PetCon Conference LLC

Trademark Trial and Appeal Board

Nov 14, 2019

87796983 (T.T.A.B. Nov. 14, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re PetCon Conference LLC
_____

Serial No. 87796983
_____

Glenn M. Massina of Massina Patent & Trademark Law PLLC,
for PetCon Conference LLC.
Megan M. Hartnett, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Kuczma, Larkin, and Hudis,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
PetCon Conference LLC (“Applicant”) seeks registration on the Principal Register
of the proposed mark PETCON in standard characters for “arranging and conducting
business conferences,” in International Class 35.1

1 Application Serial No. 87796983 was filed on February 14, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark at
least as early as August 6, 2017 and first use of the mark in commerce at least as early as
September 29, 2017.
Serial No. 87796983
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The Trademark Examining Attorney has refused registration of the proposed
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that it is merely descriptive of the services identified in the application.
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. Applicant and the Examining Attorney
have filed briefs.2 We affirm the refusal to register.
I. Record on Appeal3
The record on appeal includes Applicant’s original specimen,4 and the following
materials and information:
A. Evidence
• Dictionary definitions of the words “pet,”5 “con,”6 and “convention,”7 a
Wikipedia entry entitled “convention (meeting),”8 and a Wiktionary entry

2 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
3 Citations in this opinion to the application record, including the reconsideration request
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
4 February 14, 2018 Application at TSDR 3.
5 June 9, 2018 Office Action at TSDR 2 (THE AMERICAN HERITAGE DICTIONARY
(ahdictionary.com)).
6 Id. at TSDR 6-9 (YOUR DICTIONARY (yourdictionary.com) and ACRONYM FINDER
(acronymfinder.com)).
7 Id. at TSDR 10-11 (YOUR DICTIONARY (yourdictionary.com))
8 October 25, 2018 Final Office Action at TSDR 54.
Serial No. 87796983
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for “con,”9 made of record by the Examining Attorney, and dictionary
definitions of the words “pet”10 and “con,”11 made of record by Applicant;
• Third-party webpages regarding pet and pet care conferences,12 made of
record by the Examining Attorney;
• Third-party webpages and articles regarding the use of “-CON” in
connection with conferences,13 and the use of “PET” to describe services
similar to those identified in the application,14 made of record by the
Examining Attorney;
• Webpages providing details about Applicant’s PETCON 2018 conference in
New York City, made of record by Applicant,15 and the Examining
Attorney;16 and

9 May 16, 2019 Denial of Request for Reconsideration at TSDR 17-22.
10 April 24, 2019 Request for Reconsideration at TSDR 2-4.
11 October 2, 2018 Response to Office Action at TSDR 2-3 (ABBREVIATIONS), 50-66 (MERRIAM-
WEBSTER DICTIONARY (merriam-webster.com)).
12 June 9, 2018 Office Action at TSDR 3-5.
13 Id. at TSDR 12-18; October 25, 2018 Final Office Action at TSDR 55-61, 64-71; May 16,
2019 Denial of Request for Reconsideration at TSDR 13-16, 23, 29, 34.
14 October 25, 2018 Final Office Action at TSDR 45-51; May 16, 2019 Denial of Request for
Reconsideration at TSDR 32-34.
15 October 2, 2018 Response to Office Action at TSDR 4-49 (Applicant’s substitute specimen);
April 24, 2019 Request for Reconsideration at TSDR 68-93. These pages were originally made
of record by Applicant in response to the Examining Attorney’s request under Trademark
Rule 2.61(b), 37 C.F.R. § 2.61(b), for information and documentation regarding Applicant’s
services and the wording in the proposed mark. June 9, 2018 Office Action at TSDR 1. We
summarize below the information provided by Applicant in response to that request.
16 October 25, 2018 Final Office Action at TSDR 52-53.
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• Third-party registrations of “-CON” suffix formative marks that issued on
the Supplemental Register, or on the Principal Register with a showing of
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f), or with “CON” disclaimed, made of record by the Examining
Attorney,17 and third-party registrations of “-CON” suffix formative marks
that were registered on the Principal Register without a showing of
acquired distinctiveness or a disclaimer of “CON,” made of record by
Applicant.18
B. Information Provided in Applicant’s Responses to the
Examining Attorney’s Information Request
As noted above, the Examining Attorney made a request during prosecution,
pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), for the following information
and documentation:
(1) Fact sheets, instruction manuals, brochures,
advertisements and pertinent screenshots of applicant’s
website as it relates to the services in the application,
including any materials using the terms in the applied-for
mark . . .
(2) If these materials are unavailable, applicant should
submit documentation for services of the same type,
explaining how its own product or services will differ . . .
[and] [f]or services, the factual information must make
clear what the services are and how they are rendered,
salient features, and prospective customers and channels
of trade . . .

17 October 25, 2018 Final Office Action at TSDR 2-44; May 16, 2019 Denial of Request for
Reconsideration at TSDR 2-12.
18 April 24, 2019 Request for Reconsideration at TSDR 5-67.
Serial No. 87796983
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(3) Applicant must respond to the following questions:
a. Do applicant’s services involve pets
b. What is the subject matter of the business
conferences?
c. Are applicant’s business conferences about the pet
industry?19
Applicant responded by submitting “two web pages providing details about the
conferences,”20 and stating the following in response to the Examining Attorney’s
specific questions:
a. Do applicant’s services involve pets?
Pets are permitted at the conference and celebrity pet
influencers, which are animals having a large social media
following, will hold meet and greets at the conference,
however, the applicant’s services additionally include
presenting various panel discussions on pet influencer
related topics as well as presenting product information
that would be of interest to both pet influencers and pet
owners.
b. What is the subject matter of the business conferences?
The conference includes meet and greets with a variety of
pet influencers. The conference also includes various
panels talking on pet influencer related topics, for example,
creating social media content, pet training tips, rescue
animals, how to build an Instagram community, the
rewards of raising special needs pets and general
information on the pet influencer industry. The conference
will also include various brands promoting products and
services of interest to both pet influencers and pet owners.
c. Are applicant’s business conferences about the pet
industry?

19 June 9, 2018 Office Action at TSDR 1.
20 October 2, 2018 Response to Office Action at TSDR 1.
Serial No. 87796983
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The conferences include information sessions about the pet
influencer industry while also promoting products and
services of interest to both pet influencers and pet
owners.21
II. Mere Descriptiveness Refusal
A. Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f).22 A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark 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 the goods [or services].” In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)).

21 Id.
22 Applicant does not claim that if the proposed mark is found to be merely descriptive, it
should be registered because it has acquired distinctiveness.
Serial No. 87796983
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Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods [or services] for which registration is sought, 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,’” In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012) (quoting Bayer, 82 USPQ2d at 1831), and “not in the abstract or on the basis of
guesswork.” Fat Boys, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). We ask “‘whether someone who knows what
the goods and services are will understand the mark to convey information about
them.’” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d
1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal quotation
omitted)). A mark is suggestive, and not merely descriptive, if it requires imagination,
thought, and perception on the part of someone who knows what the goods or services
are to reach a conclusion about their nature from the mark. See, e.g., Fat Boys, 118
USPQ2d at 1515.
Applicant’s proposed mark includes two components, PET and CON. We “must
consider the commercial impression of a mark as a whole.’” Real Foods, 128 USPQ2d
at 1374 (quoting DuoProSS, 103 USPQ2d at 1757 (citation omitted)). “In considering
[a] mark as a whole, [we] ‘may not dissect the mark into isolated elements,’ without
‘consider[ing] . . . the entire mark,’” id. (quoting DuoProSS, 103 USPQ2d at 1757),
but we “‘may weigh the individual components of the mark to determine the overall
Serial No. 87796983
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impression or the descriptiveness of the mark and its various components.’” Id.
(quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed.
Cir. 2004)). Indeed, we are “required to examine the meaning of each component
individually, and then determine whether the mark as a whole is merely descriptive.”
DuoProSS, 103 USPQ2d at 1758.
If the components PET and CON are individually descriptive of the identified
services, we must then determine whether their combination “‘conveys any
distinctive source-identifying impression contrary to the descriptiveness of the
individual parts.’” Fat Boys, 118 USPQ2d at 1515-16 (quoting Oppedahl & Larson,
71 USPQ2d at 1372). If each component instead “retains its merely descriptive
significance in relation to the [services], the combination results in a composite that
is itself merely descriptive.” Id. at 1516 (citing In re Tower Tech., Inc., 64 USPQ2d
1314, 1317-18 (TTAB 2002)); see also In re Mecca Grade Growers, LLC, 125 USPQ2d
1950, 1953-55 (TTAB 2018).
“‘Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
dictionaries, trade journals, newspapers[,] and other publications.’” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods [or services],’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200
USPQ at 218), as well as information provided by an applicant in response to a Rule
Serial No. 87796983
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2.61(b) information request. In re Calphalon Corp., 122 USPQ2d 1153, 1154 (TTAB
2017).
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing
Gyulay, 3 USPQ2d at 1010). “If such a showing is made, the burden of rebuttal shifts
to the applicant.” Id. (citing In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632
(Fed. Cir. 2003)). “The Board resolves doubts as to the mere descriptiveness of a mark
in favor of the applicant.” Id.
B. Applicant’s and the Examining Attorney’s Arguments
1. Applicant
Applicant argues that “PETCON, without more, does not immediately describe
with a degree of particularity the purpose and function of Applicant’s services,
namely, arranging and conducting business conferences.” 7 TTABVUE 9. Applicant
notes that “PET is defined to have 8 different definitions,” including “a pampered and
usually spoiled child; a person who is treated with unusual kindness or consideration;
a favorite; expressing fondness or endearment; to stroke in a gentle or loving manner;
to treat with unusual kindness and consideration (PAMPER),” and “two
abbreviations, namely, petroleum and position-emission tomography.” Id. Applicant
claims that “[e]ach of the definitions or abbreviations is an equally plausible
understood meaning of the term ‘Pet.’” Id. According to Applicant, “[t]he existence of
these multiple meanings of ‘Pet’ demonstrate[s] that when consumers encounter the
Serial No. 87796983
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mark PETCON they must make a mental leap to understand and determine the
purpose of the PETCON services.” Id.
Applicant similarly argues that “CON is defined to have 9 different definitions
and does not list conference as an abbreviation of CON,” and that “there are 17
recognized terms for which CON is an abbreviation,” including “connector,
contingency, conflict, convict, construction, [and] container,” as well as “conference.”
Id. at 10.
According to Applicant, “[t]he existence of these multiple meanings of ‘Pet’ and
‘Con’ demonstrate that when consumers encounter the mark PETCON they must
make a mental leap to understand and determine the purpose of the PETCON
services.” Id. Applicant argues that “one would need to reason the combination of ‘Pet’
and ‘Con’ means a business conference relating to the pet influencer industry and
products/services of interest to pet influencers and pet owners,” and “[t]here is
nothing in these two terms that immediately, and without forethought, describes
Applicant’s services.” Id.
Applicant further argues that it submitted “a list of various marks (primarily
unitary marks) ending with the letters ‘CON’ covering trade shows and related
offerings along with copies of the respective registrations,” id. at 11, and that these
marks are “further evidence of a recognized policy on behalf of the Trademark Office
of registering, without a finding of descriptiveness, marks similar in construction,
form and appearance to that of applicant.” Id. at 12-13.
Serial No. 87796983
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Finally, Applicant states that “reasonable minds may differ as to the
suggestiveness of Applicant’s mark,” and argues that “[a]ny doubt as to the
descriptiveness of Applicant’s mark must be resolved in favor of Applicant and of
registration.” Id. at 14.
2. The Examining Attorney
The Examining Attorney argues in response to Applicant’s arguments that “both
the individual components [of PETCON] and the composite result are descriptive of
applicant’s services, and do not create a unique, incongruous, or nondescriptive
meaning in relation to the services.” 9 TTABVUE 13.
The Examining Attorney argues that “‘PET’ is defined as ‘an animal kept for
enjoyment or companionship,’” id. at 5, and that Internet evidence in the record shows
“use of the term ‘PET’ as identifying a feature or purpose of” conferences involving
pets. Id. at 6-7. She cites Applicant’s specimen and Applicant’s response to the
information request as evidence that “pets are a feature or purpose of the applicant’s
conferences.” Id. at 7-8. She rejects Applicant’s argument that PET has multiple
definitions because they do not apply in the context of the identified services, and
concludes that “while other definitions of the word ‘PET’ exist, the definition of ‘an
animal kept for enjoyment or companionship’ is the primary meaning here as
applicant’s services feature pets and are for the pet industry,” such that “the word
‘PET’ immediately conveys to the consumer that applicant’s business conferences
feature pets or are for the pet industry.” Id.
The Examining Attorney argues that “the word ‘CON’ in applicant’s mark is an
abbreviation for the wording ‘conference,’” id. at 9, because “Applicant’s identification
Serial No. 87796983
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specifies that the services are ‘business conferences,’” id., and the record shows that
“the term ‘CON’ is used in the industry to describe a characteristic of business
conferences,” id. at 10, and “is known as an abbreviation for ‘conference’ and is
commonly used in the business conference industry.” Id. at 11. She argues that the
record shows that “the word ‘CON’ [is] used consistently in a particular way . . . at
the end of a word to designate the nature or characteristic of the services, namely, an
event in the nature of conferences or conventions,” and that “[c]onsumers have
become accustomed to this pattern of use” such that “the appearance of ‘CON’ towards
the end of a word combination signifies to the consumer that this is an event for a
specific interest.” Id. at 14. She finds that Applicant’s argument that “‘CON’ has other
meanings is not persuasive when there is a clear meaning in connection to the
services,” id., and concludes that because “the word ‘CON’ immediately conveys to the
consumer that applicant’s services are conferences,” the word “immediately and
directly conveys information regarding a characteristic of the services and does not
require imagination, thought or perception to understand the meaning.” Id.
The Examining Attorney argues that the combination of PET and CON “merely
conveys that the applicant is offering conferences, or cons, for the pet industry or that
feature pets,” and that Applicant “has not offered a particular meaning created by
this combination . . . .” Id. at 13.
With respect to the third-party registrations of -CON formative marks in the
record, the Examining Attorney argues that they support her showing that PETCON
is merely descriptive rather than refuting it. Id. at 15-17. She cites registrations “for
Serial No. 87796983
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services relating to the arranging and conducting of business conferences” that she
made of record, and argues that they “show that the word ‘CON’ when used in
combination with descriptive wording or on its own is treated as descriptive when
used in conjunction with business conference services.” Id. at 15-16. She rejects
Applicant’s claim that marks comparable to Applicant’s have been registered on the
Principal Register because many of those marks “have suggestive wording combined
with ‘CON’ or abbreviations that form a different impression when formed with the
word ‘CON,’” id. at 16, but argues that, in any event, “an applied-for mark that is
merely descriptive does not become registrable simply because other seemingly
similar marks appear on the register,” and that “it is well settled that each case must
be decided on its own facts and the [Board] is not bound by prior decisions involving
different records.” Id. Finally, she rejects Applicant’s invocation of the rule that
doubts regarding mere descriptiveness must be resolved in Applicant’s favor because
“the evidence of record leaves no doubt that the mark is merely descriptive.” Id. at
17.
C. Analysis of Mere Descriptiveness
As discussed above, we are “required to examine the meaning of each component
[of PETCON] individually, and then determine whether the mark as a whole is
merely descriptive,” DuoProSS, 103 USPQ2d at 1758, in the course of assessing
“whether someone who knows what the . . . services are will understand the mark to
convey information about them.” Real Foods, 128 USPQ2d at 1374 (internal
quotation omitted). Our inquiry regarding mere descriptiveness is not limited to the
Serial No. 87796983
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understanding of a consumer who knows only that PETCON is used in connection
with “arranging and conducting business conferences,” but also may take into account
what a consumer understands from the commercial context of Applicant’s use of
PETCON in its specimen and other advertising materials. N.C. Lottery, 123 USPQ2d
at 1709 (rejecting applicant’s arguments that the “inquiry should be limited to what
a consumer with ‘only general knowledge’ of [the applicant’s] goods and services, and
without additional context from the explanatory text [of the specimens], would
immediately understand the mark to mean,” and that “any explanatory text in such
specimens cannot supply additional meaning to a mark ‘when the mark itself does
not convey that meaning’”); In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1588
(TTAB 2018) (discussing statements on the applicant’s packaging that indicated that
the applicant’s mark RECOIL “describe[d] the capacity of Applicant’s medical and
athletic cohesive tape to return to its original form after application and use”).
Accordingly, we depict below pertinent portions of Applicant’s substitute
specimen:
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23
24

23 April 24, 2019 Request for Reconsideration at TSDR 68.
24 Id. at TSDR 69.
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25
26

25 Id. at TSDR 70.
26 Id. at TSDR 71.
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These materials illustrate, as Applicant acknowledged during prosecution, that
the conferences arranged and conducted under the proposed PETCON mark involve
“meet and greets with a variety of pet influencers,” “various panels talking on pet
influencer related topics, for example, creating social media content, pet training tips,
rescue animals, how to build an Instagram community, the rewards of raising special
needs pets and general information on the pet influencer industry,” and “various
brands promoting products and services of interest to both pet influencers and pet
owners.”27 We thus assess the descriptiveness of the individual components of
Applicant’s mark, as well as the mark as a whole, against this backdrop.
The record leaves no doubt that the PET component refers to “[a]n animal kept
for enjoyment or companionship,”28 as Applicant’s substitute specimen shows or
refers to numerous dogs and cats, and states, among other things, that attendees to
PETCON 2018 may bring their pets to what Applicant describes as “A pet lover’s
dream.” Applicant’s use of PETCON on its substitute specimen belies its claim that
each of the other definitions of PET in the record, including “a pampered and usually
spoiled child; a person who is treated with unusual kindness or consideration; a
favorite; expressing fondness or endearment; to stroke in a gentle or loving manner;
to treat with unusual kindness and consideration (PAMPER),” 7 TTABVUE 9 and
“two abbreviations, namely, petroleum and position-emission tomography,” id., “is an
equally plausible understood meaning of the term ‘Pet’” as it appears in the proposed

27 October 2, 2018 Response to Office Action at TSDR 1.
28 June 9, 2018 Office Action at TSDR 2 (THE AMERICAN HERITAGE DICTIONARY
(ahdictionary.com)).
Serial No. 87796983
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mark. Id. The fact “[t]hat 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). We must determine what PET means in the commercial context of Applicant’s
use of PETCON in connection with the identified services. N.C. Lottery, 123 USPQ2d
at 1709. In that context, the PET component of the proposed mark immediately
describes a feature or characteristic of the services of “arranging and conducting
business conferences,” namely, that Applicant’s conferences feature pets.
The record similarly leaves no doubt that the CON component of the proposed
mark refers to a “conference.” The services with which the proposed mark is used are
identified as “arranging and conducting business conferences,” and the record is
replete with evidence showing that CON is a recognized shorthand for “conference”
when it appears in marks that have the structure of the proposed PETCON mark and
are used in connection with the same or similar services.29
The Examining Attorney made of record third-party registrations of AUTOCON,
EDI CON, HOME BREW CON 2***, VETCON, VETCON and design, WEDCON, and

29 Applicant states that a webpage from abbreviations.com in the record shows that “there
are 17 recognized terms for which CON is an abbreviation,” 7 TTABVUE 10, and that it
“includes conferences as one of the abbreviations. . . .” Id. The cited terms actually include
“convention,” not “conference,” October 2, 2018 Response to Office Action at TSDR 2-3, but
Applicant appears to view the two words as synonyms, and a dictionary definition of
“convention” made of record by the Examining Attorney confirms that “conference” is a
synonym for “convention.” June 9, 2018 Office Action at TSDR 10-11 (YOUR DICTIONARY).
The Examining Attorney also made of record a WIKTIONARY entry regarding the word “con”
that indicates, among other meanings, that “con” is a “clipping of convention or conference”
and “[a]n organized gathering such as a convention, conference or congress.” May 16, 2019
Denial of Request for Reconsideration at TSDR 21-22.
Serial No. 87796983
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TWITCH CON,30 for “arranging and conducting business conferences,” and Applicant
made of record third-party registrations of COSTUME-CON, OPTICON, ISECON,
HOSTINGCON, GLAMOURCON, DISKCON, CREATORCON, COMMUTECON,
and CHANNELCON for the same services, or for the very similar services of
“conducting conferences,” “conducting educational conferences,” or “providing
conferences” in various fields.31 There are also several third-party registrations in the
record of “-CON” formative marks for convention-related services.32
The Examining Attorney also made of record webpages and articles reflecting the
use of the -CON suffix to refer to conferences and conventions regarding various
subjects, and the public’s understanding that the -CON suffix is short for “conference”
or “convention” when it is used in connection with such events. We reproduce a few
examples below:

30 October 25, 2018 Final Office Action at TSDR 7-9, 10-12, 33-34, 36-38; May 16, 2018
Denial of Request for Reconsideration at TSDR 5-6, 7-9, 10-12.
31 April 24, 2018 Request for Reconsideration at TSDR 10-11, 29-30, 35-36, 39, 43, 50, 51-52,
53-54, 58-59.
32 October 25, 2018 Office Action at TSDR 13-15 (DRAGON CON), 39-41 (DRAGCON), 42-44
(CAMCON and design); April 24, 2018 Request for Reconsideration at TSDR 12-13
(ROLLERCON), 15-16 (COOKIECON), 23-24 (SHARKCON), 27-28 (POLITICON), 37-38
(ICHIBANCON), and 46-47 (EQUESTRICON).
Serial No. 87796983
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33
34

33 June 9, 2018 Office Action at TSDR 12.
34 Id. at TSDR 13 (emphasis supplied by the Examining Attorney).
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35
36

35 Id. at TSDR 15-18.
36 May 16, 2019 Denial of Request for Reconsideration at TSDR 34 (emphasis supplied by the
Examining Attorney). Other pages of the website of Pet Event Professionals state that in
2018, “we have announced a touring of 5k Pup Runs throughout the nation in addition to our
Pet Expos and Pet Cons, id. at TSDR 32, and list “2018 Pet Con Cities.” June 9, 2018 Office
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37
The record also shows that the public has been exposed to discussions of the
practice of using the -CON suffix to refer to conferences or conventions of various
sorts. An article entitled “From drag queens to aliens, fan cons gaining popularity”
downloaded on May 15, 2019 from the digital edition of the Chicago Tribune states
in part that “there are now annual cons for such things as Lego toys, mermaids,
‘Power Rangers’ and anthropomorphic characters, just to name a few,” and that “cons
aren’t just for comic lovers or Trekkies anymore.”38 An article entitled “The Rise of
Cons” downloaded on May 15, 2019 from the online edition of The Wall Street Journal
begins as follows:

Action at TSDR 18. The webpage of WestWorld of Scottsdale refers to a “Phoenix Pet-Con.”
Id. at TSDR 15-16.
37 May 16, 2019 Denial of Request for Reconsideration at TSDR 23 (emphasis supplied by the
Examining Attorney).
38 Id. at TSDR 13-15.
Serial No. 87796983
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All of a sudden, everybody’s got a con. Exercise buffs go to
FitCon and desert lovers hit CookieCon. Quiltcon draws
the bedspread set while ParanoiaCon lures conspiracy
theorists. This year, CatConLA (pop culture for pet people)
stalks into California ahead of MouseCon (for Disney
memorabilia collectors). Read a lot? Go to BookCon. Like
makeup? Beautycon. Drink beer? Why, there’s a Beer-Con,
of course.39
This evidence, and Applicant’s own use of PETCON shown and discussed above,
belie Applicant’s suggestion that CON would be understood by consumers of its
services to mean something other than “conference,” such as “connector, contingency,
conflict, convict, construction, [or] container.” 7 TTABVUE 10. It is instead virtually
certain that a consumer of Applicant’s services would understand the -CON suffix
component of the mark to be an abbreviation of the word “conference” that appears,
in the plural, in Applicant’s identification of services. The CON component of the
proposed mark immediately describes a feature or characteristic of the services of
“arranging and conducting business conferences,” namely, that they involve “[a]n
organized gathering” in the form of a conference.40
With respect to the combination of PET and CON to form Applicant’s proposed
mark, we reject Applicant’s arguments that “one would need to reason the
combination of ‘Pet’ and ‘Con’ means a business conference relating to the pet
influencer industry and products/services of interest to pet influencers and pet
owners,” and that “[t]here is nothing in these two terms that immediately, and
without forethought, describes Applicant’s services.” 7 TTABVUE 10. To the extent

39 Id. at TSDR 16.
40 Id. at TSDR 21-22 (WIKTIONARY).
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that Applicant argues that the services themselves cannot be identified from the
mark, its argument addresses the wrong question. “[T]he question is not whether
someone presented only with the mark could guess the goods or services listed in the
identification. Rather, the question is whether someone who knows what the goods
and services are will understand the mark to convey information about them.” Mecca
Grade Growers, 125 USPQ2d at 1953. Here, the record leaves no doubt that the
proposed mark PETCON as a whole is no more than the sum of its descriptive parts.
Against the backdrop of the common use of the -CON suffix in connection with
conferences whose specific subject matter is identified by an accompanying prefix
(e.g., CatCon, LeadsCon, Craft Con, and other Pet Cons), a consumer who knows that
PETCON is used in connection with “arranging and conducting business conferences”
and who is exposed to the commercial context of Applicant’s use would immediately
understand that PETCON as a whole describes the key feature or characteristic of
Applicant’s services, namely, that they involve business conferences featuring pets.
Where, as here, each component in the mark “retains its merely descriptive
significance in relation to the [services]” when they are combined, the “combination
results in a composite that is itself merely descriptive.” Fat Boys, 118 USPQ2d at
1516.
As discussed above, Applicant made of record a number of Principal Register
third-party registrations of other similarly formatted -CON suffix formative marks
for business conference, exhibition, and trade show services that issued without a
showing of acquired distinctiveness. 7 TTABVUE 12-13 (listing a number of such
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marks). These registrations do not change our conclusion that PETCON is merely
descriptive of a feature or characteristic of the identified services because “[t]hird-
party registrations are not conclusive on the question of descriptiveness.” In re theDot
Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011) (citing In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) and In re
Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977)). “While we recognize
that ‘consistency is highly desirable,’ consistency in examination is not itself a
substantive rule of trademark law, and a desire for consistency with the decisions of
prior examining attorneys must yield to proper determinations under the Trademark
Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB
2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir.
2007)).
We “must assess each mark on its own facts and record,” id., and “a mark that is
merely descriptive should not be registered on the Principal Register simply because
other such marks appear on the register.” theDot Commc’ns Network, 101 USPQ2d
at 1067. On this record, there is no doubt that PETCON is merely descriptive of the
services identified in the involved application, and it is thus ineligible for registration
on the Principal Register in the absence of a showing of acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
Decision: The refusal to register is affirmed.