Wednesday, July 25, 2018

TTAB Affirms Refusal to Register EARTHBORN REBORN for Pet Food Due to Faulty Specimens of Use

[This is a guest post by Susmita Gadre, a rising 3-L at Northeastern University School of Law, and a summer associate at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a refusal of the mark EARTHBORN REBORN, in standard character form, for “pet food,” under Sections 1 and 45 of the Trademark Act. Applicant submitted two specimens of use, the original shown first below, and the substitute second below. The drawing of the mark was found to not be a substantially exact representation of the mark as depicted in the original specimen, and both specimens failed to show the applied-for mark in use for the identified goods. In re Midwestern Pet Foods, Inc., Serial No. 86702878 (July 18, 2018) [not precedential] (Opinion by Judge Angela Lykos).

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Substantially Exact Representation: Trademark Rule 2.51(b) requires that the drawing of the mark be a “substantially exact representation of the mark as used on or in connection with the goods and/or services.”

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The Board found that while applicant’s substitute specimen does display a substantially exact representation of the applied-for mark (see arrow), the original specimen does not. Midwestern argued that because the terms EARTHBORN and REBORN are displayed in a larger font size than the rest of the wording in the specimen, the consumer’s attention is drawn to them, thus presenting a distinct commercial impression. The Board disagreed, finding that the inclusion of design elements and other wording on the recycling bin meant that the aforementioned words could not create a separate commercial impression.

On the original specimen the word immediately after EARTHBORN is not REBORN as depicted in the drawing but is instead the word HOLISTIC. “EARTHBORN HOLISTIC” is displayed inside of a circular design above, not congruent with, the word REBORN. “EARTHBORN HOLISTIC” also appears as the tail end of the phrase LOVE YOUR PET, LOVE YOUR PLANT (sic). Thus, the word EARTHBORN is “entwined” both physically and conceptually with the word HOLISTIC.

Mark Associated With the Goods: Section 1(d)(1) of the Trademark Act requires that the applicant file a “specimen” or facsimile “of the mark as used in commerce.” Since the subject mark was not displayed on pet food itself, the issue here was whether the original or substitute specimen constitutes a display associated with the goods.

Applicant contended that the original specimen, an excerpt from its website, constituted a display associated with its goods. The Board disagreed, finding that the web page does not contain a picture or description of the goods, does not show the applied-for mark in association with the goods, and does not provide a means to order the goods. While the goods were identified as “pet food”, the product displayed on the specimen is a recycling bin.

Applicant also argued that the substitute specimen, an advertising flyer, clearly shows the connection between the mark and pet food, especially when displayed in the same retail stores where its pet food is sold. However, the Board observed that the applied-for mark serves as an identifier for Applicant’s recycling program, not for pet food.

As the Examining Attorney points out in his brief, the substitute specimen shows EARTHBORN HOLISTIC, not EARTHBORN REBORN, as a source indicator for pet food. All the record evidence points to Applicant offering a recycling program service, not pet food, under the applied-for mark. For the foregoing reasons, Applicant’s substitute specimen fails to show the applied-for mark used in connection with the identified goods.

Without further evidence, such as photographs or a more detailed explanation of how the flyer is used in conjunction with the marketing and sale of Applicant’s pet food in retail locations, the Board could not conclude that the flyer is “calculated to induce a sale of pet food.”

And so the board affirmed the refusal to register.

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TTABlog comment: Did you immediately notice the mark in the pictures above?

Text Copyright John L. Welch 2018.

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