Ainsworth Pet Nutrition, LLC

Trademark Trial and Appeal Board

Oct 9, 2015

No. 86135218 (T.T.A.B. Oct. 9, 2015)

Mailed:
October 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ainsworth Pet Nutrition, LLC
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Serial No. 86135218
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Joy E. Taylor of Knox McLaughlin Gornall & Sennett,1
for Ainsworth Pet Nutrition, LLC.

Kelley L. Wells, Trademark Examining Attorney, Law Office 118
Thomas G. Howell, Managing Attorney.
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Before Cataldo, Ritchie, and Lynch, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Ainsworth Pet Nutrition, LLC (“Applicant”) filed an application to register
on the Principal Register the mark TRIPLE CHECK SYSTEM, and design,

1 Ms. Taylor was substituted by Applicant in a Revocation of Attorney filed after its
appeal brief.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 86135218
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as shown below, for goods identified as “pet food; pet treats,” in International
Class 31.2

The Trademark Examining Attorney issued a requirement that Applicant
disclaim the term “TRIPLE CHECK SYSTEM” apart from the mark as
shown on the ground that it is merely descriptive of a feature of the goods
pursuant to Section 6 of the Trademark Act Section 2(e)(1), 15 U.S.C. §
1052(e)(1). When the refusal was made final, Applicant filed this appeal,
which is fully briefed.
Disclaimer Requirement
A term must be disclaimed apart from the mark as shown if it is deemed
to be merely descriptive of the subject goods or services. See In re Grass
GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006); Trademark Manual of
Examining Procedure §1213.03(a) (July 2015). A term is deemed to be merely

2 Serial No. 86135218, filed on December 4, 2013, under Trademark Act Section 1(a),
15 U.S.C. §1051(a), with dates of first use and first use in commerce on February 9,
2013.
Ser. No. 86135218
3
descriptive of goods or services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. See, In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
see also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). Whether a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which registration is
sought, the context in which it is being used on or in connection with those
goods or services, 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. That a term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are. Rather, the
question is whether someone who knows what the goods or services are will
understand the mark to convey information about them.” 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). On the other
hand, if a mark requires imagination, thought, and perception to arrive at
Ser. No. 86135218
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the qualities or characteristics of the goods or services, then the mark is
suggestive. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003).
In support of the disclaimer requirement, the Examining Attorney
exclusively relied on Applicant’s own submitted specimen. The specimen,
shown below, contains the following wording:
our commitment to safety is unsurpassed. That’s why instead of
outsourcing, we will continue to manufacture everything
ourselves, in our own facilities, right here in the USA. Because
we are so committed to pet food safety we have instituted The
Ainsworth Pet Nutrition Triple Check System.

• Check One – Our commitment to Ingredient Safety
• Check Two – Ensuring Product Accuracy
• Check Three – Our 48-Hour Hold Before Release
Ser. No. 86135218
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Ser. No. 86135218
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Pointing to the specimen, the Examining Attorney argues that “A feature
of the goods is that they go through a TRIPLE CHECK SYSTEM before being
placed in the marketplace.” 6 TTABVUE 3. Applicant, however, argues that
its “TRIPLE CHECK SYSTEM” does not relate to “a feature of the goods
themselves but of the quality control systems of Appellant.” 4 TTABVUE 4.
Applicant further elaborates:
The Examining Attorney has taken the position that the
wording is descriptive of pet foods and treats because it relates
to the process used to ensure the safety of the goods before they
are put in the marketplace. However, there is nothing about the
words themselves which explicitly or implicitly state any
connection to pet food and treats, much less to the safety of the
goods, or to any kind of a process.
Ser. No. 86135218
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Id. at 5.3

For our analysis, we look to the actual identification of goods, which is
“pet food; pet treats.” To that end, we acknowledge the Examining Attorney’s
argument that “TRIPLE CHECK SYSTEM” describes a feature of Applicant’s
process of creating pet food and pet treats. However, there is no indication
that it describes a feature of the pet food and pet treats themselves. The
record includes no evidence of any third-party use of the term to refer to pet
food or pet treats, or any other evidence to support the Examining Attorney’s
position that the wording in question describes a feature or characteristic of
the identified goods. Simply, there is no evidence of record, including in the
specimen itself, that the term “TRIPLE CHECK SYSTEM” would convey an
immediate idea of an ingredient, quality, characteristic, feature, function,
purpose or use of “pet food; pet treats.”
Emphasizing that the goods, rather than the process, comprise the
identification in this proceeding, we find that it requires an additional mental
step to determine how “TRIPLE CHECK SYSTEM” relates to “pet food; pet
treats.” See In re MBNA America Bank N.A., 67 USPQ2d 1778. Additionally,
we note that, unlike in a Section 2(d) analysis, any doubts regarding
application of Section 2(e)(1), including in a disclaimer requirement, are to be
resolved in favor of the applicant. In re Conductive Services, Inc., 220 USPQ

3 Applicant distinguished this from a prior abandoned application for different
services.

Ser. No. 86135218
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84, 86 (TTAB 1983)(observing, “[w]e recognize that the suggestive/descriptive
dichotomy can require the drawing of fine lines and often involves a good
measure of subjective judgment.”). With that in mind, we find the term to be
suggestive, rather than merely descriptive, and the disclaimer unnecessary.
Decision: We reverse the disclaimer requirement.