Mailed:
February 9, 2012
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Veneerstone, L.P.
________
Serial No. 77600178
_______
Megan M. Honey of Jackson Walker LLP for Veneerstone, L.P.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______
Before Bucher, Kuhlke and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Veneerstone, L.P. seeks registration on the
Supplemental Register of the term VENEERSTONE (in
standard character format) for “decorative manufactured stone”
in International Class 19.1
The Trademark Examining Attorney finally refused
registration on the ground that this term, when used in
1 Application Serial No. 77600178 was originally filed on
October 24, 2008, seeking registration on the Principal Register
based upon applicant’s claim of use anywhere and use in commerce
since at least as early as December 8, 2006. Following an
initial refusal of registration on the ground of mere
descriptiveness, Trademark Act § 2(e)(1), applicant amended the
application, on February 21, 2010, to one seeking registration on
the Supplemental Register, at which point registration was
refused on the basis that the designation is incapable under
§ 23(c).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77600178
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relation to the identified goods, is generic, and therefore
not capable of distinguishing the applicant’s goods under
Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney have fully briefed the issues
on appeal.
We affirm the refusal to register.
Preliminary matter:
We note that applicant, in its brief, refers to four
third-party registrations. However copies of these
registrations were not made of record prior to appeal. It
is well-settled that we do not take judicial notice of
third-party registrations. In re Ruffin Gaming LLC,
66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina
Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); and 37 C.F.R.
§ 2.122(a). As applicant was advised in the Final Office
action, in order to make third-party registrations part of
the record, an applicant must submit copies of the actual
registrations or printouts of the registrations from the
United States Patent and Trademark Office’s database.
Ruffin Gaming LLC, 66 USPQ2d at 1925 n.3; Carolina Apparel,
48 USPQ2d at 1543 n.2. Accordingly, we have given these
third-party registrations no consideration.
Serial No. 77600178
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Applicable Law
When a proposed mark is refused registration as
incapable because it is “generic,”2 the Trademark Examining
Attorney has the burden of proving genericness by “clear
evidence.” In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987);
see also In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001); In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987); and In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB
2010). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); and In re
Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
2 We should clarify for applicant that to the extent the
Trademark Examining Attorney uses the designation “apt
descriptive name,” this is simply another way of talking about a
“generic” designation, and genericness is probably the most
common reason that a term is alleged to be incapable “of
distinguishing the applicant’s goods” under § 23(c) of the Lanham
Act. In any case, “apt descriptive name” and “generic” both
refer to matter that has become so associated with the product
that it is recognized in the applicable trade as another name for
the product, serving as a term of art for all goods of that
description offered by different merchants or manufacturers
rather than identifying the goods of any one producer or seller.
See Questor Corp. v. Dan Robbins & Assocs., Inc., 199 USPQ 358,
364 (TTAB 1978), aff’d, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
Serial No. 77600178
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inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered …
understood by the relevant public primarily to refer to that
genus of goods or services?” H. Marvin Ginn, 228 USPQ at
530. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
The reason that generic terms cannot become trademarks
is clear on its face:
To allow trademark protection for generic terms,
i.e., names which describe the genus of goods
being sold, even when these have become identified
with a first user, would grant the owner of the
mark a monopoly, since a competitor could not
describe his goods as what they are.
Merrill Lynch, 4 USPQ2d at 1142, quoting CES Publ’g Corp. v.
St. Regis Publ’n, Inc., 531 F.2d 11, 188 USPQ 612, 615 (2d
Cir. 1975).
Legal Test
A. What is the Genus of Goods?
Applicant’s goods are identified as “decorative
manufactured stone.” Applicant and the Trademark Examining
Attorney appear to be in agreement that applicant’s
identification of goods is coextensive with the genus of the
Serial No. 77600178
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goods, and we accept that premise. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)
(“[A] proper genericness inquiry focuses on the description
of [goods or] services set forth in the [application or]
certificate of registration.”). The record shows that there
are a number of other terms used to describe this product,
such as “man-made stone,” “synthetic stone,” “simulated
stone,” or even “adhered concrete masonry.” Furthermore, we
do agree with applicant that the relevant purchasers would
be members of the general purchasing public.
For the consumer in the market for decorative stone
used as an ornamental facing, one would have a choice
between manufactured stone and natural stone. The record
shows that producers and merchants of manufactured stone
tout this popular product as a cheaper and lighter-weight
alternative to natural stone. Examples of both types of
products make up submissions in this record. In any case,
consistent with its identification of goods, applicant’s
substitute specimen submitted on July 27, 2009, shows
applicant’s use of VENEERSTONE in connection with
manufactured stone:
Serial No. 77600178
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B. Does Applicant’s Term Primarily Refer to the Genus?
Turning to the second inquiry, the Trademark Examining
Attorney has introduced several kinds of evidence supporting
her argument that the applied-for term, VENEERSTONE, is
generic as used in connection with decorative manufactured
stone. For example, in order to demonstrate the meaning of
“veneer stone” with respect to the genus of goods, she
included the following entries:
ve·neer noun \və- nir\
1 : a thin sheet of a material: as:
a : a layer of wood of superior value or excellent grain to be glued to an inferior wood
b : any of the thin layers bonded together to form plywood
c : a plastic or porcelain coating bonded to the surface of a cosmetically imperfect tooth
2 : a protective or ornamental facing (as of brick or stone)
3 : a superficial or deceptively attractive appearance, display, or effect : facade, gloss
[Etymology: German Furnier, from furnieren to veneer, from French fournir DATE: 1702] 3
3 http://www.merriam-webster.com/dictionary/veneer
Serial No. 77600178
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4
In traversing the refusal, applicant had put forward
several arguments for why such entries do not support a
finding that the public would regard its applied-for
designation as generic for the names goods.
For example, in its response of July 27, 2009,
applicant argued that this would strike consumers in home
improvement retail store locations as having “a unique and
clever second connotation”:
Indeed, the term “veneer” is commonly known
as a thin layer of wood of superior quality
glued to an inferior wood. … The
Applicant's products are not wood, as the
term “veneer” would imply, but stone. This
is not a meaning that would immediately come
to consumers’ minds, as veneer is commonly
know to be a wood product …
We find this argument most unpersuasive. The Merriam-
Webster dictionary entry itself makes clear that the meaning
4 http://plymouthquarries.com/glossary.html#V, as accessed by
the Trademark Examining Attorney on January 27, 2009. Given the
fact that web pages are sometimes transient, we sympathize with
applicant’s inability to find this particular online entry.
However, even without consulting the “wayback machine,” we do
find that this glossary entry had earlier been placed on the
Internet by someone in applicant’s field, and it simply
corroborates other evidence of record. Furthermore, applicant’s
waiting until the time of its reply brief (August 15, 2011) to
raise this concern makes any objection untimely.
Serial No. 77600178
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of the term “veneer” is not limited to “a thin layer of
wood” on the surface of a product or building. Indeed, we
consider the meaning of words with reference to the context
in which they are used, not in the abstract. In re Fitch
IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). Here,
applicant’s goods are identified as “decorative manufactured
stone.” Therefore, the relevant definition of “veneer”
taken from the Trademark Examining Attorney’s dictionary
evidence is the definition which refers to an ornamental
stone facade, not a layer of wood.
Furthermore, in response to these dictionary and
glossary entries of “veneer” and “veneer stone” discussing
this as “ornamental facing” or “non-load-bearing stone used
to cover a wall,” applicant argues that “whether or not a
stone is load-bearing depends on how it is used – the same
stone that is used as a veneer in one instance may be used
as load-bearing in another instance, depending on the
specific load for the specific application. The consumer
does not know the exact product identified (i.e., that it is
a ‘veneerstone’) until the stone is used as veneer.”
Certainly, if usage in the relevant trade corroborates
that both vendors and consumers of decorative manufactured
stone are acquainted with the connotation of “veneer stone,”
we find it irrelevant that some consumers may choose to
place this manufactured stone in a load-bearing wall, for
Serial No. 77600178
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example. Applicant has identified its goods as “decorative
manufactured stone.” Whether applicant’s actual goods could
be used for other purposes, such as load-bearing stone, or
whether the proposed mark would be registrable for the goods
so identified, is not the issue before us. As with any
factual question of genericness, the mere fact that an
identified item (e.g., decorative stone) can be used in a
variety of ways, including some not covered by the meaning
of the claimed source identifier (e.g., “veneer stone”) does
not obviate the statutory refusal.
Moreover, based upon dictionary entries alone, we find
VENEERSTONE to be a compound, unitary term and properly
analyzed under the Gould analysis. Gould Paper Corp.,
5 USPQ2d at 1111-1112; Wm. B. Coleman Co., Inc., 93 USPQ2d
at 2019; In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB
2005); and In re Eddie Z’s Blinds and Drapery, Inc.,
74 USPQ2d 1037 (TTAB 2005). Of course, on this record we do
not need to rely upon dictionary evidence alone.
Accordingly, we turn then to a number of screen prints
taken from websites of producers and sellers of decorative
stone.
Serial No. 77600178
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Manufactured Stone:
Liberty Bell Precast Stone Company
4313 Lycoming Creek Rd
Williamsport, PA 17701,
touts itself on its masthead as
“Specializing in concrete veneer stone,”
and then in later text, adds the sentence,
“We have a mass-variety of colors and styles
of veneer stone.”5
6
H&M Veneer Stone Products LLC,
430 5th St.,
Greeley, CO 80631,
bills itself as “Manufacturers
of quality veneer stone for
use in home and commercial
building.” This online
advertisement begins with:
“Unlimited possibilities.
That’s exactly what veneer
stone … ” 7
5 http://www.libertybellstone.com, as accessed by the
Trademark Examining Attorney on August 21, 2009.
6 http://www.unitedstoneveneer.com/about-us.htm, as accessed
by the Trademark Examining Attorney on January 27, 2009.
7 http://www.hmstone.com/, as accessed by the Trademark
Examining Attorney on August 21, 2009.
Serial No. 77600178
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8
9
8 http://www.fdlstone.com/, as accessed by the Trademark
Examining Attorney on January 27, 2009.
9 http://www.rvsproducts.com/, as accessed by the Trademark
Examining Attorney on January 27, 2009.
Serial No. 77600178
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10
10 http://www.masonryservices.com/, as accessed by the
Trademark Examining Attorney on January 27, 2009.
Serial No. 77600178
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Natural Stone:
11
12
11 http://www.stonewholesalecorp.com/stone_veneer.php, as
accessed by the Trademark Examining Attorney on August 21, 2009.
Serial No. 77600178
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13
In spite of all of this Internet evidence, applicant
argues that customers would not “ask for veneerstone and
expect a specific product in return” inasmuch as “[t]here is
no such product.” Applicant contends that “the term
‘veneer’ combined with the word ‘stone’ is not commonly
understood [by the public] to have only one meaning or to
describe one particular genus of goods.”
12 www.allstonevermont.com, as accessed by the Trademark
Examining Attorney on January 27, 2009.
13 http://www.mutualmaterials.com/, as accessed by the
Trademark Examining Attorney on January 27, 2009.
Serial No. 77600178
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Yet the record establishes that the individual
components of applicant’s proposed mark are generic for the
goods, specifically that applicant’s “stone” is used in
walls as a facing, facade or “veneer,” and the combination
of these terms lends “no additional meaning to the term.”
Dial-A-Mattress Operating Corp., 57 USPQ2d at 1810. Both
the definition for the combined term “veneer stone” and
third-party uses support this conclusion.
In addition to having found VENEERSTONE to be a
compound, unitary term as analyzed under the Gould analysis,
we also find that the above third-party websites are
competent sources of evidence to show genericness of the
term as used in the relevant trade. See In re Reed Elsevier
Props. Inc., 482 F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed.
Cir. 2007). Contrary to the arguments of applicant, the
website evidence made of record by the Trademark Examining
Attorney demonstrates that the wording in the proposed mark,
“veneer stone,”14 is commonly used by applicant’s competitors
14 As noted by the Trademark Examining Attorney, applicant’s
collapsed presentation of its claimed mark (i.e., “Veneerstone”
rather than “veneer stone”) does not obviate this statutory
refusal. A novel spelling of a generic term remains generic if
purchasers would perceive it as the equivalent of the generic
term. “Bad orthography has not yet become so rare or so easily
detected as to make a word the arbitrary sign of something else
than its conventional meaning ….” Standard Paint Co. v. Trinidad
Asphalt Mfg. Co., 220 U.S. 446, 458 (1911). See also Micro
Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998)
(holding MASSFLO generic for mass flowmeters); see also In re
Stanbel, Inc., 16 USPQ2d 1469 (TTAB 1990) (holding ICE PAK generic
for ice packs), aff’d, 20 USPQ2d 1319 (Fed. Cir. Jan. 24, 1991);
Serial No. 77600178
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in applicant’s industry in a generic manner to identify
their own decorative stone veneer products. Competing
enterprises should be free to use this generic language when
identifying or describing their own goods in advertising and
marketing materials. See In re Styleclick.com Inc.,
58 USPQ2d 1523, 1527 (TTAB 2001). In this vein, preventing
the exclusive appropriation of generic terms avoids the
possibility of costly infringement suits brought by the
undeserving trademark or service mark owner. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978).
The online advertisements demonstrate that a
significant purpose of decorative stone is for use as
“veneer stone.” Contrary to applicant’s allegations, these
two designations (e.g., “decorative manufactured stone” and
“veneer stone”) are inextricably entwined. See In re Reed
Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005), aff’d
(not precedential), 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir.
2007). In fact, based upon the record in its entirety, we
find that the term “veneer stone” would readily be
In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (holding
MINERAL-LYX generic for mineral licks for feeding livestock); In
re Gould Paper Corp., 834 F.2d 1017 5 USPQ2d 1110 (Fed. Cir.
1987) (SCREENWIPE generic for a wipe for cleaning television and
computer screens); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978) (GASBADGE at least descriptive for gas monitoring
badges); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED descriptive for jams and jellies used as a spread);
In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE
merely descriptive for interferometers utilizing lasers).
Serial No. 77600178
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recognized by the relevant purchasing public as another name
for decorative stone – both manufactured stone and natural
stone.
Applicant concedes this designation may be descriptive,
but contends it is not generic. However, we agree with the
Trademark Examining Attorney that in this context,
VENEERSTONE goes beyond merely describing a feature or
function of the identified goods. Rather, it refers to the
genus to which the goods belong. As the evidence
demonstrates, “veneer stone” is used to name goods that fall
within applicant’s genus. The fact that “veneer stone” may
also be generic for decorative natural stone, or that some
decorative manufactured stone is used for patios, walkways,
landscaping (or even load-bearing walls), does not mean
logically that “veneer stone” is not generic for applicant’s
decorative manufactured stone intended to be used as
ornamental facade.
As with its response to the dictionary/glossary
definitions, one of applicant’s responses to the Internet
evidence was similar. Namely, applicant repeatedly makes
the argument that even if a particular stone is purchased
for use on the facing of a building, that same stone, after
purchase, could instead be used in a totally different
application, such as for paving, tiling or to construct a
Serial No. 77600178
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load-bearing wall. Applicant argues that since nothing
would prevent the buyer of the stone marked as VENEERSTONE
from using it for any other application, its proposed mark
cannot be generic.
This argument is a non sequitur. The fact that
consumers may use applicant’s decorative manufactured stone
for something other than as decorative facing is not
relevant to our determination herein. Again, the
application identifies applicant’s goods as “decorative
manufactured stone,” and that must be the focus of our
analysis. Whether applicant’s actual product is suitable
for other uses is not relevant. The evidence of record
demonstrates that the wording “veneer stone” is a widely-
used name for decorative stone of the type marketed by
applicant. Even if not totally coextensive sets,
applicant’s identified goods have a substantial degree of
overlap with the set of items shown in the record as “veneer
stone.” That is, the fact that applicant’s decorative stone
overlaps with a partial subset of goods that are referred to
as veneer stone does not transform VENEERSTONE into a term
capable of source-identifying significance for applicant’s
decorative manufactured stone. See In re Greenliant Sys.
Ltd., 97 USPQ2d 1078, 1082 (TTAB 2010) (holding the proposed
mark NANDRIVE generic for “electronic integrated circuits”
Serial No. 77600178
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because “NAND drives” are types of solid state flash drives,
a narrower category of goods within the more broadly-defined
category of “electronic integrated circuits”); In re Wm. B.
Coleman Co., 93 USPQ2d 2019, 2024-25 (TTAB 2010) (holding
ELECTRIC CANDLE COMPANY generic for electric candles, a
subcategory of applicant’s broadly worded lighting
fixtures); and In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1790 (TTAB 2002) (holding BONDS.NET generic for
information and electronic commerce services regarding
financial products because the wording “financial products”
encompassed bonds).
We do not mean to say that VENEERSTONE is the only term
that can be used to refer to such a genus. Clairol, Inc. v.
Roux Distrib. Co., Inc., 280 F.2d 863, 126 USPQ 397, 398
(CCPA 1960) (there may be a number of generic terms for a
given good). As noted earlier, the identified goods may
also be called “manufactured stone,” “man-made stone,” “faux
stone,” “manufactured stone veneer,” “synthetic stone,”
“simulated stone,” “adhered concrete masonry veneer,” etc.
But the evidence clearly establishes that “veneer stone” is
one such term. Applicant’s competitors do in fact use
“veneer stone” to refer to their goods falling within the
category of decorative manufactured stone, and they would be
harmed should applicant be issued this registration.
Serial No. 77600178
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Indeed nothing that applicant has placed into the
record rebuts the Trademark Examining Attorney’s prima facie
showing that the term VENEERSTONE is generic for applicant’s
goods. Merrill Lynch, 4 USPQ2d at 1141.
Third-party Registrations incorporating the word “Veneer”
Applicant argues that “[i]f the term ‘veneer ____’ was
a generic … term, then any registered marks including this
term paired with another term for use with goods and/or
services relating to the material with which it is paired
would fail registration as generic.” Arguing from third-
party registrations, applicant argues that “[i]t is clear
from these registrations that the term ‘veneerstone’ is at
[worst] descriptive, even when applied to decorative
manufactured stone. Applicant respectfully notes that if
‘DIAMOND VENEER’ is not generic for ‘jewelry made from
diamond particles,’ the term ‘PLYVENEER’ is not generic for
‘wood veneer,’ and ‘VENEERCRETE’ is not generic for cement
building materials, then ‘veneerstone’ is not generic for
decorative manufactured stone products.”
As noted above, applicant failed to make these
registrations of record. However, even if copies of the
referenced registrations had been timely made of record,
they would have substantially no probative value on the
question before us. And even if the copies of the
Serial No. 77600178
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registrations were of record, we would not have benefit of
the prosecution histories of each file wrapper, and the very
fact-specific questions raised by the two-step analysis of
H. Marvin Ginn would be unique to each of these very
disparate types of goods.
Earlier Registration
As to any evidentiary value derived from the manner in
which applicant and the United States Patent and Trademark
Office handled a co-pending application for the same goods
involving the special form mark shown below:
,
we find that it certainly does not support the position of
applicant.15 Applicant argues that it disclaimed the
designation “Veneer Stone” in that application because the
issue of genericness had not yet been decided in the instant
case. Whatever applicant’s motivation in agreeing to the
disclaimer of all the wording in a registration on the
Supplemental Register, the alleged fact that no third-party
has sought to cancel this earlier issued registration is
totally irrelevant in light of the disclaimer. When
15 Registration No. 3855121 issued on the Supplemental Register
on September 28, 2010, based upon applicant’s claim of use
anywhere and use in commerce since at least as early as December
8, 2006. No claim is made to the exclusive right to use the term
“Veneer Stone” apart from the mark as shown.
Serial No. 77600178
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registration is sought on the Supplemental Register, a
disclaimer is appropriate if the disclaimed element is
incapable/generic. E.g., In re Rosemount Inc., 86 USPQ2d
1436 (TTAB 2008). Since genericness of “Veneer Stone” was
admitted by the disclaimer in applicant’s prior registration
(at least with respect to that specific mark), that
particular registration rests only upon the stylization of
the mark, and not its constituent words. Because the
proposed mark in the application at bar is not stylized, the
earlier registration implies nothing about the capability or
registrability of the term VENEERSTONE in standard
character form.
Conclusion
After careful consideration of the evidence and
argument of record, we conclude that VENEERSTONE is a
generic term for “decorative manufactured stone,” and that
the proposed mark is therefore ineligible for registration
on the Supplemental Register.
Decision: The Trademark Examining Attorney’s refusal
to register VENEERSTONE on the Supplemental Register under
Section 23(c) of the Lanham Act is hereby affirmed.
