Response to Disclaimer Requirement

In the Office action dated July 6, 2009, the examining attorney requested a disclaimer of

the term “PENNSYLVANIA DUTCH” because it allegedly describes a feature of Applicant’s

goods, namely carbonated beverages. Applicant respectfully disagrees. As discussed below, the

term “PENNSYLVANIA DUTCH” is not merely descriptive, and reconsideration of the

disclaimer requirement is respectfully requested.

Merely descriptive terms are not registrable on the Principal Register without a showing

of acquired distinctiveness because all sellers should be free to use words in the public domain to

describe their merchandise and services. Application of Colonial Stores, Inc., 157 U.S.P.Q. 382

(C.C.P.A. 1968). When a term merely describes the goods offered, exclusive trademark rights in

such term cannot be obtained. To be characterized as “merely descriptive” a term must directly

and immediately convey some reasonably accurate or tolerably distinct knowledge of the

characteristics of the products. Blisscraft of Hollywood v. United Plastics Co., 131 U.S.P.Q. 55

(2d Cir. 1961). The foregoing guidelines establish that the term “PENNSYLVANIA DUTCH”

is not merely descriptive of Applicant’s goods and therefore, the disclaimer requirement should

be withdrawn.

Applicant, and its predecessors in interest, have used the PENNSYLVANIA DUTCH

mark in commerce in connection with the sale and marketing of beverages for over 50 years, and

have owned numerous registrations for the mark dating back to 1969. All of these registrations

were granted on the Principal Register, and do not include a Section 2(f) claim or a disclaimer of

the term PENNSYLVANIA DUTCH (see TESS printouts of inactive Registrations Nos. 874,787

and 2,222,832 attached as Exhibit 1, and TESS printouts of active Registrations Nos. 1,642,214

and 3,657,750 attached as Exhibit 2). In addition, earlier this year Applicant applied for

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registration of another PENNSYLVANIA DUTCH and Design mark in Class 32 under

Application Serial No. 77/651,408. Although Applicant eventually abandoned this application,

no disclaimer of the term PENNSYLVANIA DUTCH was required by the examining attorney

(see Exhibit 3). Applicant submits that the instant application for the PENNSYLVANIA

DUTCH and Design mark should not be treated any differently than the five aforementioned

marks.

“The purpose of a disclaimer is to permit the registration of a mark that is registrable as a

whole but contains matter that would not be registrable standing alone, without creating a false

impression of the extent of the registrant’s right with respect to certain elements in the mark.”

T.M.E.P. § 1213. Clearly, the term PENNSYLVANIA DUTCH is registrable standing alone, as

evidenced by Applicant’s active registrations for the word mark (as discussed above). Therefore,

registration of Applicant’s PENNSYLVANIA DUTCH mark in combination with additional

design elements will not create a false impression of the extent of Applicant’s rights. A

disclaimer is simply not warranted in the instant case.

Furthermore, in addition to Applicant’s marks, there are four active third-party

registrations on record for marks which include the term “PENNSYLVANIA DUTCH.” These

third-party marks are all registered on the Principal Register, do not include Section 2(f) claims

or disclaimers of the wording “PENNSYLVANIA DUTCH.” Below is a summary of these

registrations (and corresponding TESS printouts are attached as Exhibit 4):

Trademark Registration No. Owner Goods
PENNSYLVANIA 3,513,308 Chatam International Prepared alcoholic
DUTCH BRANDIED Incorporated cocktail
APPLE CIDER
ORIGINAL 1,300,868 Chatam International Liqueur
PENNSYLVANIA Incorporated
DUTCH

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Trademark Registration No. Owner Goods
HERR’S 1,460,244 Herr Holdings, Inc. Potato chips
PENNSYLVANIA
DUTCH STYLE
POTATO CHIPS and
Design
STROEHMANN 1,727,945 SB NY INC. Bakery products
PENNSYLVANIA
DUTCH BAKERS

The existence of the aforesaid registrations reinforces the fact that the U.S. Patent and

Trademark Office does not consider the term “PENNSYLVANIA DUTCH” to be merely

descriptive of food and beverage products.

In support of her position that the term “PENNSYLVANIA DUTCH” is merely

descriptive of the applied-for goods, the examining attorney offered several internet printouts

which reference the term “Pennsylvania Dutch.” Applicant submits, however, that this evidence

is insufficient to support that the term “PENNSYLVANIA DUTCH” is merely descriptive of

carbonated beverages. As stated above, to be characterized as “merely descriptive” a term must

directly and immediately convey some reasonably accurate or tolerably distinct knowledge of the

characteristics of the products. Blisscraft of Hollywood v. United Plastics Co., 131 U.S.P.Q. 55

(2d Cir. 1961). In the instant case, the term “PENNSYLVANIA DUTCH” does not directly and

immediately convey any knowledge about Applicant’s beverage products. There is no

relationship between the term “PENNSYLVANIA DUTCH” and soda.

First, the examining attorney provided a dictionary definition of “Pennsylvania Dutch”

which identifies the term as referring to German and Swiss immigrants in the State of

Pennsylvania. This definition does not reference a type or style of beverages or a feature of

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Applicant’s goods. Moreover, the examiner has not provided any evidence which shows that

consumers associate the Pennsylvania Dutch people with carbonated beverages.

Second, the examining attorney provided Google search results for “Pennsylvania Dutch”

recipes. While this search may have returned a large number of hits, the search included more

than just the allegedly descriptive terms, namely, the word “recipe.” A search for any “recipe” is

likely to result in a large number of hits.

Further, Applicant submits that the websites pertaining to the recipes do not provide any

evidence of a relationship between “PENNSYLVANIA DUTCH” and carbonated beverages.

Many of the highlighted terms in these printouts refer to only the term “Dutch” with no mention

of the term “Pennsylvania Dutch.” The listings for Dutch recipes are unrelated to the

Pennsylvania Dutch people and Applicant’s PENNSYLVANIA DUTCH and Design mark. One

of the websites, namely, www.berksweb.com, contains the word “Pennsylvania” alone. The

website appears to be a list of recipes from a woman who lives in Berks County, Pennsylvania.

Clearly a recipe collection from an individual who lives in Pennsylvania cannot support the

conclusion that the wording “PENNSYLVANIA DUTCH” is related to anything, let alone

carbonated beverages. Even though some of the websites cited by the examining attorney do

refer to Pennsylvania Dutch recipes, there are no references to carbonated beverages.

For all of the foregoing reasons, the term PENNSYLVANIA DUTCH is not merely

descriptive of Applicant’s goods. Thus, Applicant respectfully requests that the examining

attorney withdraw the disclaimer requirement and approve the PENNSYLVANIA DUTCH and

Design mark for publication.

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