Pet Relocation LLC

Trademark Trial and Appeal Board

Nov 8, 2012

No. 77849966 (T.T.A.B. Nov. 8, 2012)

Mailed: November 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pet Relocation LLC
________

Serial No. 77849966
_______

Monica Emilienburg of Richards Rodriguez & Skeith LLP, for
Pet Relocation, LLC.

Toby E. Bulloff, Trademark Examining Attorney, Law Office
117 (Brett Golden, Managing Attorney).
_______

Before Cataldo, Ritchie, and Lykos, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Pet Relocation LLC (“applicant”) has filed an
application to register PET RELOCATION in standard
characters on the Principal Register for “arranging for
pickup, delivery, storage and transportation of documents,
packages, freight and parcels, specifically animals and
domesticated pets, via ground and air carriers,”1 in

1 Serial No. 77849966, filed on October 15, 2009, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first
use and first use in commerce on January 1, 2004, and claiming
Section 2(f) acquired distinctiveness. Applicant originally also
included goods in IC 16 but deleted them in an amendment on March
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77849966
2
International Class 35.
Initially, the examining attorney issued a refusal
based on mere descriptiveness. Applicant responded by
seeking to register the mark pursuant to Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f), based upon
“substantially exclusive and continuous use in commerce for
at least the five years immediately before the date of this
statement.” (February 16, 2010 amendment). The examining
attorney then issued a new refusal on the grounds that (1)
the proposed mark is generic for the applied-for services;
and (2) the term “pet relocation” is so highly descriptive
of applicant’s services that the allegation of five years
of use is insufficient to establish acquired
distinctiveness. Applicant then submitted actual evidence
purporting to establish acquired distinctiveness.
(September 7, 2010 Office Action Response). However, as
noted below in the “Acquired Distinctiveness” section, the
final Office Action, dated April 1, 2011, addressed the
refusal based on genericness only and did not address the
sufficiency of applicant’s actual evidence of acquired
distinctiveness.

9, 2011, after receiving specimen and Section 2(e) refusals
which found the assertions regarding the Section 2(f) claim to be
insufficient.
Serial No. 77849966
3
Applicant filed a timely appeal solely on the issue of
genericness. Both applicant and the examining attorney
have filed briefs, and applicant has filed a reply brief.
GENERICNESS
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name
for the goods and/or services. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)(“Ginn”); In re Women's
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
Generic terms are by definition incapable of indicating a
particular source of the goods and/or services, and cannot
be registered as trademarks and/or service marks; doing so
“would grant the owner of the mark a monopoly, since a
competitor could not describe his goods as what they are.”
See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence." Merrill Lynch, 4 USPQ2d
at 1143. See also In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Wm. B. Coleman
Co., 93 USPQ2d 2019 (TTAB 2010). The critical issue is to
determine whether the record shows that members of the
Serial No. 77849966
4
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
or services in question. Ginn, 228 USPQ at 530. Making
this determination “involves a two-step inquiry: First,
what is the genus of goods or services at issue? Second,
is the term sought to be registered ... understood by the
relevant public primarily to refer to that genus of goods
or services?” Id. Evidence of the public’s understanding
of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, trade journals,
newspapers and other publications. Merrill Lynch, 4 USPQ2d
at 1143, and In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Turning to the first inquiry, there does not appear to
be any dispute that that the genus is properly defined as
the recital of services set forth in the application,
“arranging for pickup, delivery, storage and transportation
of documents, packages, freight and parcels, specifically
animals and domesticated pets, via ground and air
carriers,” (examiner’s brief at unnumbered 5 of 13) (reply
brief at unnumbered 2 of 3). See Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991).
See also In re Country Music Association Inc., 100 USPQ2d
1828 (TTAB 2011).
Serial No. 77849966
5
Next we must determine how the relevant public
understands this genus. Applicant maintains that “pet
relocation” is a phrase or term of art that cannot be
defined simply from the dictionary definitions of the two
component words. (appl’s brief at 4). See In re Dial-A-
Mattress, 57 USPQ2d at 1810, citing In re American
Fertility Soc'y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed.
Cir. 1999). “‘[W]here the proposed mark is a phrase (such
as ‘Society for Reproductive Medicine’), the board ‘cannot
simply cite definitions and generic uses of the constituent
terms of a mark’; it must conduct an inquiry into ‘the
meaning of the disputed phrase as a whole.’” We agree, and
hence consider “PET RELOCATION” to be a phrase and apply
the analysis set forth in Am. Fertility Soc’y for marks
which may be considered as a phrase.
That said, we look to the record for uses of the term
“pet relocation” as a phrase in the context of the genus as
we have defined it, based on applicant’s own recital of
services. Applicant’s services are presumably described in
its specimen, submitted on October 15, 2009. We note in
this regard that applicant states in that specimen, as
shown below: “Every pet is different, and so is every pet
relocation.” In so stating, applicant itself describes its
Serial No. 77849966
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genus of service as “pet relocation.” Specimen submitted,
October 15, 2009, p.4.

This is more fully set forth in the following image:

The examining attorney also submitted evidence from
third parties that use the term “pet relocation” to refer
to the genus of services as described in applicant’s
recitation of services. Some examples include the
following:
Serial No. 77849966
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How does the pet relocation process work?
Pet relocation companies boast the ability to
serve the entire world. The practice itself is
fairly straightforward: pets are typically picked
up at the transferee’s residence, checked in at
the departure airport, then cleared through
customs upon arrival and delivered to their
owner’s new residence. Pet relocation
specialists are also usually responsible for
selecting appropriate flight arrangements,
carefully reviewing the import and export
documents, and counseling the transferee on the
intricate details of their pet’s move. . . . Most
reputable pet relocation companies are members of
a group called the Independent Pet and Animal
Transportation Association International, Inc.
(IPATA). dogtime.com. Attached to April 1, 2011
Office Action, p8.

Learn more about Royal Paws™ Pet Move Taxi
Shipping Services: Preferred pet relocation for
many corporations; Ground travel is with climate
controlled luxury SUVs; Airport pet cargo pick-up
and home delivery service.
Local and long distance dog and cat shipping.
Safe door to door transportation and pet
relocation. royalpaws.com. Attached to April 1,
2011 Office Action, p3.

Happy Tails Travel, Inc.: At Happy Tails Travel
we love to work with military families. We find
them to be respectful, friendly, patient,
flexible and organized, especially with the
involved process of an international pet
relocation. . . . Because the military doesn’t
always reimburse for military pet relocation
services, and as a way of saying “Thank you,” we
offer a discount to members of the armed forces
that have orders to move.
www.happytailstravel.com. Attached to September
13, 2010 Office Action, p4.

Animal Land Pet Movers: With offices on 5
continents, Animal Land specializes in
coordinating pet relocation to anywhere in world
[sic]. Of course we also handle domestic pet
relocations as well. Our specialty is handling
Serial No. 77849966
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your complete pet travel needs, wherever and
whenever the need arises. . . . Seeking the
expertise of a pet relocation professional can
assure you peace of mind. petmovers.com.
Attached to April 1, 2011 Office Action, p10.

TLC-PET TRANSPORT provides private ground
transportation throughout the entire USA. We
specialize in moving “one family at a time” to
provide you and your pet family the safest pet
relocation service possible.
www.tlcpettransport.com. Attached to April 1,
2011 Office Action, p12.

Airborne Animals-Specialists in pet
transportation: Pet relocation services are
available to individuals as well as corporations.
Pet moving services are not necessarily for those
people who want to take a pet on vacation, but
are more geared for the family moving to a new
location. www.airborneanimals.com. Attached to
April 1, 2011 Office Action, p16.

Pets on Board Transport, LLC: At Pets On Board
Transport we realize that your pet is a valued
member of the family. When choosing a pet
relocation company we know you want the safest,
most reliable pet transport available. Whether
you’re traveling locally to a dog event or moving
your household and your pets from one coast to
the other, the staff at Pets on Board Transport
will treat your pets like family.
www.petsonboard.com. Attached to April 1, 2011
Office Action, p18.

PAC Pet Air Carrier: Pet Air Carrier, LLC
provides complete door-to-door pet relocation
services. We specialize in International pet
transportation requiring complex documentation
and permits for rabies free countries such as
England, Ireland, Scotland, Wales, Australia and
New Zealand. . . . . member of IPATA THE PET
SHIPPING EXPERTS. www.petaircarrier.com.
Attached to April 1, 2011 Office Action, p20.

Serial No. 77849966
9
Meanwhile, in its own evidence submitted for the
purpose of showing acquired distinctiveness, applicant
submitted a news article about its president, using the
term “pet relocation” to describe the genus of services
performed by applicant, both in the text and in the title
of the article:
Austin Couple sells one business to grow pet
relocation services online: “I’m trying to be the
best pet relocator in Tokyo as much as I am in
Stockholm,” Kevin said. Kevin O’Brien said the
innovation of their business was staying ahead of
the trend in bringing services to the Web. He
spends as much time developing and modifying the
company’s Web site as he does on the pet
relocation part of the business.
AustinBusinessJournal January 29, 2010, Attached
to September 7, 2010 Response to Office Action,
p11.

As applicant notes, the test is not whether the mark
would be perceived as generic to “some portion” of the
public” but rather whether its “primary significance” to
the relevant public is that of genericness. (appl’s brief
at 2). Here the examining attorney has put forth numerous
clear examples of generic use of the term “pet relocation,”
used together as a phrase, to mean “arranging for pickup,
delivery, storage and transportation of documents,
packages, freight and parcels, specifically animals and
domesticated pets, via ground and air carriers,” as
Serial No. 77849966
10
explained above.2 Applicant, as well, uses the term “pet
relocation” to describe the genus of its services in its
submitted specimen, as it is also used in at least one of
the articles submitted by applicant into the record.
Accordingly, we have no doubt that, the examining
attorney has presented clear and convincing evidence that
the relevant public will understand the phrase “pet
relocation” to refer primarily to the genus defined as
“arranging for pickup, delivery, storage and transportation
of documents, packages, freight and parcels, specifically
animals and domesticated pets, via ground and air
carriers,” which is applicant’s recitation of services.
See Am. Fertility Soc’y, 51 USPQ2d at 1837. We find the
applied-for mark to be generic for the services for which
applicant seeks registration.

2 We note that the term is sometimes used in the articles as an
adjective, for example to say “pet relocation services.” Use as
an adjective is no less generic, since it conveys the same
concept. See Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628
(TTAB 1998), citing J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, § 12:10 (4th Ed. 1997) (“A rule of thumb
sometimes forwarded as distinguishing a generic name from a
descriptive name is that generic names are nouns and descriptive
terms are adjectives. However, this ‘part of speech’ test does
not accurately describe the case law results.”).
Serial No. 77849966
11
ACQUIRED DISTINCTIVENSS
As noted at the outset, the final Office Action, which
issued on April 1, 2011, addressed only the genericness
refusal. Accordingly, applicant likewise only addressed
the genericness refusal in its appeal brief. However, the
examining attorney for the first time addressed not only
the genericness issue but also disputed the sufficiency of
applicant’s 2(f) evidence. This was improper since if the
examining attorney had wanted to dispute the sufficiency of
the 2(f) evidence, the time to do so was during prosecution
of the involved application and by explicitly issuing a
final refusal of the application based on that issue. Cf.
In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, n.8 (Fed. Cir. 2010) (if applicant asserts mark is
inherently distinctive and asserts acquired distinctiveness
in the alternative, and if examining attorney accepts claim
of acquired distinctiveness, examining attorney must give
applicant option to either appeal refusal of inherent
distinctiveness or accept registration under Section 2(f).)
See also TMEP § 1212.02(i). Nevertheless, applicant in
turn responded to the examining attorney’s assertion
regarding the sufficiency of its showing of acquired
distinctiveness via its reply brief. Accordingly, for
completeness, and also because applicant and the examining
Serial No. 77849966
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attorney have addressed this issue on appeal, we exercise
our discretion not to treat this as a concession by the
examining attorney but rather to consider both the
examining attorney’s and applicant’s arguments presented in
this section.
Since applicant has applied to register its mark under
Section 2(f), the descriptiveness of the mark is conceded.
See The Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)
(“where an applicant seeks registration on the basis of
Section 2(f), the mark’s descriptiveness is a nonissue; an
applicant’s reliance on Section 2(f) during prosecution
presumes that the mark is descriptive.”) It is applicant’s
burden to prove acquired distinctiveness. Yamaha Int’l
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1006 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d
1224, 1229 (TTAB 1990); In re Hollywood Brands, Inc., 214
F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”). The
higher the level of descriptiveness, the greater the
proportionate showing of acquired distinctiveness need be.
E.g., In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1424 (Fed. Cir. 2007). For the reasons discussed in
Serial No. 77849966
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the “Genericness” section, the evidence amply shows that
“pet relocation” would be highly descriptive (if not
generic) of the applied-for services.
Accordingly, we look to the record to see if there is
sufficient evidence that “PET RELOCATION” has acquired
distinctiveness so that consumers associate it not
primarily with the services for which applicant seeks
registration, but rather with a single source for those
services. E.g., In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d at 1422. The evidence necessary to establish
acquired distinctiveness depends on the facts of the case,
but may include such factors as the length of use of the
mark, advertising expenditures, sales, survey evidence, and
affidavits asserting source-indicating recognition. See,
e.g., id. at 1424.
In addition to its claim of five years of
“substantially exclusive and continuous use,” applicant
submitted actual evidence of what it refers to as
“unsolicited media coverage” in its September 7, 2010
Response to Office Action.3 This included the following:
Relocating Americans are relocating their pets,
too. So http://www.petrelocation.com was founded
to provide custom moving services as well as
consumer information to those who will be moving
on with their four cats, Newfoundland or 16

3 This characterization is from applicant’s reply brief.
Serial No. 77849966
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parakeets. And yes, the group will help you move
your turtle to Tallahassee, and it will make sure
it’s legal to do so. The Washington Post,
October 22, 2009. Attached to September 7, 2010
Response to Office Action, p3.

Travelling with Fluffy or Fido? Be Prepared:
Kevin O’Brien of PetRelocation.com, which
specializes in pet transport, said, “Sedation is
by far the worst possible thing you can do to
your pet before their long flight. Sedation,
mixed with altitude, creates a dangerous cocktail
that prevents the animals from using their
natural ability to regulate their body
temperature and to control their own stress. We
suggest the human take the pill, as the pet will
have a better experience than most humans when
flying with commercial airlines.” The New York
Times, July 1, 2007. Attached to September 7,
2010 Response to Office Action, p.4.

In Depth: Eight Million-Dollar Businesses You’ve
Never Heard Of: PetRelocation.com, Austin, Texas;
Entrepreneur: Kevin O’Brien, 34 and Angie
O’Brien, 34; Product/Service: Pet travel; Start
Date: 2004; Start-up Costs: $97,000; Revenue in
2008: $2.5 million. Forbes.com [no date listed].
Attached to September 7, 2010 Response to Office
Action, p.7.

How to Travel Safely with Fido and Fluffy: If you
do decide to transport your pet in the cargo
hold, take steps to keep your pet as comfortable
as possible. Rachel Farris, director of PR and
new media for PetRelocation.com, a company that
helps owners move their pets across the country,
recommends that travelers get their pets
accustomed to their crates before they leave
home. [no URL; web page states “This article
originally appeared on Bing Travel in June,
2010”]. Attached to September 7, 2010 Response
to Office Action, p.8.

Two wolf hybrids take a flight from Oregon to
Texas: Wolves on a plane may seem frightening,
but with the Pet Relocation staff on board,
everything went as planned. Pet Relocation is an
Serial No. 77849966
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Austin-based company that offers one-on-one,
full-service arrangements using pet-friendly
airlines for domestic and international travel.
News8Austin.com, June 17, 2010. Attached to
September 7, 2010 Response to Office Action,
p.15.

Majority of Pet Owners Take Pets on Vacation: A
member of the Independent Pet and Animal
Transportation Association International (IPATA),
PetRelocation.com released its first annual
Summer Pet Travel Survey of more than 6,000 pet
owners worldwide, which found that most pet
owners travel at least once a year with their
pets. PR Log Free Press Release, August 2, 2010.
Attached to March 9, 2011 Response to Office
Action, p.6.

Austin Couple sells one business to grow pet
relocation services online: “I’m trying to be the
best pet relocator in Tokyo as much as I am in
Stockholm,” Kevin said. Kevin O’Brien said the
innovation of their business was staying ahead of
the trend in bringing services to the Web. He
spends as much time developing and modifying the
company’s Web site as he does on the pet
relocation part of the business.4

For the O’Briens, no move is too great nor animal
too exotic for their team and network of animal
movers and caretakers. PetRelocation.com handles
everything from paperwork to international
quarantine laws. AustinBusinessJournal January
29, 2010, Attached to September 7, 2010 Response
to Office Action, p.11.

4 This excerpt was also included in the “Genericness” section,
above, to show applicant’s submission of a third-party article
that uses the term “pet relocation” in a generic manner in
relation to the applied-for services. In this section, it is
included for the purpose submitted by applicant, to show acquired
distinctiveness of the mark.
Serial No. 77849966
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Applicant also submitted for the preceding five years,
annual revenues and advertising expenditures:5
Evidence of Acquired Distinctiveness: (1)
Applicant’s Annual Revenue from Sales: 2006-
$1,125,111.00 2007-$1,643,989.00 2008-
$2,460,000.00 2009-$2,800,000.00 2010-
$4,500,000.00 (Projected)
(2) Applicant’s Advertising Expenses: 2006-
$18,209.00 2007-$63,342.00 2008-$36,000.00 2009-
$37,600.00 2010-$60,000.00 (Projected).
September 7, 2010 Response to Office Action.

However, we find this evidence to be of limited
probative value because applicant provided no context for
how these numbers compare in the relevant industry (neither
did applicant confirm which portion, if any, of the income
and advertising may be ascribed to the “PET RELOCATION”
mark for the applied-for services). Accordingly, with such
little information, we can make no informed assessment as
to how these numbers would affect the acquisition of any
distinctiveness of the mark in becoming associated with a
single source and not merely with the services for which
applicant seeks registration.

5 Applicant submitted this information via the “Arguments”
section of its September 7, 2010 Response to Office Action. The
examining attorney did not object to the method of submission,
and treated the assertions as though they are of record.
Accordingly any objection is waived. See In re Franklin County
Historical Society, 104 USPQ2d 1085, ftnt 3. (TTAB 2012); TBMP §
1208 (3rd ed. rev. 1 2012) (“It is the better practice to provide
evidence as to sales figures and the like by affidavit or
declaration. However, representations by the applicant’s counsel
may, in certain circumstances, be accepted”.)
Serial No. 77849966
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We do take note that applicant attested to “at
least” five years of “substantially exclusive and
continuous use” of the mark, and did provide at least
half a dozen instances of media coverage. However, we
find that as set forth in the “Genericness” section
above, in fact applicant’s use is not “substantially
exclusive and continuous,” but rather that third
parties use the term “pet relocation” to describe this
type or genus of service. Nextel Communications Inc.
v. Motorola Inc., 91 USPQ2d 1393, 1408 (TTAB 2009);
Quaker State Oil Refining Corp. v. Quaker Oil Corp.,
453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972).
Accordingly, we find that applicant has not made a
sufficient showing of Section 2(f) acquired
distinctiveness.
Decision: The refusal based on genericness is
affirmed. The refusal based on mere descriptiveness
with failure to establish Section 2(f) acquired
distinctiveness is also affirmed.