Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Sep 26, 2013

No. 85501978 (T.T.A.B. Sep. 26, 2013)

Oral Hearing: September 18, 2013 Mailed: September 26, 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 Nos. 85501978 and 85501985
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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).1
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Before Kuhlke, Lykos, and Shaw, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Midwestern Pet Foods, Inc. (“applicant”) filed applications to register on the
Principal Register the marks PEPPER’S POT ROAST and TOBY’S TURKEY
DINNER, both in standard character form, for “pet food” in International Class 31.2
During ex parte prosecution, applicant disclaimed the word DINNER in the
application for TOBY’S TURKEY DINNER.
Registration has been finally refused in light of applicant's failure to comply
with the examining attorney's requirement for disclaimers of “POT ROAST” and

1 Jonathan Falk argued the case at oral hearing on behalf of the Office.
2 Serial Nos. 85501978 and 85501985, both filed December 22, 2011, 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
Serial Nos. 85501978 and 85501985
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“TURKEY” pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the ground
that the terms are merely descriptive of a feature of the identified goods and that
the marks are not unitary.
Upon final refusal of registration, applicant filed a timely appeal and request
for reconsideration for each application. After the examining attorney denied the
requests for reconsideration, the appeals were resumed. Inasmuch as these appeals
involve common questions of law and fact, and each has been treated in
substantially the same manner by the applicant and by the examining attorney, we
have consolidated these separate appeals and are issuing a single decision herein.
For the reasons explain below, we affirm both refusals to register.
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. §
1056(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), 15 U.S.C. § 1052(e)(1) and, therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2
Serial Nos. 85501978 and 85501985
3
USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ
46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977);
and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A unitary mark is a mark with multiple elements that creates 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) (“Dena”). See also In re Kraft, Inc., 218 USPQ
571, 573 (TTAB 1983) (“Kraft”). 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.” Id. See also In re EBS Data Processing, Inc., 212
USPQ 964, 966 (TTAB 1981) (“Pocket Profile” separable element from “Phacts
Pocket Profile;” disclaimer requirement for “Pocket Profile” upheld). Other factors
for consideration include the use of alliteration, and determining “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, 21 USPQ2d at 1052.
The issues presented in this case are whether the examining attorney has
met the burden of establishing that the terms POT ROAST and TURKEY as applied
to “pet food” are merely descriptive, and if so, whether applicant’s marks PEPPER’S
POT ROAST and TOBY’S TURKEY DINNER each constitute a unitary expression
so as to remove the descriptive significance of those terms.
Serial Nos. 85501978 and 85501985
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Considering first the issue of descriptiveness, applicant argues that
PEPPER’S POT ROAST is suggestive, conjuring images of “a traditional family
meal of the type served to celebrate holidays.” Applicant’s Brief, p. 5. As applicant
contends, the mark PEPPER’S POT ROAST is incongruous because “[c]onsumers
will understand that the packaged product does not contain a home-cooked, oven-
roasted pot roast for pets…” Applicant’s Brief, p. 5. Similarly, applicant contends
that the mark TOBY’S TURKEY DINNER calls to mind “a traditional family meal
of the type served over the Thanksgiving or Christmas holidays.” Applicant’s Brief,
p. 5.
A term is merely descriptive if it immediately conveys knowledge of a
significant quality, characteristic, function, feature or purpose of the products 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). We must determine the descriptiveness of a mark 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. See In re The Chamber of Commerce of the U.S., supra,
citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007).
With regard to the mark TOBY’S TURKEY DINNER, because applicant has
disclaimed the term DINNER, the only remaining issue is whether the term
TURKEY is descriptive. The record indisputably shows that turkey is a commonly
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used ingredient and/or flavoring in pet food. See for example the following excerpts
submitted by the examining attorney from third-party Internet web sites showing
that competitors in the pet food industry use turkey as a key ingredient in
formulating and marketing their own brand of pet food:
As a tribute to dog’s heritage, Eukanuba created Country-Grown
Turkey & Multigrain formula, a natural dog food with vitamins and
minerals featuring 100% Real Turkey as the #1 ingredient.
(www.eukanuba.com);

Many pet parents are choosing to serve grain free diets due to concerns
about potential ingredient sensitivities. Turkey is the first ingredient
in this recipe. (www.pinnaclepet.com); and

Wellness® Canned Turkey Recipe is an excellent source of high quality
protein, made with high quality turkey free of added growth hormones
and steroids. We use turkey as our most plentiful ingredient because it
is a flavorful, digestible protein source. (www.wellnesspetfood.com).

Similarly, with regard to the mark PEPPER’S POT ROAST, the record also shows
that “pot roast” is a commonly used flavoring for pet food:
Iams Savory Sauce is a healthy way to top dry dog food for mealtime
variety. When poured over a high-quality dog food such as Iams, Iams
Savory Sauce adds essential vitamins, minerals and antioxidants to a
complete and balanced meal. Pot Roast Flavor contains real beef broth
for a savory taste dogs crave. Every bottle also contains real peas and
carrots for added flavor and nutrients. Beet pulp aids with healthy
digestion. All flavors are low in fat and calories. (www.iams.com);

This is the perfect sized freeze-dried mini meatballs for smaller dogs or
for training treats for larger dogs too! Made with the same care &
quality that Grandma Lucy's is known for, you won't find by-products,
preservatives, or artificial flavors! In fact these tasty treats are wheat
free! Choose either Chicken Stew or Pot Roast flavor. Net wt. 6 oz.
Chicken Stew Ingredients: Chicken, Rice Flour, Oats, Potatoes, Rice,
Carrots, Celery, Garlic; Pot Roast Ingredients: Beef, Rice Flour,
Carrots, Potatoes, Celery, Garlic. (www.grandmalucys.com); and

Serial Nos. 85501978 and 85501985
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Earthborn Holistic grain-free dog food. Available in Chicken, Duck,
Turkey, Pot Roast, and Lamb. (www.especiallyforpets.com).

Based on this evidence, the Office has met its burden of showing the descriptive
significance of the terms POT ROAST and TURKEY when used in connection with
applicant’s identified goods – pet food. Cf. In re Andes Candies Inc., 178 USPQ 156
(CCPA 1973) (finding CRÈME DE MENTHE merely descriptive of laminated
chocolate mint candy squares).
Turning now to the issue of whether applicant’s applied-for marks each
constitute a unitary expression, applicant relies on the seminal case of In re Kraft,
supra, in which the Board concluded that the mark LIGHT N’ LIVELY was a
unitary expression 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 found that a disclaimer of the
term LIGHT was unnecessary in that case. Applicant contends that similar to the
mark LIGHT N’ LIVELY, each of its applied-for marks possesses a “unique cadence
and strong alliterative qualit[y]….” More specifically, applicant argues:
As with the initial “LI” syllable of the first and third word in the
“LIGHT N’ LIVELY” mark, the “PP” found in the first, second, and
third syllables of the PEPPER’S POT ROAST mark creates
alliteration, which causes consumers to perceive the mark as a single
unit. Applicant’s Brief, p. 4.

Applicant makes a similar argument with regard to the mark TOBY’S
TURKEY DINNER:
As with the initial “LI” syllable of the first and third word in the
“LIGHT N’ LIVELY” mark, the “TT” or “DD” found in the first syllable
of each word in the TOBY’S TURKEY DINNER mark creates
Serial Nos. 85501978 and 85501985
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alliteration, which causes consumers to perceive the mark as a single
unit. The unitary quality is further strengthened by the rhyming of
“TOBY” and “TURKEY.” Applicant’s Brief, p. 4.

The examining attorney contends, however, that alliterative or repeated
wording does not in itself make a mark unitary, relying on the Board’s holdings in
prior decisions such as In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007) (the
rhyming quality of the words ZOGGS TOGGS “does not infuse TOGGS with any
separate and distinct meaning apart from its generic meaning”) and 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 expression.”).
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, we agree with the examining
attorney that the juxtaposition of the words PEPPER’S POT ROAST and TOBY’S
TURKEY DINNER in applicant’s marks fails to create an alliterative lilting
cadence that results in the words POT ROAST and TURKEY losing their
descriptive significance. Unlike the LIGHT N’ LIVELY mark at issue in Kraft,
prospective consumers will not “miss the descriptive significance,” of these terms
when considered in relation to applicant’s pet food. See In re Lean Line, Inc., 229
Serial Nos. 85501978 and 85501985
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USPQ at 782. That is to say, prospective consumers will view applicant’s mark as
communicating either a key ingredient or flavor of applicant’s pet food.
Moreover, we agree with the examining attorney’s position that in this case,
the marks at issue cannot be seen as unitary. The Board has a long line of
established case law that marks which create a double entendre or double meaning
are unitary. See., e.g., In re Tea and Sympathy Inc., 88 USPQ2d 1062 (TTAB 2008)
(THE FARMACY not merely descriptive because it is a play on the “farm-fresh”
characteristics of applicant’s herbs and organic products used for medicinal
purposes.); In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
(SUGAR & SPICE not merely descriptive for bakery products because it
immediately calls to mind “sugar and spice and everything nice” from the well
known nursery rhyme); In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975) (THE
SOFT PUNCH for noncarbonated soft drink not merely descriptive because it
projects a double entendre of a non-alcoholic drink as well as having a pleasing hit
or soft impact); In re Priefert Mfg. Co. Inc., 222 USPQ 731, 733 (TTAB 1974) (HAY
DOLLY not merely descriptive of self-loading trailers for hauling bales;
“phonetically the term is equivalent to the expression ‘Hey Dolly,’ giving the mark a
commercial impression which transcends that which emerges as a result of legal
analysis.”). Applicant’s proffered alternative meaning is that the marks are
evocative of a traditional family dinner. Applicant’s disclaimer of the term DINNER
in the mark TOBY’S TURKEY DINNER is inconsistent, however, with this
argument. Furthermore, we find that the prevalent use of the terms “pot roast” and
Serial Nos. 85501978 and 85501985
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“turkey” in the pet food industry fail to create a separate significance for the marks
in the minds of consumers. Consequently, as a whole, the mark does not have a
separate non-descriptive meaning.3
We next consider “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, 21 USPQ at 1052. The
examining attorney has demonstrated the mere descriptiveness of the terms POT
ROAST and TURKEY as applied to pet food. Given the recognition in the minds of
consumers of these terms with a particular ingredient or flavor of pet food, the
inclusion of the term PEPPER’S and TOBY’S in applicant’s respective marks will
not alter consumers’ reaction to the descriptiveness of the terms POT ROAST and
TURKEY.
Lastly, we note that competitors in the pet food industry should be free to use
the descriptive language POT ROAST and TURKEY when describing to the public
their own particular brand of pet food. As explained in the seminal case of In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978):
The major reasons for not protecting such marks are: (1) to prevent the
owner of a mark from inhibiting competition in the sale of particular
goods; and (2) to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing infringement suits
by the registrant against others who use the mark when advertising or
describing their own products.

3 That being said, we are not suggesting that a mark must express a double entendre to be
unitary.

Serial Nos. 85501978 and 85501985
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In sum, we find that the Office has met its burden of proof that the terms
POT ROAST and TURKEY, as they appear in the marks PEPPER’S POT ROAST
and TOBY’S TURKEY DINNER, when used in connection with “pet food,” are
merely descriptive, and therefore subject to a disclaimer.
Decision: The refusal to register each mark in the absence of a disclaimer of
POT ROAST and TURKEY is therefore affirmed.
However, this decision will be set aside if, within two months of the mailing
date of this decision, applicant submits to the Board a proper disclaimer of “POT
ROAST” and “TURKEY” in the respective application. See Trademark Rule
2.142(g). The standardized disclaimer format for each mark is as follows:
No claim is made to the exclusive right to use POT ROAST apart from the
mark as shown.
No claim is made to the exclusive right to use TURKEY DINNER apart from
the mark as shown.