Imperial Wall-coverings, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 75092656 (T.T.A.B. Mar. 30, 1999)

Paper No. 10
GDH/gdh
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 30 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Imperial Wallcoverings, Inc.
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Serial No. 75/092,656
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F. Michael Sajovec of Myers Bigel Sibley & Sajovec for Imperial
Wallcoverings, Inc.
Jeffery C. Coward, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Sams, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Imperial Wallcoverings, Inc. has filed an application
to register the phrase "COLOR OPTIONS" as a trademark for
"wallcovering sample books"1 in International Class 16.2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis

1 Ser. No. 75/092,656, filed on April 16, 1996, which alleges a bona
fide intention to use such phrase in commerce.
2 Applicant also seeks registration of such phrase for "modular display
racks" in International Class 20; "fabric shower curtains and
valences" in International Class 24; and "plastic and vinyl
wallcoverings" in International Class 27.
Ser. No. 75/092,656
2
that, when used in connection with applicant’s goods, the phrase
"COLOR OPTIONS" is merely descriptive of them.3
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.
Applicant, while conceding in its brief that "the
descriptive use of the term ’color options’ might suggest a
wallcovering sample book with many choices of colors," argues
that such "is not the nature of Applicant’s goods." Referring,
in this regard, to the promotional flyer which accompanies its
brief, applicant asserts that:
The concept underlying Applicant’s
wallcovering sample books is the presentation
of wallcoverings to the consumer in
completely coordinating groups of patterns.
The patterns within each group have a common
color theme and are chosen so that any
pattern can be mixed or matched with any
other pattern in that group. Each grouping
is also specifically designed to inter-
coordinate with a companion grouping (e.g.,
Hunter green and Burgundy) to provide a
greater number of choices for the consumer.
Within each grouping are a wide variety of
patterns (such as stripes, dots, florals and
plaids) in a number of different styles
(e.g., Country, Traditional, Bath, Mensware).
....

3 Although, on the same ground, the Examining Attorney also initially
refused registration of such phrase with respect to the goods set
forth in the other three classes of the application, he subsequently
withdrew the refusal as to the goods in those classes.
4 Applicant, with its brief, submitted for the first time a copy of a
promotional flyer for its goods. While the submission is untimely
under Trademark Rule 2.142(d), the Examining Attorney has not objected
thereto and has, instead, treated such evidence as being of record by
discussing it in his brief. In view thereof, the promotional flyer
furnished by applicant is deemed to form part of the record in this
appeal and has therefore been considered.
Ser. No. 75/092,656
3
....
Applicant’s wallcovering books have been
carefully arranged by professionals, such
that all of the patterns shown within each
grouping (i.e., Navy/Primary and
Hunter/Burgundy) will coordinate together.
For example, a consumer might choose a
striped pattern from the Hunter group to
cover a wall below a chair rail and a small
print pattern and floral border from the
Burgundy group for above the chair rail. The
average consumer may not feel comfortable
choosing such disparate wallcovering patterns
and colors on his/her own. Applicant’s
wallcovering sample books assist consumers in
confidently mixing and matching a variety of
patterns within and across color groups, so
as to achieve a more professional effect.
Thus, according to applicant, it is not the case that
its "COLOR OPTIONS mark would immediately and only convey
Applicant’s mix and match concept of coordinating wallcoverings
to the average consumer using wallcovering sample books."
Instead, applicant urges that "the ordinary understanding of the
term ’color options’ would be a wallcovering book offering many
choices of wallcovering colors." Specifically, applicant insists
that:
Applicant’s wallcovering sample books
do not simply offer the consumer a choice of
many colors. Indeed, the choice of colors
is intentionally limited. The wallcovering
patterns grouped together in the sample
books have been chosen so that they can be
mixed and matched among themselves and a
companion group. Not all of Applicant’s
wallcoverings are compatible with this
concept because of the strict requirement
that all patterns ... in the COLOR OPTIONS
sample books must coordinate across that
color group and the companion color group.
The term ’color options’ ... does not convey
Applicant’s complete mix and match concept
at all to the ordinary consumer.
Ser. No. 75/092,656
4
Applicant therefore maintains that the phrase "COLOR OPTIONS" is
only suggestive rather than merely descriptive of its goods.
The Examining Attorney, on the other hand, contends
that such phrase "merely describes the primary feature or purpose
of the applicant’s wallcovering sample books." In support of his
position, the Examining Attorney has made of record and relies
upon the definition of the term "option," which the Random House
Unabridged Dictionary (2d ed. 1993) at 1360 defines in relevant
part as "something that may be or is chosen; choice." When
combined with the word "color," the Examining Attorney argues
that "the resulting term ’COLOR OPTIONS’ quite literally means a
’choice of colors,’" which is what applicant’s wallcovering
sample books provide to prospective customers.
In addition, the Examining Attorney points to
representative excerpts, of which we find the following to be
particularly pertinent, from his searches of the "NEXIS" database
as "evidence that the proposed mark is used extensively to
describe the choices of color that potential consumers are
presented with when purchasing a variety of products including
wallcoverings" (emphasis added):
"’I thought of Corian as a top-of-the-
line countertop, but there were only six
color options, which didn’t add a lot of
pizazz to a kitchen,’ said Turner." --
Washington Post, September 7, 1996;
The designers specified vinyl
composition tile ... for its maintenance,
durability and varied color options" -- Chain
Store Age, September 1, 1996;
"May 30: The St. Martins return from
vacation with questions for the designers,
Ser. No. 75/092,656
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including a request for different color
options for the wall coverings." -- San
Francisco Chronicle, August 9, 1995;
"[Y]ou enter the dining room, which,
along with the rest of the apartment (except
the bathrooms), is carpeted in a pale brown.
(There are other color options, including
blue, beige and gray.)" -- Chicago Tribune,
June 11, 1993;
"I would recommend neutrals - not
necessarily beige - for the tile, tub,
countertops and other surfaces. They allow
more color options for the wallcoverings,
window treatments and towels." -- Atlanta
Journal and Constitution, January 20, 1991;
"[J]ohnson was one of the first
homebuilders to try EIFS. The idea of
putting a continuous layer of insulation on
the outside of the wall framing appealed to
him, as did the ease of installation, the
color options and the potential for
incorporating innovative three-dimensional
trim elements into his houses." -- Custom
Builder, July 1990);
"Carpeting and wall colors are keyed to
three color options - beige, green, and plum
- that work well with most tenants’
furnishings." -- Restaurant-Hotel Design
International, August 1989; and
"Cement Finish USG Durock, an exterior
finish with the appearance and texture of
stucco, is part of the manufacturer’s
complete exterior wall system. Twenty color
options and several textured effects are
illustrated in this brochure, which includes
details and specifications." -- Progressive
Architecture, October 15, 1988.
The following excerpt, we note, is also especially relevant
(emphasis added):
"Vreeland’s patterns come in pearl,
blue, teal, indigo, ruby and rose, and her
wallcovering book is organized according to
color, so that each section contains all the
patterns and solids that can be bought in
that color." -- Arkansas Democrat-Gazette,
Ser. No. 75/092,656
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January 23, 1987 (article headlined in part:
"Wallpaper explodes into prints").
The Examining Attorney, in view of such evidence,
maintains that "color options" is a term which "is used
extensively to describe the choices of color that potential
customers are presented with when purchasing a variety of
products including wallcoverings." The mere descriptiveness of
the phrase "COLOR OPTIONS," the Examining Attorney accordingly
concludes, "is particularly clear when used in connection with
wallcovering sample books because the primary, if not only,
purpose of a wallcovering sample book is to allow customers to
select colors, patterns and textures from among various options."
It is well settled that a phrase or term is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a phrase or term describe
all of the properties or functions of the goods or services in
order for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the phrase or term describes a
significant attribute or idea about them. Moreover, whether a
phrase or 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
Ser. No. 75/092,656
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significance that the phrase or term would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Consequently, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
In the present case, it is our view that, when applied
to applicant’s "wallcovering sample books," the phrase "COLOR
OPTIONS" immediately describes, without conjecture or
speculation, a significant feature or primary purpose of
applicant’s goods, namely, that they inform prospective
purchasers of the color options available for applicant’s
wallcoverings. Such phrase is not vague, ambiguous or otherwise
so indefinite that it fails to describe precisely the choices of
colors presented by applicant’s wallcovering sample books. Nor
is there anything in the combination of the words "COLOR" and
"OPTIONS" into the phrase "COLOR OPTIONS" which is incongruous or
otherwise subject, in the context of applicant’s goods, to a
myriad of possible meanings. Instead, the "NEXIS" excerpts and
the dictionary definition of record of the word "option"
unambiguously demonstrate that the phrase "COLOR OPTIONS" is a
common or ordinary term for a variety of products, including
wallcoverings, which are offered to consumers in a choice of
colors. Consequently, as applied to books providing samples of
wallcoverings, the phrase "COLOR OPTIONS" would forthwith convey
only a merely descriptive significance.
Ser. No. 75/092,656
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Moreover, even though applicant asserts that its
wallcovering sample books provide the consumer with choices of
coordinated patterns, such patterns--as applicant has admitted--
"have a common color theme". It is thus clear, as persuasively
argued by the Examining Attorney, that (footnotes omitted;
emphasis in original):
[E]ven assuming arguendo that the
identification of goods did specifically
identify the nature of applicant’s
wallcovering sample books as described
throughout the applicant’s appeal brief, the
descriptive nature of the mark would not be
minimized. .... In this case, it is clear
from the record that the applicant’s
wallcovering sample books offer "options" or
"choices" between different colors and/or
color groups. As conceded by the applicant,
"to the average consumer the term ’color
options[,]’ when used in a merely descriptive
... sense, means a choice of colors ....
.... Therefore, the fact that the
applicant’s wallcovering [sample] books may
intentionally limit the consumer’s options is
irrelevant. In fact, it is likely that all
wallcovering sample books narrow the
consumer’s options in some manner (i.e., by
style, theme, color, etc.). However, as long
as the consumer is allowed to choose between
two colors, a "color option" still exists.
Accordingly, while the applicant asserts ...
that the choice of colors is intentionally
limited, the applicant does not assert that
the choice of colors is eliminated.
Therefore, the applicant’s [particular] type
of wallcovering [sample] books has not
eliminated "color options" as a feature of
its goods, it has simply removed what it
considers "bad color options" from the
wallcovering sample books.
There is simply nothing in the phrase "COLOR OPTIONS" which
requires that consumers who consult applicant’s goods utilize
imagination, cogitation or mental processing, or gather further
Ser. No. 75/092,656
9
information, in order to perceive readily and precisely the
merely descriptive significance of such phrase.
Accordingly, because the phrase "COLOR OPTIONS" conveys
forthwith a significant feature or primary purpose of applicant’s
wallcovering sample books, it is merely descriptive of such goods
within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
J. D. Sams
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board