Attorney Docket No. 33127T-004600USUS
`
`Certificate of Mailing
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service as first class mail in an
`
`envelope addressed to: Commissioner for Trademarks, P. O.
`Box 1451, Alexandria, VA 22313-1451 on February 15,
`2oo7.
`-
`
`i
`/_g
`hi
`xi p
`
`Charlene
`Foster
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of:
`
`TM Attorney: Russ Herman
`
`Williams-Sonoma, Inc.
`
`Law Office: 101
`
`Serial No.: '76/542,867
`
`REQUEST FOR REINSTATEMENT
`
`Filed: September 8, 2003
`
`Mark: PEPPERMINT BARK
`
`Commissioner for Trademarks
`P. O. Box 1451
`
`A1exandria,.VA 223_13-1451
`
`Madam:
`
`This is in response to the Reconsideration Letter issued on January 26, 2007.
`
`On December 27, 2006 applicant timely submitted a Request for Reconsideration, a
`
`Declaration in Support of the Request for Reconsideration, and a Notice of Appeal in response to
`
`the final Office Action issued by-the Examiner on June 27, 2006. (True and correct copies of the
`
`Request for Reconsideration and Notice of Appeal are attached hereto as Exhibits A and B,
`
`respectively.)
`
`lllllllIllllllllllllllIlllllllllllllllllllllllllll
`
`02-20-2007
`U.S. Pibml-TMO1l':JTM Mai Rq1Dt #72
`
`
`
`

`
`Attorney Docket No.:33 127T-004600US
`Serial No.: 76/542,867
`
`The confirmation postcards mailed with the Request for Reconsideration and Notice of
`Appeal were stamped and placed in the mail to applicant on December 29, 2006. (True and
`
`correct copies of the postcards are attached hereto as Exhibits C and D, respectively.)
`
`On January 26, 2007, the Examiner issued a denial of the request for reconsideration.
`
`The Examiner erroneously stated that a Notice of Appeal was not filed with the Request and
`
`declared that the application will be considered abandoned inidue course because the time for
`
`filing such a Notice had elapsed.
`
`Applicant, having submitted evidence showing that a Notice of Appeal was timely
`
`submitted, respectfully requests that the application be reinstated pursuant to TMEP §l7l2.01,
`
`and that the Notice of Appeal be deemed filed.
`
`Dated: February 15, 2007.
`
`Respectfully submitted,
`
`TOWNSEND and TOWNSEND and CREW LLP
`
`Marie C. Seibel, Esq.
`Attorneysfor Applicant
`
`Two Embarcadero Center, 8th Floor
`San Francisco, CA 94111-3834
`Telephone: (415) 576-0200
`Facsimile: (415) 576-0300
`60984445 vl
`
`

`
`

`
`
`
`...\__-~
`
`TRADEMARK
`
`Attorney Docket No. 331 27T—004600US
`
`CERTIFICATE OF MAILING
`
`Date of Deposit December 21, 2006
`
`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
`tliedatelmficatedabaveandisaddmsedtolhecoinmissioriertor
`Trademarks, P.0. Box 1451, Alexandria. VA 22313-1451.
`
`TOWNSEND
`
`By:
`
`END AND CREW LLP
`.
`/
`
`M/l»é7’L
`Lois M. Simon
`
`-
`
`IN UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPEAL DATE: December 27, 2006
`
`Williams-Sonoma, Inc.
`
`I Mark: PEPPERMINT BARK
`A
`.
`Serial No. 76/542,867
`
`Filed: September 8, 2003
`
`-
`
`TM Attomey: Russ Herman
`
`Law Office: 101
`
`-
`
`REQUEST FoR RECONSIDERATION OF
`FINAL REFUSAL [37 c.F.R. §2.64(b)]
`
`Commissioner for Trademarks
`
`_
`3 P.O. Box 1451
`3 Alexandria, VA 22313-1451
`
`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, _
`
`, and this Response is intended to address the points raised by the Examining Attorney and
`
`place the application into condition for publication.
`
`Applicant respectfully submits that the Examining Attorney has not met his
`
`

`
`Serial No. 76/542,867
`Attorney Docket: 33 1 27T-OO4600US
`
`* burden ofproving that Applicant’s mark is generic, whereas Applicant has established a
`
`primafacie case of acquired distinctiveness. Refiisal to register the PEPPERMINT
`
`, BARK mark should be withdrawnand registration should be permitted on the
`
`E Supplemental Register.
`
`I.
`
`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
`
`Even if Applicant’s arguments and evidence were insufficient (which they are not),
`
`i clearly generic.
`
`l_d. The evidence relied on by the Examining Attorney is ofien flawed, and fails
`
`E to prove Applicant’s PEPPERMINT BARK mark is generic.
`
`1.
`
`References Cited By The Examining Attorney Are Subsequent To,
`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 ofthe PEPPERMINT BARK mark in commerce at least as
`
`early as.October 1999. Since then, the mark has consistently appeared in Applicant’s catalogs,
`
`.
`
`i tens of millions of which are distributed to U.S. consumers every holiday season. See
`
`Declaration of Christine Amatruda (hereinafier, “Amatruda Decl.”), 1] 1, attached hereto. Since
`
`3 its introduction, Applicant’s PEPPERMINT BARK product has attained several million dollars
`of sales each year, all made under the PEPPERMINT BARK mark. Id. at1l 3. Since i999,
`
`

`
`
`
`Serial No. 76/542,867
`"
`Attorney Docket: 33127T-0046O0US
`
`‘ Applicant’s PEPPERMINT BARK confection has also been prominently featured on
`
`Applicant’s heavily trafficked website, which includes key placements on Applicant’s home
`
`’ page. Id. at 6. Further, the PEPPERMINT BARK product has been promoted through large
`
`point—of-sale displays in Applicant’s stores, of which there are over_250 located in leading
`
`' shopping destinations throughout the U.S. Id. at 1.
`
`In both the present Office Action, and those issued previously in regard tothe instant
`. application, the Examining Attorney has referenced the appearance ofthe phrase
`
`“PEPPERMINT BARK” in excerpted articles. However, given 'the_pei'vasiveness'of Applicant's
`
`A candies it is not clear fiom the excerpted references whether the cited uses ofthe
`
`“PEPPERMINT BARK” term refer to Applicant’s goods (which several references clearly do) or
`
`i not. The overwhelming majority ofreferences cited by the PTO occur after appli_cant’s adoption,
`
`and extensive promotion, of the mark. Given the popularity of Applicant and its goods, the
`
`subsequent appearance ofreferences to “PEPPERMINT BARK” cannot be considered
`convincing evidence ofgenericness. 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
`
`3 services.
`
`As an example, considerjust one reference cited in the June 6, 2005 Office Action, in
`
`which the website author refers to paying “$20 for a pound ofpeppermint bark” in a “fancy
`
`store,” whichshe attempts to duplicate,‘ This is clearly an allusion to Applicant’s well-known
`PEPPERMINT BARK product, and a lone consumer’s attempt_to duplicate a product found at
`
`Applicant's stores cannot be considered as eviden'ce'0f the alleged generic nature of Applicant’s
`
`

`
`Serial No. 76/542,867
`,
`Attorney Docket: 33127T-004600US
`
`mark. Thus,_ on the face ofit, the Examining Attorney has produced no evidence that the mark,
`
`i when considered in its entirety, is clearly the generic term for App1icant’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
`foreign publications and refer to use ofthe term outside ofthe U.S. Consider, for instance,
`reference 31 in the June 27, 20067 Office Action (Queensland,_Australia), reference 25 in the
`November 29, 2005 Office Action (Ottawa, Canada), and reference 16 in the November 4, 2004
`
`Office Action (Montreal, Quebec).
`
`Moreover, the number of references identified by the PTO is somewhat misleading, as
`
`,
`
`some articles appear more than once. As just one example, consider references 3 and 4.in the
`
`3 June 27, 2006 Ofiice 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
`
`, U.S.P.Q.2d 1705, .1710 (9th Cir. 1996) (“Plaintiffs mark 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”); Application of Chesapeake Cogp. of Virginia, 420 F.2d
`
`754 (C.C.P.A. 1970). It follows, therefore, that even if words are singly descriptive or generic,
`
`’ their combination may create a compositethat is nondescriptive. TMEP §l209.01(b)(4). See
`
`Texas Pig Stands, Inc. v. Hard Rock Café Int’l, Inc., 21 U.S.P.Q.2d 1641 (5th Cir. 1992)
`
`4
`
`

`
`.
`
`Serial No. 76/542,867
`Attorney Docket: 33 l27T-0046O0US
`
`' (combination ofthe two generic terms “pig” and “sandwic ” results in a non~generic composite).
`
`' See also Beer Nuts v. Clover Club Foods Co. 711 F.2d 934 (10th Cir. 1983) (“Beer nuts” held
`
`. not generic);
`
`‘ not generic).
`
`226 U.S.P.Q. 518 (E.D. Mich 1985) (“Honey baked ham" held
`
`0
`
`Although it is permissible to separately view the component parts as a preliminary step,
`
`, “the ultimate determination is made on the basisiof the mark in its entirety.” See In-re Occidental
`
`I , 193 U.S.P.Q. 732 (T.T.A.B.«1976). Applicant notes that the Examining
`I Attorney has collapsed this process, parsing the mark and then finding each part to be generic.
`
`I The Examining Attorney has seemingly disregarded the anti-dissection rule by looking only at
`
`each elementofthe mark “separated and considered in detail.” See Estate ofP.D. Beckwith Inc. '
`
`
`v. Commissioner of Patents 252 U.S. 538, 545-46 (1920).
`
`_
`
`Ofthe references cited in the most recent Office Action, an overwhelming number refer
`
`4
`
`I to the term “bark candy,” and not to the term “PEPPERMINT B_ARK,”, or even merely the term
`
`“bark.” For example, consider the following references: 3, 4, 9, 14, 15, 26, 27, 31, 34, 40, 41, 42,
`
`44, 47. As such, this evidence fails to show that the mark, when considered in its entirety, is.
`
`'
`
`= clearly the generic term for App1icant’s goods.
`
`4.
`
`Any Doubts Must Be Resolved In Favor Of Applicant
`
`Finally, any doubt on the issue of whether Applicant’s mark is generic must be resolved
`
`in Applicant’s favor. See In re Waverly, 27 U.S.P.Q.2d 1620, 1624 '(T.T.A.B. 1993). Since the
`
`.: materials submitted by the Examining Attorney are not persuasive that Applicant’s mark is
`
`generic, registration should be allowed. See
`
`re Federated Department Stores, Inc., 3
`
`U.S.P.Q.2d 1541, 1543 (T.T.A.B. 1987) (THE ‘CHILDREN'S OUTLET allowed registration
`
`

`
`Serial~No. 7.6/542,867
`Attorney Docket: 33 127T-0046OOUS
`
`under 2(1) for retail children’s clothing store services).
`
`B.
`
`A District Court Has Already Considered This Issue And Declined ,To Rule
`That PEPPERMINT BARK Is Generic For Applicant’s Goods
`
`In Williarns—Somoma, Inc, v. West Coast Confections, Case No. C-03-4716 EDL (N.D.
`
`i Cal. 2004), United States Magistrate Judge Elizabeth Laporte considered whether Applicant’s
`3 PEPPERMINT BARK mark was generic. In that litigation, the defendant alleged that
`
`PEPPERMINT BARK was generic, and therefore not entitled to trademark protection.
`i Magistrate Judge Laporte disagreed, and in her Order Denying Defendant’s Motion to Dismiss,
`
`she found that not only had‘App1icant sufficiently alleged that PEPPERMINT BARK was not
`
`i. generic, but that Applicant’s conclusion ofnon-genericness was “reinforced by the dictionary .
`I
`.
`
`definitions of which the Court took judicial'notice.” A copy of the Order is attached as Exhibit
`
`A. Magistrate Judge Laporte subsequentlydenied the defendant’s motion to dismissbased on
`
`the alleged genericness of Applicant’s PEPPERMINT BARK mark.
`
`' C.
`9
`
`The Primary Significance Of PEPPERMINT BARK To The Relevant Public
`Is As A Source Indicator, -Not A Category Of Goods
`
`I 1
`
`f %
`
`Applicant’s mark is a compound word comprised of the terms “pep'permint” and “bark.”
`
`i The Examining Attorney refuses registration on the basis that these terms are generic and have
`
`i no trademark significance. However, the correct test for genericness, as set forth in Marvin
`
`_G_i_nn, is whether (1) the
`
`sought to be protected in its entirety represents the genus or
`
`category of goods in question and (2) that the public refers to Applicant’s mark as such, See Q
`Marvin Ginn Co oration v. International Association-ofFire Chiefs, 782 F. 2d 987, 989-990
`(Fed. Cir. 1986). Further, as the Examining Attorney notes, generic jurisprudence “revolves
`
`around the primary significance test, which inquires whether the primary significance of a term
`
`

`
`Serial No. 76/542,867
`.
`Attorney Docket: 33 l 27T—0O4600US
`
` J in the minds ofthe consuming public is the product or the producer.” As explained, the
`
`Examining Attorney has notprovided clear evidence" to support that the PEPPERMINT BARK
`! mark is generic, or thatthe primary significance ofthe term is as a generic indicator ofthe goods,
`and not the source.
`
`1.
`
`A Compound Word With A Plain Meaning Different From Its
`Constituent Terms May Not Be Proven Generic
`‘
`.
`
`Where a compound word may have a plain meaning different from its constituent terms,
`
`the compound word may not be proven generic.‘ See In re American Fertility Society, 51
`
`‘ U.S.P.Q.2d' 1832, 1836 (Fed. Cir. 1999). Here, the compound word “PEPPERMINT BARK”
`
`creates a different commercial impression than the meaning suggested by the Examining
`
`z Attorney. Even considered separately, ‘neither the PEPPERMINT'nor the BARK terms can be
`seen as merely descriptive—let alone generic—ofApplicant’s goods.
`As set forth in Applicant’s prior Office Action responses, the individual terms ofthe
`
`PEPPERMINT" BARK mark can be interpreted to mean a multitude of things by consumers.
`
`“BARK,” for instance, can mean any of the following: to speak in a curt loud and usually angry
`
`tone; a small sailing ship; the sound made by a barking dog; or the tough exterior covering of a
`
`woody root or stem. Notably, the meaning the Examining Attorney proffers for BARK is not
`
`generally recognized, as shown in the attached dictionary excerpts in Exhibit B. Presumably,
`
`such a little known word could hardly be the “primary significance” ofthe term, as required
`: under trademark law. Likewise, “PEPPERMINT” also has several possible meanings. Multiple
`
`meanings for both words makes it exponentially more difficult forconsumers to relate any one
`
`5 particular meaning to the composite term;
`
`

`
`Serial No. 76/542,867
`Attorney Docket: 33127T-004600US
`
`If consumers were, however, to ascribe a meaning to the composite term, they would be
`
` Applicant’s goods were ‘iprocessed from the ‘bark” ofthe ‘peppermint plant,”’ the mark would
`
`more than likely to make the same assumption the Examining Attorney did in the initial Office
`
`Action, dated'Ma.rch 24, 2004. In that Office Action, the'Examining Attorney concluded that if
`
`.
`i
`i be descriptive. As Applicant has already indicated, such is not the case. The Examining
`
`
`
`I 51l
`
` Attomey’s.subsequent identification ofreferences using the term PEPPERMINT BARK merely
`1 reflects the increased occurrence ofthe term due to App1icant’s long term-use of the mark in
`
`conjunction with its goods and Applicant’s extensive marketing efforts relating thereto.
`
`2.
`
`Contrary To The. Examining Attorney’s Assertions, There Are
`Commonly Used Alternatives For the Term PEPPERMINT BARK
`
`The Examining Attorney’s conclusion that the PEPPERMINT BARK mark is generic
`
`’ relies upon his assumption that there does not appear to be a commonly used alternative that A
`
`effectively communicates the same functional information. Applicant disagrees on this point, as
`there are a number ofterms, other than PEPPERMINT BARK, that refer to the genus ofgoods
`
`similar in nature to Applicant’s PEPPERMINT BARK product. Just a handful ofthese terms
`
`are shown inithe attached evidence in Exhibit C, and include “White Chocolate Mint Candy,” -
`i“_White Chocolate Mint Christmas Candy,” “Peppennint Chocolate,” “Peppermint Br1'ttle,”_
`“Peppermint Candy,” and “White Christmas Candy.” Therefore, affording Applicant trademark
`I rights in a term in which it has established acquired distinctiveness can hardly serve to prevent
`
`'
`
`I
`
`others from making and referring to similar goods.
`
`

`
`Serial No. 76/542,867
`Attorney Docket: 33127T—004600US '
`
`Ii II.
`
`‘
`
`IT IS INCONSISTENT AND WRONG TO DENY REGISTRATION OF
`PEPPERMINT BARK WHEN NUMEROUS “PEPPERMINT” AND “BARK”
`
`REGISTRATIONS EXIST FOR LIKE GOODS
`
`-
`
`'
`
`Certainly, the decisions ofnumerous Examining Attomeys to register other
`
`' “PEPPERMINT” and “BARK” marks for goods akin to those provided by Applicant is
`
`convincing evidence that Applicant’s mark is not generic. The following Chan summarizes
`
`; examples of relevant registrations, and includes several registrations belongingto Applicant
`
`‘ (bolded). Notably, Applicant has two existing registrations for PEPPERMINT BARK on the
`
`Principal Register, Registration Nos. 2758725 and 2785972. See Exhibit D, printouts ofrelevant
`
`registrations from the Ofiice’s online database.
`
`
`
`
`
`
`
`
`
`
`
`
`ill
`
`
`
`
`
`
`BARK
`
`
`
`BURSTS
`
`'
`
`CHEWZ
`
`'
`
`.
`
`.
`
`‘
`
`CREMES
`
`.
`
`PEPPERMINT
`PASSION
`
`(chocolate); Chocolate candies;
`Chocolate chis in Class 30
`
`
`White mint ice cream with chocolate
`flakes and mini chocolate mint patties in
`Class 30
`'
`
`2804152 '
`
`Principal
`
`.
`
`-
`
`_
`
`PONIES
`
`‘
`
`SNAPS
`BIRCH BARK
`-
`
`
`
`'
`CHIPPERS THE
`- BARK WITH A
`_BITE
`
`‘ REINDEER BARK
`
`4
`
`Candy made-with birch syrup candy
`pieces embedded in white chocolate in
`Class 30
`Confections, namely candy and candy
`bars in Class 30
`.
`
`2587962
`
`Principal
`
`A
`
`A
`Principal
`
`3121157
`
`.
`Chocolate cand in Class 30-
`
`
`
`.
`
`'
`
`
`
`2618337
`
`.
`
`-
`
`
`
`9 .
`
`

`
`
`
`
`
`
`
`
`ALMOND BARK
`
`A BETTER BITE
`
`Serial No. 76/542,867
`' Attorney Docket: 33l27T-004600US
`
`'
`
`
`
`
`
`
`ZIWIEENEEI
`
`
`
`If “PEPPERMINT” and “BARK” are repeatedly registrable for other products, it'is
`
`: inconsistent and wrong to deny registration of Applicant’s PEPPERMINT BARK mark "for its
`
`I publication. If a telephone conversation would be appropriate to further the prosecution of this
`
`application, please telephone the undersigned.
`
`Respectfully submitted, '
`
`TOWNSEND and TOWNSEND and CREW LLP
`
`j Datedi December27, 2006
`
`By:
`
`Anthony J. Malutta.
`Marie C. Seibel
`
`i Two Embarcadero Center,-8th Floor
`| San Francisco, CA 94111
`I Tel. No. (415) 576-0200
`l Fax No. (415) 576-0300
`6094S609vl
`
`T
`
`
`
`Attorneys for Applicant
`
`I 0
`
`

`
`

`
`ws-wr:s1' COAST-807
`csc, ms, mu
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`WILLIAMS-SONOMA, INC., I
`
`'Plaintifi‘,
`
`v.
`
`No. C-03—47l6 EDL
`
`_
`
`ORDER DENYING DEFENDANT’S
`MOTION TO DISMISS
`-
`
`E WEST COAST CONFECTIONS,
`
`.
`
`Defendant.
`
`»
`
`/
`
`In this trademark infringement case, Plaintiff Williams-Sonoma, Inc. contends that Defendant West
`i Coast Confections is infiinging on Plaintiff’s trademark of the term, “Peppermint Bark.” Peppemiint Bark
`
`is a type of holiday candy sold by Plaintiff. Defendant moved to dismiss pursuant to Federal Rule of Civil
`i
`4 Procedure l2(b)(6) on the grounds that Plaintiff has failed to state a claim because the term, “Peppermint
`. —Bark,”.is generic andtherefore not entitled to trademark protection. On January 6, 2004, the Court held a
`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 dismissla complaint for failure to state a '
`a claim unless “it appears beyond doubt that the plaintiffcan prove no set of facts in support ofhis claim
`: which would entitled him to relief.” Conley v. Gibson, 355 U.S. 4], 45-46 (1957); Fed..'R. Civ. Proc.
`1 8(a). In analyzing a motion to dismiss, apcourt 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
`
`V F.2d 896, 898 (9th Cir. 1986).
`
`
`
`United.DistrictCourt"ForStates
`
`theNorthernDistrictofCalifornia
`
`
`
`
`
`

`
`
`
`
`
`.UnitedStatesDistrictCourt
`
`
`
`
`
`FortheNorthernDistrictofCalifomln
`
`To prevail on a trademark infringement claim, a plaintiff must prove the existence of a trademark
`
`' and the subsequent use of that mark by another in a manner likely to create consumer confusion. S_eg
`
`' Corned llI Prods. Inc. v.
`
`w Li e Cin ma 200 F.3d 593, 594 (9th Cir. 2000). Defendant's motion
`
`v attacks the first element of Plaintiffs trademark infringement claim on theground that the term “Peppermint
`
`Bark” 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.
`mmitt
`for Idaho’
`' h D
`h
`t, 92 F.2d 814, 821 (9th
`Cir. 1996); segafil. Thomas McCarthy,
`‘Trad
`a ks an Unfair 0 I etit'
`§ 12.57 at
`
`4 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
`
`v commerce.” Park N’ Ely, lnc, V. Dollar Bark gmd Fly, lr_1g., 469 U.S. 189, 194 (1985). Whether an
`
`alleged mark is generic or descriptive is a question of fact.
`
`m'ttee for Idaho’s Hi h D sert 92 F.3d at
`
`82]; Films ofDistinction, Inc. v. Allggm Ejlrri Prods., lnc., 12 F. Supp. 2d 1068, 1075 (C.D. Cal. 1998).
`V
`Here, Plaintiffalleges that it “distinctively coined” the term “Peppermint Bark," and that it has
`i applied for a trademark registration. sq; Compl. 1]1l 6, 12. Plaintiff alleges that since 1999, it has
`
`advertised, marketed and sold, through its retail stores, catalogs and websites, its Peppermint‘ Bark
`g products. 53 Comp]. 1| 7. Plaintiffalleges that ‘tens ofmillions” ofcatalogs are ‘delivered to consumers
`l every holiday season and that the Peppermint Bark products have attained several million dollars of sales
`
`each year.
`l_d_. Plaintiff further alleges that “as a result of these marketing and sales efforts, consumers have
`come to strongly and secondarily associate Peppermint Bark trademark with Williams-Sonoma and its high
`
`I quality candy products.” Id, Plaintiff also alleges that Defendant is using the “Peppermint Bark” name to
`sell candy at another retailer's stores and that those salesiare likely tolcause consumer confusion. & A
`111 14, 15.
`i
`In light of the liberal standard for notice pleading, Plaintiffs allegations in the complaint are sufficient
`
`,
`
`to state a claim for trademark infringement. See Balistreri v. Pacifca P lic D ’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
`
`l 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
`
`= generic, i.e., that it has acquired a secondary meaning and that its primary significance to the relevant public
`
`

`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
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`is to identify Plaintiffas the source ofPeppermint Bark. This conclusion is reinforced by_ the dictionary
`é
`E 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 decidedlat the pleading stage. As Defendant conceded at the hearing, it could not
`locate a single case in which the issue ofwhether a mark is generic was decided on the pleadings.
`
`3 Accordingly, Defendant’s Motion to Dismiss (docket number 8) is denied.
`
`f REQUESTS FOR JUDICIAL NOTICE
`
`With its motion,'Defendant seeks judicial notice of: (1) Plaintiff’s trademark application; (2) results
`
`ofGooglecom search on i‘Peppermint Bark;" (3) a Peppennint Bark recipe; (4) Plaintit}’s website
`- regarding peppermint bark; and (S) Plaintifl7s catalog regarding peppermint bark. Plaintiffdoes not oppose
`
`1
`
`judicial notice of its trademark application, but does oppose the remainder of Defendant’s requests.
`
`Plaintifi‘s request for judicial notice of dictionary entries from two dictionaries defining the tenn “bark" is
`i unopposed.
`A
`i
`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 andready V
`
`determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
`201(b). Plaintiffs request for judicial notice is granted because the dictionary definitions Plaintiffprovided
`
`18
`
`
`
`
`
`FortheNorthernDistrictofCalifornia
`
`properly consider material submitted as part ofthe complaint and take judicial notice of docurnents referred
`20
`21 1 to in the complaint or which fonn the basis for the complaint. Sfi
`22 I Q, i396'F.2d 1542, 1554 n. 19 (9th Cir.l990) (material submitted as part of the complaint); MEL;
`23
`South Bay Beer Distribs., Inc., 798 F.2d 1279, 1282 (9th Cir.l986) (judicial notice), abrogated on other
`24 T grounds, Astoria Federal §av. and Loans Ass'n v. Soliming, 501-U.S-. 104 (1991). Defendant’s request
`
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`~ bark l. The American Hcritagcfi Dictionary of the English!
`
`'2: Fourth Edition. 2000.
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`Reference > American Hentage-Q > Dictionag
`
`CONTENTS - INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`,
`
`.
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`’
`
`bark‘
`
`PRONUNCIATION: 4 bark
`
`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 youngpups " (Charleston SC‘News and Courier). 3. To speak
`sharply; snap: “a spot where you canjust drop in .
`.
`. without. anyone’s barking at
`youforfailing 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.
`
`ETYMOLOGYZ From Middle English berken, to bark, from Old English beorcan.
`
`The American Hcritage® Dictionary of the English Language, Fourth Edition. Copyright © 2000 by Houghton Mifllin Company.
`Published by the Houghton Mifllin Company. All rights reserved.
`-
`
`CONTENTS - INDEX ~ ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`( bariumlsulfate
`
`“rgarkg ,
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`
`Click here to shop the Bartleby Bookstore.
`Weloome ' Press - Advertising - Linking - Terms of Use - ©2005 Bartlebykzomw
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`

`
`bark 2. The American Hcritage® Dictionary ofthe English l
`
`3:: Fourth Edition. 2000.
`
` [ Home 3 Subjéds I hire; I Authors, .
`
`' Reference > American Heritage@ > Dictionag
`< E1
`
`‘Ea’;
`
`I CONTENTS - INDEX ' ILLUSTRATIONS - BIBLIOGRAPHIC RECORD -
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`barkl
`
`PRONUNCIATION:
`
`Cd bark
`
`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 tanning or medicine.
`
`»
`TRANSITIVE Inflected forms: barked, bark-ing, barks
`VER31 1. To remove bark from (a tree or log). 2. To rub off the skin of; abrade: barked my
`shin an 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 biirkr.
`
`OTHER FORMS: barkiy __ADJEC,m/E
`
`I The American Hcn'tage® Dictionary of the English Language, Fourth Edition. Copyright © 2000 by Houghton Mifflin Company.
`Published by the Houghton Mimin Company. All rights reserved.
`
`CONTENTS -INDEX - ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`
`
`Click here to shop the Bartleby Bookstore.
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`

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`bark 3. The American Heritagc® Dictionary of the English.’
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`‘c: Fourth Edition. 2000.
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`**.._ Z_«
`I Titles [Authors
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`Bntydopediatl ilictionary | Thesaurus-l_l)uotati_ons { English Usage J
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`Reference > American Heritage@ > Dictionag
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`_._.___.___,___.__________g.
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`( E3
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`bark beetle )
`
`CONTENTS ' INDEX ' ILLUSTRATIONS - BIBLIOGRAPHIC RECORD
`
`The American Heritage® Dictionary of the English Language: Fourth Edition. 2000.
`
`barl.<3
`
`PRONUNCIATION:
`
`:1 bark
`
`VARIANT FORMS: also barque
`
`NOUNI 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 of the English Language, Fourth Edition. Copyright O 2000 by Houghton ll./lifllin Company.
`Published by the Houghton Miftlin Company. All rights reserved. V
`
`CONTENTS - INDEX - ILLUSTRATIONS ' BIBLIOGRAPHIC RECORD
`
`(be?
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`
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`
`bark n. barks <bark> 1. The sound made by a dog. 2. A noise resembling the bark of a dog. 3. Tough protective covering
` of the woody stems and roots of trees and other woody plants. 4. A sailing ‘ship with 3 (or more) masts;
`
` bark v. barked Obarking 0 barks <bark> 1. To cover with bark. 2. To make barking sounds; “The dogs barked at the
`
`stranger.” 3. To remove the bark of a tree; 4. To speak in an unfriendly tone; ‘She barked into the dictaphone." 5. To tan
`
`
`
`(a skin) with bark tannins.-[ETYM: Old Eng. berken, AS, beorcan; akin to lcel. berkja, and prob. to Eng. break.}
`
`- angostura bark n. The bitter bark of a South American tree; used in medicines and liqueurs and bitters;
`- bark beetle n. <bark 'bEt&l> Small beetle that bores tunnels in the bark and wood of trees; related to weevils.
`- birch bark canoe n. A canoe made with the bark of a birch tree.
`'
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`More results...
`
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`- cabbage bark n. <‘l<ablj bark> Tree with shaggy unpleasant-smelling toxic bark and yielding strong durable wood; bark
`and seeds used as a purgative and vermifuge and narcotic;
`- Cartagena bark n. <"kart&'jEn& bark> Colombian tree; source of Canagena bark (a cinchona bark); Also called:
`Cinchona cordifolia. Cinchona lancifolia.
`.
`
`- cascarilla bark n. <'kask8'ril& bark> Aromatic bark of cascarilla; used as a tonic and for making incense;
`- cassia bark n. <'l<a[sh}& bark> Aromatic bark of the cassia-bark tree; less desirable as a spice than Ceylon cinnamon
`bark:
`'
`'
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`- cinchona bark n. Medicinal bark of cinchona trees; source of quinine and quinidine;
`
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