W.F. Young, Inc.

Trademark Trial and Appeal Board

Feb 14, 2018

No. 86454618 (T.T.A.B. Feb. 14, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: February 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re W.F. Young, Inc.
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Serial No. 86454618

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Jeffrey E. Schiller of Grogan, Tuccillo & Vanderleeden, LLP,
for W.F. Young, Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Zervas, Lynch and Coggins,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
W.F. Young, Inc. (“Applicant”) seeks registration on the Principal Register of the
proposed mark for the following goods:
“Non-medicated cleaning preparations for livestock, horses
and domestic animals, namely, shampoos, hair polish,
detanglers, conditioners, fragrance sprays, stain removers;
coat, mane and tail whiteners; mane and tail cleaners; non-
medicated hoof care products namely conditioners,
moisturizing creams and polish” in International Class 3;
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“Veterinary preparations for livestock, horses and domestic
animals, namely, liniments, antimicrobials for
dermatologic use, medicated shampoos, topical analgesics
and anti-inflammatory creams, ointments and sprays;
animal feed supplements and feed additives for use as
dietary supplements and animal health supplements;
medicated hoof ointments; hoof packing for reducing hoof
heat, pain, swelling and for killing and preventing growth
of bacterial and fungal infections; insecticides, insect
repellents and flea and tick control products in the form of
liquids, sprays, creams, shampoos, powders, spot-ons and
dips” in International Class 5;
“Bag netting for covering eyes and head for livestock and
horses” in International Class 18; and
Sponges, combs and brushes; shedding combs and brushes;
cleaning mitts for grooming livestock[,] horses and
domestic animals” in International Class 21.1
The mark is described as a banner with a ribbon-like shape. Color is not claimed
as a feature of the mark.
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. §1052(d), based on the following two
registrations which issued to different registrants:
● Registration No. 4653735 (“the ‘735 registration”) for the
mark (HEAD TO TAIL and design) for
“dietary supplements for pets” in International Class 5;2
and

1 Application Serial No. 86454618, filed on November 14, 2014. The application claims first
use and first use in commerce on January 9, 2014 for all goods.
2 Registered December 9, 2014. The description of the mark in the registration states, “The
mark consists of the words ‘Head to Tail’ above a banner with a tail-like stroke creating the
‘H’ in the word ‘Head’ and crossing the ‘T’ in the word ‘Tail.’” Color is not claimed as a feature
of the mark.
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● Registration No. 4724070 (“the ‘070 registration”) for the
mark (BIOMANE and design) for
“topical body lotion” in International Class 3; and
“veterinary preparations in the form of equine pellets for
the thickening of horse manes” in International Class 5.3
In addition, the Examining Attorney refused registration under (i) Trademark Act
Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127, because Applicant’s mark, as used
on the specimens of record, as or , is merely a
background design which is part of a composite mark that incorporates additional
wording and hence fails to function as a trademark; and (ii) Trademark Act Sections
1 and 45, 15 U.S.C. §§1051, 1127, because the International Class 21 specimen of
record does not show Applicant’s mark in use in commerce in connection with any of
the International Class 21 goods.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board and requested reconsideration. The Examining Attorney denied the request
for reconsideration. The appeal resumed and both Applicant and the Examining
Attorney filed briefs.

3 Registered April 21, 2015. The description of the mark in the registration states, “The mark
consists of a banner/ribbon with the words ‘BioMane’ across it.” Color is not claimed as a
feature of the mark.
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I. Failure to Function as a Mark
We begin with the Examining Attorney’s failure to function refusal under
Sections 1, 2 and 45 of the Trademark Act. By way of background, we note that the
application was filed as an intent-to-use application pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b). On September 2, 2015, after the issuance of the
first Office Action, Applicant filed an Amendment to Allege Use, submitting the
following specimen (a webpage):

In the subsequent Office Action of September 22, 2015, the Examining Attorney
issued a failure to function refusal under Sections 1, 2 and 45 for the first time, citing
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) §§904.07(b) and 1202.11
(June 2017), and stating:
Registration also is refused because the applied-for mark,
as used on the specimens of record, is merely a background
design that functions as part of a composite mark that
incorporates additional designs or wording. As such, it does
not function separately as a mark. …
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The applicant has applied to register the design of a blank
ribbon-shaped banner. The specimens show the mark as
the word “ABSORBINE” in the center of a ribbon-shaped
banner. The ribbon-shaped banner is not sufficiently
distinctive or unique so as to create a separate commercial
impression apart from the word “ABSORBINE.”
The Examining Attorney also offered Applicant the option of claiming acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), or amending
the application to seek registration on the Supplemental Register.4
In a response filed on March 21, 2016, Applicant argued against the failure to
function refusal and submitted additional specimens, evidently in a “product series,”5
including the following specimens (images of its actual goods and a label):

4 TSDR 1.
5 March 21, 2016 Resp., TSDR 2-3, 10-11.
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The additional specimens did not persuade the Examining Attorney to withdraw
her refusal. She stated in the Final Office Action:
The failure to function as a trademark refusal is based
solely on the applicant’s use of the applied-for mark on the
specimens of record. In this case, the specimens of record
all show that the mark consists of the word “ABSORBINE”
printed across the center of the ribbon-shaped banner. The
applied-for mark, the ribbon-shaped banner, functions
solely as a background design and does not create a
commercial impression apart from the word
“ABSORBINE.”6
Where an applicant seeks to register a background design that is used in
connection with a word mark, that background design may be registered as a
trademark only if it creates a commercial impression separate and apart from the
word mark in conjunction with which it is used. In re Anton/Bauer Inc., 7 USPQ2d
1380 (TTAB 1988) (citing 1 J.T. McCarthy, TRADEMARKS AND UNFAIR COMPETITION,
200 (2d ed. 1984)). See also In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB

6 April 9, 2016 Office Action, TSDR 1.
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1998). “If the background design is inherently distinctive, it may be registered
without evidence that it is recognized as a trademark (i.e., without proof of secondary
meaning); if it is not inherently distinctive, such proof is essential.” Id. at 1381 (citing
In re E.J. Brach & Sons, 256 F.2d 325, 118 USPQ 308, 310 (CCPA 1958)).7 Professor
McCarthy has commented that “the more fanciful and distinctive the background
design, the more likely it is to ‘hit the buyer in the eye’ and hence be more than
background. In such a case, the so-called ‘background’ comes out into the spotlight of
real trademark significance.” J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION §7.27 (5th ed. Dec. 2017 update).
For the reasons set forth below, we find that the ribbon-shaped banner design does
not create a commercial impression separate and apart from the word mark with
which it is used but rather is merely a background design, and that the purchasing
public would be unlikely to regard this design as identifying and distinguishing
Applicant’s goods and indicating their source. None of the specimens show use of the
ribbon-shaped banner design alone; they all have ABSORBINE superimposed
thereon. Further, ABSORBINE is depicted in the center of the ribbon-shaped banner
in large lettering that covers much of the design, and its lettering follows the incline
in its central portion. The arrangement of the wording and the geometry of the ribbon-
shaped banner in the specimens suggest that they are part of the same mark. Because

7 Applicant rests on the inherent distinctiveness of its design inasmuch as it has not sought
registration under Section 2(f).
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color is not claimed as a feature of the design, we do not consider the vivid yellow
background as distinguishing the design.
Professor McCarthy has characterized the issue as “whether this shape is so
unusual for this type of goods or services that its distinctiveness can be assumed.” Id.
at §7.33.8 Applicant’s ribbon-shaped banner is used in connection with goods intended
for livestock, horses and domestic animals, and the cited registered marks, which
include ribbons, are for goods intended for horses and pets. From these materials, we
cannot conclude that ribbons are uncommon in connection with pets, livestock, horses
and domestic animals. The ribbon shape of the banner hence is not so unusual for
such animal-related goods.
We recognize that the record does not show any other uses of the same specific
combined design employed by Applicant. The design, however, appears to be no more
than a mere refinement of a basic background and would be so regarded by the public.
That is to say, while the design sought to be registered may be unique in the sense
that there is no evidence that others in the animal products trade are using an
identical ribbon-shaped banner, it is nonetheless not inherently distinctive.
In sum, we find that Applicant’s applied-for design fails to emerge out of the
background of the specimens and hit the prospective buyer in the eye, and find that
Applicant’s ribbon-shaped banner is a background design that does not create a

8 We note too that “common geometric shapes such as circles, ovals, triangles, diamonds and
stars, when used as backgrounds for the display of word or letter marks, are not regarded as
trademarks for the goods to which they are applied absent evidence of distinctiveness of the
design alone.” In re Anton/Bauer Inc., 7 USPQ2d at 1381 (citing In re Raytheon Co., 282
USPQ 317 (TTAB 1979)).
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commercial impression separate and apart from the word mark in conjunction with
which it is used. Thus, it does not function as an indicator of the source of Applicant’s
goods.
II. Remaining Issues
In view of our affirmance of the failure to function refusal under Sections 1, 2 and
45, we need not consider the likelihood of confusion or specimen refusals.
Decision: The Section 1, 2 and 45 refusal to register is affirmed for each
International Class.