Trex Company, Inc.

Trademark Trial and Appeal Board

Jan 28, 2005

No. 76506970 (T.T.A.B. Jan. 28, 2005)

Mailed:
January 28, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Trex Company, Inc.
________
Serial No. 76506970
_______
Patrick J. Coyne, B. Brett Heavner and Naresh Kilaru of
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. for
Trex Company, Inc.
Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Seeherman, Hohein and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On April 4, 2003 Trex Company, Inc. applied to
register the mark DECKSCAPES for “magazine containing
design ideas for decks” (Serial No. 76506970.) The
application was based on an asserted bona fide intention to
use the mark. Applicant subsequently amended the
application to allege first use and first use in commerce
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76506970
2
as early as April 7, 2003. The amendment to allege use was
accepted by the Examining Attorney on June 1, 2004.
The Examining Attorney issued a final refusal of
registration pursuant to Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that DECKSCAPES is
merely descriptive of applicant’s goods because it
describes the subject matter of applicant’s publication.
Applicant has appealed the refusal. Both applicant
and the Examining Attorney have filed appeal briefs.
Applicant did not request an oral hearing.
A mark is merely descriptive, and thus prohibited from
registration by Section 2(e)(1) of the Trademark Act, if it
immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with
which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987). The question of whether a
particular term is merely descriptive must be determined
not in the abstract, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
is likely to have, because of the manner in which it is
used, to the average purchaser as he encounters goods
bearing the mark in the marketplace. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); see also, In re
Ser No. 76506970
3
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978).
In support of the refusal of registration, the
Examining Attorney has submitted a dictionary definition of
“scape” as meaning “a scene; a view. Often used in
combination: seascape; mindscape.”1 The Examining Attorney
has also submitted excerpts2 from several articles taken
from the NEXIS database, as well as pages from various
websites, including the following (emphasis added):3
Decorating a deck for the holidays can
be a simple as hanging roping and
lights. Doing it for interest year-
round is a lot more involved. Some
call it “deckscaping.”
Deckscaping, or landscaping over, on
and around a deck, gives the structure
1 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
2 Some of the articles were subsequently submitted in their
entirety by applicant. We have also quoted from these portions.
3 Applicant has questioned the probative value of certain
additional materials submitted by the Examining Attorney. For
example, one article is from a Canadian newspaper, while in
another article “deckscapes” refers to a ship. Because it is not
clear that consumers in the United States have been exposed to
the article in the Canadian paper, we have not considered it in
making our determination. Similarly, we have not considered the
article in “Timber Wood Products,” which appears to be a trade
publication in the United Kingdom. Nor do we find “The New York
Times” article using “deckscapes” to refer to the look of a
ship’s deck probative of the descriptiveness of “deckscapes” for
the goods at issue herein. Applicant has also pointed out that
two of the websites are foreign. Although such websites are
clearly accessible to consumers in the United States, we agree
that they do not necessarily reflect how the term “deckscape” is
perceived by consumers in this country. Thus, although we do not
say that they do not have probative value, we have not relied on
them in reaching our decision herein.
Ser No. 76506970
4
extra ornamental appeal and makes it a
useful addition as a transition between
the house and the outdoors. It could
be something as simple as being
surrounded by woods to give a treehouse
effect or as involved as planting a
combination of container sizes and
styles with colorful mixed flowers,
foliage, shrubs, trees and perennials.
Patios are accented in this same
manner, but you often have the luxury
of creating beds to landscape around a
patio. When you are 10 feet off the
ground on a deck, the horticultural
enhancement is a little more
challenging. So as soon as you get the
deck plans decided, begin your
deckscape design.
Your greatest landscape design
challenge will be creating privacy for
decks high above the ground. In these
cases, I like to work with vines and
lattice.
…
Planters on the deck can provide visual
interest and at least implied
screening. If you want to plant
containers with shrubs and trees….
…
“Deckscaping: Gardening and Landscaping
on and Around Your Deck,” by Barbara W.
Ellis (Storey Books, 2002, $19.95), is
excellent for everyone as a landscape
design book. It is devoted exclusively
to the design and planting around a
deck in every way. If you want how-to
planting and design ideas for your
deck, patio or even your balcony, this
book is a must.
“The Washington Post,” December 7, 2002
***
Plan an exquisite garden or deckscape
with our plants, herbs and gorgeous
garden accents featuring pieces by
Virginia Metalcrafters.
Ser No. 76506970
5
(showing an address in Old Saybrook,
CT)
www.lighthousemaps.com/Saybrook/Herbery
.htm
***
Deckscapes
We photograph your deck or patio area
with your favorite planters and urns.
We design plant groupings for your
approvals as the new planters are re-
arranged on your space. Some new
planters, urns, or arbors may be
suggested in our 3-Dimensional designs.
Finally, we offer an update service to
refresh your planters throughout the
seasonal changes.
www.floweringfield.com/serv02/htm
***
Start with a big, fat list of
everything you want to do in your
garden this year. Would you like a
dazzling deckscape, some new raised
beds, a stone wall, or perhaps a water
garden?
http://garden.garden.org/regional/
report/arch/inmygarden/659
***
We are skilled in a wide range of areas
and can provide the following:
…
Sod
Shrubs
Deckscapes
Fences
Decorative Stones
(showing an address in Rahway, NJ)
www.hpmlandscape.com/skills
*
Building dreams for homeowners since
1958, Coleman—Bright Ideas For Your
Home! Is Texas’ oldest and largest
“one-stop” backyard provider of custom
in-ground pools, Garden Rooms,
portable spas, deckscapes, outdoor
furniture, pool and spa chemicals and
accessories.
Ser No. 76506970
6
(showing an address in Fort Worth, TX)
www.integritypublishing.com/ex_ftw_
pages/coleman.html
It is clear from the materials of record that
“deckscape” has become a recognized term for landscaping
involving decks, so much so that in many of the website
pages the companies/authors have believed there was no need
to further define the term, and have used it in the same
manner as generic terms such as “garden” or “landscape” or
“shrubs.” It also appears from the articles and website
materials that “deckscape” refers to the plantings both on
and around decks. See, for example, the “Washington Post”
article, which refers to “deckscaping” as “landscaping
over, on and around a deck.”
Moreover, the specimen submitted with applicant’s
amendment to allege use gives tips such as “built-in
planters filled with bright blooms add beautiful color to
stair landing or corners of a deck” p. 5; and “you might
consider putting the focus on your garden by using the same
color of Trex decking for all the elements—deck, railing,
benches and pergola. Using one material creates a uniform
look and turns the deck into a neutral backdrop to the
gorgeous plants, trees and flowers.” P. 16. Another
article, entitled “flowerpower,” discusses creating a deck
near a garden, and enjoying garden views from the deck.
Ser No. 76506970
7
When the term DECKSCAPES is used in connection with a
“magazine containing design ideas for decks,” as
applicant’s goods are identified, we find that it
immediately conveys to consumers that the magazine presents
information about designing or decorating decks. The mark
is therefore merely descriptive of the goods.
Applicant has argued that the word “deck” has multiple
meanings in the English language, including a part of a
ship or a pack of playing cards, and therefore one would
not know from the mark whether DECKSCAPES is being used,
for example, for a cruise industry magazine showing views
available from cabins on different decks, or by a gaming
industry magazine depicting various card playing tips.
This argument, however, ignores the fact that applicant’s
goods have been identified as a “magazine containing design
ideas for decks.”
Applicant also asserts that “scape” is generally used
only in connection with geographic terms (e.g., landscape,
cityscape) and therefore DECKSCAPES has an incongruous
meaning. This argument, however, is belied by the
evidence, which shows that “deckscapes” has a recognized
meaning in connection with decks and deck design. For this
reason, applicant’s reliance on third-party registrations
for marks containing the element SCAPES (e.g., FLOORSCAPES
Ser No. 76506970
8
for wholesale and retail store services in the field of
carpets and floor coverings, PATIOSCAPES for furniture and
accessories for patios) is misplaced.
Applicant further asserts that the evidence submitted
by the Examining Attorney does not establish that the term
has been so frequently used by competitors that it is
merely descriptive of applicant’s goods. Although use of a
term by competitors is evidence of the descriptiveness of a
mark, the Office is not required to show such use in order
to establish that a term is merely descriptive. It is well
established that a mark may be descriptive even if the
applicant is the first or only user of the mark. In this
case, of course, there are several uses of “deckscape” by
authors and business entities. Applicant also claims that
the references are insufficient to demonstrate the
descriptiveness of the term “when one considers that the
NEXIS computer database and the Internet cover entries
from a massive number of documents stretching back many
years, and that these documents collectively incorporate
billions of terms.” p. 13. Obviously, since the database
and Internet do incorporate billions of terms and refer to
a countless number of subjects, one would expect that,
compared to the billions of terms, the number that include
“deckscapes” would be comparatively low. On a more
Ser No. 76506970
9
practical level, the Board has repeatedly advised that it
discourages both Examining Attorneys and applicants from
submitting large numbers of articles or webpages that may
be retrieved from a search of the NEXIS database or of the
Internet. In this case, the Examining Attorney’s
submissions are adequate to establish that “deckscapes” is
used in a descriptive manner by various entities.
Finally, with respect to applicant’s argument that
even if DECKSCAPES is registered to applicant, competitors
still have “a variety of terms to refer to the qualities or
characteristics of such a magazine,” applicant is reminded
that Section 2(e)(1) prohibits the registration of a mark
that merely describes the goods. See Roselux Chemical Co.,
Inc. v. Parsons Ammonia Col, Inc., 299 F.2d 855, 132 USPQ
627 (CCPA 1962). Because we have found applicant’s mark to
be merely descriptive of its identified magazine, the fact
that applicant is able to suggest marks for third parties
to use on such a magazine is irrelevant.
Decision: The refusal of registration is affirmed.