Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Nov 13, 2013

No. 85128946 (T.T.A.B. Nov. 13, 2013)

Oral Hearing: Mailed:
September 18, 2013 November 13, 2013

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. 85128946
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Timothy D. Pecsenye and Megan E. Spitz of Blank Rome LLP for Midwestern Pet
Foods, Inc.

Esther Borsuk, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).1
_____

Before Kuhlke, Lykos and Shaw, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Midwestern Pet Foods, Inc. (applicant) filed this application to register on the
Principal Register the mark EARTHBORN HOLISTIC in standard characters for
goods identified as “cat food” in International Class 31.2
The examining attorney refused registration pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a), based on applicant’s failure to comply with the
requirement to disclaim the word “HOLISTIC” on the ground that the wording is

1 James Griffin argued the case at oral hearing on behalf of the Office.

2 Application Serial No. 85128946, filed September 14, 2010, alleging a bona fide intent to
use the mark in commerce pursuant to Section 1(b) of the Trademark Act.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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merely descriptive of applicant’s goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). An examining attorney may require an
applicant to disclaim an unregistrable component of a mark otherwise registrable.
Trademark Act Section 6(a). A “disclaimer” is a statement that applicant does not
claim exclusive rights to an unregistrable component of a mark:
[A] disclaimer of a component of a composite mark amounts merely to
a statement that, in so far as that particular registration is concerned,
no rights are being asserted in the disclaimed component standing
alone, but rights are asserted in the composite; and the particular
registration represents only such rights as flow from the use of the
composite mark.

Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats.
1954).
Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is ground for refusal of
registration. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006);
In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd.,
90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ
188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
The issues presented in this case are whether the examining attorney has
met the burden of establishing that the term HOLISTIC as applied to “cat food” is
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merely descriptive, and if so, whether applicant’s mark, EARTHBORN HOLISTIC,
constitutes a unitary expression so as to remove the descriptive significance of that
term, or if applicant’s prior registration precludes the disclaimer requirement.
Is the term HOLISTIC Merely Descriptive of Cat Food?
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). The determination of whether a mark is merely descriptive
must be made in relation to applicant’s goods, 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. Id. See also In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
(determination of mere descriptiveness must be made not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to make on the average
purchaser of such goods or services).
The test for determining whether a term is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
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It is not necessary, in order to find a term merely descriptive, that the term describe
each feature of the goods or services, only that it describe a single, significant
ingredient, quality, characteristic, function, feature, purpose or use of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
In support of her position that the term HOLISTIC is merely descriptive of
applicant’s “cat food,” the examining attorney submitted the following dictionary
definitions for the word “holistic”:
1) of or relating to holism 2) relating to or concerned with wholes or
with complete systems rather than with the analysis of, treatment or,
or dissection into parts 3; and

1) based on the idea that you should take care of your whole body and
mind, rather than just treating a part of the body that is ill 2) thinking
about the whole of something, and not just dealing with particular
aspects.4

In addition, in her March 30, 2012 Office Action, she submitted copies of
excerpts from third-party websites that show the word “holistic” used to describe
the pet food as addressing the complete needs of the pet.5 A few examples are set
forth below:

3 Merriam Webster Dictionary retrieved on August 23, 2011 from www.merriam-
webster.com, attached to August 23, 2011 Office Action.

4 MacMillan Dictionary retrieved on March 30, 2012 from www.macmillandictionary.com,
attached to March 30, 2012 Office Action.

5 The search engine results of third-party Internet websites submitted by the examining
attorney are of little probative value inasmuch as typically there is insufficient text to show
the context within which a term is used. Bayer Aktiengesellschaft, 82 USPQ2d at 1833;
TBMP § 1208.03.

Serial No. 85128946

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Innova … Holistic health food for your pet;6

Holistic Dog Care … Take loving care of your dog with natural holistic
pet care products. We offer holistic products to treat a variety of
health conditions … (offering nutritional supplements and herbal
remedies);7 and

Blue for Dogs … All of our healthy and holistic dog foods are made
with the finest natural ingredients.8

Finally, the examining attorney submitted several use-based third-party
registrations for marks that include the word HOLISTIC for pet food or dog food
where the term is either disclaimed on the Principal Register, registered on the
Principal Register under Section 2(f) based on acquired distinctiveness, or
registered on the Supplemental Register. See, e.g., Reg. No. 3805194 for the mark
SOLID GOLD HOLISTIQUE BLENDZ, the term “Holistic Blends” disclaimed; Reg.
No. 3533637 for the mark HOLISTIC SELECT registered under Section 2(f); Reg.
No. 3727602 for the mark ULTRA HOLISTIC NUTRITION, the term “Holistic
Nutrition” disclaimed; and Reg. No. 3651149 for the mark HOLISTIC BLEND
registered under Section 2(f). In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB
2006).
It is the examining attorney’s position that the term HOLISTIC describes a
significant feature of the goods. Specifically, the examining attorney argues that
“HOLISTIC, in connection with cat food, refers to the fact that the cat food treats
the entire body of the cat. In fact, applicant’s own website states that applicant has

6 Natura Pet, www.naturapet.com, attached to March 30, 2012 Office Action.

7 Only Natural Pet, www.onlynaturalpet.com, attached to March 30, 2012 Office Action.

8 Blue Buffalo, http://bluebuffalo.com, attached to March 30, 2012 Office Action.
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‘developed a natural holistic approach to nutrition with high quality ingredients to
nourish the whole cat. Every ingredient is formulated to provide nutrition to every
part of your cat’s system naturally.’” Examining Attorney Br. p. 5 quoting
Earthborn Holistic, www.earthbornholistic.com, attached to March 30, 2012 Office
Action. Thus, she explains that applicant “has clearly used HOLISTIC to describe
an essential characteristic of its cat food -- the food treats the entire body of a cat.”
Id. The examining attorney points to the evidence of other manufacturer’s use of
the term HOLISTIC in connection with pet food and concludes that it “is clearly a
word that is used throughout the cat food industry and is necessary to describe cat
food in the marketplace [and] [a]pplicant should not be allowed to have a
competitive advantage in the rights of this word.” Id.
Applicant argues that it is suggestive rather than merely descriptive in that
HOLISTIC “can be said to embody so many of the varied definitions provided by the
Examining Attorney … the word ‘HOLISTIC’ can hardly be said to immediately
describe any one significant feature or characteristic of Midwestern’s cat food.”
App. Br. p. 15. Rather, applicant asserts that it simply “conveys Midwestern’s
ability to provide healthy, healthful foods that aim to keep your whole cat in good
shape” and “connotes a sophisticated level of pet food formulation, catered to the
needs of a demanding pet owner clientele.” Id.
Based on this record, we find that the examining attorney has demonstrated
that HOLISTIC is merely descriptive of a significant feature of applicant’s cat food,
namely, that it, in applicant’s words, “nourish[es] the whole cat. Every ingredient is
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formulated to provide nutrition to every part of your cat’s system naturally.”9 No
imagination is needed to connect the word HOLISTIC with cat food; it immediately
informs the consumer of a significant feature of the cat food, that it nourishes the
whole cat. While the term may be more widely used in connection with health care
related goods or services, the examples in the record of third-party uses in the pet
food industry confirm that this term is also used in this industry to describe a
significant feature of pet food, including cat food. Applicant’s reference to one third-
party registration for pet food where the mark includes the word HOLISTIC
without a disclaimer, is not sufficient to rebut the examining attorney’s showing of
mere descriptiveness.10
Is the Mark EARTHBORN HOLISTIC unitary?
Applicant argues that a disclaimer is inappropriate here because 1) its mark
is unitary and 2) it owns a prior valid and subsisting incontestable registration for
the mark EARTHBORN HOLISTIC in typed form for “dog food” in International
31.11 We address each argument in turn.

9 Printout of applicant’s website www.earthbornholisticpetfood.com, attached to March 30,
2012 Office Action.

10 See Reg. No. 2598131 for the design and word mark HOLISTIC DOG for pet food with
the word DOG disclaimed, attached to June 24, 2011 Response. We further note that this
registration was cancelled on March 1, 2013 under Section 8 and, as such, is of limited
probative value. Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989); Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1653 n.6 (TTAB 2002).

11 Reg. No. 3202464, issued on January 23, 2007, Sections 8 and 15 combined declaration
accepted and acknowledged.
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Whether or not a mark is unitary is a factual determination. In re Slokevage
78 USPQ2d at 1397. As explained in Dena Corp. v. Belvedere International Inc.,
950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991):
A unitary mark has certain observable characteristics. Specifically, its
elements are inseparable. In a unitary mark, these observable
characteristics must combine to show that the mark has a distinct
meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and
distinct commercial impression.

Ultimately, the “test for unitariness requires the Board to 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.’” Dena Corp., 21 USPQ2d at 1052 quoting In re Magic Muffler
Serv., 184 USPQ 125, 126 (TTAB 1974).
A mark may be unitary where it is: 1) a compound word mark comprised of
an unregistrable component and a registrable component combined into a single
word; 2) a telescoped mark comprised of two or more words that share letters; 3) a
compound word comprised of an unregistrable component and a registrable
component formed with a hyphen or other punctuation; 4) a unitary phrase such
that “the whole is something more than the sum of its parts” (Dena Corp., 21
USPQ2d at 1052); 5) a slogan that is not itself merely descriptive; 6) a double
entendre; 7) composed of sound patterns such as alliteration and rhyming; 8)
incongruous; or 9) composed of words and design that form a unitary whole.
Applicant argues that is mark is unitary because:
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The coined term “EARTHBORN” (meaning a part of the earth) has
nothing to do with and is incompatible with the term “HOLISTIC”
(meaning concerned with wholes rather than parts). A particular food
is not normally described as being “EARTHBORN” and “HOLISTIC” at
the same time, in other words a food cannot be part of something and
also be the whole of itself. By their very natures the two terms are
incongruous or opposites that cancel one another out. In fact,
Applicant chose the mark EARTHBORN HOLISTIC because the terms
“EARTHBORN” and “HOLISTIC” are new age sounding terms
suggestive of a new age lifestyle that are in fact linguistic opposites.
Cat food cannot be concerned only with the whole and then also be part
of the earth. The trademark significance of EARTHBORN HOLISTIC
is not the individual meanings of the terms but their suggestive and
incongruous commercial impressions. As an incongruity,
EARTHBORN HOLISTIC is a unitary whole from which no component
need or should be disclaimed …12

Applicant relies on the case In re J.R. Carlson Labs, Inc., 183 USPQ 509
(TTAB 1974) wherein the requirement to disclaim the letter “E” in the mark E GEM
for bath oil was reversed. In that case, in reversing the requirement, the Board
found that the mark was a compound mark and noted that “registration of a
compound mark is merely recognition of rights in the mark as a whole and does not
create or recognize any proprietary rights in the components apart from each other.”
Id. at 511. As explained in the Trademark Manual of Examining Procedure, a
“compound word mark is comprised of two or more distinct words (or words and
syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT,

12 App. Br. p. 9. In support of its argument in its request for reconsideration, applicant
referenced several third-party registrations for marks applicant asserts are “syntactically
awkward combinations of adjectives that form unitary marks due to their incongruous
structures.” We first point out that a listing of registrations is not sufficient to make the
registrations of record. See In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). Further,
out of six examples only two contain just two words. Finally, it is well-established that we
must make our determination on the record before us and allowance of other marks (e.g.,
SHINY BRITE, SMART FAST or SAFE SIMPLE SMART) has little to no bearing on our
determination here. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001).
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MAXIMACHINE, and PULSAIR) or “is formed by hyphenating two words or terms,
one of which would be unregistrable alone.” TMEP §§ 1213.05(a) and 1213.05(a)(ii).
Based on these guidelines, we find that the mark EARTHBORN HOLISTIC is not a
compound mark.13
“[I]f the elements are so merged together that they cannot be regarded as
separable elements, the mark is a single unitary mark and not a composite mark
and no disclaimer is necessary.” In re EBS Data Processing, Inc., 212 USPQ 964,
966 (TTAB 1981). See also TMEP § 1213.05. Here, the words EARTHBORN and
HOLISTIC are not “so merged together” such that they are not perceived as
separable elements. We find that the individual words do not “cancel one another
out.” The words EARTHBORN (“of earthly origin”) and HOLISTIC (focusing on the
interdependence of the diverse parts within the total entity) each retain their
separate but congruent meanings. Thus, the mark does not present an incongruity
such that the merely descriptive meaning of HOLISTIC is lost or eclipsed by some
combined meaning or double entendre.
Finally, applicant relies on its prior registration (Reg. No. 3202464) for the
mark EARTHBORN HOLISTIC in typed form for dog food which does not include a
disclaimer for the word HOLISTIC and is over five years old. Applicant argues that
the unitariness of its mark was already recognized in its prior registration and the
need for consistency weighs in favor of allowing registration absent a disclaimer.

13 We further note that although the decision in J.R. Carlson references the applied-for
mark as E GEM, the mark depicted on what appears to be the ultimately issued
registration contains a hyphen and is clearly a traditional compound mark E-GEM. See
Reg. No. 1018587, filed on February 16, 1973, issued on August 19, 1975 and cancelled on
January 12, 1982 under Section 8.
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In support of its argument, applicant relies on In re The American Sail
Training Association, 230 USPQ 879 (TTAB 1986) wherein the Board reversed the
disclaimer requirement for TALL SHIPS in the mark RETURN OF THE TALL
SHIPS for “organizing, arranging and sponsoring sailing races” in view of the
incontestable prior registration for the mark TALL SHIPS for “organizing,
arranging and sponsoring sailing races.” Applicant argues that while the goods in
this case are not identical, “they could not be more similar without being identical”
and, therefore, similar to TALL SHIPS, the disclaimer requirement should be
withdrawn. App. Br. p. 18.
It is settled that a “registered mark is incontestable only in the form
registered and for the goods or services claimed.” In re Save Venice New York Inc.,
259 F.3d 1346, 59 USPQ2d 1779, 1782 (Fed. Cir. 2001). In recent decisions, the
Board has required identical goods in order to apply the TALL SHIPS doctrine. For
example in In re Best Software Inc., 63 USPQ2d 1109 (TTAB 2002), the Board
affirmed the disclaimer requirement for the word BEST in the mark BEST!
IMPERATIV HRMS for “computer software for human resource, payroll, W-2 and
tax processing and employee management” despite the applicant’s prior
incontestable registration for BEST! for “goods such as computer programs for
accounting, tax preparation, generating office reports and manuals, electronic filing
and facsimile transmission, human resource management, financial management,
computer network management, and for office administration and file
management.” Id. at 1110-11. The Board explained that “the statute clearly states
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that the incontestability provided applies specifically to the use of the registered
mark, rather than registration. … ownership of an incontestable registration does
not allow an applicant to obtain, by that fact alone, another registration for the
same or similar mark for somewhat different goods or services.” Id. The Board
noted that the services in TALL SHIPS were identical. The Board concluded that
“ownership of an incontestable registration does not give [an] applicant a right to
register the same or similar mark for different goods or services, even if they are
closely related to the goods or services set forth in the incontestable registration.”
Id. at 1113.
In In re Outdoor Recreation Group, 81 USPQ2d 1392 (TTAB 2006) applicant
sought to register the mark OUTDOOR PRODUCTS in standard character form on
the Principal Register with a claim of acquired distinctiveness under Section 2(f) as
to the word OUTDOOR and a disclaimer of the word PRODUCTS for “duffle bags,
backpacks, tote bags, soft packs comprised of backpacks or hikers’ bags constructed
of soft material which packs do not have a rigid frame for supporting the bag,
adjustable belly bands used for backpacks, shoulder pad straps and accessory bands
and straps sold separately from the bags heretofore mentioned, fanny packs,
shoulder bags and belt pouches,” in International Class 18 and “clothing, consisting
of down booties, ponchos, gaiters which are protective, covers for footwear, chaps,
parkas, pants, jackets and rain suits,” in International Class 25. Applicant owned
an incontestable prior registration for for “fanny packs, back
packs, duffle bags, shoulder bags and belt pouches,” in International Class 18 and
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“parkas, pants, jackets, rain suits, ponchos, chaps and gaiters,” in International
Class 25. Because the application recited goods that were not included in the prior
incontestable registration, although certainly closely related and within the same
category of goods, the TALL SHIPS doctrine did not apply.
Applying these guidelines, while dog food and cat food are similar insofar as
they fall under the general category of pet food, they are distinct products. As
explained on applicant’s website these respective goods are comprised of different
formulations. See Earthborn Holistic, www.earthbornholisticpetfood.com, attached
to March 30, 2010 Office Action. In view thereof, the TALL SHIPS doctrine does
not apply in this case. As noted by the Court of Appeals for the Federal Circuit, the
statute does not provide “a right ipso facto to register a mark for additional goods
when items are added to a company’s line or substituted for other goods covered by
a registration.” In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.
Cir. 1985) (DURANGOS for cigars does not preclude refusal of DURANGO for
chewing tobacco as primarily geographically deceptively misdescriptive).
In sum, we find that the Office has met its burden of proof that the term
HOLISTIC as it appears in the mark EARTHBORN HOLISTIC when used in
connection with “cat food,” is merely descriptive, and, therefore, subject to the
disclaimer requirement.
Decision: The refusal to register the mark EARTHBORN HOLISTIC in the
absence of a disclaimer of HOLISTIC is affirmed. However, if applicant submits the
required disclaimer to the Board within two months of the mailing date of this
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decision, this decision will be set aside as to the affirmance of the disclaimer
requirement.14 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

14 The standardized printing format for the required disclaimer is as follows: “No claim is
made to the exclusive right to use the word ‘Holistic’ apart from the mark as shown.” TMEP
§ 1213.08(a).