Professional Apparel Company

Trademark Trial and Appeal Board

Apr 2, 2009

No. 78924781 (T.T.A.B. Apr. 2, 2009)

Mailed:
April 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Professional Apparel Company
________

Serial No. 78924781
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Marcus P. Dole of Price, Heneveld, Cooper, DeWitt & Litton
for Professional Apparel Company.

Amos T. Matthews, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Professional Apparel Company, dba Veterinary Apparel
Company (“applicant”) filed a use-based application on the
Principal Register for the mark VETERINARY APPAREL COMPANY,
in standard character form, for “mail order and on-line
catalog services featuring veterinary clothing,” in Class
35. Applicant claimed December 31, 1983 as its dates of
first use anywhere and first use in commerce. Applicant
disclaimed the exclusive right to use the word “company.”
During prosecution, applicant claimed that its mark had
acquired distinctiveness, or secondary meaning, in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78924781
2
accordance with the provisions of Section 2(f) of the
Trademark Act of 1946, 15 U.S.C. §1052(f). However, the
Examining Attorney concluded that in light of the highly
descriptive nature of applicant’s mark, applicant’s
evidence of acquired distinctiveness was insufficient, and
he refused registration. As explained below, the only
issue on appeal is whether the evidence of record is
sufficient to prove that applicant’s mark has acquired
distinctiveness or secondary meaning.
The Trademark Examining Attorney initially refused to
register VETERINARY APPAREL COMPANY under Section 2(e)(1)
of the Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the
ground that it is merely descriptive. According to the
Examining Attorney, VETERINARY APPAREL COMPANY “tells
consumers that applicant is a business enterprise that
sells clothing to persons connected with the medical or
surgical treatment of animals.”1 The Examining Attorney
also advised applicant that its mark “appears to be generic
in connection with the identified services and, therefore,
incapable of functioning as a source-identifier for
applicant’s services. . . . Under these circumstances,
neither an amendment to proceed under Trademark Act Section

1 December 7, 2006 Office Action.
Serial No. 78924781
3
2(f), nor an amendment to the Supplemental Register can be
recommended.”2
Despite the advisory warning regarding the generic
nature of applicant’s mark, applicant claimed that
VETERINARY APPAREL COMPANY had acquired distinctiveness by
virtue of applicant’s substantially exclusive and
continuous use of the mark for over 20 years. As indicated
above, applicant amended its application to seek
registration under the provisions of Section 2(f) of the
Trademark Act of 1946, 15 U.S.C. §1052(f). However, the
Examining Attorney held that applicant’s mark is so highly
descriptive that applicant’s allegation regarding its
substantially exclusive and continuous use of the mark was
insufficient evidence of acquired distinctiveness. The
Examining Attorney required additional evidence such as
sales and advertising figures, samples of advertising,
consumer or dealer statements of recognition of the mark,
and unsolicited media coverage.3
In response, applicant submitted the following
evidence:

2 December 7, 2006 Office Action.
3 July 3, 2007 Office Action.
Serial No. 78924781
4
1. The declaration of Sharon VanVranken, applicant’s
President, attesting to applicant’s substantially and
exclusive use of the mark for at least 24 years;
2. The declaration of James Linsley, applicant’s
Controller, attesting to applicant’s advertising
expenditures of $5,783,152 since 1987, and gross sales of
$85,911,946 since 1987.
3. Excerpts from applicant’s catalogs featuring the
mark at issue. The following excerpts are representative
of how applicant displays the term sought to be registered.
4

5

4 1984 Catalog.
5 1986 Catalog.
Serial No. 78924781
5
6

4. Declarations from three veterinarians located in
the United States and one located in Italy with the
following statement:
I recognize the mail order and on-line
catalog services featuring veterinary
clothing used in association with the
mark VETERINARY APPAREL COMPANY as
originating with the applicant of the
present application.

The three U.S. declarants also stated that they are in
contact with many veterinarians and that their colleagues
“would recognize the mail order and on-line catalog
services featuring veterinary clothing used in association
with the mark VETERINARY APPAREL COMPANY as originating
with applicant.”
In the February 26, 2008 Office Action, the Examining
Attorney issued final refusals on the ground that the
proposed mark was incapable of functioning as a mark and on
the ground that applicant’s evidence of acquired

6 1997 Catalog.
Serial No. 78924781
6
distinctiveness was insufficient. The Examining Attorney
specifically held,
. . . the proposed mark is incapable of
serving as a source-identifier for
applicant’s services. Therefore, the
refusal of registration under Section
2(e)(1) is continued, notwithstanding
applicant’s claim of acquired
distinctiveness under Section 2(f), 15
U.S.C. §1052(f).

The attached evidence from
www.google.com shows that the proposed
mark Veterinary Apparel Company is
incapable as used in connection with
mail order and on-line catalog services
featuring veterinary clothing because
it serves as a common descriptor of a
key ingredient, characteristic or
feature of the services.

Nevertheless, in the July 11, 2008 Office Action, the
Examining Attorney explained that his statements that the
proposed mark was incapable of functioning as a trademark
in the first Office Action and final refusal were merely
advisory. He unequivocally stated that “[t]he current
refusal is based on Trademark Act Section 2(e)(1) and that
the evidence of record is insufficient to support
applicant’s claim that the mark has become distinctive.”
In view thereof, the only issue on appeal is whether
VETERINARY APPAREL COMPANY has acquired distinctiveness.
The Examining Attorney argues that because of the
highly descriptive nature of applicant’s mark, applicant’s
Serial No. 78924781
7
24 years of substantially exclusive and continuous use is
insufficient to support a claim of acquired
distinctiveness. The Examining Attorney summarily
dismissed applicant’s advertising and sales figures
contending that they do not prove that consumers view
VETERINARY APPAREL COMPANY as a trademark. Finally, the
Examining Attorney explained that the third-party
declarations were not persuasive because they were
conclusionary statements lacking a factual basis.
Applicant argues that the evidence is sufficient to
establish that VETERINARY APPAREL COMPANY has acquired
distinctiveness. Specifically, applicant points to the
following evidence as supporting its claim that the term
sought to be registered points uniquely and exclusively to
applicant as the source of the services:
1. applicant has used the mark since 1983;
2. applicant has had “tremendous” sales success;
3. applicant has extensively advertised the mark;
and,
4. the third-party declarations show that relevant
consumers view VETERINARY APPAREL COMPANY as applicant’s
service mark.
It is hard to imagine a more apt descriptive phrase to
describe the sales of clothing used by veterinarians than
Serial No. 78924781
8
VETERINARY APPAREL COMPANY. The identification of services
and the evidence of record indicate that applicant sells
clothing used by veterinarians and their staff through mail
order catalogs and on-line retail services. This being the
case, it is appropriate to require a very strong
evidentiary showing to establish that the relevant
consumers view VETERINARY APPAREL COMPANY as a service
mark. In other words, the prima facie case of
distinctiveness which must be established by applicant
requires a greater quantum of evidence where a mark is
highly descriptive because the purchasing public will be
less apt to view the term as a service mark. In re
Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13
USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int’l Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988).
In this case, we do not find applicant’s evidence to
be convincing. First, applicant’s 24 years of use of the
term in question is substantial but not necessarily
conclusive or persuasive considering the highly descriptive
nature of the mark. See In re Packaging Specialists, Inc.,
221 USPQ 917, 920 (TTAB 1984) (evidence submitted by
applicant held insufficient to establish acquired
distinctiveness of PACKAGING SPECIALISTS, INC., for
Serial No. 78924781
9
contract packaging services, notwithstanding, inter alia,
continuous and substantially exclusive use for sixteen
years, deemed “a substantial period but not necessarily
conclusive or persuasive”).
Likewise, we are not persuaded by applicant’s
advertising expenditures and sales revenues. James
Linsley, applicant’s controller, testified that applicant
has incurred advertising expenditures of $5,783,152 since
1987 (an average of $289,000 per year) resulting in gross
sales of $85,911,946 since 1987 (an average of $4,300,000
per year). While advertising expenditures may be
indicative of the extent to which the mark has been used
and the gross sales may be indicative of applicant’s
success, they may not in and of themselves be enough to
prove secondary meaning where the mark at issue is highly
descriptive. In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales
under the mark of approximately eighty-five million
dollars, and annual advertising expenditures in excess of
ten million dollars – two million of which were spent on
promotions and promotional items which included the phrase
THE BEST BEER IN AMERICA – found insufficient to establish
distinctiveness, in view of the highly descriptive nature
of the proposed mark); In re E.I. Kane, Inc., 221 USPQ
Serial No. 78924781
10
1203, 1206 (TTAB 1984) (refusal to register OFFICE MOVERS,
INC., for moving services, affirmed notwithstanding §2(f)
claim based on, inter alia, evidence of substantial
advertising expenditures. “There is no evidence that any of
the advertising activity was directed to creating secondary
meaning in applicant’s highly descriptive trade name”); In
re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983) (evidence held
insufficient to establish acquired distinctiveness for
configuration of bag closures made of plastic,
notwithstanding applicant’s statement that advertising of
the closures involved several hundred thousands of dollars,
where there was no evidence that the advertising had any
impact on purchasers in perceiving the configuration as a
mark).
The only examples of advertising made of record are
applicant’s catalogs and an excerpt from its website.7
However, we have no information regarding how many catalogs
applicant publishes each year, how many veterinarians
receive applicant’s catalogs, how many veterinarians visit
applicant’s website or how many veterinarians buy products
from applicant. Such information would provide a basis for
determining the extent and effectiveness of applicant’s

7 The use of the mark on applicant’s website is similar to the
use on the catalogs.
Serial No. 78924781
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service mark use. We also note that there is no trade
journal advertising, classified or directory listings,
brochures, or similar promotional and sales literature.
Moreover, applicant provided no unsolicited media coverage
recognizing or referring to VETERINARY APPAREL COMPANY as
pointing uniquely and exclusively to applicant as the
source of the catalog and online sales services.
The actual use of VETERINARY APPAREL COMPANY, as shown
above, is not so distinctive or impressive as to persuade
us that consumers would readily recognize it as identifying
applicant as the source of the services. As used by
applicant, VETERINARY APPAREL COMPANY would be perceived in
its ordinary descriptive sense: a company that sells
veterinary clothing. Accordingly, we do not see a clear
relationship between the promotion and success of
applicant’s business and the distinctiveness of the alleged
mark.
The affidavit evidence from only four individuals also
fails to make the case for general recognition of
VETERINARY APPAREL COMPANY as a mark. Affidavits or
declarations that assert recognition of the mark as a
source indicator are relevant in establishing acquired
distinctiveness. However, proof of distinctiveness
requires more than proof of the existence of a relatively
Serial No. 78924781
12
small number of people who associate a mark with the
applicant especially in light of the highly descriptive
nature of applicant’s mark. In re The Paint Products Co.,
8 USPQ2d 1863, 1866 (TTAB 1988) (“Because these affidavits
were sought and collected by applicant from ten customers
who have dealt with applicant for many years, the evidence
is not altogether persuasive on the issue of how the
average customer for paints perceives the words ‘PAINT
PRODUCTS CO.’ in conjunction with paints and coatings”); In
re E.I. Kane, Inc., 221 USPQ at 1206 (in light of the
highly descriptive nature of OFFICE MOVERS, INC., nine
affidavits by individuals to the effect that the term
functions as a mark was not persuasive).
We also recognize that the statement in three
declarations that the declarants are in contact with many
veterinarians and that the veterinarians “would recognize
the mail order and on-line catalog services featuring
veterinary clothing used in association with the mark
VETERINARY APPAREL COMPANY as originating with applicant”
is competent evidence. In re Bose Corp., 216 USPQ 1001,
1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed.
Cir. 1985) (retailer’s statement that he has been in
contact with many purchasers of loudspeaker systems of whom
a substantial number would recognize depicted design as
Serial No. 78924781
13
originating with applicant deemed competent evidence of
secondary meaning). However, the weight accorded to such
statements depends on the circumstances of the case. Id.
In view of the highly descriptive nature of VETERINARY
APPAREL COMPANY, the statement by three declarants
regarding how they believe other veterinarians perceive
that term cannot bootstrap an insufficient universe of
declarants into a reasonable spectrum of relevant
consumers.
We find that VETERINARY APPAREL COMPANY is highly
descriptive of “mail order and on-line catalog services
featuring veterinary clothing” and that the evidence of
record is insufficient to establish that it has acquired
distinctiveness.
Decision: the refusal to register is affirmed.