0950702 BC Ltd.

Trademark Trial and Appeal Board

Nov 14, 2014

No. 85780769 (T.T.A.B. Nov. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re 0950702 BC Ltd.
_____

Serial No. 85780769
_____

Andrei Mincov of the Mincov Law Corporation for Applicant.

Naakwama S. Ankrah, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
_____

Before Cataldo, Shaw, and Greenbaum, Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Applicant, 0950702 BC Ltd., filed an application to register on the Principal
Register the mark DOG SHAMING in standard characters for goods identified as:
Printed matter, namely, books in the field of entertainment, photo
albums, calendars, greeting cards, post cards, and posters, in
International Class 16;

Dog clothing; garments for dogs, in International Class 18;

Casual clothing, namely, shirts, t-shirts, sweat-shirts, polo-shirts,
hooded tops, pull-overs, vests, blouses, skirts, dresses, woven shirts,
shorts, jeans, jackets and tank tops, in International Class 25; and

Serial No. 85780769

2

Entertainment services, namely, providing photographs and images of
pets with added captions and comments on-line and in mobile wireless
form, in International Class 41.1

Registration has been refused under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the
goods and services in classes 16 and 41. When the refusal was made final, Applicant
filed this appeal and requested reconsideration. Upon reconsideration, the
Examining Attorney maintained the refusal to register. The case is fully briefed.
Evidentiary Objection
Before addressing the substance of this appeal, we will consider first the
Examining Attorney’s objection to Applicant’s submission of new evidence with its
appeal brief as untimely, namely, exhibits 2, 3, 5, 6, and 7.2 Trademark Rule
2.142(d) provides in relevant part that “[t]he record in the application should be
complete prior to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.” Insofar as the Examining
Attorney has timely interposed an objection to Applicant’s late-filed evidence in its
brief, the objection is sustained, and exhibits 2, 3, 5, 6, and 7 submitted
concurrently with Applicant’s appeal brief have been given no consideration. See
e.g., In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d
1593, 1596 (TTAB 2014) (Examining Attorney’s objection to Applicant’s submission

1 Application Serial No. 85780769, filed on November 15, 2012, based on an allegation of
first use and first use in commerce in connection with the identified services of August 16,
2012 under Trademark Act Section 1(a) and a bona fide intent to use the mark in commerce
on the identified goods under Section 1(b).
2 Examining Attorney’s Appeal Br. at 8.
Serial No. 85780769

3

of registrations with appeal brief sustained). We note, however, because exhibits 5
and 6 were submitted in another form prior to filing of the appeal, the
corresponding previously submitted evidence has been considered, as appropriate.
Refusal under Section 2(e)(1)
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It is not necessary, in order to find a
mark merely descriptive, that the mark describe each feature of the goods or
services, only that it describe a single, significant ingredient, quality, characteristic,
function, feature, purpose or use of the goods or services. In re Gyulay, 3 USPQ2d at
1009-10. Whether a term is merely descriptive is determined not in the abstract,
but in relation to the goods or services for which registration is sought, the context
in which it is being used on or in connection with the goods or services, and the
possible significance that the term would have to the average purchaser of the goods
or services because of the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979).
Serial No. 85780769

4

In virtually all examples of record, the term “Dog Shaming,” as used by
Applicant, appears in connection with photographs of dogs with a sign describing
some recent bad behavior engaged in by the animal. For example:
3

3 Applicant’s Specimen, November 15, 2012.
Serial No. 85780769

5

4
The Examining Attorney argues that DOG SHAMING is merely descriptive
“because it identifies the subject matter of the goods and the services.”5 In support
of the refusal the Examining Attorney has submitted excerpts from a number of
websites, including Applicant’s website, showing merely descriptive use of the term
DOG SHAMING, and a dictionary definition of “shame.”
• http://guiltydogs.com – A website showing photographs of dogs with signs
identifying their bad behavior entitled “Guilty Dogs funny dog shaming
photos.”
• http://dogshaming.tumblr.com – Applicant’s website featuring
photographs of dogs with signs identifying their bad behavior stating “We
supply your favorite furry friends with a healthy dose of shaming” and a
link to “Submit Dog for Public Shaming.”
• http://shameyourpet.com – A website featuring photographs of pets with
signs identifying their bad behavior.
• Woof.doggyloot.com/what-is-dog-shaming – A pet-related information web
site answering the question: “What is Dog Shaming?” The web site
discusses seeing “a dozen or more photos of dogs with hand-written signs

4 Examining Attorney’s Office Action of August 20, 2013.
5 Examining Attorney’s Appeal Br. at 5.
Serial No. 85780769

6

describing what they had done wrong, or to cause the scene in the photo”
and states “Dog shaming has become an Internet sensation. There are
entire websites dedicated to these photos.”
• www.flickr.com – A website gallery of photographs entitled “Dog
Shaming” featuring photographs of dogs with signs identifying their bad
behavior.
• http://jezebel.com – A web site with a link to video featuring bad dogs
described as “These Guilty-as-Hell Pups take Dog Shaming to the Next
Level.”
• https://www.pinterest.com/stimmons123/the-best-of-dog-shaming – A
website showing photographs of dogs with signs identifying their bad
behavior entitled “The Best of Dog Shaming.”
• Reddit – A web page entitled “DOGSHAMING” showing photographs of
dogs with signs identifying their bad behavior. Some of the photographs
include titles such as “shaming my dog,” “Halloween dog shaming” and “I
got dog shamed….”
• www.tumblr.com/tagged/dog-shaming – A web page entitled “tumblr. Find
and follow posts tagged #dog shaming” featuring photos shaming dogs
(and cats) for various transgressions.
• www.buzzfeed.com/tag/dog_shaming – A web page entitled Dog Shaming
featuring links to four stories about dogs guilty of various bad behaviors.
• http://peta.org/blog/best-people-shaming – A web page entitled “11 of the
very Best People Shaming” featuring photographs of pet owners with
signs identifying ways they have mistreated their dogs. The web site
explains that “Dogs give us all their love and affection, but what are some
people giving them in return? Dog shaming. Dogs don’t deserve that, but
we can’t say the same for some guardians.”
• http://merriam-webster.com/dictionary/shaming – A dictionary definition
of shame:
shame noun \shām\
: a feeling of guilt, regret, or sadness that you have because
you know you have done something wrong
: ability to feel guilt, regret, or embarrassment
: dishonor or disgrace

Full Definition of SHAME
1 a: a painful emotion caused by consciousness of guilt,
shortcoming, or impropriety
Serial No. 85780769

7

b: the susceptibility to such emotion
2 : a condition of humiliating disgrace or disrepute : ignominy

3 a: something that brings censure or reproach; also:
something to be regretted : pity
b: a cause of feeling shame

The foregoing evidence submitted by the Examining Attorney demonstrates
that posting photographs of dogs, other pets, and even people, highlighting their
bad behavior is a recognized theme on Internet web pages. These web page excerpts
shaming bad behavior are consistent with the dictionary definition of “shame” as
meaning “dishonor or disgrace.” Thus, when DOG SHAMING is used in connection
with Applicant’s printed matter and entertainment services, it immediately conveys
information concerning the subject of the goods and services, namely, that they
comprise images showing dogs being shamed by their owners for bad behavior. See
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)
(“Evidence that a term is merely descriptive to the relevant purchasing public ‘may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys.’”).
Applicant first argues that DOG SHAMING is not “literally descriptive”
because “[d]ogs (like all other animals) are incapable of either shaming someone or
feeling shame.”6 This argument relies on an overly narrow meaning of “shame” and
ignores the complete definition of “shame” which includes “dishonor or disgrace”

6 Appeal Br. at 4.
Serial No. 85780769

8

and “something that brings censure or reproach.”7 As thus defined, “shaming” does
not necessarily require that the perpetrator of the transgression feel shame. Rather,
it is the transgression itself and the resulting public opprobrium that brings shame
upon the dog. Accordingly, we find that this argument is not persuasive.
Applicant next argues that DOG SHAMING is not descriptive because it does
not convey an immediate idea of the goods and services because a “substantial leap
is required to jump from ‘DOG SHAMING’ to truly knowing any particular
characteristic of Applicant’s goods and services.”8 We disagree. The evidence
submitted by the Examining Attorney demonstrates that DOG SHAMING is a
recognized humorous theme appearing in articles, videos, and photographs on a
number of Internet web sites. Where, as here, wording in a mark describes the
subject matter of printed matter (or entertainment services), it is deemed to be
merely descriptive because it conveys information concerning the subject of the
goods or services. See, e.g., In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993)
(MEDICINE merely descriptive for a medical journal); In re Gracious Lady Service,
Inc., 175 USPQ 380, 382 (TTAB 1972) (CREDIT CARD MARKETING merely
descriptive for “a periodical pamphlet devoted to subjects of interest to those
engaged in the credit card merchandising field”); and In re Medical Digest, Inc., 148
USPQ 570 (TTAB 1965) (OB/GYN DIGEST merely descriptive for a periodical
magazine dealing with subjects in the field of obstetrics and gynecology).

7 http://merriam-webster.com/dictionary/shaming.
8 Appeal Br. at 11.
Serial No. 85780769

9

Applicant also argues that the evidence does not support the refusal, but
instead shows that “’Dog Shaming’ was coined by Applicant, is associated in the
mind of the public with Applicant and therefore is distinctive of Applicant’s goods
and services.”9 This argument is unavailing. It is well-settled that the fact that an
Applicant may be the first and only user of a merely descriptive or generic
designation does not justify registration if the only significance conveyed by the
term is merely descriptive. See In re Carlson, 91 USPQ2d 1198, 1202 (TTAB 2009);
In re BetaBatt Inc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems,
Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
Applicant’s remaining arguments regarding competitor need and competitor
use have been considered but are not persuasive. Further, Applicant’s admonition to
resolve doubts in its favor is not applicable here. We have no doubt that the
proposed mark is merely descriptive of Applicant’s goods and services.
For the reasons set forth above, we find that the Examining Attorney has met
her evidentiary burden of showing that Applicant’s mark is merely descriptive of
Applicant’s goods and services, as identified in classes 16 and 41 of the application,
within the meaning of Section 2(e)(1).
Decision: The refusal to register Applicant’s mark under Section 2(e)(1) is
affirmed as to classes 16 and 41. The application with the remaining classes will
proceed to publication in due course.

9 Appeal Br. at 12. Although Applicant argues that its mark is “distinctive of Applicant’s
goods,” a Section 2(f) claim of acquired distinctiveness was not made.