Pet Teezer LimitedDownload PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Pet Teezer Limited _____ Serial No. 79212432 _____ John Zaccaria of Notaro Michalos & Zaccaria PC, for Pet Teezer Limited. John Sullivan, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Taylor, Kuczma and Hightower, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Pet Teezer Limited (“Applicant”) seeks registration on the Principal Register of the term PET TEEZER (in standard characters) for the following goods and services: Brushes for animals; pet grooming brushes in International Class 9; and Retail store services and online retail store services featuring brushes for animals and pet grooming brushes in International Class 35.1 1 Application Serial No. 87412284 was transmitted to the USPTO on May 11, 2017, pursuant to Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), based on International Registration No. 1355916, registered May 11, 2017. Serial No. 79212432 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), because the proposed mark is merely descriptive of Applicant’s goods and services. When the refusal was made final, Applicant appealed. We affirm the refusal to register. I. Evidentiary Objection Applicant, while acknowledging that the Board may take judicial notice of definitions, objects to the Examining Attorney’s request that the Board consider the definition of “tweezer” submitted with the Examining Attorney’s appeal brief.2 Applicant does so arguing that, because the definition is relied upon to demonstrate the pronunciation of a word and was not submitted during the course of examination, it is untimely and prejudicial. The only kind of fact that may be judicially noticed by the Board is a fact that is “not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). 2 The Examining Attorney requested the Board take judicial notice of both the words “teaser” and “tweezer,” using the recommended pronunciations to support his position that “teezer” is the phonetic equivalent of the word “teaser.” Applicant did not make an objection with respect to the word “teaser.” Notably, an image of the dictionary entry for “teaser” is already of record except that it omits a character from the pronunciation. Accordingly, we take judicial notice of the complete dictionary entry for the word “teaser.” Serial No. 79212432 - 3 - As Applicant acknowledges, the Board may take judicial notice of dictionary definitions. During an appeal, the Board may take judicial notice of dictionary definitions retrieved from online sources when the definitions themselves are derived from dictionaries that exist in printed form, include definitions in technical dictionaries, translation dictionaries and online dictionaries. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed format or have regular fixed editions); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 n.3 (TTAB 2008) (judicial notice taken of definition in Cassell’s Spanish-English English-Spanish Dictionary); In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (judicial notice taken of definitions from WEBSTER’S NEW GEOGRAPHICAL DICTIONARY submitted with examining attorney’s appeal brief). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 714.12 and 1208.04 (2018) and the authorities cited therein. A dictionary entry is usually comprised of both a definition and the recommended pronunciation of the searched term. Applicant has not explained how our consideration of the pronunciation of the word “tweezer” results in prejudice to it, and we otherwise see no reason to deviate from our usual practice and parse the entry for purposes of judicial notice. See In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1537 (TTAB 1998) (well settled that dictionary listings comprise matter of which Board can take judicial notice); Trak Inc. v. Traq Inc., 212 USPQ 846 (TTAB 1981) (The Board, citing to THE AMERICAN HERITAGE DICTIONARY OF THE Serial No. 79212432 - 4 - ENGLISH LANGUAGE 1066 (New College Edition, 1976), took judicial notice of the fact that the letter “q” in the English language is always pronounced “k.”). We accordingly overrule Applicant’s objection and will consider the dictionary entry for the word “tweezer” in its entirety. We observe, nonetheless, that our consideration of the dictionary entry is not outcome determinative. II. Discussion A. Applicable Law The test for determining whether a mark 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. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.”)). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, Serial No. 79212432 - 5 - feature, purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a nondescriptive word or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, suggestive, or otherwise nondescriptive meaning, or if the composite has a bizarre 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); In re Shutts, 217 USPQ 363 (TTAB 1983), However, if each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1371. Lastly, as Applicant correctly points out, a mark comprising more than one element must be considered as a whole and should not be dissected; however, as the Examining Attorney aptly notes, we may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing the Board’s denial of cancellation for for medical devices as not merely descriptive, but noting that “[t]he Board to be sure, can Serial No. 79212432 - 6 - ascertain the meaning and weight of each of the components that makes up the mark”). B. Arguments and Evidence In traversing the refusal of registration, Applicant argues that the term PET TEEZER is no more than suggestive of its identified goods and services, and that any doubt as to descriptiveness must be resolved in its favor. Applicant has supported its position with the following: 1. The full dictionary definition of “teaser” taken from the THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2017):3 “ Applicant also relies on the full definition of “pet” made of record by the Examining Attorney, particularly focusing on the “favorite” aspect of the definition: 3 December 20, 2017 Response to Office Action; TSDR 12 and 16. The TSDR citations are to the downloadable .pdf format. Serial No. 79212432 - 7 - 2. Search results from a search for the word “teaser” in the USPTO online Trademark ID manual showing an absence of results.4 3. A listing from a search of the TESS database for the word “teaser” in the identification of goods and services field (without class limitations) purportedly showing that none of the identifications in the 68 results use the word “teaser” to describe goods and services identical or related to the goods and services at issue here.5 4 Id. at TSDR 19. 5 Id. at TSDR 21-22. A mere listing of third-party marks, without any accompanying indication of the goods and/or services associated therewith, has little, if any, probative value because there is no information by which we may assess how many of these registrations, if any, identify goods or services related to those at issue herein. In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996); see also TBMP § 1208.02 (2018), and the authorities cited therein. Because the Examining Attorney advised Applicant of the deficiencies with regard to the listing, and Applicant did not correct them, we give this listing no further consideration. Serial No. 79212432 - 8 - The Examining Attorney conversely maintains that the wording PET TEEZER merely describes the identified goods and services. The Examining Attorney argues that: • the word “pet” means an animal and, therefore, when used in connection with “brushes for animals [and] pet grooming brushes” and retail services featuring the same, it merely describes that Applicant’s brushes are designed to be used on animals and that the brushes Applicant provides through its retail store services are for use by animals;6 • the word “teezer” is the phonetic equivalent of “teaser,” and merely describes an object that ruffles hair; that the word “tease” is understood to refer to a method of brushing and combing hair; and therefore the noun form of the word, “teaser,” or “teezer,” “immediately describes that applicant’s brushes perform this function, and that the brushes applicant provides through its retail store services perform this function”;7 and • both the individual components of Applicant’s applied-for mark and the composite result are descriptive of Applicant’s goods and services.8 The Examining Attorney has supported the refusal with the following: 1. Dictionary definitions taken from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2017): 6 8 TTABVUE 4. 7 Id. at 4-6. 8 Id. at 7. Serial No. 79212432 - 9 - “pet” defined in part as “an animal kept for enjoyment or companionship”;9 and “tease” defined in part as “[t]o ruffle (the hair) by combing from the ends toward the scalp for an airy, full effect.”10 2. Definition of “-ER” taken from the online version of the MERRIAM- WEBSTER DICTIONARY that the suffix –er is used for the noun version of a person or object who performs the action at the root of the word. “-ER” is defined in part as “one that does or performs (a specified action).”11 3. Dictionary entry from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2017) showing the pronunciation of the word “tweezer.”12 3. Internet materials showing that the word “tease” and various form thereof, including “teaser,” are used to describe types of pet brushes and a grooming technique.13 Groomer’s Pro Professional Quality advertises a Chris Christensen #007 Buttercomb BB Tail Teaser 7”;14 9 August 9, 2017 Office Action; TSDR 4. 10 Id. at 5. 11 January 4, 2018 Final Office Action; TSDR 5 (www.merriam-webster.com/dictionary/-er). 12 8 TTABVUE 12. 13 We find that the internet materials from Amazon (August 9, 2017 Office Action; TSDR 6), Sally Beauty (id. at 7) and Sephora (id. at 8-9) have little probative value in our analysis because they discuss hair brushes and brushing methods for use by people. 14 January 4, 2018 Final Office Action; TSDR 6. Serial No. 79212432 - 10 - An excerpt from the book “The Yorkshire Terrier Handbook” states, in part, “… use a fine-toothed comb to gently tease the hair near its base”;15 An excerpt from the book “The New Complete Shetland Sheepdog” states, in part, “[u]se the teasing brush and brush the legs against the lay of the hair …”;16 Amazon Prime features a Winstory Double Sided Pet Grooming Brush Groomer Cat Dot Hair Brush Pin Comb with Wooden Handle advertised to “Tease the hair for pet to make them neat and clean, Perfect for cats, dogs, rabbits, etc”;17 An article from The Modern Bark/Dog Training Tips explains that “[f]or small mats on delicate areas, you can tease out the mat with a finishing comb” and, in explaining a video available on the website, states that an undercoat rake was used to tease out a mat and indicates to “[h]old the fur at the base of the mat when teasing the mat apart, to keep from pulling on the dogs [sic] skin”;18 and A screen shot of a YouTube video captioned “How to tease your dogs [sic] hair.19 We initially find that the definition of the word “pet” supports a conclusion that the PET component of Applicant’s mark is merely descriptive of the intended use for Applicant’s goods and services. That is, the word PET merely describes a significant characteristic of Applicant’s “brushes for animals and pet grooming brushes,” namely that they are designed to be used on animals. Indeed, the recitation of goods clearly states that Applicant’s listed brushes are intended for use on “animals.” Similarly, 15 Id. at TSDR 7. 16 Id. at TSDR 8. 17 Id. at TSDR 9. 18 Id. at TSDR 10. 19 Id. at TSDR 11. Serial No. 79212432 - 11 - the use of the word PET in connection with the identified retail store services is merely descriptive because it describes the same characteristic of the goods, i.e., brushes for animals and pet grooming brushes, Applicant provides via its retail store services. Turning to the TEEZER component of Applicant’s mark, we find it to be the phonetic equivalent of the word “teaser.” Applicant’s assertion that there is insufficient evidence to show that TEEZER is a cognizable word or a novel spelling of “teaser” is unpersuasive. We find the spelling not so novel that the term “teezer” would not be readily perceived as and understood to be the phonetic equivalent of the word “teaser.”20 It has been long been held that a novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 & n.9 (CCPA 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built- in sharpeners); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding 20 The Examining Attorney also made of record dictionary entries for the words “teaser” and “tweezer.” Although the entries appear to show that these words are pronounced identically, aside from the “w” in “tweezer,” namely, “tē′zər” vs “twē′zər,” this evidence is only somewhat probative and, as noted earlier, not out come determinative by itself. This is because there is no correct pronunciation of a mark as it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 71 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969)). Serial No. 79212432 - 12 - “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) §1209.03(j) (Oct. 2018). The definitions and Internet materials of record clearly demonstrate that the words “tease” and “teasing” describe a technique or method used in grooming animal hair, as does the word “teaser” as the noun-formative of the word “tease,” which means to “ruffle the hair.” In addition, the pertinent definition of “teaser,” “one that teases, as a device for teasing wool,” would include implements, such as Applicant’s animal and pet grooming brushes, for use in performing the teasing technique or to ruffle hair. Indeed, Groomer’s Pro Professional Quality advertises a grooming brush identified as a “Tail Teaser.” We thus find that the word “teaser,” or its phonetic equivalent TEEZER, immediately describes the purpose or function of Applicant’s animal and grooming brushes, and it retains that descriptive significance when used in connection with Applicant’s retail store services featuring those brushes. Next, we must determine whether the combination of these individual descriptive terms is still descriptive, or whether it creates a term that evokes a new and unique commercial impression. As previously stated, when the mark is considered as a whole, if the merely descriptive components retain their merely descriptive significance in relation to the goods and services, then the resulting combination is also merely descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1372; In Serial No. 79212432 - 13 - re Tower Tech, 64 USPQ2d 1314 (TTAB 2001) (SMARTTOWER held merely descriptive of commercial and industrial cooling towers). The wording “PET TEEZER,” as a whole, immediately describes a characteristic, purpose or function of Applicant’s identified goods and services, namely, that the animal and pet grooming brushes are used to ruffle, or tease, the hair of animals, and that such brushes are featured in and provided by Applicant’s retail store services. Contrary to Applicant’s contention, the combination of terms is not incongruous, and no additional information is needed for the merely descriptive significance thereof to be readily apparent to prospective purchasers seeking animal and pet grooming brushes or services providing the same. See, e.g., Duopross Meditech v. Inviro Medical, 103 USPQ2d at 1756-57, (SNAP SIMPLY SAFER merely descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes”); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (THE BREATHABLE MATTRESS held merely descriptive of “beds, mattresses, box springs and pillows,” based on dictionary definitions of “breathable” and “mattress,” and excerpts of web pages that refer to “breathable mattresses” and “breathable bedding”); In re Putman Publ'g Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”). Serial No. 79212432 - 14 - We are simply not persuaded by Applicant’s contention that the combination of the words “PET TEEZER” creates an incongruity. Specifically, Applicant’s argument that “the uncommon arrangement of applicant’s mark results in a catchy expression which would not, without some imagination and mental steps analysis, suggest the characteristics of applicant’s goods and services”21 is unavailing. At the core of this argument is Applicant’s contention that the alternative definitions of the words PET and TEEZER, individually and in combination, renders the mark incongruous and therefore suggestive. As noted above, in our analysis of the phrase PET TEEZER, we must consider “the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219. We accordingly do not find it plausible that a consumer will equate the non-relevant meanings of these terms to the goods and services at issue. For example, it is unlikely that a consumer purchasing Applicant’s animal and grooming brushes will perceive the phrase PET TEEZER as meaning a brush used to annoy or trick pets. “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 21 6 TTABVUE 7. Serial No. 79212432 - 15 - 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). We also find unavailing Applicant’s argument that the Examining Attorney’s use of multiple definitions showed that imagination or mental steps were necessary to make a connection between the applied-for mark and the identified goods. As the Examining Attorney points out, the submission of multiple web pages is the result of the structure of dictionaries. Applicant also argues that the record is devoid of any showing that the trade uses PET TEEZER to describe Applicant’s or similar goods and services, and it is therefore appropriate to publish the mark for opposition by those in the industry. The fact that Applicant may be the first or only user of a term does not render that term distinctive, if it otherwise meets the standard set forth in In re Gyulay, In re Chamber of Commerce, and DuoProSS. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted); see also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even novel ways of referring to a product may nonetheless be merely descriptive); In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1826 (TTAB 2012). For the reasons previously explained, the evidence clearly demonstrates that Applicant’s mark is merely descriptive of its identified goods and services as contemplated by the line of cases referenced above. Serial No. 79212432 - 16 - Lastly, Applicant asserts that there is doubt as to the mere descriptiveness of PET TEEZER, and that such doubt must be resolved in its favor. Applicant is correct that where there is doubt as to the character of a merely descriptive mark, that doubt must be resolved in favor of the Applicant. However, we have no doubt as to the descriptiveness of PET TEEZER when used in connection with Applicant’s identified goods and services. After careful consideration of all of the evidence and arguments presented, including evidence and arguments not specifically discussed herein, we conclude that when applied to Applicant’s identified goods and services, the phrase PET TEEZER immediately describes, without any multi-step thought process, a characteristic, purpose or function of those goods and services, namely, that Applicant’s animal and pet grooming brushes are used to ruffle, or tease, the hair of animals, and that such brushes are featured in and provided by Applicant’s retail store services. Decision: The refusal to register Applicant’s mark PET TEEZER pursuant to Section 2(e)(1) of the Trademark Act is affirmed as to the goods and services identified in both Classes 9 and 35. Copy with citationCopy as parenthetical citation