Case identification: In re Green Bark Gummies, Inc., Serial No. 86283461 (April 8, 2016) [not precedential].

Green Bark Gummies, Inc. (“Applicant”) appealed from the final refusal of the Trademark Examining Attorney to register GUMMY BITES in standard characters for “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.”

Registration was refused pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1
052(e) (1), on the grounds that the mark is deceptively misdescriptive of the identified goods or, in the alternative, that the mark is merely descriptive of them.

HISTORY OF HOW THESE ALTERNATIVE REFUSALS WERE DETERMINED

In its initial application, Applicant identified its goods as “dog treats.” The Examining Attorney refused registration on the ground that the mark was merely descriptive, relying on the definition of GUMMY of “made of, containing, or covered with gum or a sticky or chewy substance” and of BITES as “snack,” and asserting that when these two words were combined, the resulting mark immediately conveyed that the goods “are a dog snack that is made of, containing, or covered with gum or a sticky or chewy substance”.

Applicant argued that its mark only suggests “that a dog will chomp on the treat several times and enjoy it.” It also asserted that neither “gummy” nor “bites” is a word that is commonly or readily used in the vocabulary of dog treat consumers to describe a snack for dogs. The Examining Attorney was not persuaded by Applicant’s response, and on December 23, 2014 issued a final refusal on the ground that the mark was merely descriptive. It is noteworthy that the Examining Attorney submitted substantial evidence from third-party websites showing that the words GUMMY and BITES are both used to describe dog treats.

Applicant filed a request for reconsideration on January 5, 2015 amending the identification of goods, as follows: 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. Additionally, Applicant also explained that, although Applicant had not yet formulated the product; it “will not be a traditional gummy product.” The statements made by Applicant in its request for reconsideration led to the Examining Attorney issuing, on January 15, 2015, a non-final Office action in which he refused registration under Section 2(e)(1) on the ground that the mark is deceptively misdescriptive of Applicant’s goods, noting Applicant’s statement that its product will not be a traditional gummy product. He also continued the refusal on the basis of mere descriptiveness in view of third-party website evidence describing Applicant’s dog treats as “gummy.”

On July 10, 2015 Applicant attempted to amend its application by disclaiming both the word GUMMY and the word BITES and arguing against both refusals. In the last Office action, in July 2015, the Examining Attorney made both refusals final, and advised Applicant that the proffered disclaimers were not acceptable because an entire mark may not be disclaimed.

An appeal followed. Applicant filed a notice of appeal in January 2016 accompanied by its appeal brief. Then, Applicant filed a corrected appeal brief on January 7, 2016 (the corrected appeal brief was treated as the brief of record). The court noted Applicant had not contested the Examining Attorney’s refusal to accept the disclaimer of the words GUMMY and BITES; therefore, did not consider the propriety of the disclaimer as an issue on appeal.

Green Bark Gummies, Inc. showed a lot of tenacity in its refusal to give up after the first refusal of the mark. But, in the end, Green Bark and Fido lost when the Board affirmed the refusal.