MFM Building Products Corporation

Trademark Trial and Appeal Board

Jul 19, 2013

No. 85218919 (T.T.A.B. Jul. 19, 2013)

Mailed: July 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MFM Building Products Corporation
________

Serial No. 85218919
_______

Jason H. Foster of Kremblas & Foster for MFM Building
Products Corporation.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Bergsman, Wellington, and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

MFM Building Products Corporation filed an application
to register the standard character mark WINDOW WRAP for
“self-adhesive, self-sealing, flexible tape for flashing
around windows and doors, and for sealing building joints;
not for exterior cladding” in International Class 17.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85218919, filed January 17, 2011, based
on allegation of use anywhere and in commerce on March 31, 1994.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 85218919
2
§ 1052(e)(1), on the ground that applicant’s mark is merely
descriptive of the identified goods.
In response to the descriptiveness refusal, applicant
argued in the alternative that its mark is entitled to
registration under Section 2(f) because it has acquired
distinctiveness. Applicant submitted evidence in support
of its alternative claim. The examining attorney rejected
this alternative claim arguing that the mark is so “highly
descriptive” of the goods and the evidence submitted by
applicant was insufficient for purposes making a prima
facie showing of acquired distinctiveness.
When the refusal of registration was made final,
applicant appealed and filed a request for reconsideration.
The examining attorney denied the request for
reconsideration. Applicant and the examining attorney have
filed appeal briefs, including a reply brief from
applicant.
We address the descriptiveness ground for refusal
first.
A term is deemed to be merely descriptive of goods
within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of a quality, characteristic,
feature, function, purpose or use of the goods. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
Serial No. 85218919
3
(TTAB 2007); and In re Abcor Development, 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods in order to be considered merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property
of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and 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 goods for which
registration is sought, the context in which it is being
used on or in connection with the goods, and the possible
significance that the term would have to the average
purchaser of the goods because of the manner of its use.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
It is settled that “[t]he 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).
The examining attorney argues the mark “serves to
describe in a highly descriptive manner the very purpose
and character of the goods, to wit, to wrap a window in
Serial No. 85218919
4
such a manner that the window is sealed to prevent among
other things water leaks, air filtration and reduction of
noise.” Brief, p. 3. The examining attorney relies on the
submitted dictionary definition of “wrap,” meaning “to fold
or wind (something) round a person or thing.”2 The
examining attorney also relies on the following printouts
from various internet websites:
From “Yahoo Answers” (www.yahoo.com/...)3

2 Collins English Dictionary (www.collinslanguage.com), attached
to Office action dated August 24, 2011.
3 Attached to Office action dated August 24, 2011.

Serial No. 85218919
5

From “Vinyl Replacement Windows” (www.vinyl-replacement-
windows.com/...)4

From “Home Depot” (www.homedepot.com/...)5

4 Id., printouts also attached to Office action dated March 20,
2012.
5 Attached to Office action dated March 20, 2012.
Serial No. 85218919
6

From “JLC The Journal of Light Construction”
(www.forums.jlconline.com/...)

...

Applicant argues that evidence submitted by the
examining attorney is insufficient for purposes of setting
forth a prima facie showing that the mark is merely
descriptive. Applicant contends that “[n]o evidence shows
that any party other than Applicant uses the mark in
commerce in association with Applicant’s tape goods or any
related goods. Furthermore, no evidence shows that
consumers of Applicant’s goods would recognize Applicant’s
mark or the term ‘wrap’ as a descriptive term for
Serial No. 85218919
7
Applicant’s tape goods.” Brief, p. 4. As to the evidence
submitted by the examining attorney, applicant asserts that
the “goods disclosed in the proffered evidence are not the
goods for which applicant seeks registration.” Reply
brief, p. 1. In particular, applicant takes issue with the
“Yahoo Answers” website printout (shown above) because the
materials are described as “exterior cladding made of
vinyl-coated aluminum that is nailed to the building.” Id.
at p. 2. As to the “Vinyl Replacement Windows” website
evidence, applicant states that “it seems apparent that a
‘self-adhesive’ product is not being discussed, because
adhesive is the obvious method of attachment for self-
adhesive tape. The author is clearly discussing aluminum
or vinyl cladding that is attached using fasteners.” Id.
We note that certain evidence submitted by applicant
actually supports a finding that the term “wrap” is merely
descriptive in connection with house construction products
used for protection against water and air penetration. In
particular, we point to the “Dupont Weatherization Systems
Frequently Asked Questions” in which Dupont touts its Tyvek
HomeWrap-branded products and describes said products (or
those of its competitors) generically as “wraps” or
“housewraps” or “film wraps.” Although Dupont’s products
are different from those described in the application,
Serial No. 85218919
8
notably applicant’s goods are specifically described as
applicable to windows, doors and building joints, the goods
are very similar in nature and share the same purpose.
That is, the Dupont products and applicant’s identified
goods both provide an insulating layer against water and
air penetration; moreover, both are intended to be
installed at the time construction of the house or
installation of windows. Applicant also submitted, with
its request for reconsideration, a copy of a registration
for the mark PROTECTO WRAP (in typed lettering) with a
disclaimer of the term WRAP for, inter alia, “tapes for
protecting pipes and pipe joints,”6 as well as several
copies of advertisement materials for PROTECTO WRAP branded
goods, including those that applicant considers
“competitive window flashing products.” Although the goods
in the advertisements are not the same as those described
in the registration, it appears that the Protecto Wrap
Company is the manufacturer for both. As to the
registration, applicant acknowledges the disclaimer of

6 Registration No. 981491 issued on April 2, 1974; renewed. The
goods identified in the registration include: “hot applied and
cold applied tapes for protecting pipes and pipe joints, fittings
and couplings; dust joining tape; mastics applied to underground
steel pipe, tanks and similar equipment; and cold applied
membranes for damp proofing and water proofing concrete
structures, bridge decking, tunnels, pools, split slab
application above and below grade” in International Classes 17
and 19.
Serial No. 85218919
9
WRAP, but argues this is “due to the term being descriptive
for tape used around pipes, not for applicant’s goods.”
Id. at p. 7. Applicant is correct in this assertion;
however, we find the disclaimer in the registration has
some probative value for purposes of showing that the term
“wrap” is descriptive of applicant’s goods because both the
goods in the registration and subject application involve
tape being used for insulation purposes, albeit one on
pipes and the other on windows. As to the advertisements,
applicant notes that the term “wrap” is used in the mark
but not in the description of the goods and this “strongly
suggest[s] that particular term is not descriptive.” Id.
at p. 2. We disagree with this conclusion and point out
that the refusal at issue is based on the mark being held
to be merely descriptive, not generic. In other words, the
examining attorney need not show the mark will be perceived
by consumers as a generic reference for the goods or used
in the description as the apt name for such goods. Rather,
the mark may be found merely descriptive if it will be
understood immediately by prospective consumers as merely
describing a significant attribute or feature of the goods.
Based upon our review of the entire record and the
arguments set forth by both applicant and the examining
attorney, we find that a prima facie showing has been made
Serial No. 85218919
10
that the mark WINDOW WRAP is merely descriptive. The
evidence shows that prospective consumers, i.e., those
involved in home construction and installation of windows,
will understand the mark as describing materials intended
for purposes of window insulation. While the amount of
evidence is not overwhelming, it suffices for purposes of
showing that the term “wrap” will be understood in the
field of home construction as offering protection to the
home and, in particular, windows, from air and water
penetration. Although applicant may be correct in its
assertion that the evidence showing use of the terms “wrap”
or “window wrap” by others involves goods that are not the
same as applicant’s, these other goods serve the same
insulation purpose and the same consumers will understand
the import of the term “wrap” in connection with those
goods as well as applicant’s identified goods.
Having found that applicant's mark is merely
descriptive of the identified goods, we now address
applicant’s alternative claim that it has acquired
distinctiveness. Applicant has the burden to establish a
prima facie case of acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988). The greater the
degree of descriptiveness, the greater the evidentiary
Serial No. 85218919
11
burden on the user to establish acquired distinctiveness.
See Yamaha Int'l Corp., supra. The sufficiency of the
evidence offered to prove secondary meaning should be
evaluated in light of the nature of the designation.
Highly descriptive terms, of which the examining attorney
contends applicant’s mark is one, are less likely to be
perceived as trademarks and more likely to be useful to
competitors than are less descriptive terms. More
substantial evidence of secondary meaning thus will
ordinarily be required to establish their distinctiveness.
We begin our analysis of whether applicant’s showing
of acquired distinctiveness is sufficient by finding that
the record does not support the examining attorney’s
conclusion that the mark is highly descriptive. Rather, as
we already pointed out, the evidence is sufficient for
purposes of showing the mark is merely descriptive but it
is not overwhelming in this regard. We do not have before
us ample evidence of third-party descriptive use of the
term WRAP in connection with the identified goods in order
for us to find to place a higher evidentiary burden on
applicant in its efforts to show that WINDOW WRAP has
acquired distinctiveness.
In support of the claim that its mark has acquired
distinctiveness, applicant submitted the affidavit of its
Serial No. 85218919
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President, Mr. Robert S. Simpson, who averred that:
applicant first used its mark WINDOW WRAP in 1994 on the
identified goods and has used it since; since 1994,
applicant has sold more than $52 million in goods bearing
the same mark; annual sales “for the past decade have been
multiple millions of dollars”; the “total sales in the
first four years were more than $1.5 million”; and
applicant has promoted its WINDOW WRAP goods “to the
construction industry and architects” with marketing
expenses of $800,000 for the past seven years. Based on
its sales figures, applicant estimates that it sells
between “11,000 and 25,000 cartons” of the [goods]
annually. Mr. Simpson also states that he is “aware of
only one instance of infringement or customer confusion
related to the [WINDOW WRAP mark] in the past 18 years, and
this occurred four years ago.” With the affidavit,
applicant submitted sample copies of advertisements,
promotional literature, printouts from its website, a DVD,
store display cards, a graphic used on t-shirts, packaging
and other promotional items.
We find the aforementioned evidence suffices for
purposes of applicant making a prima facie showing that its
mark has acquired distinctiveness under Section 2(f).
Serial No. 85218919
13
Decision: The refusal under Section 2(e)(1) of the
Trademark Act on the ground that the proposed mark is merely
descriptive is affirmed. However, we find that applicant
has made a prima facie showing of acquired distinctiveness
under Section 2(f) and the examining attorney’s refusal on
this ground is reversed.
The application will be forwarded for publication for
opposition.