The Kyjen Company, Inc.

Trademark Trial and Appeal Board

Apr 12, 2012

No. 77571488 (T.T.A.B. Apr. 12, 2012)

Mailed: April 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Kyjen Company, Inc.
________

Serial No. 77571488
_______

William A. English of Vista IP Law Group LLP, for The Kyjen
Company, Inc.

Jessica A. Powers, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Ritchie, and Shaw, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On September 16, 2008, The Kyjen Company, Inc.
(“applicant”) filed an application to register DOG GAMES in
standard characters on the Principal Register for “pet
toys” in International Class 28. Applicant filed the
application under Section 1(a) of the Trademark Act, 15
U.S.C. §1051(a), alleging April 1, 2004 as the date of
first use and March 7, 2005 as the date of first use in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77571488
2
Initially, the examining attorney issued a refusal
based on mere descriptiveness, and when that was made
final, applicant filed an appeal to the Board on that
ground. On March 11, 2010, the Board remanded the
application to the examining attorney for consideration of
a Section 2(f) declaration filed by applicant, which the
Board construed as a request for remand. Thereafter, the
examining attorney refused registration on the additional
ground that the proposed mark is generic for the applied-
for services.1
The examining attorney has now made final the refusal
of the application under Section 2(e)(1) on the grounds
that (1) the proposed mark DOG GAMES is generic for the
applied-for services, or, in the alternative, (2) the
proposed mark DOG GAMES is highly descriptive and
applicant’s showing of acquired distinctiveness is not
sufficient to allow registration under Section 2(f) of the
Trademark Act.
GENERICNESS REFUSAL
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name

1 Where an applicant responds to a mere descriptiveness refusal
under Section 2(e)(1) by asserting acquired distinctiveness and
the examining attorney determines the designation is generic, the
examining attorney must issue a new nonfinal action refusing
Serial No. 77571488
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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); 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
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,

registration under Section 2(e)(1). TMEP §1209.02(a)(ii) (8th ed.
2011).
Serial No. 77571488
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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, both the examining
attorney and the applicant submit that the genus is
properly defined as the identification of goods set forth
in the application, “pet toys.” (appl’s brief at unnumbered
4) (examiner’s brief at unnumbered 3). We agree, and find
that the genus of goods at issue in this case is adequately
defined by applicant’s identification of goods,
specifically, “pet toys.” 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). This genus includes the “dog agility starter kits”
sold by applicant, with the items “high jump,” “open
tunnel,” “pause box,” and “weave poles,” since they are
specifically shown in applicant’s specimen of record. The
Serial No. 77571488
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specimen also indicates that this game equipment comes
complete with “game rules and more”:

Turning to the second inquiry, the examining attorney
argues that the term “dog games” is understood by the
relevant public primarily to refer to “pet toys.” The
following dictionary definitions are of record:
Serial No. 77571488
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Dog: A domesticated carnivorous mammal (canis
familiaris) related to the foxes and wolves and
raised in a wide variety of breeds. The American
Heritage Dictionary of the English Language (4th
ed. 2000); Attached to December 12, 2008 Office
Action, p2;

Game : 1. An activity providing entertainment or
amusement; a pastime; 4. The equipment needed for
playing certain games. The American Heritage
Dictionary of the English Language (4th ed. 2000);
Attached to December 12, 2008 Office Action, p4;
and

Toy: 1. an object, often a small representation
of something familiar, as an animal or person,
for children or others to play with; plaything;
3. something that serves for or as if for
diversion , rather than for serious practical
use. Dictionary.com (2009); Attached to June 12,
2009 Response to Office Action, p4.

We begin with the premise that the equipment described
in applicant’s specimen refers to “pet toys,” as identified
in its identification of goods. Launching off from that,
the examining attorney argues that applicant’s proposed
mark DOG GAMES is simply another way of referring to “pet
toys.” Noting that the dictionary definition of “game” may
be understood to include the equipment used to play a game,
the examining attorney argues that the equipment advertised
by applicant in its specimen would be called “dog games.”
This includes the “high jump,” “open tunnel,” “pause box,”
and “weave poles” referred to in the “dog agility starter
kits” of the specimen. It also includes the “puzzle toys”
Serial No. 77571488
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referred to in Exibit B to applicant’s Section 2(f)
declaration:

Serial No. 77571488
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To further illustrate the point, the examining
attorney submitted printouts from a variety of third-party
websites that refer to “dog games” generally when referring
to the genus of “pet toys” that include equipment such as
that in applicant’s specimen. The primary examples are as
follows:
Dog Toys Ideas: “Playing with dogs using dog toys
and dog games make dog sports quite enjoyable.”
Pets.iloveindia.com. Attached to July 9, 2009
Office Action, p6.

Dog toys and dog games to engage your dog senses
and develop his motor skills. Choose from a
large selection of pet toys for all dog breed
types – plush toys, rubber dog toys, dog balls,
tennis ball launchers and more. Keep your dog
healthy and active with this fine selection of
cheap dog toys and puppy toys.
www.terrificpets.com/pet_supplies/dog/toys.
Attached to July 9, 2009 Office Action, p3.

Why Our Dog Toys Are So Unique: And we are happy
to announce that we are now carrying Nina
Ottosson’s unique and challenging line of wooden
and plastic dog puzzles and dog games. Great
interactive dog toys that require dogs to use
their brain in order to “win” the game and earn
treats! www.activedogtoys.com. Attached to
March 31, 2010 Office Action, p202.

In addition, the Animal World Network website,
www.animalworldnetwork.com, uses the heading “Dog Toys &
Games” as a category descriptor for toys similar to those
applicant sells:

2 We note that several other websites submitted by the examining
attorney refer to the same “Nina Ottosson” company.
Serial No. 77571488
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Some additional evidence submitted by the examining
attorney referenced foreign websites or companies. We have
given little weight to these since pet toys do not appear
to be the type of goods that American consumers would be
inclined to purchase from abroad. See TBMP §1208.03(3rd
ed. 2011) (“Evidence from websites located outside the
United States may have probative value depending on the
circumstances.”); Cf International Business Machines Corp.,
81 USPQ2d 1677, 1681 n.7 (TTAB 2006); In re King Koil
Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006); In re
Remacle, 66 USPQ2d 1222, 1224, n.5 (TTAB 2002):
Dog-games.co.uk: A comprehensive range of mental
activity toys to stimulate your dogs [sic]
working instincts & senses – see Chewing;
Interacting with You; Playing Alone & Preventing
Boredom; and Soothing; An interesting selection
Serial No. 77571488
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of highly recommended books. www.dog-
games.co.uk. Attached to July 9, 2009 Office
Action, p4.

Pet Product of the Week: Cool Interactive Dog
Games: I have the perfect solution for you: the
new interactive doggie games from The Company of
Animals in the UK.
www.thoughtsfurpurs.com/dogs/cool-interactive-
dog-toys-and-games. Attached to June 11, 2010
Office Action, p2.

Other evidence references the term “DOG GAMES” used
apparently as a mark, rather than in a generic manner:
This web site is now regularly read by over 1500
dog owners a day from all over the world and we
are gratified with all the wonderful feedback we
have received – thank you: The Material (both
written and pictorial) contained throughout this
web site may not be reproduced without the prior
written approval of Dog Games Ltd. © 2006-2008
All Rights Reserved. www.dog-games.co.uk.
Attached to July 9, 2009 Office Action, p5.

Meanwhile, we note that some of the evidence submitted
by the examining attorney clearly distinguishes between
certain types of games and toys, such as games played
without toy-like equipment:
Dog Games – Top 5 Games That Will Tire Your Dog
Out: Playing dog games with canine pet provides
your beloved with his much needed physical and
mental stimulation. This also gives you the
benefit of reinforcing his obedience training in
a fun way as you establish a deeper relationship
with him. However, not every dog is thrilled
with playing ordinary fetch all the time
especially if he is very intelligent. Many dog
breeders, vets and trainers agree that the best
Serial No. 77571488
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dog games are those that provide exercise and
challenge accompanied with positive reinforcement
by giving the animal a reward for accomplishing
what you want. www.ezinearticles.com/?Dog-Games-
Top-5-Games-That-Will-Tire-Your-Dog-
Out&id=4339225. Attached to June 11, 2010 Office
Action, p21.

A party isn’t a party without great dog games!:
Hot dog Dunk – Water Relay - www.squidoo.com.
Attached to June 11, 2010 Office Action, p29.

The examining attorney also submitted evidence in
which “dog games” references are to items that would not
likely be classified as toys, such as books about playing
games with toys (www.dogshelpline.com), shown below:

Serial No. 77571488
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Finally, the examining attorney has made of record
evidence that we would categorize as “hybrid,” i.e., it is
not clear from the submission whether “dog games” is being
used in a generic manner for pet toys, or is being used to
refer to play activity.
Dog Games – Fantastic Games to Play With Your Dog
– Hide a toy or treat in the house or outside.
Ask your dog to find it. You may need to help
him a little. www.articlebase.com/pets-articles-
dog-games-fantastic-games-to-play-with-your-dog-
1470688.html. Attached to June 11, 2010 Office
Action, p17.

Dog Games and Activities for Mental and Physical
Well-Being: Dog Toys Challenge a Pet’s Mind: The
Ralston Purina Company suggests playing with a
dog after you’ve been away for a while or when
you notice he has extra energy to burn. Try
tossing a flying disk to your dog. Start by just
letting him play with the disk, chewing it or
playing tug. Then play toss and return. Even if
the dog just runs around with the disk in his
mouth, that’s okay too – the goal is to get him
moving and interacting.
www.suite101.com/content/dog-games-and-activites-
for-mental-and-physical-well-being=a312101.
Attached to January 12, 2011 Office Action, p14.

In order to prove a mark to be generic, the examining
attorney must satisfy a heavy burden with “clear evidence.”
Merrill Lynch, 4 USPQ2d at 1143; see also In re Gould Paper
Corp., 5 USPQ2d at 1111; In re Wm. B. Coleman Co., 93
USPQ2d 2019. Here the examining attorney has put forth
only four clear examples of generic use of the term “dog
games,” to mean “pet toys,” as explained above. This is in
Serial No. 77571488
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contrast to use of the term on foreign websites, use of the
term as a mark, the inconclusive uses, see In re Volvo
White Truck Corp., 16 USPQ2d 1417, 1421 (TTAB 1990), and
overridingly, use of the term “dog games” to mean games
played with dogs without using “pet toys” (either with non-
toy-like equipment, or without equipment at all; or using,
perhaps, equipment such as books to think up games. The
four clear examples of generic usage in this country of the
term “dog games” as referring to equipment as “pet toys” is
insufficient, in light of at least as many counter-examples
of record, to convince us that the public “clearly”
understands the term “dog games” to refer primarily to “pet
toys.” H. Marvin Ginn Corp., 228 USPQ at 530. In this
regard, the evidence points just as easily to the public
distinguishing between the concepts of “pet toys” and “dog
games,” even where equipment may be used. Here we differ
from the dissent in finding that not all types of equipment
necessarily would be characterized as ‘games’ even if used
in the pursuit thereof. The evidence simply does not bear
that out. Doubt on the issue of genericness is resolved in
favor of the applicant. In re DNI Holdings Ltd., 77 USPQ2d
1435, 1437 (TTAB 2005). Accordingly, we do not find the
applied-for mark to be generic for the goods for which
applicant seeks registration.
Serial No. 77571488
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MERE DESCRIPTIVENESS
We turn next to the refusal that DOG GAMES is merely
descriptive of “pet toys” and that the showing under
Section 2(f) is insufficient to establish acquired
distinctiveness. Although applicant has sought
registration under Section 2(f), we do not take applicant’s
assertion as a concession that the mark is not inherently
distinctive, since the Section 2(f) claim was asserted in
the alternative. See In re Thomas Nelson, Inc., 97 USPQ2d
1712, 1713 (TTAB 2011) (“[a]n applicant can avoid the
admission that its mark is not inherently distinctive if it
makes the claim of acquired distinctiveness in the
alternative and files an appeal of the refusal on the basis
that the mark is not inherently distinctive”); TMEP Section
1212.02(c) (8th ed. 2011); Compare 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.”) In any event, as discussed in the prior
section under “Genericness,” we have no doubt that
applicant’s mark is merely descriptive of “pet toys” in
that the term “dog games” would be understood by the
Serial No. 77571488
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relevant public to describe a feature or function of the
“pet toys” identified in the application, specifically,
that the “pet toys” offered by applicant may be used to
play games with dogs. In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002). See also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corporation, 226
USPQ 365 (TTAB 1985).
ACQUIRED DISTINCTIVENSS
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”). Evidence of acquired distinctiveness
can include the length of use of the mark, advertising
expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition.
It is the examining attorney’s position that DOG GAMES
is so highly descriptive that applicant’s evidence is not
sufficient to establish acquired distinctiveness. As
Serial No. 77571488
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discussed above in relation to the genericness refusal, the
evidence submitted by the examining attorney was of a mixed
nature. While we are convinced that applicant’s mark is
merely descriptive of the goods sought to be registered, we
do not find the term “dog games” to be highly descriptive
of “pet toys.” The evidence indicates that while a “toy”
may be used to play a “game,” the word “game,” even when
understood as “equipment,” is not quite the same as a
“toy.” Accordingly, we find the term “dog games” to be
merely descriptive rather than highly descriptive for “pet
toys.”
In support of its claim of Section 2(f) acquired
distinctiveness, applicant submitted a declaration from its
secretary and cofounder, together with exhibits thereto,
attesting to just over five years “substantially exclusive
and continuous use”; (Hansen Decl. Para. 4); sales in all
fifty states; (Id. at Para 7); applicant’s “DOG GAMES
products have generated over a million dollars of revenue”
for applicant; (Id. at Para. 12); applicant spends
“approximately $48,000 per year in advertising DOG GAMES
products”; (Id. at Para. 8); applicant “sells its DOG GAMES
products to a wide variety of pet stores and pet product
vendors, including online vendors and retail companies”
including “PETSMART, PetCo, PetStore.com, and Amazon.com”;
Serial No. 77571488
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(Id. at Para. 11); and applicant has “promoted DOG GAMES
products at industry trade shows around the country”; (Id.
at Para. 10). The Hansen declaration included customer
reviews of products featuring the DOG GAMES mark as Exhibit
F. Samples include the following:
Great Product!: I purchased this for my five
month old cockapoo and it was great. He learned
the high jump and tunnel in 2 days and 3 days
later he learned the weaving poles. The spikes
do break easily and that was the only problem.
This is great for a starter kit but you will
eventually need to get real equipment if you
start to get serious about agility.
www.petsmart.com.

The best course you can get!: When I got this in
the mail as soon as I got home I went outside set
it up and trained my dog. She showed improvement
on attitude and in love and effection! [sic]
This product is amazing. It’s also really easy
to teach her new things now. I love this product
better than the higher traing [sic] ones I give
this two paws up!! www.petsmart.com.

Neat: This is awesome! I couldn’t find agility
stuff anywhere! www.petsmart.com.

Big help: I have a 3 year old Golden Retriever.
Hes [sic] can jump over 4 ft and was scared to
death of tunnels! I bought this home, set it up,
let him loose next to it, and within 2 weeks, he
has run the tunnels! Also very heavy built! He
chewed it a few times and it didn’t rip! Now we
built him a grass arena w/ a roof and spotlight!
We chose this over pro stuff! 2 thumbs up!
www.petsmart.com.

I loved it: This product was great for my 4 year
old Rottweiler mix. He’s an energetic dog, but
the only thing is that the “pause box” is
supposed to be a pause table. Otherwise this was
Serial No. 77571488
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great! Yes I would recommend this product to my
friends. www.PetStore.com.

Affordable fun for your dog: I have a golden
retriever as well as a Pembroke welsch corgi.
They love their food and tend to inhale it. But
they are also very smart and tend to get board
[sic]. I bought the Star Spinner as well as the
paw print shaped toy by this same company and
they had a blast from the moment I filled it and
set it on the floor! www.amazon.com.

Finally, applicant included a news article in support
of its Section 2(f) claim of acquired distinctiveness.
The Dog Daily: Fetch This: Kyjen Dog Games Dog
Agility Starter Kit: Dog agility is fast becoming
the most popular sport for canines. Once you try
out this Dog Agility Starter Kit, you’ll soon see
why. The Dog Daily, August 25, 2008. Attached
as Exhibit G to Hanson Declaration, in December
13, 2010 Response to Office Action, p34.

Given that DOG GAMES is not highly descriptive of pet
toys, we are persuaded by the evidence of record that the
term DOG GAMES has acquired distinctiveness for “pet toys.”
Decision: The refusal based on genericness is
reversed. The refusal based on mere descriptiveness
and applicant’s insufficient showing of acquired
distinctiveness is reversed. The application will
proceed to publication.
* * *
Serial No. 77571488
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Shaw, Administrative Trademark Judge,
dissenting:

I respectfully dissent from my colleagues’ ruling on
the genericness of applicant’s mark. I would affirm the
Examining Attorney’s holding that DOG GAMES is generic for
pet toys. The Examining Attorney has provided clear
evidence to support finding that DOG GAMES is a generic
term.
The definition of “game” submitted by the Examining
Attorney includes “[t]he equipment needed for playing
certain games.”3 Applicant’s goods as described on the
specimen of record fall squarely within this definition.
The “Dog Agility Starter Kit” identified in applicant’s
specimen shown above consists of equipment for a “fun
obstacle course for dogs” and includes “weave poles,” a
“start/finish line,” an “open tunnel,” and even “game rules
and more.” Applicant’s goods are clearly a game for dogs
or a “dog game.”
The record also contains third-party internet evidence
showing that the term “dog games” is commonly used to refer
to both equipment and activities intended to keep dogs
active and healthy. Further, the Animal World Network

3 The American Heritage Dictionary of the English Language (4th
ed. 2000).
Serial No. 77571488
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website uses the heading “Dog Toys and Games” as the
heading for an entire page of dog toys and games, such as
applicant’s, offered for sale. This evidence demonstrates
that the public, when seeing the term “dog games” used in
connection with pet games and toys, would understand the
term to refer to precisely the kinds of goods applicant
produces.
The struggle to find this mark generic occurs because
applicant has identified its goods as “pet toys” which is
so broad that it defies clear definition and disguises the
real nature of applicant’s goods. The majority correctly
identifies the genus from the identification of goods as
“pet toys” but this determination does not end the genus
inquiry. When faced with such a broadly worded genus it is
necessary to define exactly what is included in the genus.
Specifically, the central question is whether the genus
“pet toys” includes games for dogs or “dog games.” The
evidence of record shows that it does. Applicant argues
that its “dog toy products are not ‘games’” (Applicant’s
Br. at 3) but this statement is contradicted by the
specimen which clearly shows DOG GAMES being used on games
for dogs. The applicant’s specimen submitted in support of
this application shows use of applicant’s DOG GAMES mark on
games for dogs. This specimen has been accepted by the
Serial No. 77571488
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Office to demonstrate use of the mark on “pet toys.” Thus,
dog games must be included within the genus “pet toys.”
The majority first takes issue with the number of
excerpts from websites put forth by the Examining Attorney
and notes that the record includes “only four clear
examples of generic use of the term ‘dog games’ to mean
‘pet toys.’” But this finding ignores the dictionary
definitions in the record and, most importantly, ignores
the applicant’s own specimen which shows that the goods are
games for dogs.
By ignoring the applicant’s specimen which shows that
the goods are pet toys in the nature of games for dogs, the
majority also errs by viewing the mark in the abstract with
no consideration given to the actual goods at issue. The
majority finds that since the public understands the term
DOG GAMES to describe games played by dogs both with and
without “equipment,” DOG GAMES cannot be generic because
the public doesn’t understand the term to “refer primarily”
to pet toys. This analysis is incorrect because, as the
Board has stated many times before, a mark is not to be
viewed in the abstract but must be viewed in relation to
the specific goods or services in connection with which the
mark is encountered by prospective purchasers. Here,
applicant’s goods are “pet toys” including the agility game
Serial No. 77571488
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for dogs shown on the specimen of record. When the mark is
viewed by prospective consumers in relation to the
applicant’s goods, i.e., pet toys in the nature of games
for dogs, the consuming public would immediately understand
that the term DOG GAMES refers primarily to goods such as
applicant’s notwithstanding that they have been broadly
identified as “pet toys.”
The Examining Attorney's refusal to register the mark
as generic should be affirmed.