Lucida Floorings Int’l Inc.

Trademark Trial and Appeal Board

Apr 19, 2017

No. 86801235 (T.T.A.B. Apr. 19, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 19, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lucida Floorings Int’l Inc.
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Serial No. 86801235
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Rod Underhill for Lucida Floorings Int’l Inc.

Marc J. Leipzig, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Quinn, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Lucinda Floorings Int’l Inc. (“Applicant”) seeks registration on the Principal
Register of the proposed mark TIMBERCORE in standard characters for “bamboo
flooring; ceramic floor tiles; ceramic tiles for flooring and facing; ceramic tiles for
flooring and lining; floor panels not of metal; floor tiles of wood; hard wood flooring;
laminate flooring; non-metal wall tiles; parquet flooring; parquet flooring made of
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wood; slates for wall cladding; synthetic flooring materials or wall-claddings; wall
panels not of metal; wall tiles, not of metal,” in International Class 19.1
The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s
proposed mark is merely descriptive of the goods identified in the application. When
the Examining Attorney made the refusal final, Applicant timely appealed and
requested reconsideration,2 which was denied. The case is fully briefed.3 We affirm
the refusal to register.
I. Prosecution History and Record on Appeal
The Examining Attorney issued a first Office Action in which he refused
registration under Section 2(e)(1), and on the additional ground that Applicant’s
specimen of use was not acceptable because it constituted advertising material. In

1 Application Serial No. 86801235 was filed on October 27, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use, and first
use in commerce, since at least as early as September 15, 2015. Applicant’s original drawing
showed the proposed mark as TIMBRECORE. On November 6, 2015, Applicant filed a
Voluntary Amendment and a new drawing showing the proposed mark as TIMBERCORE,
through which Applicant corrected the typographical error in the original drawing.

2 Applicant filed its Request for Reconsideration and its appeal brief on the same day
following the filing of its Notice of Appeal. 4 TTABVUE. After the Examining Attorney denied
the Request for Reconsideration, the Board resumed the appeal and allowed Applicant 60
days to file a supplemental brief. 8 TTABVUE. We deem Applicant’s “Reply Brief,” 10
TTABVUE, to be the supplemental brief invited by the Board’s order. The Examining
Attorney’s brief, 13 TTABVUE, responds to both of Applicant’s briefs.
3 As the Board stated in its order transmitting Applicant’s briefs to the Examining Attorney,
12 TTABVUE 1, n.1, Applicant’s briefs are not in compliance with Rule 2.126 of the
Trademark Rules of Practice, 37 C.F.R. § 2.126. See Trademark Board Manual of Procedure
§ 106.03 (Jan. 2017). “The Board, in its discretion, may refuse to enter and consider
submissions which are not in compliance with 37 C.F.R. § 2.126.” Id. While we have
considered Applicant’s briefs in this case, we may decline to consider any future non-
compliant filings.
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support of the descriptiveness refusal, the Examining Attorney made of record pages
from two websites and definitions of the words “timber” and “core” from the Merriam-
Webster Dictionary (www.merriam-webster.com) and the Collins Dictionary
(www.collinsdictionary.com). February 24, 2016 Office Action.
Applicant responded by submitting a new specimen and traversing the
descriptiveness refusal. Applicant made of record pages from one of its brochures,
which it claimed “show[ed] components of the timbercore product, illustrating that
the interior or ‘core’ of the product is not wood, but rather, particle board made up of
glue, wood dust and wood chips, pressed together to make a wood like substance.”
April 19, 2016 Response to Office Action at 1.
The Examining Attorney accepted Applicant’s new specimen, maintained the
descriptiveness refusal, refused registration on the alternative ground that
Applicant’s proposed mark was deceptively misdescriptive of the identified goods
under § 2(e)(1) of the Trademark Act, and required Applicant to provide additional
information pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), explaining
whether the goods contain a particular type of wood and describing the nature,
purposes, and channels of trade of the goods, and to provide sample advertisements
or promotional materials featuring the goods. The Examining Attorney made of
record additional pages from third-party websites offering doors, flooring, and other
building materials, as well as pages from Applicant’s own website. May 19, 2016
Office Action.
Applicant responded to the information requests as follows:
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The “core” of this product is made from wood shaving
particles that are pressed together under heat and
pressure. The wood shaving particles are about two inches
long/wide and consist of hundreds of them, each held
together by a small amount of adhesive. The adhesive is
kept to a minimum, which is made possible by the size of
the wood particles. A saw dust or fiber interior would
require a larger amount of glue. The small amount of glue
is beneficial to the consumer as it allows for a minimum
amount of formaldehyde to leach out, which is highly
beneficial for the consumer. The core is also specially
designed to have sufficient air pockets, which allows the
core to expand or contract in warm or cold weather. Solid
wood cores do not have such air pockets, which offers an
advantage over using a core made of solid wood. The “core,”
then is comprised of wood particles and other materials.
May 31, 2016 Response to Office Action at 1.
The Examining Attorney then issued a third Office Action in which he withdrew
the misdescriptiveness refusal, but made final the descriptiveness refusal. Applicant
filed its Notice of Appeal on July 19, 2016. 1 TTABVUE. In its Request for
Reconsideration, Applicant cited what it called “knowledge” from wikipedia.org about
the meanings of the words “timber” and “plywood,” but did not make the referenced
Wikipedia page(s) of record. 9 TTABVUE 2-3.
In denying Applicant’s Request for Reconsideration, the Examining Attorney
made of record additional Internet webpages that he claimed showed that “wood core”
flooring is a common type of engineered flooring consisting of a wood core and other
materials. 6 TTABVUE 7-23; 7 TTABVUE 1-16.
II. Mere Descriptiveness Refusal
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
Serial No. 86801235
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applicant is merely descriptive . . . of them,” 15 U.S.C. § 1052(e)(1), unless the mark
has acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). A term
is “merely descriptive” within the meaning of § 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)).
A term need only describe a single feature or attribute of the goods to be
descriptive. Id. (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001)). To refuse registration of a mark for an entire
class in an application that covers multiple goods in the class, the Patent and
Trademark Office is only required to show that the mark is merely descriptive with
respect to at least one of the goods for which registration is sought. Chamber of
Commerce, 102 USPQ2d at 1219 (citing In re Stereotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1088-89 (Fed. Cir. 2005)).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978);
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016). “‘The
question is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey information about them.’”
Serial No. 86801235
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DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-
17 (TTAB 2002)).
The Examining Attorney argues that the words “timber” and “core” both retain
their descriptive meaning in relation to the goods, and their “combination results in
a composite mark that is itself descriptive and not registrable.” 13 TTABVUE 3. The
Examining Attorney contends that “both the individual components [of
TIMBERCORE] and the composite result are descriptive of applicant’s goods and do
not create a unique, incongruous, or nondescriptive meaning in relation to the goods.”
13 TTABVUE 4. The Examining Attorney cites the dictionary definitions of “timber”
and “core” in the record, and notes that Applicant conceded in its Request for
Reconsideration that “the ‘core’ of this product is made from wood shaving particles,”
and that “‘timber’ is defined as ‘wood suitable for building or for carpentry’.” 13
TTABVUE 5.
The Examining Attorney further argues that several of the goods identified in the
application are expressly identified as comprising wood, while others “are so broadly
worded as to also encompass wood-based products…” 13 TTABVUE 6. The Examining
Attorney points to pages from four Internet websites in the record that he argues
show that “consumers of flooring are well acquainted with engineered flooring
featuring a wood core (and including other materials),”4 13 TTABVUE 7, concluding

4 Three of the cited websites are clearly those of United States companies, 6 TTABVUE 14-
17; 21-23; 7 TTABVUE 2-15, but the location of the owner of the fourth website at
www.tateinc.com, 6 TTABVUE 10-13, is unclear. The website is in English, but it contains a
reference to “Canadian Safety Standards,” 6 TTABVUE 11, and one page displays flags of
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that “even to the extent that the goods at issue are types of engineered flooring,
containing wood and other materials, the proposed mark would nonetheless be
descriptive of a feature of the goods; namely, that the center of applicant’s flooring
products contains a type of wood suitable for carpentry and/or building.” 13
TTABVUE 7-8 (emphasis in original).
Applicant’s primary argument in its main and reply briefs is that its mark “is at
worst, merely suggestive in nature.” 4 TTABVUE 3. Applicant acknowledges that the
“‘core’ of this product is made from wood shaving particles that are pressed together
under heat and pressure,” but argues that its mark is nevertheless “incongruous,
indefinite, and susceptible to multiple connotations.” 4 TTABVUE 3. Applicant notes
that the “‘core’ of the product is neither solid wood, nor merely wood, but a composite
material” and that “‘Timbercore’ suggests the strength of solid wood, rather than the
presence of plywood, although the product description made to the public indicates
the precise nature of the interior of the product.” 4 TTABVUE 3. Applicant
acknowledges the dictionary definition of “timber,” but argues that “[i]n the minds of
consumers, ‘timber’ means a piece of solid wood, not plywood” and that “‘Timbercore’
means a flooring material that is as solid as a piece of timber might be, regardless of
its composition,”5 such that the “relevant consumer perception of the mark relies on

various European countries and provides a link to a dropdown menu allowing visitors to
“Select Language.” 6 TTABVUE 13. Because it is not clear whether this website is that of an
American company, and because there is no evidence in the record that it has been visited by
American consumers if it is not, we have given it no consideration in our decision.
5 As discussed below, we find that the mark immediately describes that Applicant’s goods
consist of an interior or core layer that contains wood, but Applicant’s argued meaning would
also describe a feature, attribute, or characteristic of the goods.
Serial No. 86801235
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the consumer’s imagination, making more likely that the mark is suggestive rather
than descriptive.” 4 TTABVUE 3.
Applicant attached to its reply brief an image that Applicant states “shows the
design elements of the related product that bears the applicant’s mark. As show[n],
the interior of the product is made of particleboard, referenced as ‘pressed wood.’” 10
TTABVUE 2. This image was not made of record by Applicant during prosecution and
we will not consider it because it is untimely, see generally Trademark Rule of
Practice 2.142(d), 37 C.F.R. § 2.142(d), but a virtually-identical page showing the
product and explaining its composition appears in Applicant’s original specimen,
Application at 10,6 and is reproduced below for ease of reference in following
Applicant’s argument:7

6 The depiction of the product, and the description of the composition of the interior layer of
the product as “Premium Pressed Poplar Wood Board,” are identical in the specimen and on
the page submitted with the reply brief.
7 The depiction of the proposed mark on the specimen as “timberCORE,” with the capitalized
word CORE depicted in red, is irrelevant to our analysis of mere descriptiveness because
Applicant seeks registration of the proposed mark in standard characters. In re Calphalon
Corp., 122 USPQ2d 1153, 1160 (TTAB 2017). A standard character registration would entitle
Applicant to depict the proposed mark in any font style, size, or color. Citigroup Inc. v. Capital
City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
Serial No. 86801235
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Applicant argues that particle board “is an engineered wood product manufactured
from wood chips, sawmill shavings, or even sawdust, and a synthetic resin or other
suitable binder, which is pressed and extruded.” 10 TTABVUE 2. Applicant argues
that because “the interior, or ‘core’ of this particular product is created from particle
board, and as such is a composite substance, the ‘core’ of the product is not ‘wood’ or
‘timber,’” but concedes that “it is accurate that the interior . . . is a composite material
made of wood chips, wood dust, and adhesive.” 10 TTABVUE 2.
In analyzing whether Applicant’s proposed mark is merely descriptive, we must
“consider the mark as a whole and ask whether the combination of the component
words of Applicant’s mark ‘conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.’” Fat Boys, 118 USPQ2d at
1516 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372
(Fed. Cir. 2003)). “If, instead, each component retains its merely descriptive
significance in relation to the goods, the combination results in a composite that is
itself merely descriptive.” Id. For the reasons discussed below, we find that the whole
mark is not greater than the sum of its descriptive parts, and it is thus itself merely
descriptive.
There is no dispute regarding the meaning of the word CORE as it appears in
Applicant’s mark and in relation to the identified goods. Applicant acknowledges that
“core” means “the central or most important part of something,” Merriam-Webster
Dictionary, and that when it is used in the proposed mark, it would be understood by
consumers in its dictionary sense to refer to the “Premium Pressed Poplar Wood
Serial No. 86801235
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Board” layer of Applicant’s multi-layered product.8 The key issue, as framed by both
Applicant and the Examining Attorney, 4 TTABVUE 3-5; 13 TTABVUE 3-8, is
whether the word TIMBER, when it appears in the proposed mark, has a meaning in
relation to the identified goods, other than its dictionary meaning, that gives the
mark as a whole a “distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.” Id.
For the Examining Attorney, the answer is clearly no. He cites Applicant’s
admissions regarding the meaning of the word “timber” and the composition of the
core of the product. 13 TTABVUE 5. He argues that “even to the extent that the goods
at issue are types of engineered flooring, containing wood and other materials, the
proposed mark would nonetheless be descriptive of a feature of the goods; namely,
that the center of applicant’s flooring products contains a type of wood suitable for
carpentry and/or building.” 13 TTABVUE 7-8 (emphasis in original).
Applicant acknowledges the Merriam-Webster dictionary definition of “timber,”9 4
TTABVUE 3, but claims that “[i]n the mind of consumers, ‘timber’ means a piece of

8 Applicant states in its main brief that “[t]he ‘core’ of this product is made from wood shaving
particles that are pressed together under heat and pressure,” 4 TTABVUE 3, and in its reply
brief, Applicant again discusses the composition of this “interior, or ‘core’” layer of the
product. 10 TTABVUE 2.
9 “Timber” is defined in the Collins Dictionary entry of record as “wood, esp. when regarded
as a construction material.” February 24, 2016 Office Action at 4. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed form or regular fixed editions, In re Red Bull GmbH,
78 USPQ2d 1375, 1377 (TTAB 2006). We judicially notice similar definitions of “timber” from
Dictionary.com as “wood, especially when suitable or adapted for various building purposes”
(www.dictionary.com, accessed April 19, 2017) and from the American Heritage Dictionary
as “wood used as a building material” (www.ahdictionary.com, accessed on April 19, 2017).
Serial No. 86801235
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solid wood, not plywood,” such that “‘Timbercore’ means a flooring material that is as
solid as a piece of timber might be, regardless of its composition.” 4 TTABVUE 3.
Applicant argues that if “a proposed mark has more than one dictionary definition
and there is at least one meaning which would suggestive [sic] of some other relevant
association, the mark is not merely descriptive,” 4 TTABVUE 3, and claims that
“timber” means a piece of solid wood, not plywood, based upon wikipedia.org
definitions. Applicant claims that under this alternative meaning, the word TIMBER
in the proposed TIMBERCORE mark “conveys ‘strength’ to the relevant consumer
and is suggestive in nature.” 4 TTABVUE 4.10
Applicant merely quoted from wikipedia.org and provided the Internet address for
the claimed definitions, both in its Request for Reconsideration, 9 TTABVUE 2-3, and
in its main appeal brief, without making the cited pages of record. 4 TTABVUE 4-5.11
The Board has “made clear that providing hyperlinks to Internet materials is
insufficient to make such materials of record.” In re Powermat Inc., 105 USPQ2d
1789, 1791 (TTAB 2013) (citing In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269,
1274 (TTAB 2012) (“a reference to a website’s internet address is not sufficient to
make the content of that website or any pages from that website of record”)). We
“decline to judicially notice the [claimed] definitions taken from Wikipedia because

10 Applicant’s reference in its main brief to secondary meaning under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), 4 TTABVUE 4, is a misnomer. Applicant made no claim
to registration under § 2(f) during prosecution, either solely or in the alternative.
11 In its reply brief, Applicant also cited the website at www.compositepanel.org regarding
“the spectrum of fiberboard products” and provided the Internet address for that website. 10
TTABVUE 2. This website is not of record for the reasons discussed below in the text.
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Wikipedia is an Internet source whose contents are continuously subject to change
via collaborative user-input. Although we permit evidence from Wikipedia and
similar such sources to be made of record when timely introduced, so that the
examining attorney has an opportunity to submit rebuttal evidence . . . such rebuttal
is not permissible on appeal.” In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768
(TTAB 2016) (denying applicant’s request in appeal brief that Board take judicial
notice of definitions from Wikipedia submitted with appeal brief) (citations omitted).
The Examining Attorney did not treat the claimed definitions of “timber” and
“plywood” from Wikipedia as if they were of record, as he did not discuss them in his
appeal brief, and thus we have given them no consideration in our analysis of the
meaning of the word TIMBER as it appears in Applicant’s proposed mark and in
relation to the identified goods.12

12 The cases cited by Applicant, 4 TTABVUE 3, in support of its argument that the existence
of multiple dictionary definitions of a word may show that the word is suggestive do not aid
Applicant on the record here. In In re Atavio Inc., 25 USPQ2d 1361, 1363 (TTAB 1992), the
Board found that multiple dictionary definitions of the Spanish word ATAVIO indicated that
the word had an ambiguous meaning as applied to jewelry, and was thus suggestive. In In re
Jim Crockett Promotions, Inc., 5 USPQ2d 1455, 1456 n.5 (TTAB 1987), the examining
attorney had required a disclaimer of the word BASH in the mark THE GREAT AMERICAN
BASH, on the ground that it was descriptive, on the basis of a single dictionary definition.
The Board reviewed six other dictionary definitions of the word and could find no similar
definition. The Board found, on the basis of “the more accepted (and thus better known)
definition of ‘bash,’” that the word was suggestive as applied to services involving wrestling
matches, and did not need to be disclaimed. Here, the dictionary definitions of “timber” yield
a consistent and unambiguous meaning as wood that is suitable for or used for building or
construction. This consensus meaning of “timber” would be “the more accepted (and thus
better known)” definition, id. even if we were to consider the Wikipedia.org definition
proffered by Applicant. In any event, “[i]t is well settled that so long as any one of the
meanings of a term is descriptive, the term may be considered to be merely descriptive.” In
re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); see also In re IP Carrier Consulting
Grp., 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Serial No. 86801235
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Applicant admits that “the ‘core’ of this product is made from wood shaving
particles.” 4 TTABVUE 3. Applicant’s admissions are confirmed by Applicant’s
specimen, a page from Applicant’s website on which Applicant touts the use of poplar
wood, made of record by the Examining Attorney (May 19, 2016 Office Action at 29),
and reproduced below:

and another page from one of Applicant’s brochures made of record by Applicant
(April 19, 2016 Response to Office Action at 4), and reproduced below:
Serial No. 86801235
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Third-party Internet evidence made of record by the Examining Attorney, 13
TTABVUE 7, and reproduced in pertinent part below, indicates that purchasers of
Serial No. 86801235
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the engineered wood flooring identified in the application are exposed to flooring
materials containing a wood core of the sort sold by Applicant under the proposed
TIMBERCORE mark:

7 TTABVUE 15.

Serial No. 86801235
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7 TTABVUE 2.

6 TTABVUE 15.
We find, on the basis of the record as a whole, that consumers of the “floor tiles of
wood,” “hard wood flooring,” “parquet flooring made of wood,” “synthetic flooring
materials,” and “laminate flooring” identified in the application, and sold under the
proposed TIMBERCORE mark, will understand the mark to immediately describe a
feature, characteristic, or attribute of those goods, namely, that they consist of an
interior or “core” layer that contains wood. Cf. In re TriVita, Inc., 783 F.3d 872, 115
USPQ2d 1574, 1576 (Fed. Cir. 2015) (proposed mark is merely descriptive of goods if
consumers would understand it to convey that goods contain certain ingredients). The
mark is thus merely descriptive of the goods, DuoProSS, 103 USPQ2d at 1755, and
Serial No. 86801235
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ineligible for registration on the Principal Register in the absence of a showing of
acquired distinctiveness.
Decision: The refusal to register is affirmed.