Richard Chacon

Trademark Trial and Appeal BoardFeb 4, 2020

87709811 (T.T.A.B. Feb. 4, 2020)

Mailed: February 4, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Richard Chacon _____ Serial No. 87709811 _____ Thomas D. Foster of TDFoster - Intellectual Property Law, for Richard Chacon. Michael FitzSimons, Trademark Examining Attorney, Law Office 103, Stacy Wahlberg, Managing Attorney. _____ Before Cataldo, Wolfson, and Pologeorgis, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Richard Chacon (“Applicant”) seeks registration on the Principal Register of the standard character mark THE BULLY BREED COMPANY for “Kennel services, namely, dog breeding services” in International Class 44.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that 1 Application Serial No. 87709811 was filed on December 6, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b), based upon Applicant’s assertion of a bona fide intent to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 87709811 -2- Applicant’s mark is merely descriptive of the services identified in its application, because it “immediately describes an entity engaged in the activity of breeding bully- breed canines.”2 When the refusal was made final, Applicant appealed. Both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Evidentiary Objection The Examining Attorney objects to a screenshot from the website www.imdb.com that was submitted for the first time with Applicant’s brief. Trademark Rule 2.142(d) provides, in pertinent part: (d) The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. 37 C.F.R. § 2.142(d). See also, e.g., In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733- 1734 (TTAB 2018); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1203.02(e) and § 1207.01 (2019) and authorities cited therein. Because it is untimely, we have not considered the evidence submitted for the first time with Applicant’s brief. II. Mere Descriptiveness – Applicable Law Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which, when used on or in connection with the applicant’s goods or services, is merely descriptive of them. “A term is merely descriptive if it 2 March 26, 2018 Office Action, TSDR 1. Trademark Status and Document Retrieval (“TSDR”) citations reference the docket and electronic file database for the involved application. Serial No. 87709811 -3- 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 AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Descriptiveness is not considered in the abstract; rather, it is analyzed in relation to an applicant’s identified goods or services, “the context in which the [term] is being used, and the possible significance that the term would have to the average purchaser of the [goods or services] because of the manner of its use or intended use.” In re Bayer AG, 82 USPQ2d at 1831. That a term may have other meanings in different contexts is not controlling. Id. Thus, we evaluate whether someone who knows what “dog breeding services” are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Applicant’s mark is THE BULLY BREED COMPANY. When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. Id. (citing In re Oppedahl & Larson LLP, Serial No. 87709811 -4- 373 F.3d 1171, 71 USPQ2d 1370, 1372, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet); see also In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“because the combination of the terms does not result in a composite that alters the meaning of either of the elements, refusal on the ground of descriptiveness is appropriate”). On the other hand, we “must, of course, view the proposed mark as a whole.” In re Positec Group Ltd., 108 USPQ2d 1161, 1162 (TTAB 2013). A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite creates a double entendre as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363, 365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing head at one end, the head being of solid uninterrupted construction without prongs”). III. Arguments and Evidence In support of his Section 2(e)(1) refusal, the Examining Attorney argues that Applicant’s mark, THE BULLY BREED COMPANY, “is comprised entirely of merely descriptive and/or non-distinctive wording.”3 Continuing the argument, the Examining Attorney states, “In this case, both the individual components and the 3 Examining Attorney’s Brief, 9 TTABVUE 6. References to the briefs are to the Board’s TTABVUE docket system. Serial No. 87709811 -5- composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the wording merely describes an organization of persons engaged in the commercial activity of breeding of bully-breed dogs.”4 To support his determination that “bully breed” is merely descriptive, the Examining Attorney submitted screenshots from several third-party websites using the term “bully breed” to identify a variety of terrier-type dogs.5 For example, Bully Girl magazine notes that “[t]he most familiar bully breeds are the American Pit Bull Terrier, American Staffordshire Terrier, Boxer, Boston Terrier, Bulldog, and of course the American Bully.”6 The IBKC publicizes itself as the “international bully kennel club,” stating that the club is “dedicated to the registration and promotion of the bully breeds.”7 Screenshots from Applicant’s website corroborate the meaning of the term “bully breed,” as follows:8 THE BULLY BREED COMPANY SPECIALIZES IN AMERICAN BULLIES (EXOTIC BULLIES), ENGLISH BULLDOGS AND FRENCH BULLDOGS. OFFERING AND PRODUCING ONLY THE HIGHEST QUALITY BULLS. 4 9 TTABVUE 7. 5 See, e.g., http://www.animalplanet.com, attached to March 26, 2018 Office Action, TSDR 2; https://www.care2.com, attached to October 18, 2018 Final Office Action, TSDR 4, describing “14 ‘Bully’ Dog Breeds You Should Know.” 6 At http://bullygirlmagazine.com/about-bully-breeds/, attached to October 18, 2018 Final Office Action, TSDR 3. 7 At https://www.ibkcregistry.com, attached to October 18, 2018 Final Office Action, TSDR 16. 8 At http://www.thebullybreedcompany.com/, attached to Applicant’s April 18, 2019 Request for Reconsideration, TSDR 8. The website displays the above-quoted text in all caps. Serial No. 87709811 -6- Based on the record evidence, we find that the term “bully breed” is merely descriptive in association with Applicant’s dog breeding services. In traversing the refusal, Applicant argues that the term “COMPANY” adds an incongruity to the mark. The term “COMPANY” has several meanings. One meaning is “an association of persons for carrying on a commercial or industrial enterprise.”9 In this sense, the term merely indicates Applicant’s business type or entity structure. However, the dictionary definition made of record includes an alternate meaning to the term “company” as “a body of soldiers.”10 Applicant proposes that consumers will perceive the mark as a whole as creating “an incongruous image of a military unit of bully breed dogs organized into platoons lead [sic] by some headquarters or it suggests that there is a group of individuals with tenacious and loyal characteristics, such as those exhibited by the Bully breed of dogs, who are organized for some sort of military or beneficial reason.”11 Applicant urges that the connotation of “company” that it proposes is reinforced by the logo shown on Applicant’s website, suggesting a company of dogs ready to serve: 9 Request for Reconsideration, TSDR 7. 10 Id. 11 7 TTABVUE 7-8. Serial No. 87709811 -7- . Even if the illustration of three dogs in Applicant’s logo may be seen as suggesting a company of “soldiers,” the mark as applied-for does not include the illustration or any design elements, but rather consists in its entirety of the literal terms THE BULLY BREED COMPANY in standard characters. Thus, the alleged double entendre is not apparent from the mark itself. If the “alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant’s trade dress, advertising materials or other matter separate from the mark itself, the mark is not a double entendre.” In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) cited in In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, 23 (TTAB 2019) (“SCOOP is not a double entendre even if a second meaning might be attributed to it in the context of extrinsic evidence of its use.”); cf. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1376 (Fed. Cir. 2018) (rejecting applicant’s argument that CORN THINS and RICE THINS were double entendres conveying healthy characteristics of the products even if “other evidence may reasonably allow one to infer a healthfulness-related meaning”). Thus, we do not consider the mark to be a double entendre. Nor do we find that consumers are likely to perceive the asserted incongruity in Applicant’s mark as connoting a band of bully breed dogs organized as a military or other unit and ready for action. Serial No. 87709811 -8- Rather, consumers are likely to view “company” in Applicant’s THE BULLY BREED COMPANY mark in its rather more obvious meaning of an association of persons carrying on a commercial or industrial enterprise. Applicant submitted a copy of a third-party registration for the mark PETS & COMPANY12 for “pet boarding services; animal grooming services; [and] dog grooming services” and asserts the registration of this mark evidences a “disparate treatment of a similarly structured mark” that is inconsistent with the Examining Attorney’s treatment of THE BULLY BREED COMPANY mark. The third-party mark was registered on the Principal register without a disclaimer of any wording and without a claim of acquired distinctiveness under Section 2(f). The marks are distinguishable, however. The wording “& COMPANY” creates a different commercial impression from “THE … COMPANY.” The third-party mark suggests that in addition to “pets” being serviced by the registrant, another type of “group” is provided services. That connotation does not exist in Applicant’s mark. As is often noted, each case must be decided on its own facts and issues, and prior registrations are not dispositive of the case before us. See In re Cordua Rests, 118 USPQ2d at 1635; In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1027 (TTAB 2017) (comparisons to other cases “are rarely helpful, because the critical facts of different cases almost always differ substantially”). Registration of the third-party 12 Reg. No. 4794877, issued August 18, 2015; attached to September 25, 2018 Response, TSDR 6. Serial No. 87709811 -9- mark does not prove Applicant’s mark is not merely descriptive.13 We find that the primary significance of the term “COMPANY” in Applicant’s mark is that of an entity designation. Consumers are more likely to perceive the mark THE BULLY BREED COMPANY as describing Applicant’s breeding services rather than suggesting a company of soldier dogs, a “dog owned and run company or a company that creates a dog breed.”14 Finally, while Applicant correctly states the general principle that any doubt as to descriptiveness must be resolved in its favor, in this case, we have no doubt, based on the record, that the applied-for mark THE BULLY BREED COMPANY is merely descriptive of Applicant’s identified services under Section 2(e)(1) of the Trademark Act. IV. Conclusion We have carefully considered all arguments and evidence of record. Based on the record, we conclude that Applicant’s mark, in its entirety, merely describes the commercial activity of breeding bully-breed dogs. We further find that the combination of the terms does not create a double entendre or incongruity. Each component retains its merely descriptive or non-source identifying significance in relation to Applicant’s services, the combination of which results in a composite mark 13 We note too, that the Examining Attorney has submitted copies of four registrations for marks where the term “COMPANY” was included in a disclaimer. In Reg. Nos. 3847211 and 5528711, for the marks THE PITCHFORK LAND & CATTLE COMPANY (for cattle and horse breeding) and NEED MORE FEED LAND & CATTLE COMPANY (for horse breeding), the phrase “LAND & CATTLE COMPANY” was disclaimed. In Reg. Nos. 4403936 and 4394737, for the marks SEASIDE OYSTER COMPANY (for water plants and animal breeding) and SHOOTING POINT OYSTER COMPANY (for oyster breeding), the phrase “OYSTER COMPANY” was disclaimed. We have considered the registrations as some evidence that the term “company” may be viewed as a mere entity designation. 14 7 TTABVUE 4. Serial No. 87709811 -10- that is itself merely descriptive. Decision: The refusal to register Applicant’s mark THE BULLY BREED COMPANY on the Principal Register under Section 2(e)(1) of the Trademark Act on the ground that the mark, in its entirety, is merely descriptive of Applicant’s identified services is affirmed.