Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Jul 18, 2018

No. 86702878 (T.T.A.B. Jul. 18, 2018)

This Opinion is Not a
Precedent of the TTAB

Hearing: July 11, 2018 Mailed: July 18, 2018

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. 86702878
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Timothy D. Pecsenye, Bradford C. Craig, and Samar Aryani-Sabet of Blank Rome
LLP for Midwestern Pet Foods, Inc.

Aaron Rosenthal,1 Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Taylor, Lykos and Hightower,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Midwestern Pet Foods, Inc. (“Applicant”) seeks to register on the Principal
Register the mark EARTHBORN REBORN in standard characters for “pet food” in
International Class 31.2 Applicant has appealed the Trademark Examining

1 Mr. Rosenthal is the author of the Office’s appeal brief and represented the Office at the
oral hearing held on July 11, 2018. The prosecution of this application was handled by
Trademark Examining Attorney Nicole Nguyen of Law Office 107.
2 Application Serial No. 86702878, filed July 23, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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Attorney’s final refusal to register the mark under Trademark Act Sections 1 and 45,
15 U.S.C. §§ 1051 and 1127, on the following two grounds: (1) that the mark in the
drawing is not a substantially exact representation of the mark as used on either the
original or substitute specimen, and (2) that Applicant’s original specimen and
substitute specimen each fail to show the applied-for mark used in connection with
the identified goods.
I. Background
Before discussing the merits of the appeal, a summary of the prosecution history
is in order. The involved application was originally filed under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce.
After publication in the Official Gazette and issuance of a notice of allowance, on
August 22, 2016, Applicant submitted a Statement of Use accompanied by the
following specimen, consisting of a “[s]creenshot of Applicant’s website featuring the
mark used in direct connection with the goods included in International Class 31
outlined in the Application.”3

3 During oral argument, counsel for Applicant informed the Board that the screenshot was
an incomplete depiction of Applicant’s website and requested that the Board take judicial
notice of the entirety of Applicant’s website. The Board denied Applicant’s request, explaining
that Board practice does not include taking judicial notice of business-to-consumer e-
commerce websites. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 1208.04 (June 2018) and cases cited therein. In general, the taking of judicial
notice is reserved for reference materials such as dictionary definitions, encyclopedia entries,
and census data. See id. The Board added that once an appeal has been filed, the proper way
to seek to add evidence to the record is to file a written request with the Board to suspend
the appeal and remand the application for further examination. See Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d); see also TBMP § 1207.02 and cases cited therein. The Board’s
denial at the hearing prompted Applicant’s attorney to request during rebuttal that the
application be remanded in order to make the evidence of record. The Board denied this
request as improper insofar as it was not in writing. In any event, even if Applicant formally
filed a request for remand, the Board would have denied the request for lack of good cause
Serial No. 86702878
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The Trademark Examining Attorney refused registration on grounds that the
mark in the drawing is not a substantially exact representation of the mark as used
on the specimen, and that the specimen fails to show the applied-for mark used in
connection with the identified goods. In explaining why the drawing was not a
substantially exact representation of the mark on the specimen, the Examining
Attorney observed:
[T]he drawing displays the mark as “EARTHBORN
REBORN”. However, the specimen displays the mark as
“EARTHBORN HOLISTIC” inside of a circular design with
the wording “REBORN” below, and overlapping with the

given the late stage in the appeal process and the fact that the evidence was previously
available. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009)
(request for remand denied for failure to show good cause so late in the appeal); In re Central
Sprinkler Co., 49 USPQ 1194, 1195 n.2 (TTAB 1998) (request for remand to make third-party
registrations of record denied because such evidence was previously available).
Serial No. 86702878
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circle; in addition, there appears to be further wording
above “REBORN” that is not legible in the screenshot.
September 15, 2016 Office Action. The Examining Attorney advised Applicant that
amending the mark in the drawing to conform to the mark on the specimen would be
a material alteration and would not be accepted, because the difference between the
mark in the specimen and the drawing is significant and each mark creates a
different commercial impression. As to the second ground for refusal, that the
specimen does not show the applied-for mark in use in commerce in connection with
the goods, the Examining Attorney pointed out that the identified goods consist of
“pet food,” and that “the specimen shows a box for recycling; there is no reference to
pet food in the specimen.” Id. The Examining Attorney also advised Applicant of the
types of specimens that would be acceptable:
Examples of specimens for goods include tags, labels,
instruction manuals, containers, photographs that show
the mark on the actual goods or packaging, and displays
associated with the actual goods at their point of sale. See
TMEP §§ 904.03 et seq. Webpages may also be specimens
for goods when they include a picture or textual description
of the goods associated with the mark and the means to
order the goods. TMEP § 904.03(i).
Id.
On March 15, 2017, Applicant responded to the refusal, essentially arguing that
the presentation of the terms EARTHBORN and REBORN in relatively larger size
font is such that they constitute a substantially exact representation of the mark
depicted on the drawing page, and that the use of the mark on a recycling container
constitutes an acceptable point-of-sale display as ancillary services to the goods.
Unconvinced, the Examining Attorney issued a final refusal on May 1, 2017.
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In an effort to traverse the final refusal, on November 1, 2017 Applicant filed a
Request for Reconsideration and submitted the following substitute specimen
consisting of an advertisement, which as Applicant describes “contains an image of
Applicant’s recycling bin, which features the prominent wording “EARTHBORN
REBORN,” abutting images of Applicant’s pet food (contained in bags).”

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Applicant also submitted the declaration of Warren Hill, Applicant’s Chief
Commercial Officer (hereinafter referred to as the “Hill Declaration”), stating in
pertinent part:
3. Applicant’s EARTHBORN REBORN program allows
purchasers of Applicant’s pet food to recycle their
used/empty pet food bags by depositing the bags in our
EARTHBORN REBORN bins at participating retail
locations.
4. The substitute specimen features an image of
Applicant’s recycling bin with the mark EARTHBORN
REBORN appearing next to the images of Applicant’s
pet food (contained in bags). Above these images, the
collateral includes, in part, the statement: “Through our
EARTHBORN REBORN recycling program and
TerraCycle®, our bags our now 100% recyclable!” The
EARTHBORN REBORN mark is thus being used in
clear association with Applicant’s pet food, offering an
environmentally-friendly way to recycle the packaging
of the same pet food.
5. Applicant’s bins and any associated recycling services
are ancillary to our pet food and are used to promote the
sale of such pet food. Consequently, our EARTHBORN
REBORN mark is ultimately recognized by consumers
as a source identifier for our pet food. Indeed, our
consumers readily understand that Applicant does not
offer recycling services for sale, but instead offers pet
food that is offered for sale in recyclable packaging.
6. Furthermore, our recycling bins featuring the
EARTHBORN REBORN mark are located in the same
retail locations where our pet food is sold, thus
encouraging our customers to buy our pet food and
recycle our bags. The recycling bins therefore effectively
operate as point-of-sale displays that serve to further
strengthen our customers’ association of the
EARTHBORN REBORN mark with our pet food.
November 1, 2017 Request for Reconsideration. The Examining Attorney denied the
Request for Reconsideration on November 20, 2017, reiterating the same reasons
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above for refusal, but also adding that to the extent that Applicant submits the
advertisement constitutes a point-of-sale display, the substitute specimen is not
acceptable:
[T]he use of the mark on a recycling container fails to be an
acceptable point-of-sale display in that the display is not so
related to the sale of the goods that such an association
between the two is inevitable. TMEP § 904.03(g). In this
case, applicant has not shown the recycling display in the
sales environment, so it cannot be determined whether it
properly functions as a point-of-sale display. While
applicant argues that the displays are placed in the same
retail locations where applicant’s pet food is sold, this is
unpersuasive in demonstrating that the specimen shows
an acceptable point of sale display.
The application was then returned to the Board for resumption of the appeal.4
II. Whether the mark as it appears in the specimens is a substantially
exact representation of the mark in the drawing?
We direct our attention to the first ground for refusal. The “drawing depicts the
mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. As such,
[i]n an application under section 1(b) of the Act, the
drawing of the mark must be a substantially exact
representation of the mark as intended to be used on or in
connection with the goods and/or services specified in the
application, and once an amendment to allege use under
§ 2.76 or a statement of use under § 2.88 has been filed, the
drawing of the mark must be a substantially exact
representation of the mark as used on or in connection with
the goods and/or services.
Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b). Case law interpretation of this rule

4 In arguing against the refusal, Applicant in its appeal brief focused on the substitute
specimen. However, in response to questioning at oral argument, counsel for Applicant
requested that the Board consider both the original and substitute specimen. Thus, in order
to render a complete opinion, we have considered both specimens.
Serial No. 86702878
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provides that “[a]n applicant may seek to register any portion of a composite mark if
that portion presents a separate and distinct commercial impression.” In re Lorillard
Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011) (citing In re 1175854 Ontario Ltd.,
81 USPQ2d 1446 (TTAB 2006)). In other words, “the mark as actually used must not
be so entwined (physically or conceptually) with other material that it is not separable
from it in the mind of the consumer.” In re Yale Sportswear Corp., 88 USPQ2d 1121,
1123 (TTAB 2008) (quoting In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d
1828, 1830 (Fed. Cir. 1988)).
In this appeal, the mark as displayed in the drawing is comprised solely of two
words, EARTHBORN REBORN (standard characters) in that order with no design
elements. At oral argument, the Examining Attorney conceded that the applied-for
mark was a substantially exact representation of the mark as depicted on the
substitute specimen within the phrase “Through our EARTHBORN REBORN™
recycling program and TerraCycle®, our bags are now 100% recyclable!” We agree
that this wording in the substitute specimen is a substantially exact representation
of the drawing.
However, as to the original specimen, the Examining Attorney adheres to the
refusal, arguing that
… the mark appearing on the recycling bin in the specimen
does not match the drawing, because the additional
wording between the terms “EARTHBORN” and
“REBORN” creates a different commercial impression—in
particular, the impression on the specimen is of
“EARTHBORN HOLISTIC” as one phrase, with
“REBORN” as a totally separate phrase. There is a
significant physical separation between the terms
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“EARTHBORN” and “REBORN”, such that they cannot be
viewed as a single mark, or as a substantially exact
representation of the mark in the drawing.
10 TTABVUE 5. Applicant in turn asserts that because the terms EARTHBORN and
REBORN, while not next to each other, are displayed in a font size far greater than
the remaining wording, the consumer’s attention is immediately drawn to both of
these terms, thereby presenting a separate and distinct commercial impression.
We find that the drawing of the mark is not a substantially exact representation
of the mark as it appears on the original specimen of use because as actually used,
prospective consumers will not perceive the terms EARTHBORN REBORN as
separable from the remaining literal and design elements. On the original specimen
the word immediately after EARTHBORN is not REBORN as depicted in the drawing
but is instead the word HOLISTIC. “EARTHBORN HOLISTIC” is displayed inside of
a circular design above, not congruent with, the word REBORN. “EARTHBORN
HOLISTIC” also appears as the tail end of the phrase LOVE YOUR PET, LOVE
YOUR PLANT. Thus, the word EARTHBORN is “entwined” both physically and
conceptually with the word HOLISTIC. See In re Yale Sportswear Corp., 88 USPQ2d
at 1123. For these reasons, the terms EARTHBORN and REBORN as used on the
specimens do not engender a separate commercial impression apart from the
remaining elements. The fact that the words EARTHBORN and REBORN appear in
larger size lettering fails to mitigate these deficiencies. We therefore find that with
regard to the original specimen of record, Applicant’s drawing of the mark is not a
substantially exact representation of the mark as used in commerce.
Serial No. 86702878
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III. Whether the original specimen and substitute specimen each fail to
show the applied-for mark used in connection with the identified
goods?
Turning now to the second ground for refusal, Section 1(d)(1) of the Trademark
Act, 15 U.S.C. § 1051(d)(1), requires that the applicant file a “specimen” or facsimile
“of the mark as used in commerce.” See also Trademark Rule 2.56(a), 37 C.F.R.
§ 2.56(a) (an applicant filing an intent-to-use application must file “one specimen . . .
showing the mark as used in commerce on or in connection with the goods or
services.”). A mark is in use in commerce on goods when:
(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on
the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on
documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, …
Trademark Act Section 45, 15 U.S.C. § 1127. Insofar as this appeal does not present
an example of use on the goods or on their containers, tags, or labels, the issue before
us with whether the original or substitute specimen constitutes a display associated
with the goods. Displays associated with the goods, including online displays, must
be “point of sale” displays. Lands’ End Inc. v. Manback, 797 F. Supp. 511, 24 USPQ2d
1314, 1316 (E.D. Va. 1992) (“A crucial factor in the analysis is if the use of an alleged
mark is at a point of sale location. A point of sale location provides a customer with
the opportunity to look to the displayed mark as a means of identifying and
distinguishing the source of goods.”); see also In re Sones, 590 F.3d 1282, 93 USPQ2d
1118, 1122 (Fed. Cir. 2009) (quoting In re Osterberg, 83 USPQ2d 1220, 1222-23 (TTAB
Serial No. 86702878
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2007) (“In [Lands’ End], the determinative factor was that the mark was used at the
point of sale.”)). The Board has held:
[T]o be more than mere advertising, a point-of-sale display
associated with the goods must do more than simply
promote the goods and induce a person to buy them; that is
the purpose of advertising in general. The specimen must
be “calculated to consummate a sale.”
In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2009 (TTAB 2014) (quoting In re Bright
of America, Inc., 205 USPQ 63, 71 (TTAB 1979)). The determination of whether the
proffered specimen is merely advertising or serves the function of a display associated
with the goods is a question of fact. In re U.S. Tsubaki, Inc., 109 USPQ2d at 2003
(citing In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986)). “Factually, we need to
ask whether the purported point-of-sale display provides the potential purchaser with
the information normally associated with ordering products of that kind.” In re
Anpath Group Inc., 95 USPQ2d 1377, 1381 (TTAB 2010). The display should provide
a “level of information … capable of allowing a consumer to consummate a physical
order …” Id. at 1382. Acceptable print display specimens are point-of-sale materials
such as banners, shelf-talkers (a printed card or sign affixed to a store shelf to call a
buyer’s attention to a particular product displayed on that shelf), and window
displays, which are designed to catch the attention of purchasers and prospective
purchasers as an inducement to make a sale. TMEP § 904.03(g); see also In re U.S.
Tsubaki, Inc., 109 USPQ2d at 2003 (citing In re Shipley Co., 230 USPQ at 694).
Brochures and other advertising material may be acceptable specimens as print
displays only if sufficient evidence, such as a photograph of a trade show booth, is
provided showing how such specimens are used in an actual display featuring the
Serial No. 86702878
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goods and the print advertising material together. See In re Ancha Elecs., Inc., 1
USPQ2d 1318, 1319-20 (TTAB 1986); TMEP § 904.03(g). Otherwise, such materials
are generally considered mere advertising and are not acceptable as specimens for
showing use in commerce for goods, as in the present case. See In re Kohr Bros., 121
USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d
1375, 1379 (TTAB 2010)); TMEP § 904.04(b).
At oral argument, Applicant urged the Board to consider the original specimen as
an acceptable display associated with the goods. As noted above, Applicant’s original
specimen consists of an excerpt from Applicant’s website. Applicant contended that
the “Learn More” and “Find a Dealer” tabs provided a means of ordering Applicant’s
pet food. A web page that displays a product can constitute a “display associated with
the goods” if it: (1) contains a picture or textual description of the identified goods; (2)
shows the mark in association with the goods; and (3) provides a means for ordering
the identified goods. See In re Sones, 93 USPQ2d at 1123; In re Azteca Sys., Inc., 102
USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB
2004); Lands’ End, 24 USPQ2d at 1316; see also TMEP § 904.03(i). The mark must
also be displayed on the web page in a manner in which customers will recognize it
as a mark. See In re Morganroth, 208 USPQ 284, 287-88 (TTAB 1980); In re Osterberg,
83 USPQ2d at 1223 (finding that CONDOMTOY CONDOM was not displayed so
prominently on web page specimen that consumers would recognize it as a trademark
for condoms). Based on the record before us, we cannot conclude that Applicant’s web
page excerpt meets these requirements. In other words, the web page does not contain
Serial No. 86702878
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a picture or textual description of pet food; it does not show the mark EARTHBORN
REBORN in association with pet food; and it does not provide a recognizable means
for the consumer to order pet food. The only product displayed on the specimen is a
recycling bin. For these reasons, the original specimen of use fails to qualify as a point
of sale display associated with the goods.
Having determined that Applicant’s original specimen does not constitute a
display associated with the goods, we now consider whether the substitute specimen
meets this standard. In its brief, Applicant refers to the substitute specimen as a
flyer. Applicant maintains that the flyer clearly shows Applicant’s EARTHBORN
REBORN mark in use in connection with the promotion and sale of Applicant’s pet
food thereby qualifying as a point of sale display. Relying primarily on the Hill
Declaration, Applicant argues that the flyers are located in the same retail stores
where Applicant’s pet food is sold under the mark EARTHBORN HOLISTIC; that
they are distributed to consumers with the purchase of Applicant’s EARTHBORN
HOLISTIC pet food; and that the flyers are designed to appeal to eco-minded
consumers and foster brand loyalty by encouraging consumers to purchase
Applicant’s EARTHBORN HOLISTIC pet food sold in recyclable bags. In Applicant’s
view, consumers understand that Applicant does not offer recycling services but
rather pet food sold in recyclable packaging, and that any associated recycling
services are ancillary to the Applicant’s EARTHBORN HOLISTIC branded pet food.
Of course, as Applicant points out, an advertising flyer can constitute a point of
sale display. However, in this particular instance, it does not. Applicant has failed to
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provide sufficient evidence showing a direct connection between its applied-for mark
EARTHBORN REBORN with pet food. As shown on the specimen, EARTHBORN
REBORN functions as a source identifier for a recycling program, not pet food:
“Through our EARTHBORN REBORN recycling program and TerraCycle®, our bags
our now 100% recyclable!” In the absence of photographic evidence, or a more detailed
explanation in affidavit or declaration form of how the flyer is used in conjunction
with the marketing and sale of Applicant’s pet food in retail locations, the Hill
Declaration, standing alone, fails to show how Applicant’s advertising flyer
constitutes a point of sale display featuring pet food under the proposed mark.
Without further information, we cannot conclude that the specimen is “calculated” to
induce a sale of pet food. See In re U.S. Tsubaki, Inc., 109 USPQ2d at 2009. As the
Examining Attorney points out in his brief, the substitute specimen shows
EARTHBORN HOLISTIC, not EARTHBORN REBORN, as a source indicator for pet
food. All the record evidence points to Applicant offering a recycling program service,
not pet food, under the applied-for mark. For the foregoing reasons, Applicant’s
substitute specimen fails to show the applied-for mark used in connection with the
identified goods.
Decision: The refusal to register the original specimen of record on the ground
that the drawing of the mark is not a substantially exact representation of the mark
as used in commerce is affirmed; this refusal however is reversed as to the substitute
specimen.
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The refusal to register is affirmed on the ground that Applicant’s original and
substitute specimen fails to show the applied-for mark used in connection with the
identified goods.