TTAB Denies Cancellation Petition For Failure To Prove Acquired Distinctiveness Of Petitioner's Common Law Marks

• Published date: 04 August 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

The Board denied a petition for cancellation of a registration for the mark THE NATURAL DOG FOOD MARKET & Design for "retail store services featuring a wide variety of consumer goods of others," finding that Petitioner failed to prove priority of use of its common law marks NATURAL DOG COMPANY, in standard character and design forms, for, inter alia, dog food and dog treats. Natural Dog Acquisition LLC v. Pet Go Round of Greensboro, Cancellation No. 92074028 (August 2, 2022) [not precedential] (Opinion by Judge Albert Zervas).

Respondent established a first use date of December 2013. Petitioner claimed a first used date in 2008. Although Petitioner owned three registrations for its marks, it had disclaimed the words NATURAL DOG COMPANY in one registrations, claimed acquired distinctiveness in another (with a disclaimer of DOG COMPANY), and accepted a Supplemental Registration in the third. Thus, it had conceded that NATURAL DOG COMPANY was not inherently distinctive.

Under the rule of Otto Roth [Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)], a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through "whatever other type of use may have developed a trade identity." Otto Roth, 640 F.2d at 1320, 209 USPQ at 43. The Otto Roth rule...