Williams-Sonoma, Inc.

Trademark Trial and Appeal Board

Feb 14, 2008

No. 76542867 (T.T.A.B. Feb. 14, 2008)

14 February 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Williams-Sonoma, Inc.
________

Serial No. 76542867
_______

Anthony J. Malutta of Townsend and Townsend and Crew LLP
for Williams-Sonoma, Inc.

Russ Herman, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Holtzman, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 8, 2003, Williams-Sonoma, Inc.
(applicant) applied to register the term PEPPERMINT BARK
(in standard character form) on the Principal Register for
“candy” in Class 30. The application was based on
applicant’s claim of dates of first use anywhere and in
commerce of October 19, 1999. Serial No. 76542867.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 76542867
2
After several Office actions, applicant amended the
application to disclaim the word “Peppermint”1 and to
request registration on the Supplemental Register.2
The examining attorney has now refused to register
applicant’s mark (Brief at 2) on the Supplemental Register
on the ground that the “proposed mark is generic when used
in connection with applicant’s goods.”3 15 U.S.C. § 1091.
The examining attorney argues that: “Peppermint bark
is a common candy product made from a few standard
ingredients that can incorporate a number of slight
variations… peppermint bark is basically a layer of white
chocolate (sometimes on top of a layer of milk chocolate)
with a sprinkling of crushed peppermint candy.” Brief at
6. On the other hand, applicant maintains that the
examining attorney has not met his burden of showing that
the mark is generic and that “‘PEPPERMINT BARK’ creates a

1 See Response received September 23, 2004 at 2.

2 See Amendment to Supplemental Register received October 24,
2005.

3 While applicant argues that its “evidence of acquired
distinctiveness mitigates against a finding that the mark is
generic,” applicant has made it clear that it “is not seeking
registration under Section 2(f).” Reply Brief at 1. We, of
course, can consider this evidence on the issue of genericness.
In re International Business Machines Corp., 81 USPQ2d 1677, 1684
n. 11 (TTAB 2006) (“However, because in determining whether a
term is generic we must look to all the evidence of record,
including evidence of acquired distinctiveness, we have
considered the evidence for this purpose”).
Ser. No. 76542867
3
different commercial impression than the meaning suggested
by the Examining Attorney. Even considered separately,
neither “PEPPERMINT” nor “BARK” can be seen as merely
descriptive – let alone generic – of Applicant’s goods.”
Brief at 9.
Evidence
We begin by discussing the evidence that supports the
examining attorney’s and applicant’s arguments. We will
also address any potential problems with the evidence.
With his appeal brief, the examining attorney has
attached a definition of the term “Bark” as “candy, usually
of chocolate with large pieces of nuts, made in flat
sheets.” Dictionary.com Unabridged (v 1.1) based on the
Random House Unabridged Dictionary (2006). More
importantly, we add that an earlier Random House Dictionary
contains the same definition of “Bark” – “candy, usually of
chocolate with large pieces of nuts, made in flat sheets.”
The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). We take judicial notice of,
and rely on, this definition. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). Applicant included a definition of “peppermint” as
“a pungent and aromatic mint (Mentha piperita) with dark
Ser. No. 76542867
4
green lanceolate leaves and whorls of small pink flowers in
spikes” and “candy flavored with peppermint.” Amendment
received May 6, 2005, attachment.
In an Office action dated June 6, 2005, the examining
attorney included several recipes for candy identified as
“peppermint bark:”
National Confectioners Association
Peppermint Bark
You will need:
- one pound vanilla-flavor candy coating or white
chocolate cut up (or one bag white baking chips)
- ¾ cup crushed peppermints or mint-flavored candy
canes
www.candyusa.org
To make a batch of peppermint bark you need:
9 Peppermint Canes
1 lb. of milk or dark chocolate
1 lb. of white chocolate
Approx. 1 Tbs. butter or margarine
Waxed paper
http://kathyniemer.tripod.com
The examining attorney also attached evidence from a
website that discusses “Peppermint Bark.”
www.giftsforprofessionals.com (“This yummy treat is a
favorite for both young and old. No matter the season (or
even the reason) this peppermint bark is a popular favorite
for the candy lover who loves sweets and loves the
decorative touch of peppermint”).
With the Office actions dated November 4, 2004,
November 29, 2005, and June 26, 2006, the examining
Ser. No. 76542867
5
attorney attached numerous pages that consist of truncated
search results from the NEXIS database (ellipses in
original):
… recipes for Peppermint Bark Candy and Easy Fudge
have only …
… League of McAllen Peppermint Bark Candy 1 pound
white …
San Antonio Express-News, May 21, 2006

… at the view of the “peppermint bark candy” coming
out of the refrigerator…
Herald-Sun (Durham, NC), December 23, 2005

… Employees make peppermint bark candy, one of King
Leo’s …
San Diego Union-Tribune, January 22, 2004

…1 pound bark candy 1 pound salted…
The Post-Standard (Syracuse, NY), December 2, 1998

… a recipe for bark candy offer delicious
possibilities … Bark candy is what Judy Wilkerson of
Edgemont … rosemary.” Froot Loop Bark Candy Makes
about 75…
Baltimore Sun, April 15, 1998

… in white almond bark candy. I’ve still got the …
Columbus Dispatch (Ohio), February 4, 1998

Because these results are extremely brief, we cannot
give them much weight. In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Bayer
asserts that the list of GOOGLE search result summaries is
of lesser probative value than evidence that provides the
context within which a term is used. We agree. Search
engine results—which provide little context to discern how
a term is actually used on the webpage that can be accessed
Ser. No. 76542867
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through the search result link may be insufficient to
determine the nature of the use of a term or the relevance
of the search results to registration considerations”).
See also In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB
2002)("The examining attorney's print-out of the results of
an Internet search by the Yahoo search engine are of little
probative value, largely because insufficient text is
available to determine the nature of the information and,
thus, its relevance"). While we cannot give these
printouts much weight, they are at least limited evidence
that “Bark” was used in association with candy prior to and
after 1999.
However, with his appeal brief, the examining attorney
attached approximately twenty full-text articles that
appear to be some of the abbreviated articles provided with
the November 29, 2005, Office action. The information at
the beginning of the printout indicates that the stories
were printed ten days before the examining attorney’s brief
was filed (June 4, 2007) and, therefore, they could not
have been previously submitted (at least in this form).
Furthermore, the NEXIS story numbers do not correspond to
the story numbers in the 2005 Office action, e.g., 2007
Story No. 125 appears to correspond to 2005 Story No. 12).
Normally, we do not consider new evidence on appeal. 37
Ser. No. 76542867
7
CFR § 2.142(d). See also In re First Draft Inc., 76 USPQ2d
1183, 1192 (TTAB 2005) (“Submission of the TARR printout
with its appeal brief, however, is an untimely submission
of this evidence”). However, in this case, applicant has
not objected to these stories and has, in fact, discussed
the evidence in its reply brief (p. 3 - Story No. 154).
TBMP 1207.03 (2d ed. 2004); In re Urbano, 51 USPQ2d 1776,
1778 n.4 (TTAB 1999) (“While the Examining Attorney
submitted this evidence with his brief, we have considered
this evidence as of record as applicant did not object and
considered this evidence on its merits in its reply
brief”). Therefore, we will consider this evidence and we
set out some of the relevant parts of a few stories below:4
[W]e’re asking readers to share their favorite
holiday-candy recipe. The possibilities are many,
from sugar plums to divinity, from candied nuts to
candy canes, from ribbon candy to peppermint bark.
Dayton Daily News (Ohio), October 19, 2005

She made the peppermint bark using just four
ingredients: white chocolate, peppermint candy, red
food coloring and peppermint flavoring.
Sunday Oregonian, March 20, 2005

4 While the article is cumulative, applicant points out that at
least one of the articles is from a foreign publication (Canada).
The fact that an article is from a foreign source does not mean
that it has no relevance. Bayer, 82 USPQ2d at 1835 (“Information
originating on foreign websites or in foreign news publications
that are accessible to the United States public may be relevant
to discern United States consumer impression of a proposed
mark”).

Ser. No. 76542867
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Ivy’s business depends on hikers, tourists and
commuters who stop for coffee or her honeycomb,
peppermint bark or French truffles.
Los Angeles Times, January 24, 2005

It’s been three weeks since your New Year’s
resolutions should have kicked in, and you’re still
working your way thorough that box of peppermint bark
in the freezer.
Phoenix New Times, January 20, 2005

A month ago, we weren’t even sure we knew what
peppermint bark was; now, you can’t turn around
without tripping over the choco-minty treat. This
bark with a bite has turned up at, among others, Swiss
Colony, Restoration Hardware, Crate & Barrel, Godiva,
Trader Joe’s, Linens ‘n Things and Williams-Sonoma.
There are slight variations on the theme, but it’s
basically a layer of white chocolate (sometimes on top
of milk chocolate) and a sprinkling of crushed
peppermint candy.
Boston Herald, December 22, 2004.

The examining attorney also points to applicant’s use
of the term “Peppermint Bark” in its own catalogs. Two of
applicant’s uses are set out below:

Ser. No. 76542867
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The first catalog excerpt indicates that: “This year
we’re offering creamy mint fondant covered with bittersweet
chocolate; peppermint snaps, a spirited variation of the
traditional peppermint stick, and peppermint bark – layers
of dark and white chocolate topped with peppermint candy
bits.” The second excerpt refers to: “A year-end
tradition for many of our customers, peppermint bark evokes
the spirit of the holidays… Then the bark is topped with a
snowfall of peppermint candy.”
Applicant also owns two registrations. The first is
for registration No. 2785972, which issued on November 25,
2003, for the following mark:

for “candy.” The registration contains a statement that
“No claim is made to the exclusive right to use “Peppermint
Bark” apart from the mark as shown.
The second registration (No. 2758725 issued September
2, 2003) is for the words PEPPERMINT BARK flanked by two
dogs. It is also for candy and the registration disclaims
the word “Peppermint.”
Ser. No. 76542867
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Applicant has submitted the declaration of Christine
Amatruda, its Associate General Counsel. In that
declaration, Ms. Amatruda makes the following points:
1. Applicant has been selling its PEPPERMINT BARK
candy since October 1999.

2. It has sold millions of dollars of the product.

3. It has extensively promoted the PEPPERMINT BARK
products in its holiday catalogs and on its website
and in its stores.

In addition, Ms. Amatruda attached excerpts from two
publications that mentioned applicant’s product. The first
is a Newsweek magazine in which a photo of applicant’s
product appeared with other holiday products. The
description included the following sentence: “Holiday
parties are starting, go gather some hostess gifts. How
about peppermint bark ($22.50; williams-sonoma.com).” The
second is from Money magazine, which again features a
picture of a box of applicant’s product, with the following
description:
Peppermint Bark
The perfect seasonal candy – a layer of dark chocolate
is topped with a layer of white chocolate…

Ser. No. 76542867
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Applicant also points to several recipes that do not
use the term “Peppermint Bark” to describe
chocolate/peppermint candy, e.g., Easy White Chocolate Mint
Candy, White Chocolate Mint Christmas Candy, Peppermint
Chocolate Squares, White Christmas Candy, and Peppermint
Brittle.
In addition, applicant submitted several registrations
that the Office issued for different marks, which applicant
argues are relevant to this application. See, e.g., No.
2946172 (PEPPERMINT BURSTS, “peppermint” disclaimed -
candy); No. 2751398 (PEPPERMINT CHEWZ and design,
“peppermint chewz” disclaimed) – candy); No. 2945581
(PEPPERMINT CREMES and design, “peppermint crèmes”
disclaimed - candy); No. 2804152 (PEPPERMINT PASSION,
“peppermint” disclaimed – ice cream); No. 1828450
(PEPPERMINT PONIES, “peppermint” disclaimed – candy); No.
2743752 (PEPPERMINT SNAPS, “peppermint” disclaimed –
candy); No. 2587962 (BIRCH BARK, 2(f) – candy); No. 3121157
(CHIPPERS THE BARK WITH A BITE - candy); No. 2618337
(REINDEER BARK – candy); No. 3109102 (VANILLA ALMOND BARK,
2(f) – frozen confections); and No. 3039031 (“You Can’t
Bite A Better Bark” – candy).
Finally, applicant argues that it “has successfully
enforced its PEPPERMINT BARK mark. In particular, a
Ser. No. 76542867
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district court has already considered whether Applicant’s
PEPPERMINT BARK mark is generic and denied a motion that
the term is generic for Applicant’s goods.” Brief at 8.
In that case, Williams-Sonoma, Inc. v. West Coast
Confections, No. C-02-4176 EDL (N.D. Cal. January 7, 2004),
the Court denied defendant’s motion to dismiss on the
ground that plaintiff/applicant had failed to state a claim
of trademark infringement because the term PEPPERMINT BARK
was generic. The Court (p.3) denied the motion and stated:
Defendant raises a serious issue as to whether
“Peppermint Bark” is generic, and has offered some
support for that view in the documents that it
requested to be judicially noticed. Nonetheless, the
question is not one that should be decided at the
pleading stage. As Defendant conceded at the hearing,
it could not locate a single case in which the issue
of whether a mark was generic was decided on the
pleadings. Accordingly, Defendant’s Motion to Dismiss
(Docket number 8) is denied.

Such a ruling is hardly evidence, that applicant has
“successfully enforced” its mark.
Discussion
The Court of Appeals for the Federal Circuit has held
that: “The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
Ser. No. 76542867
13
Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986).
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?

Id.

We begin by looking to what the genus of applicant’s
goods is. The examining attorney has indicated that
“applicant defines its class or genus of goods as ‘Candy.’
This description is sufficiently definite to serve as the
identification of applicant’s goods for purposes of
analysis under the Marvin Ginn test.” Brief at 4. While
applicant’s goods are included within the broad category of
“candy,” applicant’s goods appear to be a specific type of
candy, i.e., a chocolate candy in thin sheets. Indeed, the
evidence shows that the genus of the goods is not simply
candy, so we will consider that applicant’s goods fall into
more than just this category and they include the category
of chocolate covered candy in thin sheets. See In re
Central Sprinkler Co., 49 USPQ2d 1194 (Comm'r Pat. 1998)
(“The broad general category of goods involved here is
sprinklers for fire protection. However, a product may be
in more than one category, and here applicant's goods also
Ser. No. 76542867
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fall within the narrower category of sprinklers for fire
protection of attics. We find that the term “attic” would
be understood by the relevant public as referring to that
category of goods”). See also In re A La Vieille Russie
Inc., 60 USPQ2d 1895, 1897 (TTAB 2001):
In its application, applicant has identified its
services as “dealership services in the field of fine
art, antiques, furniture and jewelry.” Based on the
evidence of record, however, we find that this
recitation of services is insufficiently definite to
serve as the name of the genus of applicant's
services, for purposes of our genericness analysis in
this case. The evidence shows that “Russian art” is a
distinct genre or type of art for which there is a
defined commercial market, and that applicant, and
others, are known and referred to generically as
dealers in Russian art. Therefore, we find that the
genus of services involved in this case is “art
dealership services in the field of Russian art,”
rather than merely “art dealership services” or, as
applicant has argued, merely “dealership services.”

The second question we must address is whether
applicant’s term is understood by the relevant public to
refer to that genus. Marvin Ginn, 228 USPQ at 530.
“Evidence of the public's understanding of the term may be
obtained from any competent source, such as purchaser
testimony, consumer surveys, listings in dictionaries,
trade journals, newspapers, and other publications.” In re
Merrill Lynch, Fenner and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). “The critical issue in
genericness cases is whether members of the relevant public
Ser. No. 76542867
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primarily use or understand the term sought to be protected
to refer to the genus of goods or services in question.”
Marvin Ginn, 228 USPQ at 530.
Regarding the individual terms, the catalogs,
including the examples we have mentioned earlier, clearly
show that applicant’s goods are made with peppermint
(“topped with peppermint candy bits” (Holiday 2001 catalog)
and “topped with a snowfall of peppermint candy” (Holiday
2002 catalog)). The other term “bark” is a term that is
perhaps not as ubiquitous in the field of candy. However,
the record shows that it is a term that has long been used
to refer to a specific type of candy. The Random House
Dictionary (1987) excerpt defines “bark” as - “candy,
usually of chocolate with large pieces of nuts, made in
flat sheets.” The evidence also shows that applicant in
its catalogs uses the term in this manner (“the bark is
packed in a gift tin” (Christmas 1999 catalog), “the bark
is topped with a snowfall of peppermint candy bits”
(Holiday 2002 catalog), “[a]fter the bark hardens”
(Christmas 1999 catalog), and “[t]o create our signature
bark” (Christmas 1999 catalog)). We conclude that the term
“bark” is a generic term for candy made in flat sheets and
usually consisting of chocolate and nuts.
Ser. No. 76542867
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The next question is whether the combined term is
similarly generic. Here, applicant’s mark consists of the
term PEPPERMINT BARK and applicant’s goods are candy in
flat sheets made of chocolate where chunks of peppermint
are substituted for the more traditional nuts. Applicant’s
literature explains that its peppermint bark is a variation
of traditional bark in which peppermint bits are
substituted for nuts. See Holiday 2001 catalog (“We’ve put
a new twist on chocolate bark”) and Christmas 1999 catalog:
This delectable holiday treat is distinguished by
crunchy morsels of King Leo Peppermint stick candy
instead of the usual nuts… Created by Charlotte’s
Confections in an old candy factory near San
Francisco, the bark is packed in a gift tin.

Furthermore, there is widespread use of the term
PEPPERMINT BARK to name similar chocolate/peppermint
products from other producers and from individuals or
groups with their own recipes for “Peppermint Bark.” We
have already pointed to a Boston Herald article that refers
to the recent popularity of “Peppermint Bark” and the fact
that it is available at numerous establishments (Swiss
Colony, Restoration Hardware, Crate & Barrel, Godiva,
Trader Joe’s, and Linens ‘n Things). At least one candy
producer makes “Peppermint Bark.” See Confectioner, August
2005 (“Ghirardelli Peppermint Bark Limited Edition”).
Ser. No. 76542867
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There are also numerous recipes and references to
recipes for “Peppermint Bark”: Chattanooga Times Free
Press, December 29, 2004 (“Microwave Peppermint Bark”),
Star Press (Muncie, Indiana) (winning recipe online:
“Candies: Katie Frederick – Double Chocolate Peppermint
Bark”), Boston Herald, December 22, 2994 (“PEPPERMINT BARK
– 1 package (12 oz. white chocolate morsels, 24 hard
peppermint candies”), and Salt Lake Tribune, December 22,
2004 (“Holiday Peppermint Bark – 2 cups white chocolate
morsels, ¾ cup crushed mint-flavored candy canes,
divided”). As we noted previously, the National
Confectioners Association website (www.candyusa.org) as
well as the Kathy Neimer website
(http://kathyniemer.tripod.com) have “Peppermint Bark”
recipes.
Under Federal Circuit precedent, the examining
attorney has the burden of showing by clear evidence that a
term is generic. Merrill Lynch, 4 USPQ2d at 1144. See
also In re Lens.com Inc., 83 USPQ2d 1444, 1446 (TTAB 2007).
Under this standard, we find that the evidence shows that
the examining attorney made out a prima facie case that the
relevant public would understand that the term PEPPERMINT
BARK is a generic term for a type of chocolate/peppermint
candy.
Ser. No. 76542867
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We now turn to see whether applicant has rebutted the
examining attorney’s prima facie case of genericness.
Applicant has submitted a declaration that it has sold its
product for a number of years, that it has millions of
dollars in sales, and that it has extensively promoted its
product. When we view applicant’s promotion of its product
and even in the two magazine excerpts, it is not very
effective evidence to support applicant’s argument. Most
of the entries seem to reinforce the generic use of the
term that is similar to the uses in the NEXIS articles
showing how others use the same term. Applicant argues
that “[a]lthough the catalog references ‘peppermint’ in a
generic fashion…, this is just one component of the mark
and does not render the entire mark generic.” Reply Brief
at 5. However, as we have pointed out, the catalogs use
“peppermint,” “bark,” and “peppermint bark” generically to
refer to a version of bark candy in which peppermint bits
are substituted for nuts. See In re Candy Bouquet
International Inc., 73 USPQ2d 1883, 1887 (TTAB 2004)
(“[E]ven in some of the articles which refer to one of
applicant's franchisees, the term ‘candy bouquet’ (all
small letters, no capitalization) is also used generically
to refer to a gift package of candy”).
Ser. No. 76542867
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Also, applicant maintains that the Newsweek and Money
magazine evidence show that the “purchasing public
identifies Applicant as the source of PEPPERMINT BARK.”
Reply Brief at 2. The articles themselves are not as clear
as applicant argues and in some ways support the examining
attorney’s position. The Newsweek magazine article
actually seems to use the term generically (“How about
peppermint bark”). The Money magazine merely has the term
“Peppermint Bark” used at best equivocally as the lead line
of a short paragraph.
The fact that applicant has sold millions of dollars
of its product does not establish that its term is not
generic. “[M]ere advertising or other evidence of supposed
secondary meaning cannot convert something unregistrable by
reason of its being the common descriptive name or generic
name for the goods-the antithesis of a trademark-into a
registrable mark.” Roux Laboratories, Inc. v. Clairol
Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).
Particularly in this case, the evidence of use and sales
does not even clearly indicate that applicant’s term would
be recognized as a trademark.
Applicant argues that there are other alternative
names for its goods such as Easy White Chocolate Mint
Candy, White Chocolate Mint Christmas Candy, Peppermint
Ser. No. 76542867
20
Chocolate Squares, White Christmas Candy, and Peppermint
Brittle. However, there is nothing unusual about a product
or a service having more than one generic name. Roselux
Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ
627, 632 (CCPA 1962) (“Consider, however, that the product
commonly known as tooth paste is also commonly known as
dentifrice and dental cream. A gravestone is also commonly
known as a headstone, a tombstone and a monument”). See
also In re Recorded Books Inc., 42 USPQ2d 1275, 1281-82
(TTAB 1997) (footnote omitted):
In finding the designation “recorded books” to be
generic for a category of products (namely,
prerecorded audio cassette tapes featuring books), we
concede that this designation is not the only generic
term for the category. Some of the excerpts from
printed publications show generic uses of “audio
books”, “talking books”, “books on cassette tape”,
“book cassettes”, “cassette books”, “taped books”,
“cassettes”, “spoken word recordings” and similar
terms to name the same type of product. Indeed, a
product may have more than one generic name. In re
National Shooting Sports Foundation Inc., 219 USPQ
1018, 1020 (TTAB 1983), citing In re Sun Oil Company,
426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (J. Rich,
concurring). As Judge Rich instructed in his
concurring opinion, “[a]ll generic names for a product
belong in the public domain.” Id.

In addition, applicant’s allegation of its use since
1999 does not convert a generic term into a non-generic
term especially here where there is evidence that others
make “Peppermint Bark” candy or use the term to refer to
“Peppermint Bark” from other sources. In re Helena
Ser. No. 76542867
21
Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA
1969). See also In re Active Ankle Systems Inc., 83 USPQ2d
1532, 1538 (TTAB 2007) (“Even if applicant was the first
and/or sole user of a generic term or phrase, as it claims,
that does not entitle applicant to register such a term or
phrase as a mark”).
Another point that applicant makes is that there are
other registrations that it argues are relevant to this
case. Two of them are owned by applicant. The first
registration, which is most supportive of applicant’s
argument, involves the words PEPPERMINT BARK flanked by a
dog on either side. In that registration, applicant has
disclaimed only the word “Peppermint.” We note that the
design feature includes two dogs with their mouths slightly
open. This additional design feature creates an image of a
dog barking that is different from the commercial
impression of the mark in applicant’s current application.
Indeed, shortly after this registration issued, applicant’s
second registration, without the dog design, issued and
that registration included a statement that: “No claim is
made to the exclusive right to use ‘Peppermint Bark’ apart
from the mark as shown.” Candy Bouquet, 73 USPQ2d at 1889
(“The presumption of validity of a registered mark,
including the presumption that the mark is distinctive,
Ser. No. 76542867
22
does not extend to individual components of the registered
mark, let alone disclaimed components of the mark”).
Therefore, applicant’s registrations that involve a mark
with a different commercial impression and a mark with all
the wording disclaimed do not support applicant’s argument
that its current mark is not generic.
Regarding the other registrations that applicant has
made of record, they do not compel a conclusion that
applicant’s mark is not generic. Third-party registrations
involving different marks are hardly significant evidence
that applicant’s mark is not generic. In re Sunmarks Inc.,
32 USPQ2d 1470, 1472 (TTAB 1994) (“The cases are legion
holding that each application for registration of a mark
for particular goods or services must be separately
evaluated …. Section 20 of the Trademark Act…gives the
Board the authority and duty to decide an appeal from an
adverse final decision of the Examining Attorney. This
duty may not be delegated by adoption of conclusions
reached by Examining Attorneys on different records”). See
also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett
Designs’ application, the PTO's allowance of such prior
registrations does not bind the Board or this court”).
Ser. No. 76542867
23
We do briefly mention that several of the cited marks
involve slogans or other unitary terms, e.g., No. 2587962
(BIRCH BARK); No. 3121157 (CHIPPERS THE BARK WITH A BITE)
and No. 3039031 (“You Can’t Bite A Better Bark”), which
examining attorneys are instructed to consider as unitary.
TMEP 1213.05(b) (5th ed. rev. September 2007) (“A
registrable slogan is considered unitary and should not be
broken up for purposes of requiring a disclaimer”). It is
not clear why some of the registrations were submitted by
applicant inasmuch as all the wording in the marks was
disclaimed (No. 2751398, PEPPERMINT CHEWZ, and No. 2945581,
PEPPERMINT CREMES). Other registrations involve marks with
words that are so different that the only feature they have
in common with the current application is the fact that
they include the word “Peppermint.” Still others are for
goods that are not candy (frozen confections and ice
cream). Therefore, even if we considered these
registrations, they provide little, if any, support for the
nongenericness of applicant’s mark.
When we consider applicant’s evidence, we find that it
has not rebutted the examining attorney’s prima facie case
of genericness. The record shows that the term “Peppermint
Bark” is used to refer to a particular type of candy. It
is the generic name for a chocolate candy that is in thin
Ser. No. 76542867
24
sheets and topped with peppermint bits. Therefore,
applicant’s mark is not registrable on the Supplemental
Register.
Decision: The refusal to register is affirmed.