To:
`Subject:
`
`GRUPO BIMBO, S.A. B. DE C.V. (officeactinns(cbbfinkshofer.com)
`U.S. TRADEMARK APPLICATION NO. 77798364 - BAGEL THINS -
`N/A
`
`Sent:
`
`6/27/11 2:23:05 PM
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`Sent As:
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`ECOM105@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`APPLICATION SERIAL NO.
`
`77798364
`
`MARK: BAGEL THINS
`
`.
`
`*77798364*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`5 E«'22S flin
`
`
`'
`to. vov/trademarks/teas/res onse formS.'s
`
`SCOTT J. SLAVICK
`BRINKS HQFER GILSQN & LIONE
`P.O. BOX 10395
`
`CHICAGO, IL 60610
`
`APPLICANT:
`C.V.
`
`GRUPO BIMBO, S.A. B. DE
`
`CORRESPONDENT’S REFERENCE/DOCKET
`NO:
`
`N/A
`CORRESPONDENT E-MAIL ADDRESS:
`
`officeactions@brinkshofer.com
`
`OFFICE ACTION
`
`STRICT DEADLINE T0 RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST
`RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE
`ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 6/27i20'I.1
`
`THIS IS A SUBSEOUENT FINAL ACTION.
`
`

`
`In its Request for Reconsideration, applicant argued against the Trademark Act Section 2(e)(1) refusal,
`claimed acquired distinctiveness under Trademark Act Section 2(1) in the alternative, and amended to the
`Supplemental Register in the alternative. The examining attorney carefully considered the applicant's
`arguments but found them unpersuasive. Therefore, on December 13, 2010, the refiisal under Trademark
`Act Section 2(e)(1) was maintained and the findings of insufficient support for the Section 2(1) claim and
`genericness were made.
`
`This Office action is in response to applicant’s communication filed on June 15, 2011 in which applicant
`argues against the December 13, 2010 findings which the examining attorney has carefully considered but
`has found unpersuasive. Applicant has also amended its identification of goods to “bakery products, not
`including cookies” which is accepted and made of record but which does not resolve the outstanding
`refusals and does not raise any new issues.
`
`The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See
`15 U.S.C. §1052(e)(1); 37 C.F.R. §2.64(a). Additionally, for the reasons set forth below, the refusal is
`now made FINAL under Trademark Act Section 23 because the proposed mark is generic and therefore
`unregistrable on the Supplemental Register. See 15 U.S.C. §109l; 37 C.F.R. §2.64(a).
`
`SECTION 2(e)(1) REFUSAL — MERELY DESCRIPTIVE
`
`Registration was refiised because the applied-for mark BAGEL THINS merely describes a feature of
`applicant’s goods, “bakery products”. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP
`§§ l209.01(b), 1209.03 et seq. The amended identification of goods as “bakery products, not including
`cookies” does not obviate the refusal. A mark is merely descriptive if it describes an ingredient, quality,
`characteristic, function, feature, purpose or use of the specified goods. TMEP §l209.01(b); see In re
`Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).
`
`The determination of whether a mark is merely descriptive is considered in relation to the identified
`goods, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A.
`1978); TMEP §1209.01(b). To the extent that the goods are thin bagels or products that are known as
`“bagel thins,” the mark is merely descriptive of a salient feature of the goods.
`
`As the prior attachments indicated, BAGEL is defined as “glazed ring-shaped bread roll with a slightly
`chewy texture” while THIN is defined as “slim.” See dictionary definitions from wvvw.encarta.com
`previously attached. As such, the mark is merely descriptive of the applicant’s goods, namely, slim
`bagels.
`
`For applicant’s convenience, the examining attorney previously attached the dictionary definition of the
`wording, internet evidence of the wording used in the industry, and evidence of past Office practice
`regarding disclaimers of the wording or registration on the Supplemental Register or the Principal Register
`2(f) with respect to related goods. See, for example,
`
`a U.S. Registration No. 3568922 which includes a disclaimer for “THINS” in connection with
`“cookies, gingerbread biscuits, and biscuits.”
`o U.S. Registration No. 2863802 which includes a disclaimer for “THINS” in connection with
`“cookies.”
`
`0 A recipe from www.bigoven.com for “FIERY GARLIC BAGEL THINS” where bagels arc sliced
`into fifths in order to be thin.
`
`o A recipe from www.foodista.com for “Bagel Thins, Lo Cal, Lo Salt” where the bagels are sliced
`
`

`
`into “very thin rounds.”
`A recipe from www.fitnessandfreebies.com for “Baked Bagel Thins” where the bagels are sliced
`into four crosswise slices.
`
`An article from The New York Times published on February 14, 1982 discussing Bagel Boss
`offering “bags of “bagel thins,” crisp, toasted thin bagel slices.”
`
`The examining attorney has previously provided evidence of third party usage of “BAGEL THINS” in
`connection with bakery goods such as:
`
`Einstein Bros offering New Bagel Thins Lunch Sandwich
`Bagel Country offering bagel thins on its menu
`New York Bagel Baking Company offering “Bagel Thins: Great for dips, spreads or just snacking.
`We make plain, onion, whole wheat, raisin and sea salt bagel thins.”
`Barry Bagels offering Bagel Thins (Garlic, Plain, Raisin, Or Berry) on its menu
`The Delancey Street Foundation offering omelets served with bagel thins
`
`Additional evidence where third parties refer to bagel thins generically is attached herein, such as:
`
`An article by Alison Sherwood, Sweet Potato Black Bean Spread, a PCK Original, where the author
`writes about a recipe for a spread used on crackers, toast, and also bagel thins as a generic food
`item.
`
`An article by Lauren R. Hartman, Bakery Market Stays in the Game, June 1, 2011 focuses on how
`bakers and bakeries are trying to improve their products and what they are doing to get their sales up
`in this economy. The article includes a portion dedicated to new bakery products that are having a
`"positive effect on the bakery category," which include “Sandwich rounds and thin bagels” and
`states “SymphonyIRI data supports the popularity of these items. For the latest 52 weeks ending
`March 20, dollar sales of sandwich rounds/thins were up 45% versus the previous year, while new
`bagel thin products drove overall bagel segment growth."
`An article titled Slicers do morefor less Baking Management, June 23, 2011 which discusses recent
`bakery product machinery trends and states “Ryan has seen this reflected through a move to
`“thinner” bread products at retail. “Something we have noticed in past years is the move toward
`thinner products like bagel thins and hamburger bun thins,” she says.”
`An article Reap Benefits from Better Food Picks, CONSUMER REPORTS, June 2011 in which a
`discussion on how to eat healthier and includes advice such as “Craft a savvy sandwich. "Think of a
`sandwich as a chance to eat salad without a fork, and pile it high with vegetables," Greaves says.
`Trade a kaiser roll for a whole-grain wrap with fewer calories and more fiber. Other options include
`a whole-grain bagel thin, a mini-pita, a light English muffin, or a lettuce wrap made of two sturdy
`romaine leaves.”
`
`An article Flowers Foods Earnings Conference Call - Final FD (Fair Disclosure) Wire May 19,
`2011 discussing the company’s business and stating “We are pleased with the performance of our
`sandwich rounds, our bagel thins, and our other new products.”
`ABA‘s Shiver: Economy Demands Action from Bakers, SNACK FOOD & WHOLESALE
`BAKERY, Apr. 1, 2010 focuses on the chairman of the American Bakers Association calling for the
`baking industry to become more involved in economic policy. Notes consumer response to the
`baking industry: "'Consumer response is still strong in all segments of the baking business and
`recent new products such as bagel thins and sandwich rounds are bringing a lot of excitement to the
`bread aisle."‘
`
`Klosterrnan Baking Company announces the addition of Flat Bread type products including “Flat
`Bread, Bagel Thins, Sandwich Slims, Pita Breads, and Pizza Crusts.”
`
`

`
`Emphasis added for app1icant’s convenience. The single agreement between applicant and Einstein Noah
`Restaurant Group, Inc. (page 195 of applicant’s exhibits) does not obviate the entire body of evidence that
`clearly indicates that many third parties use “BAGEL THINS” in connection with or in discussions of
`bakery products, not including cookies and thus the wording is descriptive if not generic.
`
`

`
`APPLICANT’S ARGUMENTS ARE NOT PERSUASIVE
`
`Applicant maintains its argument that the mark is inherently distinctive. Applicant first argues that
`various registrations and applications were allowed with a disclaimer of “THINS” or “THIN.” As
`previously explained, the issue is not merely whether “THINS” is descriptive of “bakery products, not
`including cookies” but whether “BAGEL THINS” is descriptive of “bakery products, not including
`cookies”.
`In this case, the evidence of record clearly shows that the phrase “BAGEL THINS” is used in
`connection with “bakery products, not including cookies” in a descriptive manner and thus the mark as a
`whole is descriptive. Reliance on the registration of “SANDWICH THINS” or any of the other marks is
`misplaced because (a) the issue regarding the descriptiveness of THINS was never discussed and (b) prior
`registrations are not conclusive on the question of descriptiveness. Each case must be considered on its
`own merits. An applied-for mark that is merely descriptive does not become registrable simply because
`other similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB
`1977); TMEP §1209.03(a).
`
`Applicant has also attempted to support its argument that the USPTO does not require applicants to
`disclaim “THINS” when the application does not identify “cookies” in the identification of goods but
`this statement is irrelevant and the evidence applicant attaches (which includes mere applications as well
`as cancelled registrations) is unpersuasive. Once again, the issue is not whether the wording “THINS”
`is descriptive/generic when used in connection with the goods applicant has identified but whether the
`wording “BAGEL THINS” is descriptive/generic when used in connection with the goods applicant has
`identified (and which its specimen of record clearly indicates are bagels).
`
`Even if “BAGEL THINS” or just “THINS” was once arbitrary or suggestive, a term that was once
`arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a
`descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing
`more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In
`re Int ’l Spike, Inc. , 190 USPQ 505, 507 (TTAB 1976).
`
`Thus, trademark rights are not static, and eligibility for registration must be determined on the basis of the
`facts and evidence in the record at the time registration is sought, which includes during examination and
`any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir.
`2010); In re Morton-Norwich Prods, Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re
`Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969). Applicant has not
`demonstrated any failure to adhere to a “Consistency Pilot Program” because as the evidence of record
`demonstrates, the phrase “BAGEL THINS” is currently in use by many third parties to describe their
`“bakery products, not including cookies” and the purchasing public would not view the phrase as
`belonging to any one entity. At this time, the time registration is sought, the wording is found to be
`descriptive/generic when used in connection with the applied for goods.
`
`Applicant concludes its argument by stating that “consumers must utilize imagination, thought, and
`perception to tie the “BAGEL THINS” mark to Applicant’s goods sold under the mark.” As previously
`explained, the determination of whether a mark is merely descriptive is considered in relation to the
`identified goods, not in the abstract. Here, applicant’s own specimen shows that the mark is used on “8
`Thin Pre-Sliced” bagels.
`It is unclear what other meaning or connotation a consumer could have when
`viewing the mark BAGEL THINS in connection with applicant’s thin bagels.
`
`
`
`

`
`A consumer encountering the mark BAGEL THINS in connection with applicant’s goods would
`immediately understand the feature of the goods. Because the mark immediately and directly conveys
`information about the applicant’s goods, registration is refused under Trademark Act Section 2(e)(1) and
`such refusal is hereby made FINAL.
`
`SECTION 2(f) ACQUIRED DISTINCTIVENESS IS INSUFFICIENT TO OVERCOME REFUSALS.
`
`Registration was initially refiised under Trademark Act Section 2(e)(1) because the applied-for mark is
`merely descriptive of applicant’s goods.
`15 U.S.C. §1052(e)(l). In response, applicant amended the
`application to add a claim of acquired distinctiveness under Section 2(f). 15 U.S.C. §l052(f).
`
`Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is
`merely descriptive of applicant’s goods.
`15 U.S.C. §l052(e)(l). Applicant was also advised that the
`mark appears to be generic as well. In response, applicant amended the application to add a claim of
`acquired distinctiveness under Section 2(f). 15 U.S.C. §lO52(f).
`
`Registration was then refiised because the applied-for mark is generic for applicant’s goods. Trademark
`Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., l209.02(a)(ii). Thus,
`applicant’s claim of acquired distinctiveness under 15 U.S.C. §l052(f) is insufficient to overcome the
`refusal because no amount of purported proof that a generic mark has acquired secondary meaning can
`transform it into a registrable trademark. See In re Bongrain, 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727,
`1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int '1 Ass ’n ofFire Chiefls , Inc., 782 F.2d 987, 989,
`228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i). Such a designation cannot become a trademark
`under any circumstances.
`
`A two-part test is used to determine whether a designation is generic:
`
`(1)
`
`What is the class or genus of goods and/or services at issue?; and
`
`Does the relevant public understand the designation primarily to refer to that class
`(2)
`or genus of goods and/or services?
`
`In re 1800Mattress.c0m IP LLC, 586 F. 3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting
`H. Marvin Ginn Corp., 782 F.2d at 990, 228 USPQ at 530); TMEP §l209.0l(c)(i).
`
`The attached evidence shows that the wording “BAGEL THINS” in the mark means thin or slim bagels.
`The identification is “bakery products, not including cookies”; therefore, the genus or class for the
`identified goods is bakery products, even those that do not encompass cookies. The wording “BAGEL
`THINS” in the mark is essentially the apt name for the class or genus of the goods. The relevant public
`would understand this designation to refer primarily to that class or genus of goods because third parties
`sell their slim bagels using the phrase “bagel thins” to describe their non-cookies bakery products.
`In
`fact, applicant’s Exhibit B shows that on applicant’s own website, the wording “BAGEL THINS” is
`merely a category of bakery products among other categories of other goods it sells. In other words, the
`website page submitted by applicant and attached herein for applicant’s convenience shows that
`applicant’s products under the heading include three categories: bagel thins, mini bagels, and traditional
`bagels. The next page shows one generic word following the next, i.e. the categories “Our
`products>Bagels>Bagel Thins>” before finally showing the source-identifying wording “Thomas’ 100%
`Whole Wheat Bagel Thins.” Clearly, bagels can come in varying sizes and shapes and even applicant
`uses the phrase in a descriptive manner to distinguish their “thin” bagels from their “mini” bagels and
`“traditional” bagels. Furthermore, it does not appear that applicant’s use of the phrase “BAGEL
`
`

`
`Even applicant’s
`THINS” is ever promoted or marketed without applicant’s house mark “THOMAS”’.
`most recent submission of evidence shows that applicant does not use the phrase without the
`accompanying “THOMAS” brand along with it. Therefore, the “abundan ” evidence applicant relies
`upon may show that the whole phrase “THOMAS’ BAGEL THINS” has acquired distinctiveness in the
`mind of the consumers, but not the phrase “BAGEL THINS” alone.
`
`In addition to the evidence supplied by the examining attorney in the previous Office Actions, please also
`see the attached to Letter of Protest Memorandums dated August 23, and October 28, 2010. The evidence
`therein shows use of the wording “THINS” and “BAGEL THINS” in the non-cookie bakery products
`industry as a generic term for baked goods sold by third parties. The articles, recipes, and blog entries
`attached to the October 28, 2010 Letter also demonstrate the use of the phrase “bagel thins” as generic
`wording for thin bagel slices. The evidence attached to Letter of Protest Memorandums are incorporated
`by reference herein and support the finding of genericness.
`
`In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate
`tribunal, then the refusal of registration because the applied-for mark is merely descriptive of applicant’s
`goods is maintained and continued for the reasons specified in the previous Office action. Trademark Act
`Section 2(e)(l), 15 U.S.C. §l052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
`
`In any event, applicant’s claim of acquired distinctiveness is in effect a concession that the mark sought to
`be registered is merely descriptive of applicant’s goods.
`In re Leatherman Tool Group, Inc. , 32 USPQ2d
`1443, 1444 (TTAB 1994).
`
`With respect to applicant’s claim of acquired distinctiveness, the following evidence was provided in
`support of such claim: a declaration from applicant’s own licensee vice president, a declaration
`from its own marketing director, and exhibits of its marketing and promotional efforts. See 37
`C.F.R. §2.41.
`
`The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of
`each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol
`Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr Mfg. C0,, 279 F.2d 526, 126
`USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a). More evidence is generally required if purchasers seeing
`the applied-for mark in relation to the identified goods would be less likely to believe that it indicates
`source in any one party. See, e.g., In re Bongrain Int ’l Corp. , 894 F.2d 1316, 13 USPQ2d 1727; In re
`Seaman & Ass0cs., Inc., 1 USPQ2d 1657 (TTAB 1986).
`
`If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f)
`evidence is insufficient because applicant has not actually used the mark in commerce for even a single
`year and the arguments and evidence applicant provides to support the claim are not dispositive of whether
`the proposed mark has acquired distinctiveness in applicant’s goods alone.
`
`Applicant has provided evidence of high sales figures and significant advertising expenditures for the
`goods at issue; however, such evidence is not dispositive of whether the proposed mark has acquired
`distinctiveness. Such extensive sales and promotion may demonstrate the commercial success of
`applicant’s goods, but not that relevant consumers view the matter as a mark for such goods. See In re
`Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Busch Entm ’t Corp. , 60
`
`USPQ2d 1130, 1134 (TTAB 2000).
`
`Similarly, applicant’s advertising expenditures are merely indicative of its efforts to develop
`
`

`
`distinctiveness; not evidence that the mark has acquired distinctiveness. See In re Pennzoil Prods. Co., 20
`USPQ2d 1753 (TTAB 1991). Regardless of the websites, magazines, in-store displays, news broadcasts,
`and fitness centers in which applicant’s “bakery products, not including cookies” are marketed under the
`name “BAGEL THINS,” there is no evidence of record that relevant consumers view the matter
`“BAGEL THINS” as a mark for applicant’s goods alone. As proven in the prior Office Actions, many
`third parties use the phrase “BAGEL THINS” to market and advertise and even name their “bakery
`products, not including cookies” in a descriptive manner. Consumers submitting comments on
`applicant’s own website regarding applicant’s goods does not indicate that the proposed mark has
`acquired distinctiveness, that is, that it has become a distinctive source—indicator for applicant’s goods
`alone. The comments appear more to demonstrate that consumers enjoy applicant’s products and have
`been given an opportunity on applicant’s own website to state so. The comments are not from a third-
`party website where consumers demonstrate that they recognize the phrase “BAGEL THINS” to refer
`only to applicant’s products.
`
`Applicant submits a declaration from the Vice President of Orograin Bakers Products, Inc. which uses the
`BAGEL THINS mark as a licensee of Applicant. Affidavits or declarations that assert recognition of the
`mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the
`affidavits or declarations depends on the statements made and the identity of the affiant or declarant. In re
`Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988) (conclusionary declaration
`from applicant’s vice-president held insufficient without the factual basis for the declarant’s belief that
`the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence
`of a relatively small number of people who associate a mark with the applicant. In re The Paint Products
`Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“Because these affidavits were sought and collected by
`applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether
`persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS
`CO.’ in conjunction with paints and coatings.”). See also In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB
`1987) (affidavit of applicant’s counsel expressing his belief that the mark has acquired secondary
`meaning accorded “no probative value whatsoever” because, among other reasons, the statement is
`subject to bias); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (declarations from customers
`which stated that designs used by applicant indicate to the declarant that the applicant is the source of the
`goods, but which did not refer to or identify the designs with any specificity, not considered persuasive);
`In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985)
`(retailer’s statement that he has been in contact with many purchasers of loudspeaker systems of whom a
`substantial number would recognize depicted design as originating with applicant deemed competent
`evidence of secondary meaning); In re Flex—O—Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) (“[T]he fact
`that the affidavits may be similar in format and expression is of no particular significance
`since the
`affiants have sworn to the statements contained therein.”). See TMEP Section 1212.06(c).
`
`The evidence submitted by applicant does not support the Section 2(f) claim. However, no amount of
`purported proof that a generic term has acquired secondary meaning can transform that term into a
`registrable trademark. Such a designation cannot become a trademark under any circumstances. TMEP
`§1212.02(i). The wording “BAGEL THINS” is generic when used in connection with “bakery products,
`not including cookies” and therefore applicant’s Trademark Act Section 2(f) claim is rejected.
`
`REFUSAL ON SUPPLEMENTAL REGISTER UNDER SECTION 23(C)
`
`Registration was refused on the Supplemental Register because the applied-for mark is generic and thus,
`incapable of distinguishing applicant’s goods. Trademark Act Section 23(0), 15 U.S.C. §1091(c); see In
`re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (holding SCREENWIPE generic
`as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland
`
`

`
`Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (holding BUNDT, a term that
`designates a type of cake, generic for ring cake mix); In re Wm. B. Coleman C0,, 93 USPQ2d 2019
`(TTAB 2010) (holding ELECTRIC CANDLE COMPANY generic for light bulbs, lighting fixtures, and
`candle sleeves); TMEP §§ l209.01(c) et seq.
`
`Generic terms are terms that the relevant purchasing public understands primarily as the common or class
`name for the goods. TMEP §1209.01(c); see In re Dial—A—Mattress Operating Corp., 240 F.3d 1341,
`1344, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001); H. Marvin Ginn Corp. v. Int ’l Ass ’n ofFire Chiefs, Inc.
`782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986). Generic terms are by definition incapable of
`indicating a particular source of the goods, and cannot be registered as trademarks; doing so “would grant
`the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In
`re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir.
`1987); see TMEP §1209.01(c).
`
`,
`
`As explained above and as the evidence of record demonstrates, the term “BAGEL THINS” is a term that
`the relevant purchasing public understands primarily as the common or class name for the bakery products
`that are thinner-than-traditional bagels. As such, the mark is generic and refusal is made under Trademark
`Act Section 23(c) and such refusal is hereby made FINAL.
`
`PROPER RESPONSE TO FINAL
`
`If applicant does not respond within six months of the date of issuance of this final Office action, the
`application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this
`final Office action by:
`
`(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
`
`(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per
`class.
`
`37 C.F.R. §§2.6(a)(18),2.64(a); TBMP ch. 1200; TMEP §714.o4.
`
`In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to
`review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §7l4.04; see
`37 C.F.R. §2.l46(b); TBMP §l201.05; TMEP §1704 (explaining petitionable matters). The petition fee is
`$100. 37 C.F.R. §2.6(a)(15).
`
`/Tasneem Hussain/
`
`Trademark Examining Attorney
`Law Office 105
`
`(571) 272-8273
`tasneem.hussain@uspto. gov
`
`TO RESPOND TO THIS LETTER: G0 to htt)://vwvw.us . to. - ov/trademarks/teas/res aonse formsfs ). Please
`
`wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of
`the application. For technical assistance with online forms, e-mail TEASga7:uspto.gov. For questions
`about the Office action itself, please contact the assigned trademark examining attorney. E-mail
`communications will not be accepted as responses to Office actions; therefore, do not respond to this
`
`

`
`Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official
`
`application record.
`
`WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant
`or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
`applicants). If an applicant is represented by an attorney, the attorney must sign the response.
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
`not miss crucial deadlines or official notices, check the status of the application every three to four months
`using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a
`copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-
`9199. For more information on checking status, see htt
`://www.us to. ov/trademarks/ rocess/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at
`htt
`://www.us to. ov/teas/eTEAS a eE.htm.
`
`
`
`

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`Home >> Blogs >> Lifestyle and Features filogs
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`Post-College Kitchen
`Alison Sherwood shares her struggles, triumphs, musings and
`more while trying new recipes and improving her kitchen skills
`
`Sweet Potato Black Bean Spread, a PCK
`origmal
`
`2 I} Recommend
`
`5Wi«%é%3f
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`8y Ai‘i‘son Sherwood
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`March 23, 20 1 1_ I_
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`LATEST POST—COLLEGE KITCHEN POST'S
`
`I am always envious of people who can whip together a fantastic meal off the top of their head - no
`recipe, no nothing, save a vision for what that meal will taste like.
`
`Usually when I try to do that, it ends up tasting nowhere near as good as I envision. and I'm left with a
`mediocre dinner. Like the other night, for instance, I had this great vision for veggie pasta with
`marinara, black beans and sweet potatoes.
`
`It didn't turn out bad by any means, but it was just kind of like“. well, black beans, sweet potatoes,
`marinara and pasta in a bowl together. It lacked that special oomph I was hoping the combination of
`those great ingredients would have.
`
`with half a sweet potato and half a can of black beans left, a new inspiration hit. And this one was not
`lackluster at all — hurrah!
`
`
`
`>‘ Post-College Kitchen guide to wedding
`registries: Part Two
`~ Tips for planting a vegetable garden
`I A delicious weekend in New York City
`Slow cooker coconut curry chicken
`Fun, yum at an afternoon American tea
`~ Web Bites: Wedding cake; DIY outdoor table;
`Creme Brulee French toast
`' I/.id-friendly, one-pot mac and cheese
`° Pulitzer Pies
`
`» Wei: Bites: Royal cake; Asparagus tortellinl
`salad; Cinoo de Mayo," Apron giveaway
`>' Raspberry scones for the royal wedding - or
`spring
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`

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`Awards Competition Vvinner
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`Posbtollege Kitchen Here's the long awaited
`part two of my wedding registry advice.
`Posbcoilene Kitchen
`guide to wedding
`registries: Part Two
`www.isonlirie.corn
`I v‘
`65 5: guide to =!iii§dClir:g
`tries last W163. and
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` Postftollege lfitchen
`
`June 8 at 12:19pm
`
`Post—CoIlege Kitchen In honor of all of my
`recently engaged friends, I'm working on a pat
`two to my guide to wedding registries. Here's part
`one from last year.
`
`Sweet Potato Black Bean Spread
`
`1 medium—lar'ge sweet potato
`1 15-ounce can black beans, drained and rinsed
`1/4 teaspoon sea salt
`U4 teaspoon garlic powder
`1/2 teaspoon chili powder
`1/2 teaspoon ground cumin
`3/4 teaspoon dried onion flakes
`liteaspoon dried Mexican oregano
`3 to 4 tablespoons extra—virgin olive oil
`Peel and chop the sweet potato into 1-inch pieces. Place in a microwave—safe bowl and cover with a
`damp paper towel. Microwave 5 to 7 minutes or until cooked, Alternatively you could cook the potato
`whole with the skin on (be