Thursday, April 26, 2012

"DOG GAMES" for Pet Toys Clears Genericness and 2(f) Hurdles, Says Divided TTAB Panel

Applicant Kyjen overcame a genericness refusal of the mark DOG GAMES for "pet toys," and then established secondary meaning in the mark, leading one to conclude that the PTO's bark was worse than its bite. In dissent, Judge Shaw would find the phrase to be generic, asserting that the panel majority failed to consider the applied-for mark in the context of the specimens of record. In re The Kyjen Company, Inc., Serial No. 77571488 (April 12, 2012) [not precedential].

Genericness: The Examining Attorney contended that "dog games" is understood by the relevant public primarily to refer to "pet toys." She pointed to several websites that refer to "dog games," including some foreign websites. The panel majority discounted the latter, since "pet toys do not appear to be the type of goods that American consumers would be inclined to purchase from abroad." [What if you had a French poodle or a German shepherd? - ed.].

Other website evidence referred to DOG GAMES in a trademark sense, or in connection with goods other than toys, while still other evidence was of a "hybrid" variety wherein it was not clear whether "dog games" was being used generically or in reference to play activity.

The Board noted that the PTO must prove genericness with "clear evidence." The Examining Attorney provided only four clear examples of generic use. They were overridden by use of the term "dog games" to mean games played with dogs, with no toys involved. The resulting doubt regarding genericness must be resolved in Applicant's favor, said the majority.

Acquired Distinctiveness: The majority had no doubt that DOG GAMES is merely descriptive of pet toys because it describes a feature or function of the toys: they are used to play games with dogs.

The majority rejected the Examining Attorney's contention that DOG GAMES is "highly descriptive." Applicant attested to just over five years of use of the mark, more than a million dollars in revenue, $48k per year in advertising, and sales in many well known on-line and other venues. Customer reviews bolstered the majority's view that DOG GAMES had acquired distinctiveness.

Dissent: Judge Shaw asserted that the majority was barking up the wrong tree, because the PTO provided clear evidence of genericness. He maintained that Applicant's goods (which include weave poles, a start/finish line, and a tunnel) are "clearly a game for dogs or a 'dog game.'"

The third-party Internet evidence showed that "dog games" is commonly used to refer "to both equipment and activities intended to keep dogs active and healthy." One website uses the phrase "Dog Toys and Games" as the heading for a page of dog toys and games like those of Applicant.

Judge Shaw emphasized that Applicant's specimen shows that the goods are pet toys in the nature of games for dogs. When mark is considered in relation to these goods, "the consuming public would immediately understand that the term DOG GAMES refers primarily to goods such as applicant's notwithstanding that they have been broadly identified as 'pet toys.'"

TTABlog comment: I think the mark is merely descriptive and lacks secondary meaning.

Text Copyright John L. Welch 2012.


At 11:20 AM, Anonymous Morris Turek said...

Wow, if DOG GAMES isn't generic for games played with dogs, then "card games" isn't generic for games played with cards. I agree with the dissent. But even if it's not generic, I think it's so highly descriptive that it is almost incapable of acquiring distinctiveness.

At 4:31 PM, Anonymous Rob said...

I side with the dissent. The "mark" is entirely generic and is not capable of acquiring distinctiveness. Hopefully it will be opposed after publication.

At 12:53 PM, Anonymous Anonymous said...

This is an awful awful decision. They had an out, could have said come back with a survey, get customer declarations. To rely on self-serving statement, barely over 5 years use, for something so highly descriptive - is totally nutso. Examiners have been getting much tougher on 2(f) - and then the Board gives us this nonsense? I can't tell you how many customer decs I have had to get for 2(f) claims for marks so less descriptive than this...


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