[00:00:00] Speaker 04:
Next morning is 15-1-2-2-1, Enraged Midwestern Pet Food.

[00:00:32] Speaker 04:
I think we're all settled whenever you're ready.

[00:00:33] Speaker 04:
You've got to help me with pronouncing your name here.

[00:00:37] Speaker 01:
Pesini.

[00:00:39] Speaker 01:
May it please the court, I'm Tim Pesini, counsel for appellants from Midwestern Pet Foods, and I'm accompanied at council table by Mr. Bradford Craig, who's also on brief.

[00:00:52] Speaker 01:
The issue before the court today

[00:00:54] Speaker 01:
is whether the TTAB committed an error in affirming the Patent and Trademark Office's final refusal of two applications.

[00:01:04] Speaker 01:
One is Wholesomes, which was refused under Section 2E1, asserting that the mark is merely descriptive of the goods.

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And the other is for Sportmix Wholesomes, in which there was a disclaimer under Section 6A required of the word Wholesomes.

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So the question is whether adding the S to a word which we all agree is a descriptive word somehow changes it.

[00:01:29] Speaker 01:
Yes, I think quite simply that's accurate.

[00:01:32] Speaker 04:
So why is there not substantial evidence to support the board's findings?

[00:01:37] Speaker 01:
Well, if you look at what the board relied upon, the board relied upon a dictionary definition of wholesome.

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a number of third-party registrations included the word wholesome and some other internet evidence.

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There is evidence that wholesome is in fact descriptive of perhaps pet food or a quality of pet food.

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But there's no evidence, there's not one single evidence of the word wholesome.

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In fact, there is no such word.

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And so there's no dictionary definition of wholesome.

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There's no third party use of wholesome.

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It's just frankly not a word.

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And so once the office put in that evidence, which was their burden to do, we submitted an expert report from a linguist who looked at the word wholesome and concluded probably not difficultly because there's no such word in the English language.

[00:02:36] Speaker 01:
He went through a number of linguistic tests.

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He did a morphological test, a syntactic test, and a semantic test, and concluded that this is not an English word.

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In fact, what the applicant here had done is created a word that causes some thought and some sort of mental gymnastics, so to speak.

[00:03:00] Speaker 04:
In fact, if you look... I guess I'm having a hard time.

[00:03:03] Speaker 04:
Is your view that as a matter of law, if it's a word that is a made-up word that doesn't itself and its entirety appear in a dictionary, then automatically it's not descriptive?

[00:03:14] Speaker 01:
Well, I don't know that I would go so far as to say that as a matter of law, but I think in this particular instance, based on the record that was before the board, that

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the expert tipped the scale the other way and created some form of doubt as to whether this word was or wasn't descriptive.

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In fact, the expert's language says very much it's essentially mental gymnastics, but sort of the fundamental touchstone of what we decide is whether it's suggestive or descriptive.

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And so, at least in this instance, Judge, I believe that

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That certainly is the case.

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We're not reassessing the evidence.

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Isn't the board finding that merely adding the S to the word wouldn't cause the customers to perceive it any differently enough substantial evidence to support the decision?

[00:04:11] Speaker 00:
Well, I mean, they have to get an expert to come in and say that.

[00:04:15] Speaker 01:
Well, I mean, certainly the board obviously is substituting their own judgment for that of the expert that appeared on behalf of Midwestern.

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I mean, there is no real evidence.

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I mean, look, I understand that adding an S typically is not that big a deal.

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Normally, it's just making a plural form of a word.

[00:04:34] Speaker 00:
What kind of evidence would you have the board get to say that customers would perceive wholesome to mean the same thing as wholesome?

[00:04:42] Speaker 01:
Well, I mean, it's a tough one for the office.

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I realize they have limited resources.

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But normally, I suppose you would either have an expert or you would do a survey.

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to try to determine them.

[00:04:54] Speaker 04:
I don't believe that the officer... And what was the expert's testimony on?

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What was his expertise?

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Did it have to do with what a normal average customer of pet food would understand the term to me?

[00:05:06] Speaker 01:
Well, I don't believe, Judge, that he qualified himself in that way.

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He qualified himself as an expert, a linguistic expert, in what people perceive the English language to mean.

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And if you read his opinion, his opinion is that this is a word that when someone's confronted with, in fact, it causes some puzzling and some thought process.

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And in fact, the Office, in their brief, cites an article by James Hardback.

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that suggests that this is not an incredibly unusual marketing ploy that in fact, clever, people do transform adjectives to nouns and use them as brands and so it's that clever turn.

[00:05:54] Speaker 04:
Let me ask you sort of a different question.

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If the term was wholesome, wholesome without the S,

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But the S-O-M-E at the end was changed to S-U-F.

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So you've still got the same word wholesome, but you're reading the word wholesome and it's different than one you would have found in the dictionary.

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What would your view be?

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Well, I think that the phonetic equivalent, I think that you would probably likely conclude that that would be descriptive, I think under Section 2E1.

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I don't think

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the changing of the spelling there.

[00:06:28] Speaker 04:
So you're saying that wouldn't confuse the consumer, even though it's a different word than wholesome, but adding the F, it would be clear to the consumer that it's no longer descriptive?

[00:06:40] Speaker 01:
That appears to have been the doctrinal following of the office with respect to those kinds of spelling changes, but we've certainly made a record

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a number of third-party registrations which are somewhat similar, for instance, meaties.

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What's the commercial impression of that mark?

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It's clearly meat.

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Is it really any different?

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The idea of a suggestive mark is to in fact convey the commercial impression of a descriptive term.

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That's the whole part of marketing.

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That's what the ploy is intended for.

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Pet essentials.

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It's the same thing.

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And I realize, obviously, that the office isn't bound by those prior determinations.

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Although, of course, the office also then points out the ones where wholesome is, you know, it's the, we can do it, but you can't.

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But there are registrations here that are really very similar or small, S-M-A-L-L-Z.

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I mean, has anyone questioned that the commercial impression of that is that it's something small?

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I think not.

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And so this is really very, very much the same thing.

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And so we're looking for the court to turn this back to the office.

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There are a couple of cases that the government relies on pretty thoroughly.

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The Bayer case with respect to Asparina.

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and the lightweight case.

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And those cases are really quite quite different than this particular case.

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Why are they different?

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Well, with respect to aspirin and lightweights, both of them were actually in the dictionary.

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They are actual English words, whereas wholesome is not.

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There were actually trademark registrations for aspirin for lightweights.

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There had been a prior registration in which

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lightweights have been disclaimed, which as the court knows is an admission of descriptiveness.

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And so those two particular cases which the government relies on quite heavily in its briefing are really quite different here and can be distinguished readily.

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Again,

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The real thing here is that the other difference is of course is this expert opinion which would hope that it tips the scale back and so it creates some doubt as to whether this mark is merely descriptive.

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And so our suggestion of course here is that the office didn't take into consideration

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and give deference to that expert's opinion with respect to this unlike the Bayer case with Asparino or unlike the case with Sperry with respect to the Lightweight case.

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And if you look to the actual expert opinion, again, it doesn't quite track exactly the language from

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the statute, but if you look at what he says... It's the sixth page of the expert report, which is in the record... It's the sixth page of Dr. Leonard's report.

[00:10:19] Speaker 01:
Thank you, Your Honor.

[00:10:21] Speaker 01:
And it's paragraph 20.

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where he says the noun wholesome is an invented word that has novel, morphological, grammatical, and semantic value.

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It's made clear by the virtue that the fact that no dictionaries contain the noun wholesome or wholesome.

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More importantly, wholesome cannot be found in any dictionary at all and consequently cannot be said to have any accepted meaning.

[00:10:46] Speaker 01:
For English, and this is the most important part here, for English language speakers,

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linking the adjective wholesome to wholesomes would require a leap of metaphorical grammatical understanding to coin a rather awkward but illustrative term to process a new lexical item that in the first glance may appear to be an adjective flouting the rules we all use to understand English language.

[00:11:12] Speaker 01:
And that's the exact

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sort of black letter law that we talk about when the office looks at something as to whether it's merely descriptive or not.

[00:11:23] Speaker 01:
It's that mental leap.

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And so this is what this expert has said from a perspective of people who understand English language, which obviously would certainly encompass those who are pet food consumers and purchases of pet food.

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And so again, he finally concludes, based on the foregoing,

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It's my opinion that the word wholesome is a newly created noun with no accepted meaning.

[00:11:52] Speaker 04:
May it please the court.

[00:12:07] Speaker 02:
This case is all about the letter F.

[00:12:09] Speaker 02:
as Chief Judge.

[00:12:11] Speaker 00:
Would this case be different if they used Z instead of S?

[00:12:17] Speaker 02:
I don't believe so.

[00:12:19] Speaker 00:
But you've allowed trademarks where they added a Z instead of an S to come up with the same kind of meaning, right?

[00:12:28] Speaker 02:
Well, there's certainly nothing in the record where wholesome with a Z has been allowed.

[00:12:33] Speaker 02:
And those other applications that were cited both in the brief and

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And let me just mention that for the additional registration that Midwestern has added, we ask the court not to take judicial notice.

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But even if the court were to take judicial notice of those other registrations, they're not relevant for the inquiry here.

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The inquiry here is based on a specific

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factual record as to the word wholesome.

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And for the word wholesome, there is nothing in the record that establishes that consumers are going to understand applicants marked wholesome as to mean anything other than the admittedly descriptive word wholesome.

[00:13:11] Speaker 02:
Applicant points substantially to the expert declaration, but nothing in that expert declaration establishes that consumers are going to take away anything other than the descriptive meaning.

[00:13:24] Speaker 02:
Council just pointed to paragraph 20 of that declaration in which the expert has testimony that there's no accepted meaning, but the no accepted meaning language means that there's no dictionary definition.

[00:13:38] Speaker 02:
And we know there's no dictionary definition.

[00:13:40] Speaker 04:
So what does he need to do?

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What does the one need to do?

[00:13:43] Speaker 04:
Do they need to come up with a consumer survey that says what you say?

[00:13:50] Speaker 02:
I believe in this case that that's what would need to be shown.

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They need to make some showing that consumers understand that wholesome is the source, right?

[00:14:00] Speaker 02:
That it points to the source of the good.

[00:14:02] Speaker 03:
But why isn't that inferable from paragraph 20?

[00:14:06] Speaker 03:
The linguist says every native English speaker would immediately hear this, intuitively understand it's being asserted as a noun,

[00:14:19] Speaker 03:
We don't in the English language use this word as a noun.

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It therefore is a clever way of naming something from somebody who had the cleverness to brand its product that way.

[00:14:35] Speaker 02:
Well, perhaps you can take away that consumers would understand it to be a noun, but what the expert doesn't say... Well, they have to understand it.

[00:14:43] Speaker 02:
I'm sorry, they understand it as a noun.

[00:14:46] Speaker 03:
And that it isn't a noun in ordinary English usage.

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So something funny is going on here.

[00:14:54] Speaker 02:
Whatever that funny thing is that's going on here, though, doesn't

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take away the underlying descriptive meaning.

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There's nothing that the expert points to that says, because it's now and now, it somehow is devoid of all meaning.

[00:15:07] Speaker 03:
And the only meaning in the... But let me just focus on this.

[00:15:12] Speaker 03:
It seems to me quite a lot of loose discussion in this field is made loose by not putting the word mere in front of descriptive.

[00:15:22] Speaker 03:
Endless numbers of perfectly legitimate trademarks are partially descriptive.

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has to be the case.

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Lots and lots and lots of names are suggesting some product quality.

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Why, though, is this merely descriptive when an ordinary English speaker would recognize that something odd is going on in this use of this term?

[00:15:50] Speaker 02:
Because there is no other meaning.

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There's no evidence in the record of any other meaning.

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Something coined and new.

[00:15:57] Speaker 02:
Well, except that that then says that the S effectively camouflages what is established by the record and what Midwestern conceives is otherwise a nearly descriptive term, right?

[00:16:08] Speaker 02:
So if you had a situation where the change in the word was such that the merely descriptive term wasn't immediately obvious as it is in this case, that would be a different case.

[00:16:19] Speaker 02:
But here, the addition of the letter S simply cannot camouflage the admittedly descriptive term, and they have put forth no evidence

[00:16:27] Speaker 02:
that there is another meaning that consumers are going to take away.

[00:16:30] Speaker 02:
And I do believe that this court's decision in Bayer is quite instructive on this point, because in Bayer, this court looked at the substantial similarity of the two words and concluded that when you look at the appearance, sound, and meaning of the two terms, that that alone can be substantial evidence of the merely descriptive nature.

[00:16:52] Speaker 02:
So in that case, this court found that

[00:16:56] Speaker 02:
was sufficiently similar to aspirin and that that sufficient similarity was substantial evidence.

[00:17:02] Speaker 02:
The same is true here.

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The only difference is the F. The court properly followed this court's guidance in Bayer and found that the Midwestern's mark is sufficiently similar to

[00:17:14] Speaker 02:
Midwestern's mark, Wholesome's mark, is sufficiently similar to the word wholesome to find- I don't remember.

[00:17:22] Speaker 03:
Did the board in its opinion address the asserted significance of the noticeable word form transformation?

[00:17:37] Speaker 03:
Basically paragraph 20 of the expert.

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Did the board say, yes, we get that, but it's not enough for the following reason?

[00:17:44] Speaker 02:
The board quoted from the expert declaration, including paragraph 20 and page 6 of its decision, and then addressed the expert declaration at the end of its opinion on page 12.

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So it did discuss the expert declaration in the context of all the evidence of the record and found that the expert declaration did not

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constitute evidence that otherwise presented another meaning for the mark.

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That the meaning of the mark that consumers are going to perceive is the admittedly descriptive one, the one for the word wholesome.

[00:18:29] Speaker 02:
Because substantial evidence

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Here supports the board's finding that Holsons is merely descriptive of pet food.

[00:18:35] Speaker 02:
This court should affirm the board's refusal to register applicant's marks.

[00:18:38] Speaker 02:
The court has no further questions.

[00:18:40] Speaker 02:
I'll yield the balance of my time.

[00:18:42] Speaker 02:
Thank you.

[00:18:53] Speaker 01:
if I might just conclude.

[00:18:55] Speaker 01:
I think that the point that was raised is quite a good one, which is that the in-regulate case which establishes sort of the merrily descriptive test says merely and immediate.

[00:19:11] Speaker 01:
And that is, in this instance, based on

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The record, not the case.

[00:19:18] Speaker 01:
The expert clearly indicates that that's not how consumers are going to perceive this language.

[00:19:28] Speaker 01:
If you haven't read the article that the office actually put into its brief or reference in a footnote, this James Hardback article is actually quite interesting because he talks about how people come up with, in fact he came up with some things that our expert didn't talk about,

[00:19:44] Speaker 01:
He talked about the bioassociation of changing an adjective to a noun, something that tickles your brain.

[00:19:52] Speaker 01:
Again, what I would suggest to the court is the touchstone of the difference between a suggestive mark and a descriptive mark.

[00:20:01] Speaker 01:
He goes on to say, you know, it's jumping from one meaning to another.

[00:20:05] Speaker 01:
It lends an adjective to a thingness, which of course, again, is sort of the touchstone of a trademark.

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emanating a source, a thing, this particular product.

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He goes on to say, it's a quality turned into a thing.

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And so again, I would urge the court to look at that and to look at the record that was there.

[00:20:30] Speaker 01:
There is no record of wholesome being used, or I should say, wholesome being used by anyone or anything.

[00:20:40] Speaker 01:
And so for these reasons and the reasons that we've set forth in the record and in our briefing, Midwestern Pet Food respectfully requests that the court reverse the board's affirmation of the office's final refusal to register wholesomes and also to remove the disclaimer requirement for the sport mix wholesomes marks.

[00:21:01] Speaker 04:
Thank you.