Brian Newville

Trademark Trial and Appeal Board

Aug 22, 2013

No. 85470364 (T.T.A.B. Aug. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brian Newville
________

Serial No. 85470364
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Eric Hanscom of Intercontinental IP for Brian Newville.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Cataldo and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Brian Newville, seeks registration on the
Principal Register of the standard character mark
MANTLEMOUNT for “metal audio, video and computer wall and
ceiling mounts” in International Class 6.1
Applicant appeals from the final refusal of
registration on the ground that the mark is merely
descriptive of the identified goods. Trademark Act

1 Application Serial No. 85470364, filed November 11, 2011, is
based on an allegation of use in commerce under Section 1(a) of
the Trademark Act as of November 8, 2011.
Ex Parte Appeal No. 85470364

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§ 2(e)(1); 15 U.S.C. § 1052(e)(1). Applicant and the
examining attorney filed main briefs on the issue under
appeal.2
We affirm.
I. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods or services with
which it is used. See, e.g., In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009-10 (Fed. Cir. 1987).
Whether a particular term is merely descriptive is
determined in relation to the goods or services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In other words, the issue is whether someone who knows what

2 The examining attorney’s objection to materials attached to
applicant’s brief on appeal that were not made of record during
prosecution of the involved application is sustained. See
Trademark Rule 2.142(d). See also In re Volvo Cars of North
America, Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Jump
Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006); and In re District
of Columbia, 101 USPQ2d 1588, 1591 (TTAB 2012). Accordingly,
these materials have not been considered.

Ex Parte Appeal No. 85470364

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the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v.
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark
Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); and In re
Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in
order to determine what product or service characteristics
the term indicates, the term is suggestive rather than
merely descriptive.” In re MBNA America Bank N.A., 340
F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978);
and In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983).
II. Discussion
We begin our determination by considering the applied-
for mark and the recited goods. Applicant’s mark is
MANTLEMOUNT, identifying “metal audio, video and computer
wall and ceiling mounts.” In his March 9, 2012 response to
the examining attorney’s Office action, applicant
acknowledges:
Applicant’s product is a TV mount that sits above
a mantle. It does not attach to a mantle, nor
Ex Parte Appeal No. 85470364

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does it require a mantle to work. Indeed, it
could be mounted to any wall, with or without a
mantle. This can be seen both in the patent
application and the pictures. As such, while the
name may give the impression that Applicant’s
device mounts something to a mantle, the reality
is that it CAN mount a TV above a mantle, thus
the name is not descriptive of the function of
the invention.

With his response, applicant submitted drawings from a
patent for the identified goods, as well as the following
photographs thereof.
In support of the refusal to register, the examining
attorney made of record several dictionary definitions,
including the following:
mount – an object to which another is affixed or on
which another is placed for accessibility, or use;3 and
mantle – a wooden or stone frame around the opening of a
fireplace, together with its decorative facing.4

3 Accessed on February 29, 2012 at education.yahoo.com, retrieved
from Merriam-webster.com and attached to the Office action of the
same date.
4 Accessed on October 19, 2012 at collinsdictionary.com and
attached to the Office action of the same date.
Ex Parte Appeal No. 85470364

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We turn then to the question of whether MANTLEMOUNT
(which is equivalent to “mantle mount”) is descriptive of
applicant’s metal wall and ceiling mounts for audio, video
and computer products. We observe initially that the novel
presentation of a mark that is the phonetic equivalent of a
merely descriptive word or term is also merely descriptive
if purchasers would perceive the different spelling as the
equivalent of the descriptive word or term. See In re
Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355
(C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of
“fast tie,” merely descriptive of tube sealing machines);
and In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding
“URBANHOUZING,” phonetic spelling of “urban” and “housing,”
merely descriptive of real estate services).
As noted above, the examining attorney has made of
record dictionary definitions of the salient terms
comprising the applied-for mark. Based upon these
dictionary definitions, we find that applicant’s mark
merely describes a feature or characteristic of applicant’s
goods, namely, that they may be used to mount televisions
and other electronic products on or above the outer
covering of a wall or the frame around a fireplace, i.e., a
mantle. It is settled that “evidence [that a term is
merely descriptive] may be obtained from any competent
Ex Parte Appeal No. 85470364

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source, such as dictionaries, newspapers, or surveys.” See
In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087,
(Fed. Cir. 2005); and In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 818 (Fed. Cir. 1986).
We note that applicant does not dispute these
definitions of the wording comprising its mark, but argues
that the combination thereof in its mark is not descriptive
of its goods. However, applicant’s argument is
contradicted by its own evidence and statements. As
reproduced above, photographs of applicant’s goods display
them as a flexible mount located above a fireplace mantle,
allowing a television to be viewed at several different
angles in a room. Thus, consumers will perceive
applicant’s goods either as a “mantle mount” for a
television or as something that allows one to “mantle
mount” a television. Regardless of whether consumers will
view applicant’s mark as a noun or a verb, the term MANTLE
MOUNT merely describes this feature of his goods.
Further, applicant acknowledges that his goods are a
television mount that sits above a fireplace mantle.
Applicant argues that his mounts are not attached to a
mantle itself, but rather above it, and may be affixed to
any wall. However, it is clear that applicant’s goods are
intended to allow one to mount, inter alia, a television
Ex Parte Appeal No. 85470364

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above a fireplace mantle for convenience and stylistic
purposes. The mere fact that it may mount a television
elsewhere or does not mount a television directly to the
mantle itself does not render the mark suggestive or
otherwise remove its descriptive meaning as applied to
applicant’s goods.
Nor are we concerned that the terms “mantle” and
“mount” comprising the mark may have additional definitions
in other contexts. As noted above, our determination of
whether MANTLEMOUNT is merely descriptive must be made in
the context of the applied-for goods, not in the abstract.
In re Abcor Dev. Corp., 200 USPQ at 218; and In re Remacle,
66 USPQ2d at 1224.
The totality of the evidence made of record by the
examining attorney and the information supplied by
applicant support a finding that, as applied to applicant’s
goods, the term MANTLEMOUNT would immediately describe,
without conjecture or speculation, a significant
characteristic or feature of the goods. Prospective
purchasers, upon confronting the term MANTLEMOUNT for
applicant’s goods, would immediately perceive that the
goods are used to attach televisions and other electronic
devices on or above a fireplace mantle.

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III. Conclusion
We have carefully considered all of the evidence and
argument of record, including any evidence not specifically
referenced herein. We conclude that applicant’s mark,
MANTLEMOUNT is merely descriptive of its identified goods.
Trademark Act § 2(e)(1).
Decision: The refusal to register is AFFIRMED and
registration to applicant is refused.