the interior of the letter “D” contains a diamond shape made of several squares, rectangles and zig zag design, in all white; to the right of the letter “D” is the word “DECORASTONE” with “DECORA” in gray and “STONE” in red; below the word “DECORASTONE” is “& TILE” in red; the wording is surrounded by an incomplete rectangle in gray. The background is transparent.11 Registrant disclaimed the exclusive right to use “Stone & Tile.” 4. Registration No. 2420741 for the mark DÉCOR CABLE INNOVATIONS for, inter alia, “non-metal panels containing recycled materials comprised primarily of polystyrene for use in architectural structures as wall, ceiling and floor panels, interior decorating products, furniture, counters and shelving.”12 Registrant disclaimed the exclusive right to use “Cable Innovations.” 5. Registration No. 5346476 for the mark DecorCoat for “decorative glass”;13 10 Id. at TSDR 16. 11 Because the pertinent part of this registered mark is “Decora,” not “Decor,” the mark DecoraStone & Tile and design has little, if any, relevance. 12 Id. at TSDR 18. 13 Id. at TSDR 22. Serial No. 87581122 - 7 - 6. Registration No. 3829308 for the mark DECORIDGE for “non-metal shingles”;14 7. Registration No. 4722197 for the mark DECOROCK for “bagged decorative landscape rock” and “precast concrete stepping stones, edges, patio stones, stair treads and wall block”;15 8. Registration No. 2906667 for the mark DecoRock and design, reproduced below, for “landscape rock”;16 The description of the mark in the registration reads as follows: The color(s) purple, black and white is/are claimed as a feature of the mark. The color purple appears on the top portion of the evergreen trees and on the word DECOROCK; the color black appears on the outline of the mountain range, the lower portion of the evergreen trees and the wording WATER-WISE LANDSCAPE ROCK; and the color white appears on the face of the mountain range, 14 Id. at TSDR 23. 15 Id. at TSDR 25. 16 Id. at TSDR 27. Registration Nos. 4722197 and 2906667 are owned by the same entity. Because the pertinent part of this registered mark is “Deco,” not “Decor,” the mark DecoRock and design has little, if any, relevance. Serial No. 87581122 - 8 - lower portion of the evergreen trees and the bottom of the evergreen trees. Registration disclaimed the exclusive right to use “Landscape Rock.” 9. Registration No. 4109854 for the mark DECORWOOD for “laminate flooring”;17 and 10. Registration No. 4287550 for the mark GLASSDECOR for “non-metal ceiling tiles; non-metal wall panels; floor planks; non-metal door panels.”18 To rebut the third-party registrations submitted by Applicant, the Examining Attorney submitted five third-party registrations consisting in part of the word “Decor” for goods in Class 19 where the registrant disclaimed the exclusive right to use “Decor.” The registrations are listed below: 1. Registration No. 4064648 for the mark FUSION DECOR for “building materials, namely, ceramic tiles with stone and glass components”;19 2. Registration No. 4698590 for the mark GAUDI DECOR for, inter alia, “non- metal ceiling tiles”;20 17 Id. at TSDR 29. This registration was cancelled effective October 12, 2018. A cancelled or expired registration has no probative value other than to show that it once issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB 2007). See also Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of anything.”). 18 Id. at TSDR 31. 19 July 10, 2018 Office Action (TSDR 5). 20 Id. at TSDR 7. Serial No. 87581122 - 9 - 3. Registration No. 5471581 for the mark BUILD DECOR for “ceramic tiles; terra-cotta floor tiles; wood tile floors” registered on the Supplemental Register;21 4. Registration No. 5363110 for the mark FVZION DECOR for, inter alia, “ceramic tiles”;22 and 5. Registration No. 5427622 for the mark SABA HOME DECOR for “non-metal vent cover for HVAC ducts.”23 The Examining Attorney also submitted an excerpt from the ArtWork on Tile website (artworkontile.com) advertising “Bird Accent & Decor Tiles.”24 The website advertises the tiles as follows: Bird Accent & Decor Tiles Our bird accent & decor tiles will make a great addition to the decor of any lover of bird art. There is no dispute that the term DecorTiles contains one term, “Tiles,” a term which is included in the identification of goods, and which is generic. The issues before us are (i) whether the other term “Decor” is descriptive when used in connection with Applicant’s products and, if so, (ii) whether adding that descriptive term, renders the term DecorTiles, taken as a whole in the applied-for mark, suggestive or merely descriptive. “[A] suggestive mark requires imagination, thought 21 Id. at TSDR 10. 22 Id. at TSDR 12. 23 Id. at 15. In this registration, the registrant disclaimed the exclusive right to use “Home Decor.” 24 Id. at 19. Serial No. 87581122 - 10 - and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” DuoProSS v. Inviro, 103 USPQ2d at 1755. In considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. … [I]f ... two portions individually are merely descriptive of an aspect of appellant’s goods [or services], the PTO must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If each component retains its merely descriptive significance in relation to the goods or services, then the mark as a whole is merely descriptive. Id. at 1374; In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018). And if the mark as a whole is merely descriptive, the omission of a space between the two components would not diminish its descriptiveness. “It is almost too well established to cite cases for the proposition that an otherwise merely descriptive term is not made any less so by merely omitting spaces between the words....” Minn. Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967); see also In re Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, consultation and listing services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897n. 2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art”’). Serial No. 87581122 - 11 - Because the word “Decor” is defined as “decoration” or a “style or mode of decoration,”25 we find that it is merely descriptive when used in connection with “ceramic coverings and porcelain tiles for floors and walls.” It immediately conveys to consumers that the products are decorative coverings of tiles. This finding of fact is corroborated by the third-party website submitted by the Examining Attorney (“decor tiles will make a great addition to the decor of any lover of bird art”) and the third- party registrations wherein the exclusive right to use the word “Decor” is disclaimed when used in connection with decorative goods in Class 19.26 Further, we find that the term DecorTiles in the applied-for mark is merely descriptive because each term in the composite mark retains its descriptive significance and that term, in its entirety means and engenders the commercial impression decorative tiles without the necessity of multistep reasoning. See, e.g., In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1824 (TTAB 2012) (“[T]he words in the proposed mark SEMICONDUCTOR LIGHT MATRIX retain their dictionary meanings when used by applicant; and the proposed mark in its entirety is merely descriptive, because as the words are combined they do not create a meaning different from the individual elements.”); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term 25 Applicant admits that “‘decor’ may be an abbreviation, for decoration, or decorative, or decorate.” Applicant’s Brief, p. 6 (4 TTABVUE 7). 26 We also include Registration No. 5471581 for the mark BUILD DECOR for “ceramic tiles; terra-cotta floor tiles; wood tile floors” registered on the Supplemental Register submitted by Applicant. Serial No. 87581122 - 12 - “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network” because “beans” are building blocks used to create larger pieces of software and “agents” are a type of computer program and, therefore, anyone marketing software “beans” with the attributes of “agent” programs should be able to convey that fact by using the term AGENTBEANS). In other words, consumers encountering Applicant’s mark DecorTiles and design used in connection with “ceramic coverings and porcelain tiles for floors and walls” will immediately know that they are decorative tiles. As noted above, Applicant argues that DecorTiles taken as a whole is unitary and has a distinct meaning of its own, independent of its individual parts.27 First, Applicant contends that “merging [Decor and Tiles] together with a common golden lettering style for all of the letters but the large red “T” in the middle, as set forth below, creates a unique commercial impression separate and apart from the individual elements.”28 27 Applicant’s Brief, p. 4 (4 TTABVUE 5). 28 Id. at pp. 4-5 (4 TTABVUE 5-6). Serial No. 87581122 - 13 - We disagree. By merging “Decor” and “Tiles” together as shown above, Applicant created the commercial impression of a composite mark consisting of the words “Decor” and “Tiles,” not a term that creates a unique commercial impression other than the combination of “Decor” and “Tiles.” In fact, Applicant asserts that “consumers may perceive DECORTILES as ornamental tiles.”29 Ornamental tiles are decorative tiles.30 Applicant argues that DecorTiles is so highly stylized that it is not merely descriptive. Applicant’s mark likewise also incorporates a unique stylization of fading gold letters with a red “T.” This unique style, in combination with the term DECORTILES, creates a commercial impression unique and different from the DECOR and TILES elements.31 Apparently, the Examining Attorney considered the stylization of the term DecorTiles sufficiently distinctive as to create a commercial impression separate and apart from the term DecorTiles, thus, allowing the mark in its entirety to be 29 Applicant’s Brief, p. 6 (4 TTABVUE 7). 30 “Ornamental” is defined, inter alia, as “decorative.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed on July 31, 2019. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 31 Applicant’s Brief, p. 6 (4 TTABVUE 7). Serial No. 87581122 - 14 - approved for publication so long as Applicant disclaimed the exclusive right to use the descriptive term DecorTiles. It does not, however, mean that DecorTiles creates a commercial impression separate and apart from the words “Decor” and “Tiles” used in combination. We are unpersuaded by Applicant’s argument that DecorTiles is not merely descriptive because Applicant coined the term DecorTiles, it is not commonly used for “ceramic coverings and porcelain tiles for floors and walls” and, presumably, competitors do not have any need to use it.32 We note that the Examining Attorney is not required to show such use in order to establish that a term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) (no requirement that examining attorney prove competitor’s need to use mark); In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (citations omitted). The fact that an applicant may be the first or only user of a descriptive designation does not justify registration if that term is merely descriptive. Id. Finally, the third-party registrations submitted by Applicant do not persuade us to reach a different conclusion. Registration No. 3829308 for the mark DECORIDGE and Registration No. 4287550 for the mark GLASSDECOR are presented as unitary marks rather in the telescoped version in which Applicant’s mark is displayed. Further, the mark DECORIDGE is a composite mark that is not a combination of two words like Applicant’s mark. 32 Applicant’s Brief, pp. 10-11 (4 TTABVUE 11-12). Serial No. 87581122 - 15 - The three remaining registrations, Registration No. 2297947 for the mark CLASSIC DÉCOR, Registration No. 2420741 for the mark DÉCOR CABLE INNOVATIONS, and Registration No. 5346476 for the mark DecorCoat, simply do not rebut the prima facie case of that the term DecorTiles is merely descriptive. Moreover, the Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by examining attorneys in other applications based on different records. 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 Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). “It has been said many times that each case must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (internal citation omitted). Upon consideration of the applicable law, the evidence and the arguments of Applicant and the Examining Attorney, we find that the term DecorTiles in Applicant’s proposed mark DecorTiles and design is merely descriptive under Section 2(e)(1). Accordingly, the requirement for Applicant to disclaim the exclusive right to use the term DecorTiles is affirmed. Decision: Registration to Applicant is refused. However, in the event that Applicant submits the required disclaimer within thirty days from the mailing date of this decision, the refusal to register will be set aside and the application will Serial No. 87581122 - 16 - proceed to publication.33 See Trademark Rule 2.142(g). 33 A proper disclaimer would read: “No claim is made to the exclusive right to use DecorTiles apart from the mark as shown.”