The USPTO refused registration of the mark CAT & CO., in both standard character and design form (shown below), finding the phrase merely descriptive of cat litter, cat beds, cat toys, and cat food [CAT disclaimed]. Applicant appealed, arguing that ” & CO.” is arbitrary, not descriptive, since applicant “is not an organization for or about cats.” How do you think this came out? In re Sears Brands, LLC, Serial Nos. 86406352, 86406354, 86406361, and 86406370 (August 30, 2016) [not precedential].
Since applicant disclaimed “CATS” in all four applications, the Board’s analysis focused on the term “& CO.” The Board noted that business entity designations like “Co.,” “Corp.,” and “Inc.” have no source identifying significance. Applicant, however, pointed to TMEP Section 1203.03(d), which states that “a disclaimer should not be required when the entity designation is used in an arbitrary manner and thus has trademark significance.” It maintained that the use of “.CO” in its mark is arbitrary, since applicant is not an organization for or about cats, and there is no such entity as “CAT & CO.” affiliated with applicant.
The Board agreed with applicant that “Co.” in applicant’s mark “serves not merely as an entity designation, but rather is in arbitrary use in association with the goods identified in the applications.”
As Applicant contends: “Here, the Applicant’s CAT & CO. connotes a faux company name suggesting the goods are produced by a firm where the principal is a cat, which on its face is fancifully absurd.”
The Board therefore found that “& CO.” carries trademark significance as a component of Applicant’s marks and is not merely descriptive. And so the Board reversed the four refusals.