Wednesday, May 23, 2018

Precedential No. 19: TTAB Rules that Evidence From A Website No Longer Active Is Not Probative

Ruling that website evidence from a no-longer active website is not probative, the Board found the term CAVIAR to be not misdescriptive of applicant's pet foods and pet treats, and so it reversed Section 2(a) deceptiveness and Section 2(e)(1) deceptive misdescriptiveness refusals of the mark CANINE CAVIAR. The Board did, however, uphold the requirement that applicant disclaim the word CANINE. In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590 (TTAB 2018) [precedential] (Opinion by Judge Lorelei Ritchie).

Deceptiveness under Section 2(a) requires a showing that (1) the mark misdescribes the goods, (2) consumers would likely believe the misdescription, and  (3) the misrepresentation would materially affect the purchasing decision. The examining attorney contended that consumers would understand the word "caviar" to mean that caviar is an ingredient of applicant's goods. There was no dispute that the goods do not contain caviar.

Applicant maintained that consumers are likely to think of CANINE CAVIAR not as a reference to "fish roe," but as a laudatory reference to the quality of the product as "the best of its kind," as in "the caviar of pet foods." A declaration from an expert linguist supported that assertion. The Board found that some consumers would understand "caviar" to refer to fish roe, while others would understand "caviar" in the laudatory sense, the latter not being misdescriptive.

Turning to the second prong of the test, the examining attorney submitted evidence that pet foods and treats may contain caviar and that pet owners give caviar to their pets. The Board, however, found two problems with that evidence.

First, several of the websites reference by the examining attorney are "cached" or stored, and applicant objected that the sites were no longer active. The Board found that to be fatal to the probative value of the evidence:

[A]lthough the Examining Attorney’s evidence did properly include a URL and date, due to Applicant’s objections that certain sites are not active, we find that such evidence is not probative.

The Board noted that even if the URL resolves to an active link, "there may still be an issue raised as to the probative value of the evidence, including, but not limited to, the probative weight to assign consumer perceptions as of the original publishing date."

The second problem with the examining attorney's website evidence was that several webpages referred to foreign use (in the U.K.). Evidence from foreign websites may be probative in some cases (for example, technical fields), but in this case the evidence "does not tell us the norms specific to pet owners in the United States who are relevant consumers."

Applicant submitted a declaration from a consultant in the animal feed industry, stating that "[t]he use of caviar as an ingredient in pet food essentially is non-existent." Two of applicant's distributors stated that they were unaware of anyone being deceived or confused into thinking that applicant's product contains caviar. Instead, the mark is understood as being a metaphor for high quality food.

The examining attorney asserted that the Board should make its own legal conclusions, but the Board noted that the witnesses were also providing factual testimony: i.e., that they were not aware of any confusion or deception that the products in question contain caviar.

Consistent with longstanding practice, we accord these declarations such probative value as they may have, and weigh them with the totality of the evidence.

 The Board acknowledged that a few companies offer caviar for pets as a special, luxury item, but the overwhelming evidence is that caviar is almost never used as an ingredient for pet food. During 20 years of use of the CANINE CAVIAR mark, consumers have not mistakenly believed that applicant's products contain caviar.

While we expect most pet owners to cherish their pets, we do not expect that they consider it be reasonable to spend over one hundred times the cost of comparable pet food on a single meal for these treasured creatures.

The Board concluded that consumers who perceive the word "caviar" in applicant's mark  to mean "fish roe" are not likely to believe that applicant's goods contain caviar. Therefore the mark is not deceptive under Section 2(a), and since the first two prongs under that test were not met, it perforce is not deceptively misdescriptive under Section 2(e)(1).

Turning to the requirement that applicant disclaim CANINE, applicant argued that the mark is unitary due to its alliteration and therefore that no disclaimer is required. The Board noted, however, that the combination of the two words provides no additional meaning beyond that proposed by applicant and its linguistics expert: "luxury dog food." Similarly alliterative terms like CANINE CRUNCHER and CANINE CANDY are registered with disclaimers of CANINE. The Board had no doubt that CANINE will be viewed as a separable term that conveys the information that the product is dog food, and thus is merely descriptive thereof.

And so the Board affirmed the disclaimer requirement.

Electric eels I might add do it
Though it shocks em I know
Why ask if shad do it, waiter bring me
"shad roe"
(Cole Porter, "Let's Do It.")
Read comments and post your comment here.

TTABlog comment: I think the mark suggests that the pet food contains some caviar, not that it is totally caviar.

Text Copyright John L. Welch 2018.


At 3:10 PM, Anonymous Anonymous said...

This reminds of when my vet once referred to a particular type of cat treat as "cat crack," obviously suggesting that cats are easily addicted to it, not that it contains crack. Likewise, I can't see anyone believing that dog food contains caviar.

At 4:01 PM, Anonymous Anonymous said...

How does this holding affect Wayback evidence, if at all?

At 12:03 PM, Anonymous Anonymous said...

RE: Wayback -- I suspect this holding is limited to using defunct websites as evidence of what a mark means/consumer significance. Wayback evidence should still be probative for issues such a priority.

At 4:57 PM, Anonymous Anonymous said...

Wayback should still be OK for showing what a particular website looked like on a particular date. Because you are relying on the contents of the website for that, not the actual contents of the website. It's essentially a hearsay problem. In this case, the archive evidence was being submitted for the truth of the contents of the archived website.


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