Soremartec SA

Trademark Trial and Appeal Board

Feb 20, 2019

No. 79204456 (T.T.A.B. Feb. 20, 2019)

Mailed: February 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Soremartec SA
_____

Serial No. 79204456
_____

E. Anthony Figg, Leo M. Loughlin and Davide F. Schiavetti of Rothwell, Figg, Ernst
& Manbeck P.C., for Soremartec SA.
Tracy Whittaker-Brown, Trademark Examining Attorney, Law Office 111,
Christopher Doninger, Managing Attorney.
_____

Before Cataldo, Wolfson and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Soremartec SA (“Applicant”) seeks registration on the Principal Register of the
mark depicted below for “Pastry and confectionery; biscuits, cookies; filled wafers” in
International Class 30.1

1 Application Serial No. 79204456 was filed on January 19, 2017, under Section 66(a) of the
Trademark Act, 15 U.S.C. 1141(f), based on Applicant’s request for extension of protection of
International Registration No. 1337510, filed January 19, 2017 on the basis of priority
derived from Benelux Reg. No. 0998960, dated July 19, 2016. The application includes the
following description of the mark: “The mark consists of the stacked stylized wording
‘NUTELLA PETITS.’ The letter ‘N’ in ‘NUTELLA’ is black, and the remaining letters in the
This Opinion is Not a
Precedent of the TTAB
Serial No. 79204456

- 2 -

Registration has been refused pursuant to Section 6(a) of the Trademark Act, 15
U.S.C. §1056(a), based on Applicant’s failure to comply with the requirement to
disclaim the term PETITS on the ground that it is merely descriptive of Applicant’s
goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1).
When the refusal was made final, Applicant appealed and filed a Request for
Reconsideration. On June 12, 2018, the Examining Attorney denied the request and
maintained the refusal. The appeal was subsequently resumed and fully briefed. We
affirm the refusal of registration in the absence of a disclaimer.
I. Applicable Law
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a). A disclaimer
is a statement that the applicant or registrant does not claim the exclusive right to
use a specified element or elements of the mark in a trademark application or
registration. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013). “The
effect of a disclaimer is to disavow any exclusive right to the use of a specified word,
phrase, or design outside of its use within a composite mark.” Id. (citing In

term are red. The term ‘PETITS’ is brown.” The colors black, red and brown are claimed as a
feature of the mark.
Serial No. 79204456

- 3 -
re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979)). Failure to
comply with a disclaimer requirement is grounds for refusal of registration. In re
Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); In re Omaha
Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart Inc.,
104 USPQ2d 1931, 1933 (TTAB 2012).
Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1)
and, therefore, are subject to disclaimer if the mark is otherwise registrable. A term
is deemed to be merely descriptive of goods or services if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the goods or services. See In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d
1574, 1575 (Fed. Cir. 2015); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978).
II. Whether PETITS is Merely Descriptive of the Goods
Applicant’s goods are “pastry and confectionery; biscuits, cookies; filled wafers.”
The Examining Attorney argues that the term PETITS is descriptive of the goods “in
that it refers to their size because the goods are small.”2 In support, the Examining
Attorney submitted English-language dictionary definitions for “petit,” defined as

2 13 TTABVUE 6. Citations to the record are to TTABVUE, the docket history system for the
Trademark Trial and Appeal Board, by entry number and page.
Serial No. 79204456

- 4 -
“small or of less importance; petty”3 and the related term “petite,” defined as “small
in size or scope; tiny.”4 The Examining Attorney also provided printouts from an
Internet search and articles retrieved from the Nexis database showing descriptive
uses of the term PETITS5 in connection with pastry and bakery goods. For example:
• Chocolateandzucchini.com/recipes lists a recipe for “Petits Beurres (French
Butter Cookies)”;6
• Bonappetit.com provides a recipe for making “Petits Pains au Chocolat”;7
• Vosgeschocolate.com offers “Petits Chocolats” (bite-sized bonbons);8
• Martin Booe, “Fancy That!; Petits Fours Enjoy a Renaissance With Los
Angeles Pastry Chefs,” LOS ANGELES TIMES, November 10, 2002.9
Applicant does not dispute that in the food industry, the term “petits” denotes
small items, or that “petits four” has become a term of art meaning a bite-sized,
decorated cake.10 Rather, Applicant agrees that “petit” is a recognized word meaning

3 At https://www.collinsdictionary.com/dictionary/english/petit, attached to July 25, 2017
Priority Action, at TSDR 3. The Trademark Status and Document Retrieval (TSDR) citations
refer to the electronic file database for the involved application at http://tsdr.uspto.gov.
4 American Heritage dictionary, at https://www.ahdictionary.com/word/search.html?
q=petite, attached to July 25, 2017 Priority Action at TSDR 8. Applicant also provided a
definition of “petit” from Dictionary.com, attached to its September 29, 2107 Response at
TSDR 5.
5 Evidence of record also supports a finding that “petit” and “petite” (in singular or plural
form) are French terms meaning “small,” but because the term “petits” is recognized as an
English word, we need not apply the doctrine of foreign equivalents.
6 October 2, 2017 Office Action at TSDR 11-22.
7 June 12, 2018 Denial of Request for Reconsideration at TSDR 51-53.
8 At https://www.vosgeschocolate.com, attached to June 12, 2018 Denial of Request for
Reconsideration at TSDR 96-98.
9 June 12, 2018 Denial of Request for Reconsideration at TSDR 1.
10 See, e.g., Harry & David’s “Birthday Petits Fours” at https://www.harryanddavid.com,
attached to June 12, 2018 Denial of Request for Reconsideration at TSDR 68-71;
Landolakes.com’s recipes for “Petits Fours” and “Wedding Fruitcake Petits Fours,” Id. at 4-9
and 54-57.
Serial No. 79204456

- 5 -
“small,” and notes that “[p]etits is the plural of petit.”11 Applicant contends, however,
that “[w]hile it is true that the word ‘PETITS’ means ‘small’ in French, in this case it
simply does not convey any immediate idea of the ingredients, quality,
characteristics, function, feature, purpose or use of the goods sold under the
‘NUTELLA PETITS’ mark. This is because the pastry, confectionery, biscuits, cookies
or wafers to be sold under the mark at issue are not miniature size, or even small
products, but rather regular size products.”12 Further, Applicant contends “there is
no comparable regular size version” of the products sold under its NUTELLA PETITS
mark.13
Whether the term “petits” is merely descriptive is determined, not in the abstract,
but in relation to Applicant’s goods, the context in which the mark is being used, and
the possible significance that the term would have to the average purchaser of the
goods because of the manner of its use. In re Abcor Dev. Corp., 200 USPQ at 218; In
re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). Here, the application is based solely
on an International Registration and no evidence has been put in the record to show
the nature of the goods on which Applicant uses or intends to use its mark. Thus,
there is no evidentiary support for Applicant’s statement that the goods are “regular
size.” The record is devoid of any information as to what “regular size” means or the
extent to which the relevant industry recognizes a standard for regular size versus

11 September 29, 2017 Response to Office Action at TSDR 2. Applicant provided the following
definition of “petit” from Dictionary.com: “small; petty; minor.” Attached to its September 29,
2107 Response at TSDR 5.
12 Applicant’s Reply Brief, p. 1; 14 TTABVUE 4.
13 Id. at p. 2; 14 TTABVUE 5.
Serial No. 79204456

- 6 -
small or large size for such goods. On the other hand, given that the term “petits” has
a defined meaning in the food industry to indicate smaller-sized foods, as well as a
general meaning in the English language as meaning “small,” consumers will expect,
upon encountering Applicant’s mark NUTELLA PETITS, that the term “petits”
signifies that the goods are small in comparison to some larger version of themselves,
or that they are packaged in small batches or portions.14 The term “petits”
immediately conveys this meaning without any need for additional thought or
imagination. Accordingly, it is merely descriptive of a feature of the goods.
Applicant argues that the Office has registered marks containing the term “petits”
or variations thereof without disclaimers.15 In response to the Examining Attorney’s
proffered third-party registrations of marks where the term PETITS (or variations
thereof) were disclaimed,16 Applicant submitted 19 third-party registrations where
PETITS was not disclaimed.17

14 See, e.g., the online article “Hostess Releases Grown-Up, Bite-Sized Snack Cakes,” noting
that Hostess is “launching a line of new, small-batch-inspired treats…these Bakery Petites
don’t come wrapped in pairs, but in large, resealable bags….” At
https://www.foodandwine.com, attached to June 12, 2018 Denial of Request for
Reconsideration at TSDR 28.
15 Applicant’s Appeal Brief, p. 4, 11 TTABVUE 8.
16 October 2, 2017 Office Action at TSDR 33-97.
17 April 30, 2018 Response to Office Action at TSDR pp. 2-23. We note that the proferred
printouts of third-party registrations fail to show current status or title of the registrations.
To properly make a third-party registration of record, a copy of the registration (such as from
the electronic records of the Office) showing the current status and title of the registration
must be submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998)
(citing Smith and Mehaffey, 31 USPQ2d 1531, 1532 at n.3 (TTAB 1994)); see also TBMP §
1208.02 (June 2018). For sake of completeness we have considered them; nonetheless, their
probative value is limited, as discussed more fully below.
Serial No. 79204456

- 7 -
As we have often noted, each case must be decided on its own set of facts. In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Most of the marks in
the registrations submitted by Applicant appear to be unitary phrases and, as such,
a disclaimer of the individual word would not be required, and, in one case, the
registration is on the Supplemental Register,18 which supports the Examining
Attorney’s position. Thus, the fact that the Office has not required a disclaimer of
PETITS in the registrations submitted by Applicant does not persuade us that
a disclaimer is not required in the case before us. See generally, TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) §1213 (Oct. 2018).
III. Summary
Based on the record before us, we find that the relevant public, when it considers
PETITS in connection with “pastry and confectionery; biscuits, cookies; filled wafers,”
will immediately understand the term to describe something “small” about the goods,
such as that they are small in size, served in small portions, or packaged in small
quantities.
Decision: The refusal to register based on the requirement to disclaim the term
PETITS is affirmed. However, if Applicant submits the required disclaimer of
PETITS to the Board within thirty days, this decision will be set aside, the disclaimer

18 Reg. No. 3979717 for the mark PETIT BITE for “biscuits; cookies and crackers,” attached
to April 30, 2018 Response at TSDR 21.
Serial No. 79204456

- 8 -
will be entered, and the application will proceed to registration in due
course.19 See Trademark Rule 2.142(g), 37 C.F.R. §2.142.

19 The standardized printing format for the required disclaimer text is as follows: “No
exclusive right to use PETITS is claimed apart from the mark as shown.”