Genericness Test Must Consider Mark PRETZEL CRIPS as a Whole

In Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 2014-1517 (Fed. Cir. 2015) (Available Here), the Federal Circuit found that the Trademark Trial and Appeal Board applied the incorrect legal standard in evaluating whether the mark PRETZEL CRISPS is generic. The Federal Circuit held that there is only one legal standard for evaluating genericness regardless of whether the mark is a compound term or a phrase: the two-part test set forth in Marvin Ginn Am. Fertility. First, the Board must identify the genus of goods or services at issue, and then assess whether the public understands the mark, as a whole, to refer to that genus.

In 2004, Princeton Vanguard filed an application to register PRETZEL CRISPS for pretzels. After an Office Action, Princeton Vanguard amended the goods from pretzels to pretzel crackers, disclaimed the word pretzel and requested registration on the Supplemental Register. The mark was subsequently registered on the Supplemental Register. After several years, Princeton Vanguard filed an application to register PRETZEL CRISPS on the Principal Register and claimed acquired distinctiveness. Frito-Lay North America, Inc. (“Frito-Lay”) filed a notice of opposition and argued that PRETZEL CRIPS is generic for pretzel crackers and is not registrable. Frito-Lay also petitioned to cancel the PRETZEL CRIPS Supplemental Registration. The proceedings were consolidated.

In February 2014, the Board sustained Frito-Lay’s opposition and granted its petition for cancellation. The Board found that PRETZEL CRISPS is a compound term, not a phrase, and analyzed the terms individually. The Board found that the term “pretzel” in PRETZEL CRIPS is generic for pretzels and pretzel snacks, and the term “crisps” is generic for crackers. The Board indicated that it considered the entire record, including the surveys, but gave controlling weight to the dictionary definitions, evidence of use by the public, including use by the media and by third-parties in the food industry, and evidence of use by defendant itself.

The Federal Circuit overturned the Board and found that the Board applied the incorrect legal standard when it failed to consider the relevant public’s understanding of the PRETZEL CRIPS mark in its entirety. The Board incorrectly assumed that if the mark is a compound term, then it can focus on individual words and if there is not additional meaning when the terms are combined, then the mark can be analyzed as compound terms. However, as the Court stated in American Fertility, genericness cannot be assumed for a phrase as a whole based solely on proof of genericness of its individual terms.

Consumer surveys are key to evaluating genericness and the public’s perception. The Federal Circuit found that the Board overlooked or disregarded a genericness survey as to which it apparently found no flaw. On remand, the Court noted that the Board must give appropriate consideration to the proffered survey evidence

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