Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Sep 18, 2014

No. 85598831 (T.T.A.B. Sep. 18, 2014)

Oral Hearing: August 5, 2014 Mailed: September 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Midwestern Pet Foods, Inc.
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Serial Nos. 85598829 and 85598831
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Timothy D. Pecsenye and Bradford C. Craig of Blank Rome LLP for Midwestern Pet
Foods, Inc.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_______

Before Taylor, Lykos, and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On April 16, 2012, Midwestern Pet Foods, Inc. (“Applicant”) filed applications to
register on the Principal Register the marks WHOLESOMES and SPORTMIX
WHOLESOMES, both in standard character form, for “pet food” in International
Class 31.1
The Trademark Examining Attorney has refused registration of the mark
WHOLESOMES under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Serial Nos. 85598829 and 85598831, alleging a bona fide intent to use the mark in
commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). During ex
parte prosecution of both applications, Applicant amended the basis for its applications to
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 85598829 and 85598831
2
§ 1052(e)(1), on the ground that the mark is merely descriptive of Applicant’s
identified goods. In addition, registration of the mark SPORTMIX
WHOLESOMES has been finally refused in light of Applicant's failure to comply
with the Examining Attorney's requirement for a disclaimer of “WHOLESOMES”
pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the ground that the term
is merely descriptive of the identified goods.
Upon final refusal of registration, Applicant filed a timely appeal and request for
reconsideration for each application. After the Examining Attorney denied the
requests for reconsideration, the appeals were resumed. Inasmuch as these appeals
involve common questions of law and fact, and each has been treated in
substantially the same manner by the Applicant and by the Examining Attorney,
we have consolidated these separate appeals and are issuing a single decision
herein. For the reasons explained below, we affirm both refusals to register.
Section 2(e)(1) of the Lanham Act precludes registration of a mark that, when
applied to the goods or services of the applicant, is merely descriptive of them. 15
U.S.C. § 1052(e)(1) (2006). “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). The determination of whether a
mark is merely descriptive must be made in relation to the goods or services for

Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and filed acceptable amendments to
allege use and specimens.
Serial Nos. 85598829 and 85598831
3
which registration is sought, not in the abstract. In re Chamber of Commerce, 102
USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This requires consideration of
the context in which the mark is used or intended to be used in connection with
those goods/services, and the possible significance that the mark would have to the
average purchaser of the goods or services in the marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha
Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). Evidence that a term is
merely descriptive to the relevant purchasing public “may be obtained from any
competent source, such as dictionaries, newspapers, or surveys.” In re Bayer, 82
USPQ2d at 1831 (quoting In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ
818, 819 (Fed. Cir. 1986)).
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. §
1056(a). A “disclaimer” is a statement that applicant does not claim exclusive rights
to an unregistrable component of a mark:
…a disclaimer of a component of a composite mark amounts
merely to a statement that, in so far as that particular registration is
concerned, no rights are being asserted in the disclaimed component
standing alone, but rights are asserted in the composite; and the
particular registration represents only such rights as flow from the
use of the composite mark.

Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats.
1954). As noted above, merely descriptive terms are unregistrable under Trademark
Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise
registrable. Failure to comply with a disclaimer requirement is grounds for refusal
Serial Nos. 85598829 and 85598831
4
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 National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The issue presented in this case is whether the Examining Attorney has
sustained the Office’s burden of establishing that the term WHOLESOMES, as
applied to “pet food,” is merely descriptive.
The Examining Attorney argues that the term WHOLESOMES, when used in
connection with “pet food,” immediately conveys to prospective consumers a feature
or characteristic of Applicant’s goods, namely that the product promotes the pet’s
“sound health or well-being.” In support of the refusals to register, the Examining
Attorney’s evidence includes the following:
● An entry for the word “wholesome” obtained from the American Heritage
Dictionary of the English Language (4th ed. 2000), defining the word, in pertinent
part, as
Adj. 1. “Conducive to sound health or well-being; salutary; simple, wholesome
food; a wholesome climate.”…3. Sound; healthy.2
● Applicant’s specimen of record consisting of product packaging, stating in
relevant part that Applicant’s pet food contains “NO corn, No wheat, and No soy;”
“Balanced Omega 6 and 3 fatty acids” and “Naturally Preserved.”

2 Search results for the word “wholesome” obtained from The Free Dictionary by Farlex
(www.thefreedictionary.com). Office Action dated May 21, 2012.
Serial Nos. 85598829 and 85598831
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● Third-party used-based registrations for marks comprised in part of the term
WHOLESOME and with a disclaimer of that term, for the same goods as
Applicant’s (“pet food”), the most relevant being WHOLESOME GOODNESS
(standard character mark) for “pet food.” (U.S. Registration No. 3565421) and
WHOLESOME MEDLEY (standard character mark) for “pet food.” (U.S.
Registration No. 3521984).
● Internet evidence that the adjective “wholesome” is used by competitors to
describe and promote their own brand of pet food or pet treats. See for example the
following:
The Wholesome Pet Market: Birmingham’s Only Independent Healthy Pet
Food Retailer….I carry only the best of raw, dehydrated, freeze-dried, canned
and dried foods. I only put products on the shelves that I have fully
researched and would bring home to feed my own dog. The store is also full of
wholesome treats – nutritional treats for all dogs, even those with allergies
and food sensitivities.” (www.thewholesomepetmarket.com).

The NaturaPet website offers Innova New Puppy Food brand which is touted
as “high-protein, wholesome nutrition formulated to meet the unique needs of
a growing puppy” and Innova NEW Weight Management Adult Dry Dog
Food, which is a “nutrient-rich, wholesome formula” that offers 21% less fat
than Innova Adult Dog Food and added L-carnitine to facilitate the
metabolism of fat. (www.naturapet.com).

The Tuffy’s Pet Food website advertises that “[f]or over 45 years, dog and cat
owners have trusted Tuffy’s Pet Foods to be fresh and wholesome….Tuffy’s
fresh, wholesome pet foods are specially formulated to meet the individual
needs of pets, keeping them happier, healthier, and more energetic.”
(www.tuffyspetfoods.com).

Applicant counters that the addition of the letter “s” to the adjective
“wholesome” transforms the word into a newly coined designation with no accepted
meaning. As Applicant contends, consumers encountering Applicant’s mark need to
Serial Nos. 85598829 and 85598831
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engage in some degree of imagination, thought, or perception before making an
association between the invented plural noun WHOLESOMES and Applicant’s
goods. For this reason, Applicant contends, its proposed mark does not immediately
describe a significant feature of Applicant’s “pet food.” Applicant relies primarily on
the declaration of Dr. Robert A. Leonard, expert in the field of linguistics,3 which
states in part:
From an English language perspective, unlike the word “wholesome,” the
word “WHOLESOMES” is a novel, quasi-invented lexical item with no
accepted meaning. Id. at ¶ 13.

Although apparently derived from the word “wholesome,” the word
“WHOLESOMES” cannot be construed as an adjective…. Id. at ¶ 14.

…following a basic application of the normal and accepted rules of English
grammatical construction, “WHOLESOMES” can only be understood to
be a plural noun without a singular counterpart. That “WHOLESOMES”
is a plural noun, and not an adjective, shifts the sands of cognition for
anyone encountering the word. The final s is meaningful in English as it
generates a semantic interpretation that “WHOLESOMES” is a noun
(and in particular, a plural noun)…The s serves to transform an adjective
into a newly minted plural noun; it is not merely pluralizing the adjective
“wholesome.” Consequently, in the case of “WHOLESOMES,” the final “s”
is a valid and meaningful distinguishing characteristic. Id. at ¶ 19.

That the noun WHOLESOMES is an invented word that has novel
morphological, grammatical, and semantic value is made clear by virtue of
the fact that no dictionaries contain the noun “wholesome” or
“WHOLESOMES.” More importantly, “WHOLESOMES” cannot be
found in any dictionary at all, and consequently, cannot be said to have
any accepted meaning. For English language speakers, linking the
adjective “wholesome” to “WHOLESOMES” would require a leap of
“metaphorical grammatical understanding” … to process a new lexical

3 Dr. Leonard is a tenured professor of linguistics at Hofstra University who has taught,
lectured and written articles on the subject for over 30 years. He earned a Ph.D. in
Linguistics from Columbia University with specialties in semantic theory and
sociolinguistics. He has been qualified and has testified as an expert in linguistics in
various state and federal courts. He also serves as a member of the editorial board of the
Oxford University Press series Language and the Law. Leonard Declaration ¶ 1-11, Ex. A.
Serial Nos. 85598829 and 85598831
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item that may at first glance appear to be an adjective flouting the rules
we all use to understand the English language. Id. at ¶ 20.

Thus, as Applicant maintains, while the word “wholesome” is a well-recognized
adjective in the English language and appears in dictionaries and common
parlance, the pluralized noun version of the word constitutes a unique source
indicator for Applicant’s own particular brand of “pet food.”
Applicant also criticizes the Examining Attorney’s reliance on evidence relating
solely to the adjective “wholesome” as irrelevant to whether the invented noun is
merely descriptive of Applicant’s “pet food.” While Applicant concedes that the
Examining Attorney’s evidence demonstrates that the word “wholesome” is used
commonly in the pet food industry to inform consumers that the pet food is healthy
and conducive to sound health for their pets, Applicant points out that the record is
devoid of any evidence related to the third-party use or dictionary entries of the
coined term “wholesomes.”
In addition, Applicant analogizes to other marks composed of a term that is
derived from a descriptive word that, as a result of its novel spelling or use, has
been deemed not to be descriptive of the goods. In support thereof, Applicant has
made of record the following relevant third-party registrations on the Principal
Register:4

4 Insofar as Registration No. 2762655 for the mark PET ESSENTIALS for “pet food and cat
litter” was cancelled on April 11, 2014, we have not considered it.

In addition, we did not consider Registration No. 3140553. Applicant mistakenly asserted in
its brief that the registered mark is SELECTS in plural form; however, the USPTO records
show that the mark is SELECT.
Serial Nos. 85598829 and 85598831
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Registration No. 2243779 for the mark MEATIES for “pet foods and pet
treats” in International Class 31;

Registration No. 3808209 for the mark SELECT ACTIVES (“SELECT”
disclaimed) for “pet foods and pet treats” in International Class 31; and

Registration No. 4329243 for the mark DELECTABLE DELIGHTS for
“dog food, cat food, dog treats and cat treats” in International Class 31.

Based on the record before us, we find that the Examining Attorney has satisfied
the Office’s burden of demonstrating that the term WHOLESOMES is merely
descriptive when used in connection with “pet food.” That is to say, we agree with
the Examining Attorney that the coined term WHOLESOMES immediately
conveys to prospective consumers a quality, feature or characteristic of Applicant’s
goods, namely, that Applicant’s pet food is conducive to the sound health or well-
being of the pet.5 We acknowledge that the record is devoid of any dictionary
definitions of the pluralized version of the adjective “wholesome,” or for that matter,
competitor use of that exact term in the pet food industry. That being said, even
though Applicant may indeed be the first and only user of the newly created
designation WHOLESOMES to identify “pet food,” Applicant’s proposed mark
nonetheless “immediately conveys knowledge of a quality, feature, …or
characteristic” of Applicant’s goods within the meaning of Trademark Act Section
2(e)(1). Nothing in the statutory language of that provision imposes the requirement

5 Applicant vociferously argues throughout its brief that under In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987), to be merely descriptive, a mark must describe a
“significant” quality, feature, or characteristic of the goods or services. The Federal Circuit’s
most recent iteration of the test for descriptiveness set forth in In re Chamber of Commerce,
supra, however, makes no mention of this requirement. In any event, nothing in the record
persuades us that wholesomeness is not a significant feature of food products.

Serial Nos. 85598829 and 85598831
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that to be merely descriptive, a proposed mark must consist of a commonly used or
previously defined word. Rather, the proposed mark must “immediately convey
knowledge,” and such “knowledge” can be conveyed or communicated to prospective
consumers in a number of ways, including by taking a commonly used adjective in
the pet food industry and adding the letter “-S.” In other words, the essence of the
adjective “wholesome” has not been so transformed by the conversion to noun form
so as to interfere with the consumer’s perception of that term as describing a
significant “quality, feature …or characteristic” of Applicant’s particular brand of
pet food.
We hasten to add that the pertinent case law imposes no general rule that only
marks composed of commonly used or previously defined words may be deemed
merely descriptive. In re Bayer Aktiengesellschaft, supra, is particularly instructive
on this point. In that case, the Federal Circuit affirmed the Board’s ruling that the
mark ASPIRINA was merely descriptive of applicant’s analgesic goods on the
grounds that ASPIRINA was simply a variation or misspelling of the generic term
“aspirin.” The court agreed with the Board’s analysis that the close similarity in
sound, appearance, and meaning of the mark ASPIRINA to the word “aspirin”
immediately conveys the impression to the consuming public that Bayer's
analgesics are aspirin-based products.6 As the court explained:
In determining whether ASPIRINA is sufficiently similar to aspirin to
render it merely descriptive of analgesic goods, the relevant features of the

6 The underlying Board decision did not consider the doctrine of foreign equivalents as
argued by the Examining Attorney. Hence the Board declined to engage in a foreign
equivalents analysis given its finding that the record demonstrates that ASPIRINA is a
merely descriptive variation of aspirin.
Serial Nos. 85598829 and 85598831
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mark are considered including appearance, sound, and meaning. The
Board found that ASPIRINA and aspirin are sufficiently close in
appearance, sound, and meaning that “[t]he mere addition of the letter ‘A’
at the end of the generic term ‘aspirin’ is simply insufficient to transform
ASPIRINA into an inherently distinctive mark for analgesics.” Final
Decision, slip. op. at 8, 11. Substantial evidence supports this finding. The
appearance and meaning of ASPIRINA and aspirin are similar. Adding an
“a” to aspirin results in virtually no distinction with respect to the visual
impressions of the terms. Importantly, both terms will be used in
association with the same analgesic goods in this country. There are,
however, some differences in sound. ASPIRINA contains four syllables
and aspirin contains two or three syllables (depending on how it is
pronounced). ASPIRINA also contains different syllables and the
emphasis is on the third syllable for ASPIRINA, whereas the emphasis is
on the first syllable for aspirin. When the mark ASPIRINA is considered
as a whole, the significant similarities in appearance and meaning of
ASPIRINA and aspirin demonstrate that the Board's finding that
ASPIRINA is merely descriptive of analgesic goods is supported by
substantial evidence.

Id. at 1831-32 (emphasis added).

Applying the same principles here, when we consider the appearance, sound,
and meaning of applicant’s proposed mark WHOLESOMES, it bears “significant
similarities” to the adjective “wholesome.” The addition of the letter “s” and
transformation of the term from adjective to noun fails to render the term
WHOLESOMES into an inherently distinctive mark for “pet food.” Consumers
encountering Applicant’s mark would still perceive it as meaning that Applicant’s
pet food is wholesome in nature by promoting the pet’s sound health or well-being.
Indeed, in In re Interco Inc., 29 USPQ2d 2037 (TTAB 1993), the Board affirmed the
examining attorney’s refusal to register the mark FLORSHEIM LIGHTWEIGHTS
and design for shoes in the absence of a disclaimer of LIGHTWEIGHTS on an
evidentiary record quite similar to the one presented here. In Interco, the examining
Serial Nos. 85598829 and 85598831
11
attorney submitted a dictionary definition of the adjective “lightweight,” copies of
two third-party registrations in which the word LIGHTWEIGHT was disclaimed,
and copies of excerpts from various recent newspaper stories showing uses of the
word “lightweight” in relation to shoes. Id. at 2038. As the Board reasoned in its
decision:
We concur with the Examining Attorney that the above evidence,
especially the dictionary definition and newspaper excerpts, is sufficient
to establish that not only is the word “LIGHTWEIGHT,” as applicant has
admitted, merely descriptive when applied to shoes, but so is the term
“LIGHTWEIGHTS”. The latter, we believe, would clearly be regarded by
customers and prospective purchasers of footwear as merely describing
shoes which are lighter in weight than other kinds of shoes.

As a final consideration, we observe that even if applicant has been the
first and/or, unlike its competitors, is presently the only user of the term
“LIGHTWEIGHTS” in connection with shoes, such fact cannot alter the
merely descriptive significance of the term. [Internal citations omitted].
Such fact, in short, is simply not dispositive where, as here, the term
“LIGHTWEIGHTS” unequivocally projects a merely descriptive
connotation that applicant's shoes are of less than average weight.
[Internal citation omitted].

Id. at 2039.

The reasoning set forth above applies with equal force here. While Applicant
may indeed be the first, and only user of the coined term WHOLESOMES used in
connection with “pet food,” it nonetheless “projects a merely descriptive connotation”
that Applicant’s pet food is salutary for pets. See id.
As to the third-party registrations for pluralized marks for pet food and pet
products referenced above, even if these prior registrations had some characteristics
similar to applicant’s application, the allowance of such prior registrations does not
Serial Nos. 85598829 and 85598831
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bind the Board. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Finally, with respect to Applicant’s expert’s opinion that a consumer would have
to engage in “a leap of ‘metaphorical grammatical understanding’” in order to
comprehend Applicant’s mark, we are not persuaded that ordinary consumers
would apply to the mark the kind of technical analysis that an expert linguist might
perform. Rather, we believe a consumer’s apprehension of the descriptive meaning
of the mark would be immediate.
In sum, we find that the Office has met its burden of demonstrating that
Applicant’s proposed mark WHOLESOMES, when used in connection with “pet
food,” is merely descriptive.
Decision as to Serial No. 85598829: The refusal to register the mark
SPORTMIX WHOLESOMES in the absence of a disclaimer of WHOLESOMES is
affirmed. However, this decision will be set aside if, within two months of the
mailing date of this decision, Applicant submits to the Board a proper disclaimer of
WHOLESOMES. See Trademark Rule 2.142(g). The standardized disclaimer
format is as follows:
No claim is made to the exclusive right to use WHOLESOMES apart
from the mark as shown.

Decision as to Serial No. 855988331: The descriptiveness refusal to register
Applicant’s mark WHOLESOMES is affirmed.