WYHA? TTAB Affirms Disclaimer Requirement of “PETITS” in NUTELLA PETITS & Design for Pastry Related Goods

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The Board affirmed a Section 6(a) requirement that Applicant disclaim the word PETITS in its applied-for mark NUTELLA PETITS in the design form shown below. Applicant sought registration of the mark for “Pastry and confectionery; biscuits, cookies; filled wafers,” but Examining Attorney Tracy Whittaker-Brown maintained that PETITS is merely descriptive of Applicant’s goods. The Board agreed. In re Soremartec SA, Serial No. 79204456 (February 20, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Examining Attorney argued that the word PETITS is merely descriptive of the Applicant’s goods “in that it refers to their size because the goods are small.” To support the refusal, she submitted dictionary definitions which define PETIT as “small in size or scope; tiny.” Additionally, Internet search results and articles helped to establish that the term PETITS is often used in connection with pastry and bakery goods.

Applicant conceded that PETIT is recognized to mean “small,” but disputed that the goods sold under the mark at issue are “petit-size” since there is no equivalent “regular-size” version. The Board was unmoved since Applicant provided no evidentiary support for its claim that the goods are “regular” size.

The record is devoid of any information as to what “regular size” means or the extent to which the relevant industry recognizes a standard for regular size versus small or large size for such goods . . . . [C]onsumers will expect, upon encountering Applicant’s mark NUTELLA PETITS, that the term “petits” signifies that the goods are small in comparison to some larger version of themselves, or that they are packaged in small batches or portions. The term “petits” immediately conveys this meaning without any need for additional thought or imagination.

Furthermore, the Board was not swayed by Applicant’s submission of 19 third-party registrations where PETITS was not disclaimed. Most of those marks happened to be unitary phrases so that disclaimer of an individual word would not be required. Here, the mark NUTELLA PETITS would clearly be acknowledged as two separate words, especially given its design aspects.

In conclusion, since the relevant public would understand the word PETITS to describe something “small” about the goods, the Board affirmed the refusal to register. Notwithstanding, so long as Applicant submits a disclaimer to the Board within 30 days, its application "will proceed to registration in due course."

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TTABlog comment: Although the Board said that if a disclaimer is filed, the application will "proceed to registration in due course," the application has to be published for opposition first. Maybe it will reach registration, maybe not.

Text Copyright John L. Welch 2019.