GRUPO BIMBO, S.A. B. DE C.V.
bakery products, not including cookies
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:
Bimbo Hungria Zrt Examining Attorney: Tasneem Hussain
Serial No.: 77/798,540 Law Office 113
Mark: BREAKFAST THINS
RESPONSE TO OFFICE ACTION DATED SEPTEMBER 10, 2010
Applicant Bimbo Hungria Zrt1 (Applicant) hereby responds to the Office action
dated September 10, 2010, in which the Examiner (1) refuses registration of Applicants
BREAKFAST THINS trademark, U.S. Application Serial No. 77/798,540 (the Subject
Application) on the ground that the mark is merely descriptive of Applicants goods;
and (2) requests additional information regarding Applicants mark and goods.
I. Applicants BREAKFAST THINS Mark is Suggestive of Applicants Goods and
Entitled to Registration on the Principal Register
A. Background
The Examiner has refused registration of Applicants BREAKFAST THINS mark
under Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), because she believes
that the proposed mark is merely descriptive of a characteristic or feature of Applicants
goods. In response, Applicant submits that the mark is not merely descriptive of the
identified goods, but rather, when viewed in its entirety, is suggestive and, therefore,
registrable on the Principal Register.
1
Applicant is an affiliate of BBU, Inc., a leading provider of bakery products with an extensive portfolio of
brands, including ARNOLD, OROWEAT, MRS BAIRDS, BIMBO, BOBOLI, THOMAS, and
ENTENMANNS. BBU distributes high quality bakery products throughout the United States through its
multiple affiliates, including Bimbo Bakeries USA, Inc., Arnold Products, Inc., and Orograin Bakeries
Products, Inc. Collectively, such entities shall be referred to herein as Applicant.
In determining whether a mark is suggestive, one must consider how immediate
and direct the thought process is from the mark to the particular characteristics of the
product or service:
Suggestive marks are those that, when applied to the goods
or services at issue, require imagination, thought or
perception to reach a conclusion as to the nature of the
goods or services. Thus, a suggestive term differs from a
descriptive term, which immediately tells something about
the goods or services.
T.M.E.P. § 1209.01(a).
If one must exercise multi-step reasoning to determine attributes of the product
or service, the term is suggestive, not descriptive. Nautilus Group, Inc. v. Icon Health &
Fitness, Inc., 372 F.3d 1330, 1343 (Fed. Cir. 2004) (concluding that the district court
reasonably found the BOWFLEX mark was suggestive because the mental leap
between the mark and the exercise equipment it described was not instantaneous);
Nabisco v. Warner-Lambert Co., 32 F. Supp.2d 690, 697 (S.D.N.Y. 1999) (mark ICE
BREAKERS, as used by plaintiffs in connection with their sugarless chewing gum
product, is suggestive), affd 220 F.3d 43 (2d Cir. 2000); 2 J. Thomas McCarthy,
TRADEMARKS AND UNFAIR COMPETITION § 11:67, at 11-127 11-130 (2005); 1 Jerome
Gilson, TRADEMARK PROTECTION AND PRACTICE § 2.04[1], at 2-96 (2005). The more
imagination that is required on the customers part to get some direct description of the
product or service from the term, the more likely the term is suggestive, not descriptive.
Of course, a mark need not be devoid of all meaning in relation to the goods and
services to be deemed suggestive and registrable:
A minor degree of descriptiveness does not destroy the
suggestive, or trademark, significance. There must be a
2
shade of descriptive meaning present or the suggestion
process will not occur.
1 J. Gilson, TRADEMARK PROTECTION AND PRACTICE § 2.04[1], at 2-97 (2005); see also
T.M.E.P. § 1209.01(a).
Professor J. Thomas McCarthy has set forth tests that the Federal Circuit and
Trademark Trial and Appeal Board have used in the past to determine the suggestiveness
of a mark. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Compeition
§ 11:62-11:70 (1999). The tests are (1) the Degree of Imagination Test; (2) the
Competitors Need Test; and (3) the Competitors Use Test. Id. Applicant submits that
its BREAKFAST THINS mark is suggestive under each of these tests.
Additionally, the suggestive nature of Applicants BREAKFAST THINS mark is
evidenced by a review of the USPTO online records, which reveal several registrations
and applications that were allowed without a disclaimer as well as by the success of
Applicants line of THINS products.
B. The Degree of Imagination Test
Under the Degree of Imagination Test, the question is: How immediate and direct
is the thought process from the mark itself to a particular characteristic of the product?
Thus, if one must exercise mature thought or follow a multi-stage reasoning process to
determine attributes of the product, the mark is suggestive, not descriptive. In re Tennis
in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (holding TENNIS IN THE
ROUND registrable as suggestive of tennis facilities); Airco, Inc. v. Air Products &
Chemicals, Inc., 196 U.S.P.Q. 832 (T.T.A.B. 1977) (holding AIR-CARE registrable as
suggestive of a scheduled maintenance program for hospital and medical anesthesia and
inhalation therapy equipment).
3
In order to analyze the thought process involved in connecting Applicants mark
with its goods, one must possess a clear understanding of the goods. See In re The Rank
Organization Ltd., 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984) (holding LASER registrable
as suggestive as it did not immediately describe any feature or characteristic of high
fidelity loud speakers). Accordingly, Applicant points out that it intends to use its
BREAKFAST THINS mark in connection with a variety of bakery products.
Additionally, in the distinctiveness analysis, a trademark must be viewed in its entirety,
not in its dissected component parts. See U.S. West Inc. v. BellSouth Corp., 18
U.S.P.Q.2d 1307 (T.T.A.B. 1990) (held THE REAL YELLOW PAGES mark, as a
whole, is suggestive). The Supreme Court has stated that:
The commercial impression of a trademark is derived from
it as a whole, not from its elements separated and
considered in detail. For this reason it should be
considered in its entirety . . . .
Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46
(1920); see also In re Hester Industries, Inc., 230 U.S.P.Q. 797, 799-80 (T.T.A.B. 1986)
(THIGHSTIX for boneless chicken parts is suggestive rather than descriptive when
viewed in its entirety); California Cooler, Inc. v. Loretto Winery Ltd., 774 F.2d 1451,
1455 (9th Cir. 1985) (holding that the mark CALIFORNIA COOLER is a composite
term and its validity is not judged by an examination of its parts. Rather, the validity of a
trademark is to be determined by viewing the trademark as a whole . . . . Thus, the
composite may become a distinguishing mark even though its component parts
individually cannot.); 2 J. Thomas McCarthy, TRADEMARKS AND UNFAIR COMPETITION
§ 11:27, at 11-56.3 11-56.4 (2005). When considered in its entirety, Applicants
BREAKFAST THINS mark is not immediately descriptive of Applicants products.
4
Instead, upon viewing the BREAKFAST THINS mark, one must engage in a multi-step
thought process to discern a characteristic of Applicants bakery products. Consequently,
Applicants BREAKFAST THINS mark is suggestive of Applicants bakery products.
To begin, the phrase breakfast thins is not listed in the dictionary. See Exhibit
A. Instead, one must first conjure up an image of breakfast, which means, the first
meal of the day especially when taken in the morning or the food prepared for
breakfast. See Exhibit B. Next, one must conjure up the image of thins, however the
suggestive term thins is not listed in the dictionary. See Exhibit C. Even using the
various definitions listed in the dictionary for the adjective thin, it is not possible to
definitively describe a characteristic of Applicants bakery products. Among other
definitions, the word thin is defined as shallow or narrow: of relatively small extent
from surface to surface or side to side or slim: having very little body fat. See Exhibit
D. Because there are multiple meanings of the word thin, Consumers will not
immediately be able to identify a characteristic of Applicants bakery products upon
seeing the term THINS in connection with Applicants bakery products.
Moreover, when viewed in its entirety, Applicants BREAKFAST THINS mark
conveys a novel and imaginative commercial impression. The BREAKFAST THINS
mark could conjure up any number of connotations in the minds of consumers, as it is
used in connection with many different types of products. For example, it is quite
possible that upon seeing the BREAKFAST THINS mark, consumers will believe that
Applicants bakery products are healthier versions of the bakery products they usually
consumer for at breakfast. Such an analysis requires the imagination, thought, and
perception of the prospective purchaser. Therefore, Applicant respectfully submits that
5
this complex thought process only occurs with distinctive marks and confirms the
suggestive nature of Applicants mark under the Degree of Imagination Test.
C. Competitors Need Test
Under the Competitors Need Test, the inquiry focuses on: the more imagination
that is required to associate a mark with the product, the less likely the words used will be
needed by competitors to describe their products. If the suggestion made by Applicants
mark is so remote and subtle, the mark is not likely to be needed by competitive sellers to
describe their goods. See Minnesota Mining & Mfr. Co. v. Johnson & Johnson, 454 F.2d
1179 (C.C.P.A. 1972) (holding SKINVISIBLE registrable as suggestive of transparent
medical adhesive tape in part, because it is not needed by competitors); Sperry Rand
Corp. v. Sunbeam Corp., 442 F.2d 979 (C.C.P.A. 1971) (holding LEKTRONIC
registrable as suggestive of electric shavers in part, because it is not needed by
competitors).
A mark such as BREAKFAST THINS, containing a sufficient minimum of
distinctiveness to remove it from the descriptive category, will not seriously infringe
upon the right of other sellers to use descriptive terms on their products. There is an
inverse relationship between the Degree of Imagination Test and the Competitors Need
Test: as the amount of imagination needed increases, the need of others to use the mark to
describe the product decreases. See In re Reynolds Metal Co., 480 F.2d 902 (C.C.P.A.
1973) (holding BROWN-IN-BAG registrable as suggestive of transparent plastic bags
because competitors do not need the mark to inform customers about competitors bags).
Because a significant level of imagination is required to associate BREAKFAST THINS
with the Applicants bakery products, competitors have no need to use the mark.
Applicants competitors can use any number of terms or combinations thereof to
6
accurately describe a bakery product without resorting to use of the term BREAKFAST
THINS. Therefore, Applicants mark satisfies the Competitors Need Test as well.
D. Competitors Use Test
The Competitors Use Test attempts to determine the extent to which other sellers
have used the mark on similar merchandise. That is, if other sellers are not using the
term to describe their products, an inference of suggestiveness can be drawn. See
Firestone Tire & Rubber Co., 186 U.S.P.Q. at 559 (holding where others in industry do
not use the term as a descriptive reference, this is evidence that the term is neither a
natural or obvious way to describe the goods); In re Dollar-A-Day Rent-A-Car Systems,
Inc., 173 U.S.P.Q. 435 (T.T.A.B. 1972) (holding no descriptive uses by others in industry
is a strong argument in favor of non-descriptiveness and in favor of secondary meaning).
Here, Applicants competitors do not use the term BREAKFAST THINS to
describe a particular category of bakery product. Notably, there are no other live
registrations or applications on the USPTO register which incorporate the term
BREAKFAST THINS. The fact that no other parties use this term descriptively is strong
evidence that the BREAKFAST THINS is not widely recognized within the bakery
product industry to describe Applicants goods. To the extent the Examiner provided
Internet exhibits and evidence from the August 23, 2010 Letter of Protest purporting to
demonstrate a descriptive use of the BREAKFAST THINS or other THINS marks, such
isolated instances of use are insufficient evidence to prove “common or even wide use of” the
BREAKFAST THINS mark or descriptive use of other THINS marks. In re Federated
Dep’t Stores, Inc., 3U.S.P.Q.2d 1541 (T.T.A.B. 1987). In fact, many of the cited examples
do not appear to be uses of the terms by Applicants competitors, but rather incorrect uses of
trademarks by consumers.
7
In the present case, the Examiner has cited no examples of competitors using
Applicants BREAKFAST THINS mark or any mark confusingly similar to Applicants
BREAKFAST THINS mark. Accordingly, Applicants BREAKFAST THINS mark
fulfills the Competitors Use Test.
E. Prior Registrations Do Not Disclaim THINS
As further evidence that the term THINS is not descriptive in this context,
Applicant submits that a review of the USPTOs online records reveal the following
registrations and applications (the information for which is attached as Exhibit E) that
were allowed without a disclaimer of the term THINS or THIN.
Mark Reg./Ser. Goods Disclaimer Reg. /
No. Allowance
Date
SANDWICH 3,637,950 Class 30: bread SANDWICH 6/6/2009
THINS
WHEAT THINS 1,022,799 Class 30: crackers WHEAT 10/14/1975
SOY THINS 3,044,541 Class 30: soy-based SOY 1/17/2006
snack foods
THINNY THIN 3,729,315 Class 30: crackers No disclaimer 12/22/09
THINS
NUT-THINS 2,143,587 Class 30: flour based No disclaimer 3/10/1998
wafers with almonds
or other nuts as
ingredients
JUICE PLUS+ 2,154,665 Class 35: dietary JUICE 5/5/1998
THINS supplements, wafers
containing appetite
suppressants
VEGETABLE 1,244,724 Class 30: crackers VEGETABLE 7/5/1983
THINS
BURGER THINS 77/767,076 Class 30: Buns BURGER 2/2/2010
FLATBREAD 77/767,064 Class 30: Buns FLATBREAD 2/2/2010
THINS
RICE THINS 77/776,356 Class 30: rice cakes RICE 7/27/2010
CORN THINS 77/776,347 Class 30: corn cakes CORN 7/27/2010
PITA THINS 1,982,930 Class 30: flat bread PITA 6/25/1996
8
Mark Reg./Ser. Goods Disclaimer Reg. /
No. Allowance
Date
SWEET THINS 1,926,608 Class 30: baked SWEET 10/10/1995
goods, namely cakes
and cookies
GARDEN 1,590,093 Class 30: bread, CHICKEN 4/30/1990
CHICKEN pastries, biscuits,
THINS cakes, snack food
products, namely
crackers
WAFER THINS 2,887,828 Class 30: wheat WAFER 9/21/2004
based wafer snacks
The registrations and pending applications listed above are evidence that the term
THINS is not descriptive in the context of bakery goods. Instead, the USPTO has
consistently found the term to be suggestive of the goods at issue.
Additionally, contrary to the Examiners suggestion that the term THINS has
lost its distinguishing and origin-denoting characteristics and has come to be regarded
by the purchasing public as nothing more than a descriptive designation, as the chart of
marks above demonstrates, as recently as July 2010, the USPTO found the term to be
suggestive and thus registrable on the Principal Register. Applicants BREAKFAST
THINS mark is, at the very least, as suggestive of Applicants goods as the marks listed
above and should also be allowed to register.
F. Applicants THINS Line of Products
Applicant has a successful line of products it offers under various THINS marks.
Specifically, Applicant currently offers bakery products under its SANDWICH THINS
mark. Applicant owns U.S. Federal Registration No. 3,637,950 for SANDWICH THINS.
Applicant’s federal trademark registration for the mark SANDWICH THINS on the Principal
Register constitutes prima facie evidence of the validity and distinctiveness of the
SANDWICH THINS trademark for the bakery products listed in the federal trademark
9
registration. 15 U.S.C. §§ 1057(b), 1115(a). As “sandwich” is disclaimed in U. S.
Registration No. 3,637,950, it is the “THINS” portion which constitutes the dominant and
distinctive element in the registered mark. This is the same “THINS” portion which
constitutes the dominant and distinctive portion of Applicant’s BREAKFAST THINS mark,
as Applicant has disclaimed exclusive rights to the term “breakfast.”
Applicants SANDWICH THINS products have been as successful line of
products for Applicant. Since Applicants launch of the SANDWICH THINS bakery
products in 2008, Applicant has sold over 87 million units of SANDWICH THINS
products, generating over $220 million in retail sales as reported by Information
Resources, Inc. (IRI). Additionally, the SANDWICH THINS products enjoy a strong
market share in their product category and were named by IRI as one of the Top 10
Food and Beverage New Product Pacesetters of 2009.
Applicant also offers bakery products under its BAGEL THINS mark. Applicant
owns a pending application to register the BAGEL THINS mark, Ser. No. 77/798,364.
The BAGEL THINS line of products has also been a success for Applicant. Applicant
began selling its BAGEL THINS product in January 2010, and since that time Applicant
has spent at least $5 million promoting its BAGEL THINS bakery products and sales of
BAGEL THINS products since January 2010 have generated over $54 million in retail
sales in the United States.
Applicants SANDWICH THINS and BAGEL THINS marks have been used and
promoted on an extensive basis. Moreover, the marks have been used consistently in a
prominent, trademark manner on and in connection with the underlying goods. The
marks are displayed with the size and prominence of classic trademark usage, such that
consumers are conditioned to perceive the term THINS in a trademark sense. Upon
10
seeing the BREAKFAST THINS mark, consumers will perceive it as a trademark, rather
than describing a characteristic of Applicants bakery products.
G. Any Doubts Must Be Resolved in Favor of Suggestiveness.
Any doubts as to whether a mark is suggestive are to be resolved in favor of the
applicant. In re Remacle, 66 U.S.P.Q.2d 1222, 1224 (T.T.A.B. 2002); In re Bed-Check
Corp., 226 U.S.P.Q. at 948. Because Applicant has raised legitimate doubts as to the
descriptiveness of the proposed mark, the determination should be resolved in Applicants
favor.
II. Additional Information
The issues for which the Examiner requested additional information and
Applicants responses appear below:
1. Does the wording THIN or THINS have significance in the bakery
product trade or industry?
Response: The term THINS has no significance in the bakery product trade
or industry other than as a trademark. Applicant is aware of no significance of
the term THIN other than its dictionary definition.
2. Are any of applicants bakery products thin in size or shape or nature?
Response: Applicant is unable to answer this question, because it is unclear as
to what the Examiner wishes Applicant to compare its products to determine
whether they are thin.
3. What is the meaning of the word thins?
Response: Applicant states that the term THINS is a suggestive term that
has no definite meaning.
4. Does applicant use the wording thin or thins to describe its goods in any
11
advertisements, packaging, or other media available to the public?
Response: Applicant uses the term THINS in the advertisements and
product packaging for Applicants SANDWICH THINS and BAGEL THINS
products
5. Additional information about the goods Applicant intends to offer under the
BREAKFAST THINS mark.
Response: Applicant intends to offer bakery goods under the BREAKFAST
THINS mark, but at this time, Applicant is unable to provide additional
information about the goods it intends to offer under the mark, as Applicant is
still developing the products.
III. Conclusion
In light of the above remarks, and in light of the fact that the Examiner has found
no similar registered or pending marks which would bar registration under § 2(d),
Applicant respectfully requests that the Examiner pass the Subject Application for
publication.
Respectfully submitted,
BIMBO HUNGRIA Zrt
Dated: December 13, 2010 By: /Joshua S. Frick/
Scott J. Slavick
Joshua S. Frick
BRINKS HOFER GILSON & LIONE
P.O. Box 10395
Chicago, Illinois 60610
Telephone: 312-321-4200
Facsimile: 312-321-4299
Attorneys for Applicant
12
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:
Bimbo Hungria Zrt Examining Attorney: Tasneem Hussain
Serial No.: 77/798,540 Law Office 113
Mark: BREAKFAST THINS
RESPONSE TO OFFICE ACTION DATED SEPTEMBER 10, 2010
Applicant Bimbo Hungria Zrt1 (Applicant) hereby responds to the Office action
dated September 10, 2010, in which the Examiner (1) refuses registration of Applicants
BREAKFAST THINS trademark, U.S. Application Serial No. 77/798,540 (the Subject
Application) on the ground that the mark is merely descriptive of Applicants goods;
and (2) requests additional information regarding Applicants mark and goods.
I. Applicants BREAKFAST THINS Mark is Suggestive of Applicants Goods and
Entitled to Registration on the Principal Register
A. Background
The Examiner has refused registration of Applicants BREAKFAST THINS mark
under Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), because she believes
that the proposed mark is merely descriptive of a characteristic or feature of Applicants
goods. In response, Applicant submits that the mark is not merely descriptive of the
identified goods, but rather, when viewed in its entirety, is suggestive and, therefore,
registrable on the Principal Register.
1
Applicant is an affiliate of BBU, Inc., a leading provider of bakery products with an extensive portfolio of
brands, including ARNOLD, OROWEAT, MRS BAIRDS, BIMBO, BOBOLI, THOMAS, and
ENTENMANNS. BBU distributes high quality bakery products throughout the United States through its
multiple affiliates, including Bimbo Bakeries USA, Inc., Arnold Products, Inc., and Orograin Bakeries
Products, Inc. Collectively, such entities shall be referred to herein as Applicant.
In determining whether a mark is suggestive, one must consider how immediate
and direct the thought process is from the mark to the particular characteristics of the
product or service:
Suggestive marks are those that, when applied to the goods
or services at issue, require imagination, thought or
perception to reach a conclusion as to the nature of the
goods or services. Thus, a suggestive term differs from a
descriptive term, which immediately tells something about
the goods or services.
T.M.E.P. § 1209.01(a).
If one must exercise multi-step reasoning to determine attributes of the product
or service, the term is suggestive, not descriptive. Nautilus Group, Inc. v. Icon Health &
Fitness, Inc., 372 F.3d 1330, 1343 (Fed. Cir. 2004) (concluding that the district court
reasonably found the BOWFLEX mark was suggestive because the mental leap
between the mark and the exercise equipment it described was not instantaneous);
Nabisco v. Warner-Lambert Co., 32 F. Supp.2d 690, 697 (S.D.N.Y. 1999) (mark ICE
BREAKERS, as used by plaintiffs in connection with their sugarless chewing gum
product, is suggestive), affd 220 F.3d 43 (2d Cir. 2000); 2 J. Thomas McCarthy,
TRADEMARKS AND UNFAIR COMPETITION § 11:67, at 11-127 11-130 (2005); 1 Jerome
Gilson, TRADEMARK PROTECTION AND PRACTICE § 2.04[1], at 2-96 (2005). The more
imagination that is required on the customers part to get some direct description of the
product or service from the term, the more likely the term is suggestive, not descriptive.
Of course, a mark need not be devoid of all meaning in relation to the goods and
services to be deemed suggestive and registrable:
A minor degree of descriptiveness does not destroy the
suggestive, or trademark, significance. There must be a
2
shade of descriptive meaning present or the suggestion
process will not occur.
1 J. Gilson, TRADEMARK PROTECTION AND PRACTICE § 2.04[1], at 2-97 (2005); see also
T.M.E.P. § 1209.01(a).
Professor J. Thomas McCarthy has set forth tests that the Federal Circuit and
Trademark Trial and Appeal Board have used in the past to determine the suggestiveness
of a mark. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Compeition
§ 11:62-11:70 (1999). The tests are (1) the Degree of Imagination Test; (2) the
Competitors Need Test; and (3) the Competitors Use Test. Id. Applicant submits that
its BREAKFAST THINS mark is suggestive under each of these tests.
Additionally, the suggestive nature of Applicants BREAKFAST THINS mark is
evidenced by a review of the USPTO online records, which reveal several registrations
and applications that were allowed without a disclaimer as well as by the success of
Applicants line of THINS products.
B. The Degree of Imagination Test
Under the Degree of Imagination Test, the question is: How immediate and direct
is the thought process from the mark itself to a particular characteristic of the product?
Thus, if one must exercise mature thought or follow a multi-stage reasoning process to
determine attributes of the product, the mark is suggestive, not descriptive. In re Tennis
in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (holding TENNIS IN THE
ROUND registrable as suggestive of tennis facilities); Airco, Inc. v. Air Products &
Chemicals, Inc., 196 U.S.P.Q. 832 (T.T.A.B. 1977) (holding AIR-CARE registrable as
suggestive of a scheduled maintenance program for hospital and medical anesthesia and
inhalation therapy equipment).
3
In order to analyze the thought process involved in connecting Applicants mark
with its goods, one must possess a clear understanding of the goods. See In re The Rank
Organization Ltd., 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984) (holding LASER registrable
as suggestive as it did not immediately describe any feature or characteristic of high
fidelity loud speakers). Accordingly, Applicant points out that it intends to use its
BREAKFAST THINS mark in connection with a variety of bakery products.
Additionally, in the distinctiveness analysis, a trademark must be viewed in its entirety,
not in its dissected component parts. See U.S. West Inc. v. BellSouth Corp., 18
U.S.P.Q.2d 1307 (T.T.A.B. 1990) (held THE REAL YELLOW PAGES mark, as a
whole, is suggestive). The Supreme Court has stated that:
The commercial impression of a trademark is derived from
it as a whole, not from its elements separated and
considered in detail. For this reason it should be
considered in its entirety . . . .
Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46
(1920); see also In re Hester Industries, Inc., 230 U.S.P.Q. 797, 799-80 (T.T.A.B. 1986)
(THIGHSTIX for boneless chicken parts is suggestive rather than descriptive when
viewed in its entirety); California Cooler, Inc. v. Loretto Winery Ltd., 774 F.2d 1451,
1455 (9th Cir. 1985) (holding that the mark CALIFORNIA COOLER is a composite
term and its validity is not judged by an examination of its parts. Rather, the validity of a
trademark is to be determined by viewing the trademark as a whole . . . . Thus, the
composite may become a distinguishing mark even though its component parts
individually cannot.); 2 J. Thomas McCarthy, TRADEMARKS AND UNFAIR COMPETITION
§ 11:27, at 11-56.3 11-56.4 (2005). When considered in its entirety, Applicants
BREAKFAST THINS mark is not immediately descriptive of Applicants products.
4
Instead, upon viewing the BREAKFAST THINS mark, one must engage in a multi-step
thought process to discern a characteristic of Applicants bakery products. Consequently,
Applicants BREAKFAST THINS mark is suggestive of Applicants bakery products.
To begin, the phrase breakfast thins is not listed in the dictionary. See Exhibit
A. Instead, one must first conjure up an image of breakfast, which means, the first
meal of the day especially when taken in the morning or the food prepared for
breakfast. See Exhibit B. Next, one must conjure up the image of thins, however the
suggestive term thins is not listed in the dictionary. See Exhibit C. Even using the
various definitions listed in the dictionary for the adjective thin, it is not possible to
definitively describe a characteristic of Applicants bakery products. Among other
definitions, the word thin is defined as shallow or narrow: of relatively small extent
from surface to surface or side to side or slim: having very little body fat. See Exhibit
D. Because there are multiple meanings of the word thin, Consumers will not
immediately be able to identify a characteristic of Applicants bakery products upon
seeing the term THINS in connection with Applicants bakery products.
Moreover, when viewed in its entirety, Applicants BREAKFAST THINS mark
conveys a novel and imaginative commercial impression. The BREAKFAST THINS
mark could conjure up any number of connotations in the minds of consumers, as it is
used in connection with many different types of products. For example, it is quite
possible that upon seeing the BREAKFAST THINS mark, consumers will believe that
Applicants bakery products are healthier versions of the bakery products they usually
consumer for at breakfast. Such an analysis requires the imagination, thought, and
perception of the prospective purchaser. Therefore, Applicant respectfully submits that
5
this complex thought process only occurs with distinctive marks and confirms the
suggestive nature of Applicants mark under the Degree of Imagination Test.
C. Competitors Need Test
Under the Competitors Need Test, the inquiry focuses on: the more imagination
that is required to associate a mark with the product, the less likely the words used will be
needed by competitors to describe their products. If the suggestion made by Applicants
mark is so remote and subtle, the mark is not likely to be needed by competitive sellers to
describe their goods. See Minnesota Mining & Mfr. Co. v. Johnson & Johnson, 454 F.2d
1179 (C.C.P.A. 1972) (holding SKINVISIBLE registrable as suggestive of transparent
medical adhesive tape in part, because it is not needed by competitors); Sperry Rand
Corp. v. Sunbeam Corp., 442 F.2d 979 (C.C.P.A. 1971) (holding LEKTRONIC
registrable as suggestive of electric shavers in part, because it is not needed by
competitors).
A mark such as BREAKFAST THINS, containing a sufficient minimum of
distinctiveness to remove it from the descriptive category, will not seriously infringe
upon the right of other sellers to use descriptive terms on their products. There is an
inverse relationship between the Degree of Imagination Test and the Competitors Need
Test: as the amount of imagination needed increases, the need of others to use the mark to
describe the product decreases. See In re Reynolds Metal Co., 480 F.2d 902 (C.C.P.A.
1973) (holding BROWN-IN-BAG registrable as suggestive of transparent plastic bags
because competitors do not need the mark to inform customers about competitors bags).
Because a significant level of imagination is required to associate BREAKFAST THINS
with the Applicants bakery products, competitors have no need to use the mark.
Applicants competitors can use any number of terms or combinations thereof to
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accurately describe a bakery product without resorting to use of the term BREAKFAST
THINS. Therefore, Applicants mark satisfies the Competitors Need Test as well.
D. Competitors Use Test
The Competitors Use Test attempts to determine the extent to which other sellers
have used the mark on similar merchandise. That is, if other sellers are not using the
term to describe their products, an inference of suggestiveness can be drawn. See
Firestone Tire & Rubber Co., 186 U.S.P.Q. at 559 (holding where others in industry do
not use the term as a descriptive reference, this is evidence that the term is neither a
natural or obvious way to describe the goods); In re Dollar-A-Day Rent-A-Car Systems,
Inc., 173 U.S.P.Q. 435 (T.T.A.B. 1972) (holding no descriptive uses by others in industry
is a strong argument in favor of non-descriptiveness and in favor of secondary meaning).
Here, Applicants competitors do not use the term BREAKFAST THINS to
describe a particular category of bakery product. Notably, there are no other live
registrations or applications on the USPTO register which incorporate the term
BREAKFAST THINS. The fact that no other parties use this term descriptively is strong
evidence that the BREAKFAST THINS is not widely recognized within the bakery
product industry to describe Applicants goods. To the extent the Examiner provided
Internet exhibits and evidence from the August 23, 2010 Letter of Protest purporting to
demonstrate a descriptive use of the BREAKFAST THINS or other THINS marks, such
isolated instances of use are insufficient evidence to prove “common or even wide use of” the
BREAKFAST THINS mark or descriptive use of other THINS marks. In re Federated
Dep’t Stores, Inc., 3U.S.P.Q.2d 1541 (T.T.A.B. 1987). In fact, many of the cited examples
do not appear to be uses of the terms by Applicants competitors, but rather incorrect uses of
trademarks by consumers.
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In the present case, the Examiner has cited no examples of competitors using
Applicants BREAKFAST THINS mark or any mark confusingly similar to Applicants
BREAKFAST THINS mark. Accordingly, Applicants BREAKFAST THINS mark
fulfills the Competitors Use Test.
E. Prior Registrations Do Not Disclaim THINS
As further evidence that the term THINS is not descriptive in this context,
Applicant submits that a review of the USPTOs online records reveal the following
registrations and applications (the information for which is attached as Exhibit E) that
were allowed without a disclaimer of the term THINS or THIN.
Mark Reg./Ser. Goods Disclaimer Reg. /
No. Allowance
Date
SANDWICH 3,637,950 Class 30: bread SANDWICH 6/6/2009
THINS
WHEAT THINS 1,022,799 Class 30: crackers WHEAT 10/14/1975
SOY THINS 3,044,541 Class 30: soy-based SOY 1/17/2006
snack foods
THINNY THIN 3,729,315 Class 30: crackers No disclaimer 12/22/09
THINS
NUT-THINS 2,143,587 Class 30: flour based No disclaimer 3/10/1998
wafers with almonds
or other nuts as
ingredients
JUICE PLUS+ 2,154,665 Class 35: dietary JUICE 5/5/1998
THINS supplements, wafers
containing appetite
suppressants
VEGETABLE 1,244,724 Class 30: crackers VEGETABLE 7/5/1983
THINS
BURGER THINS 77/767,076 Class 30: Buns BURGER 2/2/2010
FLATBREAD 77/767,064 Class 30: Buns FLATBREAD 2/2/2010
THINS
RICE THINS 77/776,356 Class 30: rice cakes RICE 7/27/2010
CORN THINS 77/776,347 Class 30: corn cakes CORN 7/27/2010
PITA THINS 1,982,930 Class 30: flat bread PITA 6/25/1996
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Mark Reg./Ser. Goods Disclaimer Reg. /
No. Allowance
Date
SWEET THINS 1,926,608 Class 30: baked SWEET 10/10/1995
goods, namely cakes
and cookies
GARDEN 1,590,093 Class 30: bread, CHICKEN 4/30/1990
CHICKEN pastries, biscuits,
THINS cakes, snack food
products, namely
crackers
WAFER THINS 2,887,828 Class 30: wheat WAFER 9/21/2004
based wafer snacks
The registrations and pending applications listed above are evidence that the term
THINS is not descriptive in the context of bakery goods. Instead, the USPTO has
consistently found the term to be suggestive of the goods at issue.
Additionally, contrary to the Examiners suggestion that the term THINS has
lost its distinguishing and origin-denoting characteristics and has come to be regarded
by the purchasing public as nothing more than a descriptive designation, as the chart of
marks above demonstrates, as recently as July 2010, the USPTO found the term to be
suggestive and thus registrable on the Principal Register. Applicants BREAKFAST
THINS mark is, at the very least, as suggestive of Applicants goods as the marks listed
above and should also be allowed to register.
F. Applicants THINS Line of Products
Applicant has a successful line of products it offers under various THINS marks.
Specifically, Applicant currently offers bakery products under its SANDWICH THINS
mark. Applicant owns U.S. Federal Registration No. 3,637,950 for SANDWICH THINS.
Applicant’s federal trademark registration for the mark SANDWICH THINS on the Principal
Register constitutes prima facie evidence of the validity and distinctiveness of the
SANDWICH THINS trademark for the bakery products listed in the federal trademark
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registration. 15 U.S.C. §§ 1057(b), 1115(a). As “sandwich” is disclaimed in U. S.
Registration No. 3,637,950, it is the “THINS” portion which constitutes the dominant and
distinctive element in the registered mark. This is the same “THINS” portion which
constitutes the dominant and distinctive portion of Applicant’s BREAKFAST THINS mark,
as Applicant has disclaimed exclusive rights to the term “breakfast.”
Applicants SANDWICH THINS products have been as successful line of
products for Applicant. Since Applicants launch of the SANDWICH THINS bakery
products in 2008, Applicant has sold over 87 million units of SANDWICH THINS
products, generating over $220 million in retail sales as reported by Information
Resources, Inc. (IRI). Additionally, the SANDWICH THINS products enjoy a strong
market share in their product category and were named by IRI as one of the Top 10
Food and Beverage New Product Pacesetters of 2009.
Applicant also offers bakery products under its BAGEL THINS mark. Applicant
owns a pending application to register the BAGEL THINS mark, Ser. No. 77/798,364.
The BAGEL THINS line of products has also been a success for Applicant. Applicant
began selling its BAGEL THINS product in January 2010, and since that time Applicant
has spent at least $5 million promoting its BAGEL THINS bakery products and sales of
BAGEL THINS products since January 2010 have generated over $54 million in retail
sales in the United States.
Applicants SANDWICH THINS and BAGEL THINS marks have been used and
promoted on an extensive basis. Moreover, the marks have been used consistently in a
prominent, trademark manner on and in connection with the underlying goods. The
marks are displayed with the size and prominence of classic trademark usage, such that
consumers are conditioned to perceive the term THINS in a trademark sense. Upon
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seeing the BREAKFAST THINS mark, consumers will perceive it as a trademark, rather
than describing a characteristic of Applicants bakery products.
G. Any Doubts Must Be Resolved in Favor of Suggestiveness.
Any doubts as to whether a mark is suggestive are to be resolved in favor of the
applicant. In re Remacle, 66 U.S.P.Q.2d 1222, 1224 (T.T.A.B. 2002); In re Bed-Check
Corp., 226 U.S.P.Q. at 948. Because Applicant has raised legitimate doubts as to the
descriptiveness of the proposed mark, the determination should be resolved in Applicants
favor.
II. Additional Information
The issues for which the Examiner requested additional information and
Applicants responses appear below:
1. Does the wording THIN or THINS have significance in the bakery
product trade or industry?
Response: The term THINS has no significance in the bakery product trade
or industry other than as a trademark. Applicant is aware of no significance of
the term THIN other than its dictionary definition.
2. Are any of applicants bakery products thin in size or shape or nature?
Response: Applicant is unable to answer this question, because it is unclear as
to what the Examiner wishes Applicant to compare its products to determine
whether they are thin.
3. What is the meaning of the word thins?
Response: Applicant states that the term THINS is a suggestive term that
has no definite meaning.
4. Does applicant use the wording thin or thins to describe its goods in any
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advertisements, packaging, or other media available to the public?
Response: Applicant uses the term THINS in the advertisements and
product packaging for Applicants SANDWICH THINS and BAGEL THINS
products
5. Additional information about the goods Applicant intends to offer under the
BREAKFAST THINS mark.
Response: Applicant intends to offer bakery goods under the BREAKFAST
THINS mark, but at this time, Applicant is unable to provide additional
information about the goods it intends to offer under the mark, as Applicant is
still developing the products.
III. Conclusion
In light of the above remarks, and in light of the fact that the Examiner has found
no similar registered or pending marks which would bar registration under § 2(d),
Applicant respectfully requests that the Examiner pass the Subject Application for
publication.
Respectfully submitted,
BIMBO HUNGRIA Zrt
Dated: December 13, 2010 By: /Joshua S. Frick/
Scott J. Slavick
Joshua S. Frick
BRINKS HOFER GILSON & LIONE
P.O. Box 10395
Chicago, Illinois 60610
Telephone: 312-321-4200
Facsimile: 312-321-4299
Attorneys for Applicant
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