Mannington Mills, Inc.

Trademark Trial and Appeal Board

Jun 12, 2003

No. 76199575 (T.T.A.B. Jun. 12, 2003)

Mailed: 12 JUN 2003
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Mannington Mills, Inc.
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Serial No. 76/199,575
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Sherry H. Flax of Saul Ewing LLP for Mannington Mills, Inc.
Marc J. Leipzig, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
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Before Seeherman, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On January 26, 2001, Mannington Mills, Inc.
(applicant) applied to register the mark SCRATCHRESIST in
typed form on the Principal Register for goods ultimately
identified as “hardwood flooring which contains a coating
in the nature of a wood floor finish” in International
Class 19.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76/199,575
2
The application (Serial No. 76/199,575) was based on
an allegation of a bona fide intention to use the mark in
commerce.1
The examining attorney refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because the mark SCRATCHRESIST describes a feature of the
goods. “A floor which resists scratches, or a floor finish
which resists scratches is an important feature of such
goods.” Brief at 4. The examining attorney goes on to
argue that “applicant’s mark, SCRATCHRESIST, is essentially
the equivalent of the phrase ‘scratch-resistant,’ a phrase
routinely used to describe hardwood floors and various
finishes and coatings for hardwood floors. Far from
creating an incongruous combination of words, applicant’s
mark merely combines two descriptive terms into an equally
descriptive composite mark.” Id.
On the other hand, applicant maintains that its mark
creates a unique commercial impression and that “the
existence of other common meanings of the term ‘scratch’
mandates the conclusion that the mark is not merely
1 On March 30, 2001, applicant filed an Amendment to Allege Use
that contained a specimen and an allegation of a date of first
use and first use in commerce of December 2000.
Ser. No. 76/199,575
3
descriptive.” Brief at 3. Applicant also argues that the
registration of other marks that contain the term “scratch”
justify the registration of its mark SCRATCHRESIST.
After the examining attorney made the refusal final,
applicant appealed to this Board.
We affirm.
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
The examining attorney introduced numerous printouts
to show that the term SCRATCHRESIST would be perceived by
potential purchasers as a term that describes a feature or
quality of the goods. The following examples show that
Ser. No. 76/199,575
4
terms such as “resist scratches” and “scratch resistant”
are commonly used to describe products that keep wood and
floors from scratching.
One reason wood flooring is having a rebirth is the
urethane finish most homeowners choose. Throughout
the ‘90s, the coatings have become more durable, able
to resist spilled water, some scratches and general
wear.
Columbus Dispatch, February 19, 2000.
Varnish is ideal for finishing floors, counters,
cabinets and wood furniture because it resists
scratches and stains better than wax or oils.
Washington Post, October 2, 1997.
Hardwood floors can be either solid or veneer…
Scratch-resistant and stain resistant polyurethane
finishes applied over the stain cut down on the
necessity for refinishing.
Plain Dealer, August 2, 1997.
The tough, aluminum oxide finish recommended for high-
traffic areas resists scratches but isn’t immune to
scratches, punctures or dents. “Some companies
overstate their product’s durability,” said Wayne
Wenger, Home Valu floor buying expert. “Just like
wood, it can scratch. You need to protect it like any
wood floor.”
They sell and install carpet, linoleum, ceramic tile
and laminates – wood slates with a hard surface that
resists dents and scratches.
Daily Town Talk (Alexandria, LA), May 18, 1999.
A real wood floor can last indefinitely, although it
needs refinishing from time to time.
Although laminates are scratch-resistant, they are not
impervious to scratching and scarring.
Washington Post, January 8, 2000.
The printouts indicate that, when the terms “scratch”
and “resist” and their equivalents are used in relation to
Ser. No. 76/199,575
5
wood flooring, they mean the product “resists scratches.”
As the articles above demonstrate, scratch-resistance is an
important feature for wood flooring.
Likewise, applicant’s specimens indicate that the
applicant’s term would inform prospective purchasers that
the term means scratch-resistant: “On selected patterns,
our urethane wearlayer is enhanced with aluminum oxide to
create a ScratchResist finish. ScratchResist helps your
floor to look new longer by resisting everyday household
scratches” (emphasis added).
We also do not find that there is anything in the way
applicant has combined the terms “scratch” and “resist”
that would take away from the descriptive meaning the
combined term would have when it is applied to hardwood
flooring. See In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1017 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe
for cleaning television and computer screens); Abcor Dev.
(GASBADGE at least descriptive for gas monitoring badges;
three judges concurred in finding that term was the name of
the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED descriptive for jams and jellies that
would be a spread for bread); In re Perkin-Elmer Corp., 174
USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for
interferometers utilizing lasers). There is nothing
Ser. No. 76/199,575
6
incongruous about the term ‘Scratchresist” for scratch-
resistant wood flooring.
While applicant argues that consumers are likely “to
interpret the mark SCRATCHRESIST as a manual for golfers, a
preparation to stop itching, or a cake mix” (Brief at 3),
it is clear that applicant has not applied the correct
test. The test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
mark alone. Abcor Dev., 200 USPQ at 218 (“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”). We must look at the mark in the
context of applicant’s goods to see if the mark informs
prospective purchasers of a feature or characteristic of
applicant’s goods. In this context, applicant’s mark
clearly informs potential purchasers of a significant
feature of applicant’s goods in that applicant’s hardwood
floors are designed to resist scratches.
Finally, applicant argues that there are “dozens of
marks that use the term SCRATCH in connection with
preparations that are used to eliminate scratches or goods
that have a protective coating.” Brief at 3. Applicant
Ser. No. 76/199,575
7
has in fact attached copies of 13 registrations.2 The list
consists of 5 cancelled registrations,3 two registrations
(one expired) under Section 2(f), and one registration on
the Supplemental Register. Many have disclaimed the word
“scratch.” No registration contains the word “resist” or a
variation of it. There is no rule that prevents the
registration of marks containing the word “scratch” when it
is combined with a non-descriptive term, so the fact that
there are or were 13 registrations that contain the word
“scratch” is hardly significant. Indeed, every case must
be determined on its own record. Nothing about the
registrations that applicant has submitted indicates that
its mark is not descriptive of its goods. We note that
even “if some prior registrations had some characteristics
similar to Nett Designs' application, the PTO's allowance
of such prior registrations does not bind the Board or this
court.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
2 We have not considered the registrations applicant refers to
for the first time in its reply brief. Even if applicant
submitted copies of these registrations, which it did not, it is
too late to submit additional evidence. In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”); 37 CFR
§ 2.142(d) (“The record in the application should be complete
prior to the filing of an appeal”).
3 “[A] canceled registration does not provide constructive notice
of anything.” Action Temporary Services Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Ser. No. 76/199,575
8
When we view the evidence in this case, we are
convinced that the mark SCRATCHRESIST would immediately
inform prospective purchasers of a feature or
characteristic of applicant’s hardwood flooring.
Therefore, the term is merely descriptive.
Decision: The refusal to register is affirmed.