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APPELLEE'S
BRIEF
BRIEF
UNITED
FOR
STATES
APPELLEE
PATENT
DIRECTOR
AND
OF THE
TRADEMARK
OFFICE
No. 06-1135
(Serial No. 78/975,330)
Dated: 4/26/06
UNITED
FOR
STATES
COURT
THE FEDERAL
IN RE PET FOOD
Appeal
OF APPEALS
CIRCUIT
CENTERS,
LLC
f_om the United States Patent and Trademark
Trademark
Trial and Appeal Board
Office,
JOHN M. WHEALAN
Solicitor
WILLIAM
NANCY
G. JENKS
C. SLUTTER
Associate
Solicitors
P.O. Box
Arlington,
Attorneys
Virginia 22215
571-272-9035
for the Director of the
United States Patent and
Trademark
Disclaimer:
Cover page
not included
as part of original
court
15667
record
Office
TABLE
OF CONTENTS
I.
STATEMENT
OF THE ISSUE
....................................................................
1
II.
STATEMENT
OF THE CASE
.....................................................................
2
III.
STATEMENT
OF THE FACTS
A.
..........................................................
. ........ 3
The Evidence Establishing
the Descriptive Nature of the
Mark PLAY THINGS for Pet Treats ..................................................
1.
Excerpts
Products
From Intemet Websites Offering Pet
....................................................................................
2.
Dictionary
3.
Appellant's
Specimen Showing How the Proposed
Mark is Used .............................................................................
B.
The Examiner's
C.
The TTAB
Evidence
Decision
Decision
........................................................
3
, .......... 5
....................................................................
............................................................................
• IV.
SUMMARY
V.
ARGUMENT
............ . .............................................
A.
Standard
of Review
B.
"PLAY TH]NGS" Is Merely Descriptive When Used
For P_/t Treats That Also Function As Toys for Pets ........................
1.
3
OF THE ARGUMENT
............................................................
_...................................
...........................................................................
A Term is Merely Descriptive if it Describes a
Characteristic,
Feature or Function of the Goods
...................
6
7
8
9
11
11
12
12
o
The Evidence
Establishes
That Purchasers
Will
Immediately Understand That "PLAY THINGS"
Describes a Feature of Appellant's
Pet Treats - That
The Pet Will be Able to Play With These Pet Treats ..............
1
Contrary
to Appellant's
Arguments,
Pet Treats Are Not Mutually
Vo
CONCLUSION
Pet Toys and
Exclusive
Products
...................
...........................................................................................
iii
14
18
20
TABLE
Abcor Development
Consolidated
Estate
Corp., In re, 588 F.2d 811 (CCPA
Edison Co. v. NLRB,
Dial-A-Mattress,
Beckwith,
252 U.S. 538 (1920)
Jolley,
MBNA
America
Meehanite
Merrill
Inc. v. Comm'r
1317(Fed.
..................................
11
. 12, 14
12
......................................................
12
Cir. 2002) ..........................................................
11
Bank, N.A., In re, 340 F.3d 1328 (Fed. Cir. 2003)
Co., 262 F.2d 806 (CCPA
....................
1959) ..............
12
12
Pierce, Fenner & Smith, Inc., In re,
828 F.2d 1567 (Fed. Cir. 1987)
Nett Designs,
.....................................
..............................................................................................
Metal Corp. v. Int'l Nickel
Lynch,
13, 15
of Patents,
In re, 820 F.2d 1216 (Fed. Cir. 1987)
In re, 308 F.3d
1978) .......................
305 U.S. 197 (1938)
In re, 240 F.3d 1341 (Fed. Cir. 2001
ofP.D.
Gyulay,
OF AUTHORITIES
........................................................................
In re, 236 F.3d 1339 (Fed. Cir. 2001)
.......................
i... 11
. ...... 3, 11-13, 16
On-Line Careline, Inc. v. America Online, Inc.,
229 F.3d 1080 (Fed. Cir. 2000) ............................................................................
11
Oppedahl
12
& Larson LLP, In re, 373 F.3d 1171 (Fed. Cir. 2004)
Pacer Technology,
Quik-Print
Stereotaxis,
In re, 338 F.3d 1348 (Fed. Cir. 2003)
Copy Shops, Inc., In re, 616 F.2d 523 (CCPA
In re, 429 F.3d 1039 (Fed. Cir. 2005)
Two Pesos, Inc. v. Taco Cabana,
.....................................
11
1980) ..........................
16
................................................
Inc., 505 U.S. 763 (1992)
iv
..........................
...................................
15
3
STATUTES
15 U.S.C.
§. 1052(e)(I)
...........................................................................................
12
15 U.S.C.
§ I052(f) ....................................................................................................
3
OTHER
AUTHORITIES
The American
The Cambridge
Heritage
Advanced
Dictionary
Learner's
Webster's
Revised
Unabridged
WorldNet
® 2.0, ©2003 Princeton
of the English
Dictionary
Dictionary
(2004)
(4 th ed. 2000)
...........
............... . .........................
..........................................
University
V
Language
...........................................
:...................
. ............
5
5
6
6
RULE 47.5 STATEMENT
(a)
The Director
OF RELATED
CASES
is not aware of any other appeal from the Trademark
Appeal Board in connection
with the trademark
application
Trial and
on appeal in this or any
other court.
(b)
The Director is not aware of a known
other court.
vi
related case pending
in this or any
BRIEF FOR APPELLEE DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
06-1135
(Serial No. 78/975,330)
IN RE PET FOOD CENTERS, LLC
Appeal from the United States Patent and Trademark Office,
Trademark Trial and Appeal Board
I. STATEMENT
OF TIlE ISSUE
The sole issue before this Court is whether
Trademark
merely
Trial and Appeal
descriptive
(e.g. dogs) "play"
its pet treats shows
container
pets.
Board's
(TTAB)
substantial
evidence
finding that "PLAY
when used on "pet treats," where the evidence
with their treats and where Appellant's
a dog and a cat playing
are pet treats described
THINGS"
"Toys,"
the
is
shows that pets
own specimen
and states that the contents
as "Chews,"
supports
used on
of the
and "Other Fun Stuff'
for
II.
STATEMENT
On March 24, 2003, Appellant
filed an intent-to-use
A 11-17.
application
Pet Food Centers,
to register
were identified
(A18-25)
for pet treats and pet toys because
a use for pet treats.
its application
a pet toy can be called a "plaything"
A 19. Pet Food Centers
2 and filed an Amendment
dates of use and a specimen
amending
the application
then dropped
to Allege Use, 15 U.S.C.
showing
to a use-based
applicationl
A27-29.
and Pet Food Centers requested
appealed
A192-217.
reconsideration,
the examining
that the proposed
attorney
to Appellant's
the Joint Appendix
THINGS"
{}1051(c),
The refusal was
request
the descriptiveness
describes
and also
for
refusal,
a use or purpose
for
those in the shape of a bone" and "those in the
brief will be referred
will be referred
"pet toys" from
reconsideration
to applicant's
maintained
mark "PLAY
the goods since pet treats "including
Citations
In response
and because
how the mark is used, thereby
made final (A 147-190)
to the TTAB.
under
on the basis that the mark is merely descriptive
providing
1
as "pet treats" and
A 15. In the first office action, registration was refused
15 U.S.C. § 1052(e)(1)
indicating
LLC, ("Pet Food Centers")
the proposed mark PLAY THINGS.
The goods in the original application
"pet toys."
it reflects
OF THE CASE _
to as "Br. at ,"
and citations
to as "A__."
Applicant filed a request to divide its two-class application.
A30-31.
The
"parent" application, Serial No. 78/228,919, retained the goods in International
Class 28 (pet toys); it is not the subject of this appeal and has been abandoned.
to
shape of a stick" can serve the purpose of a plaything to entertain or amuse pets.
A220. 3 The TTAB affm'ned, finding that "the phrase PLAY THINGS when used
in connection with pet treats would immediately inform the potential consumers..
• that the...
[pet treats] are things to be played with or serve to amuse." A6. Pet
Food Centers now appeals the TTAB's decision (A1-9) to this Court.
IlL
A.
STATEMENT
OF THE FACTS
The Evidence Establishing the Descriptive Nature
of the Mark PLAY THINGS for Pet Treats.
The evidence of record in support of the descriptiveness refusal § 1052(e)(I)
included: (1) excerpts from websites that market both pet toys and pet treats
(A20-25; 154-90); (2) several dictionary definitions (A19; 151-53); and (3) the
specimen of use submitted by the applicant to show how the proposed mark is used
on the goods. A29.
1.
Excerpts From Internet Websites Offering Pet Products.
The examining attorney relied on excerpts from several intemet websites,
including on-line pet supply retailers. This evidence included examples of
advertising for pet treats to showthat competitors are marketing pet treats that pets
3 A mark or term deemed to be merely descriptive may qualify for registration on
thePrincipal Register if the applicant can establish that the mark has acquired
secondary meaning. 15 U.S.C. § 1052(0; In re Nett Designs, 236 F.3d 1339, 134i
(Fed.
(1992)).
Cir.
2001) (citing
Two Pesos, Inc. v. Taco Cabana,
In this case Appellant
based on acquired
secondary
did not amend its application
meaning.
3
Inc., 505 U.S. 763, 769
to request
registration
can play with such as (i) the "Dingo Goof Ball" that contains "exposed jerky to
tempt your dog into _
chewing" A 157-8 (emphasis added); (ii) "Nylabone
Edibles described as "[a] totally unique concept in edible dog treats!...
Homestyle
added);
Edible
Chews...
and (iii) Rawhide.Bones
fun in a flavorful
was specifically
website
advertised
under the heading
Tastiest
A158 (emphasis
to provide
added).
of chewing
Each of these products
"Pet Treats."
Dog Toys."
"hours
A 157. See also Rex's
A169.
It is clear that while
are edible pet treats, pets "play" with these treats and have fun when
food is. Rather,
way, these treats are not simply quickly
before being eventually
and having
important
intended
A159 (emphasis
the "World's
doing so. Put another
playing
and Chews
assortment."
advertising
these products
fun with the treat.
feature 0fthese
The examining
and treat products
Treat"
jus t great taste in 10 fun flavors"
attorney
eaten, a pet also occupies
The ability to provide
examples
of various
Treat Ball" (A22), and the "Buster Cube"
Last, there are examples
"play thing" and "plaything"
combination
toy
Paws Tug 'N
(A23), reinforcing
to pet owners.
of use of the phrase "play things"
havethe
its time by
pet treats.
also provided
factor is important
like dog
fun for the pet is an
such as the "Busy Dog Ball" (A20), the "Power
(A21), "Tricky
that the amusement
particular
devoured
same meaning
in connection
to establish
with pet
that
products. A170-190. This evidence also shows that the terms "play thing" and
"plaything" are frequently used in the field of pet products and thus the term is
familiar to purchasers:
Feline behavior specialists say the right play things..,
behavior problems (A 171) (emphasis added);
Cats...
can reduce cat
[enjoy] quality food, litter and play things (A173) (emphasis
added);
Deprived
of toys and play things, your rabbit may turn to your furniture
other belongings
as chew toys (A177)
(emphasis
"Cats, dogs, rabbits, ferrets.,.they
see household
chew toys" (A 180) (emphasis added);
2.
Dictionary
The examining
"plaything,"
and
added);
wires as play things, as
Evidence.
attorney
confirming
also cited four dictionary
that a "plaything"
definitions
for the term
is a "toy" or simply "athing
to play
with,:
a. "something
to play with, a toy ''4 A19; 151;
b. "an object used for pleasure
A152;
or amusement,
such as a child's toy ''5
,f
4 The American Heritage Dictionary of the English Language
(4th ed. 2000) available at http://www.bartleby.com/cgi-
Electronic
bin/texis/webinator/ahdsearch?search_type=enty&query=plaything&db=ahd&
mit=Search
5 The Cambridge
Advanced
Learner's
Dictionary
http://www.dictionary.cambridge.org/defme.asp
"
(2004),
available
Sub
at
?key=60705&dict=-CALD
5
Version
c. "a thing to play with, a toy, anything that serves to amuse''6 A153;
d. "an artifact designed to be played
3.
Appellant's
used features
Appellant's
is Used.
spechnen,
Specimen
Showing
How the Proposed
a dog and cat tossing a ball back and forth.
Dictionary,
® 2.0, © 2003 Princeton
http://www.dictionarv.re
A153.
Mark
which, by rule, must show how tile mark is actually
6 Webster's
Revised Unabridged
http://www.dict.org/bin/Dict
7 WordNet
with ''7
(1998)
University
available
available
ference.com/search?q=plaethhlg.
The term "PLAY
at
at:
THINGS"
wording:
appears
"Chews
on the identified
in between
the dog and cat. And under the mark appears
° Toys • Other Fun Stuff."
Since the specimen
is for use
goods, it must follow that a pet treat can be either a "chew,"
"toy," or other "fun stuff."
Thus, the packaging
be played with by the pet. And purchasers
B.
The Examiner's
The examining
attorney
that the pet treats can
the mark in the context
amusement
a
of the
for their pets.
Decision.
entered
that the evidence
establishes
viewing
goods will expect these pet treats to provide
She explained
A29.
the
a final refusal
included
on May 3, 2004.
A147-90.
with the fn'st office action (A 18-25) was
made of record:
to establish
the descriptive
nature of the wording
"PLAY
THINGS"
in
relation to pet treats as something for pets to play with. The lack of the
exact wording "PLAY THINGS"...
does not render the wording any less
descriptive for goods identified as "pet treats," given that pets occupy or
amuse themselves with treats just as they might with toys ....
A148.
Internet
such as jerky
provided
bearing
evidence
in the nature of on-line pet supply retailers
dog treats (A 157), edibles chews, and rawhide
to show that "pet owners would immediately
the wording
characterized
third-party
'PLAY
THINGS'
as a 'plaything.'"
registrations
submitted
Id.
bones (A 158-59)
understand
by Appellant
attorney
was
that treats
feature such a use or purpose
The examining
listing items
and could be
also advised
that the
for a variety of goods and services
featuring the terms "play" or "things" such as GOOD THINGS
and THINGS
"PLAY
REMEMBERED
THINGS,"
includes
On reconsideration,
A219-21.
purpose
identified
She pointed
8 were
both words.
the examining
and therefore
• shape of a bone or stick.
C.
goods finding
attorney
maintained
conf'Lrms that "pet treats serve the
or amuse pets" and also that the goods are
cover any type of pet treat, including
the refusal
that "the phrase PLAY THINGS
argument's,
inform the potential
consumers
phrase
brings to mind a feature or purpose
* GOOD
THINGS
with pet
of those goods, and that
A6.
In rejecting
the TTAB advised that "[t]he issue is not whether
brings to mind the goods when used in a vacuum,
in the context
of the
when used in connection
phrase
• the phrase
those in the
of the mark as merely descriptive
the goods are things to be played with or serve to amuse."
Appellant's
the final refusal.
Decision.
affirmed
treats would immediately
mark,
A220.
The TTAB
The TTAB
since the proposed
A148-49.
out that the evidence
of a play thing, to entertain
broadly
not relevant
FOR THE LAND
but rather whether
of the go6ds when the consumer
in which the mark is used," i.e., in the context
FOR THE LAND,
with "soil and plant tissue analysis
Reg. No. 1,485,7!9
laboratory";
THINGS
NO. 1,022,232 for "engraving, embossing, embroidery,
laminating personal items for others .... "
one of
the
the
sees
of the
for use in connection
REMEMBERED,
monogramming
Reg.
andplastic
particular goods for which registration is sought. A6-7.
Reviewing the record,
the TTAB found that the evidence established that: (1) pet treats are marketed
with pet toys; (2) pet treats are marketed as a combination product with pet toys
such as combining a jerky dog treat inside a braided ball; and (3) pet treats are sold
as edible toys such edible chew bones in various shapes. A8. Put another way,
since many pet treats can be played with by an animal-prior to being devoured
(like a dog "chew" as listed in the specimen), the term "play thing" was merely
descriptive of a pet treat.
Moreover, the TTAB found that Appellant's own specimen supported the
descriptiveness refusal, since it: "demonstrate[s] that a pet treat, in addition to
being edible, is something to play with" given the specimen depicts two animals
playing and "lists the following items as the goods: chews, toys, and other fun
stuff." id. The TTAB found that the assertedmark PLAY THINGS
describes,
applicant's
without
conjecture
goods, namely
or speculation,
a significant
feature
"immediately
or function
of
[pet] treats that serve to amuse or may be played with."
Id____.
IV.
SUMMARY
The term PLAY THINGS
describes
a significant
OF THE ARGUMENT
is merely
feature or function
descriptive
of pet treats
since the term
of the treats, i.e., pets will "play"
with
the treat before they devour it. Moreover, contrary to Appellant's argument, the
evidence shows that pet treats and pet toys frequently overlap since items such as
chews and bones serve asboth treats and toys.
The substantial evidence supporting this finding, includes (i) website
excerpts featuring edible "chews" and bones, (ii) dictionary def'mitions, and (iii)
the specimen listing Appellant's PLAY THINGS pet treats as Chews • Toys •
Other Fun Stuff. The combined effect of this evidence establishes that pets will
play with treats as well as devour them. The evidence also includes listings for pet
toys that incorporate pet treats. Appellant's own specimen is further confirming on
this point since it says Appellant's
Stuff"
for a pet. Moreover,
websites,
particularly
as established
the amusement/play
by the evidence
they are ultimately
THINGS
consumed.
describes
Purchasers
their pet with hours of chewing
These items are basically
a significant,
fundamental
or "Other Fun
from the various
value of a pet fi'eat is an important
for treats such as dog chews and bones.
buy these treats to provide
PLAY
treats can be used as "Toys"
feature,
are encouraged
fun and pleasure
edible toys.
feature of the identified
these pet treats will also serve as play things for the pet. Put
differently,
pet toys are not the only thing animals play with, animals
10
before
Quite simply,
goods-that
with many pet treats.
to
also play
V. ARGUMENT
A.
Standard of Review.
Placement of a term on the fanciful-suggestive-descriptive-generic
continuum
Merrill
is a question
Lynch,
1987)).
of fact.
constitutes
In re Pacer Technology,
evidence
mind would
Inc., 229 F.3d
factual findings
Moreover,
two different,
drawn from the evidence
of record,
over the other is the epitome
evidence."
and 'such relevant
to support
Consolidated
"[W]here
for substantial
Edison
a conclusion."
Co. v. NLRB,
evidence
"Substantial
as a reasonable
338
305 U.S. 197, 229 (1938)).
conclusions
an agency's
decision
may reasonably
be
to favor one conclusion
that must be sustained
upon review
In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).
11
Careline,
Pacer Technology,
inconsistent
of a decision
evidence.
On-Line
1080, 1085 (Fed. Cir. 2000).
than a mere scintilla'
accept as adequate'
is merely
Id.
the TTAB's
F.3d at 1349 (citing
substantial
that the term PLAY THINGS
338 F.3d 1348, 1349 (Fed. Cir. 2003);
Online,
is 'more
finding
a factual finding.
This Court reviews
Inc. v. America
236 F.3d at 1341 (citing In re
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir.
Thus, the TTAB's
descriptive
Nett Designs,
for
B.
"PLAY THINGS" is Merely Descriptive
When Used for Pet
Treats that also Function as Toys for Pets.
1.
Section
A Term Is Merely Descriptive
If It Describes a
Characteristic,
Feature or Function of the Goods.
1052(e)(1)
on or in connection
them."
15 U.S.C.
immediately
provides
with the goods of the appellant
§1052(e)(1).
of the product
[it] is merely
A mark or term is merely
Conveys information
characteristics"
that a mark cannot be registered
concerning
or service.
of Patents., 252 U.S. 538, 543 (1920); Nett Designs,
been long recognized
describe
the 'full scope and extent'
Oppedahl
& Larson
A-Mattress
_,
Operating
it merely
perception
even if it does not
Cir. 1987) citing Meehanite
of the relevant
1959) ("word
one of the qualities
purchasing
descriptiveness.
In re MBNA
(Fed. Cir. 2003);
Nett Designs,
America
12
Metal Corp.
of the goods").
public sets the standard
236 F.3d at 1341.
See also In re
v.
may be descriptive
Orproperties
Bank, N.A.,
In re
Cir. 2004) citing In re Dial-
Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001).
describes
And it has
goods or services."
LLP, 373 F.3d 1171, 1173, (Fed.
820 F.2d 1216, 1218 (Fed.
or
Inc. v. Comm'r
236 F.3d at 1341.
of the applicant's
Int'l Nickel Co., 262 F.2d 806, 807 (CCPA
though
Beckwith,
of
if it
ingredients,
that a term "may be merely descriptive
used
descriptive..,
descriptive
"the qualities,
Estate ofP.D.
if"when
for determining
340 F.3d 1328,
The relevant
The
1332
purchasing
public
here would include inter alia dog owners who go to a pet store to purchase pet
treats.
Basic to the determination
principle
that descriptiveness
be made
in the context
588 F.2d 811,814
Appellant's
argument
consumer
purchasing
Appellant's
meanings
ascribed
ambiguous
fimess clothing
argument
correctly
and "thing"
Br. at 18. When viewing
it is readily
feature or function
def'mitions
conveying
of Appellant's
13
by one in the
a pet treat,
toys (A206).
showing
the various
"are so enigmatic
anything
descriptiveness
apparent
rejected
A6. The relevant
or children's
that the dictionary
but must
In re Abcor
into a pet store to purchase
(A202-04)
of immediately
goods as required,
a significant
Thus, the TTAB
bring "pet treats" to mind.
to the separate terms "play"
is inapposite.
is sought.
that the words "play things," when considered
as to be incapable
the identified
are not made in the abstract
1978).
here is, e.g., a pet owner walking
Likewise,
describes
(CCPA
may not immediately
not a person
pet treats"
determinations
is the well-established
of the goods for which registration
Dev. Corp.,
abstract
of descriptiveness
that PLAY
pet treats.
significant
and
about
in the context
THINGS
A8.
merely
of
2.
The Evidence Establishes
Understand
that "PLAY
that Purchasers Will Immediately
THINGS" Describes a Feature of
Appellant's
Pet Treats-That
With These Pet Treats.
"Any competent
understanding
surveys,
of a contested
dictionary
features
suffices to show the relevant
term, including
definitions,
Dial-A-Mattress,
substantial
source
trade journals,
240 F.3d at 1344.
evidence
Br. at 21.
contends
to pet treats."
The evidence
consumer
Citing the website
Br. at 15-17; 22-25, Appellant
play or amusement
Appellant
that play and amusement
of pet treats to the average
conditions."
the Pet Will Be Able to Play
purchaser
purchasing
testimony,
newspapers
contends
public's
consumer
and other publications."
that "the record is bereft of
are immediate
and significant
under ordinary
purchasing
evidence
from the pet supply retailers,
that "such evidence
utterly fails to ascribe
Br. at 25.
shows, however,
that online pet supply retailers
feature pet
treats as toys, e.g., as edible "chew bones" or as a jerky dog treat in for the form of
a braided
ball. A158-59.
"World's
Tastiest
play are significant
In addition,
The evidence
also shows dog treats advertised
Dog To.T._q_."A169.
features,
the dictionary
These advertisements
particularly
definitions
that a purchaser
that fun and
for dog treats such as chews and bones.
listing "plaything"
with; a toy," or "an object used for pleasure
confurn
establish
as the
or amusement,
seeing the mark PLAY
14
THINGS
as "something
to play
such as a child's
when selecting
toy,"
an edible
pet treat, will immediately understand that this is a treat that the pet can play with
as well as eat.
Moreover,
the specimen
submitted
mark is used on the goods provided
the mark.
evidence
See., In re Stereotaxis,
evidence
definitions
Applicant's
products
Appellant
showing
of the descriptive
descriptive
"consisted
and a press release by one of the applicant's
argues that "where
to constitute
substantial
Br. at 30-31.
However,
making
the specimens
any mention
evidence
in support
the specimen
fancifully
of
investors
about
depict a cat and dog
of edible pet treats, the specimen
of the descriptiveness
of use is evidence
in the market place and sheds light on how purchasers
the product.
As the TTAB pointed
out, a descriptiveness
determination."
will perceive
determination
is not
A6. Abcor Dev. Corp., 588 F.2d at 814 ("Evidence
context
in which a mark is used on labels, packages,
directed
to the goods is probative
Descriptiveness
light of any evidencethat
of the reaction
is decided
or in advertising
of prospective
in view of the particular
shows how the goods are marketed.
15
fails
of the product's
presentation
mark.").
nature of
and services.")
a ball, without
made in a vacuum.
how the proposed
Inc., 429 F.3d 1039, 1042 (Fed. Cir. 2005) (The
relied on to show that the term was merely
dictionary
tossing
further
by Appellant
of the
material
purchasers
to the
goods as well as in
And in fact,
Appellant concedes that descriptiveness is determined "within the context of the
owner's
labeling,
TTAB
frequently
information
Design,
relies on the specimens
attributes
materials."
and product
Br. at 9. Therefore,
literature
of the product.
Designs'
BIKE RACK,"
as the specimen
the Court determined
of use "advance[d]
bike racks represent
Sophistication...
immediately
or exhibit the greatest
support[ing]
the Board's
regard THE ULTIMATE
that tout the superiority
Likewise
emphasizing
Board's
that purchasers
descriptiveness
customers
advertising
that the "printing
_in a short time or quickly."
Quik-Print
because
of timeliness.
possible
development
The specimen
recited
touting
services
"SAME-DAY
will
descriptive
support
would immediately
will be rendered
in the application
(CCPA
SERVICE"
lending
of use was particularly
important
as
to the
convey to
or completed
in
did not include any
Id. at 524. Here, the mark is used on pet treats--the
16
or
bike racks."
that "QUIK-PRINT"
or duplication
the services
that Nett
Copy Shops, Inc., 616 F.2d 523,525
material
"THE
brochure
perception
that consumers
would receive quick service,
finding
of the phrase
BIKE RACK as a laudatory
of Nett Designs'
in In re Quik-Print
1980), the Cottrt viewed
finding
in Nett
that an advertising
the consumer
the
to provide
For example
236 F.3d at 1342, where the issue was descriptiveness
submitted
element
and advertising
about the various
ULTIMATE
phrase
marketing,
purchaser is aware that these are pet treats-- so the specimen confirms that these
pet treats are also chews, toys and other fun items, in other words, treats for the pet
to play with.
Accordingly, the TTAB correctly viewed the specimen as evidence of the
descriptive nature of the phrase "play things":
Applicant's specimens of use.., further demonstrate that a pet treat, in
addition to being edible, is something to play with or serves to amuse. The
packaging depicts a cat and a dog playing and lists the following items as the
goods: chews, toys, and other fun stuff.
A8. Although Appellant contendsthat "consumers look for - and advertisers
promote - characteristics like taste, nutrition, and chewability as significant to the
purchasing decision" when purchasing pet treats (Br. at 20), there is absolutely no
mention on Appellant's own specimen of the taste or nutritional value of the
product. The emphasis
is on the pet treat's
Thus, the value of the product
encourage
potential
purchasers
ability to provide
as a "plaything"
for the pet.
is the only basis offered
to select Appellant's
17
"fun"
pet treats.
to
3.
Appellant
Contrary to Appellant's
Arguments,
Pet Toys and Pet
Treats Are Not Mutually Exclusive Products.
appears
to concede
descriptive
of pet toys.
responding
to the examining
contends
Br. at 13-15.
that 'treats
lynchpin
contends
attomey's
of the Board's
difference
between
dog with the beloved
question,
that the evidence
or significant
for "some"
attributes
A30-31.
However,
exclusive
items, stating that
Br. at 12-13.
is the
....
Appellant
between
treat and toy is as simple as the well-
further
telling a dog, 'go get your toy!' versus tempting
'want a treat?'"
Br. at 20. Appellant
a
also argues
arereadily
Br. at 12, 16 and 20.
refuted by the evidence.
And even if this is true
treats that are more akin to pet food, i.e., immediately
not true of many pet treats.
This is particularly
Appellant
decision
to edible pet treats."
many pet treats are intended
included
dropped these goods in
fails to show that "play and the ability to amuse" are "immediate
These arguments
example,
refusal.
is at a minimum
[] serve to amuse or may be played with,'..,
that "[t]he distinction
understood
clearly
In fact, Appellant
that pet treats and pet toys are mutually
"[t]he premise
flawed
that PLAYTHINGS
The website
evidence
for play and amusement
devoured,
specifically
shows that
and are promoted
true for dog treats such as edible bones and "chews."
under the category
the following
of"pet
treats" the "Happy
products:
18
Tails PetMart"
it is
as such.
For
website
"Greenies Dental Chews Natural
A 158 (emphasis
"Nylabone
Homestyle
(emphasis
Rawhide
flavorful
Other website
tarter reducers
added).
Edibles A totally unique concept in edible dog treats!...
Edible Chews...
just great taste in I0 fun flavors" A158
added); and
Bones and Chews intended to provide
assortment"
A159 (emphasis added).
items include
tempt your dog into playful
the "Dingo
chewing"
(emphasis
Rawhide...
added).
[that] Provides
In addition,
treats as the "World's
Appellant
between
contends
A158 (emphasis
Hours
one website,
that this advertisement
"exposed
Similarly
6 Pack-Beefeaters
of Chewing
Pleasure!"
A169 (emphasis
"highlights,
The above pet treat products
or "ftin" feature of the treat in contradiction
that "a pet would handle
fun in a
jerky to
the
Non Stain
A 161
in large, bold print, advertises
added).
its pet
Although
rather that blurs, the divide
pet toys and pet treats, Br. at 25, we submit this evinces
the record lacks evidence
toy."
of chewing
added).
7-8" Variety
Tastiest Dog Toys."
as toys and play things.
"playful"
"hours
Goof Ball" that contains
online Akoss Pet Store sells a "Rawhide
Cuisine
and fun for your pet too.
use of pet treats
are marketed
to Appellant's
for the
argument
that
an edible treat as they would a
Br. at 19.
Despite
the above evidence,
pet treats are often marketed
Appellant
as complimentary
19
maintains
products..,
that although
"pet toys and
the Board and the
Examining Attorney improperly transferred the play and amusement characteristics
of the pet toy category, where such characteristics rank far behind those
characteristics which are truly significant for pet treats, namely taste, smell, size,
nutritional content, and the like." Br. at 21-22. Appellant
contends
evidence
are "immediate
fails to show that "play and the ability to amuse"
significant
attributes
from attorney
to edible pet treats."
argument,
and "amusement"
treats and pet toys as mutually
just the opposite--that
attributes
exclusive
competitors
such as taste and nutrition,
Br. at 12, 16 and 20. However,
there is no evidence
as valuable
that the
that
consumers
emphasize
their treats provide
aside
do not value "fun"
of pet treats or that consumers
products.
or
view pet
Rather, the record establishes
that in addition to characteristics
fun and amusement
for the pet.
V. CONCLUSION
Substantial
perceive
PLAY
evidence
THINGS
support the TTAB's
as merely describing
when the mark is used on pet treats.
evidence
provide
evidence
finding
that consumers
a feature or purpose
Both Appellant's
specimen
that pet treats such as "chews"
played
with by pets in addition to being eaten.
should
be affirmed.
20
Accordingly,
would
of the goods
and the website
and bones are frequently
the TTAB's
decision
Respectfully submitted,
JOHNM.
W_]I_ALAN
Solicitor
WILLIAM
NANCY
Associate
G.
JENKS
C. SLUTTER
Solicitors
P.O. Box 15667
Arlington, Virginia
571-272-9035
22215
Attorneys for the Director of the United
States Patent and Trademark Office
21
CERTIFICATE
I hereby
OF SERVICE
certify that on April 26, 2006, I caused
BRIEF FOR APPELLEE
AND TRADEMARK
DIRECTOR
OFFICE
two copies of the foregoing
OF THE UNITED
to be sent by Federal
Express
Timothy D. Pecsenye, Esq.
Blank Rome, LLp
One Logan Square
Philadelphia,
PA 19103
Associate
STATES
Solicitor
PATENT
overnight
delivery
to: