Mehy Holdings

Trademark Trial and Appeal Board

Oct 20, 2006

No. 76522942 (T.T.A.B. Oct. 20, 2006)

Mailed:
October 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mehy Holdings1
________

Serial No. 76522942
_______

John G. Tutunjian, of Keusey, Tutunjian & Bitetto, P.C. for
Mehy Holdings.

Laura G. Kovalsky, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Zervas and Cataldo, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Mehy Holdings, by assignment from Rollup Shutters and
Awnings, Inc., is the owner of an application to register
on the Supplemental Register the term ROLLUP (in typed or
standard character form) for goods ultimately identified as
“laterally retractable non-metal awnings and awning systems
comprising awning housings, support frames, shock absorbing

1 The Assignment Division of the U.S. Patent and Trademark Office
has recorded an assignment of the present application from Rollup
Shutters and Awnings, Inc. to Mehy Holdings at Reel No. 3211,
Frame No. 0239.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76522942
2
bars, wiper bars and hardware; outdoor fabric canopy
systems comprising housings, support frames, shock absorber
bars, wiper bars and hardware” in International Class 22.2
The application claims first use anywhere and first use in
commerce in January 1998.
The application was originally filed on the Principal
Register, at which time the examining attorney refused
registration on the ground that the term ROLLUP is merely
descriptive of applicant's goods. 15 U.S.C. § 1052(e)(1).
After applicant claimed that ROLLUP had acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), the examining attorney found applicant's
evidence of acquired distinctiveness to be insufficient.
In its “Request for Reconsideration” of January 31, 2005,
applicant amended the application to seek registration on
the Supplemental Register. Subsequently, the examining
attorney refused registration pursuant to Section 23(c) of
the Trademark Act, 15 U.S.C. § 1091(c), on the ground that
the term was generic for the goods, and therefore incapable
of distinguishing applicant’s goods.
After the refusal under Section 23(c) was made final,
applicant filed a notice of appeal. The appeal has been
fully briefed.

2 Application Serial No. 76522942, filed June 17, 2003.
Ser. No. 76522942
3
The excerpt submitted with the examining attorney’s
final Office action from the Bangor Daily News (August 15,
2000) explains the operation of an awning and how it “rolls
up.” It states as follows:
What is unique about a retractable awning is
that it is only supported where it attaches to
the house wall. This eliminates the
inconvenience of having awning supports at the
outer corners that rest on the deck or patio.
The awning can be opened from only a few inches
out to its maximum depth.

Retractable awnings are attractive with
hundreds of styles, patterns and colors of
decorative fabrics. Since the fabric rolls up
and is stored against the wall when it is closed,
it is not continually exposed to the sun’s rays
or harsh weather. This gives it a long life with
little fading.

To visualize how a retractable awning works,
hold your arms chest high and tight against your
chest with your elbows out to the sides. Now
straighten out your arms and imagine them covered
with fabric. This is exactly how a retractable
awning over your patio or deck opens and closes.

Evidently, an awning has both a retracting function due to
the movement of lateral arms and a rolling function due to
the rolling of the awning, when the awning system is
closed. There is no question, therefore, that “rollup” is
merely descriptive of a significant feature of applicant's
goods. Applicant has admitted this both by its initial
claim of acquired distinctiveness and its subsequent
Ser. No. 76522942
4
amendment of its application to seek registration on the
Supplemental Register.
The examining attorney argues that the terms “roll up”
and “retractable,” which appears in the identification of
goods, are both “used to refer to a way of closing awnings,
and the phrase ‘roll up awning’ is used generically in the
awning industry and is often all-encompassing.” Brief at
p. 4. She adds that “[t]he cumulative evidence of
synonymous and interchangeable use [of roll up and
retractable] clearly indicates that ‘roll up awning’ is a
specific class or genus of awnings, including retractable
awnings and canopies.” Brief at p. 6.
Applicant maintains that ROLLUP is not generic; that
the burden is on the examining attorney to show that ROLLUP
is generic by clear evidence of generic use; and that the
examining attorney “has failed to show any evidence, beyond
a de minimis use, that the term ROLLUP … is used by the
relevant buying public to refer to the Applicant's goods.”
Reply at p. 1. According to applicant, “the term ‘rollup’
has been used only sparingly to describe the Applicant's
goods”; and the general public uses terms such as
“retractable awning,” “electric awning” or “lateral arm
awning” to refer to laterally retractable awnings.
Ser. No. 76522942
5
The Court of Appeals for the Federal Circuit has held
that “[t]he critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
Int'l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Ginn explains that:
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

Id. The Office bears the burden of establishing
genericness based on clear evidence of generic use. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999).
Turning to the first Ginn factor, i.e., the genus of
goods, applicant identifies the genus as “laterally
retractable awning systems, outdoor fabric canopy systems
and related hardware systems.” Brief at p. 3. The
examining attorney states that “‘roll up awning’ is a
specific class or genus of awnings, including retractable
awnings and canopies.” Brief at p. 6. In view of the
identification of goods and the evidence that is of record,
Ser. No. 76522942
6
we find that the relevant genus of goods is awnings and
canopies that retract.
Next, we consider whether the term is understood by
the relevant public to refer to the product included in the
genus of the goods. Ginn, 228 USPQ at 530. “Evidence of
the public's understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer
surveys, listings in dictionaries, trade journals,
newspapers, and other publications.” In re Merrill Lynch,
Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). “The critical issue in
genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected
to refer to the genus of goods or services in question.”
Ginn, 228 USPQ at 530. In this case, the relevant public
consists of members of the general public, which includes
homeowners.
The examining attorney has submitted with the various
Office actions excerpts of numerous stories taken from the
Nexis database; web pages from Internet web sites; and a
dictionary definition of “retractable” from
www.dictionary.reference.com. Two of her submissions from
the Internet, however, have extremely limited probative
value. First, the submission from loftliving.ca is from a
Ser. No. 76522942
7
Canadian website – we are concerned with generic use in the
United States, not abroad, and there is no evidence that
purchasers in the United States would look to foreign web
sites in purchasing awnings or canopies, or in making their
purchasing decisions. Second, the listing of search
results for “roll-up awning” from the Google database –
showing “about 1,660” results - is of limited probative
value because the excerpts that appear in the Google
listing are extremely truncated with brief bits of text,
and we do not have the web pages themselves from which to
examine the context within which the search terms are used
(see, e.g., “Mambo Combo by Small World Toys” stating “Hide
in Hideout dome tent with flap door, mesh windows, and
roll-up awning windows”). Evidence of use of a term or
phrase in headings or content on individual web sites has
far greater probative value. See In re Fitch IBCA Inc., 64
USPQ2d 1058 (TTAB 2002).
In her Internet search and a search for “roll up
awning(s),” “rollup awning(s)” or “roll-up awning(s)” on
the Nexis database, the examining attorney located several
web pages and a total of twenty-five Nexis stories,
eighteen of which showed use of “roll-up awning” and
“rollup awning,” and seven of which showed use of phrases
Ser. No. 76522942
8
such as “roll up the awning.”3 See, e.g., Fort Worth Star-
Telegram (January 28, 2003) “The Terry brand trailer is
white with red trim and has a roll-up awning over the
door”; Newsday (September 9, 2001) “It was just an open
deck with a roll-up awning, and I thought it would be
really nice to have a screen-and-glass porch for plants and
people …; www.rvsafety.com (regarding sun shades for
awnings) “They’re attractive – color-coordinated binding.
Easy to install - will fit any conventional roll-up
awning”; and www.alohapatio.com “Awnings – fabric roll
ups.” These references show use of “roll up,” rollup” or
“roll-up” as an adjective. Certainly, an adjective can be
a generic term. See, e.g., In re Reckitt & Colman, North
America Inc., 18 USPQ2d 1389 (TTAB) 1991) (the expression
“generic name for the goods or services” is not limited to
noun forms but also includes “generic adjectives,” that is,
adjectives which refer to a genus or species, category or
class, of goods or services). However, because these terms
are used as adjectives, we cannot ascertain with certainty
whether they are being used as generic adjectives, or are
being used in a merely descriptive fashion, to describe a

3 The record reflects that the examining attorney requested that
“All Documents” be printed for her search; printouts of twenty-
five documents followed.
Ser. No. 76522942
9
feature of the awnings rather than to name a genus of
awnings.
The examining attorney also relies on one of
applicant's web pages, stating:
Applicant's own web page clearly identifies the
applicant's awnings with which the mark is used
in a photograph, and explains that its
retractable awnings have a “rollup feature” in
which “[t]he front bar seals the housing, arms
and fabric when your awning is rolled up.” This
photograph and description of the applicant's
goods support the argument that rollup awnings
clearly encompass retractable awnings and,
therefore, the term “rollup” or “roll-up” is
generic for the goods at issue.

Brief at p. 7. The web page of record states as follows in
relevant part:
1. Fully Enclosed Tubular Housing
Exclusive Patented Rollup Feature …

2. Chainlink Windflex Arm®
Exclusive Patented Rollup Feature …

3. Adjustable Pitch
Exclusive Patented Rollup Feature …

4. Construction
Exclusive Patented Rollup Feature …

5A. “Exclusive Rollup Feature”
Rollup’s coordinating front bar
decorating color strip.

There is no dispute that applicant’s awnings have a rollup
feature; as indicated previously, applicant has admitted
the descriptiveness of ROLLUP by amending its application
to the Supplemental Register. However, we cannot accept
Ser. No. 76522942
10
the examining attorney’s argument that rollup awnings
encompass retractable awnings and, therefore, the term
“rollup” is generic for the goods at issue. While a
“rollup” awning may be retractable, this does not establish
that “rollup” is a generic term for awnings that are
retractable.
We next focus on the web page from www.screen-
house.com, depicted below, and made of record by the
examining attorney with her second Office action.

This excerpt shows product categories, some of which are
identified as “Retractable Patio Awnings”; “Fabric Window
Awnings with Arms”; “Aluminum Window Awnings with Arms”;
“Fabric Window Awnings with Sides”; “Aluminum Roll Up
Window Awnings”; “Fabric Roll Up Window Awnings”; “Aluminum
Ser. No. 76522942
11
Casement Roll Up Window Awnings”; and “Fabric Casement Roll
Up Window Awnings.” The text at the bottom of the web page
states: “Residential roll up window awnings are our
specialty. … You can also choose to get a fixed awning
over your window or door for consistent protection from the
sun and rain. Rollup window awnings in both fabric and
aluminum give you the ultimate in flexibility.” Evidently,
this website uses “roll up” in connection with window
awnings, but not with patio awnings – “retractable” is the
term used with such awnings.
The www.screen-house.com web page displays various
product categories for “window awnings” and a product
category for a “retractable patio awning,” both of which
are within the scope of applicant's identification of
goods. “Rollup” does not appear alone, but in each
instance appears next to or in the same sentence with an
adjective such as “fabric” or “aluminum,” which describes a
feature of the awning. Thus, while “roll up” may be used
as part of the name of a product, it is also possible that
“roll up” is being used to describe a feature or
characteristic of the product.4

4 Similarly, the excerpt from Sun-Sentinel (July 8, 2001), made
of record by the examining attorney, shows use of “roll-up,” but
it is likely to be viewed as a descriptive term in view of the
context in which it appears. “Awnings” is included within a list
of items, each of which is preceded by an adjective describing a
Ser. No. 76522942
12
The record also includes this web page from
www.storesonline.com:

This web page lists product categories which include “Roll
Up Awnings” and identifies an awning for sale as “SM-8
Rollup Awning 8’.” However, it also identifies, for
example, “Rope & Pole Awnings” as a product category, with
“Rope & Pole” used to describe a feature of the awnings.

characteristic of the item: “The Cottage Suite on the second
floor captures an old-timey beach cottage spirit with lots of
white wicker, sea grass carpet, roll-up awnings and terra-cotta
nightstands displaying specimen shells.”
Ser. No. 76522942
13
Thus, again, the evidence does not clearly show that
“rollup awning” is a generic term for the goods.
Another web page submitted with the examining
attorney’s second Office action is one from
www.silvercrestawning.com, which includes the phrase “place
your mouse over the photo to see the roll up in action!”
While the reference to “roll up” is as a noun, and hence
could be considered the name of the goods, an equally
plausible reading is that “the roll up” is a reference to
the rolling action of the awning as it is being closed.
Also, the web page states, “The Rollup Awning is made from
a special hardened and spring-tempered aluminum alloy,”
with “Rollup Awning” shown in initial capitalization.
“Rollup Awning” hence may be a reference to applicant's
awnings, being sold by Silvercrest Awning. Thus, this web
page does not clearly show use of “roll up” in a generic
manner.
Additionally, the examining attorney submitted with
her second Office action web pages from
www.maskedflowerimages.com showing product categories for,
e.g., “Horizontal Awning”; “Deluxe Awnings”; and “Automatic
Roll-up Awnings.” In view of the fact that the product
categories include terms that are clearly descriptive,
rather than generic, we cannot say that this evidence
Ser. No. 76522942
14
unequivocally demonstrates generic usage of “Roll-up” for
awnings. The same holds true for the evidence from
www.carefreeofcolorado.com, which offers “Power Awnings”;
“lateral arm box awning[s]”; “traditional patio awning[s]”;
“traditional roll-up awning[s]”; and “box awning[s].”
With her final refusal on the issue of genericness,
the examining attorney submitted two additional searches
from the Nexis database. She searched for “roll up” or
“rollup” or “roll-up” within forty words in one instance
(returning eight stories), and within seventy-five words in
the other instance (returning nine stories), of
“retractable” or “retracting,” within ten words of
“awning.” According to the examining attorney, the results
of these searches show that “‘rollup’ or ‘roll up’ [are]
both a feature of retractable awnings and used synonymously
therewith.” Final Office action on genericness at p. 3.
See, e.g., Pittsburgh Post-Gazette (June 30, 2001) “But
retractable awnings, which roll up on demand either by hand
crank or electric motor, are growing in popularity. …
Retractables (also called lateral arm awnings) cost about
10 percent to 20 percent more than fixed models”; and
Bangor Daily News (August 2, 1994) “When you crank the
retractable awning open, an elbow joint in
Ser. No. 76522942
15
each of two lateral support arms straightens.” We do not
find this evidence persuasive. First, most of the excerpts
obtained in the first search are the same as the results
that were obtained in the second search, and both searches
only yielded a handful of results. Second, essentially all
of these results refer to the awnings as “retractable
awnings,” which, of course, supports applicant's position.5
We now consider the evidence submitted by applicant in
support of its argument that “retractable awning” is the
generic term for the goods and not “rollup.” One search
applicant performed was “for the term ‘retract! awning’,
[which] shows a total of 785 new stories using forms of the
terms ‘retractable awning’ and ‘retract[ing] the awnings.’”
Response of July 14, 2005 at p. 5. A second search
applicant performed was for “rollup,” which yielded an
indication that more that 3000 stories would be obtained.
Applicant did not submit any of such stories. A third

5 One excerpt made of record by the examining attorney includes
both “rollup” and “retractable” in the same sentence.
Specifically, the excerpt states, “[r]etractable and roll-up
awnings allow you to choose sun blocking in the summer but let
the warming sun enter in the winter.” Wilkes-Barre Times Leader
(April 17, 2004). We cannot determine from this excerpt whether
the writer is using “retractable” and “roll up” as separate
generic terms for awnings, but because the terms “retractable and
roll-up awnings” are used together, they may certainly be viewed
as referring to functions of the goods, i.e., that they retract
and that they roll up, rather than exhibiting generic use of
“rollup.”

Ser. No. 76522942
16
search for “rollup awning” returned five results, all of
which applicant maintains refer to applicant. The excerpts
all show “rollup awning” with the first letter in each word
capitalized. The results of these searches, too, are of
limited probative value because we are concerned in this
appeal with whether the term “rollup” is a generic term for
applicant's goods. If there are other terms which are also
generic terms for such goods, such terms are of no moment.
We need only determine whether the examining attorney has
established that “rollup” is one of the generic terms for
applicant's goods.
Additionally, applicant submitted with its July 12,
2005 response search results from a search by the Google
search engine which showed “about 1,140,000” results for
the term “rollup.” According to applicant, this evidence
shows that “the term ‘rollup’ is most frequently used to
describe software updates”; and that “[n]one of the top 100
search results for ROLLUP indicate[s] any generic link in
the public’s mind between the term ‘rollup’ and laterally
retractable awnings or canopy systems.” Brief at p. 4. We
are not concerned here with whether “roll-up” has any
meanings outside the category of awnings and canopies, and
therefore this listing of search results that purports to
show such other meanings is of no probative value.
Ser. No. 76522942
17
Applicant also submitted evidence in support of its
contention that ROLLUP has acquired distinctiveness. This
evidence was submitted during the phase of prosecution in
which applicant was attempting to assert a Section 2(f)
claim; with the amendment of the application to the
Supplemental Register, the question of acquired
distinctiveness is no longer before us. However, because
in determining whether a term is generic we must look to
all the evidence of record, including evidence of acquired
distinctiveness, we have considered the evidence for this
purpose. Applicant’s evidence of acquired distinctiveness
includes samples of advertising and statements of
appreciation and gratitude from applicant's customers. The
advertising and the customer statements consistently use
ROLLUP as a trademark, and not in a generic manner. This
evidence thus suggests that the consuming public has been
exposed to some degree to use of ROLLUP as a trademark. We
add too that the examining attorney has not pointed out
generic uses of the term “rollup” in such evidence. In
this respect, the present case differs from In re Central
Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998), in which the
Board found the adjective ATTIC to be generic for
“automatic sprinklers for fire protection.” There, the
record included evidence that applicant's particular
Ser. No. 76522942
18
sprinklers were intended for placement and use in an attic.
No similar evidence regarding applicant's goods appears in
applicant's evidence or web page, discussed earlier in this
decision.
As noted above, the Office bears the burden of proof
and genericness must be shown by clear evidence. In re
Merrill Lynch, supra at 1143. After reviewing all of the
evidence of record, we cannot say that the Office has met
its burden. Much of the evidence is equivocal: we cannot
determine whether “rollup,” “roll up” or “roll-up” is being
used in a merely descriptive manner or as a generic
adjective. See In re Volvo White Truck Corp., 16 USPQ2d
1417 (TTAB 1990) (refusal to register INTEGRAL SLEEPER
reversed because of “grave doubts” and because the evidence
contained “many ambiguities.”) This is not to say that, on
a different record, such as might be adduced during in an
opposition or cancellation proceeding, we might reach a
different result. However, given the limited resources
available to the Examining Attorney, on the record herein
we cannot say that ROLLUP is a generic term for the
identified goods.
Decision: The refusal to register is reversed.