Quebec Inc.

Trademark Trial and Appeal Board

Sep 16, 2008

No. 78927844 (T.T.A.B. Sep. 16, 2008)

Mailed: 9/16/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Quebec Inc.
________

Serial No. 78927844
_______

Robert G. Bales of Flansberry, Menard & Associates for
Quebec Inc.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Quebec Inc. filed an application to register the term
ACOUSTIK for “rubber flooring, namely, subflooring and
flooring underlayments”1 in International Class 19.
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s proposed mark,

1 Application Serial No. 78927844, filed July 12, 2006, alleging
first use anywhere and first use in commerce on August 30, 1999.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78927844
2
when used in connection with applicant’s goods, is merely
descriptive thereof. The examining attorney also refused
registration based on applicant’s failure to comply with
the requirement to submit acceptable specimens showing use
of the mark.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.

Mere Descriptiveness
Before turning to the respective arguments, we need to
clarify one point. Throughout the prosecution of the
application, the examining attorney refused registration on
the Principal Register under Section 2(e)(1) on the ground
of mere descriptiveness. The examining attorney also
indicated in every Office action that the proposed mark
appeared to be generic as applied to the goods and,
therefore, incapable of functioning as a source-identifier
for applicant’s goods. Consequently, the examining
attorney stated that she could not recommend an amendment
to proceed under Section 2(f), or an amendment to the
Supplemental Register. Applicant, in its responses,
focused on the mere descriptiveness refusal, but also
addressed the issue of genericness. After issuance of the
final refusal grounded on mere descriptiveness, applicant,
Ser No. 78927844
3
in requesting reconsideration, argued that its mark was
neither merely descriptive nor generic. Applicant
concluded its remarks as follows: “For the reasons set
forth hereinabove, Applicant’s mark is at least entitled to
registration on the Supplemental Register.” No formal
amendment to the Supplement Register, however, accompanied
applicant’s request for reconsideration. In denying
applicant’s request the examining attorney stated: “The
applicant then stated the mark is at least entitled to
registration on the Supplemental Register, but did not
actually ask that the application be amended to the
Supplemental Register. As such, that statement will not be
addressed.” The examining attorney began her appeal brief
by asserting that the final refusal was made on mere
descriptiveness and that the term ACOUSTIK “may be generic
for the overall genus of goods.” The examining attorney
characterized the issue on appeal as being whether the mark
“is descriptive and possibly generic.” The examining
attorney also stated the following, citing TMEP §1209.02
(5th ed. 2007):
An examining attorney should not issue
a refusal in an application for the
Principal Register on the ground that a
mark is a generic name for the goods or
services unless the applicant asserts
that the mark has acquired
distinctiveness under 15 U.S.C.
Ser No. 78927844
4
§1052(f). Even if it appears that the
mark is generic, the proper basis for
refusal is §2(e)(1). If there is
strong evidence that the proposed mark
is generic, a statement that the
subject matter appears to be a generic
name for the goods or services can be
included as part of the §2(e)(1)
refusal.

We recognize that the examining attorney and applicant
have made arguments relative to the genericness of the term
sought to be registered. As often stated, genericness is
“the ultimate in descriptiveness,” and if so found, is the
death knell of a term functioning as a trademark. So as to
be clear, while applicant late in the prosecution made
reference to the Supplemental Register, applicant never
filed a formal amendment to seek registration on the
Supplemental Register; and the examining attorney, in her
brief, stated that “the proposed mark has not been refused
as generic as yet.” Given the instruction set forth above
in the TMEP, and since applicant is seeking registration on
the Principal Register without resort to Section 2(f), we
will confine this appeal to the issue of mere
descriptiveness under Section 2(e)(1).
The examining attorney maintains that applicant’s
proposed mark ACOUSTIK is the phonetic equivalent of
“acoustic,” a term used by applicant and others in the
flooring industry to describe a key feature of a type of
Ser No. 78927844
5
flooring or flooring underlayment that deadens or absorbs
sound. In support of the refusal the examining attorney
introduced a dictionary definition of “acoustic,” printouts
of the Internet search results using the search engine of
GOOGLE, excerpts of third-party websites, and excerpts of
articles retrieved from the NEXIS database.
Applicant contends that its mark is not merely
descriptive because it “does not communicate a clear
understanding of [applicant’s] goods.” Rather, according
to applicant, an inferential leap is required to associate
the mark with applicant’s goods. Applicant also argues
that the term “acoustic” has a variety of meanings and
could refer to a sound barrier, a guitar or speakers and
amplifiers. According to applicant, its mark is, at worst,
only suggestive of flooring products. In support of its
arguments applicant submitted dictionary definitions of
“acoustic.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
Ser No. 78927844
6
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. 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 or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. Contrary to the gist of a portion
of applicant’s argument, that a term may have other
meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Also
contrary to one of applicant’s arguments, 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 “average” or “ordinary”
Ser No. 78927844
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consumer is the class or classes of actual or prospective
customers of applicant’s goods or services. In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987).
The term “acoustic” is defined, in pertinent part, as
“designed to control, absorb, or carry sound.”
www.encarta.msn.com; “deadening or absorbing sound.”
www.m-w.com.
The record includes applicant’s advertisements
(submitted as substitute specimens) for the flooring
products identified in its application. Applicant’s own
use of the term “acoustic,” as shown in these materials,
belies its argument that the slightly misspelled phonetic
equivalent term ACOUSTIK is just suggestive.
ACOUSTIK acoustic subflooring
Acoustik is ideal under wood floors.
It provides better resistance to impact
noise and enhances the floor’s acoustic
performance.

Canada Mortgage and Housing Corporation
requires acoustic insulation that meets
FIIC 55.

ACOUSTIK acoustic subflooring REDUCES
NOISE.

The examining attorney also introduced excerpts of two
search summaries generated by GOOGLE’s search engine
showing over 36,500 “hits” for “acoustic flooring,” and 800
Ser No. 78927844
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“hits” for “acoustic underlayment flooring.” These
summaries are of little probative value as they provide
insufficient context to determine how the term is actually
used in the cited web pages. Paris Glove of Canada Ltd. v.
SBC/SportoCorp., 84 USPQ2d 1856 (TTAB 2007). However, the
examining attorney further submitted excerpts of several
“representative” web pages cited in the summaries. This
evidence shows that many manufacturers use the terms
“acoustic” in connection with their flooring products.
International manufacturer of
commercial floorcoverings – safety
flooring, sports flooring, acoustic
flooring...
(www.polyflor.com)

Sound proof floors and ceilings are
very specialized. Professional sound
proofing contractors can make sure your
acoustic flooring needs are met.
Contact Acousti today about our
acoustic floor solutions.
(www.acousti.com)

...many facility managers install
specialty floorcoverings that add value
and unique features to make the space
desirable. This includes cushioned
floorcoverings for workers who must
spend hours standing in one position or
area. Or, acoustic flooring that makes
the workplace more effective by
controlling overall sound transmissions
and absorption.
(www.floordaily.net)

QuietWalk is an acoustic flooring
underlay constructed of recycled
Ser No. 78927844
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synthetic fibers with a polyethylene
film vapor barrier.
(www.prweb.com)

Sound Proof Floors
We are excited to introduce our
acoustic subflooring. This website
will be updated to show you the many
ways acoustic subflooring can install
“peace and quiet.”
(www.soundprooffloors.com)

There are many products and approaches
on the market so we continually conduct
exhaustive research to determine the
optimal acoustic underlayment for
different type floors.
(www.soundisolationcompany.com)

Impact-Son acoustic underlayment for
laminate and engineered hardwood floors
is definitely a product made for
today’s requirements. Its natural
rubber layer reduces sound transmission
and enhances underfoot comfort.
(www.quickstyle.com)

Acoustic Underlayments
With an acoustic underlayment adhered
to the wood or laminate board, unwanted
noise is reduced and so rooms become
more comfortable to live in.
(www.interfloor.com)

The NEXIS excerpts include the following:
Schools Give Vinyl Top Marks for
Acoustic Performance
With vinyl you get to keep all the
other features of the product, the
acoustic performance being a valuable
add-on. We, like others, offer a range
of ready made heterogeneous acoustic
floorings...which all give an acoustic
performance impact sound reduction of
19dB...Most vinyl manufacturers also
Ser No. 78927844
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tend to offer an acoustic underlayment
product...
(Contract Flooring Journal, April 1,
2007)

Stalheim’s “SoundGuard” Includes
Acoustic Cushion
The product features an attached
acoustic underlayment designed to
dampen noise.
(National Floor Trends, October 1,
2006)

Based on the record before us, we conclude that
applicant’s proposed mark ACOUSTIK, when applied to
applicant’s goods, is merely descriptive thereof under
Section 2(e)(1). The term ACOUSTIK is the slightly
misspelled phonetic equivalent of the commonly understood
and recognized term “acoustic.” It is well settled that a
slight misspelling of a word will not turn a descriptive or
generic word into a non-descriptive mark. See, e.g., In re
Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987). See also
Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42
USPQ2d 1711 (Fed. Cir. 1997). The mark immediately
describes, without speculation or conjecture, a significant
feature or characteristic of applicant’s “rubber flooring,
namely, subflooring and flooring underlayments,” that is,
the flooring products are acoustic in nature, serving to
deaden or absorb sound.
Ser No. 78927844
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In reaching our decision, we share the examining
attorney’s puzzlement over applicant’s argument that the
Internet evidence is not probative because the third-party
uses of “acoustic” predate applicant’s first use of
ACOUSTIK. We also do not understand applicant’s argument
that the mark constitutes a double entendre. Although we
acknowledge that any doubts must be resolved in applicant’s
favor on the issue of mere descriptiveness, as applicant
urges, we have no doubt about the result herein.
The refusal to register on the ground of mere
descriptiveness is affirmed.

Acceptability of Specimens
The examining attorney contends that applicant’s
specimens are not acceptable. Applicant’s original
specimen was identified as “a product sheet with
specifications of the product.” Applicant did not identify
the specific nature of the substitute specimen, but clearly
the specimen comprises advertising and informational
material for applicant’s flooring.
During prosecution of the application, applicant did
not offer a single word in response to the examining
attorney’s requirement for acceptable specimens. After the
requirement was made final, applicant simply submitted a
Ser No. 78927844
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substitute specimen with its request for reconsideration.
Then, in its appeal brief, applicant failed to make even a
single reference to this requirement or to argue against
the refusal.
Given applicant’s complete silence regarding this
requirement, applicant effectively has waived its right to
object to the requirement. Under 15 U.S.C. §1062(b) and
Trademark Rule 2.65(a), an applicant must respond
completely to each issue raised in the examining attorney’s
Office action to avoid abandonment. A response is
incomplete if it does not address one or more of the
requirements or refusals in the Office action. TMEP
§718.03 (5th ed. 2007). As indicated above, after the
examining attorney refused to accept the substitute
specimen, applicant made no response thereto in its brief.
Moreover, even when the examining attorney maintained the
requirement in her brief, applicant did not avail itself of
the opportunity to file a reply brief addressing the
specimen issue.
In any event, the specimens clearly are not
acceptable. Advertising material is generally not
acceptable as a specimen for goods. Any material whose
function is merely to tell the prospective purchaser about
the goods, or to promote the sale of the goods, is
Ser No. 78927844
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unacceptable to support trademark use. TMEP §904.04(b)(5th
ed. 2007). Similarly, informational sheets or inserts are
generally not acceptable to show trademark use. Thus, the
specification sheet (original specimen) and the advertising
and informational material (substitute specimen) are not
acceptable as specimens of use on goods. In re MediaShare
Corp., 43 USPQ2d 1304 (TTAB 1997); In re Drilco Industrial
Inc., 15 USPQ2d 1671 (TTAB 1990); and In re Bright of
America, Inc., 205 USPQ 63 (TTAB 1979).
Accordingly, the requirement to submit acceptable
specimens showing use of the mark on applicant’s goods is
affirmed.
Conclusion
The refusal on the ground of mere descriptiveness is
affirmed.
The requirement to submit acceptable specimens is
affirmed.
Accordingly, registration to applicant is refused.