Log Cabin Homes Ltd.

Trademark Trial and Appeal Board

May 31, 2000

No. 75031370 (T.T.A.B. May. 31, 2000)

Hearing: Paper No. 21
December 8, 1999 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 31, 2000
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Log Cabin Homes Ltd.
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Serial No. 75/031,370
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David L. Just of Lucas & Just for Log Cabin Homes Ltd.
Janice McMorrow, Trademark Examining Attorney, Law Office
104 (Sydney Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 27, 1995, applicant applied to register
the mark "TIMBER HOUSE" in connection with "prefabricated
homes and parts therefor," in Class 19. The basis for the
application was applicant’s assertion that it possessed a
bona fide intention to use the mark in commerce in
connection with these goods.
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On April 3, 1996, prior to the issuance of the first
Office Action, applicant filed an amendment to allege use
of the mark in commerce between the United States and a
foreign country at least as early as August of 1995.
The specimens submitted with the amendment appear to
be blueprints. They feature the following information
along the heading bar on the right side: "PRELIMINARY
BLUEPRINT NOT INTENDED FOR CONSTRUCTION USE." The title of
the four elevation drawings shown on the blueprints is "THE
ORIGINAL LOG CABIN HOMES Ltd. CUSTOM DESIGN HOME FOR:
TIMBERHOUSE HIGHLAND PROJECT." The amendment to allege use
states that the mark is used "by applying it to the goods;
or cantainers or packages for the goods; or displays
associated with the goods; or tags or labels affixed to the
goods."
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
mark is merely descriptive of the goods with which
applicant uses it. In the alternative, the Examining
Attorney refused registration under the same section of the
Act on the ground that if the goods sold by applicant under
the mark are made of metal, then the mark is deceptively
misdescriptive of them. Additionally, the Examining
Attorney required modification to the identification-of-
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goods clause and requested that additional specimens of use
be submitted because the record did not indicate how the
blueprints are encountered by purchasers of applicant’s
products. Attached to the first Office Action was a copy
of a dictionary definition showing the word "timber" as
meaning "wood as a building material."
Applicant responded by amending the identification-of-
goods clause to read as follows: "prefabricated homes and
parts therefore sold together as a unit," in Class 19. In
addition, applicant requested that a disclaimer of the word
"HOUSE" be entered into the record, and argued that the
mark in its entirety is neither merely descriptive nor
deceptively misdescriptive of applicant’s houses. Further,
applicant offered to amend the application to indicate that
the specimens are "blueprints."
In response, the Examining Attorney withdrew the
refusal based on misdescriptiveness. The refusal based on
descriptiveness, however, was maintained, as was the
requirement for acceptable specimens. At that juncture,
the Examining Attorney also noted that the drawing
submitted with the application showed the mark as "TIMBER
HOUSE," whereas the specimens of record presented the mark
as one word, "TIMBERHOUSE." Applicant was advised either
to submit a new drawing which agreed with the specimens or
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to submit substitute specimens which show use of the mark
as presented in the drawing, but that the disclaimer of the
word "HOUSE" should be deleted if the drawing were amended
to show the mark as a single word.
Responsive to the second Office Action, applicant
submitted a new drawing showing the mark as one word, and
withdrew the previously submitted disclaimer of the word
"HOUSE." Applicant argued that the blueprints submitted as
specimens are in the nature of promotional materials which
are distributed to prospective purchasers of applicant’s
prefabricated homes, and are therefore acceptable under
Section 905.04 of the Trademark Manual of Examining
Procedure (TMEP), which allows an applicant to submit
"documents associated with the goods or their sale" in
circumstances where "the nature of the goods" makes use of
labels, tags, containers or displays associated with the
goods "impractical."
The Examining Attorney responded by making final both
the refusal based on Section 2(e)(1) of the Act and the
requirement for acceptable specimens. Submitted as
additional support for the refusal based on descriptiveness
were excerpts from a number of stories retrieved from the
Nexis database of publications. These excerpts show
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"prefabricated timber houses" used to describe
prefabricated homes made of timber.
Applicant timely filed a notice of appeal. Both
applicant and the Examining Attorney filed briefs, and the
above-referenced oral hearing before the Board was
conducted.
The issues on appeal are whether the mark
"TIMBERHOUSE" is merely descriptive of prefabricated homes
and parts therefor sold together as units, within the
meaning of Section 2(e)(1) of the Lanham Act, and whether
the requirement for additional specimens is proper. Based
on careful consideration of the record and arguments before
us in this case, we hold that the both the requirement for
additional specimens and the refusal under Section 2(e)(1)
of the Act are appropriate.
Turning first to the question of descriptiveness, we
note that the test for whether a mark is unregistrable
under Section 2(e)(1) of the Lanham Act is whether the
mark, as used in connection with the goods set forth in the
application, immediately describes an ingredient, quality,
characteristic or feature of the goods, or directly conveys
information regarding the nature, function, purpose or use
of the goods. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978).
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Applicant’s mark, "TIMBERHOUSE," when used in
connection with applicant’s prefabricated houses, is merely
descriptive beause it immediately conveys the fact that a
feature or characteristic of these houses is that they are
made of timber. The definition made of record by the
Examining Attorney establishes that timber is used as a
building material, and the blueprints submitted by
applicant, although they do not meet the legal requirements
to be considered as acceptable specimens in connection with
an application to register the mark for these goods, do
show that applicant’s homes are made of timber. The
blueprint notes in several places that "log siding" and
logs made of western red cedar are features of applicant’s
products. While applicant is correct in noting that many
of the excerpts of articles retrieved by the Examining
Attorney are entitled to little weight because they are
taken from publications outside of the United States,
several of the other excerpts use terminology which makes
it clear that timber houses are sold in this country.
Moreover, home buyers are likely to attribute the ordinary
meanings of "timber" and "house" to these words as they are
used in the term applicant seeks to register, and the
combination of these meanings results in the obvious
descriptive meaning of "TIMBERHOUSE." As the Examining
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Attorney points out, there is nothing indefinite,
unexpected or incongruous about the mark, and no amount of
thought or imagination is necessary to determine the
characteristic or feature of the goods to which the mark
refers. The mark is simply a combination of two terms
which are merely descriptive of applicant’s goods, and the
composite does not create a separate, different, or
nondescriptive meaning.
We turn next to the requirement for acceptable
specimens. Section 1(d)(1) of the Lanham Act requires an
applicant who bases his application on use of the mark in
commerce to submit specimens showing how the mark is used.
Trademark Rule 2.56(b)(1) provides that a label, tag, or
container for the goods, or a display associated with the
goods may be an acceptable specimen. Further, the rule
notes that the Office "may accept another document related
to the goods or the sale of the goods when it is not
possible to place the mark on the goods or packaging for
the goods."
Applicant argues both that the preliminary blueprints
submitted as specimens are acceptable because they are
displays associated with the goods, and that they should be
considered to be acceptable specimens because homes, which
are the goods specified in the application, are not
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products which are typically labeled, tagged, or sold in
containers. Applicant asserts that these blueprints are
not the formal blueprints used for construction, but
rather, that they are acceptable specimens because they are
point-of-purchase displays which are given to potential
customers, in person at applicant’s model homes, as part of
the effort to sell applicant’s products.
The specimens submitted by applicant may well
constitute point-of-purchase displays within the meaning of
the Act and the precedent in this regard. The problem is
that to be acceptable specimens, they must show the mark
used in connection with the goods. It is not at all clear,
however, that applicant’s use of "TIMBERHOUSE" on these
specimens satisfies this requirement. If anything, the
blueprints seem to indicate that the house depicted thereon
is a custom designed home to be built in something called
the "TIMBERHOUSE HIGHLAND PROJECT," so even if the
specimens are considered to be displays, they still are not
acceptable because they fail to show "TIMBERHOUSE" used as
a mark in connection with the goods specified in the
application, prefabricated houses and parts therefor.
Accordingly, the requirement for applicant to submit
specimens which show the mark used as a trademark for the
goods set forth in the application is appropriate.
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DECISION: Both the refusal to register under Section
2(e)(1) of the Lanham Act and the requirement for
aacceptable specimens are affirmed.
R. F. Cissel
T. J. Quinn
D. E. Bucher
Administrative Trademark Judges
Trademark Trial & Appeal Board
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