DPC Pet Specialties LLC dba Ainsworth Pet Nutrition

Trademark Trial and Appeal Board

Nov 2, 2015

No. 86093164 (T.T.A.B. Nov. 2, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re DPC Pet Specialties LLC
dba Ainsworth Pet Nutrition
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Serial No. 86093164
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Robert M. Bauer of Knox, McLaughlin Gornall & Sennett
for DPC Pet Specialties LLC dba Ainsworth Pet Nutrition
Seth Willig Chadab, Trademark Examining Attorney, Law Office 104,
Dayna J. Browne, Managing Attorney.1
_____

Before Seeherman, Kuhlke and Kuczma,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
DPC Pet Specialties LLC dba Ainsworth Pet Nutrition (“Applicant”) seeks
registration on the Principal Register of the mark SOUP BONES and design, as
shown, below, for pet treats in Class 31.2 “The mark consists of the words ‘soup

1 A different Examining Attorney handled the examination of this application. The present
Examining Attorney prepared the brief.
2 Application Serial No. 86093164 was filed on October 16, 2013, asserting first use and
first use in commerce as early as January 1, 2012.
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bones’ with the O stylized in soup in the shape of a soup pot with steam rising from
it.”

The Trademark Examining Attorney has issued a final Office action requiring
Applicant to disclaim the words “soup bones” on the basis that they are merely
descriptive.
We affirm the requirement that Applicant disclaim the word BONES and
reverse the requirement as to the word SOUP.
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), provides that the
Director may require the applicant to disclaim an unregistrable component of a
mark otherwise registrable. Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1),
prohibits the registration of a mark which, when used on or in connection with the
goods of the applicant, is merely descriptive of them.
A term is merely descriptive if it immediately conveys knowledge of a significant
quality, characteristic, function, feature or purpose of the goods or services it
identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Determining the descriptiveness of a mark is done in relation
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to an applicant’s identified goods and/or services, the context in which the mark is
being used, and the possible significance the mark would have to the average
purchaser because of the manner of its use or intended use. See In re Chamber of
Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft,
488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Descriptiveness of a
mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d
at 1831. In other words, the question is whether someone who knows what the
goods or services are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012). On the other hand, a term that is suggestive is
not prohibited from registration by Section 2(e)(1). “Whether a given mark is
suggestive or merely descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or characteristics of the goods [or
services] … with which it is used,’ or whether ‘imagination, thought, or perception is
required to reach a conclusion on the nature of the goods [or services]’.” In re
Gyulay, 3 USPQ2d at 1009.
It is the Examining Attorney’s position that SOUP BONES is descriptive of a
characteristic of Applicant’s pet treats, namely that it is the flavor of the treats. The
Examining Attorney further explains that the term “indicates to a prospective
purchaser that the applicant’s pet treats have the flavor of bones used in making
soup-stock.” Brief, 12 TTABVUE 4-5. In support, the Examining Attorney points to
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Applicant’s specimen, its advertising, and definitions and various articles the refer
to “soup bones.”
Applicant’s specimen, shown below, has on the packaging the phrase, “Real soup
bone taste with a tender meaty center. No splintering. No mess.” The Examining

Attorney says this phrase shows that “soup bone” is the flavor of the treats.
However, the bag also includes the phrase “Real Chicken & Veggies Flavor,” and
Applicant has submitted a web page advertising its product which shows that they
come in various flavors, i.e., “Real Beef & Barley Flavor,” “Real Chicken & Veggies
Flavor” and “Real Turkey & Rice Flavor,” to show that “soup bone” is not the flavor
of its products. The Examining Attorney contends that this web page advertisement
also shows that SOUP BONE is merely descriptive because it contains the text that
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the chews “have all the deliciousness of a wholesome soup bone with none of the
splintering or mess.”
The Internet materials submitted by the Examining Attorney include definitions
of “soup-bone” as “a bone (with some meat on it) used for making soup-stock:
usually the shank of beef”3 and “a bone used for making soup or broth.”4 An eHow
article, “What Is a Soup Bone?,”5 explains:
Professional chefs use soup bones, which give the soup a richer and
flavorful base. … The bones come from different types of animals,
including lamb and cows. … Also known as stock bones, the bones are
essentially pieces left over from the butchering process. When the
butcher sells boneless roasts and other pieces of meat, he must remove
the bones. Each piece typically has a small amount of meat still
clinging to the bone. The meat is not enough for a full meal, but it is
enough to impart more flavor into your soup.”

Other articles are about using soup bones in making broth or soup.
The articles and definitions show that soup bones are used to flavor different
types of broth, e.g., chicken bones are used for chicken broth, beef bones are used for
beef broth. Although soup bones add to the flavor of a broth, the evidence of record
does not show that “soup bone” or “soup bones” is an actual flavor. As a result, we
cannot find that SOUP BONES in Applicant’s mark immediately tells consumers
what the flavor of the pet treats is, and therefore we cannot find the phrase SOUP
BONES to be merely descriptive.

3 www.wordnik.com, definition from The Century Dictionary and Cyclopedia (February 6,
2014 Office action, p. 2.).
4 Dictionary.com Unabridged, based on the Random House Dictionary (2013), (February 6,
2014 Office action, p. 5).
5 www.ehow.com, (February 6, 2014 Office action, p. 7).
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There is but a thin line of distinction between a suggestive and a merely
descriptive term, and it is often difficult to determine when a term moves from the
realm of suggestiveness into the sphere of impermissible descriptiveness. In re
Recovery, Inc., 196 USPQ 830, 831 (TTAB 1977). See also, In re Future Ads LLC,
103 USPQ2d 1571, 1574 (TTAB 2012). In this case, because “imagination, thought,
or perception is required to reach a conclusion on the nature of the goods,” In re
Gyulay, 3 USPQ2d at 1009, SOUP BONES must be considered suggestive of the
goods. A consumer would have to take some mental steps to think that a soup bone
has some meat on it, and therefore that the treat would be as enjoyable for a pet to
eat as a soup bone, or that, because a soup bone imparts flavor to a broth, the treat
would be flavorful. See In re Crocker National Bank, 223 USPQ 152 (TTAB 1984)
(WORKING CAPITAL ACCOUNT suggestive of banking services); In re Southern
National Bank of North Carolina, 219 USPQ 1231 (TTAB 1983) (MONEY 24
suggestive of banking services, namely automatic teller machines).
Accordingly, because we find that the term SOUP BONE is not merely
descriptive of Applicant’s goods, the requirement for a disclaimer of the entire term
is reversed.
However, there is substantial evidence that the word BONES has a descriptive
or generic meaning when used in connection with pet treats. Applicant’s own
specimen describes its product as “Three Chew Bones For Dogs.”6 Therefore, we find

6 In its response filed August 6, 2014, Applicant also states that it reserves the right to sell
its pet treats in the form of or resembling the appearance of a bone.
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that the word BONES in Applicant’s mark is merely descriptive, and that the
requirement to disclaim this word is warranted.7
Decision: The refusal to register Applicant’s mark in the absence of a
disclaimer of SOUP BONES is reversed. However, the refusal is affirmed to the
extent that Applicant has not provided a disclaimer of the descriptive word BONES.
If Applicant submits the disclaimer of BONES within 30 days, this decision will be
set aside, and the application will proceed to publication.

7 Applicant had voluntarily disclaimed exclusive rights to the word BONES in its original
application, but withdrew the disclaimer in its request for reconsideration filed March 2,
2015.
We note that Applicant has submitted a third-party registration for STEAK BONES for
pet food which contains no disclaimer. We do not know what was in the file of this
registration, or what arguments or evidence might have led the Examining Attorney who
considered that application to conclude that a disclaimer was not required. In any event,
this single third-party registration is not sufficient to persuade us, in view of the other
evidence of record, that BONES need not be disclaimed in Applicant’s mark. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).