By Pamela C. Maloney, J.D.
Although the use of the term "cheese zombies" was not generic reference for a type of filled bakery product that would justify cancellation of the registered mark, the term was merely descriptive of the trademark owner’s baked bread product that was filled with cheese and, therefore, a petition to cancel the registration was granted by the Trademark Trial and Appeal Board (Patty’s Original Cheese Zombies, Inc. v. Dumploads On Us, December 20, 2016, Ritchie, L.).
Dumploads On Us owned a registration for the mark "CHEESE ZOMBIES," with "CHEESE" disclaimed, for filled bakery products. After Dumploads obtained its mark, Patty’s Original Cheese Zombies, Inc. began using a similar mark. Patty’s filed a petition to cancel Dumploads’ registration on the ground that when used in connection with "filled bakery products," the term was generic. In the alternative, Patty’s argued that the composite term "cheese zombies" was merely descriptive.
"Genericness" of mark. Identifying the genus of goods made by Dumploads as filled bakery products, the TTAB found thatthe evidence submitted by Patty’s was not sufficient to show that ordinary consumers who purchase and eat filled bakery products would understand the term"cheese zombies," as a type of "filled bakery products," including a loaf of bread with cheese inside. Instead, media references, school menus, recipes describing cheese-filled bakery products as cheese zombies, when combined with lay testimony regarding the product, clearly established that the term "cheese zombies" was not a generic reference to a filled bakery product. Thus, the petition for cancellation on this ground was denied.
Mere descriptiveness. A composite of descriptive terms like "cheese zombies" was registrable only if it had a separate, non-descriptive meaning. Whether a term was merely descriptive was determined in relation to the goods for which registration is sought, the context in which it is being used on or in connection with those goods, and the possible significance the term would have to the average purchaser because of the manner of use. If a mark requires imagination, thought, and perception to ascertain the nature of the goods, then it qualified as suggestive and could be registered. Applying these factors to the "cheese zombies" mark, the TTAB determined that based on some media reports, school menus, and lay testimony cited in its "genericness" discussion and that described cheese zombies as a filled bakery product, it was clear that the term was almost always used to describe the same type of baked item filled with cheese.
Furthermore, despite Dumploads’ argument that the mark had acquired distinctiveness as a result of the high number of third-party descriptive uses of the term for filled bakery products, the record showed that Download’s use of the mark was not substantially exclusive. Therefore, the mark was merely descriptive of the identified goods and the petition to cancel was granted.
The case is Cancellation No. 92058966.
Attorneys: Peter J. Tormey (Antero & Tormey LP) for Patty’s Original Cheese Zombies, Inc. Sharon Adams (Adams Law Office) for Dumploads On Us.
Companies: Dumploads On Us; Patty’s Original Cheese Zombies, Inc.
MainStory: TopStory Trademark USPTO
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