Masco Home Services, Inc.

Trademark Trial and Appeal Board

Nov 8, 2010

No. 77404825 (T.T.A.B. Nov. 8, 2010)

Mailed: November 8, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Masco Home Services, Inc.
________

Serial No. 77404825
_______

Edgar A. Zarins of Masco Corporation for Masco Home
Services, Inc.

Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Masco Home Services, Inc. has filed an application to
register on the Principal Register the mark ECOVALUATION,
in standard character format for goods identified as
“review and assessment of building construction
specifications” in International Class 37.1
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 mark

1 Serial No. 77404825, filed February 25, 2008, and alleging a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77404825

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ECOVALUATION merely describes a feature or characteristic
of applicant’s services.
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney have filed
briefs.2 We affirm the refusal to register.
A term is deemed to be merely descriptive of services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the services. See, e.g., In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant’s services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute, function or property
of the services. See In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the services for which

2 The examining attorney, in her brief, requested that the Board
take judicial notice of definitions of the terms “eco-” and
“valuation.” This request is moot inasmuch as the definitions
were previously made of record with the Examining Attorney’s
Office Actions.

Ser No. 77404825

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registration is sought, the context in which it is being
used in connection with those services, and the possible
significance that the term would have to the average
purchaser of the services because of the manner of its use;
that a term may have other meanings in different contexts
is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). It is settled that “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 or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Applicant, in urging reversal of the refusal, suggests
that its mark was improperly dissected and maintains that
it should be evaluated as a whole since this is its common
usage, and that ECOVALUATION is a fanciful term which
requires some mental gymnastics to make an association
between applicant’s services and the term. Applicant also
implies that there is insufficient evidence for a finding
of mere descriptiveness.
The examining attorney, on the other hand, maintains
that, in the context of the identified services,
applicant’s mark, as a whole, “conveys a salient feature or
characteristic of the services in which consumers are
Ser No. 77404825

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informed of the usefulness or value of environmentally
related building processes.” Br. p. 7. The examining
attorney further contends that both the individual
components and the composite result are descriptive of
applicant’s services and do not create a unique,
incongruous or nondescriptive meaning in relation to the
services.
In support of the refusal, the examining attorney
submitted the following:
1. Definitions of “eco” and “valuation.”
Eco is defined as:
prefix
Connected with the environment3; and

environment, ecology
• ecofriendly4

Valuation is defined, in relevant part, as:

3 : judgment or appreciation of worth
or character5; and

3. estimate of importance: an estimate
of the importance of the usefulness of
something6

3 Cambridge Dictionaries Online (http://cambridge.org/define)
retrieved January 6, 2009. The examining attorney resubmitted
this definition with the Final Office Action.
4 msn Encarta, citing Encarta World English Dictionary [North
America Edition] (2009) (http://encarta.msn.com/encnet/etc.),
retrieved May 19, 2010.
5 Merriam Webster Online Dictionary, 2009 (http://www.merriam-
webster.com/dictionary/valuation) retrieved January 6, 2009.
6 msn Encarta, citing Encarta World English Dictionary [North
America Edition] (2009) (http://encarta.msn.com/encnet/etc.),
retrieved May 19, 2010.
Ser No. 77404825

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2. A listing of acronyms for the letters “ECO”
listing ECO as the acronym for, among other things,
“Ecology.”7
3. Seven third-party registrations for marks
including the word “eco” for similar goods and services
wherein the prefix/term “eco” has been disclaimed or the
mark was registered on the Supplemental Register.8 These
registrations include, by way of example, Registration No.
3437351 for the mark ECO AIR SOLUTIONS (ECO AIR disclaimed)
for, inter alia, “air conditioning contractor services;
HVAC contractor services”; Registration No. 3559227 for the
mark ECO CUSTOM HOMES (Supplemental Register) for, inter
alia, “custom construction and building renovation; custom
construction of homes…”; and Registration No. 3555512 for
the mark ECO-DENSITY (Supplemental Register) for “real
estate development.”
4. A listing of 31 articles retrieved from a search
of the Lexis database discussing “eco-building” or “eco-
construction” showing the “eco” is a term used in the

7 Retrieved at www.acronymfinder.com/ECO.html on July 22, 2009.
8 The examining attorney submitted five additional registrations
that have not been considered; Registration No. 2765409 having
been cancelled, Registration Nos. 3175794 and 3226325 having been
based on Section 44 of the Trademark Act, and Registration Nos.
3530576 and 2910922 registered for very different services.
We also note that two of the registrations, i.e., Registration
Nos. 3559227 and 3625397 are owned by the same entity.
Ser No. 77404825

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building and construction industries. Examples include
(emphasis supplied by the examining attorney):
“The eco-construction trend first grew…” Kelli
Samantha Hewitt, Eco Construction trend may come
to Trousdale or Smith, The Tennessean, September
21, 2003, at Pg. 2B;

Eco-Building can also save the developer …”
Living green in Hoboken’s national pacesetter
condos, Jersey Journal (New Jersey), April 25,
2009, at Pg. A4;

“… shades of green in the eco-construction
movement.” Steve Toloken, Md. Buildings go green
to get some green, Plastics News, May 14, 2001,
at Pg. 9;

“… College has designed the ultimate eco-
building, complete with an energy …” Michelle
Crouch, ENVIRONMENTAL STUDIES HOUSED IN OWN
PROJECT, Charlotte Observer (North Carolina)
(ONE-THREE EDITION, MAIN), November 13, 2000, at
Pg. 1A; and

“… somewhat different criteria; eco-construction
is such a new field,” Jim Wise, with building
makeover, Gregson turns a shade of green, The
News & Observer (Raleigh, North Carolina) (Final
Edition, DURHAM NEWS), November 3, 2007 Pg. A4.

5. Results for a search of the Google search engine
for “construction” and “ecovaluation.” The results
include:
a. a directory entry (retrieved from the website
LINKED IN at www.linkedin.com/pub/dir/etc.) for
Joe Nicolette, identifying him as Vice President,
Director EcoValuation Practice at CH2M Hill Inc.;
and

b. an excerpt from the website of Emergent
Energy Group LLC (www.emrgentenergygroup.com)
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entitled Carbon Inventories & Eco-Valuations
which states,

“Emergent will assess and determine your
business, institution, town, or personal carbon
footprint and then describe ways to reduce it
through implementation of innovative technologies
and methods of living and conducting business.
Emergent will determine overall environmental
impact of your business, institution, or town and
then position it in the “sustainable spectrum”
(Not Sustainable to Sustainable), in order to
fully understand your “eco-value.”

We are not persuaded by applicant’s intimation that
the examining attorney has failed to meet her burden and
find the record sufficiently demonstrates that the
designation ECOVALUATION immediately conveys a salient
feature and/or a characteristic of applicant’s services.
First, the dictionary definitions as well as the Internet
evidence submitted by the examining attorney of and/or
about the term/prefix “eco,” show that “eco” directly
describes an attribute of applicant’s building construction
specifications review and assessment services, namely that
they relate to the environment. This relationship is
confirmed in the materials submitted by applicant in its
response to the examining attorney’s first office action.
The materials, consisting of an informational brochure for
applicant’s services, including those provided under the
applied-for mark ECOVALUATION, indicate that applicant’s
services are provided under a program entitled the
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“Environments for Living Certified Green Program.”
Accordingly to page 5 of the brochure, applicant’s services
are “designed to provide you with the maximum flexibility
to make an environmentally responsible or ‘green’
statement.” Similarly, the definitions of “valuation”
demonstrate that the term describes the function of
applicant’s services, namely, that the services provide “an
estimate of the importance of the usefulness of something.”
In view of all of the evidence submitted by the
examining attorney, we find that the individual terms ECO
and VALUATION have descriptive significance as used in
connection with the identified services. ECO refers to the
environment and VALUATION refers to an estimate of
usefulness. No hesitation or thought is needed in
appreciating the meaning of these two terms.
Next, we must determine whether the combination of
these two descriptive terms evokes a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the
services, then the resulting combination is also merely
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) (SMARTTOWER held merely descriptive of
commercial and industrial cooling towers). In addition,
while we must consider the mark in its entirety, it “is
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perfectly acceptable to separate a compound mark and
discuss the implications of each part thereof … provided
that the ultimate determination is made on the basis of the
mark in its entirety.” In re Hester Industries, Inc. 230
USPQ 797, 798 n.5 (TTAB 1986).
Here, we find that the record establishes that the
designation ECOVALUATION, as a whole, is descriptive of the
identified services. When the mark ECOVALUATION is viewed
in connection with the services listed in the application,
there is nothing in the mark which is incongruous, nor is
there anything which would require the gathering of further
information, in order for the merely descriptive
significance thereof to be readily apparent to prospective
purchasers of the services. See, for example, In re Abcor
Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA)
(Rich, J., concurring) [GASBADGE described as a shortening
of the name “gas monitoring badge”]; and Cummins Engine
Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149
USPQ 559 (CCPA 1966) [TUBODIESEL held generically
descriptive of engines having exhaust driven turbine super-
chargers]. That is, the combination of the terms “eco” and
“valuation” fail to create a new and distinct commercial
impression.
Ser No. 77404825

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Indeed, as evidenced by the service information in
applicant’s previously discussed brochure, the purchasing
public would perceive the designation ECOVALUATION as
descriptive of applicant’s review and assessment of
building construction specifications. The brochure reads,
in relevant part, as follows:
1. The Ecovaluation Plan Review
All Environments For Living Certified Green
program homes require an “Ecovaluation Plan
Review,” a process of evaluating the energy,
environmental and economic impact of the
construction of a new home. Each model will
be Ecovaluated to determine the heating and
cooling energy uses as well as compliance
requirements for federal, state, local and
utility incentives ….
***
… The program is designed to provide you
with the maximum flexibility to make an
environmentally responsible or “green”
statement; however, with the flexibility
comes responsibility.
(Applicant’s brochure, pp. 3 and 5).

When prospective consumers encounter the designation
ECOVALUATION in this context, it is clear that it would
immediately inform these consumers that applicant’s
building construction review and assessment services
feature an estimate of the importance or usefulness
pertaining to the ecological aspects of construction.
We simply are not persuaded by applicant’s unsupported
contention that because the terms “eco” and “valuation”
have more than one possible meaning, including those
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referring to economic or monetary evaluation, the term
cannot be considered merely descriptive of an environmental
indicator. Even if applicant had provided evidence of such
other meanings of “eco” and “valuation,” as noted
previously, descriptiveness is determined in relation to
the services sought to be registered. See In re Bright-
Crest, supra. Here, the record clearly demonstrates the
descriptive significance of the terms, individually, as
well as collectively, in relation to applicant’s identified
services.
Applicant also argues that there is only one instance
in the record in which ecovaluation is used as a single
term. We point out that even if applicant were the only
user of the term, that fact does not mean that its mark is
not descriptive. In re Sun Microsystems, Inc. 59 USPQ2d
1084, 1087 (TTAB 2001) (“The Fact that AGENTBEANS does not
appear in the dictionary in not determinative. Likewise,
the fact that applicant may be the first and/or only entity
using the phrase AGENTBEANS is not dispositive where, as
here, the term unequivocally projects a merely descriptive
connotation” (citation omitted); In re Acuson, 225 USPQ
790, 792 (TTAB 1985) (“A descriptive term used first or
even only by applicant is not registrable as long as the
relevant purchasing public perceives of the term as
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describing the good”); and In re Gould, 173 USPQ 243, 245
(TTAB 1972) (“The fact that applicant may be the first and
possibly the only one to utilize this notation in
connection with its services cannot alone alter the basic
descriptive significance of the term and bestow trademark
rights therein”).
We conclude herein that when applied to applicant’s
services, the designation ECOVALUATION immediately
describes, without any kind of mental reasoning, a feature
or characteristic of the identified review and assessment
of building construction specifications services, namely
that the review and assessment pertains to ecological
characteristics of the construction.

Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.