IP Law Daily, TRADEMARK—TTAB: Mark referring to recycling program may not be registered for ‘pet food’, (Sep 14, 2022)

By Patricia K. Ruiz, J.D.

Despite the appearance of EARTHBORN REBORN on the bag of pet food, a different mark was used to refer to the pet food itself.

The standard character mark EARTHBORN REBORN used to refer to a recycling program for pet food bags may not be registered for “pet food,” held the Trademark Trial and Appeal Board, affirming the denial of registration by the examining attorney. The Board found that both the original specimen (a flyer) and the substitute specimen (a pet food bag) provided by the applicant, as well as other materials in the record, demonstrated use of EARTHBORN REBORN to refer to a recycling program and use of a different mark (EARTHBORN HOLISTIC) to refer to the pet food itself (In re Midwestern Pet Foods, Inc., August 26, 2022, English, C.).

Application. Midwestern Pet Foods, Inc., sought registration on the Principal Register of the standard character mark EARTHBORN REBORN for “pet food,” in International Class 31. The examining attorney refused to register the mark on the ground that the mark as used on the applicant’s original specimen and substitute specimen identifies a recycling program, not pet food.

Direct association with the applied-for goods or services. An applicant seeking registration must submit a specimen showing actual use of the mark in connection with the applied-for goods or services, and the manner in which the applicant employed the asserted mark must be carefully considered in determining whether the mark has been used as a trademark with respect to the goods named in the application. To function as a mark for the identified goods, there must be a direct association between the mark sought to be registered and the goods specified in the application—in other words, the mark bust me used in such a manner that it would be readily perceived as identifying the specified goods and distinguishing a single source or origin for the goods.

Specimens. The applicant submitted a flyer in support of its statement of use, averring that the flyer serves not only as a point-of-sale display but is also attached to the bags of the applicant’s pet food purchased by consumers at retail locations. Regardless of how the specimen is characterized, the Board stated, it must still display the mark in a way that consumers will directly associate it as a source identifier for the applicant’s pet food.

The applied-for mark appears in the middle of the right-hand side of the specimen as follows:

100% Recyclable Packaging

Through our Earthborn RebornTM

recycling program and TerraCycle®

our bags are now 100% recyclable!

As the specimen expressly identifies EARTHBORN REBORN as a “recycling program,” consumers are likely to perceive it as a source identifier for recycling services, not pet food. The specimen also unmistakably, consistently and without deviation identifies the applicant’s pet food as EARTHBORN HOLISTIC; thus, it is the EARTHBORN HOLISTIC mark that consumers would use to ask for the applicant’s pet food, not the applied-for mark EARTHBORN REBORN.

The applicant contested the examining attorney’s refusal to accept its original specimen and submitted a substitute specimen: a photograph of the applicant’s pet food packaging showing the EARTHBORN REBORN mark appearing on the product packaging, arguing it demonstrated the use of the applied-for mark in connection with the goods identified. However, the substitute specimen also identifies EARTHBORN REBORN as a recycling program, rather than a source identifier for pet food. The mark EARTHBORN HOLISTIC is used on the top of the pet food bag and is a source identifier for the pet food. The board found similar specimens in the record referring to EARTHBORN REBORN as a recycling program through which pet food bags are made with recycled materials and may be recycled after use.

To be registered for “pet food” the EARTHBORN REBORN mark must be used in a way that consumers will readily perceive it as a source identifier for “pet food.” The board held that the mark is not used in this way and affirmed the refusal to register.

The Case is Serial No. 88043262.

Attorneys: Timothy D. Pecsenye (Blank Rome LLP) for Midwestern Pet Foods, Inc. Michelle Ribaudo for the USPTO.

Companies: Midwestern Pet Foods, Inc.

Cases: Trademark USPTO