Jane Shay Wald
Irell & Manella LLP
In an earlier decision, the Board found the term PRETZEL CRISPS generic for "pretzel crackers." It granted Frito Lay's petition to cancel Princeton Vanguard's Supplemental Register registration, and sustained its pending application to register on the Principal Register. On appeal, the Federal Circuit determined that the Board had used an incorrect legal standard. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc. 786 F. 3d 960 (Fed. Cir. 2015). The Federal Circuit found that the Board had placed too much weight on the individual words, pretzel and crisp, and must consider the two words together, in their entirety. The Federal Circuit therefore vacated and remanded the decision for further proceedings. It also directed the Board to give appropriate consideration to the survey evidence of record. This case is the Board's new decision, on remand.
This time, the Board was extra clear in following the two-part test set forth in H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 782 F. 2d 987, 990 (Fed. Cir. 1986), to consider the two words combined as PRETZEL CRISPS in their entirety. It also carefully considered the survey evidence. The Board, under the correct test and with due consideration of the survey evidence, again found PRETZEL CRISPS generic for pretzel crackers, and granted the petition to cancel and sustained the opposition accordingly. For judicial economy in anticipation of another appeal, it also considered Respondent/Applicant's alternative position that registration was proper pursuant to acquired distinctiveness under Sec. 2(f). The Board determined that the requirements under Sec. 2(f) were not met.
The first part of the H. Marvin Ginn case requires a determination of the genus of the goods at issue. The parties agreed the category of goods was "pretzel crackers."
The second part of the genericness test is whether the relevant public understands the designation primarily to refer to that class of goods. "The relevant public for a genericness determination is the purchasing or consuming public for the identified goods." Because the Supplemental Registration and application imposed no restrictions or limitations to the channels of trade or classes of consumers for pretzel crackers, the Board found the relevant consuming public to be ordinary consumers who purchase and eat pretzel crackers. This definition of the relevant consumer was not disputed by either party in the findings on appeal.
The Federal Circuit has said it may be appropriate "as a first step" to look at the separate terms that make up the mark as a whole. The Board was again persuaded that dictionary definitions of pretzel and crisp were generic. The Board went on to examine media and industry references of the combined terms pretzel crisp and pretzel crisps and found substantial generic usage. The Board found that defendant's own marketing strategies contributed to the generic understanding of the two-word term PRETZEL CRISPS.
Next, the Board found flaws in both parties' surveys. The Board criticized the use of both parties' "Teflon" surveys for marks that were never coined terms. The Board pointed to the law of other circuits finding Teflon surveys unpersuasive except in the context of testing for genericide, i.e., testing to see whether a term that may once have been a mark has become generic. Defendant maintained that it coined the term PRETZEL CRISPS, suggesting that even if this type of survey were only good for coined marks, this actually was a coined mark. The Board shot that down, as defendant "asserts rights in the term under Sec. 2(f) acquired distinctiveness, not as a coined term." Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No. 91195552; Cancellation No. 92053001 (on remand) (TTAB 2017)
'Coffee Flour' Power Claim Was The Death Knell For This NameThe Board agreed with the Examining Attorney that Applicant's COFFEE FLOUR mark was generic for "flour made by processing and blending together coffee cherry skins, pulp and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use," in Int'l. class 30.
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The prosecution history included six office actions. The record on appeal was lengthy and the Opinion reviewed it with care, in 51 pages. A key problem for Applicant was that "this appeal involves the rare situation in which Applicant has created a new genus of goods by being the first (and, according to the record, the only) producer and seller of a new product—flour made from coffee cherry skins, pulp and pectin." The Board cited Prof. McCarthy regarding "the branding challenges facing a category creator like Applicant...."
"The situation of a new product with a name which is first used by the seller, is the classic context in which a name becomes generic. That is, a seller comes on the market with a product the public has never seen before. What will the public call it? If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all. The critical period is when the product first hits the market. It is then that the public will adopt a name for it. In many cases, the seller only realizes what is happening to the word after it is too late. The seller struggles mightily to educate the public to use some name other than the term he wants to call his mark. But it may be to no avail...." McCarthy on Trademarks and Unfair Competition, §§ 12.25, 12.26 (4th ed., June 2017 Update) ("McCarthy")
Applying the required two-part test for genericism the Board first found the genus was defined in Applicant's entire identification of goods, essentially, coffee flour. The Board next identified the relevant public as the purchasing or consuming public who purchase Applicant's goods, because the application placed no restriction on channels of trade or classes of consumers.
Applicant repeatedly used "coffee flour" as the generic term for the product, even using it as such in its patent application, stating: "[T]he application covers a process for obtaining coffee flour from the pulp or husk of the coffee bean." (Emphasis added) Applicant's specimen and its promotional video also supported the conclusion of generic use. Applicant's "story of coffee flour" and other statements in its video treats "coffee flour" as the name of a new product category, e.g, the marketability of coffee flour "vs. other flours." Interestingly, Applicant falsely used the federal symbol of registration in some versions of its labeling. Said the Board, in footnote 27, "we leave for another day the question of whether an applicant could ever legitimately rely upon evidence involving its misuse of the registration symbol to prove that it has educated the public to view its proposed mark as something other than a generic term." In re Empire Tech. Dev. LLC, 123 U.S.P.Q.2d 1544 Ser. No. 85876688 (TTAB 2017)
Third-Party Use By More Than One Fellow (Well, Many) Diluted the Applicant's YellowThe Board...
