IP Law Daily, TRADEMARK—TTAB: Application to register GUMMY BITES for dog treats didn’t stick, (Apr 15, 2016)

By Cheryl Beise, J.D.

An application to register the mark GUMMY BITES for dog treats that did not have a “gummy” or “chewy” texture was properly refused on the ground of deceptive misdescriptiveness, the Trademark Trial and Appeal Board has ruled (In re Green Bark Gummies, Inc., April 8, 2016, Seeherman, J.).

Green Bark Gummies, Inc. (“applicant”) filed an intent-to-use application to register GUMMY BITES in standard characters for “dog treats.” The examining attorney refused registration on the ground that the mark was merely descriptive of a dog snack that was made of, containing, or covered with gum or a sticky or chewy substance.

When the refusal was made final, the applicant filed a request for reconsideration, in which the applicant amended the identification of goods to read “Dog treats, namely, treats that are a soft solid without having the attribute of being a gum or a sticky or chewy substance that require mild to moderate forces to masticate a few times before breaking apart, being ground down and being swallowed.” The applicant explained that its dog treat product, though not yet formulated, “will not be a traditional gummy product.” The examining attorney then refused registration under Section 2(e)(1) of the Trademark Act on the ground that the mark was deceptively misdescriptive of the applicant’s goods. The examining attorney also continued the initial refusal based on mere descriptiveness in light of third-party website evidence describing the applicant’s dog treats as “gummy.”

A mark is deceptively misdescriptive under Section 2(e)(1) if: (1) the matter sought to be registered misdescribes a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not; and (2) consumers are likely to believe the misrepresentation.

The examining attorney submitted dictionary definitions of the words GUMMY and BITES, third-party use of the terms in connection with dog treats and dog nutrition items, and third-party registration evidence showing the descriptiveness of the individual words.

The Board found that the combined words GUMMY BITES, when used in connection with dog treats, immediately described a characteristic of the goods. “We have no doubt that a consumer for dog treats would understand the mark to describe a gummy bite-sized dog treat,” the Board said. Further, the applicant’s restriction of its identification of goods to dog treats that did not have “the attribute of being a gum or a sticky or chewy substance” sufficed to show that the dog treats did not in fact possess the characteristic of being “gummy.” In an apparent attempt to craft the amendment to its identified goods to avoid a mere descriptiveness refusal, the applicant unwittingly set the stage for a deceptive misdescriptiveness refusal. “Applicant cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing,” the Board remarked.

The record also supported a finding that consumers were likely to believe that GUMMY BITES for dog treats were gummy or chewy. The applicant contended that “typical gummy bears” have as their pertinent ingredients gelatin and glazing agents, and that the applicant’s current GREEN BARK GUMMY brand dog treat did not contain such ingredients, nor did they look like typical gummy bears. However, the question is whether the word GUMMY in the mark has a significance for dog treats, such that when the word is combined with BITES the mark as a whole describes characteristics of dog treats, the Board explained. The applicant submitted an ingredient list for a different dog treat that it was currently selling, but this evidence was not probative. First, the applicant admitted that the product to be sold under the applied-for mark has not been formulated. Second, consumers were not likely to read through or understand the attributes of more than two dozen ingredients in the applicant’s product.

The refusal to register the mark GUMMY BITES on the ground of deceptive misdescriptiveness was affirmed. The Board did not consider the alternative ground for refusal based on mere descriptiveness.

The case is Serial No. 8628346.

Attorneys: Howard L. Hoffenberg (IP and Business Law Offices of Howard L. Hoffenberg, Esq.) for Green Bark Gummies, Inc. David C. Mayer, Trademark Examining Attorney, USPTO.

Companies: Green Bark Gummies, Inc.

Cases: Trademark USPTO