Tuesday, November 19, 2013

TTAB Affirms Requirement to Disclaim HOLISTIC in EARTHBORN HOLISTIC for Cat Food

Rejecting applicant's arguments that HOLISTIC is merely suggestive of cat food and that EARTHBORN HOLISTIC is a unitary mark, the Board affirmed a refusal to register that mark due to applicant's failure to disclaim HOLISTIC. The fact that applicant Midwest owns a more-than-five-years-old registration for the identical mark for dog food, without disclaimer, was of no help. In re Midwestern Pet Foods, Inc., Serial No. 85128946 (November 13, 2013) [not precedential].

Is HOLISTIC merely descriptive of cat food?: The Examining Attorney submitted dictionary definitions of "holistic," third-party website evidence showing the word "holistic" to "describe pet food as addressing the complete needs of the pet," third-party registrations for pet or dog food, which registrations included a disclaimer of HOLISTIC, and applicant's own website (stating that applicant has "developed a natural holistic approach to nutrition with high quality ingredients to nourish the whole cat.)"

Midwest urged that HOLISTIC is suggestive because the word has so many varied definitions that it "can hardly be said to immediately describe any one single feature or characteristic" of the cat food. Instead, HOLISTIC connotes "a sophisticated level of pet food formulation, catered to the needs of a demanding pet owner clientele."

The Board found the PTO's evidence sufficient to demonstrate that HOLISTIC is merely descriptive of a significant feature of applicant's cat food, namely, that it, in applicant's words, "nourishes the whole cat."

Is EARTHBORN HOLISTIC unitary?: Midwest maintained that the combination of EARTHBORN and HOLISTIC is incongruous because EARTHBORN means a part of the earth and HOLISITIC means concerned with the whole and not the parts. A particular food cannot be both EARTHBORN and HOLISTIC at the same time because "a food cannot be part of something and also be the whole of itself," Midwest asserted. The Board disagreed.

Here, the words EARTHBORN and HOLISTIC are not “so merged together” such that they are not perceived as separable elements. We find that the individual words do not “cancel one another out.” The words EARTHBORN (“of earthly origin”) and HOLISTIC (focusing on the interdependence of the diverse parts within the total entity) each retain their separate but congruent meanings. Thus, the mark does not present an incongruity such that the merely descriptive meaning of HOLISTIC is lost or eclipsed by some combined meaning or double entendre. 

Prior Registration for Dog Food?: Applicant argued that the "unitariness" of its mark was recognized by the PTO when it registered the identical mark for dog food, without a disclaimer. That registration is now more than five years old and cannot be cancelled on mere descriptiveness grounds.

The Board observed that "a registered mark is incontestable only in the form registered and for the goods or services claimed."  Here, although "dog food and cat food are similar insofar as they fall under the general category of pet food, they are distinct products." They have different formulations, according to applicant's website. There is no statutory ipso facto right to register a mark for additional goods when items are added to a company's line of goods.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Although the Board cites various cases involving "incontestability," those cases concern civil actions in federal court. The five-year statute of limitations under Section 14 bars a petition for cancellation on certain grounds (including mere descriptiveness), regardless of whether the registration has been made incontestable by the filing of an appropriate declaration under Section 15. To use the term "incontestable" in the TTAB context seems to me to be inappropriate; incontestability refers to the right to use, not the right to register. What we need is a better term than a "more-than-five-years-old" registration.

Text Copyright John L. Welch 2013.


At 10:42 AM, Anonymous Anonymous said...

Cat food ain't dog food.

That's the best they can come up with for disregarding the due process requirement of stare decisis?


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