REMARKS

Applicant seeks to register the mark SUPERFOOD CEREAL (the “Mark”) for
“Breakfast cereals; Processed cereal-based food to be used as a breakfast food, snack food or
ingredient for making other foods; Processed cereals; Ready-to-eat cereals” in International
Class 30. The Examining Attorney has rejected the Applicant’s application on the basis that the
Mark is the generic name for the Applicant’s goods and is therefore not capable of functioning as
a trademark pursuant to Section 2(e).

For the reasons set forth below, we respectfully disagree with the Examining Attorney’s
position and submit that, while the Mark is descriptive, it is not generic. Specifically, we submit
that the Mark is not generic because (A) the term SUPERFOOD in the Mark touts certain
ingredients in Applicant’s cereals, which is a typical example of descriptiveness not genericness
(B) SUPERFOOD is a laudatory designation and laudatory terms are descriptive not generic, (C)
SUPERFOOD is not typically used as a classification of manufactured foods like Applicant’s
cereals, (D) the Examining Attorney has not satisfied the high burden of proof necessary to
demonstrate that the Mark is generic for Applicant’s goods, and (E) it would be inconsistent to
deny Applicant’s registration on the grounds of genericness because the USPTO has not
previously treated analogous SUPERFOOD-formative marks as generic.

THE APPLICANT’S MARK IS NOT GENERIC

A. SUPERFOOD is not generic for Applicant’s goods because it describes certain
ingredients, which is a feature of a descriptive term not a generic term

“A generic term is one that is commonly used as the name of a kind of goods… a
generic term merely identifies the genus of which the particular product is a species.” Liquid
Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 231 USPQ 579 (7th Cir. 1986). In other
words, a generic term is “the thing itself”. 1

In contrast, a term that “describes an ingredient, quality, characteristic, function,
feature, purpose or use of the specified goods” is merely descriptive. TMEP
§1209.01(b)(citations omitted; emphasis added).

The Examining Attorney argues, in essence, that consumers are likely to perceive
SUPERFOOD CEREALS as the name of a class of cereals which, due to high nutrient content,
are considered “superfoods”. We submit that reasonable consumers are far more likely to
interpret the Mark as indicating that the Applicant’s cereals feature various ingredients touted as
superfoods than as a classification of the cereals themselves. Interpreted in this manner, the
Mark is descriptive not generic.

The manner in which the Applicant uses a term in relation to its goods is material
in determining how a consumer is likely to perceive the term. See id. (citing In re Reed Elsevier
Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007)). Here, Applicant uses the
term SUPERFOOD to tout ingredients featured in its cereals. For example, Applicant’s
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Applicant does not dispute that the term CEREAL is generic for its goods.

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specimen of record is product packaging that prominently highlights the ingredient acai, which is
widely praised as a superfood. See Examining Attorney’s exhibit from oprah.com (acai
appearing first on the list of superfoods). Applicant’s packaging and marketing materials also
feature other similar ingredients, including cacao, bilberry, elder berry, amla berry, camu camu
fruit, maca root, mesquite pod, astragalus root, and reishi fruit. See printout from Applicant’s
website attached hereto as Exhibit A. Furthermore, Applicant’s website home page describes its
SUPERFOOD CEREAL product as “Sprouted, gluten free, dairy free and nut free cereals,
enhanced with a variety of amazing superfoods,” further reinforcing the interpretation that
SUPERFOOD in the Mark refers to particular ingredients. See Exhibit B (emphasis added).

In light of the above, a reasonable consumer is likely to perceive the Mark
SUPERFOOD CEREAL as describing cereals that feature ingredients touted as superfoods,
rather than cereal which itself is a superfood. Describing an ingredient is a paradigmatic case of
descriptiveness, not genericness.

B. SUPERFOOD is laudatory and therefore descriptive not generic

The Examining Attorney’s evidence demonstrates that SUPERFOOD is used as a
laudatory designation indicating that certain foods are particularly nutritious. See Wikipedia
article entered into evidence by the Examining Attorney (“Superfood is a term sometimes used to
describe food with a high phytonutrient content…”).

Terms that attribute quality or excellence are laudatory and are descriptive rather
than generic as a matter of law. See TMEP 1209.03(k).

C. SUPERFOOD is not a classification of Applicant’s goods

A finding of genericness requires the common use of “superfood” as a
classification of cereals. However, the Examining Attorney’s evidence does not include a single
example of a cereal product being designated a superfood based on its overall nutrition content,
let alone an example of SUPERFOOD CEREAL being used as a classification of cereals.
Rather, the evidence shows that “superfood” is a designation conferred on myriad fruits,
vegetables, nuts, grains and spices. See Examining Attorney’s exhibits from helium.com and
oprah.com (listing beans, blueberries, broccoli, oats, oranges, acai, allium, barley, buckwheat,
green foods, hot peppers, nuts, seeds, and sprouts as primary examples of superfoods).

Furthermore, the “superfood” designation is too ambiguously defined and widely-
conferred to concretely refer to a particular food product or class of food products. See
Examining Attorney’s exhibit from oprah.com (“…just about every brightly colored fruit and
vegetable fits the category of a superfood, as do nuts, beans, seeds, and aromatic and brightly
colored herbs and spices”; see also Examining Attorney’s Wikipedia exhibit (Stating “there is no
legal definition of the term [superfood] and it has been alleged that this has led to it being over-
used as a marketing tool.”). Simply put, “superfood” has not been shown to be the name for any
specific food product or any specific characteristic or grouping of characteristics beyond a
substantially ambiguous “high phytonutrient content”.

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D. The Examining Attorney has not satisfied the evidentiary burden required to refuse
registration of the Mark as generic under Section 2(e)(1)

The Examining Attorney has the burden of proving that a term is generic by clear
evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987).

In attempting satisfy the USPTO’s high burden in the present case, the Examining
Attorney has provided evidence merely supporting the proposition that “superfood” is used to
describe foods with “high phytonutrient content”. However, no evidence at all has been
provided to demonstrate that the formation SUPERFOOD [FOOD PRODUCT] is in widespread
use, let alone the generic name for any class of good. Furthermore, no evidence has been
provided to demonstrate that SUPERFOOD CEREAL is likely to be perceived by an appreciable
number of reasonably prudent consumers as the genus name for Applicant’s goods.

The evidence relied upon by the Examining Attorney is, as a matter of law,
insufficient to meet the high burden of proof necessary to reject Applicant’s mark as generic,
particularly given the substantial counter-evidence provided herein.

E. It would be inconsistent to deny Applicant’s application on grounds of genericness
because the USPTO has not previously treated the term “superfood” as generic

The USPTO has addressed other marks incorporating the term “superfood” and
treated it as descriptive rather than generic. For example, the mark SUPERFOOD SNACKS
(Reg. No. 3263762) previously cited against Applicant’s Mark2 is registered on the Supplemental
Register with a disclaimer of the term SNACKS. This indicates that the term SUPERFOOD was
deemed descriptive while the term SNACKS was deemed generic. We submit that this example
is directly analogous to Applicant’s Application and is instructive on the proper treatment
thereof. Applicant also notes that the mark SUPERFOOD CHOCOLATE (Serial No. 85003780)
is presently under examination for chocolate products and, in an Office Action dated July 2,
2010, was deemed appropriate for placement on the Supplemental Register with a disclaimer of
the term “CHOCOLATE”. A PDF of this Office Action is attached hereto as Exhibit C.

Given the USPTO’s treatment of other SUPERFOOD-formative marks it would
be consistent to permit placement of the Mark on the Supplemental Register with a disclaimer of
the term “CEREAL”.

CONCLUSION

Indeed, there is no easily applicable, objective test to determine whether or not a
particular mark, as applied to specific goods or services, is descriptive or generic. However, in
case after case, the TTAB has stated that any doubt in determining the fine line between whether
registration of an Applicant’s mark is prohibited by Section 2(e)(1) must be resolved in favor of

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We note that, by citing the SUPERFOOD SNACKS mark against Applicant’s Mark, the Examining Attorney
effectively asserted that SUPERFOOD SNACKS was entitled to at least some scope of protection. It would be
highly inconsistent to now hold that SUPERFOOD CEREAL is incapable of protection.

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the Applicant. See e.g. In re Atavio, 25 USPQ2d 1361, 1363 (TTAB 1992) (“ It is the Board’s
opinion that, as applied to the applicant’s goods, the term ATAVIO, while highly suggestive, is
not merely descriptive of the identified goods. Any doubt that we may have in reaching this
conclusion, and we frankly admit that doubt exists, is resolved in favor of the applicant, that is to
say, in favor of publication for opposition.”); In re Gourmet Bakers, Inc., 173 U.S.P.Q. (BNA)
565 (TTAB 1972) (any doubt in determining the registrability of THE LONG ONE for bread is
resolved in favor of applicant “on the theory that any person who believes that he would be
damaged by the registration will have an opportunity . . . to oppose the registration of the mark
and to present evidence, usually not present in the ex parte application, to that effect.”). For the
reasons set forth above, Applicant respectfully requests that the instant refusal be withdrawn and
that its application be permitted to register on the Supplemental Register with a disclaimer of the
term “CEREAL”.

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