Wednesday, May 09, 2018

PET GRASS Lacks Acquired Distinctiveness for Pet Food and Pet Store Services, Says TTAB

The Board rejected this applicant's claim of acquired distinctiveness for the mark PET GRASS for grass, grass kits, food for animals, and retail pet supply services. Applicant's Section 2(f) claim constituted an admission that the mark is not inherently distinctive, ans so the only issue was whether applicant's proofs established secondary meaning. In re Bell Rock Growers, Inc., Serial No. 86747927 (May 7, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board first considered the degree of descriptiveness of the mark, since the higher the degree of descriptiveness, the higher the burden to prove acquired distinctiveness. Dictionary definitions, applicant's specimens of use (for example, the photo above) and advertisements, and third-party website evidence convinced the Board that PET GRASS is highly descriptive of applicant's goods and services.

Applicant's marketing director declared that applicant coined the term PET GRASS in 1998, has sold the product in retail stores throughout the country, enjoyed sales of more than $21.2 million in the past six years with advertising expenditures exceeding $354,000 per year, attends trade shows, advertises in trade magazines (like Modern Cat Magazine, has social media sites, enjoyed some media coverage, and won an award as a ground-breaking pet product.

The Board was not impressed. The fact applicant may have coined the term was irrelevant. Even if it were the only user of the term, the mark could still be descriptive. Use for a long period of time does not by itself prove acquired distinctiveness, nor do sales and advertising figures. Here, applicant's financial figures lacked context for comparison with competitors in the pet field, as did its social media and trade show activity. The winning of single award, and the mention of the product in two newspaper articles provided little support for the 2(f) claim.

Moreover, in view of the third-party use of "pet grass" in a descriptive manner indicates that applicant has not been the "substantially exclusive" user as required by Section 2(f). "Non-exclusive use presents a serious problem for Applicant in obtaining trademark rights in a designation that is not inherently distinctive, because it interferes with the relevant public’s perception of the designation as an indicator of a single source."

And so the Board concluded that applicant had failed to satisfy Section 2(f), and it affirmed the Section 2(e)(1) refusal to register.

Read comments and post your comment here.

TTABlog comment: How do you think a survey would have come out?

Text Copyright John L. Welch 2018.


At 9:32 AM, Anonymous Anonymous said...

The notion of using a 2(f) claim as an admission of descriptiveness is unfair and prolongs proceedings. In most other areas of the law, tribunals understand that alternative claiming is routine and doing so does not constitute an admission against interest. Treating it as an admission mandates that you should not make a 2(f) claim until you have no choice.

At 10:02 AM, Anonymous Mark Stein said...

$21 Million in sales and $350K plus in advertising per year are pretty substantial. I am a pet owner and am not familiar with the product, but am a bit surprised the USPTO brushed these numbers off so casually.


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