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Pretzel Crisps: The Importance of Evaluating A Trademark’s Strength

The New York Times had an interesting article about the ongoing dispute between Princeton Vanguard and Frito-Lay over Princeton Vanguard’s attempts to obtain a federal trademark registration for the mark PRETZEL CRISPS.  You know Pretzel Crisps – the thin, crunchy pretzel crackers that seem to go perfectly with any type of dip.  Well, the company that makes Pretzel Crisps, Princeton Vanguard, has filed several trademark applications for the mark PRETZEL CRISPS for pretzel crackers (and has disclaimed exclusivity with respect to the word “PRETZEL”).  It was even able to obtain one registration for the mark on the Supplemental Register.  Frito-Lay, which the Times describes as “the 800-pound gorilla of the snack food market owned by PepsiCo,” has opposed registration of the pending application for PRETZEL CRISPS and has petitioned to cancel the registration of the PRETZEL CRISPS mark on the grounds that the mark is merely descriptive of the goods and has not acquired the necessary distinctiveness needed to obtain trademark registration.  Frito-Lay, which sells pretzels under the trademark ROLD GOLD and owns the Stacy’s Pita Chips brand, further argues that the PRETZEL CRISPS mark is generic.  (Notably, Frito-Lay has a pending intent-to-use application for the mark STACY’S PITA CRISPS in which it has disclaimed exclusivity as to the words “PITA CRISPS” apart from the mark as a whole).

The Times article frames the issue as one of David (Princeton Vanguard) versus Goliath (Frito-Lay/PepsiCo).  This theme has been increasingly popular of late, and we have previously written on the issue of trademark bullying.  The article in the Times quotes Princeton Vanguard’s snack food entrepreneur as saying:  “This fight is about a big company that wants to dominate the snack food category by crushing a little company like ours rather than by competing with us.”  Aside from this issue, though, the story highlights the importance of selecting strong, protectable trademarks.  If you start with a mark that is descriptive, it can be more difficult to obtain and enforce trademark rights.  

There is a wide range of types of trademarks, ranging from the fanciful to the descriptive.  Fanciful trademarks, which are “coined” or made up terms that have no meaning prior to their usage as trademarks, are the strongest type of trademark.  An example of a fanciful trademark is EXXON.  EXXON is a word that did not exist in the English language prior to functioning as a trademark to identity a source of goods/services.  Arbitrary trademarks, which are common terms that have no connection to the underlying goods/services, are also strong trademarks.  An example of an arbitrary trademark is APPLE for computers.  The word “apple” existed prior to its use as a trademark, but its normal meaning bears no relationship to the goods or services to which it is applied.  A third type of trademark that is generally considered to be quite strong (though not as strong as fanciful or arbitrary trademarks) is suggestive trademarks.  Suggestive trademarks allude to some quality or characteristic of the product or service but require the consumer to exercise some degree of imagination to determine the exact nature of the product or service.  An example of a suggestive trademark is COPPERTONE for tanning lotion.  Fanciful, arbitrary and suggestive trademarks are inherently distinctive.  A business obtains rights in an inherently distinctive trademark upon first use of the mark in commerce.  If the mark is not fanciful, arbitrary or suggestive, and therefore not inherently distinctive, a business can obtain ownership rights in a trademark only if the mark attains a secondary meaning., i.e., it has developed a meaning other than what the word or words describe – it now identifies a single source of goods.

So, that is the problem with selecting descriptive trademarks.  They are not inherently distinctive and, therefore, are not protectable upon first use in connection with goods or services.  A trademark is merely descriptive under Section 2(e)(1) of the Trademark Act (15 U.S.C. 1052(e)(1)) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services offered in connection with the trademark.  In order to be protectable as trademarks, descriptive terms must acquire distinctiveness based on substantial exclusive and continuous use in commerce.  To apply for registration of a descriptive trademark, the applicant must prove that the mark has secondary meaning or acquired distinctiveness based on use in commerce for five years before the date on which the claim of distinctiveness is made. 

As the article in the Times points out, descriptive trademark have an allure, particularly in the Internet age where consumer search for and are introduced to brands (and trademarks) online.  Marketing departments love descriptive trademarks for a simple reason:  they immediately communicate to potential consumers what the goods or services are that are sold in connection with the trademark.  From a marketing perspective, fanciful and arbitrary marks present problems.  Those types of trademarks require more marketing effort to cause consumers to associate the fanciful or arbitrary term with a particular business’ goods or services.  On the other hand, though, the adoption of a descriptive trademark causes its own costs.  For example, because they are not immediately protectable, they are generally more difficult to register.  The user of a descriptive trademark will end up spending more money in its attempts to register a descriptive trademark given that it must demonstrate that the mark has developed secondary meaning.  In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark, the mark is not protectable and the owner will not be able to prevent others, even competitors, from using the same or similar terms. 

And that brings us back to PRETZEL CRISPS.  The question of whether the mark is descriptive or not is up to the Trademark Trial and Appeal Board to decide.  But Princeton Vanguard may have been able to avoid the current dispute with Frito-Lay if it has initially selected a strong trademark for its pretzel crackers that was not arguably descriptive.

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