Pennington Seed, Inc.

Trademark Trial and Appeal Board

Sep 10, 2008

No. 76535843 (T.T.A.B. Sep. 10, 2008)

Mailed: September 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pennington Seed, Inc.
________

Serial No. 76535843
_______

Sarah Anne Keefe of Womble Carlyle Sandridge & Rice, PLLC
for Pennington Seed, Inc.

Ronald E. Aikens, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Bucher, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark shown below for “grass seed” in International
Class 31.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76535843
2
1
Applicant initially sought registration for its mark
pursuant to Section 2(f) alleging that its mark had become
distinctive of applicant’s goods by reason of substantially
exclusive and continuous use in commerce. The examining
attorney required that applicant disclaim the word REBEL on
the ground that it is a varietal name and, as such,
generic. Trademark Act Sections 1, 2 and 45. 15 U.S.C.
§§1051, 1052 and 1127. Pursuant to Trademark Act Section
6, the examining attorney issued a final refusal of
registration pending applicant’s submission of a disclaimer
for the term “REBEL.” 15 U.S.C. §1056. In addition, the
examining attorney refused registration based on
applicant’s insufficient claim of acquired distinctiveness.
Applicant appealed the examining attorney’s final refusal.
During the prosecution and appeal of this application,
applicant had other co-pending applications for various
REBEL marks which were also on appeal before the Board.

1 Application Serial No. 76535843, filed on July 30, 2003, under
Section 1(a) of the Trademark Act, claiming a date of first use
and first use in commerce on August 1, 1998. The mark is lined
for the color red. In addition, the application lists Reg. No.
2684924 as a prior registration for the same mark on the
Ser. No. 76535843
3
After applicant filed its brief, this appeal was suspended
pending determination of the appeal in application Serial
No. 76289621 for the mark REBEL which had been refused
registration on the basis that it is a generic varietal
name. The Board’s affirmance in that case was upheld by
the Court of Appeals for the Federal Circuit (Federal
Circuit) on October 19, 2006. In re Pennington Seed, Inc.,
466 F.3d 1053, 80 USPQ2d 1758 (Fed. Cir. 2006).
After the Federal Circuit issued its opinion in
Pennington Seed, applicant requested that this application
be remanded for consideration of its request for entry of a
disclaimer for the word “REBEL.” The Board remanded the
application and the examining attorney issued an action
granting applicant’s request for the disclaimer but
maintaining the requirement for a proper claim of acquired
distinctiveness, stating:
The [request for reconsideration] is incomplete
because the applicant has failed either to
include a proper claim of acquired
distinctiveness with its disclaimer, or to amend
to the Supplemental Register ... The applicant
has 30 days, or until the end of the six months
from the final action, whichever is longer, to
comply with the outstanding requirements or
refusals. 37 C.F.R. §2.65(b). If applicant
fails to comply with the noted requirement of a
proper claim of acquired distinctiveness, or does
not amend to the Supplemental Register, or fails

Supplemental Register which includes a disclaimer for the word
“REBEL.”
Ser. No. 76535843
4
to respond, the application file will be returned
to the Trademark Trial and Appeal Board for
resumption of the appeal.

“Request for Reconsideration Granted,” December 18,
2007.

Applicant did not file a response and the examining
attorney subsequently issued an order denying the request
for reconsideration inasmuch as applicant failed to comply
with the outstanding requirement.
Inasmuch as applicant submitted the disclaimer, that
issue is moot. The only issue remaining on appeal is the
requirement to submit a sufficient statement of acquired
distinctiveness, which applies to the other elements of the
mark.
The application, signed on May 30, 2003 and filed on
July 30, 2003, includes the following statements:
The above-identified applicant has adopted and is
using [the] trademark shown in the accompanying
drawing for GRASS SEED and requests that said
mark be registered in the United States Patent
and Trademark Office on the Principal Register
established by the Act of 1946 under Section
2(f). The mark has become distinctive of the
applicant’s goods by reason of substantially
exclusive and continuous use in commerce thereof
by the applicant. ... The mark was first used
on the above-identified goods at least as early
as August 1, 1998, and first used in interstate
commerce at least as early as August 1, 1998, and
is now in use in such commerce.

The examining attorney found that the claim under
Section 2(f) “fails to make a proper claim of acquired
Ser. No. 76535843
5
distinctiveness” and “[i]f the applicant chooses to [make a
claim under Section 2(f)] by using the statutory suggestion
of five years of use as proof of distinctiveness, the
applicant should submit a claim of distinctiveness that
reads as follows, if accurate. The mark has become
distinctive of the goods/services through the applicant’s
substantially exclusive and continuous use in commerce for
at least the five years immediately before the date of this
statement.” Final Office Action, August 3, 2004 (emphasis
in original).
The issue here is the absence of the last clause. The
statute provides as follows:
The Director may accept as prima facie evidence
that the mark has become distinctive, as used on
or in connection with the applicant’s goods in
commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant
in commerce for the five years before the date on
which the claim of distinctiveness is made.

15 U.S.C. §1052(f). See also Trademark Rule 2.41(b),
37 C.F.R. §2.41.

As noted in the Trademark Manual for Examining
Procedure, “[u]se of the precise statutory wording is
desirable, but variations may be accepted if they do not
affect the essential allegations.” TMEP §1212.05(d) (5th
ed. 2007). In discussing what constitutes an essential
allegation, the TMEP provides:
Ser. No. 76535843
6
[U]se of the mark must cover the five years
before the date of the statement of five years’
use. Thus wording that indicates that the use
referred to is before the date of the statement
is essential. Its omission can only be excused
if the facts in the record clearly show that the
use includes the five years before the date of
the statement.

Id.
In this case, the statement of record does not include
at least one essential element, specifically that the use
referred to is for the five years before the date of the
claim. Moreover, the facts in the record do not “clearly
show that the use includes the five years before the date
of the statement.” To the extent allegations of use could
be relied upon as such “facts in the record,” here, they
weigh against such a finding inasmuch as the date of first
use in commerce in the application is August 1, 1998, but
the claim was made on May 30, 2003, two months prior to
five years use based on the date of first use.2 Moreover,
we are not convinced that dates of use standing alone would
suffice because the five year statement must be tied to
“substantially exclusive and continuous use.”
Decision: The refusal to register based on
applicant’s failure to submit a sufficient claim of

2 Even if we were to go by the filing date of the application,
July 30, 2003, this also precedes the completion of the five year
requirement albeit by two days.
Ser. No. 76535843
7
distinctiveness under Section 2(f) is affirmed. See
Trademark Rule 2.141(b), 37 C.F.R. §2.141(b).