Mannington Mills, Inc.

Trademark Trial and Appeal Board

May 18, 2010

No. 77566702 (T.T.A.B. May. 18, 2010)

Mailed:
May 18, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mannington Mills, Inc.
________

Serial No. 77566702
_______

Sherry H. Flax of Saul Ewing LLP for Mannington Mills, Inc.

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Grendel and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Mannington Mills, Inc. seeks registration on the
Principal Register of the term ETCHED (in standard character
format) for goods identified as “non-metal cove bases; rubber
cove bases; rubber floor tiles; [and] rubber flooring” in
International Class 19.1

1 Application Serial No. 77566702 was filed on September 10,
2008 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77566702
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The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
In support of registrability, applicant argues that
the term “Etched” is not merely descriptive of the goods
identified in the application; that the purported evidence
does not support the Trademark Examining Attorney’s
position; and that the applied-for designation is, at
worst, suggestive, and therefore deserving of registration.
By contrast, the Trademark Examining Attorney
contends that this term conveys an immediate idea of a
salient feature of the identified goods.
Merely Descriptive under Section 2(e)(1)

A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
Serial No. 77566702
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1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
of analgesic product]. See also In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
is merely descriptive of bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE
PIE is merely descriptive of a potpourri mixture]; and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods [or services]. Gyulay, 3 USPQ2d at 1009.
Descriptiveness of a mark is not considered in the abstract,
but in relation to the particular goods or services for
which registration is sought. That is, when we analyze the
evidence of record, we must keep in mind that the test is
not whether prospective purchasers can guess what
applicant’s goods [or services] are after seeing only
applicant’s mark. In re Abcor Development Corp., 588 F.2d
Serial No. 77566702
- 4 -
811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them. In re
Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); and
In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
In addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, the proper test for descriptiveness also considers
the context in which the mark is used and the significance
that the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
Serial No. 77566702
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distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
Hence, the ultimate question before us is whether the
term ETCHED conveys information about a significant feature
of applicant’s goods with the immediacy and particularity
required by the Trademark Act.
Analysis

The Trademark Examining Attorney has made of record
dictionary definitions as well as information drawn from
public media sources and applicant’s own literature.
From a dictionary definition of the term “etched,” the
Trademark Examining Attorney focuses on the meaning of “cut
or impressed into a surface.”
Serial No. 77566702
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etch
transitive verb
1.a. To cut into the surface of …

etched
adjective
Cut or impressed into a surface … [syn: engraved] 2

The Trademark Examining Attorney has also introduced
into the record several pieces of information about
applicant’s sculpted cove or wall bases. Applicant’s online
promotional materials include both “etched” and “double
etched” edge effects:
3
One of applicant’s technical specifications documents
listed thirteen “physical characteristics” of the edge
effects of its sculpted wall bases, of which “Etched” and
“Double Etched” were two of the thirteen listings, and
described as having surface notching:

2 http://www.thefreedictionary.com/etched

3 Trademark Examining Attorney’s denial of request for
reconsideration, October 6, 2009, at TICRS 32 and 33 of 71.
Serial No. 77566702
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ARCHITECTURAL GUIDE SPECIFICATIONS
Mannington Mills, Inc.
P. O. Box 30
Salem, NJ 08079

Section 09 65 13.13
…
PART 2 PRODUCTS
2.01 RESILIENT RUBBER FLOORING MATERIALS
…
B. Physical Characteristics
…
7. [Etched] … high flat surface wall base profile with an angular
top and a surface notch …
8. [Double Etched] … high flat surface wall base profile with two
square notches … 4

In further support of the refusal to register, the
Trademark Examining Attorney included a dictionary entry for
the word “notch”:
notch
–noun
1. an angular or V-shaped cut, indentation, or slit in an object,
surface, or edge. 5

In response, applicant argues that while the applied-
for term might well be suggestive of a feature of the wall
bases, it is certainly not merely descriptive inasmuch as the
term “Etched” is too vague when used in connection with these
goods. While its architectural guide specification describes
the sculpted wall bases as having “a surface notch,” applicant
argues that a surface notch “has absolutely nothing to do

4 Office action of December 18, 2008, Att. 2, at TICRS 9.

5 http://dictionary.reference.com/browse/notch, Office action
of December 18, 2008, Att. 4, at TICRS 59.
Serial No. 77566702
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with ‘etching’.” In fact, applicant concedes that the term
“Notched” might be a merely descriptive term for these
goods, but that consumers would not immediately understand
the term “Etched” to refer to a salient feature of these
goods because “the goods are not etched.” [emphasis in
original].
These cove or wall bases do not have a design feature
“etched” into the surface of them if one limits the meaning of
the word “etched” to concepts like “ingrained,” “imprinted,”
“stamped,” “embossed” or “impressed.” However, as shown by the
dictionary entries above, “etched” also has the connotation of
“lined,” “cut-into,” “carved” or “engraved.” The fact that a
sculpted wall base known as “Etched” has a single surface notch
(see photograph, profile and description of base above), and the
fact that “Double Etched” contain two lines or notches (again,
see the relevant photograph, profile and description),
separately and taken together, immediately convey information
about these wall bases consistent with a standard, ordinary
meaning of the word “Etched” as meaning “cut-into.” As
shown by pictures above, the wall bases are clearly
“etched” / “cut into.” In this context, the word “Etched” is
neither vague nor incongruous. This connotation is obvious
enough that competitors should be free to use this term,
even if it is possible that applicant is the first or only
Serial No. 77566702
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manufacturer of these goods currently using the word
“Etched” in this manner. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING,
HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt
descriptive name for conducting and arranging trade shows in
the hunting, shooting, and outdoor sports products field].
Additionally, the fact that other words (e.g., “Notched”)
might be equally available does not make the word “Etched”
any less descriptive. Applicant’s own use in its
“Architectural Guide Specifications,” equating “Etched” with
a single surface notch and “Double Etched” with two square
surface notches supports a finding of mere descriptiveness.
See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987) [applicant’s own specimen describing
product as “a … wipe … for … screens” supports holding of
SCREENWIPE as generic].
We find that the above evidence demonstrates the
descriptiveness of the word “Etched” as applied to
applicant’s cove or wall bases. The identification of goods
also includes “rubber flooring.” As to the use of the word
“Etched” in connection with rubber or laminate flooring, the
Trademark Examining Attorney also included another possible
descriptive significance:

Serial No. 77566702
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Laminates Follow Wood Trends

Although Mannington began production of its laminate flooring almost a
decade ago at the High Point facility, the design and production process
continues to evolve.
For design inspiration, "they go to the real stone and wood," Brown says.
Dryden adds that, in keeping with Mannington's emphasis on style -- "it sets us
apart from the competition" -- 99 percent of the designs are proprietary. "They're
not off the shelf," Dryden says.
For example, Mannington's prize-winning laminate design in cherry copied
hardwood's "aged" appearance, right down to the hand-scraped look which was
achieved through embossed-in-register technology. In embossed-in-register, the
indentations that the press plate makes in the plank exactly follow the wood or
stone pattern of the décor paper.
The pattern of the décor paper then is repeated on the beveled tongue-
and-groove edges through a special thermofoil process that Mannington
implemented in 2005. "Hand-rubbing," achieved by machine etching, removes
color from the papers "knotholes," giving them an appropriately dull surface.
According to Dryden, it results in an appearance that is more authentic-looking
than a lacquer coating… 6

Unlike the usage of the term “Etched” with the cove or
wall bases, where we found the term to be descriptive in the
sense of “cut-into,” applying the term “Etched” in the
context of this latter usage describes the results of
applicant’s special thermofoil process for flooring
(“machine etching”) inasmuch as it fits the definitions of
the word “etched” in the sense of “ingrained,” “imprinted,”
“stamped,” “embossed” or “impressed.”7

6 http://www.thefreelibrary.com/Mannington+floors+the+
competition+with+product+diversity%3a+having+its...-a0163198214,
Office action of December 18, 2008, Att. 5, at TICRS 67.

7 We note that our finding the term “Etched” merely
descriptive as to applicant’s cove or wall bases is sufficient to
support the refusal to register these goods in International
Class 19. However, inasmuch as the Trademark Examining Attorney
included this additional evidence, in the interest of
completeness, we find that applicant has also used the term
“Etched” in a merely descriptive manner as to flooring.
Serial No. 77566702
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Hence, we conclude that whether one focuses on the cove
bases or the flooring, the word “Etched” appears to have
merely descriptive meanings with nuanced differences for
each type of product.
Finally, applicant argues that its mark should be
allowed to register because the Office previously has
registered composite marks containing within them terms
such as “Etch,” “Etched,” “Carved” and “Cut” in
registrations for similar goods. However, third-party
registrations are not conclusive on the question of
descriptiveness inasmuch as each case must be considered on
its own merits. As noted by the Trademark Examining
Attorney, an applied-for mark that is merely descriptive
does not become registrable simply because other similar
terms appear within marks subsisting on the register. In
re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977).
Decision: The Trademark Examining Attorney’s refusal
to register under Section 2(e)(1) of the Act the term
ETCHED in connection with cove bases and rubber flooring is
hereby affirmed.