HEB Grocery Co., LP

Trademark Trial and Appeal Board

Oct 27, 2004

No. 76354346 (T.T.A.B. Oct. 27, 2004)

Mailed:
27 October 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re HEB Grocery Company, LP
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Serial No. 76354346
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Kirt S. O’Neil of Akin Gump Strauss Hauer & Feld LLP for
HEB Grocery Company, LP.
Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 108 (David E. Shallant, Managing Attorney).
_______
Before Quinn, Bottorff, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
HEB Grocery Company, LP (applicant) applied to
register the mark SNACK BITES, in typed form, on the
Principal Register for goods ultimately identified as
follows: “packaged serving consisting primarily of meat,
cheese, vegetables and fruits” in International Class 29
and “packaged serving consisting primarily of crackers,
cookies and bagels” in International Class 30. The
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76354346
2
application (Serial No. 76354346 filed January 2, 2002) was
based on applicant’s allegation of its bona fide intention
to use the mark in commerce.
The examining attorney refused to register applicant’s
mark on the ground that the mark would be merely
descriptive under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), if it were used with applicant’s
goods. The examining attorney’s position (Brief at 5) is
that applicant’s “words have a clear, unequivocal meaning,
and, as they appear combined in applicant’s mark, those
words describe unequivocally, snack bites, i.e., snack
consisting of food eaten between meals, which are bites
sizes, a mouthful. There is nothing left for speculation,
conjecture or imagination concerning applicant’s mark.”
Applicant’s position (Brief at 6) is that:
Applicant’s mark which consists of definable terms has
a unique connotation. For example, other definitions
provided by the Trademark Examining Attorney suggest
that BITES may refer to having a “stinging effect.”
When the term BITES is used in connection with SNACK,
such combination may employ a unique commercial
impression that is not descriptive of Applicant’s
goods. [An]other definition provided by the Trademark
Examining Attorney suggests that the term BITES refers
to bait. The combination of terms would possibly
indicate that Applicant’s goods are used for fishing.
In fact, consumers may possibly view Applicant’s mark
as SNAKE BITES which would further ensure a finding
that Applicant’s mark is not merely descriptive.
Ser. No. 76354346
3
Our principal reviewing court in In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir.
2003) recently discussed the issue of when a mark is
merely descriptive.
A mark is merely descriptive if it immediately
conveys information concerning a quality or
characteristic of the product or service. [In re
Nett Designs, 236 F.3d 1297, 1341, 57 USPQ2d 1564
(Fed. Cir. 1999)]. The perception of the relevant
purchasing public sets the standard for determining
descriptiveness. Id. Thus, a mark is merely
descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service. On the other hand, “if a mark
requires imagination, thought, and perception to
arrive at the qualities or characteristics of the
goods [or services], then the mark is suggestive.”
Id.
Inasmuch as we must view the mark in relationship to
applicant’s goods or services, the fact that in the
abstract people may guess that applicant’s mark may refer
to a “stinging effect” or to fishing bait is irrelevant.
Viewed in the context of applicant’s goods, potential
consumers of applicant’s snack items would not reach such
conclusions. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978) (“Appellant’s abstract test
is deficient – not only in denying consideration of
evidence of the advertising materials directed to its
goods, but in failing to require consideration of its mark
‘when applied to the goods’ as required by statute”).
Ser. No. 76354346
4
The following evidence is relevant in determining what
prospective purchasers would understand the term SNACK
BITES to mean if it were used on packaged servings
consisting of various food items. The examining attorney
has submitted definitions of “snack” as “a hurried or light
meal” and “food eaten between meals.” See Office Action
dated April 15, 2002 at 2-3.1 Regarding the term “bites,”
one definition that the examining attorney included is:
“an amount of food taken into the mouth at one time; a
mouthful.” Id. In addition, the examining attorney has
submitted numerous registrations that show that the term
“bites” has been disclaimed for various food items or
registered under the provision of Section 2(f) or on the
Supplemental Register.2 See, e.g., Registration Nos.
2,718,171 (PRO BITES, “Bites” disclaimed, for high protein,
low carbohydrate soy based snack foods); 2,690,963 (ORIEN
BITES, “Bites” disclaimed, for fish balls, calamari balls,
seafood wantons, seafood dumplings, etc.); 2,614,158 (YO
BITES, “Bites” disclaimed, for fresh prepackaged sliced
fruit); 2,600,371 (BELLA BITES, “Bites” disclaimed, for
processed portabella mushrooms); 2,425,543 (MORNING BITES,
1 Applicant has offered a disclaimer of the term “snack.” See
Response dated October 15, 2002 at 2.
2 When we discuss these registrations, we will refer to the
registrations that the examining attorney submitted with his
final refusal.
Ser. No. 76354346
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“Bites” disclaimed, for packaged, snack-sized egg-based
product with and without fillings and other ingredients,
wrapped in dough); 2,141,436 (WILD BITES, “Bites”
disclaimed, for beef jerky); 2,111,615 (YUM BITES, “Bites”
disclaimed, for cheese sandwich snacks and chocolate
sandwich snacks); 2,358,304 (BORDER BITES, “Bites”
disclaimed, for tacos, chimichangas, taquitos, empanadas,
and egg rolls); 2,643,658 (HOT BITES, Section 2(f), for
frozen bagel or dough based snacks with or without cheese
and/or with or without toppings); and 2,333,968 (GOLDEN
BITES, Supplemental Register, for prepared potatoes).
These registrations indicate that the term “Bites” would
have a descriptive meaning when used on various food items.
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270,
1277 (TTAB 1992) (“Although the registrations are not
evidence of use, the registrations show the sense in which
the term ‘fiber’ is employed in the marketplace, similar to
a dictionary definition”). Finally, the examining attorney
also included two Internet printouts that show use of the
term “Bites” descriptively. See www.cattaneobros.com
(“Snack Bites are the ends and pieces of our Smoked Beef
Sticks. Not only are they easy to chew, but they are bite-
sized”); www.seriousprofits.net (“‘Snack Bites’” – “A bite-
sized, high quality, quick ‘pick-me-up,’ offering a
Ser. No. 76354346
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filling, highly nutritious snack, that keeps energy up and
the diet suppressed for up to six hours”).
This evidence shows that both the terms “snack” and
“bites” would have a descriptive meaning when applied to
applicant’s packaged servings of various food items. We
note that applicant submitted “sample artwork of packaging
for similar goods sold under Applicant’s mark ‘LUNCH BITES’
and ‘CREATE-A-CRACKER.’” Response dated February 20, 2003
at 1. This material includes the question: “When is the
right time for Lunch Bites?” To which the answer is
“Lunchtime, Snacktime, Anytime!” The package indicates
that the contents of the package include ham, cheese, and
crackers. When prospective purchasers view the term SNACK
BITES in relation to applicant’s packaged servings of
various food items, they would understand the terms “snack”
and “bites” describe applicant’s snack food items that are
bite sized.3
3 Applicant argues (Brief at 5 n.1) that its “goods are not
restricted to consumption between meals.” Obviously, its goods
would include food for eating between meals or snack food. A
term is merely descriptive of goods and services even if it is
not descriptive of every aspect of the goods or services. In re
Pencils, Inc., 9 USPQ2d 1410, 1411 (TTAB 1988) (“While
applicant's stores may carry a variety of products, pencils are
one of those products, and, thus, the term ‘pencils’ is merely
descriptive as applied to retail stationery and office supply
services”).
Ser. No. 76354346
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We must obviously consider the mark as a whole in
determining whether the mark is merely descriptive because,
even if the individual terms are descriptive, the mark as a
whole may not be. However, in this case, we cannot agree
with applicant that the combined term is suggestive.
Again, applicant’s goods would be snacks that are small
size or bite size. Applicant’s argument that potential
customers would rely on an alternative definition of “bite”
as “a light meal or snack” to translate the mark to mean
SNACK SNACKS is unpersuasive. First, there is no per se
rule that simply repeating a descriptive or generic term
changes the term into a suggestive term. Second, the two
registrations (Nos. 1,399,730 and 1,439,558) to which
applicant refers are for the mark PIZZA!PIZZA! and both
contain a disclaimer of the term “pizza.” Third, it is
highly unlikely that prospective purchasers would
understand the term “bite,” which has a common meaning for
food items of small size, to be simply a redundant term for
snacks. Fourth, if we were to assume that the ‘730 and
‘558 registrations were relevant, we note that even “if
some prior registrations had some characteristics similar
to [applicant’s mark], the PTO's allowance of such prior
registrations does not bind the Board or this court.” In
Ser. No. 76354346
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re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Responding to applicant’s last argument that
applicant’s combined term is unique, even if this were
true, that fact would not change applicant’s descriptive
term into a suggestive one. In re Tekdyne Inc., 33 USPQ2d
1949, 1953 (TTAB 1994) (“The fact that applicant will, or
intends to be, the first and/or only entity to use the term
"MICRO-RETRACTOR" for surgical clamps is not dispositive
where, as here, such term unequivocally projects a merely
descriptive connotation”).
When we consider the evidence of record, we agree with
the examining attorney that the term SNACK BITES would
describe applicant’s packaged servings consisting primarily
of meat, cheese, vegetables and fruits or crackers, cookies
and bagels.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.