TTAB rejects petition for revocation for failure to demonstrate earned distinction of petitioner’s common law marks – Trademarks

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The Council rejected a petition to cancel the registration of the mark Design and Market Natural Dog Food On “retail store services offering a variety of consumer goods to others”, found that the petitioner failed to demonstrate the priority of using his common law marks
Natural Dog Companyin standard design and character forms, for dog foods and dog treats, among others. Natural Dog Acquisition LLC vs. Pet Go Round of Greensborocancellation number 92074028 (August 2, 2022)
[not precedential] (Opinion of Judge Albert Zervas).

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The defendant set the date of first use in December 2013. The petitioner claimed the first date of use was in 2008. Although the petitioner owned three registrations for his marks, he waived the term NATURAL DOG ​​COMPANY in one registration, and claimed to have gained a distinction in Another registration (with a disclaimer from DOG COMPANY), and I accepted the supplementary registration in the third. Thus, I acknowledge that NATURAL DOG ​​is not inherently special.

Under the rule Otto Roth [Otto Roth & Co. v.
Universal Foods Corp
., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981)]a party opposing the registration of a trademark cannot prevail because of the possibility of confusion with its unregistered term unless it shows that its term is distinctive for its goods, whether by its nature, by acquiring a secondary meaning, or through “any other kind of use” You may have developed a business identity.” Otto Roth640 F.2d in 1320, 209 USPQ in 43 Otto Roth The rule is applicable to trademark deregistration procedures as well.

Based on third-party uses and registrations and on dictionary definitions, the Board of Directors concluded that “DOG, taken as a whole, is a highly descriptive term for a common-law property of the applicant.” The petitioner dismissed his claim that his marks gained distinction in 2008 by establishing that his sales for that year were $256; Moreover, there were no advertising expenditures during 2008-2010. Its sales numbers prior to 2014 (totaling $514,798) were “modest”. The Board concluded that, “Even if Petitioner use was exclusive and largely continuous over the six years prior to 2014, given the limited and lack of convincing evidence, we are not convinced that the Petitioner’s meta tag gained distinction prior to 2014.”

Thus, the petitioner failed to establish priority, resulting in the rejection of his petition.

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