Garden Innovations, LLC

Trademark Trial and Appeal Board

May 29, 2015

No. 85768319 (T.T.A.B. May. 29, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Garden Innovations, LLC
_____

Serial No. 85768319
_____

Timothy C. Matson of Lommen Abdo PA,
for Garden Innovations, LLC.
Jennifer D. Richardson, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Bucher, Kuhlke and Hightower,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Garden Innovations, LLC (hereinafter “Applicant”) seeks registration on the
Principal Register of the mark ROLL OUT FLOWERS (in standard character
format) for “mulch and seeds for agricultural purposes, namely, mats composed of
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wood fiber mulch containing seeds for flowers and ground cover” in International
Class 31.1
Registration was originally refused under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), on the basis that ROLL OUT FLOWERS is merely
descriptive of Applicant’s named goods. In its response of October 16, 2013,
Applicant traversed the descriptiveness refusal, while also arguing in the
alternative that the term has acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). In yet another alternative argument,
Applicant suggested its willingness to amend to the Supplemental Register. On
November 2, 2013, the Trademark Examining Attorney issued a new refusal on
the basis that ROLL OUT FLOWERS is generic and incapable of identifying
Applicant’s services under Section 23(c) of the Trademark Act, 15 U.S.C. § 1091.
Applicant maintains its position that it may register ROLL OUT FLOWERS on
the Principal Register and has appealed the refusals based upon its alleged
failure to acquire distinctiveness under Sections 2(f) of the Act and based upon
genericness under Section 23(c) of the Act.
After the Trademark Examining Attorney made the refusals final, Applicant
appealed to this Board.

1 Application Serial No. 85768319 was filed on October 31, 2012, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as December 5,
2003.
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I. Mere Descriptiveness
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)
(quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920)
(“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the
qualities, ingredients or characteristics of’’ the goods or services related to the
mark.”)). The determination of whether a mark is merely descriptive must be
made “in relation to the goods for which registration is sought, the context in
which it is being used, and the possible significance that the term would have to
the average purchaser of the goods because of the manner of its use or intended
use.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978)). It is not necessary, in order to find a mark merely descriptive, that the
mark describe each feature of the goods or services, only that it describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of
the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
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Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a non-descriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre
Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its
merely descriptive significance in relation to the goods or services, the
combination results in a composite that is itself merely descriptive. Oppedahl &
Larson LLP, 71 USPQ2d at 1371. However, a mark comprising a combination of
merely descriptive components is registrable if the combination of terms creates a
unitary mark with a non-descriptive meaning, or if the composite has a bizarre or
incongruous meaning as applied to the goods or services. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363
(TTAB 1983).
The Examining Attorney asserts that the combined dictionary definitions for
the individual words “Roll,” “Out” and “Flowers,” when used in connection with
applicant’s pre-seeded rolls that grow flowers, immediately conveys information
that the goods are in the nature of flower seed mats.
Applicant is certainly correct that it is improper for the Office to dissect a
mark and separately analyze the individual components. In this context,
Applicant points specifically to several significantly different definitions for the
term “Roll Out” from the fields of aeronautics, sports, business, games, and drag
racing.
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On the other hand, as contended by the Trademark Examining Attorney, this
analysis does not take place in a vacuum. Applicant’s alternative definitions of
the term “roll out” completely disregard the fact that Applicant’s goods are
gardening products. Unless it creates an obvious incongruity, an alternative
connotation of the term “roll out” derived from a distant field will not defeat a
Section 2(e)(1) refusal when the product at issue is a pre-seeded roll that grows
flowers. In other words, in making a determination on mere descriptiveness, we
need not, for example, assume that prospective consumers are blindfolded and
asked to describe the relevant goods knowing only the applied-for designation.
As to the two-word modifier “Roll Out,” even Applicant refers in its brief to the
general definition of “roll out” as “straighten by unrolling.”
Consistent with this definition, Applicant’s own trade
dress notes in several places the ease with which
consumers can “Roll out” the pre-seeded mat in order to
grow flowers, depicting a green cylindrical mat being
spread out by unrolling it.
To confirm that prospective consumers might well find the three-word phrase
to be merely descriptive, the Trademark Examining Attorney has gathered some
evidence from the Internet showing several uses of quite similar terminology to
label products that function much as Applicant describes its own goods:
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2

2 http://garden.lovetoknow.com/wiki/Roll_Out_Flowers. This article, written by Lou
Paun, a “Master Gardener,” appears in the “Home and Garden” section of the “Love To
Know” website providing “advice women can trust.”
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3

3 http://www.ehow.com/info_8704051_long-rollout-flower-bed-grow.html
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4
Applicant argues that the proposed mark is not merely descriptive because
this term requires a mental leap involving imagination, thought and perception

4 http://homeguides.sfgate.com/perennial-flower-roll-out-mats-57853.html
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on the part of prospective purchasers in order to reach a conclusion as to the
features or characteristics of the involved goods.
We disagree with Applicant’s arguments on this point. We find that the
individual terms retain their ordinary descriptive meanings when combined in
Applicant’s designation, “Roll Out Flowers.” Taking the individual meanings of
the words in Applicant’s applied-for term, the composite term adopted by
Applicant conveys information about the salient features and characteristics of
Applicant’s goods. We note that several writers on the Internet have combined
these words in a similar manner. This seems to support the position of the
Trademark Examining Attorney that when purchasers encounter the term “Roll
Out Flowers” used in connection with Applicant’s goods, they will immediately
understand this designation as describing a salient characteristic of Applicant’s
goods, namely, that the mats involved feature the ability to be rolled out for use.
The reason that the inexperienced gardener – or one without much time – might
purchase and use this product is the alleged ease with which it permits one to
grow flowers in a designated area by rolling out a mat.
As to the three-word composite as a whole, we find it is not ambiguous or
incongruous; nor does it present a double entendre such that “the merely
descriptive significance of the term [ ] is lost in the mark as a whole.” In re
RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (quotation omitted). Cf.,
e.g., In re Colonial Stores Inc., 157 USPQ at 385 (SUGAR & SPICE a double
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entendre for bakery products); In re Nat’l Tea Co., 144 USPQ 286 (TTAB 1965)
(NO BONES ABOUT IT a double entendre for fresh pre-cooked ham).
Relying upon the evidence of record reviewed above, we find that the term
“Roll Out Flowers” is inherently weak in this field, and that the term was, upon
its adoption and first use, at best for Applicant, highly descriptive of the involved
goods. The Trademark Examining Attorney has submitted ample evidence to
establish that when prospective purchasers encounter the term ROLL OUT
FLOWERS used in connection with Applicant’s identified goods, they will
immediately recognize this designation to be a combination of words conveying
information about salient features of a pre-seeded mat that grows flowers.
II. Acquired Distinctiveness
Having found this designation to be highly descriptive, we turn next to
Applicant’s assertion of acquired distinctiveness. Yamaha Int’l Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990). In this context, it is Applicant’s
burden to prove acquired distinctiveness. Yamaha, 6 USPQ2d at 1006; In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“There
is no doubt that Congress intended that the burden of proof [under Section 2(f)]
should rest upon the applicant … .”). Not surprisingly, “logically that standard
becomes more difficult as the mark’s descriptiveness increases.” Yamaha, 6
USPQ2d at 1008.
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A claim that applicant has been using the subject matter for a long period of
substantially exclusive use may not be sufficient to demonstrate that the mark
has acquired distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d 1948,
1952 (TTAB 2001) (66 years of use). The amount and character of evidence
required to establish acquired distinctiveness depends on the facts of each case,
Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970),
and more evidence is required where a mark is so highly descriptive that
purchasers seeing the matter in relation to the goods or services would be less
likely to believe that it indicates source in any one party. See In re Bongrain
International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990).
Evidence of acquired distinctiveness can include the length of use of the mark,
advertising expenditures, sales, survey evidence, and affidavits asserting source-
indicating recognition. However, a successful advertising campaign is not in itself
necessarily enough to prove acquired distinctiveness. In re Boston Beer Co. L.P.,
198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales
under the mark of approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars, not sufficient to
establish acquired distinctiveness in view of highly descriptive nature of mark).
It is the Trademark Examining Attorney’s position that ROLL OUT
FLOWERS is highly descriptive and Applicant’s evidence is not sufficient to
establish acquired distinctiveness. And as discussed above, we are persuaded by
the evidence of record that this term is highly descriptive of Applicant’s goods.
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In this context, as proof of acquired distinctiveness, Applicant relies upon a
statement describing Applicant’s length of substantially exclusive and continuous
use since 2003; information about Applicant’s sales of a variety of “Roll Out”
products; and evidence of Applicant’s marketing efforts, namely, sample
advertisements, photographs of product placements, and website screenshots.
The sales figures Applicant has provided pertain to all of its “Roll Out”
products, not simply “Roll Out Flowers.” And to the extent that the sales figures
are considered probative, robust sales may point to the overall commercial
success of Applicant’s goods, but alone do not establish that the relevant
consumers view the matter as a mark for such goods. See In re Boston Beer Co.,
53 USPQ2d at 1058; In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB
2000).
As to Applicant’s marketing efforts (e.g., sample advertisements, photographs
of product placements, and website screenshots), this evidence is merely
indicative of Applicant’s efforts to promote its product, not proof that the highly
descriptive term has actually acquired distinctiveness. See In re Pennzoil Prods.
Co., 20 USPQ2d 1753 (TTAB 1991). In fact, Applicant has provided no evidence
regarding how many potential consumers have encountered Applicant’s
marketing, and thus this evidence does not shed any light on consumers’
perceptions of the mark. Given the nature of the applied-for term, prospective
consumers subjected to this marketing effort may well see these references
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repeatedly but still perceive the term as nothing more than a three-word
description of the product that Applicant is marketing.
Accordingly, we find that Applicant has failed to submit evidence that
demonstrates that consumers perceive the applied-for term as pointing uniquely
to Applicant as the source of the goods, and thus Applicant has failed to submit
sufficient evidence to establish that the designation has acquired distinctiveness
under Section 2(f) of the Act.
III. Refusal based on Genericness
We turn then to the Trademark Examining Attorney’s refusal based upon
alleged genericness. When a proposed term is refused registration as generic, the
Trademark Examining Attorney has the burden of proving genericness by “clear
evidence.” In re Hotels.com, LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533-34 (Fed.
Cir. 2009); In re Merrill Lynch Pierce Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110, 1111 (Fed. Cir. 1987).
The critical issue is to determine whether the record shows that members of
the relevant public primarily use or understand the term sought to be registered
to refer to the category or class of goods or services in question. H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986); In re Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877
(TTAB 1992).
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Making this determination “involves a two-step inquiry: First, what is the
genus of goods or services at issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to that genus of goods or
services?” H. Marvin Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be obtained from any
competent source, including testimony, surveys, dictionaries, trade journals,
newspapers and other publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed.
Cir. 1985).
“An inquiry into the public’s understanding of a mark requires consideration
of the mark as a whole. Even if each of the constituent words in a combination
mark is generic, the combination is not generic unless the entire formulation does
not add any meaning to the otherwise generic mark.” In re 1800Mattress.com IP
LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005)).
We find that the genus of services at issue in this case is adequately defined
by Applicant’s identification of goods, specifically, a pre-seeded mat that grows
flowers. Thus, the term ROLL OUT FLOWERS is generic if the relevant public
understands it to refer to such gardening mats. See 1800Mattress.com, 92
USPQ2d at 1684 (genus of services is “online retail store services in the field of
mattresses, beds, and bedding ... [a]ccordingly, the mark is generic if the relevant
public understands MATTRESS.COM to refer to such online services.”)
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Turning to the second inquiry, Applicant asserts that the Trademark
Examining Attorney failed properly to analyze the commercial impression of the
phrase “Roll Out Flowers” in its entirety. In short, Applicant argues that the
Trademark Examining Attorney failed to prove genericness by clear and
convincing evidence.
As noted above, we have found the term ROLL OUT FLOWERS to be highly
descriptive. As to genericness, however, we note from the Internet articles
reproduced above that while the headline in the eHow screen shot uses the
designation “Roll-Out Flower Bed,” and the article uses the plural form (“Roll-
Out Flower Beds”), the writer, Kim Dieter, consistently uses the terms “seed
mats” and “flower beds” to name the product. In the San Francisco newspaper
article, April Sanders always uses the generic term “mats,” while the three-word
term “Roll Out Flowers” never appears. In addition to those reproduced above,
the Examining Attorney has submitted the following examples of this term as
used on the Internet:
5

5 http://www.mileskimball.com/mileskimball/displayitem.aspx?id=341349
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Pre-Seeded Sunflower Garden Roll Out Flowers
…Just prepare the soil, roll out the Pre-Seeded Sunflower Garden
mat, and water.
With these roll-out flowers, there’s no guesswork about seed
spacing or depth – the premium seeds are uniformly distributed …
• These roll-out hybrid sunflowers will grow quickly … 6

However, Applicant has provided evidence that Miles Kimball Company and
Improvements LLC are among its most dependable customers. Hence, we view
these screen prints as direct references to Applicant’s applied-for mark, and do
not hold against Applicant Improvements’ later lower-case usage in the text of
these three words in a generic manner. The entire record also shows that “mats,”
“beds,” or “rolls” are the commonly used terms of art for these gardening
products. Finally, the record does not reveal a single instance over the past dozen
years where Applicant’s competitors have used this term (i.e., since Applicant’s
adoption), suggesting to us that the evidence of record does not “demonstrate a
competitive need for others to use” this term. Hotels.com, 91 USPQ2d at 1536.
The Federal Circuit addressed a similar case where there was a mixed record
on the question of genericness. “The mixture of usages unearthed by the NEXIS
computerized retrieval service does not show, by clear evidence, that the financial
community views and uses the term CASH MANAGEMENT ACCOUNT as a generic,
common descriptive term for the brokerage services to which Merrill Lynch first
applied the term.” In re Merrill Lynch, 4 USPQ2d at 1143; see also In re Trek

6 www.improvementscatalog.com/pre-seeded-sunflower-garden-roll-out-flowers/251938
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2000 International Ltd., 97 USPQ2d 1106, 1113 (TTAB 2010) (the term
THUMBDRIVE was found not to be generic).
Hence, in spite of the information immediately conveyed by the term “Roll Out
Flowers,” we find that there has not been a substantial showing in the case at bar
that the relevant public understands the term “Roll Out Flowers” to refer to seed
mats generally. Our substantial evidence review “requires an examination of the
record as a whole, taking into account both the evidence that justifies and
detracts” from our ultimate opinion. Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed.
Cir. 2006). As in Merrill Lynch, we find that the minimal evidence of generic use
is offset by Applicant’s evidence that shows a significant amount of proper
trademark use. Thus, we cannot conclude that “members of the relevant public
primarily use or understand the term sought to be protected to refer to the
genus” of the goods. As noted earlier, when a proposed mark is refused
registration as generic, the U.S. Patent and Trademark Office bears the burden
of proving genericness by “clear evidence.” Yet, the record in the case at bar, at a
minimum, creates doubt about genericness, and so we are constrained to resolve
doubt on the issue of genericness in favor of Applicant. In re DNI Holdings Ltd.,
77 USPQ2d 1435, 1437 (TTAB 2005) (SPORTSBETTING.COM is generic).
Accordingly, we agree with Applicant that the Trademark Examining
Attorney has failed to prove genericness by “clear evidence.” Specifically, in
comparing the Office’s showing above as to the seeming genericness of the
individual words to the record evidence demonstrating the predominant use of
Serial No. 85768319
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the combined term, ROLL OUT FLOWERS, in connection with Applicant’s goods, we
cannot find substantial evidence supporting a determination of genericness.
Princeton Vanguard, LLC v. Frito-Lay North America, Inc., ____ F.3d ____, ____
USPQ2d ____, No. 2014-1517, 2015 BL 150132 (Fed. Cir. May 15, 2015). Finally,
we are cognizant of the fact that Applicant’s previous registration of ROLL OUT
FLOWERS7 was only recently cancelled due to Applicant’s inadvertent failure to
file a Section 8 Declaration of Continuous Use between the fifth and sixth years
following the date of issue.
Decision: The refusal to register ROLL OUT FLOWERS on the Principal
Register based upon mere descriptiveness and Applicant’s insufficient showing of
acquired distinctiveness is hereby affirmed. However, the refusal to register this
term based upon a finding of genericness is reversed, and this mark will issue on
the Supplemental Register in due course.

7 Registration No. 3036897 issued on the Supplemental Register on December 27, 2005;
cancelled in 2012.