Wednesday, February 27, 2008

TTAB Affirms Genericness Refusal of "PEPPERMINT BARK" for Candy

I guess one could say that Williams-Sonoma's bark was worse that its bite. Or something like that. The Board affirmed the PTO's refusal to register the term PEPPERMINT BARK for candy on the ground of genericness. Applicant W-S had disclaimed the word "Peppermint" and had amended its application to seek registration on the Supplemental Register, but all to no avail. In re Williams-Sonoma, Inc., Serial No. 76542867 (February 14, 2008) [not precedential].

Examining Attorney Russ Herman argued that "[P]eppermint bark is a common candy product made from a few standard ingredients that can incorporate a number of slight variations.... [P]eppermint bark is basically a layer of white chocolate (sometimes on top of a layer of milk chocolate) with a sprinkling of crushed peppermint candy." He relied on dictionary definitions of "bark" and "peppermint," several recipes for making "peppermint bark" candy, website evidence discussing "peppermint bark" as a popular candy, and 20 full-text articles referring to peppermint bark candy.

Williams-Sonoma submitted two registrations that it owns, one for the mark PEPPERMINT BARK (Stylized) for candy ("peppermint bark" disclaimed), and one for PEPPERMINT BARK in a design form (shown below) for candy ("peppermint" disclaimed). Applicant asserted that it has been selling its PEPPERMINT BARK candy since 1999, has sold millions of dollars worth of product, and has extensively promoted these products in its holiday catalogs, on its website, and in its stores.

The Board applied its Marvin Ginn genericness test, which requires a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus?

With little explanation, the Board found that the genus of applicant's goods is "not simply candy" but also "a chocolate candy in thin sheets."

As to the public's understanding of the term, the Board noted that Applicant's goods are made with peppermint, and that the term "bark" is a generic term for "candy made in flat sheets and usually consisting of chocolate and nuts." It found "widespread use of the term PEPPERMINT BARK bark to name similar chocolate/peppermint products from other producers, and from individuals or groups with their own recipes for 'peppermint bark.'" It also found "numerous recipes and references to recipes for 'Peppermint Bark.'" Therefore the Board ruled that the PTO had presented the requisite "clear evidence" to make out a prima facie case of genericness.

Turning to Applicant's evidence, its promotional materials and media references were "not very effective" and "seem to reinforce the generic use of the term." The millions of dollars of sales does not establish that the term is not generic, nor does Applicant's use of the term since 1999. And the fact that alternative names may exist for the goods (e.g., Peppermint Brittle) was not helpful since "there is nothing unusual about a product or service having more than one generic name."

As to Applicant's registrations, they provide no support here: The first includes a disclaimer of PEPPERMINT BARK, while the second concerns a design or logo mark comprising the term PEPPERMINT BARK flanked "two dogs with their mouths slightly open." This additional feature creates a different commercial impression than that of the standard character mark.

In sum, Applicant failed to rebut the PTO's prima facie case, and so the refusal to register was affirmed.

TTABlog query: The only question this rather boring case brought to my mind was this: What 1967 hit song by the Strawberry Alarm Clock included the word "peppermint"?

Text Copyright John L. Welch 2008.


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