TTAB Test: Is “OVER THE FLOOR” Merely Descriptive of Rugs and Mats?

The USPTO refused to register the mark OVER THE FLOOR, finding it to be merely descriptive of “bath mats; personal exercise mats; meditation mats; gymnasium exercise mats; yoga mats; door mats; floor pads and non-skid floor mats in the nature of non-slip pads for use under rugs or carpet to prevent slippage; rugs; area rugs.” Applicant argued that “the ‘mental link’ between the mark OVER THE FLOOR and Applicant’s goods as recited in the application is neither immediate nor instantaneous, and that its goods are placed on the floor, not over the floor. How do you think this came out? In re Mats & Rugs LLC, Serial No. 87594162 (December 4, 2018)[not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Sahar Nasserghodsi relied on dictionary definitions of “over” (“above so as to cover or protect”), “floor,” “rug” (“a small carpet that covers part of a floor”), and “mat,” and on applicant’s specimens of use, which include a “no-slip rug pad” the label for which states that the pad has “sturdy and sleek rug pad construction [that] prevents slips and falls” and “adds extra cushioning and comfort to your home.” The Board sided with the examining attorney:

It is clear that the wording “OVER THE FLOOR,” as a whole, immediately describes a characteristic, purpose or function of the identified mats, floor pads and rugs, namely, that they cover, or are placed over, the floor and provide comfort, protection and/or decoration. The combination of terms is not incongruous, and no additional information is needed for the merely descriptive significance thereof to be readily apparent to prospective purchasers of rugs, mats and other floor coverings.

Applicant maintained that its goods do not “‘cover’ the floor; that is, they do not hide it.” Nor are they principally used to “protect” the floor. According to applicant “the principal intent … [is to] provide an aesthetic element to the space in which it is placed, . . . [and] greater comfort for feet on a hard or cold surface.”

The Board was not impressed: “That Applicant’s goods are intended to be multi-functional does not detract from their protective function, or, more to the point, where they are placed in relation to flooring, even if protection is not the featured function.”

Applicant asserted that the phrase OVER THE FLOOR is not in common usage or needed by competitors to describe goods placed “on the floor.” Again, the Board was unimpressed: “That the phrase OVER THE FLOOR is not in common parlance is not controlling. That Applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive.”

Finally, applicant urged than any doubt as to registrability should be resolved in its favor, but the Board had no doubt that the mark is merely descriptive of the goods.

And so it affirmed the Section 2(e)(1) refusal.

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TTABlog comment: WYHA? Can a mark be refused registration on the ground of obviousness? I mean, where else would you put a rug or mat? Under the floor?