Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA963373
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`Filing date:
`
`03/28/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
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`87519612
`
`CORPORATE GREEN, LLC
`
`Applied for Mark
`
`BIG BARK
`
`Correspondence
`Address
`
`R BENNETT FORD
`ROY KIESEL FORD DOODY & THURMON
`9100 BLUEBONNET CENTRE BLVD, STE 100
`BATON ROUGE, LA 70809
`UNITED STATES
`rbf@roykiesel.com, blp@roykiesel.com, info@roykiesel.com
`225-927-9908
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Appeal Brief
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`Reply Brief.pdf(444554 bytes )
`
`R. Bennett Ford
`
`rbf@roykiesel.com, blp@roykiesel.com, info@roykiesel.com
`
`/R. Bennett Ford/
`
`03/28/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IN RE APPLICATION OF:
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`CORPORATE GREEN, LLC
`
`MARK:
`
`BIG BARK
`
`APPLICATION NO.:
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`87/519,612
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`
`
`
`
`FILING DATE:
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`July 7, 2017
`
`EXAMINING
`ATTORNEY:
`
`Mark Sparacino
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`ATTORNEY DOCKET NO.: 12370.003
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`
`
`
`
`
`
`BOX RESPONSES
`NO FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
`
`
`Dear Madam:
`
`Applicant’s Reply Brief
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`
`
`
`This is in reply to the Examining Attorney’s Appeal Brief, dated March 11, 2019. This
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`Brief is believed to be timely filed. However, if any extension is required, please consider this a
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`petition for the same. The fee for an ex parte appeal was paid on October 29, 2018. No additional
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`fee is believed to be required with this reply; however, if any is due, the Commissioner is hereby
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`authorized and requested to charge the same to deposit account number 18-2210.
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`I.
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`
`
`
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`Applicant’s Evidence is Sufficient to Both Rebut the Examiner’s Prima Facie
`Showing of Descriptiveness and Establish that BIG BARK Has a Well Recognized
`Meaning
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`Applicant produced evidence showing that the phrase BIG BARK has been used to refer
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`to the loud vocalization of a dog from at least 1894 to 2017. The phrase has been used in the
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`English language in the manner asserted by the Applicant for at least 120 years, and is
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`commonly used in this manner today in literature and advertising.
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`
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`1
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`

`

`
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`The examiner contends that all of the uses of BIG BARK submitted by the Applicant
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`were in the context of dogs. This does not undermine Applicant’s position. The phrase means the
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`loud vocalization of a dog. There is a canine connection. Applicant’s argument is that the mark
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`evokes a well-known canine connotation, and that such a connotation is not descriptive of
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`Applicant’s goods. Applicant’s evidence shows widespread use of the phrase in its canine sense,
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`from over a century of literature to advertisements for services as diverse as graphics, charitable
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`fund raising, and photography. The loud vocalization of a dog sense of BIG BARK is widely
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`known and understood.
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`
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`The examiner claims that an internet search of phrases such as barking up the wrong tree,
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`every dog has its day, can’t teach an old dog new tricks and his bark is worse than his bite
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`“would result in a great deal of evidence” outside of the context of dogs.
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`
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`None of these searches are in the record. In addition to simply being improper citation to
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`evidence outside the record, the argument illustrates the examiner’s misunderstanding of the
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`issue at hand, something demonstrated repeatedly throughout the brief. The question is not
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`whether there are other idioms more well-known than BIG BARK. There undoubtedly are. But, a
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`phrase doesn’t have to be hackneyed into a cliché to be sufficiently well-known for consumers to
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`get its non-descriptive, double meaning. The non-descriptive sense of BIG BARK is well-
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`known. In fact, it is the primary sense of the phrase. There is no evidence in the record of the
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`phrase being used in any other way.1
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`
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`The examiner argues that if BIG BARK were “a common phrase for a loud canine
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`vocalization, then one would expect evidence of ‘big bark’ used as a double entendre in
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`
`1 BIG BARK is occasionally used to refer to a large type of ship – a barque, where bark is a spelling variation of
`barque. This is a rare use of the phrase in a sense other than the canine one. Examples of the phrase being used in
`the descriptive sense of a large outer layer of a tree are virtually non-existent. None are in the record.
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`
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`2
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`

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`connection with tree bark. If indeed ‘big bark’ is a term widely recognized by the public since at
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`least 1894 . . . it is unlikely that applicant would be the first to express this double entendre.”
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`
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`The examiner cites no authority for the proposition that originality precludes a composite
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`mark from being unitary. Following the examiner’s logic, the first entity to come up with the
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`idea of calling a beauty salon CROSS HAIRS would have to disclaim HAIRS because it was
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`first despite the well-known, non-descriptive meaning of CROSS HAIRS. This makes no sense
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`whatsoever. It appears to be a condition the examiner made up out of whole cloth. He certainly
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`cites no authority for it.
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`
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`Second, this is the first time the examiner has raised these objections to Applicant’s
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`evidence. The examiner ignored Applicant’s literary evidence completely until his appellate
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`brief. The examiner issued a Final Rejection and a Reconsideration Letter, neither of which
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`mention the Applicant’s literary evidence of how BIG BARK is used.
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`
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`Raising this issue at this late date is especially troubling. Had the Applicant been aware
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`the examiner considered evidence that the phrase has been in use in English literature for 120
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`years insufficient to establish that BIG BARK has a well-known meaning, a Google BooksTM
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`search could have been conducted which, to use the examiner’s words, “would result in a great
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`deal of evidence” of the many, many authors who have used this phrase to mean a loud
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`vocalization of a canine. This is not in the record because the examiner simply ignored the
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`Applicant’s literary evidence until he submitted his Appellate brief. First objecting to the volume
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`of evidence submitted after the record is closed is not exactly even handed.
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`
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`Finally, the insistence that the phrase BIG BARK be used outside the canine context in
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`order to be unitary evidences another misunderstanding of what it means for a mark to be
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`unitary. The question is whether the non-descriptive meaning of the phrase is sufficiently well-
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`
`
`3
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`

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`known that the non-descriptive meaning will naturally occur to consumers when they encounter
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`the mark. In the seminal case, In re Colonial Stores, 394 F.2d 549, 552-53 (CCPA 1968),
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`SUGAR & SPICE was held to evoke a well-known nursery rhyme (Little girls are made of sugar
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`& spice and everything nice . . .). That nursery rhyme was not descriptive of the applicant’s
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`bakery goods. There was no showing that SUGAR & SPICE had a meaning – other than the
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`descriptive one – beyond the nursery rhyme or that the nursery rhyme meaning was used as an
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`analogy in the bakery context. The non-descriptive, nursery rhyme sense of the phrase was well-
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`known. That was enough to establish that the phrase was likely to evoke the non-descriptive
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`meaning to consumers.
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`
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`Similarly, in In re Delaware Punch Co., 186 U.S.P.Q. 63 (T.T.A.B. 1975) THE SOFT
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`PUNCH was found to have a double entendre because SOFT PUNCH evoked a “non-alcoholic
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`beverage” meaning (descriptive) and a “soft or pleasing hit” meaning (non-descriptive). Id.
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`There was no requirement of any showing that the non-descriptive meaning had ever been used
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`outside of the physical contact context or in the soft drink context.
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`
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`In re Priefert Mfg. Co., Inc., 222 USPQ 731 (TTAB 1984) provides another example.
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`The mark, HAY DOLLY, for a device for transporting hay evoked the greeting HEY, DOLLY as
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`in hello, Dolly. As with Applicant’s mark here, the non-descriptive meaning of the mark was
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`wholly arbitrary with respect to the goods. There was no evidence that anyone had ever used the
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`greeting meaning of HAY DOLLY in the context of hay. Because HAY DOLLY and HEY,
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`DOLLY were phonetic equivalents and the latter, greeting meaning was non-descriptive of the
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`applicant’s goods, there was sufficient doubt about descriptiveness to allow the mark to be
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`advanced to publication. The Board resolved doubt with respect to whether a mark was unitary in
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`favor of publication of the mark. Id. Here, instead of resolving doubt in favor of publication, the
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`
`
`4
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`

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`examiner is inventing additional conditions that a mark must meet in order to be considered
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`unitary.
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`II.
`
`
`
`
`The Descriptive Sense of BIG BARK is Incongruous or Uncommon, Making the
`Ordinary, Non-descriptive Sense More Likely to Occur to Consumers
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`In contending that BIG BARK is not incongruous, the examiner says very little, but he
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`does make this curious assertion: “the fact than an applicant may be the first or only user of a
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`merely descriptive designation does not render a word or term incongruous or distinctive.”
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`
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`Applicant agrees that being unique or rare does not convert a phrase that is otherwise
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`descriptive into an inherently distinctive mark. But, when a phrase has two meanings, one
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`descriptive and the other arbitrary or suggestive, the frequency with which the phrase is used in
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`the respective senses is undeniably relevant to the associations consumers are likely to make
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`when they encounter the phrase. If one sense is rare and the other common, the common sense is
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`likely to be evoked whenever the phrase is encountered.
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`
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`For example, BACK STABBERS evokes the idea of a double cross because that is a
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`frequently used sense of the phrase. If BACK STABBERS were used with acupuncture services,
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`the fact that the double cross sense of the phrase is much more common than the literal sense is
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`relevant in assessing whether the phrase would evoke the non-descriptive meaning.
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`
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`Applicant contends that tree bark is rarely referred to as big or little. Of course, this is a
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`negative, which is not provable. However, it is a negative about an issue on which the examiner
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`has the burden of proof,2 and one which the examiner could have easily countered by introducing
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`evidence that tree bark is regularly referred to as big or little, were this a common use of the
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`phrase. However, it is not a common use of the phrase. There is no evidence in the record of
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`anyone using the phrase BIG BARK to refer to the large outer layer of a tree.
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`2 The Applicant addresses where the burden of proof and persuasion lie on this issue at length below. Suffice it to
`say here, that the Applicant disagrees with the examiner regarding who has the burden of proof.
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`
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`5
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`

`

`
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`Applicant does not contend that BIG BARK is inherently distinctive simply because it is
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`rarely used to mean a large outer layer of a tree. Rather, the rarity with which the phrase is used
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`in its descriptive sense makes it likely that the more common, non-descriptive sense of BIG
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`BARK will occur to consumers encountering the mark. Without the more common, non-
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`descriptive meaning of BIG BARK, the rarity of the descriptive sense would be irrelevant. The
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`examiner has either ignored or failed to appreciate the distinction.
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`III. The Alliteration Exhibited By BIG BARK Makes Consumers More Likely to View
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`It as a Unitary Whole
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`
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`The examiner chides the Applicant for “not provid[ing] an explanation as to why BIG
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`BARK is that rare case in which the alliteration contributes to a finding that BIG BARK is
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`unitary.” (emphasis added).
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`
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`Alliteration, when present, always contributes to the tendency of a group of words to be
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`read as a unitary phrase. In Re Midwestern Pet Foods, Inc., No. 85501982, 2015 WL 5579958, at
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`*4 (Aug. 27, 2015)(non-precedential)( “It is well established that marks with a sound pattern
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`such as alliteration can encourage persons encountering the mark to perceive the mark as a
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`whole.”)
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`
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`For example, CRIMSON CARDINAL is more likely to be read as a unitary phrase than
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`is RED CARDINAL. The phrases are equally descriptive of the bird, but the alliteration makes it
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`more likely that the former will be perceived as a unitary phrase.
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`
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`That does not mean that CRIMSON CARDINAL is unitary. Nor does it mean that
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`alliteration will always - or even usually – be sufficient, without more, to establish that a phrase
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`is unitary. However, when alliteration is present, it is always a factor that weighs in favor of the
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`phrase being unitary. Likewise, with rhyme. The question is how will consumers perceive the
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`
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`6
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`

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`phrase. Rhyme and alliteration make it more likely that consumers will perceive phrases as a
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`unit.
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`
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`The examiner wrongly considers alliteration to be a non-factor that can be dismissed
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`without consideration, unless the applicant makes a showing that the alliterative effect of BIG
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`BARK meets some rare but undefined threshold.
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`
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`The alliteration present in BIG BARK is a factor that weighs in favor of a finding that the
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`mark is unitary. That doesn’t make it controlling or determinative, but it is a factor that weighs in
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`Applicant’s favor on this issue. The examiner erred in disregarding it entirely.
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`IV. Applicant’s Specimen Makes it More Likely that the Non-Descriptive Sense of BIG
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`BARK Will Occur to Consumers who Encounter the Mark
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`
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`How the mark is used in the normal marketing of the services and how consumers would
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`react to such displays of the mark are directly relevant to whether a mark is unitary. Dena Corp.
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`v. Belvedere Int'l, Inc., 950 F.2d 1555, 1561 (Fed. Cir. 1991).
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`
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`Applicant’s specimen includes a dog, which emphasizes the canine vocalization meaning
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`of the phrase. The examiner discounted the specimen because it also includes a tree bark pattern.
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`Again, these comments show a misunderstanding of the issue at hand. BIG BARK is a double
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`entendre. It has two meanings. The point is to play on both meanings. BIG BARK naturally
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`connotes the loud vocalization of a dog. But, BARK is also connected to Applicant’s services.
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`Applicant is intentionally playing on both meanings.
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`
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`This is the case with every double entendre mark. SUGAR & SPICE was directly
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`connected to the bakery goods and services of the applicant in Colonial Stores, supra, and it
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`evoked the nursery rhyme, sugar and spice and everything nice. Double entendre marks are
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`supposed to connote both meanings. Otherwise, there is no descriptiveness issue in the first
`
`place. SUGAR & SPICE as a mark for a repair shop would still connote the nursery rhyme, but
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`
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`7
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`

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`that would be the only meaning evoked. The mark would just be arbitrary if used with a repair
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`shop.
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`
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`The fact that Applicant’s mark has two meanings does not undermine Applicant’s
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`position. It is Applicant’s position.
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`V.
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`
`
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`The Examiner Has Improperly Utilized a Divide-and-Conquer Approach to the
`Unitary Analysis Factors
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`The examiner considered each of the factors presented by the Applicant in isolation. This
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`reflects yet another fundamental misunderstanding of the unitary assessment – and most fact
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`based legal assessments. The determination of whether a mark is unitary involves consideration
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`of multiple factors. In Re Mortg. Bankers Ass'n of Am., No. 344, 1999 WL 651598, at *4 (Aug.
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`18, 1999)(non-precedential); In Re Buffalo Wild Wings, Inc., No. 77654679, 2011 WL 7005530,
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`at *1 (Dec. 21, 2011)(non-precedential). These factors include whether the words function
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`together as a unit; alliteration; how the average consumer would encounter the mark under
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`normal marketing of the services; and the reaction of a consumer to such a display of the mark.
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`In Re Buffalo Wild Wings, Inc., No. 77654679, 2011 WL 7005530, at *1 (Dec. 21, 2011)(non-
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`precedential).
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`
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`The factors used to assess factual determinations typically must be considered as part of a
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`totality of the circumstances analysis. In re Northland Aluminum Prod., Inc., 777 F.2d 1556,
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`1561
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`(Fed. Cir. 1985)(totality of circumstances standard applies
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`to descriptiveness
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`determination); Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1324
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`(Fed. Cir. 2017)(totality of the circumstances standard applies to likelihood of confusion
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`determination); M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015)(totality
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`of circumstances standard applies to whether applicant had a bona fide intent to use under §1(b));
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`Georgia-Pac. Corp. v. Great Plains Bag Co., 614 F.2d 757, 763 (C.C.P.A. 1980)(totality of
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`
`
`8
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`

`

`circumstances standard applies to knowledge of prior use of mark in laches context); Valu Eng'g,
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`Inc. v. Rexnord Corp., 278 F.3d 1268, 1273 (Fed. Cir. 2002)(totality of circumstances standard
`
`applies to whether design mark is functional).
`
`
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`Under a totality of circumstances inquiry, it is improper to consider each of the factors in
`
`isolation. A cook doesn’t assess whether the soup is sufficiently seasoned by weighing each
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`grain of salt individually. The issue is whether all of the seasonings together yield the desired
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`flavor. So too, with evidence. It is improper to take a divide-and-conquer approach to evidence,
`
`weighing each factor and rejecting it without considering the cumulative effect of all of the
`
`evidence. The Federal Circuit explained this principle in the Merit Systems Protection Board
`
`context in Crawford v. Dep't of the Army, 718 F.3d 1361 (Fed. Cir. 2013):
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`As with any test that considers the totality of the circumstances, certain factors
`cannot be singled out as dispositive without first weighing all of the other
`potentially competing factors. This
`is not
`to say
`that
`in some cases
`an individual factor cannot prove dispositive. Rather, it means that before
`elevating the importance of a single factor in the . . . inquiry, the impact of that
`factor must be considered within the context of all other factors that are relevant
`to the inquiry.
`
`Crawford, 718 F.3d at 1366–67 (Fed. Cir. 2013)(emphasis added).
`
`
`
`As the Crawford Court explained, similar prohibitions against considering individual
`
`factors in isolation apply in all totality of the circumstances tests. See, e.g., United States v.
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`Arvizu, 534 U.S. 266, 274, 122 S. Ct. 744, 751, 151 L. Ed. 2d 740 (2002)(totality of
`
`circumstances analysis precludes evaluation of factors in isolation in reasonable suspicion
`
`context); In re Application of Adan, 437 F.3d 381, 398 (3d Cir. 2006)(totality of circumstances
`
`analysis precludes evaluation of factors in isolation in child abuse context); Dar Dar v.
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`Associated Outdoor Club, Inc., 201 F. App'x 718, 722 (11th Cir. 2006)(totality of circumstances
`
`analysis precludes evaluation of factors in isolation in hostile work environment context); Hayes
`
`
`
`9
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`

`

`v. Cty. of San Diego, 736 F.3d 1223, 1236 (9th Cir. 2013)(totality of circumstances analysis
`
`precludes evaluation of factors in isolation in unreasonable use of force context).
`
`
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`When evaluating factors under a totality of the circumstances analysis, it is improper to
`
`weigh each factor in isolation and not consider the totality of all the factors together. That is
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`precisely what the examiner has done here. The examiner rejects the literary evidence because
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`there are not enough examples. The examiner rejects the advertising evidence because it is all
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`canine related. The examiner rejects Applicant’s specimen because portions of it emphasize the
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`tree bark sense of the term. The examiner rejects the alliteration in the mark because it does not
`
`meet some unspecified threshold. The examiner rejects the rarity of the descriptive sense of BIG
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`BARK by misconstruing or misunderstanding its relevance. The examiner never considers the
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`cumulative effect of all of these different factors.
`
`
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`Any one of the factors on which the Applicant introduced evidence may not be enough to
`
`make BIG BARK unitary – standing alone. But, they don’t have to do the job alone. The
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`question is whether all of the factors are enough to do the job together. The examiner never even
`
`considered that question, much less answered it.
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`VI.
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`The USPTO Has Made No Determination that BIG BARK is Not Unitary
`
`
`
`The examiner contends that the USPTO has determined that BIG BARK is not unitary
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`because BARK was disclaimed in registration no. 4,772,372. This argument was considered and
`
`rejected by the Board in the CORPORATE FUEL case. As the Board explained therein:
`
`With regard to the third-party registrations submitted by applicant and the
`examining attorney to show that the USPTO has alternatively treated the word
`CORPORATE by sometimes requiring a disclaimer of the term and not requiring
`a disclaimer, the most that can be said of this evidence is that it is inconclusive. In
`fact, these registrations highlight why prior decisions in other applications are not
`binding on the Board and underscore the need to evaluate each case on its own
`record.
`
`
`
`
`10
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`

`

`In Re Corp. Fuel Partners, LLC, Serial No. 78705685, 2010 WL 3501479, at *3 (Aug. 27,
`
`2010)(non-precedential), citing, In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
`
`Cir. 2001).
`
`
`
`There is no indication that the Applicant in the ‘372 Registration contested the disclaimer
`
`requirement or that any determination was made regarding the unitary nature of BIG BARK in
`
`that case. All that can be said is that the examiner requested a disclaimer, and the applicant
`
`acceded.
`
`
`
`Moreover, the examiner’s citation of the ‘372 Registration is, at best, misleading. There
`
`are four live applications or pending registrations in the TESS database that utilize the phrase
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`BIG BARK other than Applicant’s application: Reg. No. 4,636,485; Reg. No. 4,958,257; Appl.
`
`No. 87/735,447 (allowed); and the ‘372 Registration. The ‘372 Registration is the only one in
`
`which BARK is disclaimed. Applicant assumes the examiner simply searched for marks in which
`
`BARK was disclaimed rather than searching for all BIG BARK marks. Otherwise, it would be
`
`hard to explain how the examiner selected the one example that corroborated his position while
`
`ignoring the three that undercut it.
`
`VII. Registering BIG BARK without a Disclaimer Will Not Impede the Ability of Third
`Parties’ to Use BARK By Itself
`
`
`
`
`The examiner contends that the Applicant’s refusal to disclaim BARK indicates that
`
`applicant “incorrectly believes that it should be able to prevent others from using BARK in
`
`connection with tree care services for repairing ‘bark.’”
`
`
`
`This evidences still another fundamental misunderstanding on the examiner’s part of
`
`what a unitary mark is. Unitary marks comprise an “inseparable whole” Dena Corp. v. Belvedere
`
`Int'l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991). In refusing to disclaim BARK, Applicant is not
`
`asserting rights in the word BARK alone. Applicant is claiming that the terms of its mark, BIG
`
`
`
`11
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`

`

`and BARK, function together to form a unitary phrase. By asserting that BIG BARK is unitary,
`
`Applicant is saying that BARK is tied to BIG, not that BARK is inherently distinctive on its
`
`own.
`
`
`
`The Board considered the concerns the examiner raises in the CORPORATE FUEL case.
`
`As the Board explained there, the registration of the mark (CORPORATE FUEL) and the
`
`presumptions afforded registrations under Section 7(b) pertain to the mark as a whole rather than
`
`to its components individually. In Re Corp. Fuel Partners, LLC, Serial No. 78705685, 2010 WL
`
`3501479, at *3 (Aug. 27, 2010)(non-precedential).
`
`
`
`The registration of BIG BARK without a disclaimer of BARK will not give Applicant a
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`basis to prevent third parties from using BARK alone in connection with tree care services. All it
`
`will do is allow Applicant to assert that the phrase BIG BARK, as a whole, is inherently
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`distinctive.
`
`VIII. The Examiner Has the Burden of Proof and the Burden of Persuasion
`
`
`
`Where a mark falls on the distinctiveness continuum is a question of fact. In re Dial-A-
`
`Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001). It is well established that the
`
`examiner has the burden of proving that a mark lacks inherent distinctiveness. In re Pacer Tech.,
`
`338 F.3d 1348, 1350 (Fed. Cir. 2003); In re Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed.
`
`Cir. 2007).
`
`
`
`The burden of proof encompasses two concepts: burden of production and burden of
`
`persuasion. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676
`
`F.3d 1063, 1078 (Fed. Cir. 2012). “The burden of persuasion specifies ‘which party loses if the
`
`evidence is balanced,’ while the burden of production specifies ‘which party must come forward
`
`with evidence at various stages.’” Id., at 1078; In re Magnum Oil Tools Int'l, Ltd., 829 F.3d
`
`
`
`12
`
`

`

`1364, 1375 (Fed. Cir. 2016)(addressing burden of proof, burden of production, and burden of
`
`persuasion); Stockton E. Water Dist. v. United States, 583 F.3d 1344, 1360 (Fed. Cir. 2009), on
`
`reh'g in part, 638 F.3d 781 (Fed. Cir. 2011)(distinguishing burden of persuasion from burden of
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`production).
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`In practice, the examiner has the initial burden to make a prima facie showing that a mark
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`is descriptive.
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`In Re Box Sols. Corp., 79 U.S.P.Q.2d 1953
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`(T.T.A.B. 2006).
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`A prima facie showing merely creates a rebuttable presumption of the issue in question. Crash
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`Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir. 2010)(abandonment); Cold
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`War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009)(acquired
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`distinctiveness). When the predicate evidence necessary to trigger the presumption is introduced,
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`the presumption is established. Id. That places the burden on the opposing party to offer evidence
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`to the contrary. Id. This switches the burden of production; it does not change the burden of
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`persuasion.
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`However, presumptions are not evidence. Routen v. West, 142 F.3d 1434, 1440 (Fed. Cir.
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`1998). When the party against whom a prima facie presumption applies introduces evidence
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`sufficient to raise a genuine question as to the issue, the presumption vanishes entirely. A.C.
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`Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1037 (Fed. Cir. 1992)(en
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`banc), abrogated by SCA Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC, 137 S. Ct.
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`954, 197 L. Ed. 2d 292 (2017)3; Texas Dep't of Cmty. Affairs v. Burdine, 450 U.S. 248, 255, 101
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`S. Ct. 1089, 1094, 67 L. Ed. 2d 207 (1981); Fed. R. Evid. 301.
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`3 SCA Hygiene overruled the holding of AC Aukerman regarding the effect of laches on patent infringement claims.
`It did not address or refute Aucker(cid:373)a(cid:374)’s approach to prima facie presumptions and their rebuttal.
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`A presumption does not alter the burden of persuasion. That remains on the party who
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`had it originally. St. Mary's Honor Ctr. v. Hicks, 509 U.S. 502, 507, 113 S. Ct. 2742, 2747, 125
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`L. Ed. 2d 407 (1993)(Title VII presumption “operates like all presumptions”)(emphasis added);
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`Aqua Prod.,
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`Inc. v. Matal, 872 F.3d 1290, 1305
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`(Fed. Cir. 2017)(“if
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`the
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`underlying burden of persuasion rests with the other party, that underlying burden never shifts”);
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`Fed. R. Evid. 301.
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`The burden of persuasion with respect to descriptiveness lies with the examiner. In re
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`Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007)(“The examining attorney has the
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`burden to establish that a mark is merely descriptive”)(emphasis added); In Re Transcorp, Inc.,
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`No. 85537171, 2014 WL 4896400, at *7 (TTAB Sept. 18, 2014)(non-precedential)(“the
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`examining attorney bears the burden of coming forward with evidence to support his refusal, and
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`bears the ultimate burden of persuasion on the issue of descriptiveness”).
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`Here, the examiner has made a prima facie showing that BARK is descriptive. This
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`switched the burden of production to the Applicant to rebut the prima facie showing of the
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`examiner. In re Pacer Tech., 338 F.3d 1348, 1350 (Fed. Cir. 2003). Applicant has done so by
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`submitting evidence that BIG BARK is unitary. Applicant contends that the phrase BIG BARK
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`has a commonly understood meaning that is not descriptive of Applicant’s services and,
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`therefore, BIG BARK is not merely descriptive of Applicant’s services. This is an argument
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`under §2(e) of the Lanham Act, not an argument under §2(f).
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`The difference is important. Under §2(f) the Applicant has the burden of proof
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`(production and persuasion). In re Louisiana Fish Fry Prod., Ltd., 797 F.3d 1332, 1335 (Fed.
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`Cir. 2015). In a rejection under § 2(e), the examiner has the burden of proof. In re Bayer
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`Aktiengesellschaft, supra.
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`Faced with a prima facie showing that BARK is descriptive of Applicant’s services, the
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`Applicant’s burden was to present evidence sufficient to raise a genuine question regarding the
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`presumption arising from the examiner’s prima facie showing. See, A.C. Aukerman, supra. If the
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`Applicant does so, the presumption vanishes. The burden of production and persuasion remains
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`with the examiner because this is a § 2(e) rejection.
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`Thus, the question is not whether the Applicant has presented enough evidence to
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`establish that BIG BARK has a well-known, non-descriptive meaning to the consuming public –
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`though Applicant certainly believes it has. The question is whether the Applicant has presented
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`sufficient evidence to rebut the examiner’s prima facie showing that BARK is descriptive.
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`Here, Applicant has established that BIG BARK has been used for at least 120 years to
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`refer to the loud vocalization of a dog and that it is regularly used in this sense in both literature
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`and advertising today. There is no evidence in the record that the phrase is ever used in the
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`descriptive sense the examiner asserts. This rarity makes it more likely that the common, non-
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`descriptive meaning will occur to consumers who encounter the mark. Applicant has introduced
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`evidence of how it uses the mark in commerce. The form in which the mark is used makes it
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`more likely that the non-descriptive meaning of the phrase will occur to consumers who
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`encounter the mark. Finally, the phrase exhibits alliteration, making it more likely that the phrase
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`will be perceived as a unit by consumers. All of these factors work together to make BIG BARK
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`function as a unitary mark, At the very least, the foregoing “raises a genuine question” as to
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`whether BIG BARK is unitary. Raising a genuine question on the issue is sufficient to overcome
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`the presumption created by the examiner’s prima facie showing. See, A.C. Aukerman, supra.
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`Where doubt exists regarding descriptiveness, it should be resolved in the applicant’s
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`favor. In Re Box Sols. Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006). This is precisely because the
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`burden of proving § 2(e) rejections lies with the examiner. At a minimum, doubt exists here.
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`That doubt should be resolved in Applicant’s favor by advancing the mark for publication.
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`IX. CONCLUSION
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`As illustrated by the foregoing, the “loud canine vocalization” sense of the phrase BIG
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`BARK is in common use. Consumers are likely to recognize this meaning when they encounter
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`Applicant’s mark. This meaning is not descriptive of applicant’s goods and services. Thus, BIG
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`BARK is unitary, and it has at least one meaning, readily apparent to consumers, that is not
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`descriptive. Accordingly, BIG BARK is not merely descriptive, and a disclaimer of BARK
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`would be inappropriate. The Board is respectfully requested to reverse the examiner on this point
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`and to remand the Application for publication.
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`Dated: March 28, 2019
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` Respectfully Submitted,
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`s/R. Bennett Ford, Jr./
`R. Bennett Ford, Jr.
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`LA Bar No.: 24,093
`ROY KIESEL FORD DOODY & THURMON
`9100 Bluebonnet Centre Blvd.
`Suite 100
`Baton Rouge, LA 70809
`(225) 927-9908
`rbf@roykiesel.com
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