IP Law Daily, TRADEMARK—TTAB: Cancellation of ‘The Natural Dog Pet Food Market’ denied because petitioner failed to show prior rights in ‘Natural Dog Company’ mark, (Aug 4, 2022)

By Donielle Tigay Stutland, J.D.

Although the petitioner was able to show earlier common law usage of its mark, its claim for priority failed because the petitioner could not show acquired distinctiveness because it had disclaimed key words in the mark.

A request to cancel registration of the mark THE NATURAL DOG FOOD MARKET & Design by a pet food company that owned the mark the NATURAL DOG COMPANY has been denied by the Trademark Trial and Appeal Board. Although the petitioner argued that it had priority in the NATURAL DOG COMPANY mark based on common law usage dating back to 2008, well before the respondent’s first use of its THE NATURAL DOG FOOD MARKET mark in 2013, the Board concluded that the Petitioner failed to show its mark had acquired inherent distinctiveness (Natural Dog Acquisition LLC v. Pet Go Round of Greensboro, August 2, 2022).

Background. Pet Go Round owns a registration for “retail store services featuring a wide variety of consumer goods of others” for THE NATURAL DOG FOOD MARKET. The registration was issued on August 2, 2016, based on an application filed on July 31, 2015.

Natural Dog Acquisition LLC owns a registration for the mark NATURAL DOG COMPANY, which was issued on April 26, 2016, from an application filed on December 23, 2014, for: “non-medicated balms for use on noses for pets” in International Class 3; and “dog food; dog treats” in International Class 31. It filed a petition for the cancellation of Pet Go Round’s registered mark.

Priority. The Board began its analysis looking at each mark’s common law rights for priority. The Respondent's evidence showed first use in 2013 in North Carolina. Respondent opened a retail location under the name THE NATURAL DOG PET FOOD COMPANY in December of 2013 and its use in commerce was in widespread use at least by that time. Petitioner, however, asserted “prior trademark rights in Petitioner’s NATURAL DOG COMPANY marks by virtue of Petitioner’s prior use and acquired distinctiveness thereof, rather than prior registration.” It claimed its first use of the mark NATURAL DOG COMPANY was in September 2008.

Next, the Board noted that Petitioner needed to establish acquired distinctiveness. The Board contrasted the fact that the Respondent’s mark is registered on the Principal Register without a claim of acquired distinctiveness and without a disclaimer of the term NATURAL. The Board indicated that Petitioner must prove acquired distinctiveness of the term NATURAL DOG COMPANY as a source indicator in order “to prevail in this proceeding.” The Board’s discussion began with the degree of descriptiveness of the marks as applied to the common law goods.

The Board looked at various third-party registrations and concluded that the term “natural” is a highly descriptive term for Petitioner’s common law goods, indicating that such goods have “little or no processing, artificial ingredients or preservatives.” Additionally, the Board found that the word DOG is generic for Petitioner’s Common Law Goods, and the term COMPANY does not function as a source indicator. The Board noted, “the absence of a source indicative function of DOG COMPANY is evidenced by Petitioner’s disclaimer of DOG COMPANY in its Supplemental Register registration.” As such, the Board determined that NATURAL DOG COMPANY, considered as a whole, is a highly descriptive term for a characteristic of Petitioner’s common law Goods.

The Board also analyzed the degree of descriptiveness of the term NATURAL DOG COMPANY. Six factors the Board reviewed include: (1) association of the trademark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Petitioner asserted that its mark acquired distinctiveness in 2008 as it was first used in commerce. However, the Board noted that the company’s sales that year were around $500, which would defeat that assertion. The Board also noted that the Petitioner had spent very little on advertising for its products between 2008 and 2013 (the date when Respondent established priority). The Petitioner also submitted webpages that reference video publicity prior to 2013, but the Board noted that it could not consider that evidence because it was not properly submitted. The Board concluded that the Petitioner failed to offer enough evidence to prove its highly descriptive mark had acquired distinctiveness before 2014. Wrote the Board, "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."

The Board concluded that Petitioner had not established acquired distinctiveness prior to Respondent’s established first use date, and, as such, the Petitioner did not establish priority. Accordingly, the cancellation petition was dismissed.

The Case is Cancellation No. 92074028.

Attorneys: Henry B. Ward III, Samantha N. Skains-Menchaca, and Rebeca Harasimowicz (Moore & Van Allen PLLC) for Natural Dog Acquisition LLC. A. Justin Eldreth (Eldreth Law Firm, PC) for Pet Go Round of Greensboro.

Companies: Pet Go Round of Greensboro; Natural Dog Acquisition LLC

Cases: Trademark USPTO