Friday, August 24, 2012

TTAB Finds BAGEL THINS Merely Descriptive of Baked Goods, But Not Generic

The Board affirmed a Section 2(e)(1) refusal to register the mark BAGEL THINS, finding it to be merely descriptive of "bakery products, not including cookies" [BAGEL disclaimed]. The Board reversed the PTO's genericness refusal in view of the mixed evidentiary record, but it found Applicant Bimbo's proof of acquired distinctiveness insufficient in light of the highly descriptive nature of the mark. The net result: Supplemental Registration. In re Grupo Bimbo, S.A.B. de C.V., Serial No. 77798364 (August 10, 2012) [not precedential].

Mere Descriptiveness: Examining Attorney Tasneem Hussein relied on definitions of "bagel" and "thin," on third-party uses of the term "bagel thins" for slices of bagels, and on Bimbo's own website, which uses "bagel thins" as a category of bagel products, not unlike "mini bagels" or "traditional bagels."

Bimbo pointed to decades of PTO practice for similar marks - registrations for WHEAT THINS, VEGETABLE THINS, GOURMET THINS, GARDEN CHICKEN THINS, STONED WHEAT THINS, ETC. THINS - and urging that the Office has long considered the noun "thins" when combined as the final word in a composite mark for shacks or other treats, to be distinctive enough "to carry a mark when combined with earlier generic or highly-descriptive matter." Recognizing that the PTO may take a different tack with cookies, Bimbo excluded cookies from its identification of goods.

Bimbo also pointed to its own applications, approved for publication, for SANDWICH-THINS, GRILLIN' THINS, COUNTRY THINS, POCKET THINS, HOT DOG THINS, MUFFIN THINS, and PARTY THINS.

Based upon the PTO's evidence, the Board had no doubt that the combination BAGEL THINS is merely descriptive.

Genericness: As to genericness, however, the record evidence was mixed. Although the Board had "concerns" about the genericness of BAGEL THINS, "the record controls the determination, not our subjective opinions." The noun "thins" is not found in any dictionaries of record, and the PTO simply failed to provide the clear evidence required to support a genericness refusal. This conclusion was reinforced by the PTO's treatment of "Thins" in examining composite marks for crackers, snacks, and other bakery products.

Acquired Distinctiveness: Bimbo claimed extensive use of the BAGEL THINS mark since 2010, spending more than $5 million in promoting the goods in 2010, and generating sales of some $61 million. In a recent 12 -month period the brand's website page received 93,000 discrete hits. [How many indiscrete? - ed.]. An advertising campaign on Facebook in 2011 generated 11 million hits.

Advertising has appeared in prominent publications and on prominent websites. Bimbo places thousands of in-store displays, distributes coupons, and holds in-store sampling events. It sponsored a marathon and sent products to many magazine editors. The BAGEL THIN products have been featured in articles in major magazines, newspapers, on-line news sources, and television broadcasts.

In short, these widespread promotional activities have led to extensive sales and substantial media coverage and exposure.

The question was whether these efforts were enough to achieve acquired distinctiveness. The Board said no: "for a term that appears to be an apt descriptive name of the involved goods, we find the evidence in its entirety to be inadequate to prove acquired distinctiveness for this term."

A particular weakness in Bimbo's case was the relatively short period of use of the mark. At the time the record was closed, the mark had been in use for little more than one year. Furthermore, most of the evidence was "fairly indirect" for purposes of determining consumer perception; the Board, for example, was unsure how customers would perceive the applied-for mark compared to the house mark "Thomas'." It is entirely possible that much of the promotional efforts will reinforce the house mark rather than creating awareness for "an apt descriptive name of the product."

Moreover, Bimbo's gross sales figures lacked context in terms of market share, and there were no declarations or surveys demonstrating recognition of BAGEL THINS as a mark. Third party usage, of course, affected Bimbo's claim to "substantially exclusive use" under Section 2(f).

However, the Board concluded that the mark is capable of achieving acquired distinctiveness, and so it reversed the refusal to allow issuance of a Supplemental Registration.

TTABlog comment: I will bet half of a poppy seed bagel that this case goes to the district court for review under Section 1071(b), with Bimbo adding additional evidence of acquired distinctiveness.

Text Copyright John L. Welch 2012.


At 12:04 PM, Anonymous Anonymous said...

Bagel Thin sounds so unfulfilling. Can I get a Bagel Thick or at least a Bagel Standard?


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