John A. Van Den Bosch Co.

Trademark Trial and Appeal Board

Mar 12, 2001

No. 75533640 (T.T.A.B. Mar. 12, 2001)

3/12/01
Paper No. 15
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re John A. Van Den Bosch Company
________
Serial No. 75/533,640
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Terence J. Linn of Van Dyke, Gardner, Linn & Buckhart, LLP
for John A. Van Den Bosch Company.
Karen M. Strzyz, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 10, 1998, John A. Van Den Bosch Company
(applicant) filed an intent-to-use application for the mark
CANINE COMPLETE (“CANINE” disclaimed) for “dog food” in
International Class 31.1 The Examining Attorney refused to
register the mark on the ground that the term CANINE
COMPLETE is merely descriptive of applicant’s goods under
Section 2(e)(1) of the Trademark Act. 15 U.S.C. §
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/533,640
2
1052(e)(1). After the refusal was made final, this appeal
followed. Applicant and the Examining Attorney have
submitted briefs. An oral argument was not requested.
Because we agree with the well-reasoned position of
the Examining Attorney, we affirm her refusal to register
the mark under Section 2(e)(1).
The Examining Attorney has submitted a significant
amount of evidence to show that “complete” is a term
commonly used to describe dog food. A sampling of the
evidence is set out below:
All major pet foods are complete and balanced for the
appropriate life stage. Denver Post, Dec. 12, 1999 p.
G-06.
You also can make your own low-calorie dog food at
home. Hill’s offers a listing of nutritionally
complete pet food recipes. Dallas Morning News, June
5, 1999, p. 9c.
By law, all pet foods that are “complete and balanced”
must ensure that the pet receives all the nutrients it
requires. Star Tribune, Jan. 31, 1999, p.10E.
Either chemical analysis or feeding trials may be used
to verify a pet food as “nutritionally complete.”
Lewiston Morning News, Feb. 9, 1998, p. 5A.
By adding dried meat scraps to cereal by-products,
manufacturers subsequently made pet foods that
approached the “complete and balanced” notion that
appears on today’s manufactured foods. Dayton Daily
News, Mar. 20, 1997, p. 8.
1 Serial No. 75/533,640. On June 24, 1999, applicant filed an
acceptable Amendment to Allege Use.
Ser No. 75/533,640
3
Many pet foods are complete and balanced with adequate
amounts of vitamins, making supplements unnecessary.
Times Union, Nov. 19, 1994, p. D4.
Sellers’ group endorses pet food formulas that meet
its definition of "complete and balanced.” Los
Angeles Times, Sep. 15, 1991, p. 32.
In order for a pet food to be labeled as
“nutritionally complete” it has to have a minimum of
vitamins and minerals. Lewiston Morning Tribune, Oct.
8, 1990, p. 11A.
How do we know if we’re giving our pets the balanced
diet they need? One way is to use a commercial pet
food whose label indicates that it’s nutritionally
complete. Washington Post, Nov. 30, 1982, p. D5.
A good quality commercial pet food labeled complete,
balanced or nutritionally correct will supply all the
protein, fats, minerals and vitamins needed for
growth, proper development and maintenance of healthy
pets. St. Louis Post-Dispatch, May 4, 1992, p. 9.
In addition, the Examining Attorney has submitted
evidence to show that commercial dog food is often
described as being “complete” (See PETSMART.COM printouts):
A natural choice for complete and balanced nutrition
for normally active dogs. (1st printout, p. 2)
Real lamb and rice in a great tasting, complete and
balanced formula. (2nd printout, p. 2)
Nutritionally complete for active dogs. (3rd printout,
p. 1)
Provides complete nutrition for dogs. (4th printout,
p. 1)
Unique, high quality canned entrees provide complete
and balanced nutrition for your dog. (5th printout, p.
2)
Ser No. 75/533,640
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100% complete and balanced nutrition with extra
protein for growing puppies. (5th printout, p. 3)
Lamb Meal & Rice Select canine diet is a nutritionally
complete balanced diet. (6th printout, p. 1).
Applicant responded to the Examining Attorney’s
refusal by arguing that its mark is not descriptive, that
CANINE COMPLETE is incongruous requiring a multistep
reasoning process in order to deduce any descriptive
significance, and that the common letter “C” in both words
of the mark would cause potential consumers to view the
mark as a unitary whole. In addition, applicant cites
registrations for other goods and one for pet food to
support its argument that CANINE COMPLETE is not
descriptive for dog food. Applicant’s arguments are not
persuasive.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods. In re Quik-Print Copy Shops, Inc., 616 F.2d
523, 525, 205 USPQ 505, 507 (CCPA 1980); In re Gyulay, 820
F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). To
be “merely descriptive,” a term need only describe a single
quality or property of the goods. Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 807, 120 USPQ 293,
294 (CCPA 1959). Descriptiveness of a mark is not
Ser No. 75/533,640
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considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Development Corp., 588 F.2d 811, 814,
200 USPQ 215, 218 (CCPA 1978).
Here, the Examining Attorney has demonstrated that
“complete” is a word commonly used to describe pet food and
dog food. Applicant, by disclaiming the exclusive right to
use CANINE, apart from the mark as shown, has admitted that
CANINE is merely descriptive of applicant’s goods. See,
e.g., Quaker Oil Corp. v. Quaker Oil Refining Corp., 453
F.2d 1296, 172 USPQ 361, 363 (CCPA 1972).2 At an absolute
minimum, the Examining Attorney has established that the
mark “Canine Complete” would describe at least one
characteristic of the goods, i.e. that applicant’s pet food
is nutritionally complete food for dogs.
One of applicant’s main arguments in response to the
Examining Attorney’s descriptiveness refusal is that the
2 The evidence of record (PETSMART.COM) also includes such
references as:
Lamb Meal & Rice Select canine diet is a nutritionally
complete balanced diet. (6th printout p. 1).
Waltham Formula Adult Conditioning Canine Diet. (6th printout p.
1).
Science Diet Lamb and Rice Canine Growth Formula. (4th printout
p. 1).
Ser No. 75/533,640
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Office has registered marks without disclaimers of
“complete” for other goods. However, a close look at
applicant’s cited registrations demonstrates that they do
not support its argument that “complete” is somehow not
descriptive for dog food. The Examining Attorney has shown
that the term “complete” is a commonly used term referring
to dog or pet food. The fact that for other goods the term
“complete” might not be descriptive and therefore has been
registered without a disclaimer is hardly surprising. Our
focus here is on whether the term “complete” is descriptive
for pet food, specifically dog food. Assuming arguendo
that the term “complete” might not be descriptive for,
e.g., furnishing retirement account information, computer
programs, or providing seminars for developing negotiating
skills, this point hardly supports applicant’s argument
that the same term is not descriptive for pet food.3
3 The Examining Attorney has put in registrations to show
that the Office has been consistent in requiring a
disclaimer of the term “complete” for pet food.
Applicant’s lone cited exception is readily distinguishable
on its face (COMPLETE ADVANTAGE). We are not persuaded
that the Office’s prior disclaimer practice is particularly
persuasive evidence either for or against the registration
of a mark. See In re Nett Designs, 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some
registrations had some characteristics similar to Nett
Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court”). It
would be incongruous to continue to refuse to register a
mark that the applicant has demonstrated is suggestive
Ser No. 75/533,640
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Finally, we acknowledge applicant’s argument that the
words CANINE and COMPLETE start with the same letter.
However, we are not persuaded that in this case that such
alliteration overcomes the strong evidence of
descriptiveness submitted by the Examining Attorney. In re
Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986) (“[T]here is
nothing in the record to suggest that the mere fact that
both words which form the mark begin with the letter “L”
would cause purchasers to miss the merely descriptive
significance of the term ‘LEAN’ or consider the entire mark
to be a unitary expression"). Regarding applicant’s
argument that the mark CANINE COMPLETE is somehow
incongruous, we simply disagree. When the mark CANINE
COMPLETE is viewed, as it must be in this case, in relation
to dog food, we find that it immediately informs consumers
of a characteristic of the goods, i.e., that the goods are
nutritionally complete dog food.
Decision: The refusal to register is affirmed.
because of prior disclaimers of the term or to continue to
pass applications to publication despite evidence of
descriptiveness simply because other Examining Attorneys
had not required a disclaimer of the term. Such a practice
would conflict with the requirement that the Office “must
decide each case on its own merits.” Id.
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