Bookyourpet. Com

Trademark Trial and Appeal Board

Mar 20, 2017

No. 86687176 (T.T.A.B. Mar. 20, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bookyourpet.Com
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Serial No. 86687176
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Thomas D. Foster of TDFoster – Intellectual Property Law
for Bookyourpet.Com.
Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Cataldo, Lykos and Gorowitz,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Bookyourpet.Com (“Applicant”) has filed an application to register the mark
BOOKYOURPET in standard characters on the Principal Register for “Computer
application software for mobile phones, portable media players, and handheld
computers, namely, software for booking reservations for pet health services and
rating and reviewing pet health services” in International Class 9 and “Cloud
computing featuring software for use in booking reservations for pet health services
and rating and reviewing pet health services; Software as a service (SAAS) services
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featuring software for booking reservations for pet health services and rating and
reviewing pet health services” in International Class 42.1
The Trademark Examining Attorney has refused registration of the mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive of Applicant’s identified goods and services. When the
refusal was made final, Applicant appealed and requested reconsideration. The
Trademark Examining Attorney maintained the refusal to register and denied the
request for reconsideration. Thereafter, the appeal was resumed and is now briefed.2
For the reasons set forth below, we affirm the refusal to register.
Whether the Mark is Merely Descriptive?
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
used in connection with the goods or services of the applicant, is merely descriptive
of them. 15 U.S.C. § 1052(e)(1). “A term is merely descriptive if it 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 Aktiengesellschaft, 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). The determination of whether a
mark is merely descriptive must be made in relation to the goods or services for which

1 Application Serial No. 86687176, filed July 8, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 On November 17, 2016, the Board dismissed the appeal for Applicant’s failure to file a brief.
The Board subsequently vacated the dismissal on November 21, 2016 upon consideration of
Applicant’s motion to accept a late-filed brief and accompanying appeal brief.
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registration is sought, not in the abstract. In re Chamber of Commerce, 102 USPQ2d
at 1219; In re Bayer, 82 USPQ2d at 1831. This requires consideration of the context
in which the mark is used or intended to be used in connection with those goods or
services, and the possible significance that the mark would have to the average
purchaser of the goods or services in the marketplace. In re Chamber of Commerce,
102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). Evidence that a term is merely
descriptive to the relevant purchasing public “may be obtained from any competent
source, such as dictionaries, newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831
(quoting In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir.
1986)).
Based on the evidence or record, we find that Applicant’s mark is a phrase that
immediately conveys to prospective purchasers a function of the identified goods and
services, namely that Applicant’s computer software and software services are
designed to allow users to make reservations for one’s pet (e.g., cat or dog) for “pet
health services and rating and reviewing pet health services.”
The record reflects the following definitions of the word “book,” “your,” and “pet”:
book (used with an object) … to reserve or make a reservation for (a hotel
room, passage on a ship, etc.): We booked a table at our favorite restaurant.3

your of or relating to you…as possessor.4

3 Dictionary.com attached to June 7, 2016 Request for Reconsideration, TSDR p. 8.
4 Merriam Webster Dictionary (www.merriam-webster.com) attached to the October 25, 2015
Office Action, TSDR pp. 3-4.
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pet a domesticated animal kept for pleasure rather than utility.5

This dictionary evidence standing alone supports a determination that Applicant’s
mark, BOOKYOURPET, is a merely descriptive of the identified goods and services.
The fact that Applicant’s mark is comprised of three distinct words presented as
a single term does not lessen its merely descriptive nature. 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 or services, the combination
results in a composite that is itself merely descriptive. See, e.g., 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”), cited with approval in
Dalton v. Honda Motor Co., 425 F. App’x 886, 893 (Fed. Cir. 2011) (not precedential);
In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive
of real estate brokerage, real estate consultation and real estate listing services).
Such is the case here where no other meaning can be discerned from the mark when
considered in relation to the goods and services.
Our determination is bolstered by the evidence made of record by the Examining
Attorney showing that it is not uncommon for third parties to use the phrase “book

5 Id.
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your pet” or a close approximation thereof to denote pet-related services. By way of
illustration, we highlight the following:6
• The Equipaws Pet Services webpage entitled “BOOK YOUR PET” includes
instructions on how “to book…pet sitters or dog walkers for your beloved pet”;
• The Just Like Home Kennels webpage entitled “BOOK YOUR PET” directs
consumers to call a particular phone number to “book your pets”;
• The Care.com webpage provides instructions on how to reserve space for a pet
on a flight. Consumers are directed to “[c]all to book your pet” because they
cannot be booked online”;
• The advertisement from Spay Illinois on the Patch.com webpage instructs
consumers to “book your pet’s appointment for low-cost vaccine” and provides
a contact number to do so;
• The Drake Center webpage instructs consumers to “Call us at (760) 753-9393
to book your pet’s appointment”;
• The Kentucky Humane Society’s webpage tells consumers to “[c]all the S.N.I.P.
Clinic today at 502-636-3491 to book your pet’s appointment;
• The Ridgeview Veterinary Hospital webpage states that they “welcome your
call and will be happy to book your pet’s appointment”; and
• The VCA Companion Care Animal Hospital’s Facebook page states that “you
may now book your pet’s appointment ONLINE.”7
Applicant dismisses the probative value of this evidence because some of the excerpts
display the word “pet” in the possessive form, and also because some of the offered
services are different than those at issue here. Appeal Brief at p. 2-3. However, as
aptly explained by the Examining Attorney:
even though the pet sitting and airline flight booking services are not
identical to applicant’s services, they are akin to applicant’s services in that
they are all for use in connection with making reservations for services,
whether they be health, sitting and/or airline ticket flight services, for

6 The Examining Attorney failed to include the address (URL) for each web page; however,
we have considered the evidence insofar as Applicant did not object on this basis but in fact
argued the merits of the evidence in its brief. See In re International Business Machines Corp.,
81 USPQ2d 1677, 1682 n.9 (TTAB 2006) (Board considered web pages that did not include
web addresses because applicant did not object to them).
7 See June 14, 2016 Denial of Request for Reconsideration, TSDR pp. 2-9.
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people’s domesticated animals/pets. In addition, the fact that an
appointment is being booked/reserved does not negate the merely
descriptive nature of the wording “book your pet”. Rather, it merely
indicates that you can book your pet for an appointment by calling the
number/following the instructions on the third party webpages.8
That being said, we emphasize that the Examining Attorney’s evidence of third-party
use is not essential to our determination that Applicant’s mark is merely descriptive.
The Examining Attorney is not required to prove that others have used the mark at
issue or that they need to use it; the correct test is whether the mark conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB
2016). See also In re Walker Mfg. Co., 359 F.2d 474, 149 USPQ 528, 530 (CCPA 1966)
(“The question . . . is not whether the Board or others may or would utilize
‘CHAMBERED PIPE’ to describe applicant’s goods, but whether this designation
does, in fact, describe such goods.”).
Applicant argues that based on other definitions of the word “book,”
BOOKYOURPET has other meanings: booking a pet to appear at a social event such
as a children’s birthday party or offering a pet shaming website where pet owners can
post cute pet photos in a jail theme meme to charge or “book” their pets for
misbehavior. In support thereof, Applicant made of record examples of such services
and websites offered by other parties.9 The Board does not doubt the existence of such
pet-related services. However, descriptiveness is considered in relation to the

8 Examining Attorney’s Brief, 7 TTABVUE 6-7.
9 June 7, 2016, Request for Reconsideration
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relevant goods and services recited in the involved application, not in the abstract or
in relation to other products or services. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term
may have other meanings in different contexts is not controlling.” In re Franklin
Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). In other words, the question of whether
a proposed mark is merely descriptive is not determined by asking whether one can
guess, from the mark itself, what the goods or services are, but rather by asking,
when the mark is seen on or in connection with the goods or services, whether it
immediately conveys information about their nature. In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re Tower Tech, Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49
USPQ2d 1537, 1539 (TTAB 1998). Upon encountering Applicant’s proposed mark
BOOKYOURPET, consumers will immediately understand that it refers to the
function of Applicant’s computer software and software services – that is, facilitating
a consumers ability to book a reservation for a pet to obtain health services.
In addition, Applicant takes the position that its mark BOOKYOURPET when
considered in its entirety is incongruous and therefore not merely descriptive,
pointing to a long line of established case law that marks which consist of “an unusual
association or arrangement” are not merely descriptive. See, e.g., In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (SUGAR & SPICE not merely
descriptive for bakery products because it immediately calls to mind “sugar and spice
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and everything nice” from the well-known nursery rhyme). However, Applicant does
not point to an incongruous meaning of BOOK YOUR PET in relation to its goods and
services other than again referring to the alternate meanings as applied to other
services discussed above. Applicant’s mark does not project any sort of clever or
playful double entendre or incongruity, or for that matter a “unique” or “catchy
expression.” See id. As a whole, the mark does not have a separate non-descriptive
meaning.
In light of the foregoing reasons, we find Applicant’s mark BOOKYOURPET in
standard characters merely descriptive of “Computer application software for mobile
phones, portable media players, and handheld computers, namely, software for
booking reservations for pet health services and rating and reviewing pet health
services” in International Class 9 and “Cloud computing featuring software for use in
booking reservations for pet health services and rating and reviewing pet health
services; Software as a service (SAAS) services featuring software for booking
reservations for pet health services and rating and reviewing pet health services” in
International Class 42.
Decision: The descriptiveness refusal to register Applicant’s mark under Section
2(e)(1) of the Trademark Act as to the goods and services identified International
Classes 9 and 42 is affirmed.