Congoleum Corp.

Trademark Trial and Appeal Board

Jan 6, 2000

No. 74586885 (T.T.A.B. Jan. 6, 2000)

Paper No. 19
RLS/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 6, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Congoleum Corporation
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Serial No. 74/586,885
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Trebor Lloyd of Amster, Rothstein & Ebenstein for Congoleum
Corporation.
Andrew A. Roppel, Trademark Examining Attorney, Law Office
109 (Deborah Cohn, Managing Attorney).
_______
Before Simms, Cissel and Seeherman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Congoleum Corporation (applicant), a Delaware
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the asserted mark
shown below for plastic floor covering having a water
Ser No. 74/586,885
2
resistant, smooth or embossed service.1 The Examining
Attorney has made final a requirement for specimens which
show use of the asserted mark as a trademark for the goods
identified in the statement of use and in the application.
Applicant has appealed and briefs have been filed. No oral
argument was requested.
We affirm.
It is the Examining Attorney’s position that the
specimens of record, product guides distributed with
applicant’s goods, and other exhibits which applicant has
made of record (portions of a product catalogue), do not
show use of the asserted mark as a trademark, but merely as
a term which identifies an installation system or a choice
of installation methods. For example, the Examining
Attorney points to the use of the mark “Your Choice” on the
specimens of record, as shown below.

1 Application Serial No. 74/586,885, filed October 18, 1994,
based upon allegations of a bona fide intention to use the mark
in commerce. After the Examining Attorney approved this mark for
publication, applicant filed a statement of use asserting first
use and first use in commerce since February 8, 1995.
Ser No. 74/586,885
3
The Examining Attorney also points to the following uses of
the asserted mark shown in applicant’s catalogues.
Ser No. 74/586,885
4
It is the Examining Attorney’s position that the asserted
mark is used in connection with a method or procedure by
which one may install applicant’s flooring and that it
identifies a choice of installation methods. Because the
Examining Attorney believed that the specimens do not show
use of the asserted mark for applicant’s goods, the
Examining Attorney required that applicant submit
substitute specimens which show trademark use.
It is applicant’s position, on the other hand, that
the asserted mark is used by applicant in connection with
its FUTURA plastic floor covering, and that the mark refers
to a distinct feature of applicant’s goods –- its ease of
installation under a variety of procedures that the
consumer might choose. Applicant argues, Supplemental
Brief, 3:
Ser No. 74/586,885
5
Applicant contends that YOUR CHOICE, as used on
the specimens, creates a commercial impression
aside from describing a procedure or method of
installation and helps distinguish Applicant’s
flooring products from others’ flooring products.
The mark, YOUR CHOICE, has a direct association
with the flooring goods specified in the
Application and is being used in a way calculated
to project to consumers certain goods from a
single source or origin…
Further, in its original brief, 3, applicant
maintains:
There is no dispute that the slogan YOUR CHOICE
refers to some special feature or attribute of
the goods or, perhaps, a service related to the
goods. This does not make YOUR CHOICE incapable
of functioning as an indicator of the source of
goods. The mere fact that a slogan, or any other
kind of mark, may also refer to a service or
process or method related to goods or to some
attribute of those goods does not prevent the
mark or slogan from functioning as an indicator
of the source of those goods.2
While applicant concedes that the asserted mark is
secondary in nature to the mark FUTURA, applicant argues
that more than one trademark may be used in connection with
its goods.
It is well settled that not every word or combination
of words which appears on or in connection with a product
functions as a trademark. In re Remington Products Inc., 3
USPQ2d 1714, 1715 (TTAB 1987). Also, the fact that a mark

2 In a request for reconsideration, applicant sought to amend the
description to “advertising and installation services for plastic
floor covering,” but, after the Examining Attorney disallowed
Ser No. 74/586,885
6
may appear on the specimens of record does not, by that
fact alone, mean that it functions as a trademark. Upon
careful consideration of this record, we agree with the
Examining Attorney that the asserted mark is not used on
the materials of record as a trademark to identify
applicant’s floor covering, but rather as words which
merely impart information that applicant’s goods may be
installed in a number of ways. Consumers and potential
purchasers are likely to view the word FUTURA as
applicant’s trademark identifying and distinguishing
applicant’s floor covering, but not the words “Your
Choice”, as applicant contends.
Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark
Judges, Trademark Trial and
Appeal

that amendment, applicant withdrew the proposed amendment in its
brief.