Attorney Docket No. 33127T-0O4600US
`
`CERTIFICATE OF MAILING
`
`Date of Deposit: December 27, 2006
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`I hereby certify that this paper or fee is being deposited with the United
`States Postal Service by “First Class Mail” service under 37 CFR 1.8 on
`the date indicated above and is addressed to the Commissioner for
`Trademarks, P.O. Box 1451, Alexandria. VA 22313-1451.
`
`TOWNSEND AND WN
`
`By:
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`5 7
`
`l% E
`
`ois M.
`
`imon
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`/
`
`NQ,CREW LLP
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re application of:
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`TM Attorney: Russ Herman
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`Williams-Sonoma, Inc.
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`Serial No. 76/542,867
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`
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`Filed: September 8, 2003
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`For: PEPPERMINT BARK
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`Law Office: 101
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`NOTICE OF APPEAL
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`
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`Commissioner for Trademarks
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`P.O. Box 1451
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`Alexandria, VA 22313-1451
`
`Dear Madam:
`
`Applicant hereby appeals to the Trademark Trial and Appeal Board from the decision of
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`the Examining Attorney dated June 27, 2006, finally refusing registration of the above-identified
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`mark.
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`Concurrent with the filing of this Notice of Appeal, Applicant has filed a Request for
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`Reconsideration and provides a courtesy copy with this Notice of Appeal.
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`12-29-2006
`US. Patent & TMOfc/TM Mail Rcpt Dr #2-
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`2
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`gvl
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`Attorney Docket No. 33 l 27T-O04600US
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`Serial No. 76/542,867
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`Please direct all correspondence in this appeal to:
`
`Anthony J. Malutta, Esq.
`Marie C. Seibel, esq.
`TOWNSEND AND TOWNSEND AND CREW LLP
`
`Two Embarcadero Center, 8th Floor
`
`San Francisco, California 94111
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`Telephone: (415) 576-0200
`Facsimile: (415)576-0300
`email: ajmalutta@townsend.com, mcseibel@townsend.com
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`REQUEST FOR SUSPENSION
`
`As Applicant has filed a Request for Reconsideration, Applicant respectfully requests that
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`this Appeal be suspended pending the Examining Attomey’s review of the Request for
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`Reconsideration.
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`AUTHORIZATION TO CHARGE DEPOSIT ACCOUNT
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`Please charge the fee of $100.00 to the Deposit Account of Townsend and Townsend and
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`Crew LLP, No. 20-1430. Please charge any additional fees that may be due, or credit any
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`overpayment, to our Deposit Account No. 20-1430.
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`Respectfully submitted,
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`TOWNSEND and TOWNSEND and CREW LLP
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`/7/at _,/:5’
`
`Anthony J. Malutta
`Marie C. Seibel
`
`Attorneys for Applicant
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`Dated: December 27, 2006,
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`Two Embarcadero Center, 8"‘ Floor
`San Francisco, CA 94111-3834
`
`Telephone:
`Facsimile:
`
`(415) 576-0200
`(415) 576-03 00
`
`Attachment
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`

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`TRADEMARK
`
`Attorney Docket No. 33l27T-004600US
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`CERTIFICATE OF MAILING
`
`Date of Deposit: December 27,2005
`
`I hereby certify that this paper or tee is being deposited with the United
`States Postal Service by “First Class Mail" service under 37 CFR 1.8 on
`the date indicated above and is addressed to the Commissioner for
`Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
`
`TOWNSEND A I
`
`END AND CREW LLP
`'
`/
`
`By:
`
`‘ M4/La?/L
`Lois M. Simon
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of:
`
`Wi1liams—Sonoma, Inc.
`
`Mark: PEPPERMINT BARK
`
`
`
`Serial No. 76/542,867
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`Filed: September 8, 2003
`
`TM Attorney: Russ Herman
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`Law Office: 101
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`REQUEST FOR RECONSIDERATION OF
`FINAL REFUSAL [37 C.F.R. §2.64(b)]
`
`APPEAL DATE: December 27, 2006
`
`Commissioner for Trademarks
`PO. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Madam:
`
`This Request for Reconsideration is responsive to the Examining Attomey’s
`
`final Office Action dated June 27, 2006. That Office Action has been reviewed in depth,
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`and this Response is intended to address the points raised by the Examining Attorney and
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`place the application into condition for publication.
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`Applicant respectfully submits that the Examining Attorney has not met his
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`

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`I
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`Serial No. 76/542,867
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`Attorney Docket: 33127T-004600US
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`burden of proving that Applicant’s mark is generic, whereas Applicant has established a
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`primafacie case of acquired distinctiveness. Refusal to register the PEPPERMINT
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`BARK mark should be withdrawn and registration should be permitted on the
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`Supplemental Register.
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`1.
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`PEPPERMINT BARK IS NOT GENERIC
`
`A.
`
`The PTO Has Not Met Its Burden Of Proof; There Is No Clear Evidence
`That The Mark Is Generic
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`Even if Applicant’s argmments and evidence were insufficient (which they are not),
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`registration should issue because the Examining Attorney has failed to meet his evidentiary
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`burden by establishing that the mark sought to be registered is generic for the goods described in
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`the application. See In re NICITIII Lmch, 4 U.S.P.Q.2d 1141, 1 143 (Fed. Cir. 1997). Moreover,
`
`the Examining Attorney is required to make a substantial showing that the matter at issue is
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`clearly generic. E. The evidence relied on by the Examining Attorney is often flawed, and fails
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`to prove Applicant’s PEPPERMINT BARK mark is generic.
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`1.
`
`References Cited By The Examining Attorney Are Subsequent T0,
`And Result From, Applicant’s Long—Standing Use Of PEPPERMINT
`BARK As A Mark, In Which Applicant Has Established A Prima
`Facie Case Of Acquired Distinctiveness
`
`Applicant first began use of the PEPPERMINT BARK mark in commerce at least as
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`early as October 1999. Since then, the mark has consistently appeared in Applicant’s catalogs,
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`tens of millions of which are distributed to U.S. consumers every holiday season. See
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`Declaration of Christine Amatruda (hereinafter, “Amatruda Decl.”), 1] 1, attached hereto. Since
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`its introduction, Applicant’s PEPPERMINT BARK product has attained several million dollars
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`of sales each year, all made under the PEPPERMINT BARK mark. Id. at 1] 3. Since 1999,
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`

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`i
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`‘
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`I
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`Serial No. 76/542,867
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`Attorney Docket: 33 1 27T—0O4600US
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`Applicant’s PEPPERMINT BARK confection has also been prominently featured on
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`Applicant’s heavily trafficked website, which includes key placements on Applicant’s home
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`page. Id. at 1| 6. Further, the PEPPERMINT BARK product has been promoted through large
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`point-of-sale displays in Applicant’s stores, of which there are over 250 located in leading
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`shopping destinations throughout the U.S. Id. at 1.
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`In both the present Office Action, and those issued previously in regard to the instant
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`application, the Examining Attorney has referenced the appearance of the phrase
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`“PEPPERMINT BARK” in excerpted articles. However, given the pervasiveness of Applicant’s
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`candies it is not clear from the excerpted references whether the cited uses of the
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`“PEPPERMINT BARK” term refer to Applicant’s goods (which several references clearly do) or
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`not. The overwhelming majority of references cited by the PTO occur after applicant’s adoption,
`
`and extensive promotion, of the mark. Given the popularity of Applicant and its goods, the
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`subsequent appearance of references to “PEPPERMINT BARK” cannot be considered
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`convincing evidence of genericness. Thus, the PTO’s evidence fails to prove that the cited
`
`references to the term Applicant’s PEPPERMINT BARK do not refer to Applicant’s goods and
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`services.
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`As an example, consider just one reference cited in the June 6, 2005 Office Action, in
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`which the website author refers to paying “$20 for a pound of peppermint bark” in a “fancy
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`store,” which she attempts to duplicate. This is clearly an allusion to Applicant’s well—known
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`PEPPERMINT BARK product, and a lone consumer’s attempt to duplicate a product found at
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`Applicant’s stores cannot be considered as evidence of the alleged generic nature of Applicant’s
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`I
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`Serial No. 76/542,867
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`Attorney Docket: 33127T—004600US
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`mark. Thus, on the face of it, the Examining Attorney has produced no evidence that the mark,
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`when considered in its entirety, is clearly the generic term for Applicant’s goods.
`
`2.
`
`Several References Relied Upon By The PTO Cannot Serve As
`Evidence Or Are Redundant
`
`A number of references identified by the PTO to support its claims that PEPPERMINT
`
`BARK is descriptive and/or generic cannot serve as evidence, since these references appear in
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`foreign publications and refer to use of the term outside of the U.S. Consider, for instance,
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`reference 31 in the June 27, 2006 Office Action (Queensland, Australia), reference 25 in the
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`November 29, 2005 Office Action (Ottawa, Canada), and reference 16 in the November 4, 2004
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`Office Action (Montreal, Quebec).
`
`Moreover, the number of references identified by the PTO is somewhat misleading, as
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`some articles appear more than once. As just one example, consider references 3 and 4 in the
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`June 27, 2006 Office Action, which refer to the same Tulsa, Oklahoma article.
`
`3.
`
`Evidence Cited By The PTO Rarely Considers The Term
`PEPPERMINT BARK As A Whole
`
`In evaluating alleged genericness, a mark should not be dissected into its component parts
`
`but rather should be considered as a whole. See Committee for Idaho’s High Desert v. Yost, 39
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`U.S.P.Q.2d 1705, 1710 (9th Cir. 1996) (“Plaintiffs mark is a composite term, and its validity is
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`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”); Application of Chesapeake Copp. of Virginia, 420 F.2d
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`754 (C.C.P.A. 1970).
`
`It follows, therefore, that even if words are singly descriptive or generic,
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`their combination may create a composite that is nondescriptive. TMEP §l209.01(b)(4). See
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`Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 21 U.S.P.Q.2d 1641 (5th Cir. 1992)
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`

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`Serial No. 76/542,867
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`Attorney Docket: 3 3127T-004600US
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`(combination of the two generic terms “pig” and “sandwich” results in a non-generic composite).
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`See also Beer Nuts v. Clover Club Foods Co. 711 F.2d 934 (10th Cir. 1983) (“Beer nuts” held
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`not generic); Schmidt v. Quigg, 226 U.S.P.Q. 518 (E.D. Mich 1985) (“Honey baked ham” held
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`not generic).
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`Although it is permissible to separately view the component parts as a preliminary step,
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`“the ultimate determination is made on the basis of the mark in its entirety.” See In re Occidental
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`Petroleum Corp, 193 U.S.P.Q. 732 (T.T.A.B. 1976). Applicant notes that the Examining
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`Attorney has collapsed this process, parsing the mark and then finding each part to be generic.
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`The Examining Attorney has seemingly disregarded the anti-dissection rule by looking only at
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`each element of the mark “separated and considered in detail.” See Estate of P.D. Beckwith Inc. '
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`v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920).
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`Of the references cited in the most recent Office Action, an overwhelming number refer
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`to the term “bark candy,” and not to the term “PEPPERMINT BARK,” or even merely the tenn
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`“bark.” For example, consider the following references: 3, 4, 9, 14, 15, 26, 27, 31, 34, 40, 41, 42,
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`44, 47. As such, this evidence fails to show that the mark, when considered in its entirety, is
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`clearly the generic term for Applicant’s goods.
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`4.
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`Any Doubts Must Be Resolved In Favor Of Applicant
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`Finally, any doubt on the issue of whether Applicant’s mark is generic must be resolved
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`in Applicant’s favor. See In re Waverly, 27 U.S.P.Q.2d 1620, 1624 (T.T.A.B. 1993). Since the
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`materials submitted by the Examining Attorney are not persuasive that Applicant’s mark is
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`generic, registration should be allowed. See In re Federated Department Stores, Inc., 3
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`U.S.P.Q.2d 1541, 1543 (T.T.A.B. 1987) (THE CI-IILDREN’S OUTLET allowed registration
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`

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`Serial No. 76/542,867
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`Attorney Docket: 33127T-O04600US
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`under 2(f) for retail children’s clothing store services).
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`B.
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`A District Court Has Already Considered This Issue And Declined To Rule
`That PEPPERMINT BARK Is Generic For Applicant’s Goods
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`In Williams-Somoma Inc. v. West Coast Confections, Case No. C-03-4716 EDL (N .D.
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`Cal. 2004), United States Magistrate Judge Elizabeth Laporte considered whether Applicant’s
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`PEPPERMINT BARK mark was generic. In that litigation, the defendant alleged that
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`PEPPERMINT BARK was generic, and therefore not entitled to trademark protection.
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`Magistrate ludge Laporte disagreed, and in her Order Denying Defendant’s Motion to Dismiss,
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`she found that not only had Applicant sufficiently alleged that PEPPERMINT BARK was not
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`generic, but that Applicant’s conclusion of non-genericness was “reinforced by the dictionary
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`definitions of which the Court took judicial notice.”
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`copy of the Order is attached as Exhibit
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`A. Magistrate Judge Laporte subsequently denied the defendant’s motion to dismiss based on
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`the alleged genericness of Applicant’s PEPPERMINT BARK mark.
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`C.
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`The Primary Significance Of PEPPERMINT BARK To The Relevant Public
`Is As A Source Indicator, Not A Category Of Goods
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`Applicant’s mark is a compound word comprised of the terms “peppermint” and “bark.”
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`The Examining Attorney refuses registration on the basis that these terms are generic and have
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`no trademark significance. However, the correct test for genericness, as set forth in Marvin
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`Ginn, is whether (1) the mark sought to be protected in its entirety represents the genus or
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`category of goods in question and (2) that the public refers to Applicant’s mark as such. See fl_.
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`Marvin Ginn Corporation v. International Association of Fire Chiefs, 782 F. 2d 987, 989-990
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`(Fed. Cir. 1986). Further, as the Examining Attorney notes, generic jurisprudence “revolves
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`around the primary significance test, which inquires whether the primary significance of a term
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`Serial No. 76/542,867
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`Attorney Docket: 3 3127T-004600US
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`in the minds of the consuming public is the product or the producer.” As explained, the
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`Examining Attorney has not provided clear evidence to support that the PEPPERMINT BARK
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`mark is generic, or that the primary significance of the term is as a generic indicator of the goods,
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`and not the source.
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`1.
`
`A Compound Word With A Plain Meaning Different From Its
`Constituent Terms May Not Be Proven Generic
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`Where a compound word may have a plain meaning different from its constituent terms,
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`the compound word may not be proven generic. See In re American Fertility Society, 51
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`U.S.P.Q.2d 1832, 1836 (Fed. Cir. 1999). Here, the compound word “PEPPERMINT BARK”
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`creates a different commercial impression than the meaning suggested by the Examining
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`Attorney. Even considered separately, neither the PEPPERMINT nor the BARK terms can be
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`seen as merely descriptive—let alone generic—of Applicant’s goods.
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`As set forth in Applicant’s prior Office Action responses, the individual tenns of the
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`PEPPERMINT BARK mark can be interpreted to mean a multitude of things by consumers.
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`“BARK,” for instance, can mean any of the following: to speak in a curt loud and usually angry
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`tone; a small sailing ship; the sound made by a barking dog; or the tough exterior covering of a
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`woody root or stem. Notably, the meaning the Examining Attorney proffers for BARK is not
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`generally recognized, as shown in the attached dictionary excerpts in Exhibit B. Presumably,
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`such a little known word could hardly be the “primary significance” of the term, as required
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`under trademark law. Likewise, “PEPPERMINT” also has several possible meanings. Multiple
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`meanings for both words makes it exponentially more difficult for consumers to relate any one
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`particular meaning to the composite term.
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`Serial No. 76/542,867
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`Attorney Docket: 33 1 27T-004600US
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`If consumers were, however, to ascribe a meaning to the composite term, they would be
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`more than likely to make the same assumption the Examining Attorney did in the initial Office
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`Action, dated March 24, 2004. In that Office Action, the Examining Attorney concluded that if
`7!,
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`Applicant’s goods were “processed from the ‘bark’ of the ‘peppermint plant,
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`the mark would
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`be descriptive. As Applicant has already indicated, such is not the case. The Examining
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`Attomey’s subsequent identification of references using the tenn PEPPERMINT BARK merely
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`reflects the increased occurrence of the term due to Applicant’s long term-use of the mark in
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`conjunction with its goods and Applicant’s extensive marketing efforts relating thereto.
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`2.
`
`Contrary To The Examining Attorney’s Assertions, There Are
`Commonly Used Alternatives For the Term PEPPERMINT BARK
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`The Examining Attomey’s conclusion that the PEPPERMINT BARK mark is generic
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`relies upon his assumption that there does not appear to be a commonly used alternative that
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`effectively communicates the same functional information. Applicant disagrees on this point, as
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`there are a number of terms, other than PEPPERMINT BARK, that refer to the genus of goods
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`similar in nature to Applicant’s PEPPERMINT BARK product. Just a handful of these terms
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`are shown in the attached evidence in Exhibit C, and include “White Chocolate Mint Candy,”
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`“White Chocolate Mint Christmas Candy,” “Peppermint Chocolate,” “Peppermint Brittle,”
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`“Peppermint Candy,” and “White Christmas Candy.” Therefore, affording Applicant trademark
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`rights in a term in which it has established acquired distinctiveness can hardly serve to prevent
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`others from making and referring to similar goods.
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`

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`I’
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`.
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`Serial No. 76/542,867
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`Attorney Docket: 33127T-004600US
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`II.
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`IT IS INCONSISTENT AND WRONG TO DENY REGISTRATION OF
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`PEPPERMINT BARK WHEN NUMEROUS “PEPPERMINT” AND “BARK”
`REGISTRATIONS EXIST FOR LIKE GOODS
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`Certainly, the decisions of numerous Examining Attorneys to register other
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`“PEPPERMINT” and “BARK” marks for goods akin to those provided by Applicant is
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`convincing evidence that Applicant’s mark is not generic. The following chart summarizes
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`examples of relevant registrations, and includes several registrations belonging to Applicant
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`(bolded). Notably, Applicant has two existing registrations for PEPPERMINT BARK on the
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`Principal Register, Registration Nos. 2758725 and 2785972. See Exhibit D, printouts of relevant
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`registrations from the Office’s online database.
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`
`
`
`
`
`
`
`
`
`2945581
`
`Principal
`
`2804152
`
`Principal
`
`2587962
`
`Principal
`
`3121157
`
`Principal
`
`
`
`BARK
`
`BARK
`
`BURSTS
`
`CHEWZ
`
`
`PEPPERMINT
`Candy bars, (chocolate); Chips,
`
`CREMES
`(chocolate); Chocolate candies;
`Chocolate chips in Class 30
`White mint ice cream with chocolate
`flakes and mini chocolate mint patties in
`Class 30
`
`
`
`
`
`PEPPERMINT
`PASSION
`
`
`
`Candy made with birch syrup candy
`pieces embedded in white chocolate in
`Class 30
`
`
`
`
`Confections, namely candy and candy
`bars in Class 30
`
`
`
`Chocolate candy in Class 30
`
`PONIES
`
`SNAPS
`
`BIRCH BARK
`
`
`
`CHIPPERS THE
`BARK WITH A
`BITE
`
`REINDEER BARK
`
`

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`0
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`Serial No. 76/542,867
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`Attorney Docket: 33127T-004600US
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`
`
`3109102
`
`
`
`
`Principal
`
`Mark
`VANILLA
`ALMOND BARK
`
`YOU CAN ’T BITE
`A BETTER BITE
`
`Goods
`Frozen confections in Class 30
`
`Candy in Class 30
`
`
`
`
`3039031
`Principal
`
`
`If “PEPPERMINT” and “BARK” are repeatedly registrable for other products, it is
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`inconsistent and wrong to deny registration of Applicant’s PEPPERMINT BARK mark for its
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`goods.
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`III.
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`Conclusion
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`Based on the above, the Examining Attorney has not met his burden of proving that
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`Applicant’s mark is generic. Furthermore, Applicant’s mark functions as a trademark as applied
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`to the goods and Applicant has established a primafacie case of sufficient distinctiveness for
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`amendment to the Supplemental Register. Accordingly, Applicantlrespectfully requests that the
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`Examining Attorney withdraw his final refusal and allow the instant application to proceed to
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`publication. If a telephone conversation would be appropriate to further the prosecution of this
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`application, please telephone the undersigned.
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`Respectfully submitted,
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`TOWNSEND and TOWNSEND and CREW LLP
`
`Dated: December 27, 2006
`
`By’ K
`. Anthony J. Malutta
`Marie C. Seibel
`
`Attorneys for Applicant
`
`Two Embarcadero Center, 8th Floor
`
`San Francisco, CA 94111
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`Tel. No. (415) 576-0200
`Fax No. (415) 576-0300
`60945609 VI
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`10
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`

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`

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`“ WS-WEST COAST-807
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`GSG, MAS, BMH
`
`kl!-D-L»)
`
`10
`
`ll
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`12
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`13
`
`14
`
`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`24
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`25
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`26
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`28
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`WILLIAMS-SONOMA, INC.,
`
`No. C-03—47l6 EDL
`
`Plaintiff,
`
`v.
`
`WEST COAST CONFECTIONS,
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`Defendant.
`
`ORDER DENYING DEFENDANT’S
`MOTION TO DISMISS
`
`In this trademark infringement case, Plaintiff Williams—Sonoma, Inc. contends that Defendant West
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`Coast Confections is infringing on Plaintiffs trademark of the term, “Peppermint Bark.” Peppermint Bark
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`is a type of holiday candy sold by Plaintiff. Defendant moved to dismiss pursuant to Federal Rule of Civil
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`Procedure l2(b)(6) on the grounds that Plaintiff has failed to state a claim because the term, “Peppermint
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`Bark,” is generic and therefore not entitled to trademark protection. On January 6, 2004, the Court held a
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`hearing on Defendant’s Motion to Dismiss, at which both parties were represented by counsel.
`
`DISCUSSION
`
`Under the federal notice pleading standard, a court may not dismiss a complaint for failure to state a
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`claim unless “it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim
`
`which would entitled him to relief.” Conley v. Gibson, 355 U.S. 41, 45-46 (1957); Fed. R. Civ. Proc.
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`8(a).
`In analyzing a motion to dismiss, a court must accept as true all material allegations in the complaint,
`and construe them in the light most favorable to the nonmoving party. NL Industries, Inc. v. Kaplan, 792
`
`F.2d 896, 898 (9th Cir. 1986).
`
`
`
`
`
`FortheNorthernDistrictofCalifornia
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`
`O4
`
`C
`
`To prevail on a trademark infringement claim, a plaintiff must prove the existence of a trademark
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`and the subsequent use of that mark by another in a manner likely to create consumer confusion.
`
`_S_ee_
`
`Comed III Prods. Inc. v. New Line Cinema, 200 F.3d 593, 594 (9th Cir. 2000). Defendant’s motion
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`attacks the first element of Plaintiff’ s trademark infringement claim on the ground that the term “Peppermint
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`Bar ” is generic. A generic term refers to the “genus of which the particular product is a species,” and can
`
`never be protected as a trademark. Committee for ldaho’s High Desert v. Yost, 92 F.2d 814, 821 (9th
`
`Cir. 1996); ge__a_l_s_o J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 12.57 at
`12-109 (West Group 2001). By contrast, a descriptive mark may be protected “if the registrant shows
`
`that it has acquired secondary meaning, i.e., it has become distinctive of the applicant’s goods in
`
`commerce.” Park N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985). Whether an
`
`alleged mark is generic or descriptive is a question of fact. Committee for ldaho’s High Desert, 92 F.3d at
`
`821; Films of Distinction, Inc. v. Allegro Film Prods., lnc., 12 F. Supp. 2d 1068, 1075 (C.D. Cal. 1998).
`
`Here, Plaintiff alleges that it “distinctively coined” the term “Peppermint Bark,” and that it has
`
`applied for a trademark registration. SE Compl.1Hl 6, 12. Plaintiff alleges that since 1999, it has
`
`advertised, marketed and sold, through its retail stores, catalogs and websites, its Peppermint‘Bark
`
`products. S53 Compl. 1] 7. Plaintiff alleges that “tens of millions” of catalogs are delivered to consumers
`
`every holiday season and that the Peppermint Bark products have attained several million dollars of sales
`
`each year.
`
`I_d_. Plaintiff further alleges that “as a result of these marketing and sales efforts, consumers have
`
`come to strongly and secondarily associate Peppennint Bark trademark with Williams-Sonoma and its high
`
`quality candy products.” I; Plaintiff also alleges that Defendant is using the “Peppermint Bark” name to
`
`sell candy at another retailer’s stores and that those sales are likely to cause consumer confusion. E 1‘;
`
`111] 14, 15.
`
`In light of the liberal standard for notice pleading, Plaintiffs allegations in the complaint are suflicient
`
`to state a claim for trademark infringement. S_ec_: Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th
`
`Cir. 1990) (finding that a motion to dismiss would be appropriate if a complaint suffered from an “absence
`
`of sufficient facts alleged under a cognizable legal theory.”). Taking the allegations in the complaint as true,
`
`as the Court must do on a motion to dismiss, Plaintiff has sufficiently alleged that Peppermint Bark is not
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`generic, i.e., that it has acquired a secondary meaning and that its primary significance to the relevant public
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`FortheNorthernDistrictofCalifornia
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`UnitedStatesDistrictCourt
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`O”
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`O
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`is to identify Plaintiff as the source of Peppermint Bark. This conclusion is reinforced by the dictionary
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`definitions of which the Court took judicial notice.
`
`Defendant raises a serious issue as to whether “Peppermint Bark” is generic, and has offered some
`
`support for that view in the documents that it requested be judicially noticed. Nonetheless, the question is
`
`not one that should be decided at the pleading stage. As Defendant conceded at the hearing, it could not
`
`locate a single case in which the issue of whether a mark is generic was decided on the pleadings.
`Accordingly, Defendant’s Motion to Dismiss (docket number 8) is denied.
`
`REQUESTS FOR JUDICIAL NOTICE
`
`With its motion, Defendant seeks judicial notice of: (1) Plaintiff's trademark application; (2) results
`
`of Google.com search on “Peppermint Bark;” (3) a Peppermint Bark recipe; (4) Plaintiff’s website
`
`regarding peppermint bark; and (5) Plaintiff’s catalog regarding peppermint bark. Plaintiff does not oppose
`judicial notice of its trademark application, but does oppose the remainder of Defendant’s requests. 1
`
`Plaintiff's request for judicial notice of dictionary entries from two dictionaries defining the term “bark” is
`
`unopposed.
`
`A judicially noticed fact “must be one not subject to reasonable dispute in that it is either (1)
`
`generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready
`
`determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
`
`20l(b). Plaintiff’s request for judicial notice is granted because the dictionary definitions Plaintiff provided
`
`are not subject to reasonable dispute as provided in Federal Rule of Evidence 20l(b). A court may also
`
`properly consider material submitted as part of the complaint and take judicial notice of documents referred
`
`to in the complaint or which form the basis for the complaint. $5: Hal Roach Studios v. Richard Feiner &
`
`_C_o,, 896 F.2d 1542, 1554 n. 19 (9th Cir.l990) (material submitted as part of the complaint);L
`
`South Bay Beer Distribs., Inc., 798 F.2d 1279, 1282 (9th Cir.1986) (judicial notice), abrogated on other
`
`grounds, Astoria Federal Sav. and Loans Ass'n v. Solimino, 501 U.S. 104 (1991). Defendant’s request
`
`for judicial notice of Plaintiffs trademark application, the Go0gle.com results and the recipe is granted
`
`because those documents are not subject to reasonable dispute as provided in Rule 20l(b). Defendant’s
`
`request for judicial notice of Plaintiff’s website and catalog is granted because these documents are referred
`
`to in Plaintiffs complaint and are central to Plaintiff” s allegation that “Peppermint Bark” has acquired a
`
`IN)
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`.51.»)
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`FortheNorthernDistrictofCalifornia
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`

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`FortheNonhemDistrictofCalifornia
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`secondary meaning.
`
`Dated: January 7, 2004
`
`1
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`I\)
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`459-3
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`/electronic signature authorized/
`ELIZABETH D. LAPORTE
`
`United States Magistrate Judge
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`24
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`l\) \I
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`UnitedStatesDistrictCourt
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`

`
`. bark 1.TheAmericanHcritage®Dictionaryofthe Englishwe FourthEdition. 2000.
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`Choose Degree Program
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`Reference > American Heritage@ > Dictionam
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`«( barium sulfate
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`barkZ )
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`CONTENTS - INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`hark‘
`
`PRONUNCIATION:
`
`5:] béirk
`
`NOUN: 1. The harsh sound uttered by a dog. 2. A sound, such as a cough, that is similar to
`a dog's bark.
`
`VERB:
`
`Inflected fonns: barked, bark-ing, barks
`
`INTRANSITIVE 1. To utter a bark. 2. To make a sound similar to a bark: “The birds bark softly,
`VERB3 sounding almost like young pups ” (Charleston SC News and Courier). 3. To speak
`sharply; snap: “a spot where you can just drop in .
`.
`. without anyone’s barking at
`you forfailing to plan ahead" (Andy Birsh, Gourmet 5/89). 4. To work as a
`barker, as at a carnival.
`
`TRANSITIVE To utter in a loud, harsh Voice: The quarterback barked out the signals.
`VERB:
`
`IDIOM: bark up the wrong tree To misdirect one's energies or attention.
`
`ETYMOLOGY: From Middle English berken, to bark, from Old English beorcan.
`
`The American Heritage® Dictionary of the English Language, Fourth Edition. Copyright © 2000 by Houghton Mifflin Company.
`Published by the Houghton Mifflin Company. All rights reserved.
`
`CONTENTS - INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`E barium sulfate
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`

`
`bark2.TheAmericanHcritage®Dictionary ofthe Englishfiet FourthEdition. 2000.
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`' .
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`Reference > American Heritag§@ > Dictionary
`<__bark1_l
`
`CONTENTS ' INDEX - ILLUSTRATIONS ° BIBLIOGRAPHIC RECORD
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`lbarlkl
`
`PRONUNCIATION:
`
`(4 béirk
`
`NOUN: 1. The tough outer covering of the woody stems and roots of trees, shrubs, and
`other woody plants. It includes all tissues outside the vascular Cambium. 2. A
`specific kind of bark used for a special purpose, as in taming or medicine.
`
`TRANSITIVE Inflected forms: barked, bark-ing, barks
`VERB3 1. To remove bark from (a tree or log). 2. To rub off the skin of; abrade: barked my
`shin on the car door. 3. To tan or dye (leather or fabric) by steeping in an infusion
`of bark. 4. To treat (a patient) using a medicinal bark infusion.
`
`ETYMOLOGY: Middle English, from Old Norse bérkr.
`
`OTHER FORMS: bark'y —-—ADJECTIVE
`
`The American Heritage® Dictionary ofthe English Language, Fourth Edition. Copyright © 2000 by Houghton Mifflin Company.
`Published by the Houghton Mifflin Company. All rights reserved.
`
`CONTENTS - INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
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`bark3.The AmericanHeritage® Dictionary oftheEnglislige: Fourth Edition. 2000.
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`Reference > American Heritage@ > Dictionary
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`«{ barkZ
`
`bark beetle )
`
`CONTENTS - INDEX - ILLUSTRATIONS ' BIBLIOGRAPHIC RECORD
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`ha.rl<;3
`
`PRONUNCIATION: 4 bark
`
`VARIANT FORMS: also barque
`
`NOUN: 1. A sailing ship with from three to five masts, all of them square-rigged except the
`after mast, which is fore-and—aft rigged. 2. A small vessel that is propelled by oars
`or sails.
`
`ETYMOLOGY: Middle English barke, boat, from Old French barque, from Old Italian barca, from
`Latin.
`
`The American Heritage® Dictionary ofthe English Language, Fourth Edition. Copyright © 2000 by Houghton Mifflin Company.
`Published by the Houghton Mifflin Company. All rights reserved.
`
`CONTENTS - INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
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`bark beetle
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`Online.’_‘ictionary forFrenchEnglish,SpanishEnglish,Italianvndmore.
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