Healthy Dogma, Inc.

Trademark Trial and Appeal Board

Dec 15, 2020

87627598 (T.T.A.B. Dec. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Healthy Dogma, Inc.
_____

Serial No. 87627598
_____

Geoffrey D. Aurini of Harness Dickey & Pierce PLC,
for Healthy Dogma, Inc.
J. Ian Dible, Trademark Examining Attorney,1 Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Wolfson, Lykos and Heasley,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On September 29, 2017, Healthy Dogma, Inc. (“Applicant”) filed an application to
register the mark PETMIX in standard characters on the Principal Register for “pet
food” in International Class 31 under Section 2(f) of the Trademark Act, 15 U.S.C. §
1052(f).2
The Trademark Examining Attorney has refused registration on the ground that

1 The application was originally assigned to Trademark Examining Attorney Renee McCray.
2 Application Serial No. 87627598, filed September 29, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging October 1, 2007 as the date of first use anywhere
and in commerce.
Serial No. 87627598
- 2 -

Applicant’s mark is so highly descriptive of the identified goods that Applicant has
failed to meet its burden of proving that its applied-for mark has acquired
distinctiveness within the meaning of Section 2(f).
On October 7, 2019, following issuance of a final refusal, the Deputy
Commissioner accepted a letter of protest noting a possible likelihood of confusion
under Section 2(d) with the registered mark PETMIO for “pet food,”3 owned by
PetMio LLC. After consideration of the letter of protest by the Examining Attorney,
no Section 2(d) refusal was issued.
On October 24, 2019, Applicant timely filed a notice of appeal. Almost two months
thereafter, on December 20, 2019, Applicant filed a request to remand the application
for consideration of additional evidence in support of its Section 2(f) claim.4 The
Examining Attorney considered the supplemental evidence but maintained the
refusal to register, and the application was returned to the Board for briefing.
After the appeal was fully briefed, the Board—noting that Applicant’s proposed
amendment to the Supplemental Register in the alternative had not been
considered—remanded the application to the Examining Attorney on October 7,
2020.5 On November 3, 2020, the Examining Attorney accepted the amendment in

Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. References to the briefs
and other materials in the appeal record refer to the Board’s TTABVUE docket system.
3 Registration No. 5470514, registered on May 15, 2018.
4 4 TTABVUE.
5 14 TTABVUE.
Serial No. 87627598
- 3 -

the alternative to the Supplemental Register, and jurisdiction was restored to the
Board.6
For the reasons explained below, we affirm the refusal to register on the Principal
Register.
I. Procedural Posture
Before discussing the merits, we are compelled to comment on the prosecution
history of the application and procedural posture of this appeal. As originally filed,
Applicant sought registration on the Principal Register under Section 2(f).
Applicant’s request that the application be registered under Section 2(f) constitutes
an admission that the mark is not inherently distinctive. See Cold War Museum, Inc.
v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)
(“Where an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”); see also In re Am. Furniture
Warehouse CO, 126 USPQ2d 1400, 1403 (TTAB 2018) (noting that a claim of acquired
distinctiveness by applicant “can be viewed as a concession by Applicant that the
wording itself is not inherently distinctive for those services”). The Examining
Attorney, however, in the first Office Action erroneously issued a mere
descriptiveness refusal under Section 2(e)(1) without considering the sufficiency of

6 15 TTABVUE.
Serial No. 87627598
- 4 -

Applicant’s Section 2(f) claim.7 The mere descriptiveness refusal was continued and
made final,8 and ultimately argued on appeal.
To be clear, this appeal hinges on whether Applicant’s mark has acquired
distinctiveness under Section 2(f), and not whether the mark is merely
descriptive. The record is clear that Applicant never sought registration under
Section 2(f) in the alternative. As such, we need not consider the Examining
Attorney’s mere descriptiveness refusal as argued in his appeal brief and Applicant’s
counterarguments or evidence that its mark PETMIX is not merely descriptive.
Rather, the issue before us is whether Applicant’s mark is so highly descriptive of the
goods that Applicant is subject to a higher burden of proof to show acquired
distinctiveness.
II. Evidentiary Issues
The Examining Attorney in his brief objects to Applicant’s references in its appeal
brief to two third-party registrations not made of record during prosecution of the
application.9 No evidence establishing the existence of either registration was made
of record during prosecution, or even with the Applicant’s appeal brief.10 Applicant
later attempted to prove the existence of one of the registrations, and that a Letter of

7 January 17, 2018 Office Action.
8 August 3, 2018 and April 25, 2019 Office Actions.
9 10 TTABVUE 4.
10 We note that evidence attached to an Appeal Brief typically is refused consideration as
untimely and do not suggest that had Applicant submitted the evidence with its brief the
evidence would have been acceptable. We merely point out that the essence of the Examining
Attorney’s objection was to the reference to these matters in Applicant’s appeal brief, because
the references were all that had been presented.
Serial No. 87627598
- 5 -

Protest was filed on the basis of the other registration, and only on that basis, through
attachments to its reply brief. For the reasons explained below, we sustain both
objections.
The first objection pertains to a third-party registration for the mark SPORTMIX
that Applicant first submitted with its reply brief, by providing a printout from
Trademark Electronic Search System (TESS) records. By way of background, the
Examining Attorney properly made of record a printout from a website advertising
this particular brand of gourmet cat food.11 Based on this internet printout, Applicant
argues that the SPORTMIX trademark was properly introduced into the record by
the Examining Attorney, and that Applicant “merely seeks to rebut the significance
of the Examiner’s merely descriptive evidence by noting that the SPORTMIX
trademark, which the Examiner’s evidence shows is used with the registration
symbol … is in fact registered on the Principal Trademark Register.”12
The correct procedure would have been for Applicant to have filed a request for
remand to make the third-party registration for the mark SPORTMIX properly of
record. Because Applicant’s new third-party registration evidence obtained from
TESS was untimely, it has been given no consideration. See Trademark Rule 2.142(d),
37 C.F.R. § 2.142(d). See also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744
(TTAB 2018), aff’d per curiam, 777 F. App’x 516 (Fed. Cir. 2019).

11 6 TTABVUE 13.
12 Reply Brief, 11 TTABVUE 3.
Serial No. 87627598
- 6 -

The second objection relates to the registration for the mark PETMIO brought to
the Examining Attorney’s attention via a letter of protest, but Applicant does not seek
to introduce evidence of the registration. Rather, in its appeal brief, Applicant seeks
to rely on what the Letter of Protest does not say. In its reply brief, “Applicant merely
requests the Board to take judicial notice of the Letter of Protest and the basis upon
which the Protest was not based, namely, Merely Descriptive grounds.”13 Applicant
also submitted with its reply brief a copy of the letter of protest memorandum, which
is a memorandum from the Office of the Deputy Commissioner for Trademark
Examination Policy to the Examining Attorney; the memorandum only refers to the
filing of the letter of protest, and does not have attached to it a copy of such letter.
According to Section 1715 of the TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) (Oct. 2018), “[t]o preserve the integrity and objectivity of the ex parte
examination process, the letter of protest never becomes part of the application file
and the Deputy Commissioner acts on the letter of protest without consulting with
the examining attorney.” The evidentiary impact on Board proceedings is explained
in TMEP Section 1715.04(c) “Letters of Protest in Pending Applications - Trademark
Trial and Appeal Board Proceedings:”
As discussed above, if a letter of protest is filed before
publication is accepted, the relevant evidence submitted by
the protestor is referred to the examining attorney.
However, the examining attorney is not required to issue a
refusal or requirement as a result of the acceptance. See
TMEP § 1715.02(b). In an ex parte proceeding regarding an
application in which the record includes evidence
submitted in a letter of protest filed before publication, if

13 Id. at 2.
Serial No. 87627598
- 7 -

the examining attorney did not issue a refusal or
requirement based on the evidence, the Trademark Trial
and Appeal Board will not rely on the evidence in the Board
proceeding because the applicant would not have the
opportunity to rebut the evidence.
These TMEP sections make clear that the letter of protest itself is not part of an
application’s record. Nor are letters of protest records of which the Board would take
notice. In essence, Applicant asks that we take notice of what is not in a letter that is
not of record and of which we will not take judicial notice.
The Board denies Applicant’s request to take judicial notice of the letter of protest
and what such letter does not say. Taking judicial notice of the letter of protest would
frustrate the Office’s stated objective of maintaining the integrity of the letter of
protest process.
III. Acquired Distinctiveness Under Section 2(f)
We now turn to the substantive issue before us. In the absence of acquired
distinctiveness, Section 2(e)(1) of the Trademark Act prohibits registration of a mark
on the Principal Register that, when used in connection with an applicant’s goods, is
merely descriptive of them. 15 U.S.C. § 1052(e)(1).14 Applicant has the burden of
establishing that its mark has become distinctive. In re La. Fish Fry Prods., Ltd., 797
F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)). The more descriptive the
term, the greater the evidentiary burden to establish acquired distinctiveness. Royal

14 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive …”
Serial No. 87627598
- 8 -

Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018)
(citing In re Steelbuilding.com, 75 USPQ2d at 1424). Whether acquired
distinctiveness has been established is a question of fact. In re Becton, Dickinson and
Co., 675 F.3d 1368, 102 USPQ2d 1372, 1375 (Fed. Cir. 2012). That is to say, the kind
and amount of evidence necessary to establish that a mark has acquired
distinctiveness in relation to goods or services depends on the nature of the mark and
the circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp.
v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988); Roux
Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970); In re Hehr
Mfg. Co., 279 F.2d 526, 126 USPQ 381, 383 (CCPA 1960).
The starting point for our analysis is the statute. Section 2(f) of the Trademark
Act provides in relevant part:
Except as expressly excluded in subsections (a), (b), (c), (d),
(e)(3), and (e)(5) of this section, nothing herein shall
prevent the registration of a mark used by the applicant
which has become distinctive of the applicant’s goods in
commerce. The Director may accept as prima facie evidence
that the mark has become distinctive, as used on or in
connection with the applicant’s goods in commerce, proof of
substantially exclusive and continuous use thereof as a
mark by the applicant in commerce for the five years before
the date on which the claim of distinctiveness is made.
The underlying rationale of Section 2(f) has been explained as follows:
[U]nlike the first five sections of 15 U.S.C. §1052 which
define the grounds upon which a trademark registration is
to be refused, Section 2(f) serves as an exception to a
rejection under the provisions of one of the other sections,
Section 2(e) (citation omitted). Section 2(f) permits
registration of marks that, despite not qualifying for
registration in light of Section 2(e), have nevertheless
“become distinctive of the applicant’s goods in commerce.”
Serial No. 87627598
- 9 -

Thus, “Section 2(f) is not a provision on which registration
can be refused,” ... but is a provision under which an
applicant has a chance to prove that he is entitled to a
federal trademark registration which would otherwise be
refused.
Yamaha, 6 USPQ2d at 1007 (quoting In re Capital Formation Counselors, Inc., 219
USPQ 916, 917 n.2 (TTAB 1983)) (emphasis added). “The statute is silent as to the
weight of evidence required for a showing under Section 2(f) ‘except for the suggestion
that substantially exclusive use for a period of five years immediately preceding filing
of an application may be considered prima facie evidence.’” In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (quoting Hehr,
126 USPQ at 382-83). Trademark Rule 2.41, 37 C.F.R. § 2.41, entitled “Proof of
distinctiveness under section 2(f),” fills in this gap, stating in relevant part:
(a) For a trademark or service mark—
(1) Ownership of prior registration(s). In appropriate
cases, ownership of one or more active prior
registrations on the Principal Register or under the
Trademark Act of 1905 of the same mark may be
accepted as prima facie evidence of distinctiveness if
the goods or services are sufficiently similar to the
goods or services in the application; however, further
evidence may be required.
(2) Five years substantially exclusive and
continuous use in commerce. In appropriate cases, if
a trademark or service mark is said to have become
distinctive of the applicant’s goods or services by
reason of the applicant’s substantially exclusive and
continuous use of the mark in commerce for the five
years before the date on which the claim of
distinctiveness is made, a showing by way of verified
statements in the application may be accepted as
prima facie evidence of distinctiveness; however,
further evidence may be required.
Serial No. 87627598
- 10 -

(3) Other evidence. In appropriate cases, where the
applicant claims that a mark has become distinctive
in commerce of the applicant’s goods or services, the
applicant may, in support of registrability, submit
with the application, or in response to a request for
evidence or to a refusal to register, verified
statements, depositions, or other appropriate
evidence showing duration, extent, and nature of the
use in commerce and advertising expenditures in
connection therewith (identifying types of media and
attaching typical advertisements), and verified
statements, letters or statements from the trade or
public, or both, or other appropriate evidence of
distinctiveness.
Establishing acquired distinctiveness by “further” or “actual” evidence was
explained in Owens-Corning Fiberglas, 227 USPQ at 422:
An evidentiary showing of secondary meaning, adequate to
show that a mark has acquired distinctiveness indicating
the origin of the goods, includes evidence of the trademark
owner’s method of using the mark, supplemented by
evidence of the effectiveness of such use to cause the
purchasing public to identify the mark with the source of
the product.
The courts have provided additional guidance, explaining that in determining
acquired distinctiveness, relevant factors may include “copying, advertising
expenditures, sales success, length and exclusivity of use, unsolicited media coverage,
consumer studies (linking the name to a source).” In re Steelbuilding.com, 415 F.3d
1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (citing Cicena Ltd. v. Columbia
Telecomms. Grp., 900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir. 1990)). See also Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed.
Cir. 2012). No single factor, however, is determinative. In re Steelbuilding.com, 75
USPQ2d at 1424.
Serial No. 87627598
- 11 -

In support of its claim of acquired distinctiveness, Applicant has introduced the
following evidence:
● A statement verified by Applicant that the mark has become distinctive of
the Applicant’s goods by reason of substantially exclusive and continuous use in
commerce for at least five years prior to September 29, 2017, the filing date of the
application and date when Applicant asserted its claim of distinctiveness. As noted
above, this statement was submitted with the initial filing of Applicant’s trademark
application. Applicant further added that as of the date of its July 16, 2018 Office
Action Response, its PETMIX mark had been in use in commerce for a longer period
of time, namely, for over ten years.
● Five customer declarations attesting to recognition of PETMIX as a source
indicator for Applicant’s particular brand of pet food.15
● Samples of Applicant’s product packaging displaying the mark PETMIX
“functioning as a brand name across various formulas or versions of Applicant’s pet
food” with “[t]he end result of this robust usage is that consumers recognize PETMIX
as a source indicator for pet food.”16 By way of illustration, an image of one of the
samples is reprinted below:

15 Applicant’s December 20, 2019 Request for Remand, 4 TTABVUE 5-14.
16 July 16, 2018 Response to Office Action, p. 2 and pp. 11-49 (images of Applicant’s product
packaging) and February 1, 2019 Response to Office Action, pp. 2-6 (images of Applicant’s
product packaging).
Serial No. 87627598
- 12 -

Applicant contends that the consumer declarations and display of its PETMIX mark
on packaging for various pet food formulas, along with over ten years of continuous
use, constitutes a prima facie showing of acquired distinctiveness under Section 2(f).
The Examining Attorney counters that because the mark PETMIX is highly
descriptive of the identified goods, Applicant’s evidence is insufficient to show
acquired distinctiveness. In support thereof, the Examining Attorney submitted
dictionary definitions of the words “pet” and “mix” where “pet” denotes “a tame
animal kept in a household for companionship, amusement, etc.” or “a domesticated
animal kept for pleasure rather than utility;” and “mix,” when used as a noun, defined
as “the result of mixing; mixture” or “a commercially prepared mixture of food
products.”17 The Examining Attorney also made of record examples of third-party
uses by other pet food manufacturers or retailers of the terms “pet” and/or “mix” in

17 Entries from Dictionary.com attached to January 17, 2018 Office Action, pp. 22 and 28 and
Merriam-Webster attached to April 25, 2019 Office Action pp. 3-4.
Serial No. 87627598
- 13 -

connection with pet food to describe pet food made from a blend of different
ingredients. By way of illustration, we note the following:18
Highland Farm offers for sale under the brand name
Highland Premium Pet Blend a “Frozen Raw Venison Pet
Food Mix” described as “an all natural raw pet food mix,
pairing our own farm raised Venison with the freshest
locally grown fruits…”19
Hamor Hollow touts its “Dry Pet Food Mix for Hedgehogs”
as “a unique blend that keeps most hedgehogs at a healthy
weight and provides a mix of important proteins, fat, and
oils to help with dry skin.”20
Arrowhead Beef boasts that its “Raw Pet Blend” pet food
“is the perfect mix for Snoopy or Spike or whatever you’ve
named your furry best friend. Made from a blend of beef,
fat, heart, liver, kidney, sweetbread and tongue our Raw
Pet Food Blend is so good you might be tempted to try some
yourself.”21
Primal Pet Foods “Primal Raw Frozen Mixes” is designed
for “Pet owners who prefer to tailor their pets’ individual
supplemental needs.”22
Chewy’s website shows Nature Balance brand pet food
comprised of a “select protein mix to help dogs.”23

18 The examples include both dry and raw pet food. Insofar as Applicant’s identification is not
limited to any particular type of pet food, we can assume that it encompasses both varieties.
Cf. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (for purposes
of comparing identifications in the likelihood of confusion analysis “Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”).
19 April 25, 2019 Office Action, p. 8.
20 February 7, 2020 Office Action, p. 4.
21 Id. at 2.
22 February 7, 2020 Office Action, p. 9.
23 Id. at 10.
Serial No. 87627598
- 14 -

Canine Caviar touts its “Synergy Dehydrated Vegetable
Mix” as an “innovative holistic blend that uses only the
finest ingredients.”24
Koha GREEN MIX branded “Dehydrated Mix for Wet and
Raw Dog Food” is made with “superfoods kale and kelp.”25
SportMIX “Gourmet Mix Cat Food” … “combines chicken,
liver & fish flavored pieces to produce a taste that cats
love.”26
As further evidence, the Examining Attorney submitted the following excerpts from
The DogAware.com website comparing the nutritional value of various types and
brands of dog food mixes:

24 Id. at 3.
25 Id. at 7.
26 Id. at 10.
Serial No. 87627598
- 15 -

Serial No. 87627598
- 16 -

Serial No. 87627598
- 17 -

Serial No. 87627598
- 18 -

Serial No. 87627598
- 19 -

Serial No. 87627598
- 20 -

Serial No. 87627598
- 21 -

Serial No. 87627598
- 22 -

With regard to Applicant’s evidence of acquired distinctiveness, the Examining
Attorney criticizes the probative weight of the packaging samples, pointing out that
the proposed mark PETMIX is displayed in a relatively simple stylization as
compared to the “HEALTHY DOGMA” logo, which appears displayed in a manner
Serial No. 87627598
- 23 -

indicating the source of the pet food goods.27 As he notes, “the relatively common
wording, subordinate positioning, and plain stylization of the proposed mark in
relation to the “HEALTHY DOGMA” logo as displayed on the packaging
demonstrates the nature of the proposed mark as being descriptive wording primarily
conveying information about the goods and not primarily indicating the source of the
goods.…”28 As for the customer declarations, the Examining Attorney deems the
number an “insignificant” sample size to show that a substantial portion of the
relevant consuming public associates the proposed mark with Applicant.29
Having carefully reviewed the totality of the evidence of record, we agree with
the Examining Attorney that Applicant has failed to establish acquired
distinctiveness of its proposed mark within the meaning of Section 2(f). The evidence
amply demonstrates that the mark PETMIX is highly descriptive of “pet food.” As the
dictionary definitions and evidence of third-party use show, the words “pet” and
“mix,” standing alone, are highly descriptive terms. When combined, their descriptive
significance is not removed. In fact, the merely descriptive nature of “petmix” is
heightened because the combination of these words denotes a food product consisting
of a blend of ingredients specifically formulated to meet the nutritional needs of pets.
As noted above, when proposed marks are highly descriptive, evidence of use for five
years, or even for a longer time period, is generally not sufficient to show acquired

27 July 16, 2018 Response to Office Action, pp. 12, 17, 20, 24, 27, 31, 32, 35, 36, 38, 42, and
47.
28 Examining Attorney Brief, 10 TTABVUE 12.
29 Examining Attorney Brief, 10 TTABVUE 13.
Serial No. 87627598
- 24 -

distinctiveness. Cf. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001)
(66 years of use alone insufficient to show acquired distinctiveness of guitar
configuration).
We reiterate that Applicant bears the burden of establishing acquired
distinctiveness. See La. Fish Fry Prods., 116 USPQ2d at 1264. In addition to the
deficiencies pointed out by the Examining Attorney, Applicant failed to provide
evidence of annual U.S. sales volume and advertising expenditures for pet food sold
under the PETMIX mark. The record is further devoid of other types of evidence
showing consumer brand name recognition, such as industry accolades or unsolicited
media coverage. Although Applicant’s evidence demonstrates brand recognition
amongst a handful of loyal customers, and varied use of the PETMIX mark on
packaging amongst different pet food formulations, it is insufficient to demonstrate
that the mark has acquired distinctiveness. See e.g., In re Pennzoil Products Co., 20
USPQ2d 1753, 1760-61 (TTAB 1991). Given the highly descriptive nature of the term
“petmix” for pet food, Applicant is obliged to adduce a great deal more evidence to
meet its burden of proof.
Decision: The refusal to register Applicant’s mark on the Principal Register, in
the absence of persuasive evidence of acquired distinctiveness under Trademark Act
Section 2(f), is affirmed. The mark will issue on the Supplemental Register.