Tenon Limited

Trademark Trial and Appeal Board

Nov 23, 2015

No. 86218698 (T.T.A.B. Nov. 23, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Tenon Limited
_____

Serial No. 86218698
_____

William J. Seiter of Seiter Legal Studio,
for Tenon Limited
Michael Eisnach, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Acting Managing Attorney.
_____

Before Ritchie, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Tenon Limited (“Applicant”) seeks registration on the Principal Register of the
mark SOLID SELECT (in standard characters) for
Processed timber products and lumber, namely, building,
manufactured, better, shop, cutting grade, sawn, worked,
semi-worked, rough-sawn, gauged, treated, and dried
timber; wood veneer, plywood and laminated wood;
building materials incorporating timber, namely, ceiling
panels, floor panels, shaped timber, wood paneling, wood
trim, wallboards, fingerjoint studs, baseboard, skirting
Serial No. 86218698
- 2 -

board, wood siding, patterned wood siding, wood stiles,
wood moldings, in International Class 19.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that Applicant’s mark, when applied to Applicant’s goods, is merely
descriptive thereof.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
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 Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012). See also In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in
relation to the goods or services for which registration is sought and the context in
which the term is used, not in the abstract or on the basis of guesswork. In re Abcor,
200 USPQ at 218; In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). “A
descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or]

1 Application Serial No. 86218698 was filed on March 12, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 During prosecution, the Examining Attorney issued a requirement regarding Applicant’s
entity type; that requirement was withdrawn before appeal.
Serial No. 86218698
- 3 -

services for which registration is sought.’” In re The Chamber of Commerce of the
U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005)). The issue is whether someone who knows
what the goods or services are will understand the mark to directly convey
information about them. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1474 (TTAB 2014). See also In re theDot Communications Network
LLC, 101 USPQ2d 1062 (TTAB 2011); In re Thomas Nelson Inc., 97 USPQ2d 1712,
1715 (TTAB 2011).
While a combination of merely descriptive terms may be registrable if the
composite creates a unitary mark with a separate, nondescriptive meaning, the
mere combination of descriptive words does not necessarily create a nondescriptive
word or phrase. Cf. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968). If each component retains its descriptive significance in relation to the goods
or services, the combination results in a composite that is itself descriptive. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004).
We consider the meanings of the terms “solid” and “select” with regard to the
evidence of record, as they are understood in the relevant industry, specifically
regarding Applicant’s processed timber products, lumber, and building materials
incorporating timber. The submitted dictionary evidence shows that the meaning of
the term “solid” is “firm or hard,” “not hollow,” and “made entirely from the
specified material.”3 It is this latter definition that has been established in the

3 At http://www.merriam-webster.com, attached to June 23, 2014 Office Action.
Serial No. 86218698
- 4 -

lumber trade. For example, an article by Heidelberg Wood Flooring discusses the
difference between solid and engineered wood flooring, using “solid” to describe
plank floors that are real wood throughout and not simply on the uppermost, veneer
layer.4 Columbia Forest Products advertises “DuraTop Plywood,” a veneer product
that is “engineered to compete with solid lumber constructions.”5 Lowe’s Lumber
Buying Guide describes types of wood products, including “boards” that can be
“edge-glued (two or more boards glued together to provide a wider size) or solid.”6
With regard to the term “select,” the Lowe’s website provides a grading chart
that explains the grading system used by the National Hardwood Lumber
Association. Hardwoods (from deciduous trees) are divided into four grades; one of
them being the grade of “select.” This grade designates boards that have a
minimum size of 4”x6” and at least 83% usable material on one face.7 Softwoods
(from coniferous trees) are divided into five categories; two of these are “C Select”
and “D Select.”8 The Dictionary of Construction defines “select” as “a high-quality
piece of lumber graded for appearance.”9
Accordingly, both “solid” and “select” have specific meanings in the trade.
Applicant does not dispute this; in its brief Applicant acknowledges that “the term
SOLID in Applicant’s mark SOLID SELECT by itself could arguably be regarded as

4 At http;//www.heidelbergflooring.com, attached to January 6, 2015 Office Action.
5 Id., at cfpwood.com.
6 Id., at http://www.lowes.com.
7 At http://www.lowes.com, attached to June 23, 2014 Office Action.
8 Id.
9 Id., at http://www.dictionaryofconstruction.com.
Serial No. 86218698
- 5 -

descriptive of a characteristic of Applicant’s goods, and the term SELECT in the
mark SOLID SELECT could by itself be regarded arguably as a descriptive term.”10
However, Applicant argues that “even if one were to concede the above two points
about the word SOLID and about the word SELECT, it is a non sequitur to
conclude, as the Examining Attorney puts it in his second office action, that SOLID
SELECT ‘is a phrase merely descriptive of goods of “real wood” that is [sic] of a
certain quality.’”11 Applicant makes the argument that because there is no
dictionary definition for “solid select” per se, the mark is not merely descriptive as a
whole. However, the fact that a descriptive word or term is not found in the
dictionary is not controlling on the question of registrability. Many descriptive
terms result from a combination of two words that are defined separately in a
dictionary, but are not listed as a combined term. See, e.g., In re Planalytics, Inc., 70
USPQ2d 1453, 1456 (TTAB 2004) (GASBUYER is merely descriptive of providing
on-line risk management services in the field of pricing and purchasing decisions for
natural gas); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977)
(BREADSPRED for jellies and jams is merely descriptive). The test is whether the
merely descriptive components retain their merely descriptive significance in
relation to the goods when the mark is considered as a whole; if they do, the
resulting combination is also merely descriptive. See, e.g., In re Oppedahl & Larson,
71 USPQ2d at 1371; In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB
2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds,

10 4 TTABVUE 10.
11 4 TTABVUE 8.
Serial No. 86218698
- 6 -

mattresses, box springs, and pillows where the evidence showed that the term
“breathable” retained its ordinary dictionary meaning when combined with the term
“mattress” and the resulting combination was used in the relevant industry in a
descriptive sense); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002),
(SMARTTOWER held merely descriptive of commercial and industrial cooling
towers); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988)
(holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales
services, because such wording “is nothing more than a combination of the two
common descriptive terms most applicable to applicant’s services which in
combination achieve no different status but remain a common descriptive compound
expression.”).
Applicant also argues that it was the first to coin the term SOLID SELECT and
that competitors have no need to use it to describe their solid wood products that
are graded at the select level. Applicant may in fact have coined and been the first
to use the term to designate processed timber, building materials incorporating
timber, or lumber. However, that Applicant may have been the first to use such
combination in a trademark sense is not controlling on the question of
descriptiveness. In re Ebs Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981)
(“The fact that these terms used together as ‘POCKET PROFILE’ have not been
used by others in the same combination and the fact that the same combination of
words is not found in any dictionary is not determinative of the question of
descriptiveness….”). See also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108
Serial No. 86218698
- 7 -

USPQ2d 1341, 1362 (TTAB 2013) (“Even if applicant was the first and/or sole user
of a generic term or phrase, as it claims, that does not entitle applicant to register
such a term or phrase as a mark.”) (internal citations omitted); In re National
Basketball Ass’n, 180 USPQ 480 (TTAB 1973) (“DRIBBLE AND SHOOT”
descriptive for promoting basketball contests).
Applicant contends that there is no competitive need to use the phrase “solid
select” when describing timber, lumber, or products made from such materials.
However, it is not necessary to show descriptive use of a term by competitors in
order to support a finding of mere descriptiveness. Nonetheless, the Examining
Attorney has shown use of the term by the following third parties.
Joy in Wood displays in its online showroom an expensive “fine and very rare
executive office desk” that “is made of solid select Central American mahogany with
curly maple drawer fronts and fitted with solid period brasses.”12
Dina Lumber & Building Materials advertises a “Lexington Vanity” having all
wood construction, including “solid, select ¾ inch hardware face frames, doors and
drawers,” and “solid wood drawer boxes.”13
Mason’s Mill & Lumber Co. offers a “PM6 Cherry Panel Mould” solid wood trim
described as “3/4” X 2” SOLID SELECT AND BETTER CHERRY PANEL
MOULDING.”14

12 At http://www.joyinwoodcom, attached to January 6, 2015 Office Action.
13 Id., at http://www.dinalumber.com.
14 Id., at http://masonsmillandlumber.com.
Serial No. 86218698
- 8 -

Cabinet Connection offers “personalized cabinetry,” including their “Supreme
Line.” The architectural specifications of this line include “Front Frames” with
“Solid SELECT hardwood fronts, with dowel joints, rabbetted and glued to top,
bottom and ends.”15
These websites corroborate the dictionary definitions in showing that Applicant’s
prospective consumers, when encountering Applicant’s proposed mark SOLID
SELECT in connection with its timber and lumber products, will immediately
perceive that the term describes a feature or characteristic of the goods, namely,
that they are made of solid, real wood that is at the select grade. In addition,
Applicant’s advertising brochure promotes its LIFESPAN SOLID SELECT wood as
a “premium solid exterior trim product,” that is, “real wood” that has been “sourced
from New Zealand’s renowned radiata pine forests.”16 Further, use of the term
“solid” to mean real wood can be found in the brochure’s “Top 10 FAQs” page; the
answer to question No. 1 (“What is LIFESPAN SOLID SELECT?”) is that it is “a
range of premium high grade, solid – no fingerjoints, radiata pine products that are
preservative treated with an organic, biocide system, and are double primed with an
alkyd primer so they are ready for top coating.”17 (Emphasis added). Regarding use
of “select,” the grade of the wood is described as “C & Better Select grade kiln dried,
tree farmed, radiata pine.”18

15 Id., at http://www.thecabinetconnection.biz/specs.
16 Id., at http://www.lifespansolidselect.com.
17 Attached to Final Office Action dated June 29, 2015.
18 At http://www.lifespansolidselect.com, attached to January 6, 2015 Office Action.
Serial No. 86218698
- 9 -

The dictionary definitions, the third-party use, and Applicant’s own use of the
terms “solid,” “select” and “solid select” demonstrate that the proposed mark is
merely descriptive of processed timber, lumber and building materials made from
timber.
Applicant, in urging reversal of the refusal, maintains that its mark is
suggestive and warrants registration. Applicant contends that because the
combination of the terms does not convey an unambiguous meaning, prospective
purchasers will have to engage in a multi-stage reasoning process to understand
how the mark relates to the goods. Applicant proposes that the term “select” could
be understood as “selection,” and that therefore consumers may interpret the mark
as suggesting “a sound purchasing decision.” Given the context in which any
purchase of Applicant’s goods is likely to occur, and the importance to a prospective
consumer in knowing the actual grade of wood for a given project, Applicant’s
suggested construction is implausible. Applicant further argues that the
combination creates an incongruous expression due to the “matched, balance closed
syllable structures” of the two words, as well as the “rhythmic, alliterative quality”
of the phrase. Applicant’s reliance on the case of In re Colonial Stores Inc., 157
USPQ 382 for this proposition is inapposite. In that case, the United States Court of
Customs and Patent Appeals ruled that the trademark SUGAR & SPICE for bakery
products was not merely descriptive because even though it consisted of the terms
“sugar” and “spice,” which were ingredients of bakery goods, the mark also brought
to mind the well-known nursery rhyme, an incongruous result. Here, the
Serial No. 86218698
- 10 -

combination of terms in Applicant’s mark does not create a unitary mark with an
incongruous meaning. There is no evidence that consumers would focus on the
cadence or the alliteration in the mark, or that such would alter the commercial
impression created by the mark. The syllabic structure of the mark is
unremarkable. Moreover, our primary reviewing court, the Court of Appeals for the
Federal Circuit, and the Board have found in a number of cases that alliterative or
repeated wording is not sufficient to negate the descriptive meaning of a mark as a
whole. See, e.g., DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F3d
1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (no evidence that alliteration formed by
“SNAP SIMPLY SAFER” creates a commercial impression that is more than merely
descriptive); In re Litehouse Inc., 82 USPQ2d 1471, 1474 (TTAB 2007)
(CAESAR!CAESAR! for salad dressing not unitary; mark as a whole is merely
descriptive); In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992) (finding
DJDJ to be merely descriptive of disc jockey services); In re Lean Line, Inc., 229
USPQ 781, 782 (TTAB 1986) (LEAN LINE for low calorie foods not unitary; “there
is nothing in the record to suggest that the mere fact that both words which form
the mark begin with the letter ‘L’ would cause purchasers to miss the merely
descriptive significance of the term ‘LEAN’ or consider the entire mark to be a
unitary expression.”).
Nothing in the term “SOLID SELECT” is incongruous, ambiguous or suggestive.
We have no doubt that, upon seeing the proposed mark as a whole in connection
with the goods identified in the application, Applicant’s customers would
Serial No. 86218698
- 11 -

immediately, and without further conjecture, be apprised of a central characteristic
of the goods, namely, that they are select grade lumber and timber products that
are real, solid wood building materials.
After careful consideration of the record evidence and arguments presented, we
conclude that Applicant’s proposed mark is merely descriptive of a feature or
characteristic of Applicant’s identified goods.
Decision: The refusal to register Applicant’s mark SOLID SELECT under
Trademark Act Section 2(e)(1) is affirmed.