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`This Order is Not a
`Precedent of the TTAB
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`Mailed: October 7, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`In re Healthy Dogma, Inc.
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`Serial No. 87627598
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`Remand
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`Geoffrey D. Aurini of Harness Dickey & Pierce PLC,
`for Healthy Dogma, Inc.
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`J. Ian Dible, Trademark Examining Attorney, Law Office 111,
`Chris Doninger, Managing Attorney.
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`_____
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`Before Wolfson, Lykos, and Heasley,
`Administrative Trademark Judges.
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`By Lykos, Administrative Trademark Judge:
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`Applicant has appealed the Trademark Examining Attorney’s final refusal to
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`register the mark PETMIX for “pet food” in International Class 31 on the Principal
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`Register pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
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`the ground that it is merely descriptive of the identified goods, or alternatively, that
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`Applicant’s mark is merely descriptive but that Applicant has failed to present
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`sufficient evidence to show acquired distinctiveness under Section 2(f) of the
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`

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`Serial No. 87627598
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`Trademark Act, 15 U.S.C. § 1052(f). During prosecution, the Examining Attorney
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`advised Applicant that it could seek registration on the Supplemental Register, but
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`Applicant declined to do so.
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`Applicant timely filed a notice of appeal, and in its main brief requested that,
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`If the Merely Descriptive refusal is upheld, Applicant
`relies on its Section 2(f) claim of Acquired Distinctiveness.
`If the Section 2(f) evidence is deemed insufficient,
`Applicant chooses to amend its application to the
`Supplemental Register which the Examiner indicates is
`available.
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`Applicant’s Brief, p. 1; 8 TTABVUE 2. In his appeal brief, the Examining Attorney
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`provided his consent. Examining Attorney’s Brief, 10 TTABVUE 13 (“Applicant is
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`advised that, though the proposed mark was refused registration on the Principal
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`Register, Applicant may amend the application to seek registration on the
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`Supplemental Register”).1 However, it would be procedurally improper to permit
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`1 An appeal brief is not the best vehicle for proposing an amendment in the alternative to
`the Supplemental Register. As recently explained in In re Ox Paperboard, LLC, 2020
`USPQ2d 10878, 2020 BL 293152 (TTAB 2020):
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`As a best practice, an applicant seeking to obviate a refusal by
`proposing an amendment to an application should propose the
`amendment as early as possible during prosecution. If that
`does not occur, then the Board strongly prefers that an
`applicant make such an amendment
`in a request for
`reconsideration filed soon after the issuance of a final Office
`action but prior to the applicant’s deadline for filing a notice of
`appeal. Doing so provides an opportunity for the issue to be
`addressed before the appeal stage. If an applicant has missed
`that opportunity, then the next preferred alternative is to file a
`separately captioned request for remand and suspension of
`proceedings with the Board, ideally prior to the deadline for
`filing an appeal brief, so that the Board can make a prompt
`ruling on the request and the examining attorney does not
`have to draft a potentially unnecessary appeal brief. If the
`Board decides to remand the application to the examining
`attorney, it will suspend the appeal for consideration by the
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`- 2 -
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`

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`Serial No. 87627598
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`Applicant to amend the application to the Supplemental Register after the Board
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`issues a final decision affirming the Examining Attorney’s refusal to register the
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`mark as being merely descriptive without acquired distinctiveness. See In re
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`Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (once final decision
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`rendered, request to amend to Supplemental Register not possible). Once the
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`application has been considered and decided by the Board on appeal, Applicant’s
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`course of action would be limited to a request for reconsideration of the Board’s
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`decision, and/or the filing of an appeal therefrom, either by way of an appeal to the
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`U.S. Court of Appeals for the Federal Circuit, or by way of a civil action seeking
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`review of the Board’s decision. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL
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`OF PROCEDURE (“TBMP”) § 1219 (2020). The Examining Attorney lacks jurisdiction
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`to take any further action once a final decision has been rendered, and the Board
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`has no authority to remand the case to the Examining Attorney for further
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`examination. A case that has been considered and decided on appeal by the Board
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`may be reopened only as provided in Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).
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`See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984).2
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`examining attorney of an amendment which might obviate the
`refusal (and thus the appeal). Embedded amendments in an
`appeal brief are not prohibited but they are discouraged
`because they may be inadvertently overlooked by the Board
`before the Examining Attorney files his or her brief; if noticed,
`they may needlessly delay the proceeding.
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`2 According to the Rule, “An application which has been considered and decided on appeal
`will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946
`or upon order of the Director, but a petition to the Director to reopen an application will be
`considered only upon a showing of sufficient cause for consideration of any matter not
`already adjudicated.”
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`- 3 -
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`Serial No. 87627598
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`In order to effectuate the mutual intent of Applicant and the Examining
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`Attorney, the Board hereby suspends action on this appeal, and the application is
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`remanded to the Examining Attorney for the sole purpose of considering
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`the amendment in the alternative to the Supplemental Register. See, e.g., In
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`re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB 2016) (prior to issuing a
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`final decision, the Board remanded the application for consideration of the
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`amendment in the alternative to seek registration on the Supplemental Register).
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`Examination must be completed within thirty (30) days from the date of remand.
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`In the event the amendment in the alternative to the Supplemental Register is
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`accepted, the Examining Attorney shall return the application to the Board for
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`consideration of the issues on appeal. Upon resumption of the appeal, the Board will
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`issue a final decision.
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`- 4 -
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