Two Generics Can Make a Mark: Princeton Vanguard v. Frito-Lay North America
The U. S. Court of Appeals for the Federal Circuit vacated and remanded for further proceedings the decision of the Trademark Trial and Appeal Board (TTAB or Board) cancelling the registration of the mark PRETZEL CRISPS, finding the Board applied the wrong legal standard for genericness. Princeton Vanguard, LLC v. Frito-Lay North America, Inc., Case No. 14-1517 (Fed. Cir., May 15, 2015) (O’Malley, J.).
A party opposing an application for mark or petitioning to cancel a mark bears the burden of proving genericness by a preponderance of evidence. Frito-Lay opposed Princeton Vanguard’s application to register PRETZEL CRISP, arguing that the term is generic for pretzel crackers. The Board sustained Frito-Lay’s opposition and granted its petition for cancellation. According to the Board, if a mark is compound, then the 1987 Gould Paper case applies, allowing it to analyze the terms individually. If on the other hand, the mark is a phrase, then the 1999 American Fertility cases applied, requiring the Board to consider the mark in its entirety. The Board found that the term “pretzel crisp” was a compound term, not a phrase, thereby permitting it to consider the terms individually under Gould. In doing so, the Board determined that “pretzel” was generic for pretzels and pretzel snacks, while “crisp” was generic for crackers leading to the conclusion that “pretzel crisp” was generic for “pretzel crackers.” Princeton Vanguard appealed.
The Federal Circuit clarified that there is only one legal standard for genericness: the two-part test set forth in the 1986 Marvin Ginn case. Under this test, in order to determine whether a mark is generic, 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. The test is the same regardless of whether the mark is a compound term or a phrase. The Federal Circuit had previously explained that even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.
Applying its president to this case, the Federal Circuit noted that since the record was replete with evidence of the public’s perception of the term PRETZEL CRISP as a whole, it was unclear why the Board would resort to analyzing the terms individually. Although the Board claimed it would have reached the same conclusion had it analyzed the term as a phrase, the Court found no indication that the Board actually conducted such an analysis.
Rather, as the Court noted, although the record contained evidence, including declarations, survey evidence and evidence of use of the mark PRETZEL CRISP in the snack food industry, the Board gave “controlling weight” to the dictionary definitions, selective evidence of use by the public and evidence of use by Frito-Lay itself. For example, the Court observed that the Board improperly focused on evidence of the word “crisp” in isolation and considered a few selected examples of “pretzel crisp.” Further, despite finding no flaws in the two genericness surveys submitted by the parties, the Board disregarded the results of survey evidence without explanation. Finally, in the Federal Circuit’s view the Board took a “short cut,” ignoring evidence that might have compelled a contrary conclusion. On remand, the Court instructed the Board to apply the appropriate legal standard, consider all of the evidence, and give appropriate consideration to the proffered survey evidence.
Practice Note: Regardless of whether a mark is a compound term or a phrase, there is only one legal standard for determining whether a mark is generic, and it is a two-part inquiry. But the critical issue is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus or class of goods or services in question.