Hay Pillow, Inc.

Trademark Trial and Appeal Board

Apr 5, 2013

No. 85407776 (T.T.A.B. Apr. 5, 2013)

Mailed:
April 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hay Pillow, Inc.
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Serial No. 85407776
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Valerie Ann Nemeth, Esq. for Hay Pillow, Inc.

Linda Mickleburgh, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Mermelstein and Adlin, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Hay Pillow, Inc. (applicant) seeks registration on the
Principal Register of the mark HAY PILLOW (in standard
character form) for goods identified in the application as
“feed bags for animals.”1

1 Application Serial No. 85407776, filed on August 25, 2011. The
application originally was based on applicant’s allegation of its
bona fide intention to use the mark in commerce, under Trademark
Act Section 1(b), 15 U.S.C. §1051(b). Applicant filed an
Amendment to Allege Use on May 7, 2012, which was accepted by the
Trademark Examining Attorney on May 24, 2012.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85407776
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that it
is merely descriptive of applicant’s goods. See Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
The Trademark Examining Attorney also has issued a
final refusal based on applicant’s failure to comply with
her requirement for an amendment to what she deems to be an
insufficiently definite identification of goods. See
Trademark Rule 2.32(a)(6).
Applicant has appealed both the final Section 2(e)(1)
refusal and the final refusal based on the requirement to
amend the identification of goods. The appeal is fully
briefed.
After careful consideration of all of the evidence of
record2 and the arguments of counsel, we provisionally
affirm the Section 2(e(1) mere descriptiveness refusal, but
only as to the word HAY. This decision affirming the
Section 2(e)(1) refusal in part will be set aside if
applicant submits a proper disclaimer of HAY, as discussed
below.

2 With her brief, the Trademark Examining Attorney submitted new
evidence which had not been made of record prior to appeal. In
its reply brief, applicant objected to this evidence. We sustain
the objection. See Trademark Rule 2.142(d). 37 C.F.R. §2.142(d).
We add that our decision would be the same even if we had
considered this evidence as being properly made of record.

Ser. No. 85407776
3
We reverse the refusal which is based on the
requirement for an amended identification of goods.

MERE DESCRIPTIVENESS.
Trademark Act Section 2(e)(1) prohibits registration
on the Principal Register of a mark which “when used on or
in connection with the goods [and/or services] of the
applicant is merely descriptive or deceptively
misdescriptive of them....”
A term is considered to be merely descriptive if it
immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services in
connection with which it is used. See In re Chamber of
Commerce of the United States of America, 675 F.3d 1297,
102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828 (Fed.
Cir. 2007); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
Ser. No. 85407776
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496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363
(TTAB 1983).
In the photograph of the goods submitted as the
specimen for applicant’s April 17, 2012 Amendment to Allege
Use, applicant’s product is depicted as follows:

Applicant’s May 24, 2012 response to Office action included
this additional photograph of the goods:

Ser. No. 85407776
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In her May 18, 2012 declaration submitted with
applicant’s May 23, 2012 response to Office action,
applicant’s president Monique Warren described the product
as follows:

I developed the goods on which the current
application is based as a response to the need in
the market for a product which addresses certain
digestive issues experienced primarily by horses, as
can be seen in the photos and specimens submitted.
While the product consists of a certain type of
cloth and mesh intended to be filled with feed, it
is designed and intended to disseminate such feed to
livestock in a very specific manner from both a
hanging position and on the ground to simulate the
way most livestock naturally eat and digest. It is
not in any way intended to function as a headrest or
Ser. No. 85407776
6
in any other traditional function of a cushion or
“pillow.”

Applicant also has submitted the declaration of Gary
L. Loomis, a patent agent registered with the USPTO,
regarding applicant’s pending utility patent application
(No. 13/290,990 (not yet published)), for the product at
issue here. In the declaration, Mr. Loomis states that the
invention is entitled “horse feeder,” and that it has been
assigned by the USPTO to the art unit for “animal
husbandry.” The patent application states that the
invention “relates to a feeder for the controlled
consumption of hay or similar feed to a horse, other
equidae or similar grazing animal.”
We find that applicant’s mark HAY PILLOW is not merely
descriptive of applicant’s “feed bags for animals,” because
the product does not function as a “pillow” as that term is
commonly used and understood. We find that PILLOW is
incongruous as applied to applicant’s goods, and that the
mark as a whole therefore is not merely descriptive.
The record (at applicant’s May 12, 2012 response to
Office action) includes the following definitions of
“pillow.” Webster’s New World College Dictionary defines
“pillow” as “1. A cloth case filled with feathers, down,
foam rubber, air, etc., used as a support, as for the head
Ser. No. 85407776
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in sleeping. 2. Any object used as a headrest. 3.
Anything like a pillow or cushion, as a pad on which
certain laces are made. 4. Anything that supports like a
pillow.” The American Heritage Dictionary of the English
Language defines “pillow,” when used as a noun, as “1. A
cloth case, stuffed with something soft, such as down,
feathers, or foam rubber, used to cushion the head,
especially during sleep. 2. A decorative cushion.” The
same dictionary defines “pillow,” as a transitive verb, as
“To serve as a pillow for: Grass pillowed my head.”
Based on these definitions, we find that the usual
function and purpose of a “pillow,” as that term is
commonly used and understood, is to support and/or cushion
something placed on it. As most commonly used, a “pillow”
refers to and would be understood to be something which
supports one’s head. The Trademark Examining Attorney
correctly notes that a headrest pillow is not the only kind
of pillow, and that there are other types of “pillows”
which do not support the head, such as a “body pillow” or a
“ring bearer’s pillow.” However, what these and other
types of “pillows” have in common, and what makes them
“pillows” as that term is commonly used and understood, is
that they are used to support and/or cushion something
placed on top of them, such as one’s body supported by a
Ser. No. 85407776
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body pillow, or a wedding ring supported by a ring bearer’s
pillow.3 Applicant’s feed bag product is not designed to
support and does not support anything. It does not support
the horse’s head or body during feeding or at any other
time. It does not function as a pillow, and we find that
“pillow” therefore is incongruous as applied to applicant’s
goods.
The Trademark Examining Attorney contends that
applicant’s goods are a “pillow” because they “act as a
support for hay.” (Brief at 8). She contends that
applicant’s goods “pillow the hay” (Brief at 7), and that
they act “as a support for hay during the process of
feeding the horse” (Brief at 8).
These contentions are not persuasive. Unlike a
headrest pillow which supports the head lying on top of it,

3 With her July 12, 2012 Denial of Request for Reconsideration,
the Trademark Examining Attorney made of record a photograph
depicting what are identified on the photograph as “Three
Firestop Pillows.” The photograph as submitted by the Trademark
Examining Attorney does not identify any URL or other source. In
her brief for the first time, the Trademark Examining Attorney
asserts that the photograph was obtained from an article in the
online encyclopedia Wikipedia. That article has never been made
of record. Applicant has objected, and we find, that the
Trademark Examining Attorney’s failure to identify the source of
the photograph prior to her submission of her brief on appeal
renders this evidence untimely and prejudicial. See Trademark
Rule 2.142(d). (Also, see above at footnote 2.) We also note
that neither the photograph of the “three firestop pillows”
itself nor anything else in the record provides an explanation of
or any context for what these products actually are or how they
are used. We therefore find that the photograph is entitled to
little or no probative value in this case in any event.
Ser. No. 85407776
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or a body pillow which supports the body lying on top of
it, or a ring bearer’s pillow which supports the wedding
ring lying on top of it, neither hay nor anything else is
placed on the feed bag for support. Nor does the product
“support” or “pillow” the hay with which it is filled, any
more than a feather pillow would be said to support the
feathers inside it, or a down pillow would be said to
support the down inside it. In short, the purpose and
function of a pillow is to support and/or cushion something
placed upon it. Applicant’s product does not function as a
support for hay, or for anything else. It is not a
“pillow” as that term is commonly used and undertood, and
we find, again, that PILLOW therefore is incongruous as
applied to the goods.
The Trademark Examining Attorney also contends that
these examples of other types of pillows “reference the
word that comes before it as the item that is either placed
on or in it, much like a feather pillow or down pillow.”
(Brief at 7.) She contends that “like a feather pillow,
the applicant’s product, rather than stuffed with feathers
or down, is stuffed with hay when in use.” (Brief at 5.)
She contends that “[a]t its most basic, the applicant’s
product is a pillow that holds hay” (Brief at 5) and that
Ser. No. 85407776
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when in use it becomes “a hay stuffed pillow.” (Brief at
7-8.)
As discussed below, we find that the fact that
applicant’s product is stuffed with hay when in use as a
feed bag makes the word “hay” merely descriptive of the
goods. However, this does not make “pillow” merely
descriptive of the goods. The product is a feed bag; it
does not function as a pillow, whether filled with hay or
with anything else.
We acknowledge that applicant’s feed bag product (at
least the model which lies flat on the ground) may be said
to resemble a pillow in shape. However, for purposes of
our mere descriptiveness analysis, we find that the fact
that it may resemble a pillow is effectively counter-
balanced by the fact that it does not in any way function
as a pillow. By its nature as designed and in its function
and purpose as used, the product is a feed bag, not a
pillow. We find that this difference or disconnect between
the product’s appearance and its function creates an
ambiguity and incongruity that would give the purchaser
pause as to the significance of the mark upon encountering
the goods bearing the mark.4

4 We note that the Trademark Examining Attorney’s untimely
evidence submitted with her brief (see above at footnote 2)
Ser. No. 85407776
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The Trademark Examining Attorney argues that “[a]s no
consumer would believe hay is an object that would need use
of a traditional pillow for traditional uses, the consumer
would likely turn his or her thoughts to aspects or
characteristics of pillows, see the goods as having those
and understand the mark to describe those attributes and
also of how the goods are used.” However, “how the goods
are used” is not as a pillow, but as a feed bag. The
Trademark Examining Attorney’s own formulation demonstrates
the incongruity and multi-stage reasoning process entailed
in understanding the significance of the mark as applied to
the goods. That multi-stage reasoning process makes the
mark suggestive, not merely descriptive.
For these reasons, we find that applicant’s mark as a
whole is not merely descriptive.
Although we have found that applicant’s mark as a
whole is not merely descriptive, we also find that the word
HAY in applicant’s mark is merely descriptive of

includes dictionary evidence from the Online Merriam-
Webster dictionary, which includes among its definitions of
“pillow” one reading “something resembling a pillow
especially in form.” Even considering this definition, and
assuming that it applies to applicant’s goods at issue
here, we still find, for purposes of our mere
descriptiveness analysis, that the incongruity between the
appearance of the product and its actual function as a feed
bag suffices to make the mark suggestive, not merely
descriptive.
Ser. No. 85407776
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applicant’s goods. It directly describes the intended
contents of the feed bags, i.e., “hay.” We therefore find
that applicant’s mark is not registrable on the Principal
Register without a disclaimer of HAY apart from the mark as
shown. See Trademark Act Section 6, 15 U.S.C. §1056.
The Trademark Examining Attorney’s Section 2(e(1)
refusal therefore is affirmed solely as to the word HAY.
However, applicant is allowed until thirty days from
the mailing date of this decision to submit the required
disclaimer.5 If a proper disclaimer is submitted within the
time allowed, this decision affirming the Section 2(e)(1)
refusal in part will be set aside, the disclaimer will be
entered, and the application will be forwarded to
publication. See In re Country Music Ass’n, Inc., 100
USPQ2d 1824, 1835 (TTAB 2011); Trademark Rule 2.142(g), 37
C.F.R. §2.142(g); TBMP Section 1218.

REQUIREMENT FOR AMENDED IDENTIFICATION OF GOODS.
The Trademark Examining Attorney also has refused
registration based on applicant’s failure to submit an
amended identification of goods. Specifically, she has
required applicant to amend the identification of goods

5 The proper format for the disclaimer is “No claim is made to
the exclusive right to use HAY apart from the mark as shown.”
Ser. No. 85407776
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from its current “feed bags for animals” to “feed bags for
animals in the nature of a pillow, open on one side to
allow hay to be placed inside and eaten.”
An application for registration must specify the
particular goods on which the applicant uses the mark in
commerce. See Trademark Act Section 1051(a)(2), 15 U.S.C.
§1051(a)(2); Trademark Rule 2.32(a)(6), 37 C.F.R.
§2.32(a)(6). As a rule, “[t]he identification should set
forth common names, using terminology that is generally
understood,” and “... lengthy descriptions of
characteristics or uses are not appropriate.” TMEP
Section 1402.01.
In the present case, the Trademark Examining Attorney
bases her requirement for an amended identification of
goods on TMEP Section 1402.05, which provides in relevant
part:

Moreover, the examining attorney must require an
amendment to the identification language when it
includes broad wording that would normally be
acceptable, but the specimen(s) shows that the
actual goods or services are a specialized type or
are used only in a specialized trade channel. In
this situation, the broad identification would be
overly broad and misleading. The amended
identification should specify the specialized
characteristic or specialized trade channel to
accurately describe the goods or services.

Ser. No. 85407776
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The Trademark Examining Attorney argues: “Given that
the applicant has applied for a patent, and such is part of
the record in this case, the examining attorney believes
the goods fall under the circumstances of ‘specialized,’
and as such require specific verbiage.” (Brief at 12.)
However, we find that the fact that applicant has applied
for a utility patent for its product does not suffice in
itself as a basis for the Trademark Examining Attorney’s
requirement for a more specific identification of goods in
the application.
Moreover, as discussed above in connection with the
Section 2(e)(1) refusal, applicant’s feed bags do not
function as pillows. They therefore are not “in the nature
of a pillow” as the required amendment to the
identification of goods would describe them.6
Finally, there is no evidence that feed bags for
animals “in the nature of a pillow, open on one side to
allow hay to be placed inside and eaten” constitute a
commercially-recognized and/or industry-recognized category
or type of feed bag that has a specialized common
commercial name or trade channel that would need to be set
forth in the identification of goods in order to adequately

6 We agree with applicant that it reasonably might be inferred
that the Trademark Examining Attorney’s requirement for an
Ser. No. 85407776
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describe the goods. We find that the level of specificity
in the current clear identification of goods, i.e., “feed
bags for animals,” is sufficient. As noted above, the TMEP
provides that “...lengthy descriptions of characteristics
or uses are not appropriate.” TMEP Section 1402.01.
For these reasons, the Trademark Examining Attorney’s
final refusal based on applicant’s failure to comply with
her requirement for an amended identification of goods is
reversed.

DECISION:
The Section 2(e)(1) refusal is provisionally affirmed
in part, but solely as to the word HAY.
However, this decision affirming the Section 2(e)(1)
refusal in part will be set aside, and the application will
be forwarded to publication, if applicant submits a proper
disclaimer of the word HAY within thirty days from the date
of this order.
The refusal based on the requirement for an amended
identification of goods is reversed.

amended identification of goods has been made largely for the
purpose of bolstering her Section 2(e)(1) refusal.