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IIII]]111
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]111
USFC2006-1135-03
{03A243B4-187F-457F-B4E0-E20BEB06F8C2}
{70880}
{32-060606:122600}
{060106}
REPLY BRIEF
UNITED
STATES
COURT
OF APPEALS
No.
(Serial
IN RE PET
APPEAL
PATENT
TRADEMARK
FEDERAL
CIRCUIT
78/975,330)
FOOD
AND
THE
06-1135
No.
FROM
FOR
CENTERS,
LLC
UNITED
STATES
THE
TRADEMARK
TRIAL
AND
OFFICE
APPEAL
BOARD
FILED
U.S. COURTOF APPEALSFOR
THE FEDERALCIRCUIT
REPLY
BRIEF
FOR
APPELLANT
JUN
1 20O6
l/_i_HORBAL_
Timothy
D. Pecsenye,
David M. Perry,
BLANK
ROME
One
Logan
Esquire
LLP
John M. Whealan,
Solicitor
Nancy
Square
Philadelphia,
(215)
Esquire
PA 19103-6998
C. Slutter,
Esquire
Esquire
Cynthia
C. Lynch, Esquire
Associate
Solicitors
569-5500
Attorneys
for
Appellant
Pet Food
Centers,
LLC
RO.
Box
Arlington,
(571)
15667
VA 22215
272-9035
Attorneys
for
United States
Trademark
118351.00101/11512118v.2
the Director
Patent and
Office
of the
TABLE
OF
CONTENTS
P_
TABLE
I.
OF
AUTHORITIES
ARGUMENT
The
A°
ii
...........................................................................
Board's
Evidence
°
..............................................................
Decision
from
The
is Unsupported
Third
Solicitor's
2
Party
by
Sources
"Statement
Substantial
..................................
of the
Facts"
Mischaracterizes
the Nature
of the Third
Evidence
................................................................
.
The
Solicitor's
the
The
B°
II.
Board's
When
Specimen
of Use
CONCLUSION
OF
AND
OF
SERVICE
of the
Decision
Evidence
CERTIFICATE
PROOF
Nature
Legal
Third
Party
Properly
Analyzing
Party
2
Mischaracterizes
Evidence
is Unsupported
by
Pet
....................
4
Substantial
Food's
.............................................................
STATEMENT
COMPLIANCE
OF
RELIEF
.................................................
....................................................................
i
118351.00101/115t2118v.2
Argument
2
6
SOUGHT
......
12
14
15
TABLE
OF AUTHORITIES
CASES
In re Bed & Breakfast
Registry,
791 F.2d 157, 229 U.S.P.Q.
(Fed. Cir. 1986) ..........................................................................
In re Bright-Crest,
Colonial
Stores
In re Gyulay,
In re Quik-Print
505 (C.C.P.A.
Ltd.,
Inc.,
820
F.2d
204
U.S.P.Q.
157 U.S.P.Q.
at 1217
382
(T.T.A.B.
(C.C.P.A.
1979)
1968)
6
................
...................
.........................................................
Copy Shops,
Inc., 616 F.2d 523,
1980) .........................................................
ii
118351.00101/1t512118v.2
591
818
205
7
12
7
U.S.P.Q.
9, 10,
12
I.
A.
The
Board's
from
Third
As
set
main
Brief,
from
third
Section
and
its
distorts
forth
evidence
party
sources
certain
"
alleges
PTO
the
marketing
1Citations
asserts
pet
treats
to Pet Food's
to the PTO's
Joint
PTO
Brief
Appendix
Food")
Examining
Attorney
support
for
of the
mischaracterizes
evidence,
Party
the
Facts"
and
leaving
the
Board's
selected
that
that
will be referred
its
"Statement
evidence
Pet
Food's
product
to provide
evidence
from
shows
pets
can
play
Brief
will
be referred
to as "PTO
with,"
Br. at ";
to as "App.
Facts,"
shows
-- to
fun
of evidence
to be referred
of the
party
ability
such
Mischaracterizes
third
-- not
presentation
Facts"
Evidence
with
2
118351.00101/11512118v.2
the
("Pet
"Statement
of the
argument
principal
will continue
its
of such
of "[tJhe
In its
in
Solicitor
Third
products
at 4.
Evidence
J
that
feature"
Br.
both
the
of the
pet
LLC's
substantial
"Statement
fact
party
Centers,
by
provides
nature
its
as
"important
PetMart,
are
Nature
Substantial
offered
Indeed,
meaning
commingling
third
hardly
Solicitor's
the
Food
of record
unsubstantiated.
The
PTO
Pet
Argument,
plain
by
Sources
refusal.
fatally
In
is Unsupported
in Appellant
the
the
1.
the
Party
principal
decision
the
Decision
2(e)(1)
in
ARGUMENT
for
the
Happy
"that
exhibit
pet
. . .
Tails
competitors
specifically
to as "Br.
at
and citations
at A-
"
"; citations
to the
identifying
bones
the
and
"Dingo
chews.
its presentation
evidence
pet
treats
PTO
of the
from
toys
and
pet
on food
of the
for
Such
immediate,
significant,
Se____e_e
App.
at A-169.
reasonable
Toys"
merely
treats,
dog
pet
and
direct
of the
related
and
link.
hygienic
and
Goof
predominantly
focuses
food-related
aspects
an indirect
decision.
dental
slogan
"Dingo
not
an
chew
Dog
PTO
in its Brief,
the
reveals
for
web
Tastiest
Rather,
supplies,
The
Pet Products'
to amuse.
to be an umbrella
pet
to pet
Id____.
by Pet Food
evidence
treats,
amusement
playfulness,
Board's
of this
of the
and
"World's
and
to
between
other
Quality
for the
Contrary
distinction
name,
and
rawhide
the
establishes
slogan,
As set forth
and
the
treats
on Rex's
ability
play
and
reading
Br. at 22-24.
at best,
edible
assessment
118351.00101/11512118v.2
to ascribe
fillings,
as support
or the
a plain
highlights
despite
its use
system
PetMart
example,
and
lacking
release
however,
See
reliance
of play
at A-157-60.
failing
PTO's
likewise
made
See App.
evidence,
between
advertising
Br. at 3-4.
nutrition,
relationship
The
Edibles,"
features.
ingredients,
goods.
"Nylabone
Tails
treats,
material,
Ball,"
evidence,
Happy
as significant
Balls"
Goof
Rex's
bones.
focus
site
Toys,"
is
Br. at 4.
no mention
is on the
flavor
features.
Br. at 25.
"World's
Tastiest
sales
of dog
App.
at A-169.
toys,
is
A
Dog
pet
Like
the
PTO's
PTO
Br.
that,
while
is the
reliance
on
at 4 and
App.
taste
pet
toy
immediate
and
and
and
the
field
of pet
evidence
such
wording
PTO
Br.
"play
to
in
insubstantial
and
exclusive
party
and
"plaything"
to
treats.
App.
at A-170-190,
"plaything"
connection
The
have
with
argues
products.
for
treats.
Legal
Argument
may
blur
Br.
the
toys
at
pet
such
at 5, the
terms
are
distinguishing
with
shows
"toys",
merely
that
among
evidence
support
for
See
Br.
is
the
alleged
at 25-28.
Mischaracterizes
the
Evidence
and
18-20.
ordinary
pet
treats
However,
lines
4
118351.00101/11512118v.2
the
familiarity
but
in the
Br.
that
are
evidence
frequent
evidence
THINGS
pet
party
wording
as
Party
third
such
it
amusement
14-17.
explicitly
quality
that
PTO
limited
ultimately
at
by
the
highlights
PTO
conclusion
and
Third
Br.
to be
toys,
Solicitor's
and
the
pet
in quantity
of the
See
that
couching
products,"
treats,
play
Instead,
by
pet
purchasers,"
requisite
and
of PLAY
products
alleges
and
both
PTO
PTO
"familiar
the
to pet
Nature
The
the
which
treat
merely
for
or uses.
food
descriptiveness
2.
for
and
evidence
features
treat
thing"
achieve
and
consumers
pet
key
from
at 4-5
thing"
are
"toy
such
features
while
as applied
"play
the
products
fails
familiar
scent
significant
terms
combination
at A-20-23,
not
Additionally,
shows
alleged
separating
are
not
while
mutually
certain
the
two
third
categories,
the
evidence
in
The
shows
are
support
PTO
that
toys
instant
case
reveals
the
that
pet
treats
that
which
and
not
to pet
strained.
the
excerpts
the
tarter
reducers
unique
just
concept
great
taste
hours
of chewing
App.
at A-158-59.
excerpts
to
the
"website
at
18.
Such
play
and
amusement
the
PTO's
making
Happy
of the
decision.
The
fun
for
your
in
edible
dog
in
10
fun
flavors";
fun
in
a flavorful
However,
PTO
pet
when
position
and
under
products
support
2(e)(1).
fails
in the
Edible
Natural
for
and
foregoing
which
Atotally
Chews
PTOBr.
the
to
following
Chews
Bones
in
the
Edibles
assortment."
seventeen
indirect
also
Dental
"Rawhide
comparing
evidence
Section
support
. . . Homestyle
and
in the
of the
too.";"Nylabone
treats!
is far
predominantly
as a whole
finds
and
however,
to
register
"Greenies
5
118351.00101/11512118v.2
evidence,
required
record
PetMart:
and
surrounding
to
specifically
amusement
transitive
of logic
analysis
and
reading
be eminently
a refusal
Tails
play
a plain
path
upholding
substantial
evidence
for
treats,
to
constitute
intended
ascribes
straight
Board's
from
record's
are
analysis
A quantitative
support
the
not
decision.
Consequently,
PTO's
decision
does
Board's
PTOBr.
by
-- hardly
Board's
of the
as such."
outweighed
nature
of blurring
argues
many
promoted
to pet
evidence
. . .
Chews
at
19
. . .
and
three
there
is no
mention
whatsoever
support
of the
157-60.
The
from
Board's
vast
chocolate
butter,
of fun
decision
majority
drops
chicken,
or play,
and
even
apple
oatmeal
ruling.
Board's
Likewise,
evidence
from
Akoss
advertised
pet
supported
B.
The
standpoint
the
context
In
& Breakfast
819
(Fed.
submits,
Cir.
overarching
descriptive
only
Board's
--
peanut
the
dearth
also
Br.
that
atA-
evidence
of
at 22-24.
seven
amusement
out
of eight
or play.
decision
Br.
at
is not
the
also
PTO's
established
if it "immediately
that
it is from
public"
marketing,
and
assessment
is to
F.2d
157,
160,
at 9 and
PTO
Br.
analysis
loses
sight
by
this
conveys
Court,
Evidence
of Use
purchasing
791
Br.
Substantial
Specimen
agree
labeling,
see
by
Food's
6
118351.00101/11512118v.2
shows
to
ostensibly
Registry,
that
principal
Pet
descriptiveness
1986);
however,
chocolate,
Store
or "relevant
owner's
the
with
see
in
App.
in this
is Unsupported
PTO
average
-- that
substantial.
Id.;
the
evidence
evidence.
the
of the
the
-- typifies
reference
Analyzing
and
of the
Pet
that
featured
flavored
Accordingly,
Properly
Food
no
Decision
materials
re Bed
make
substantial
Board's
When
Pet
treats
at A-161.
by
treats
biscuits
the
App.
at all
to
supporting
and
is not
of pet
evidence
24
it is clear
-- and
with
advertising
be undertaken.
229
at
which
knowledge
the
U.S.P.Q.
818,
15-16.
Pet
of an
additional
is that
of the
Food
a mark
is
ingredients,
qualities
used."
re
In
or
re Gyulay,
Briaht.-Crest,
descriptiveness
forthwith,
"aptly
of the
Br.
Consequently,
of use
which,
and
The
say
Stuff'
sure,
the
Food's
which
from
Rather,
versatility
of the
also
In
1979)
a significant
function
and
support
in Pet
standpoint
for
the
or
cards);
see
Food's
specimen
of the
Board's
treats
Br.
at
not
the
including
be
This
also
average
decision.
See
App.
toys,
and
itself
must
not
of the
identified
the
primary
a range
reveals
indicia
'Other
Fun
Pet
of source
Fun
Stuff".
use
for
As
pet
for
multiple
The
as
the
treats
Pet
Food's
for
mischaracterized
goods.
To be
of uses
that
"Other
be
or
it describes
is a distortion.
about
as an
when
'Toys'
statement
chews,
shows,
as
merely
is used
use
specimen
used
anything
specimen
specimen
in the
can
10.
say
Food's
7
118351.00101/11512118v.2
see
COASTER-CARDS
the
Pet
THINGS,
evidence
where
it is
at 6-7.
does
of the
which
(T.T.A.B.
coasters
finds
support
PTO
PLAY
only
with
added);
591,592-93
PTO
assessed
goods
(emphasis
combined
the
"Appellant's
specimen
1217
conveyed
mischaracterizes
a pet."
at
succinctly"
Br.
of goods,
versatility
majority
PTO
goods.
trademark,
alleged
PTO
that
for
types
U.S.P.Q.
is insubstantial
at A-29
it to
204
goods,
when
consumer,
F. 2d
of the
finding
and
attribute
at 9.
820
Ltd.,
(affirming
characteristics
an
vast
-- and
the
one
immediately
pet
consumption
The
PTO
recognized
and
nutrition.
further
distorts
specimen
when
is Merely
Descriptive
Toys
for
Pets."
proverbial
treats
the
also
pet
informs
arguing
chews,
to play
the
toys
consumer,
Further,
to
'plaything'
is the
only
select
undue
[Pet
weight
packaging
At
cat
Food's]
and
to
and
best,
dog
commercial
the
and
basis
cartoon
tossing
impression
PTO
merely
of the
Pet
other
the
the
that
these
words,
pet
treats
product
as a
unfairly
purchasers
ascribes
it constitutes
the
only
consumer.
Food's
specimen
that
shows
and
reinforces
the
itself,
PLAY
THINGS.
The
mark
pets.
specimen
potential
17,
that
for
is multi-purpose
of the
at
the
toys
illustrates
8
I18351.00101/11512118v.2
as
specimen
encourage
Br.
puts
as
-- without
in
value
to entice
on
caption
that
THINGS'
Function
"confirms
All
the
presuming
used
also
function
items,
1 7.
to
image
a ball
at
offered
by
dress
fun
"the
a specimen
that
specimen
that
treats,"
Treats
of
Food's
"'PLAY
flawed
is that
suggest
of Pet
argument,
treats
the
Br.
-- is that
it pre-supposes
other
PTO
pet
trade
Pet
Food's
however,
in nature.
to
for
that
with."
of its
because
Pet
consumer
interpretation
ThePTO's
hat,"
-- that
average
plain
Used
at 12.
the
continues,
are
for
in
the
a portion
PTOBr.
support
PTO
the
When
"rabbit
evidentiary
The
captioning
by
image
a
emphatically
does
identified
not,
goods.
however,
To the
average
Pet
PLAY
THINGS
would
result
if the
same
specimen
or "other
fun
stuff."
Where
the
heads
not
a treat.
and
of both
there
goods,
cat
More
to
standing
upright
fancifully
"play
and
on
their
and
of edible
pet
treats,
evidence
descriptiveness
Thus,
and
fanciful
from
the
cartoon
do
legs.
dog
the
in support
so
Id.
tossing
with
Thus,
a ball,
specimen
Board's
of use
may
half
the
the
nor
have
one
dogs
another
where
size
of
a toy,
willing
the
while
the
without
on
depicts
requires
fails
of the
consumer
clearly
cartoon
cats
a leap
specimens
making
any
to constitute
decision
upholding
the
determination.
while
purchasers
the
alone
hind
a cat
the
such
nearly
that
between
to the
is the
as neither
let
depict
substantial
dog,
treat
a disconnect
presented
ball
the
a pet
of whether
were
the
insofar
catch,"
and
regardless
the
or display
purchasing
is a leap
fantastically,
of disbelief,
dexterity
Copy
the
the
Id.
suspension
mention
specimen,
describe
consumer
bears
toys
Food's
merely
will
the
perceive
nature
clarity
Shop,
Inc.,
specimen
of Pet
that
on
the
product,"
Food's
is depicted
which
the
PTO
specimen
in a case
PTO
relies.
9
118351.00101/11512118v.2
"shed[]
Br.
light
at
1 5, the
is clearly
such
See
on
how
ambiguity
distinguishable
as In re
generally,
Quik-Print
In
re
Quik-
Print
Copy
1980).
was
Shop,
In the
for
the
material.
the
was
ruling
was
The
that
on,
thus
upheld.
instant
case,
"Chews
of "pet
wording
treats"
in the
a significant
natural
SERVICE"
identified
pet
feature
applicant's
does
Pet
Food's
Stuff".
of Pet
App.
Food's
that
placed
immediate
emphasis
in In re
Quik-Print.
See
In re
507.
10
118351.00101/11512118v.2
literal
dog
nor
on
the
catch.
is no
The
is
mention
is emphasis
placed
goods,
"SAME-DAY
printing
Ouik-Print,
akin
Pet
THINGS,
identified
and
proof
case,
playing
There
QUIK-PRINT
printing
any
at A-29.
of the
in the
speedy
descriptiveness
PLAY
or characteristic
treats,
or
mark,
goods,
found
"SAME-DAY
In this
and
Court
The
on
re Quik-Print.
mark
advertising
fast
turn
of a cat
this
its
at 507.
not
(C.C.P.A.
QUIK-PRINT
own
and
Id.
505
services,
QUIK-PRINT
from
way
the
touted
a cartoon
case
U.S.P.Q.
applicant
in In
Fun
205
where
immediate.
apart
- Other
the
the
Court
shows
• Toys
on
be
525,
ali___a_a,
printing
however,
this
specimen
literal
inter
between
to
523,
Ouik-Print,
Where
link
by
F.2d
reliance
found
found
Food's
on
use
Id____.
at 506.
services
only
616
of In re
Board's
SERVICE,"
to
case
proposed
proper
Inc.,
services
205
U.S.P.Q.
at
The
Board
in In
use
of the
widespread
States
by
others
(quoting
the
establish
that
possessed
Board,
or fast
in this
complete
pet
treats.
See
shows
has
taken
on
and
projects
App.
overwhelmingly
marks
2,385,390
for
sheets,
mark,
thought
and
PLAY
part
SEA
likewise
of the
THINGS,
Id.
By
contrast
a
THINGS
to reach
In point
is
is to
in the
register
Register
record
analogous
without
Registration
No.
by
the
to
for
"bed
andA-73-146.
insofar
of
thereis
which
2,267,064
have
instance,
of PLAY
inspired
is suggestive
11
118351.00101/11512118v.2
it may
first
U.S.
atA-50-58
consumer
to
suggestiveness.
Principal
gifts
at 506.
significance
aresult,
practice
No.
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use
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record
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decision.
submits
treats,
12
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Board's
or characteristic
a mark
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the
accept
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to
and
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ultimate
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published
Dated:
may
PET
Board's
and
finding,
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for
June
goods,
FOODS
the record
requests
the PTO's
this
and
Office
Br.
Pet
Pet Food's
trademark
PE_OOD
CCENTE_LC
opposition.
1, 2006
David
M. Perry,
Its Attorneys
Esquire
BLANK
LLP
13
-- pet
substantial
Food
to the United
ROME
if it does
product
the Trademark
One Logan
Square
Philadelphia,
PA
(215) 569-5500
t18351.00101/11512118v.2
one
2(e)(1).
case
on
at 12, Pet Food's
only
reverse
this
even
not present
Section
remand
for
PTO
does
Court
is principled
descriptive
identifies
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under
that
position
be merely
identified
descriptiveness
respectfully
Appeal
while
19103
thus
Trial
States
to be duly
and
CERTIFICATE
I certify
that
this
under
Reply
typeface,
Brief
14 point
word
count
Fed.
R. App.
Federal
of the
OF COMPLIANCE
Rule
of Appellant
in size,
and
word-processing
of Appellate
has
contains
14
118351.00101/11512118v.2
a proportionately
2,470
system
P. 32(a)(7)(B).
Procedure
used
words,
32(a)(7)(B)
spaced
according
to prepare
this
to the
Brief.
PROOF
OF SERVICE
June
I hereby
certify
that
foregoing
Reply
Brief
for
indicated
below,
by U.S.
1, 2006
I am this
day
Appellant
causing
to be served
first-class
mail,
two
upon
addressed
Nancy
C. Slutter,
Esquire
Associate
Solicitor
Office
of the Solicitor
P.O.
Box
Arlington,
Phone
No.
15
118351.00101/11512118v.2
(2)
15667
Virginia
22215
571-272-9035
copies
the
person
as follows:
of the