In a non-precedential opinion, the TTAB recently affirmed the Examining Attorney’s refusal to register Midwestern Pet Foods, Inc.’s EARTHBORN REBORN mark, for “pet food,” for failing to provide an acceptable specimen. EARTHBORN REBORN is a program that allows purchasers of EARTHBORN HOLISTIC dog food to recycle the bags the dog food comes in.

Midwestern had submitted two specimens. The original specimen was a screenshot of an Earthborn recycling bin displayed on its website, which Midwestern contended displayed the mark used in direct connection with the goods—i.e., pet food (the mark is in the red box that has been added for clarity):

After the Examining Attorney refused registration, Midwestern filed a request for reconsideration and provided the following substitute specimen (here the mark is in both of the red boxes that have been added for clarity):

Also with its reconsideration request, Midwestern provided a declaration of its Chief Commercial Officer explaining that: (1) the EARTHBORN REBORN program allows purchasers of its pet food to recycle used pet food bags by depositing them in EARTHBORN REBORN bins; (2) the substitute specimen features an image of Midwestern’s recycling bin appearing next to images of its bagged pet food; (3) the recycling bins are ancillary to, and used to promote, its pet food; and (4) the recycling bins are located in the same retail locations where its pet food is sold, making them point-of-sale displays.

The Examining Attorney had rejected both specimens on two grounds: first, that EARTHBORN REBORN was not a “substantially exact representation of the mark” as used on the specimens; and second, that because the specimens showed a recycling box, not pet food, they did not show the applied-for mark used in connection with the identified goods.

With respect to the first ground, the Board affirmed the Examining Attorney’s rejection of the original specimen, pointing principally to the following:

  • that the word immediately after EARTHBORN was not REBORN, but HOLISTIC; and
  • that the phrase EARTHBORN HOLISTIC appeared inside a circular design separate from the word REBORN, as well as at the tail end of the phrase “LOVE YOUR PET, LOVE YOUR PLANET”—thus making the word EARTHBORN “entwined” physically and conceptually with the word HOLISTIC.

The fact that the words EARTHBORN and REBORN were both in larger fonts did not, in the Board’s view, mitigate these deficiencies. However, the Board reversed the first ground the Examining Attorney had relied on in rejecting the substitute specimen. Indeed, the Examining Attorney conceded at oral argument, and the Board found, that the substitute specimen did display a substantially exact representation of the mark within the phrase “Through our EARTHBORN REBORN™ recycling program and TerraCycle®, our bags are now 100% recyclable!”

On the second ground, though, the Board affirmed the Examining Attorney’s rejection of both specimens, finding that each of them failed to show EARTHBORN REBORN used in connection with the identified goods. Whether a specimen is merely advertising or qualifies as a “point-of-sale display associated with the goods” depends, the Board observed, on whether it is “calculated to consummate a sale.” Here, the Board found that neither specimen was. It found, instead, that the original specimen did not (1) contain a picture or textual description of pet food, (2) show the mark EARTHBORN REBORN in association with pet food, or (3) provide a recognizable means for the consumer to order pet food. Similarly, it found that in the substitute specimen, “EARTHBORN REBORN functioned as a source identifier for a recycling program, not pet food.” And finally, the Board found that because Midwestern’s declaration did not include enough information to show how the flyer was “used in conjunction with the marketing and sale of [its] pet food in retail locations,” it was insufficient, standing alone, to show that the flyer should be considered a point-of-sale display. The Board declared, “Without further information, we cannot conclude that the specimen is ‘calculated’ to induce a sale of pet food.”

The case is In re Midwestern Pet Foods, Inc., Ser. No. 86702878 (TTAB July 18, 2018).