K2, Inc.

Trademark Trial and Appeal Board

Sep 9, 2003

No. 75916474 (T.T.A.B. Sep. 9, 2003)

Mailed: September 9,2003
Oral Hearing Date: Paper No.18
July 29, 2003 GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re K2, Inc.
________
Serial No. 75/916,474
_______
Richard G. Martin of MacMillan, Sobanski & Todd, LLC for K2, Inc.
John T. Lincoski, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Hohein, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
K2, Inc. has filed an application to register the mark
"STORM BOARD" for "weather-resistant exterior wall board
constructed from directionalized wood fiber pressure laminated in
treated plies sold for use in the construction of pre-fabricated
or manufactured housing."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
1 Ser. No. 75/916,474, filed on February 11, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/916,474
2
that, when used in connection with applicant's goods, the mark
"STORM BOARD" is merely descriptive of them.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1), if it forthwith conveys information concerning any
significant ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. See, e.g., In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods for
which registration is sought, the context in which it is being
used on or in connection with those goods and the possible
significance that the term would have to the average purchaser of
the goods or services because of the manner of its use. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product is from
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Instead, it is
well established that the determination of mere descriptiveness
must be decided on the basis of the identification of goods as
Ser. No. 75/916,474
3
set forth in the application. See, e.g., In re Allen Electric &
Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972).
On the other hand, a mark is suggestive if, when the
goods are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods the mark indicates. See, e.g., In re Abcor Development
Corp., supra at 218, and In re Mayer-Beaton Corp., 223 USPQ 1347,
1349 (TTAB 1984). As has often been stated, there is a thin line
of demarcation between a suggestive mark and a merely descriptive
one, with the determination of which category a mark falls into
frequently being a difficult matter involving a good measure of
subjective judgment. See, e.g., In re Atavio, 25 USPQ2d 1361
(TTAB 1992) and In re TMS Corp. of the Americas, 200 USPQ 57, 58
(TTAB 1978). The distinction, furthermore, is often made on an
intuitive basis rather than as a result of precisely logical
analysis susceptible of articulation. See In re George Weston
Ltd., 228 USPQ 57, 58 (TTAB 1985).
Applicant, referring to the sales literature which it
made of record, sets forth the following in its brief (as it has
throughout the prosecution of its application) by way of
background information about its goods:
The literature shows the goods being
installed to form the wall of a manufactured
home. The wall is then covered with exterior
siding which faces the elements. The
applicant's goods do not form the actual
exterior of the structure. The designation
"exterior" is used to differentiate the goods
from "interior" materials such as drywall.
Ser. No. 75/916,474
4
The applicant's wall panel is described
in the sales literature as a "moisture
protection building product". All such
products used in the construction of
manufactured or pre-fabricated housing
provide some level of moisture protection.
Not all such products are specifically
designed for use as protection against
storms.
Further noting that its "sales literature makes no mention of
storms or protection from storms" and that, in fact, its goods
are not "sold or used in connection with protection from storms,"
applicant maintains that the mark "STORM BOARD" is not merely
descriptive of its weather-resistant exterior wall boards which
are sold for use in the construction of pre-fabricated or
manufactured housing. Instead, according to applicant, it
selected such mark because it "suggests strength and durability."
Applicant additionally contends in its brief that,
"[a]pparently, the Examining Attorney assumed from the
description of goods [set forth in the application] that the mark
STORM BOARD was descriptive because the [wall boards or] panels
are weather-resistant." Applicant asserts that in light of such
assumption, the Examining Attorney impermissibly concluded that
the mark merely describes a significant feature, function or
characteristic of its goods, based principally upon the following
evidence which he made of record:
In the first Office Action, the
Examining Attorney cited articles from the
Lexis/Nexis® News/Curnws Research Database to
show that "storm boards" are boards commonly
used to protect buildings and structures from
damage from hurricanes and storms. The
Examining Attorney also cited a printout from
the Federal Emergency Management Agency which
advises homeowners to protect and reinforce
Ser. No. 75/916,474
5
their homes with boards when inclement
weather threatens.
Applicant insists it is error for the Examining Attorney to rely
upon such evidence when, in the final refusal, he conceded that
"the applicant's goods do not appear to be used as storm boards
in the generic sense" of boards used to protect buildings and
structures from storm damage. Moreover, while noting that the
Examining Attorney also made of record with the final refusal
copies of several third-party registrations of marks in which the
term "STORM" has been disclaimed as descriptive with respect to
weather-resistant goods, applicant argues that such evidence is
not relevant because "[a] review of the STORM marks cited by the
Examining Attorney reveals that most of the cited marks are used
on goods that are specifically intended to provide protection
from storms."
Applicant urges, therefore, that:
The record establishes the following
with respect to the applicant's goods: The
goods are structural panels used in the
construction of pre-fabricated housing or
manufactured housing. The panels are not
intended or sold for use as protection for
storms. The goods are full-sized structural
panels which are used to form the structural
portion of the outside wall of the pre-
fabricated or manufactured housing. The
applicant's panels are not used to nail over
windows or doors as protection in advance of
a storm.
The applicant's STORM BOARD goods will
not be sold through retail channels to
consumers. The STORM BOARD structural panels
will be sold through wholesale distribution
channels to manufacturers of pre-fabricated
or manufactured housing. The manufacturing
purchasers use the STORM BOARD structural
panels to build the housing structures in a
factory setting. The STORM BOARD goods are
Ser. No. 75/916,474
6
weather-resistive because they form part of
the walls of the structures.
Applicant contends, in view thereof, that "purchasers of exterior
engineered structural panels used in the construction of pre-
fabricated or manufactured housing do not describe or call for
such goods as 'storm boards'" and concludes that:
The composite mark STORM BOARD does not
give any reasonably accurate or tolerably
distinct knowledge of the characteristics of
the applicant's engineered structural panels
for use in the construction of pre-
fabricated or manufactured housing. The
goods are not boards used as protection from
storms. Any information about the goods
given by the term STORM BOARD is indirect or
vague. As a result, the mark is arbitrary or
suggestive, rather than [merely] descriptive.
The Examining Attorney, on the other hand, argues in
his brief that applicant's mark is merely descriptive of its
goods because the term "'storm board' clearly describes a board
with weather-resistant properties." In support thereof, the
Examining Attorney made of record definitions from The American
Heritage Dictionary of the English Language (3d ed. 1992) which,
in relevant part, define "storm" as "1. An atmospheric
disturbance manifested in strong winds accompanied by rain, snow,
or other precipitation and often by thunder and lightning" and
"board" as "2. A flat piece of wood or similarly rigid material
adapted for a special use." In addition, although not previously
made of record, the Examining Attorney submitted with his brief
definitions from the same dictionary which list "storm door" as
"[a]n outer or additional door added for protection against
inclement weather" and "storm window" as "[a] secondary window
Ser. No. 75/916,474
7
attached over the usual window to protect against the wind and
cold."2
In view of such definitions, the Examining Attorney
further asserts that (footnotes omitted):
The use of "storm" to modify a noun has long
been recognized to describe the weather-
resistant nature of goods. As shown in the
commonly used terms "storm windows" and
"storm doors," the term "storm" describes
that which the goods protect against.
Consumers viewing the terms instantly
recognize that they describe windows and
doors with the capacity to protect against
inclement weather such as that brought on by
storms. The mark in this case is no
different.
Likewise, the Examining Attorney points out, "the terms 'fire
door,' 'fire wall[,]' 'raincoat' and 'weatherboard' all describe
goods that resist fire, rain and weather[,] respectively."
Moreover, as to the third-party registrations which he made of
record,3 the Examining Attorney contends that "a review of the
2 The Examining Attorney also notes that such dictionary sets forth
definitions of "fire door" as "[a] door made of fire-resistant
material that can be closed to prevent the spread of fire"; "firewall"
as "[a] fireproof wall used as a barrier to prevent the spread of
fire"; and "raincoat" as "[a] water-resistant coat," while Webster's
Third New International Dictionary defines "weatherboard" as both a
noun meaning "CLAPBOARD, SIDING"" and as a verb signifying "to nail
boards upon (a roof or wall) so as to lap one over another to exclude
and shed rain."
Although he "acknowledges that these definitions have not yet been
made of record in this case," the Examining Attorney requests that the
Board take judicial notice thereof. Such request is granted, and the
additional definitions have been considered, inasmuch as it is settled
that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852,
860 n. 7 (TTAB 1981).
3 Such registrations are for the marks "STORM POWER" (with "STORM"
disclaimed) for "wind resistant suits"; "STORM SHIELD SYSTEMS" and
Ser. No. 75/916,474
8
Office records ... indicates a tradition of treating the term
'storm' as descriptive when the goods in question are weather-
resistant." Furthermore, with respect to applicant's assertion
that its goods are not intended to protect against hurricanes and
other storms, the Examining Attorney states that (italics in
original):
The examiner does not challenge this
contention; however, the goods in question do
not need to protect against hurricanes [and
other storms] for the mark to be [merely]
descriptive. The fact remains that a salient
feature of the goods is their weather-
resistant nature. The goods need not be
nailed over doors or windows as suggested in
the Federal Emergency Management Agency
literature attached to the first action.
They only need to perform a weather-resistant
function for the mark to be [merely]
descriptive.
Accordingly, based on all of the evidence submitted,
including the statement in applicant's sales literature which
refers to its goods as "another fine moisture protection
product," together with the fact that such goods are identified
in the application as being "weather-resistant," the Examining
Attorney maintains that (footnote omitted):
First, storms are a significant source of
moisture, particularly in the form of wind-
design" (with "STORM SHIELD SYSTEMS" disclaimed) for "non-metal
removable panels to protect windows and doors of buildings and
residences from damage from hurricanes"; "FORTRESS STORM SECURITY
BRACE" (with "STORM SECURITY BRACE" disclaimed) for "metal garage door
bracing hardware"; "STORM SMART" (with "STORM" disclaimed) for "metal
protective and security shutters"; "LIQUID STORM WINDOW" (with "STORM
WINDOW" disclaimed) for a "storm window sealant in the nature of
caulk"; and "CMS STORM SHIELD" and design (with "STORM" disclaimed)
for "weatherstripping kits," all of which are registered on the
Principal Register, and the mark "STORM SHIELD SYSTEMS" (with "SHIELD
SYSTEMS disclaimed) for "non-metal removable panels to protect windows
and doors of buildings and residences from damage from hurricanes,"
which is registered on the Supplemental Register.
Ser. No. 75/916,474
9
driven rain. Second, the use of the term
"STORM" in connection with goods is
understood to describe weather-resistance.
Clearly, the applicant's goods are
intended to block moisture. Regardless of
the type or severity of the storms, these
weather disturbances can reasonably be
expected to provide the moisture applicant's
goods block. Moreover, analyzing the
descriptiveness of the mark in connection
with hurricane-related uses overstates the
case because the applicant's goods need not
stop flying debris. They need only function
as advertised to stop moisture brought by any
storm, even a summer rainstorm.
The applicant argues that a "mental
leap" is required when considering the
descriptiveness of the mark. .... Much as
no mental leap is required to realize that
"storm doors" and "storm windows" are
weather-resistant goods, no such mental
gymnastics are required to realize that
"STORM BOARD" refers to boards with weather-
resistant properties.
The applicant also asserts that the
combination of the two terms results in a
composite ... that is non-descriptive.
However, a combination of descriptive terms
(i.e., "STORM" and "BOARD") remains merely
descriptive if the individual descriptive
character of these terms is not lost or
obscured in the unitary term they create.
See Hunt-Wesson Foods Inc. v. Riceland Foods
Inc., 201 USPQ 881, 886; In re Entenmann's
Inc., 15 USPQ[2d] 1750 (TTAB 1990).
In this case, the juxtaposition of the
two merely descriptive words comprising the
mark does not convey a commercial impression
that is different from the words taken
separately. The combination of the terms,
STORM and BOARD[,] merely describes to
consumers that applicant's goods are boards
for use in connection with storms. No
additional meaning or connection is created.
Therefore, much as "storm door" and
"storm window" are generally considered
descriptive with regard to doors and windows
with weather-resistive properties, the mark
Ser. No. 75/916,474
10
"STORM BOARD" is [merely] descriptive with
regard to the goods in this case.
Upon consideration of the evidence and arguments
presented, and while admittedly a close question, we agree with
applicant that the mark "STORM BOARD" is suggestive rather than
merely descriptive of its "weather-resistant exterior wall board
constructed from directionalized wood fiber pressure laminated in
treated plies sold for use in the construction of pre-fabricated
or manufactured housing." Obviously, when considered separately,
the word "board" merely describes applicant's product, which is
identified as a "weather-resistant exterior wall board," while
the word "storm" plainly denotes a kind of weather phenomenon
characterized by wind and rain, snow, or other precipitation as a
source of moisture. Literally, however, the combination of such
words to form the mark "STORM BOARD" does not merely describe
applicant's goods in the sense of the ordinary meaning of those
words when combined. As previously noted, the Examining Attorney
has conceded, and we concur, that "the applicant's goods do not
appear to be used as storm boards in the generic sense," which as
shown by the "NEXIS" excerpts, are boards which are used to
protect buildings and structures from storm damage. Instead,
applicant's goods have a more generalized function or purpose,
which is to provide weather resistance by forming a barrier to
protect against moisture when installed as the backing for
exterior walls of pre-fabricated or manufactured housing. Such
goods therefore are not, to reiterate, "boards for use in
connection with storms," as asserted by the Examining Attorney,
which the record shows is the ordinary or common meaning for the
Ser. No. 75/916,474
11
term "storm board." Hence, the mark "STORM BOARD" is ambiguous
and incongruous when used in connection with applicant's goods.
As to the Examining Attorney's contention that, like
such generic terms as "storm door" and "storm window," the mark
"STORM BOARD" immediately connotes "boards with weather-resistant
properties," we find the analogy to be slightly misplaced since,
unlike applicant's goods, both storm doors and storm windows are
directly exposed to the weather and thus are designed and
intended specifically to offer protection against the effects of
storms. Applicant's goods, by contrast, are not meant just to
protect against storms but are designed and intended to provide
weather resistance against moisture in general, irrespective of
whether the source thereof is, for instance, precipitation from a
storm, water vapor from fog or condensation from high humidity.
Moreover, unlike storm doors and storm windows, applicant's goods
are an "exterior" product only in the sense that they are
structural panels which are used in forming the walls to which
siding is applied as the exterior finish for a pre-fabricated or
manufactured house.4 It consequently is the siding, instead of
applicant's weather-resistant exterior wall board, which faces
the elements and thereby constitutes the actual exterior of the
structure. Applicant's goods therefore do not directly provide
4 As counsel for applicant explained at the oral hearing, the term
"exterior" in the identification of applicant's goods is a term of art
in the housing industry which refers to a product suitable for an
outer or external use but not necessarily an outside or outdoor use.
In this case, he indicated, applicant's goods are a lightweight
material which takes the place of plywood, but such goods are not for
use in boarding up a structure as protection therefor prior to the
onslaught of a severe storm.
Ser. No. 75/916,474
12
protection against storms; rather, they help protect against any
moisture which seeps through gaps in or damage to the exterior
siding.
Accordingly, to the sophisticated and technically
astute purchasers of applicant's goods, namely, buyers of
building materials for manufacturers of pre-fabricated housing,
the mark "STORM BOARD" would be suggestive of the strength or
durability of applicant's weather-resistant exterior wall board
rather than merely descriptive of the weather-resistant feature
or characteristic of such a board. Simply put, there is
insufficient evidence on this record to support the Examining
Attorney's assertion that "the use of the term 'STORM' in
connection with goods is understood to describe weather-
resistance." We judicially notice, in this regard, that The
American Heritage Dictionary of the English Language (4th ed.
2000) at 1948 defines "weather" in pertinent part as "1. The
state of the atmosphere at a given time and place, with respect
to variables such as temperature, moisture, wind velocity, and
barometric pressure. 2a. Adverse or destructive atmospheric
conditions, such as high winds or heavy rain: encountered
weather five mile out to sea. b. The unpleasant or destructive
effects of such atmospheric conditions: protected the house from
the weather." While the word "storm," in light of the previously
noted definition thereof, is clearly a type of "weather," it is
not synonymous therewith, such that something which is described
as "weather-resistant" is necessarily resistant to storms. To
us, the Examining Attorney's contention, in essence, that because
Ser. No. 75/916,474
13
moisture is produced by a storm which in turn is a form of
weather, a weather-resistant board which protects against storm
produced moisture is merely described as a "storm board," is the
kind of multi-stage reasoning which actually is indicative of a
suggestive mark. Plainly, inasmuch as applicant's goods are not
boards which are used to protect buildings and other structures
from storm damage, the mark "STORM BOARD" requires customers for
applicant's goods to expend imagination in order to reach any
definitive conclusion about the nature, purpose or use of the
goods. It therefore creates a new and different commercial
impression and is not merely descriptive. See, e.g., In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 384-85 (CCPA
1968).
Our conclusion that applicant's mark is suggestive,
rather than merely descriptive, inasmuch as it constitutes an
ambiguous and incongruous term which does not possess any
definitive meaning as to any characteristic, function, feature,
purpose or use of applicant's goods, is bolstered by the fact
that there is no evidence of others using the term "storm board"
in connection with weather-resistant building materials such as
wall boards. See, e.g., In re Wells Fargo & Co., 231 USPQ 116,
119 (TTAB 1986) ["the absence from this record of evidence of any
descriptive use of the term 'Express Savings' by others in the
field of banking reinforces our view that the Examining
Attorney's mere descriptiveness holding is in error"]. None of
the excerpts made of record by the Examining Attorney from the
"NEXIS" database indicates any third-party use of the term "storm
Ser. No. 75/916,474
14
board" in relation to weather-resistant wall boards or similar
building materials.
Nonetheless, given its undeniable similarity to such
commonly known generic terms as "storm door" and "storm window,"
we note that to the extent there may be any doubt as to our
conclusion that the mark "STORM BOARD" is suggestive rather than
merely descriptive of applicant's goods, we resolve such doubt,
in accordance with the Board's practice, in favor of the
publication of applicant's mark for opposition. See, e.g., In re
Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994); In re
Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB 1983); In re
Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981); and
In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
reversed.