Friday, April 05, 2013

Precedential No. 12: WYHA? TTAB Affirms Refusal of PLAQUE-ZAPPER for Pet Treats Due to Faulty Specimen of Use

The Board affirmed a refusal to register the mark PLAQUE-ZAPPER for "pet products, namely, edible pet treats, pet food and pet beverages," finding that applicant's specimen did not show use of the mark for the identified goods. The specimen of use (partly depicted below) described the product as a veterinary dental or health care product rather than a pet treat as applicant claimed. Would You Have Appealed? In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243 (TTAB 2013) [precedential].

The Board first pointed to In re Bose Corp., 192 USPQ 213, 216 (CCPA 1976) regarding the role of the specimen of use:

An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application.

Applicant did not contend that the specimen shows use of the mark for pet food or pet beverages, but urged that it qualified under an online definition of a "treat" as "entertainment, food, drink, etc. given by way of compliment or as an expression of friendly regard." However, there was no evidence that this meaning is commonly recognized for "pet treats."

Even applying applicant's definition, the specimen did not support its position. The information on the specimen described a dental healthcare product that controls plaque, tartar and bad breath. It is described as odorless, colorless, and tasteless.

The Board concluded that any reasonable interpretation of the language used on the specimen pointed to a healthcare product, not a treat. The instructions and warnings on the specimen reinforced that interpretation.

The Board pointed out that the term "pet treats" is commonly used to identify an edible item for pleasure or enjoyment. In the evidence of record, "pet treats" referred to chews, biscuits, bones, crunches, and moist goodies. On one website, applicant's product was not referred to as a "pet treat," but was listed under "dental products" as a "dental additive."

Here, there was nothing in the specimen of use showing the mark PLAQUE-ZAPPER in connection with the identified goods. Therefore, registration was properly refused under Sections 1 and 45 of the Trademark Act.

Read comments and post your comments here.

TTABlog note: I'm not sure that Examining Attorneys always require a specimen that refers to the goods involved. Services, yes. Goods, no. What's been your experience?

Text Copyright John L. Welch 2013.


At 10:37 AM, Anonymous Leesa Weiss said...

I agree with your observation about Examiners who do not seek specimens that specifically refer to the product itself. Case in point: submitting specimens that consist of photographs of shipping containers for goods on which the trademark is clearly printed, but no specific reference to the product inside the containers. I have used such specimens in many different situations.

Leesa Weiss
Jacobson Holman Pllc

At 1:21 PM, Anonymous Joshua Jarvis said...

John, I agree with you and Leesa -- EAs typically don't, and shouldn't, require that specimens refer to the goods involved (this would effectively gut our current understanding of marks "used" on goods). But where the specimen, as here, contains additional elements tending to show that the specimen is not what it claims to be, I would think the EA (and the Board) have a duty to refuse as outlined in this decision.

Needless to say, and potential falsity of the use declaration not withstanding, the applicant probably could have sidestepped the refusal and any further inquiry by submitting a cropped photo of the specimen without the additional information.

At 7:20 PM, Anonymous Anonymous said...

If they sell the product, then would it not have been easier to comply than to appeal? Always scratch my head when people live life the hard way.

At 9:07 AM, Anonymous John B. Farmer said...

The elephant in the room is that the USPTO does not require a specimen for every good/service in a class. So, even if you as the applicant prove one good/service with a specimen, the system is taking the other goods/services on faith. The USPTO doesn't want that extra work and the big corporate interests that dominate INTA oppose that requirement. Which shifts the (more expensive) burden to the public to prove that a mark is not in use for certain goods/services.


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