Wednesday, August 03, 2022

TTAB Denies Cancellation Petition for Failure to Prove Acquired Distinctiveness of Petitioner's Common Law Marks

The Board denied a petition for cancellation of a registration for the mark THE NATURAL DOG FOOD MARKET & Design for "retail store services featuring a wide variety of consumer goods of others," finding that Petitioner failed to prove priority of use of its common law marks NATURAL DOG COMPANY, in standard character and design forms, for, inter alia, dog food and dog treats. Natural Dog Acquisition LLC v. Pet Go Round of Greensboro, Cancellation No. 92074028 (August 2, 2022) [not precedential] (Opinion by Judge Albert Zervas).

Respondent established a first use date of December 2013. Petitioner claimed a first used date in 2008. Although Petitioner owned three registrations for its marks, it had disclaimed the words NATURAL DOG COMPANY in one registrations, claimed acquired distinctiveness in another (with a disclaimer of DOG COMPANY), and accepted a Supplemental Registration in the third. Thus, it had conceded that NATURAL DOG COMPANY was not inherently distinctive.

Under the rule of Otto Roth [Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)], a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through “whatever other type of use may have developed a trade identity.” Otto Roth, 640 F.2d at 1320, 209 USPQ at 43. The Otto Roth rule is applicable to trademark registration cancellation proceedings as well.

Based on third-party uses and registrations and on dictionary definitions, the Board concluded that "DOG COMPANY, considered as a whole, is a highly descriptive term for a characteristic of Petitioner’s Common Law Goods." Petitioner sunk its own claim that its marks acquired distinctiveness in 2008 by testifying that its sales that year were $256; furthermore there were no advertising expenditures during 2008-2010. Its sales figures prior to 2014 (totaling $514,798) were "unimpressive." The Board concluded that "even if Petitioner’s use was substantially exclusive and continuous for the six years prior to 2014, due to the limited evidence and its lack of persuasiveness, we are not persuaded that Petitioner’s highly descriptive mark had acquired distinctiveness before 2014."

And so, Petitioner failed to prove priority, resulting in denial of its petition.

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TTABlogger comment: Is this a WHYP?

Text Copyright John L. Welch 2022.


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