Diamond Rug & Carpet Mills, Inc.

Trademark Trial and Appeal Board

Jul 8, 1997

EX (T.T.A.B. Jul. 8, 1997)

Hearing: Paper No. 16
November 19, 1996 RLS/LCB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 8, 1997
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Diamond Rug & Carpet Mills, Inc.
________
Serial No. 74/661,908
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Edward J. Kondracki of Kerkam, Stowell, Kondracki & Clarke,
PC for applicant.
Odette Bonnet, Trademark Examining Attorney, Law Office 109
(Debbie Cohn, Managing Attorney)
_______
Before Rice, Simms and Hanak, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Diamond Rug & Carpet Mills, Inc. (applicant), a Georgia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark PET-PROOF
for textile carpet.1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 USC

1 Application Serial No. 74/661,908, filed April 17, 1995,
based upon applicant's bona fide intention to use the mark in
commerce. In its application, applicant has claimed ownership
of Registration No. 1,868,917, for the mark KID-PROOF. During
the prosecution of this case, applicant filed an amendment to
allege use, asserting use since February 2, 1996. The amendment
was accepted by the Examining Attorney.
Ser. No. 74/661,908
2
§1052(e)(1), arguing that applicant's mark is merely
descriptive of a characteristic, feature or purpose of
applicant's goods. Applicant and the Examining Attorney
have submitted briefs and an oral hearing was held.
The Examining Attorney has relied upon numerous
excerpts from computerized databases demonstrating
descriptive use of the phrase "pet proof" and such other
similar phrases as "animal proof," "cat proof" and "dog
proof." Some dictionary definitions have also been made of
record. Webster's II New Riverside University Dictionary
(1994) defines "proof" as, among other things, "impervious
to; able to withstand" and "fully or successfully
resistant." Among the thirty-three excerpts made of record
by the Examining Attorney are the following:
... prevent Fido or Tabby from smelling
up or tearing up the house when no one
is home? Can a home be made pet proof?
"I'm turned off by the words 'pet
proof,'" says Maureen MacNamara of the
Delta Society of Renton, Wash. "They
imply that pets are naturally
destructive, which they are not."
Star Tribune, September 9, 1991
* * * * * * * *
... leather version could wear from 20
to 30 years and never require
slipcovering or reupholstering. They
know it will be reasonably childproof
and petproof, although leather, too, can
be cut or torn by rough treatment or
clawed to shreds by insistent cats.
The Christian Science Monitor, August 3,
1983
Ser. No. 74/661,908
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* * * * * * * *
... yards of wall-to-wall carpeting.
It's like a town house the size of a
football field down here, padded and
pet-proof, in beautiful decorator colors
-- blood-lust rose, dawn-patrol
cerulean, command-decision fawn, and the
smell is the gunk they ...
The Washington Post, September 16, 1981
* * * * * * * *
... cats that dig up wood floors, and
dogs that shred Naugahyde sofas and
rugs. Decorators, architects and others
have improvised in pet-proof designing.
The improvisations assume that an animal
will almost always win out in the
affections of its owner, even over ...
... smooth-surfaced or tightly woven
fabrics. One of the currently favored
decorator fabrics is chintz, but it is
not always pet proof.
The New York Times, February 19, 1981
* * * * * * * *
... I love that word [eclectic]," Andrea
Pruitt says. "It covers everything."
She says the couple's main concern was
that everything be "dog-proof." The
house has a southern exposure at the
rear. Pink-gold brick floors in the
kitchen and sun porch were chosen as ...
The Atlanta Constitution, August 12,
1994
* * * * * * * *
When cats attack, when they rip up your
furniture, eat your plants, spray your
walls and fertilize your carpets, that's
not funny.
But we love our cats and they love us.
They really do, despite appearances, say
they experts. So let's see if we can't
...
Ser. No. 74/661,908
4
To cat-proof our homes, we have to
understand cats. This is not
impossible. The subject of human-cat
(and other pet) relationships is being
studied at the University of ...
The Houston Chronicle, June 25, 1994
* * * * * * * *
... fantasy, whether it's to create a
ravishing bedroom on a budget, or to
discover a handsome upholstery fabric
that's also kid- and dog-proof. The
only rule is to please yourself. After
all, you're not going to be visited by
the design police."
The San Francisco Chronicle, June 1,
1994
* * * * * * * *
... 1/2-year-old daughter, Lauren
Margaux, and a roly-poly pug, Contessa
Cassandra -- so the scheme had to be
dog-proof, too.
The San Francisco Chronicle, November
17, 1993
* * * * * * * *
If anyone has a dog-proof floor, the
Handyman - and Christine Trenz - would
like to hear about it. But don't
suggest declawing the dogs or getting
rid of them ...
The Boston Globe, April 12, 1992
It is the Examining Attorney's position that the dictionary
definition and the excerpts from printed publications
demonstrate that applicant's asserted mark would be
recognized by the average purchaser, when used in connection
with applicant’s goods, to mean that applicant's textile
carpets are impervious to or able to withstand pets.
Ser. No. 74/661,908
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According to the Examining Attorney, this feature of
applicant's goods could be attained through a number of
qualities of the carpet, including that the carpet may be
resistant to staining or that it may withstand destruction
or damage by virtue of use of certain materials. The
Examining Attorney also argues (as more fully discussed
below) that applicant has admitted that its asserted mark
could mean that the carpet was immune from or resistant to
damage by pets.
Applicant, on the other hand, argues that, at most, the
mark is suggestive. Essentially, applicant argues that some
of the excerpts made of record by the Examining Attorney
(many of which have not been reproduced above) have a
meaning different from that which the Examining Attorney
ascribes to the term “pet proof.” More particularly,
applicant argues that the meaning attributable to the term
"pet proof" varies from article to article and may have a
different meaning from that argued by the Examining
Attorney. Some of the articles made of record by the
Examining Attorney show the term "pet proof" being used to
refer to the protection of animals from potential dangers.
For example, applicant refers to the following article from
the PR Newswire:
"Pets are as innocent as young children
around chemicals," Strother said. "The
best way to prevent a poisoning is to
'pet-proof' accessible areas."
Ser. No. 74/661,908
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Another article talks about pet-proofing the house to
prevent a pet from chewing on cords of appliances. Other
articles talk about "pet-proof containers" and "petproof
liners" in the context of preventing pets from gaining
access to hazardous materials. In fact, applicant points
out that most of the excerpts made of record by the
Examining Attorney use the term "pet proof" as signifying
protection of pets from danger, rather than being resistant
to damage caused by pets. Applicant argues, therefore, that
because the term "pet proof" has different meanings in
different contexts, this term is not descriptive of
applicant's goods. Applicant argues, brief, 10, 13:
...Applying this age old test, one
readily recognizes that PET-PROOF does
not forthwith conjure up in one's mind
any particular product, let alone a
characteristic associated with the
product. It does not identify any
specific product nor does it impart any
direct information about a significant
function or characteristic of the
product. It could refer to texture or
type of fabric, treatment or use of non-
toxic dies for protection of a pet. It
could, of course, also refer to stain
protection, protection from clawing or
chewing. Obviously, it requires a great
deal of imagination and mental
gymnastics on the part of the consumer
to determine from the mark the type and
character of the product in connection
with which the mark is used...
As hereinbefore stated, the mark PET-
PROOF, could just as easily signify a
product which is non-toxic to pets as
well as one which is immune to staining.
It could also refer to a product immune
from destruction or damage by virtue of
Ser. No. 74/661,908
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use of certain materials which are not
subject to clawing. To hastily assume
that the words when used together
immediately describe to consumers some
magic characteristic of the product is
simply unfounded. Practically speaking,
PET-PROOF as used in connection with
carpets is likely to suggest one of many
purely arbitrary connotations such as,
for example, freedom from toxicity, safe
for pets, protection against pulls or
unraveling, or protection against
stains, but it cannot be said with any
degree of certainty that it identifies
immediately a specific laudatory
characteristic of the product.
Finally, applicant points to its ownership of a registration
of the mark KID-PROOF and argues that any doubt as to the
registrability of applicant's mark should be resolved in
favor of publication for opposition purposes. It is
applicant's position, Amendment, filed September 29, 1995,
p. 7:
[I]t is respectfully submitted that PET-
PROOF is at best only suggestive of an
attribute of Applicant's carpet
products. The mark is certainly not
merely descriptive of the product,
because it does not convey any immediate
information regarding such products or
significant attributes thereof. The
mere suggestion of a product being
capable of resisting some form of damage
from pets is too remote and speculative
to support a merely descriptive
connotation for the mark when other
equally plausible connotations are
attributable to the term.
Whether or not a term is merely descriptive must be
considered in relation to the specific goods for which
registration is sought, the context in which an asserted
mark is used on labels, packages or advertising material,
Ser. No. 74/661,908
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the possible significance of the term in relation to the
goods and the likely reaction thereto of the average
purchaser as he or she encounters the goods in the
marketplace. In re Abcor Development Corporation, 588 F.2d
811, 200 USPQ 215, 216 (CCPA 1978).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant's mark, as applied to applicant’s
carpets, is merely descriptive. The dictionary definition
of record indicates that the term "proof" may mean
"resistant" or "able to withstand." Also, applicant
concedes that, while many, if not most, of the uses of this
term made of record by the Examining Attorney are in the
sense of protecting pets from harmful objects or substances,
some of them do show the term to be used in the context of
meaning that a certain material, such as rugs, fabrics and
textiles, may be resistant to damage from pets. Of course,
the fact that a term may have a different meaning in another
context is not controlling on the issue of mere
descriptiveness. See In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). We must examine the meaning of the term in
relation to the goods with which it is used. Indeed, the
specimens of record, which may be looked at to determine the
Ser. No. 74/661,908
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meaning that an asserted mark may have to prospective
purchasers, show that the term "Pet-proof" is used in the
sense of being resistant to stains. While it may be true,
as argued by applicant, that applicant's mark in the
abstract does not reveal the specific feature or
characteristic (such as color, texture, type of fabric,
treatment, etc.) to which the mark may refer, such specific
information need not be conveyed by a mark in order for it
to be merely descriptive.
Decision: The refusal to register is affirmed.
J. E. Rice
Ser. No. 74/661,908
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R. L. Simms
E. W. Hanak
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser. No. 74/661,908
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