Knoll, Inc.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75555098 (T.T.A.B. Sep. 20, 2001)

9/20/01

Hearing:
14 AUG 2001

Paper No. 14
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Knoll, Inc.
________

Serial No. 75/555,098

_______

Carla J. Vrsansky of Buchanan Ingersoll, P.C. for Knoll,
Inc.

Catherine Krebs, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Chapman, Bottorff and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 18, 1998, Knoll, Inc. (applicant) filed a
trademark application to register the mark STONES (typed
drawing) for goods identified as “office and residential
furniture” in International Class 20.1

1 The abovementioned application to register 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 T.T.A.B.
Ser No. 75/555,098
2
The Examining Attorney ultimately refused to register
the mark on the ground that the mark, when applied to the
goods, is deceptively misdescriptive under Section 2(e)(1)
of the Trademark Act. 15 U.S.C. § 1052(e)(1). After the
Examining Attorney made the refusal final, applicant filed
a notice of appeal. Both applicant and the Examining
Attorney have filed briefs, and an oral hearing was held at
the request of applicant.
We affirm the Examining Attorney’s refusal to
register.
The Examining Attorney’s position is that the mark
STONES is deceptively misdescriptive when used in
connection with office and residential furniture. The
Examining Attorney relies on dictionary definitions of the
word “stone” and printouts from an online database and the
Internet. The database printouts show that the term
“stone” is used to describe furniture.
His white-walled rooms furnished with over-scale
furniture often made from stone, timber or wicker –
still constitute many people’s idea of “the California
look.” San Francisco Chronicle, April 14, 1999, p.
1/Z1 (Home).

Padraig O’Murchu, who mines the Wicklow mountains for
500-million-year-old quartzite to make his stone
furniture, which he calls “the newest antique
furniture you’ll ever find.” New York Daily News,
March 14, 1999, p. 22.

Ser No. 75/555,098
3
From the Internet, the Examining Attorney included
information that showed that stone is used to make
furniture. The information from the RMG Stone Products,
Inc. website contains the following information: “The
Vermont Marble & Granite Manufacturer of Fine Stone
Products.” The list of stone products that follows
includes “Marble & Granite Furniture” and “White Marble &
Granite Balance Tables.” The Examining Attorney also made
of record evidence from the Leelanau Furniture Show
website, which included an entry under “Stone.” This entry
continued by describing stone as “Enduring. Timeless.
Infinitely variable. In weight and in color, stone lends
strength.” The pictures under the heading “stone” were for
a “stone lamp” in which the base was covered with small
stones and another picture for “outdoor furniture.” The
Examining Attorney concludes by arguing: “Because
applicant’s office and residential furniture will
apparently neither be composed of multiple stones per piece
nor constructed of singular large stones adapted to
function as single items of furniture, and because
consumers are likely to believe the furniture is composed
of or from stones, the proposed mark as used in connection
with applicant’s goods is deceptively misdescriptive.”
Examining Attorney’s Appeal Br., p. 4.
Ser No. 75/555,098
4
In response to the refusal to register, applicant
makes several arguments. First, it argues that its
furniture has a smooth appearance and that consumers would
not believe that it is made of stone. Applicant’s Appeal
Br., p. 3. Second, it asserts that the term was not
selected to describe a feature of the products, but rather
“the mark suggests a random collection of “stones” or
nature objects.” Id. at 4. Third, applicant’s mark is the
plural word STONES and not the singular word STONE, and the
plural is not descriptive for furniture made of stone.
Applicant’s conclusion is that its mark “STONES has nothing
to do with ‘stone’ or in trying to mislead or deceive
consumers into believing that Applicant’s goods are made of
‘stone’ or ‘stones’… Applicant respectfully submits that
consumers would not be misle[]d into believing that
Applicant’s furniture is actually comprised of numerous
‘stones’ glued together.” Applicant’s Appeal Br., pp. 6-7.
The issue in this case is whether the term STONES is
deceptively misdescriptive of applicant’s goods. In cases
involving the issue of misdescriptiveness, we apply the
following test:
The test for deceptive misdescriptiveness has two
parts. First we must determine if the matter sought
to be registered misdescribes the goods. If so, then
we must ask if it is also deceptive, that is, if
anyone is likely to believe the misrepresentation.
Ser No. 75/555,098
5
Gold Seal Co. v. Weeks, 129 F.Supp. 928 (D.D.C. 1955),
aff'd sub nom. S.C. Johnson & Son v. Gold Seal Co.,
230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied,
352 U.S. 829 (1956). A third question, used to
distinguish between marks that are deceptive under
Section 2(a) and marks that are deceptively
misdescriptive under Section 2(e)(1), is whether the
misrepresentation would materially affect the decision
to purchase the goods. Cf. In re House of Windsor,
Inc., 221 USPQ 53 (TTAB Dec. 14, 1983).

In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984).

The abovementioned evidence supports the Examining
Attorney’s position that the term “stone” describes a type
of furniture that is made of stone. There is furniture
that not only is made from stone material such as marble,
granite, and quartzite, but it is referred to as “stone
furniture.” Therefore, we conclude that the term would be
merely descriptive of furniture made of stone. Similarly,
the term “stone” would deceptively misdescribe furniture
that was not made from stone.
Applicant argues that potential purchasers of
applicant’s furniture will not be deceived into believing
that the goods are made of stone (Appeal Br., p. 5). It is
important at this point to observe that applicant’s
identification of services reads simply “office and
residential furniture.” At several points in its papers,
applicant describes its goods in much more narrow terms.
It refers to its goods as “low elliptical tables and
Ser No. 75/555,098
6
seats.” It refers to its furniture as “highly stylized”
and a “unique design.” However, these descriptions of
applicant’s furniture in its papers do not limit the goods
described in the application.
We are constrained to consider the issue of
misdescriptiveness based on the goods as described in the
application. Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990) (“The authority is legion that the question of
registrability of an applicant's mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant's goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed”); In re Vehicle
Identification Network, Inc., 32 USPQ2d 1542 (TTAB 1994)
(Descriptiveness of mark in an intent-to-use application
determined by services identified in application). Indeed,
the “fact that the true nature of the product might appear
on the label for the goods or on other matter used in
connection therewith cannot serve to alter the deceptively
misdescriptive character of the mark in issue.” American
Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712,
723 (TTAB 1981). Therefore, even if applicant’s purchasers
Ser No. 75/555,098
7
will ultimately realize that its goods are not made of
stone or that the term is associated with a well-known
designer and artist, these factors do not avoid a
determination that the term is deceptively misdescriptive.
Applicant also argues that the mark is not
misdescriptive because the term for which it seeks
registration is not STONE but STONES. While applicant
“acknowledges that furniture can be composed of stone,”
(Response dated November 5, 1999, p. 2), the “trademark
applied for is STONES (plural) and Applicant respectfully
submits that the mark STONES does not describe or
misdescribe” … the goods. Applicant’s Appeal Br., p. 5.
Furthermore, applicant argues that “[e]ven if the mark
STONES could be considered descriptive, it is not
deceptively misdescriptive. That is so because when
furniture is made from stone, the singular is always used
to describe it, never the plural.” Reply Br., pp. 1-2.
We reject applicant’s argument because the plural form
of the word does not change the meaning of the word
“stone,” and the mere pluralizing of a term is not
sufficient to convert this unregistrable term into one that
is registrable. Wilson v. Delaunay, 245 F.2d 877, 114 USPQ
339, 342 (CCPA 1957) (“There is no material difference in
the trademark sense between the singular and plural form of
Ser No. 75/555,098
8
the word ‘Zombie’ and they will therefore be regarded as
the same mark”). See also In re Sarjanian, 136 USPQ 307,
308 (TTAB 1962) (same); In re Directional Marketing Corp.,
204 USPQ 675, 677 (TTAB 1979) (addition of the letter “S”
did not overcome surname refusal); and In re Luis
Caballero, S.A., 233 USPQ 355, 357 (TTAB 1984) (“Nor does
it matter that the subject matter of the application is a
plural (or possessive) form of a name”).
In addition, there is the analogous principle that
even the slight misspelling of a descriptive term does not
overcome a refusal to register. In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980) (QUIK-
PRINT); In re Hercules Fasteners, Inc., 203 F.2d 753, 97
USPQ 355 (CCPA 1953) (FASTIE); and In re Organik
Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (ORGANIK).
We have held that even a different term, which looked and
sounded like a generic term, was itself deceptively
misdescriptive. American Meat Institute, 211 USPQ at 723
(BAKED TAM deceptively misdescriptive for a chopped, formed
turkey meat product).
Applicant’s plural ending of, in this case a
misdescriptive term, is even less distinctive because, at
best, it may be viewed as a slightly unusual use of the
word “stone,” or it may viewed as a term used to describe
Ser No. 75/555,098
9
furniture or a set of furniture items made from more than
one type of stone or from several individual stones. See,
e.g., RMG Stone Products website (“marble and granite
furniture” and “white marble and granite balance tables”).
Because applicant’s furniture is not made from stone in any
way, the term would be deceptively descriptive of the
goods.
Finally, applicant has submitted copies of several
registrations that include the term “stones” without a
disclaimer. Nearly all of these registrations are for
goods that are not made of stone, i.e., beer, modems,
computer hardware, underwear, tires, soaps, and skate
wheels. The registrations to which applicant refers hardly
demonstrates that the term “stones” would not be
misdescriptive of goods when the evidence establishes that
there is a type of furniture known as “stone furniture” and
applicant’s furniture is not made of stone.
Decision: The Examining Attorney’s refusal to
register the mark STONES on the ground that it is
deceptively misdescriptive of applicant’s residential and
office furniture is affirmed.