Wednesday, September 21, 2005

"PLAY THINGS" Merely Descriptive of Pet Treats, Says TTAB

In a decision that Applicant Pet Food Centers surely found hard to swallow, the Board affirmed a Section 2(e)(1) refusal to register the mark PLAY THINGS, finding it merely descriptive of "pet treats" in international class 31. In re Pet Food Centers, LLC, Serial No. 78975330 (September 9, 2005) [not citable].

Examining Attorney Jennifer D. Chicoski gave the Board something to chew on: she relied on dictionary definitions of "plaything" (anything that serves to amuse) and on website excerpts showing "treats shaped like bones, shoes, toothbrushes, and balls, and toys which feature treats to motivate and engage the animal," as well as website excerpts "featuring on-line pet supply retailers who categorize items such as rawhide strips, compressed bones, jerky and edible chews as 'pet treats.'" Ms. Chicoski concluded that "the wording comprising the mark clearly indicates that the purpose or use of the goods is that pets are able to play with them, and the mark is thus merely descriptive."

Applicant got off on the wrong paw by doggedly contending that by separating the compound word playthings, "the components of [a]pplicant's PLAY THINGS trademark coalesce to form the essence of a wholly unique source identifier." In addition, Applicant submitted a TESS list of third-party registrations in class 31 that contain the word PLAY, as well as a list of registrations that contain the word THINGS without a disclaimer. And finally Applicant proffered website excerpts containing the term "playthings" or "play things" for goods other than toys, arguing that the term has "various meanings" and thus does not immediately convey information about Applicant's goods.

The Board pointed out that Applicant was barking up the wrong tree regarding the latter argument: the meaning of the phrase is not to be discerned in a vacuum, but in relation to Applicant's goods. Moreover, even if Applicant were the first to use the mark for its goods, that does not mean that it the mark not merely descriptive. As to Applicant's contention that separating the words "enables the customer's imagination to engage in mental leaps," the Board was not persuaded, finding no new, incongruous meaning in the two-word mark.

The straw that broke the chihuahua's back was Applicant's specimen of use (depicted above). The Board noted that the specimen "demonstrate[s] that a pet treat, in addition to being edible, is something to play with or serves to amuse. The packaging depicts a cat and a dog playing and lists the following items as the goods: chews, toys, and other fun stuff."

The Board therefore concluded that "[w]hen applied to applicant's goods, the phrase PLAY THINGS immediately describes, without conjecture or speculation, a significant feature or function of applicant's goods, namely treats that serve to amuse or may be played with."

Text Copyright John L. Welch 2005.


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