Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Aug 27, 2015

No. 85501982 (T.T.A.B. Aug. 27, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: August 26, 2015 Mailed: August 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Midwestern Pet Foods, Inc.
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Serial No. 85501982
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Timothy D. Pecsenye, Dennis P. McCooe, and Shaun J. Bockert of Blank Rome LLP,
for Midwestern Pet Foods, Inc.
Douglas M. Lee, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Kuhlke, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Midwestern Pet Foods, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark CHIP’S CHICKEN CASSEROLE (in standard characters) for
“pet food,” in International Class 31.1
The Trademark Examining Attorney required Applicant to disclaim the
exclusive right to use the term “Chicken Casserole” “because it merely describes a
feature of applicant’s goods, pet food featuring the taste, flavor, primary ingredients

1 Application Serial No. 85501982 was filed on December 22, 2011, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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and/or nutritional value similar to the entrée or meal known as chicken casserole.”2
See Section 6(a) of the Trademark Act of 1946, 15 U.S.C. §1056(a) (“The Director
may require the applicant to disclaim an unregistrable component of a mark
otherwise registrable”). Pursuant to Section 2(e)(1) of the Trademark Act of 1946, 15
U.S.C. §1052(e)(1), merely descriptive matter in a mark is unregistrable; it
therefore is subject to disclaimer under Section 6(a). The Office may refuse
registration of the entire mark if Applicant fails to comply with a proper disclaimer
requirement. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861
(Fed. Cir. 1987); In re Grass GmbH, 79 USPQ2d 1600, 1602 (TTAB 2006).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the requirement that Applicant
must disclaim the exclusive right to use the term “Chicken Casserole” in order to
register its mark.
A term is merely descriptive of goods 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. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See
also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark
or a component of a mark is merely descriptive is determined in relation to the
goods for which registration is sought and the context in which the term is used, not

2 12 TTABVUE 4.
Serial No. 85501982
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in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). A term need not immediately convey an idea of each and every
specific feature of the goods or services in order to be considered merely descriptive;
it is enough if it describes one significant attribute, function or property of them.
See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). 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 in the marketplace. See In re Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at
218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not
whether someone presented only with the mark could guess the products listed in
the description of goods. Rather, the question is whether someone who knows what
the products are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002)). See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Serial No. 85501982
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When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of 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. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 543 (1920)). See also In re Tower Tech, Inc., 64 USPQ2d at 1318
(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer programs for use in developing and deploying application
programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of news and information services in the
food processing industry). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, non-descriptive meaning, or if the composite has a unique or
incongruous meaning as applied to the goods or services. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow
removal hand tool having a handle with a snow-removing head at one end, the head
being of solid uninterrupted construction without prongs”); In re Tennis in the
Round, Inc., 199 USPQ 496, 498 (TTAB 1978) (TENNIS IN THE ROUND for
Serial No. 85501982
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“providing tennis facilities in the form of tennis courts and tennis ball machines and
offering tennis instruction”). Thus, we must consider the issue of descriptiveness by
looking at the mark in its entirety.
Casserole is defined as “a dish in which food may be baked and served” or “food
cooked and served in a casserole.”3
The Trademark Examining Attorney submitted 4 examples of competitors using
the term “Chicken Casserole” to describe their pet food.4
1. Dogfoodanalysis.com5
In the above-noted website, Evengers Super Premium Chunky Chicken
Casserole Dinner is described on its label as “[m]oist chicken mixed with market-
fresh carrots, peas, and apples with tender pasta make up this delicious dinner for
dogs.” The accompanying photograph is displayed below.

3 Merriam-Webster Online Dictionary (merriam-webster.com). See also THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2009) posted in
TheFreeDictionary.com website. August 24, 2012 Response to an Office Action.
4 We did not consider the Woolworthsonline.com.au website because it is an Australian
website and there is no evidence that U.S. consumers purchase pet food from Australia.
5 February 24, 2012 Office Action.
Serial No. 85501982
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2. PawtasticPetSupplies.com advertises the sale of Dave’s Pet Food, including
Dave’s Delectable Dinners Chicken Casserole can dog food.6

3. The Nutro.com website advertises the sale of Nutro Natural Choice Cat Food,
namely “Adult Chicken Casserole.”7

4. Friskies.com website advertises the sale of Friskies Chunky Chicken &
Turkey Casserole.8

6 February 24, 2012 Office Action.
7 August 29, 2012 Office Action.
8 August 29, 2012 Office Action.
Serial No. 85501982
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In addition, the Trademark Examining Attorney submitted an excerpt from the
Food.com website posting a recipe by Susan Nichols (September 17, 2008) for a “Dog
Food Casserole,” featuring chicken or turkey. The website also featured a link,
shown below, to other dog food recipes.

Applicant’s website posts the photograph displayed below on its website.9

9 August 29, 2012 Office Action.
Serial No. 85501982
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We find that the term “Chicken Casserole” is merely descriptive when used in
connection with pet food because it directly identifies a feature of the pet food: that
is, the pet food is made using a chicken casserole flavored recipe.
Applicant argues that a disclaimer of the term “Chicken Casserole” is not
required because the mark CHIP’S CHICKEN CASSEROLE is a unitary term
featuring a unique cadence and strong alliterative quality.10 See In re Kraft, Inc.,
218 USPQ 571, 572-573 (TTAB 1983) (LIGHT N’ LIVELY perceived as a unitary
term, in part, because of its alliterative nature: when a composite mark is unitary in
nature, no disclaimer is required).11 A unitary mark is a mark with multiple
elements that create a single and distinct commercial impression separate and
apart from the meaning of its constituent elements. Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). See also
In re Kraft, Inc., 218 USPQ at 573 (the elements of a unitary mark are so integrated
or merged that they cannot be regarded as separate elements, and it is obvious that
no claim is made other than to the entire mark). In Kraft, the Board explained that
a unitary mark could be created “where the words which have been put together
function as a unit, with each relating to the other rather than directly to the goods.”
218 USPQ at 573. See also In re EBS Data Processing, Inc., 212 USPQ 964, 966
(TTAB 1981).

10 5 TTABVUE 9.
11 In re Kraft, the Board found that the mark LIGHT N’ LIVELY was unitary because it had
a suggestive significance apart from the merely descriptive significance of the individual
term LIGHT for reduced calorie mayonnaise. Based upon that reasoning, the Board held
that a disclaimer of the term LIGHT was unnecessary.
Serial No. 85501982
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To determine whether a composite mark is unitary, the Board must determine
“how the average purchaser would encounter the mark under normal marketing of
such goods and also . . . what the reaction of the average purchaser would be to this
display of the mark.” Id, quoting In re Magic Muffler Service, 184 USPQ 125, 126
(TTAB 1974). This can best be accomplished by looking at the specimen filed with
the application because it shows how the mark is used in connection with the goods
or services. In re Magic Muffler Service, 184 USPQ at 126. Since this application
was filed based on Applicant’s bona fide intent to use the mark, there is no
specimen. However, as noted above, we have the benefit of Applicant’s website
submitted by the Trademark Examining Attorney.
It is well established that marks with a sound pattern such as alliteration can
encourage persons encountering the mark to perceive the mark as a whole. See e.g.,
Kraft, 218 USPQ at 573. In this case, however, the juxtaposition of the words
CHIP’S and CHICKEN CASSEROLE in Applicant’s mark fails to create a unique
and alliterative cadence that results in the term “Chicken Casserole” losing its
descriptive significance. Unlike the LIGHT N’ LIVELY mark at issue in Kraft,
prospective consumers will not miss the descriptive significance of “Chicken
Casserole” in connection with Applicant’s pet food. See In re Lean Line, Inc., 229
USPQ 781, 782 (TTAB 1986) (LEAN LINE not considered unitary; “there is nothing
in the record to suggest that the mere fact that both words which form the mark
begin with the letter ‘L’ would cause purchasers to miss the merely descriptive
significance of the term ‘LEAN’ or consider the entire mark to be a unitary
Serial No. 85501982
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expression.”). That is to say, prospective consumers will view Applicant’s mark as
communicating the flavor of its pet food. In that regard, Applicant uses the term
“Chicken Casserole” to identify the pet food recipe in the same manner that
Evenger’s, Dave’s Pet Foods, Nutro and Friskies use that term. Thus, Applicant’s
mark engenders the commercial impression CHIP’S brand chicken casserole pet
food and not as a unitary term.
Applicant also argues that its mark is suggestive because it “conjures images of
mashed potatoes, dining room tables, and – of course – a home-cooked casserole.”12
However, “[c]onsumers obviously will understand that the packaged product does
not contain an entire home-cooked casserole for pets, but will appreciate and be
amused by the suggestion.”13 We agree with Applicant that the mark CHIP’S
CHICKEN CASSEROLE conjures images of “a home-cooked casserole.” In fact, the
term “Chicken Casserole” merely describes a chicken recipe and that is the image
that Applicant, and its competitors, are trying to impress upon consumers as
demonstrated by the appealing photographs of the chicken casserole pet foods.
Consumers will perceive Applicant’s mark as directly informing them that CHIP’S
CHICKEN CASSEROLE is a chicken casserole for their pet. There is no incongruity
as asserted by Applicant.14

12 5 TTABVUE 10.
13 5 TTABVUE 11.
14 5 TTABVUE 11.
Serial No. 85501982
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Finally, although Applicant did not reference the third-party registrations in its
brief, Applicant submitted copies of five third-party registrations listed below for
marks for pet food recipes.15
1. Registration No. 2191245 for the mark CASSEROLE DINNER (“Dinner”
disclaimed);
2. Registration No. 3962894 for the mark CHICKEN CATCCIATORI;
3. Registration No. 3269565 for the mark CHICK ‘N’ CHUNX;
4. Registration No. 3459562 for the mark CHICK ‘N’ STICKS and design;
5. Registration No. 3277971 for the mark CHICK ‘N’ STRIPS and design.
Applicant argued that “[j]ust as the Trademark Office found the cited marks
suggestive, so should CHIP’S CHICKEN CASSEROLE be found suggestive.”16
However, prior registrations do not rebut the finding the term “Chicken Casserole”
is merely descriptive.
These prior registrations do not conclusively rebut the
Board's finding that ULTIMATE is descriptive in the
context of this mark. As discussed above, the term
ULTIMATE may tilt toward suggestiveness or
descriptiveness depending on context and any other factor
affecting public perception. The Board must decide each
case on its own merits. In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir.
1985). Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the
PTO's allowance of such prior registrations does not bind
the Board or this court.
Needless to say, this court encourages the PTO to achieve
a uniform standard for assessing registrability of marks.

15 4 TTABVUE 34-42.
16 4 TTABVUE 13.
Serial No. 85501982
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Nonetheless, the Board (and this court in its limited
review) must assess each mark on the record of public
perception submitted with the application. Accordingly,
this court finds little persuasive value in the registrations
that Nett Designs submitted to the examiner or in the list
of registered marks Nett Designs attempted to submit to
the Board.
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
In view of the foregoing, we find that the term “Chicken Casserole” in the mark
CHIP’S CHICKEN CASSEROLE merely describes a feature of Applicant’s pet food.
Decision: The requirement for a disclaimer of the term “Chicken Casserole” is
affirmed and registration to Applicant is refused. However, in the event that
Applicant submits the required disclaimer within thirty days from the mailing date
of this decision, the refusal to register will be set aside and the application will
proceed to publication.17 See Trademark Rule 2.142(g).

17 A proper disclaimer would read: "No claim is made to the exclusive right to use Chicken
Casserole apart from the mark as shown."