UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/542867

 

Responsive to applicant’s communication received May 30, 2006.

 

Registration has been refused on the Supplemental Register because the proposed mark is generic for applicant's goods.  Trademark Act Section 23(c).  Applicant’s arguments in support of registration have been considered.  However the refusal to register is continued.

 

Since registration is sought on the Supplemental Register, the issue is whether the term  PEPPERMINT BARK constitutes matter capable of distinguishing applicant’s goods and not whether it does in fact or even whether it is a trademark.  If it is a mark which can indicate source or origin, it is capable of distinguishing goods or services and registrable on the Supplemental Register.  In re Brain Research Foundation 171 USPQ 825 (TTAB 1971).                

 

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

 

A two-part test is used to determine whether a designation is generic:

 

(1) What is the class or genus of goods or services at issue?

 

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

 

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

 

A term that serves as the common descriptor of a key ingredient, characteristic or feature of the goods is also generic and thus incapable of distinguishing source.  A term need not relate solely to the name of the goods or services in order to be held incapable of serving as an indicator of origin.  A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for diet sodas)

 

The jurisprudence of genericness, as held in the Canfield case, revolves around the primary significance test, which inquires whether the primary significance of a term in the minds of the consuming public is the product or the producer. The primary significance test, however, cannot be applied until the question of whether the relevant product category or genus for purposes of evaluating genericness is determined.  That question is whether PEPPERMINT BARK is the apt descriptive name for a peppermint flavored bark candy. In order to resolve this question, the courts developed a test that is congruent with general principles of trademark law and the primary significance test.  The test is whether when a producer introduces a product that differs from an established product class in a significant, functional characteristic, and uses the common descriptive term of that characteristic as its name, that new product becomes its own genus, and the term denoting the genus becomes generic if there is no commonly used alternative that effectively communicates the same functional information.  See Nexis stories below.  On the present record, PEPPERMINT BARK appears to fit the test for a generic term.  There does not appear to be a commonly used alternative as the name itself aptly describes the goods.  Because generic designations are not protectable under trademark law, the examining attorney must again refuse registration on the Supplemental Register.  The proposed mark is incapable of identifying the applicant’s goods and distinguishing them from those of others. 

 

The term “PEPPERMINT BARK" should be left in the public domain for others to be free to use when describing goods based on a similar recipe or similar ingredients.   The generic name of the ingredients of a product is incapable of identifying and distinguishing their source and is thus unregistrable on the Supplemental Register.  See In re Hask Toiletries, Inc., 223 USPQ 1254, 1255 (TTAB1984) (HENNA ‘N’ PLACENTA held incapable of registration on the Supplemental Register for hair conditioner); In re Pepcom Industries, Inc., 192 USPQ 400 (TTAB 1976) (JIN SENG held incapable for soft drinks).

 

For the above noted reasons, the refusal to register on the Supplemental Register is continued and made FINAL.

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Russ Herman/

Attorney

Law Office 101

571-272-9172

571-273-9101 (fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.

 

                                                                         108B8C

Print Request:   Selected Document(s): 2-4,8,9,13-15,23,26,27,31,34,39-42,44

                 47,49,50

Time of Request: June 26, 2006  01:24 PM EDT

 

Number of Lines: 180

Job Number:      2842:105566854

 

Client ID/Project Name: 

 

Research Information:

 

 News, All (English, Full Text)

bark candy

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Send to:  HERMAN, RUSS

          TRADEMARK LAW LIBRARY

          600 DULANY ST

          ALEXANDRIA, VA 22314-5782

          

          

          

2.  San Antonio Express-News, May 31, 2006 Wednesday,   STATE&METRO Edition, TASTE; Pg. 2F, 540 words, Recipe Find;  Pie, easy candy recipes sought, Karen Haram

... recipes for Peppermint Bark Candy and Easy Fudge have only  ...

... League of McAllen Peppermint Bark Candy 1 pound white  ...

 

3.  Tulsa World (Oklahoma), January 11, 2006 Wednesday,   Community World - Eastside Edition, Community; Eastside; Pg. ZE1, 766 words, Festival lets family share its cultural heritage, Cory Young World Staff Writer

... It's like almond bark candy," she said. "Everybody just  ...

 

4.  Tulsa World (Oklahoma), January 11, 2006 Wednesday,   Community World - Midtown Edition, Community; Midtown; Pg. ZM1, 768 words, Indian festival a learning experience, CORY YOUNG World Staff Writer

... It's like almond bark candy," she said. "Everybody just  ...

 

8.  The Herald-Sun (Durham, NC), December 23, 2005 Friday,   Final Edition, DURHAM; Pg. C1, Cookie baking and gift making

... at the view of the "peppermint bark candy" coming out of the refrigerator  ...

 

9.  The Kansas City Star, December 21, 2005 Wednesday, E; Pg. 6, 1105 words, PEPPERMINT  RECIPES

... 1 pound chocolate bark candy coating 1 pound almond bark candy coating Line a  ...

 

13.  The Post-Standard (Syracuse, New York), November 28, 2005 Monday,   FINAL EDITION, LOCAL; Pg. B1, 623 words, SUCCESS IS IN THE CARDS;  F-M CLUB LEARNS ABOUT BUSINESS, By Elizabeth Doran Staff writer

... plans to sell peppermint bark candy, and another idea being  ...

 

14. The Virginian-Pilot(Norfolk, Va.), October 9, 2005 Sunday, Beacon Edition, Pg. V3, 510 words, CHKD circle, Christmas Attic team up for Harvest, STACY PARKER, OCEANFRONT

... Halloween theme, almond bark candy, spiced pecans and brownies, with  ...

 

15. Modesto Bee, February 2, 2005, Wednesday, ALL EDITION, TASTE; Pg. F2, 981 words, PFEFFERNUSS COOKIES FOR MODESTAN, BY TERI WATSON, THE SACRAMENTO BEE

... PEANUT BUTTER ALMOND BARK CANDY Prep time: 15  ...

 

23. The San Diego Union-Tribune, January 22, 2004, Thursday, ENTERTAINMENT;Pg. NIGHT & DAY-41, 748 words, SWEET ON JULIAN; Candy factory is a tasty addition to mountain town, Marcia Manna; Marcia Manna covers North County arts and entertainment for the Union-Tribune.

... Employees make peppermint bark candy, one of King Leo's  ...

 

26. Charlotte Observer (North Carolina), December 25, 2002 Wednesday ONE-THREE EDITION, FOOD; Pg. 1E, 735 words, TASTY TRIMMINGS FROM TRUFFLE TREE; IT'S NOT HARD TO CREATE A CENTERPIECE THAT'S ALSO A FABULOUS DESSERT, JILL WENDHOLT SILVA, KNIGHT RIDDER

... 24 ounces chocolate bark candy coating 4 ounces vanilla bark candy coating Equipment: 1 ( ...

... hours. MELT chocolate bark candy coating according to package  ...

... minutes. MELT vanilla bark candy coating according to package  ...

... truffles in white bark candy coating and drizzle with dark  ...

... canes dipped in bark candy coating and dusted with candy  ...

... in melted chocolate bark candy coating; place on  ...

... Spoon melted vanilla bark candy coating into a zippertop  ...

... Paint" remainder of chocolate bark candy coating onto Styrofoam tree with  ...

 

27. Telegram & Gazette (Massachusetts), December 06, 2002 Friday,, Pg. B1, 387 words, Trolleys to transport revelers, SUTTON

... Vaillancourt Folk Art, bark candy will be spread at  ...

 

31. Courier Mail (Queensland, Australia), April 24, 2001, Tuesday, E-MAIL; Pg. 12, 430 words, Hot stuff, Jasmin Lill

... entry titled diabetic bark candy. http://soar.berkeley. ...

 

34.   The State (Columbia, SC), January 18, 2001 Thursday FINAL EDITION, NEIGHBORS 6; Pg. 9, 278 words, CHAPIN CLUB OFFERS COOKBOOK, LEZLIE PATTERSON, Staff Writer

... 407-1248 to purchase. Bark Candy Saltine crackers (40)  ...

 

39. The Patriot Ledger (Quincy, MA), November 18, 2000 Saturday,  ROP Edition, Pg. 37, 907 words, Valerie A. Russo

... crisp apples and chocolate bark candy are just some of the complimentary  ...

 

40. Courier News (Bridgewater, NJ), February 10, 2000 Thursday, STRICTLY SOMERSET; Pg. 5S, 728 words, STRICTLY FOOD, Millicent K. Brody, Freelance Columnists

... jelly hearts, chocolate bark, candy fish or nuts. The love of  ...

 

41. Ventura County Star (California), December 1, 1999, Wednesday, Life; Pg. D03, 565 words, Godfrey: Secret to bark candy is the chocolate, Marilyn Godfrey Dietician

... a recipe for "bark" candy? I would like to make  ...

 

42. The Dallas Morning News, October 20, 1999, Wednesday, THIRD EDITION, FOOD;, Pg. 1F, 2243 words, CANDY; Simple techniques work for any holiday, Ellen Sweets

... make three pounds of bark candy, but if you go to buy  ...

 

44.  The Post-Standard (Syracuse, NY), December 2, 1998 Wednesday, CNY; Recipe Swap, 1532 words, HOMEMADE GIFTS FOR HOLIDAYS;  HOLIDAY TREATS ARE FUN TO CREATE AND MAKE GREAT GIFTS, Evelyn Clayton

... 1 pound white bark candy 1 pound salted  ...

 

47. The Baltimore Sun, April 15, 1998, Wednesday,, FINAL EDITION, Pg. 4F,, 775 words, Shell game: a hunt for oyster potpie and bark candy, Ellen Hawks, SUN STAFF

... a recipe for bark candy offer delicious possibilities.  ...

Bark candy is what Judy Wilkerson of Edgemont,  ...

... rosemary." Froot Loop Bark Candy Makes about 75  ...

 

49. Columbus Dispatch (Ohio), February 4, 1998, Wednesday, Pg. 2F, 181 words, BARK CANDY

 

50. Saint Paul Pioneer Press (Minnesota), January 30, 1998 Friday, METRO; The Hunt Goes On; Pg. 8B, 238 words, MEDALLION SEEKERS IN HOT PURSUIT, Jim Walsh, Staff Columnist

... in white almond bark candy. I've still got the  ...