Midwestern Pet Foods, Inc.

Trademark Trial and Appeal BoardAug 16, 2017

No. 86596702 (T.T.A.B. Aug. 16, 2017)

This Opinion is not a Precedent of the TTAB Hearing: April 12, 2017 Mailed: August 16, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Midwestern Pet Foods, Inc. _____ Serial No. 86596702 Timothy D. Pecsenye and Bradford C. Craig, of Blank Rome LLP, for Midwestern Pet Foods, Inc. Diane Collopy, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Wellington, Gorowitz and Goodman, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Midwestern Pet Foods, Inc. (“Applicant”) seeks registration on the Principal Register of the mark MEADOW PRIME (in standard characters) for Pet food, in International Class 31.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the ground that a 1 Application Serial No. 86596702 was filed on April 14, 2015, based upon Applicant’s allegation of use of the mark anywhere and in commerce under Section 1(a) of the Trademark Act. Serial No. 86596702 - 2 - disclaimer is required of the word PRIME, because it is merely descriptive of Applicant’s goods. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. A hearing was held on April 12, 2017. I. Background. Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), states “[t]he Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. “A mark or component is unregistrable if, ‘when used on or in connection with the goods of the applicant,’ it is ‘merely descriptive ... of them.’” 15 U.S.C. § 1052(e)(1). See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). The refusal is based on the Examining Attorney’s assertion that as used in Applicant’s mark, the word PRIME is merely descriptive of Applicant’s pet food. II. Discussion. We first must determine whether the word PRIME is merely descriptive of Applicant’s pet food, within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052 (e)(1). A mark or portion thereof is merely descriptive of goods within the meaning of Section 2(e)(1) of the Trademark Act if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). A mark need not immediately convey an idea of each and every specific feature of the goods in order to be considered merely descriptive; it is enough Serial No. 86596702 - 3 - if it describes one significant attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). “Marks that are merely laudatory and descriptive of the alleged merit of a product are … regarded as being merely descriptive …” DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012), citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 11058 (Fed. Cir. 1999). The Examining Attorney asserts that the word PRIME is merely laudatory because it attributes higher quality or excellence to the goods. Both the Examining Attorney and the Applicant submitted definitions of “prime” from a number of dictionaries, which support the Examining Attorney’s assertion, e.g., 1. First in quality; of the highest excellence – prime beef2; 2. Highest in quality; excellent: prime real estate3 ; 3. Of the highest quality4; 4. Of best possible quality; excellent5; 2 Collins American English Dictionary (www.collinsdictionary.com/dictionary/American/ prime) - May 19, 2015 Office Action, TSDR p.4. All references to TSDR citations are to documents in the .pdf format. 3 The American Heritage Dictionary of the English Language (www.ahdictionary.com), December 19, 2015 Office Action, TSDR p. 8. 4 Macmillan Dictionary (www.macmillanddictionary.com) – Id., at p. 20 5 Oxford Dictionary (Oxforddictionaries.com/usdefinition/americanenglish) – November 19, 2015 Response, TSDR p. 17. Serial No. 86596702 - 4 - 5. Most important, or of the best quality.6 Each of these definitions evidences a laudatory meaning of the word “prime” in connection with pet food that is highest in quality. The Examining Attorney also introduced evidence of the descriptive use of the word “prime” in a blog about homemade dog food written by Alex Sparrow.7 In a section of the blog titled “What’s My Dog Feeding Method?, Mr. Sparrow states” You need to search for commercial dog food made by ethical manufacturers having good reputation. They are producing prime-quality items planned to improve and lengthen your canine’s life. (emphasis in original). The Examining Attorney also submitted web pages for pet food in which the word PRIME appears, where the product descriptions are “quality,” “high energy,” and “high quality.” Representative samples include: “Friskies is the name you know for quality canned cat food with 100% complete and balanced nutrition for adult cats.” “Moist quality filets of meat and fish.”8 6 Cambridge English Dictionary (dictionary.cambridge.org/us/dictionary/English – Id., at p. 25. 7 Alex Sparrow is described as “a nature enthusiastic for more than six decades. He was writing [sic] nearly 400 articles, reports so far about how to live with your dogs harmoniously.” August 11, 2016 Denial of Request for Reconsideration, www.talkourdogs.com, TSDR pp. 13-14. 8 May 19, 2015 Office Action, Petco website (www.petco.com) - TSDR p. 8. Serial No. 86596702 - 5 - : Carolina Prime9 Our Mission • To provide our customers the best pet treat values with consistently high quality and dependable service. We only sell the highest quality treats so that pet owners and store owners alike feel confident in the use and sale of our products. • To be the leader in developing new and innovative products that will allow our retail partners to grow alongside us. • To be a dependable partner in packaging, shipping, and presentation of products, that will provide maximum sales for our partners. Red Flannel10 Wholesome Nutrition Red Flannel™ Prime Formula is specifically designed to provide prolonged energy for hardworking dogs. It supplies 100% complete and balanced nutrition for your dog at every life stage.” 9 December 19, 2016 Office Action, Carolina Prime – TSDR p. 5 10 Id., Red Flannel, www.pminutrition.com–TSDR p. 11. Serial No. 86596702 - 6 - In addition to these webpages, the Examining Attorney submitted a webpage from the Chewy website, on which Applicant’s product is offered for sale. This webpage also reflects a laudatory use of the word PRIME.11 Kent12 11 August 11, 2016 Denial of Request for Consideration – www.chewy.com – TSDR p. 7. 12 December 19, 2015 Office Action, Kent Foods, www.kentfeeds.com –TSDR p. 7. Serial No. 86596702 - 7 - Pro Pac Ultimates Meadow Prime Lamb & Potato Grain-Free Dry Dog Food Description Pro Pac Ultimates Meadow Prime Lamb & Potato Grain-Free Dry Dog Food is a hearty grain-free and gluten-free formula that provides the ultimate in canine nutrition. Premium quality lamb meal is used as the primary protein source to supply essential amino acids that help maintain strong muscles and a healthy, shiny coat. This antioxidant-rich formula is also fortified with vitamins A and C along with nutrient-packed fruits and vegetables like apples, blueberries, carrots and spinach, which contain natural fiber to help with overall digestion. Applicant contends that none of the evidence introduced by the Examining Attorney “features use of the term ‘prime’ as anything but part of a brand name.” Appeal Brief, 7 TTABVUE 19. However, use of the term PRIME intended to be part of a “brand name” does not mean the term is not descriptive. Indeed, the evidence introduced supra reflects how consumers may perceive the descriptive use of the word “prime.” For example, (1) Red Flannel uses the Serial No. 86596702 - 8 - trademark symbol prior to the designation, “Prime Formula” and thus the term “prime” would not considered part of its trademark, but rather merely describing a higher quality line of pet food. (2) KENT is the primary trademark on the Kent Feeds webpage. Each individual sub-line of products is then identified by descriptive terms: “Puppy Prime,” “Hi-Protein 27,” “Tasty Nuggets,” and “Adult Prime.” Moreover, third-party use and registration of a term may be an indication that a term has a suggestive or descriptive connotation in a specific industry. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Evidence of such use includes: FRISKY PRIME FILLETS,13 CAROLINA PRIME, 14ALPO Prime Cuts,15 CASTOR & POLLUX GOOD BUDDY PRIME PATTIES REAL TURKEY RECIPE16 Prime Taste Treats Real Beef Liver Freeze-Dried Dog Treats,17 and INNOVA PRIME.18 Applicant also argues that the term PRIME in Applicant’s mark is an inherently distinctive, suggestive element of the mark that does not immediately describe Applicant’s pet food.” Appeal Brief, 7 TTABVUE 10. Applicant bases this argument on what it asserts are the “many and diverse meanings of the word [prime].” Id., at 13 See fn. 8. 14 See fn. 10. 15 May 19, 2015 Office Action, Amazon (amazon.com) - TSDR p. 9. 16 August 11, 2016 Denial of Request for Reconsideration, Chewy (chewy.com), TSDR p. 8. 17 Id., at p. 9. 18 Id., Petfood Industry.com (petfoodindustry.com), TSDR p.10. Serial No. 86596702 - 9 - 16. Applicant argues that “[t]he commercial impression engendered by the mark MEADOW PRIME, when properly viewed in its entirety, is that of sheep and lamb (the primary protein source in the mark) grazing on fields, pastures, and rangelands.” Id., at 10. Applicant also argues that [i]n light of the diverse meanings of this versatile and dynamic word, ‘PRIME’ may suggest to consumers that Applicant’s pet food is well suited to transport pets to the peak or zenith [or prime] of their lives and/or that such food provides the nutrition to prepare [or ‘prime’] pets for healthy, active lifestyles …” Id., at 17. There is no evidence supporting Applicant’s contentions. We do not find these arguments persuasive. Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd, 103 USPQ2d at 1757. In this case, consumers will immediately understand that PRIME when used in connection with pet food designates the quality of the pet food as “premium” or “high quality.” The Examining Attorney has established that the word PRIME is merely laudatory of the alleged merit of Applicant’s pet food and thus is regarded as being merely descriptive. The Applicant’s arguments do not negate this finding. Serial No. 86596702 - 10 - Applicant argues that “consistency in examination is an important, if not crucial role of the Trademark Office” and that “the Trademark Office has deemed the word ‘PRIME’ inherently distinctive – not merely descriptive – with respect to several directly analogous third-party ‘PRIME’ – formative marks registered … on the Principal Register without disclaimer of ‘Prime’ (or claim of acquired distinctiveness) for identical or exceedingly similar goods.” Appeal Brief, 7 TTABVUE 21-2. In support of its argument, Applicant introduced ten active registrations for marks containing the word PRIME without a disclaimer thereof. In five of the registrations, the portion of the mark that includes the word PRIME is “ a compound word formed by combining two words or terms, one of which would be unregistrable by itself …” In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981). The marks in these registrations are: PRIMEGLO, PrimeCell (stylized and design), AQUAPRIME, PrimeBites (stylized and design), and SAVORYPRIME. A disclaimer is unnecessary when the mark is a compound word. With respect to the other five registrations,19 they do not conclusively rebut our finding that the term PRIME is descriptive in the context of this mark. See In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (While the record contains many prior registrations including the term ULTIMATE, these 19 The marks in these registrations are: PRIME CHOICE, PRIME TREATS, PRIME REEF, and PRIME PORK and . Serial No. 86596702 - 11 - prior registrations are not conclusive to rebut the Board’s finding that ULTIMATE is descriptive in the context of this mark.) While achieving a uniform standard for assessing registrability of marks is encouraged, each case must be decided on its own facts. Id. Neither the USPTO – specifically, the Examining Attorney who examined the application here at issue – nor the Board, is bound by the decision of the examining attorney who examined the prior applications. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (upholding examining attorney’s requirement for a more definite identification, notwithstanding applicant’s ownership of several registrations in which the term “chronographs” appeared without further qualification in the identification); and In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars). Having determined that the word PRIME is merely descriptive when used in connection with pet food, we find that the requirement to disclaim the word PRIME is appropriate. Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). Accordingly, we sustain the requirement and affirm the refusal. Serial No. 86596702 - 12 - Decision: The refusal to register Applicant’s mark MEADOW PRIME is affirmed. However, if Applicant submits the required disclaimer of PRIME to the Board within thirty days, this decision will be set aside.20 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142. 20 The standardized printing format for the required disclaimer text is as follows: “No claim is made to the exclusive right to use PRIME apart from the mark as shown.” TMEP 1213.08(a)(i).