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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA956870

Filing date: 02/27/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 87581122

Applicant ELIANE S/A- REVESTIMENTOS CERAMICOS

Applied for Mark DECORTILES

CorrespondenceAddress

SCOTT W. JOHNSTONMERCHANT & GOULD P.C.P.O. BOX 2910MINNEAPOLIS, MN 55402-0910UNITED [email protected]

Submission Appeal Brief

Attachments Appeal Brief with Exhibits.pdf(2236487 bytes )

Filer's Name Dana P. Jozefczyk

Filer's email [email protected], [email protected],[email protected]

Signature /Dana P. Jozefczyk/

Date 02/27/2019

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

APPLICATION SERIAL NO: 87581122 FILING DATE: August 23, 2017 APPLICANT: Eliane S/A Revestimentos EX. ATTORNEY: Collier Johnson MARK: DECORTILES DOCKET NO: 12247.0002US01 _______________________________________________________________________

CERTIFICATE UNDER 37 CFR 1.8: The undersigned hereby certifies that this correspondence is being electronically filed with the Trademark Trial and Appeal Board via ESTTA, on February 27, 2019.

By:

Dana P. Jozefczyk

APPLICANT’S APPEAL BRIEF

Eliane S/A Revestimentos Ceramicos ("Applicant") appeals the trademark

examining attorney's refusal to register the trademark DECORTILES for “ceramic

coverings and porcelain tiles for floors and walls” on the ground that it is merely

descriptive under §2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1). Applicant

maintains that the mark is not merely descriptive and is registrable without a disclaimer

of “DECOR” and “TILES.” However, in the event that the Board maintains the

Examining Attorney’s refusal, Applicant respectfully requests that the present

application be remanded to the U.S.P.T.O. for entry of a disclaimer of “DECOR” and

“TILES.”

I. FACTS

On August 23, 2017, Applicant filed a federal trademark application based on its

intent to use the mark DECORTILES in connection with “ceramic coverings and

porcelain tiles for floors and walls.” Upon initial examination of the application, the U.S.

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Patent and Trademark Office ("the Trademark Office" or “the Office”) refused

registration of the proposed mark under §2(e)(1) of the Lanham Act as being merely

descriptive. The Office based its position on a finding that the word “DECOR” refers to

the “style and layout of interior furnishings”, as well as a finding that the word “TILES”

is descriptive as evidenced by its inclusion in the identification of goods.

On June 13, 2018, Applicant submitted a Response to the Office Action wherein

arguments were presented against the finding of descriptiveness. Specifically, Applicant

argued that DÉCOR has a number of meanings and that mark DECORTILES could

connote a number of different goods and services based on the varied meanings of

DÉCOR. Applicant likewise identified a number of third party registrations in

International Class 19 that include the term DECOR but do not likewise require a

disclaimer of DECOR.

On July 10, 2018, the U.S.P.T.O. issued a final office action, wherein it rejected

Applicant’s arguments that, in view of the many and varied definitions for DÉCOR, the

mark is not descriptive of Applicant’s goods and likewise included additional third party

registrations in International Class 19 where DÉCOR is disclaimed. Applicant timely

filed a notice of appeal for all goods on January 10, 2019. Shortly thereafter, the Board

issued a Notice indicating that Applicant’s Appeal Brief was due on March 11, 2019

Applicant now appeals the final refusal of registration of its DÉCORTILES mark,

and asserts that its mark does not describe the characteristics of its goods.

II. ISSUE

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Whether the term DECORTILES describes ceramic coverings and porcelain tiles

for floors and walls so that it is merely descriptive of Applicant’s good as defined by

§2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1).

III. DISCLAIMER OF DÉCOR AND TILES IS NOT REQUIRED AS THE DECORTILES MARK IS UNITARY AND HAS A UNIQUE MEANING SEPARATE FROM ITS RESPECTIVE PARTS

A. Legal Standard For Unitary Marks.

If a determination is made that the matter that comprises the mark is unitary, no

disclaimer of an element, whether descriptive, generic, or otherwise, is required. A mark

is considered “unitary” when it creates a commercial impression separate and apart from

any unregistrable component. See TMEP §1213.05. The test for unitariness inquires

whether the elements of a mark are so integrated or merged together that they cannot be

regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB

1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry focuses on “how

the average purchaser would encounter the mark under normal marketing of such goods

and also . . . what the reaction of the average purchaser would be to this display of the

mark.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052

(Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB

1974)). The Court of Appeals for the Federal Circuit has set forth the elements of a

unitary mark:

A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052. The Court in Dena cited to

the Trademark Manual of Examining Procedure when considering the factors that make a

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mark unitary, such as “whether it is physically connected by lines or other design

features; the relative location of the respective elements; and the meaning of the

terminology as used on or in connection with the goods or services.” See id.

One subset of unitary marks is compound word marks. A compound word mark

is comprised of two or more distinct words that are represented as one word. See TMEP

§1213.05(a). If a compound word mark consists of an unregistrable component and a

registrable component combined into a single word, no disclaimer of the unregistrable

component of the compound word will be required. See In re EBS Data Processing, Inc.,

212 USPQ 964, 966 (TTAB 1981) (finding that "[a] disclaimer of a descriptive portion of

a composite mark is unnecessary . . . if the elements are so merged together that they

cannot be regarded as separable elements . . . for example, . . . by combining two words

or terms, one of which would be unregistrable by itself . . .").

B. DECORTILES IS UNITARY

Applicant’s mark for DECORTILES creates a mark that is unitary as it has a

distinct meaning of its own, independent of its constituent elements. Applicant admits

that the term TILES, as applied to Applicant’s goods, is generic and unregisterable by

itself. Applicant respectfully submits, however, that DECOR, as applied to Applicant’s

“ceramic coverings and porcelain tiles for floors and walls” is suggestive and that the

elements DECOR and TILES are so merged together that they cannot be regarded as

separate elements. In fact, merging the two together with a common golden lettering

style for all of the letters but the large red “T” in the middle, as set forth below, creates a

unique commercial impression separate and apart from the individual elements.

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The U.S.P.T.O. maintains that DECOR refers to the “style and layout of interior

furnishings.” See Final Office Action, dated July 10, 2018. In light of this definition, the

U.S.P.T.O. further posits that “applicant’s coverings and tiles will consist of the

decoration, style, and layout of interior furnishings.” See id. The combination of the

U.S.P.T.O.’s definition of DÉCOR and TILES simply does not describe Applicant’s

goods. Applicant’s goods are coverings and tiles. DÉCOR, on the other hand, when

using the definition relied upon by the Examiner, refers to the overall style and layout of

a room or interior designs. See id; See also, Applicant’ response to Non-Final Office

Action, dated June 13, 2018, Exhibit A, p.2 (definition of DECOR from dictionary.com

“style or mode of decoration, as of a room, building, or the like”), p. 3 (definition of

DÉCOR from dictionary.cambridge.org “the choice of color, style or furniture, and

arrangement of objects in a room”), p. 4 (definition of DÉCOR from

macmilliandictionary.com “the style of decoration and furniture in a building”), attached

hereto for the Board’s convenience. It takes a considerable leap to conclude, from seeing

Applicant’s mark that DECORTILES consist of the style of a room. Rather, consumers

are likely to think that Applicant sells tiles, without necessarily concluding that

DECORTILES refers to the overall style and layout of a room or interior space. That

conclusion, as argued by the Office Action requires a mental leap, which makes

Applicant’s mark suggestive, rather than descriptive.

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DÉCOR has numerous other meanings than the meaning relied upon by the office

action, including scenery for theater productions. These varied definitions create

different commercial impressions. For example, DECORTILES could also relate to tiles

used as scenery for a theater set. Moreover, DECORTILES does not immediately bring

to mind Applicant’s “ceramic coverings and porcelain tiles for floors and walls.” Rather,

upon hearing or seeing the DECORTILES mark, consumers need to use a degree of

imagination to determine that Applicant’s tiles are for floors and walls, rather than for

incorporation in theater scenery, or that DECORTILES does not refer to a tile installation

service or a company that allows customers to design its own tiles.

It should be further noted that Applicant’s mark is not DÉCORTILES, it is

DECORTILES. While Applicant submits that some consumers may read its mark as

DÉCORTILES, many others will also read it is DECORTILES. In this instance, “decor”

may be an abbreviation, for decoration, or decorative, or decorate. Accordingly, again,

consumers may perceive DECORTILES as ornamental tiles or a company that allows

customers to design its own tiles.

Applicant’s mark likewise also incorporates a unique stylization of fading gold

letters with a red “T.” This unique style, in combination with the term DECORTILES,

creates a commercial impression unique and different from the DECOR and TILES

elements.

As consumers may perceive Applicant’s mark as either DÉCORTILES or

DECORTILES, and as there are varied and different meanings that result from the

dissection of Applicant’s mark into DÉCOR/DECOR and TILES, Applicant submits that

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its mark is unitary as the elements of the mark are “so merged together that they cannot

be regarded as separable elements.” In other words, Applicant’s DECORTILES mark

creates a commercial impression that is different from that created by the individual

elements of DÉCOR/DECOR and TILES. Applicant’s mark is also a compound word,

which is a recognized subset of unitary marks. Like other unitary compound words,

DECORTILES, in Applicant’s mark, creates a unique and separable impression from its

individual elements.

The U.S.P.T.O. likewise appears to take a similar position on unitary, compound

words that include the term DÉCOR or DECOR. Both Applicant and the Examiner

submitted numerous third party DÉCOR variant registrants. Applicant’s registrations

were submitted in support of the position that DÉCOR is not typically disclaimed in

International Class 19. The Examiner’s registrations were submitted in support of the

U.S.P.T.O.’s position that DÉCOR is descriptive and commonly disclaimed. Overall,

however, neither party identified a single third party registration where DÉCOR was

disclaimed when DÉCOR was part of a compound word. Rather, it appears to be the

position of the Office that, when incorporated into a compound word, DÉCOR variants

create unitary marks. Examples of these third party compound word DÉCOR marks are

included in the below table.

Mark/Name/AN/RN Status/Status Date

Full Goods/Services

Owner Information

D DECORASTONE & TILE and Design

Registered December 12, 2017

(Int'l Class: 19) wall coverings, namely, non-metal tiles that may be applied to walls made of nonmetallic material, namely,

Juan Marcos Gonzalez Manuel, Dba Cla081215ia6 (Mexico Citizen) Calz. Tecnologico, Centro Calz. Tecnologico, Centro Lerdo 35150 Mexico

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Full Goods/Services

Owner Information

RN: 5353477 SN: 87236898

marble, granite, travertine, quartz and natural stones

DECORBRICK SN: 87157883

Allowed - Intent to Use 2nd Extension of Time Granted February 28, 2018

(Int'l Class: 19) cladding, not of metal, for building; floor tiles, not of metal; floors, not of metal; non-metal tiles for walls, floors or ceilings; non-metal wall tiles; non-metallic paving tiles; paving blocks, not of metal; tiles, not of metal, for building

Indústria E Comércio De Molduras Santa Luzia Ltda. (Brazil Corp.) Rodovia Sc438, Km 182, Fundos Nº 3019 Braço Do Norte 88750-000 Brazil

DECORCOAT RN: 5346476 SN: 85248103

Registered November 28, 2017

(Int'l Class: 19) decorative glass

Vitrum Holdings LTD. (Canada Limited Liability Company) 9739-201 Street Langley, Bc V1m3e7 Canada

DECORIDGE RN: 3829308 SN: 77729169

Registered 8 & 15 September 19, 2016

(Int'l Class: 19) non-metal shingles

Owens Corning Intellectual Capital, LLC (Delaware Limited Liability Company) One Owens Corning Parkway Toledo Ohio 43659

DECOROCK RN: 4722197 SN: 86024722

Registered April 21, 2015

(Int'l Class: 19) bagged decorative landscape rock consisting of lava, cobble, sand, pea gravel, marble, river rock, beach pebbles and various aggregate type rock, flagstone, sandstone, quartz and various flat stone type rock; precast concrete stepping stones, edgers, patio stones, pavers, stair treads and

Pacific Coast Building Products, Inc. (California Corp.) 10600 White Rock Road, Suite 100 Rancho Cordova California 95670

9


Full Goods/Services

Owner Information

wall block

DECOROCK WATER-WISE LANDSCAPE ROCK and Design

RN: 2906667 SN: 78325687

Renewed November 30, 2014

(Int'l Class: 19) landscape rock consisting of lave, cobble, sand, pea grave, marble, river rock and various aggregate type rock, flagstone, sandstone, quartz and various flat stone type rock

Pacific Coast Building Products, Inc. (California Corp.) 10600 White Rock Road, Suite 100 Rancho Cordova California 95670

GLASSDECOR RN: 4287550 SN: 85346915

Registered February 12, 2013

(Int'l Class: 19) non-metal ceiling tiles; non-metal wall panels; floor planks; non-metal door panels

Whaley, Tim (United States Citizen) 3941 Legacy Drive Plano Texas 75023

DECORWOOD RN: 4109854 SN: 85182063

Registered March 6, 2012

(Int'l Class: 19) laminate flooring

Pergo, LLC d/b/a Unilin North American, LLC limited liability company Delaware, 160 South Industrial Blvd Calhoun Georgia

See Office Action response dated June 13, 2018, Exhibit B in part, attached hereto for the

Board’s convenience. It should also be noted that the majority of the above marks are

used in association with tiles and floor/wall coverings. If the above registrations are all

unitary and create unique commercial impressions, separate from the individual elements,

so too does Applicant’s mark for DECORTILES.

C. The Trademark Office Has Not Met Its Burden of Proof in Establishing that DECORTILES Is Commonly Used in the Trade and By Purchasers

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The Office’s evidence does not show that the term DECORTILES is commonly

used for wall and floor coverings. The Office Action alleges that “[t]hird parties also use

this wording to describe a feature of similar goods.” See Final Office Action, dated July

10, 2018. In support of this allegation, the U.S.P.T.O attaches two articles. The first,

uses the term “décor tiles” as part of an overall phrase, which is “bird accent & décor

tiles.” In this sense, décor cannot be read separately from the remainder of the phrase,

which includes bird and accent. Applicants mark is not for “accent & décor tiles,” it is

for DECORTILES. The second article does not use the phrase DECORTILES, it uses the

term “Decorative Tiles.” This mark is different from Applicant’s and does not

demonstrate that Applicant’s mark is descriptive.

To the contrary, Applicant has coined the term DECORTILES. Indeed, the

Trademark Office has identified no use of the compound word DECORTILES to describe

floor and wall coverings, nor can Applicant locate any. The Firestone Tire & Rubber Co.

v. The Goodyear Tire & Rubber Co., 186 U.S.P.Q. (BNA) 557, 558-59 (T.T.A.B. 1975)

(holding that BIASTEEL is not descriptive of tires despite claims that “biased steel” or

“bias steel” is publicly used because, “If so, then why is the record devoid of any

showing that such terms have been used?”), aff’d, 189 U.S.P.Q. 348 (C.C.P.A. 1976);

Nife Inc. v. Gould-National Batteries, Inc., 128 U.S.P.Q. (BNA) 453 (T.T.A.B. 1961)

(holding that NICAD is not descriptive of nickel cadmium batteries because “[t]he record

is wholly insufficient to show that “NICAD” is commonly used in the trade and by

purchasers.”). The compound word, DECORTILES, likewise does not describe floor or

wall coverings.

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Similarly, the Office has not shown that competitors have a need to use the

compound word DECORTILES when referring to floor or wall coverings. As provided

above, the record is devoid of any evidence that purchasers of wall or floor coverings

need to use DECORTILES. The compound word DECORTILES specifically refers to

Applicant’s goods. Moreover, registration of DECORTILES for floor or wall coverings,

would not preclude others from using the word “decor” or “tiles” to in a descriptive

manner to describe tiles used for decorative purposes, such as the above referenced

“Decorative Tiles” use.

The conclusion that the mark DECORTILES is unitary and creates a unique

commercial impression comports with previous holdings by the Board on this issue as

well as the evidence made of record. Therefore, the refusal to register Applicant's mark

based on a finding that it’s individual elements are descriptive should be withdrawn.

In light of all of the foregoing, Applicant respectfully requests that the Trademark

Trial and Appeal Board reverse the Examining Attorney’s final refusal under § 2(e) (1) of

the Lanham Act and allow Applicant’s application to proceed to publication on the

Principal Register. In the alternative, if the Board affirms the Office’s refusal to register,

Applicant respectfully requests that the Board provide Applicant with an opportunity to

enter the requested disclaimer of “DECOR” and “TILES,” pursuant to Trademark Rule

2.142(g).

IV. CONCLUSION

By this Appeal Brief, Applicant has addressed the outstanding refusal raised by

the Office and respectfully requests that the Examining Attorney’s refusal be reversed

and the application be approved for publication at an early date.

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Respectfully Submitted,

ELIANE S/A REVESTIMENTOS CERAMICOS

By its Attorneys,

Date: February 27, 2019 /s/Scott W. Johnston

Scott W. Johnston MERCHANT & GOULD P.C. P.O. Box 2910 Minneapolis, MN 55402-0910 612-332-5300 612-332-9081

EXHIBIT A (As filed with Applicant’s Office Action Response Dated June 13, 2018)

EXHIBIT B (As filed with Applicant’s Office Action Response Dated June 13, 2018)

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