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 Applicant’s

BREAKFAST THINS trademark, U.S. Application Serial No. 77/798,540 (the “Subject

Application”) on the ground that the mark is merely descriptive of Applicant’s goods;

and (2) requests additional information regarding Applicant’s mark and goods.

I. Applicant’s BREAKFAST THINS Mark is Suggestive of Applicant’s Goods and
Entitled to Registration on the Principal Register

A. Background

The Examiner has refused registration of Applicant’s 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 Applicant’s

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.

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Applicant is an affiliate of BBU, Inc., a leading provider of bakery products with an extensive portfolio of
brands, including ARNOLD, OROWEAT, MRS BAIRD’S, BIMBO, BOBOLI, THOMAS’, and
ENTENMANN’S. 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), aff’d 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 customer’s 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

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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

Competitor’s Need Test; and (3) the Competitor’s Use Test. Id. Applicant submits that

its BREAKFAST THINS mark is suggestive under each of these tests.

Additionally, the suggestive nature of Applicant’s 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

Applicant’s 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).

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In order to analyze the thought process involved in connecting Applicant’s 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, Applicant’s

BREAKFAST THINS mark is not immediately descriptive of Applicant’s products.

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Instead, upon viewing the BREAKFAST THINS mark, one must engage in a multi-step

thought process to discern a characteristic of Applicant’s bakery products. Consequently,

Applicant’s BREAKFAST THINS mark is suggestive of Applicant’s 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 Applicant’s 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 Applicant’s bakery products upon

seeing the term THINS in connection with Applicant’s bakery products.

Moreover, when viewed in its entirety, Applicant’s 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

Applicant’s 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

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this complex thought process only occurs with distinctive marks and confirms the

suggestive nature of Applicant’s 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 Applicant’s

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 Applicant’s bakery products, competitors have no need to use the mark.

Applicant’s 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, Applicant’s 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, Applicant’s 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 Applicant’s 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 Applicant’s 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

Applicant’s BREAKFAST THINS mark or any mark confusingly similar to Applicant’s

BREAKFAST THINS mark. Accordingly, Applicant’s 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 USPTO’s 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 Examiner’s 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. Applicant’s BREAKFAST

THINS mark is, at the very least, as suggestive of Applicant’s goods as the marks listed

above and should also be allowed to register.

F. Applicant’s 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.”

Applicant’s SANDWICH THINS products have been as successful line of

products for Applicant. Since Applicant’s 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.

Applicant’s 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 Applicant’s 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 Applicant’s

favor.

II. Additional Information

The issues for which the Examiner requested additional information and

Applicant’s 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 applicant’s 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 Applicant’s 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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