Tuesday, June 23, 2009

TTAB Reverses Two Refusals of "CARPET TO CARPET" for Reclamation Services

The Board rolled out the red (or maybe green?) carpet for Applicant Columbia Insurance, tossing out two PTO refusals of the mark CARPET TO CARPET for "receiving used carpet products for subsequent reclamation of the carpet.” The PTO maintained that Applicant's recitation of services was unacceptable, and that Applicant failed to disclaim the merely descriptive term "carpet." The Board, however, found the recitation to be sufficiently definite, and the mark creative enough to escape the disclaimer requirement. In re Columbia Insurance Company, Serial No. 77281250 (June 4, 2009) [not precedential].

Recitation of Services: The Examining Attorney found Columbia's recitation to be indefinite in that it may include services in more than one class. She suggested "carpet reclamation services, namely, refurbishing carpets," but Applicant argued that this recitation does not accurately "represent the scope of services."

Columbia pointed out that its services (offered by its Shaw Industries) "involve collecting used carpet for reclamation," but it rejected the Examining Attorney's fixation on the term "refurbishing." The Board sided with Applicant:

With its commitment to "cradle-to-cradle" sustainability, applicant rightly rejects an incorrect and limiting recitation of services suggesting that it renews carpet in a cosmetic manner. Applicant’s analogy is apt in that enterprises involved in recycling aluminum cans are not in the business of “refurbishing” aluminum cans in order to re-use the same old can. Rather, the aluminum can recycler reclaims the technical nutrients of the old can to make an entirely new can. [emphasis in original].

The Board concluded that the "core services" offered by Applicant are the "collection" or "receiving" of carpet products. Therefore, the recitation of services "is sufficiently definite to pass this mark on to publication."

Disclaimer: The Board agreed with the PTO that "carpet" is descriptive when used with Columbia's services, but the question was whether the term has "lost its descriptive significance within this composite phrase." The Examining Attorney pointed to a registration for PAPER TO PAPER & Design for similar services, in which PAPER is disclaimed. Again, the Board embraced Columbia's position.

In spite of the existence of this single analogous registration, we agree with applicant. When first encountering applicant’s adopted term, one might well be put in mind of the expression, “ … earth to earth, ashes to ashes, dust to dust,” from the Book of Common Prayer, or even the more recently-popularized, Twenty-First Century concept of “cradle-to-cradle” – a paradigm that seems to have inspired applicant. The way this almost-poetic turn of phrase rolls off the tongue, we find that it involves enough creativity to form a unitary whole, and hence, supports an exception to the need to disclaim an otherwise merely descriptive term. See TMEP § 213.05(e).

And so the Board reversed both refusals.

TTABlog comment: I'm an engineering major, not an English major, and maybe that's why I just don't find CARPET TO CARPET to be that poetic a phrase. It's about as poetic as PAPER TO PAPER. And what would be wrong with requiring a disclaimer of CARPET? Surely, Applicant has no trademark rights in that single word.

BTW, I ran a GOOGLE brand search of the phrase "carpet-to-carpet recycling," and the results suggested to me that the phrase "carpet-to-carpet" may not be all that unique. I hesitate to say that it's generic, but it does not seem to be exclusively used by Shaw Carpets.

Of course the Board's review here was limited to the issues raised on appeal and the evidence of record. The mark will now be published for opposition, and we'll see what happens.

TTABlog postscript: I use the term "GOOGLE brand" just to spite one L. S., who claims that GOOGLE is generic.

Text Copyright John L. Welch 2009.


At 2:59 PM, Anonymous Anonymous said...

Google brand search?

At 3:09 PM, Blogger John L. Welch said...

As stated in the TTABlog postscript, I use the term "GOOGLE brand" just to spite one L.S., who claims that GOOGLE is generic. I'm not suggesting that one may conduct a "brand search" via Google.

At 12:18 PM, Blogger Dan said...

GOOGLE isn't currently generic, as the public still perceives a connection to a particular supplier of search services. However, it has some danger of "genericide" due to the widespread use of phrases like "googling something". If people start using this regularly when describing searches that aren't necessarily done with Google, then a future court could rule it no longer protected. Other famous trademarks like Kleenex and Band-Aid are in similar danger. The nurse at my doctor's office regularly asks me "Do you need a band-aid?" after drawing blood for a test, though the bandage strip she hands me is a different brand.

"Wikipedia", a trademark of the Wikimedia Foundation, seems to be in some danger too, as I'm constantly encountering news articles calling some unrelated new reference site "the Wikipedia of [subject]", where [subject] can be anything from baseball statistics to pornography.

At 1:43 PM, Blogger John L. Welch said...

I've been warned that, by using the term "TTABlogged," I may be killing my own trademark. But I do color the term orange every time I use it!


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