Columbia Insurance Company

Trademark Trial and Appeal Board

Jun 4, 2009

No. 77281250 (T.T.A.B. Jun. 4, 2009)

Mailed:
June 4, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Columbia Insurance Company
________

Serial No. 77281250
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Lisa A. Iverson and Jeremy M. Roe of Neal & McDevitt, LLC
for Columbia Insurance Company.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Walters, Bucher and Bergsman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
“… We can follow [the ants’] cue to create a more inspiring engagement –
a partnership with nature. We can build factories whose products and by-
products nourish the ecosystem with biodegradable material and recirculate
technical materials instead of dumping, burning, or burying them. … And
there can be many of us and the things we make, because we have the right
system – a creative, prosperous, intelligent, and fertile system – and like the
ants, we will be ‘effective’.”

-- Architect William McDonough and chemist Michael Braungart,
CRADLE-TO-CRADLE: REMAKING THE WAY WE MAKE THINGS, at 156. (©2002)

Columbia Insurance Company seeks registration on the
Principal Register of the mark CARPET TO CARPET (in
standard character format) for services applicant has recited
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77281250
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as “receiving used carpet products for subsequent
reclamation of the carpet” in International Class 37.1
The Trademark Examining Attorney refused registration
on the grounds that (1) applicant has failed to provide an
acceptable recitation of services, and that (2) applicant
has failed to disclaim the word “carpet” – a merely
descriptive term under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1).
After the Trademark Examining Attorney made the
refusals finals, applicant appealed to this Board. We
reverse both of these refusals to register this mark.
I. Proposed recitation of services
Applicant’s original recitation was “receiving carpet
products for subsequent reclamation of the carpet” in
International Class 37. In her first Office Action, the
Trademark Examining Attorney suggested instead: “carpet
reclamation services, namely, refurbishing carpets”
(emphasis supplied) in International Class 37.

1 Application Serial No. 77281250 was filed on September 17,
2007 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

Serial No. 77281250
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Applicant argues that this suggested language does not
accurately represent the scope of services provided by
applicant under this mark. Accordingly, applicant proposed
the recitation of services listed above, merely adding the
word “used” to its original recitation for further
clarification: “receiving used carpet products for
subsequent reclamation of the carpet.”
The Trademark Examining Attorney argues that this is
deficient because it is indefinite, may include services in
more than one class, and that applicant’s reliance upon
prior registrations to establish the acceptability of the
recitation of services is misplaced.
Applicant’s Shaw Industries is a major manufacturer of
floor coverings for commercial and residential applications.
Like many others in the carpet manufacturing industry, it is
seeking ways continuously to reduce its environmental
footprint and divert as much used carpet as possible from
burial in overflowing landfills across the nation.
Applicant’s commitment to the environment includes
developing sustainable carpet products that can be broken
down continually and reused, returning “carpet to carpet”
(and “backing to backing”) through a perpetual, closed-loop
Serial No. 77281250
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or “cradle-to-cradle” recycling.2 Applicant acknowledges
that it is involved in activities such as transporting,
sorting, processing and manufacturing activities. And
undoubtedly, some small percentage of the used carpet that
applicant receives may be repurposed – i.e., cleaned and
refurbished and given to a charity, or re-entered into the
marketplace as used carpet. However, the emphasis
throughout the prosecution of this application has been on
the intake part of the post-consumer cycle – the collection/
diversion of post-consumer used carpet. Furthermore, the
long-term goal of applicant’s reclamation efforts is
“closed-loop recycling” where the carpet components (e.g.,
nylon face fiber and proprietary backing materials) are
reclaimed and recycled into the manufacture of new carpet.
As seen above, applicant’s CARPET TO CARPET services
involve collecting used carpet for reclamation.
Applicant has observed correctly that the Trademark
Examining Attorney “has fixated on the term
‘refurbishing’.” The verb “refurbish” has connotations of
making the carpet brighter and prettier, restoring the same

2 For the test of materials for sustainability, applicant uses
the Cradle-to-Cradle Design Protocol to determine whether
individual materials are safe for humans and the environment.
Secondly, it is critical that components can be recyclable
through a closed-loop process that includes a post-consumer
collection system.
Serial No. 77281250
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piece of carpet to its former good condition in a cosmetic
manner. It suggests a minor upgrade where the carpet may be
cleaned, renewed and appropriately certified.
With its commitment to “cradle-to-cradle”
sustainability, applicant rightly rejects an incorrect
and limiting recitation of services suggesting that it
renews carpet in a cosmetic manner. Applicant’s analogy
is apt in that enterprises involved in recycling aluminum
cans are not in the business of “refurbishing” aluminum
cans in order to re-use the same old can. Rather, the
aluminum can recycler reclaims the technical nutrients of
the old can to make an entirely new can.

for “receiving used aluminum
products for subsequent
reclamation of the aluminum” in
International Class 37;3

3 Registration No. 1240595 issued on May 31, 1983; cancelled
Sec. 8.

Serial No. 77281250
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for “receiving used aluminum
products for subsequent
reclamation of the aluminum” in
International Class 37;4

Given an even greater variety of downstream
possibilities for the technical materials of used carpet,
the concept of carpet “reclamation” is a broad term
indeed. After collecting the used carpet, the next part
of the cycle could include repurposing or refurbishing,
recycling in a closed-loop to make new carpet, down-
cycling to make other consumer products, or perhaps even
burning it in a waste-to-energy plant.
The core services offered under this mark are the
“collection” or “receiving” of carpet products. To the
extent that applicant uses this very same mark for
downstream services (e.g., transporting, processing and
manufacturing activities), and desires the benefit of
federal trademark protection therefor, applicant will need
to submit other applications for these classes of services.
Accordingly, we find that applicant’s proposed
recitation of services is sufficiently definite to pass
this mark on to publication.

4 Registration No. 1397119 issued on June 10, 1986; cancelled
Sec. 8.
Serial No. 77281250
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As to the related issue of whether the proposed
recitation of services could include services in more than
one class, again we agree with applicant. We see no hint
in applicant’s proposed recitation, for example, of any
attempt to include materials treatment services that would
be classified in International Class 40. Rather, the
proposed recitation, on its face, is appropriately limited
to services in International Class 37.
II. Disclaimer of the word “Carpet”
We agree with the Trademark Examining Attorney that
the word “carpet” is descriptive when used in connection
with the services applicant intends to provide under this
mark, namely, the collection of post-consumer used carpet.
Accordingly, the only remaining issue is whether the term is
deemed to have lost its descriptive significance within
this composite phrase.
In support of her position of requiring a disclaimer,
the Trademark Examining Attorney points to a similarly-
constructed mark for analogous services where the
registration includes a disclaimer:
Serial No. 77281250
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for “paper recovery and
collection services for
recycling” in International Class
37;
[Registration No. 2821935
issued on March 16, 2004. No
claim is made to the word “Paper”
apart from the mark as shown.]

In spite of the existence of this single analogous
registration, we agree with applicant. When first
encountering applicant’s adopted term, one might well be put
in mind of the expression, “ … earth to earth, ashes to
ashes, dust to dust,” from the Book of Common Prayer, or
even the more recently-popularized, Twenty-First Century
concept of “cradle-to-cradle” – a paradigm that seems to
have inspired applicant. The way this almost-poetic turn of
phrase rolls off the tongue, we find that it involves enough
creativity to form a unitary whole, and hence, supports an
exception to the need to disclaim an otherwise merely
descriptive term. See TMEP § 1213.05(e).
Decision: We hereby reverse the refusals of the
Trademark Examining Attorney. Hence, the mark in this
application, namely CARPET TO CARPET, to be used in
connection with services correctly recited as “receiving
used carpet products for subsequent reclamation of the
carpet” will be published for opposition in due course,
without need for a disclaimer.