Monday, May 18, 2015

CAFC Vacates PRETZEL CRISPS Decision: TTAB Misapplied Genericness Test

The CAFC vacated the TTAB's decision [TTABlogged here] finding the term PRETZEL CRISPS to be generic for "pretzel crackers," and remanded the case to the Board for application of the correct legal standard set forth in its Marvin Ginn decision. The appellate court concluded that the Board had failed to consider evidence of the relevant public's understanding of PRETZEL CRISPS in its entirety. Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 114 USPQ2d 1827 (Fed. Cir. 2015) [precedential].

According to Marvin Ginn, "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." The parties did not dispute that the genus of goods at issue was "pretzel crackers" and the relevant public, ordinary consumers who purchase and eat same.

The Board acknowledged that it must determine whether a proposed mark as a whole is generic, but it cited In re Gould for the proposition that when the mark is a "compound term (in other words a combination of two or more terms in ordinary grammatical construction)," it need only look at the meanings of the constituent words. If the proposed mark is a phrase, however, American Fertility requires that the Board "conduct an inquiry into the meaning of the disputed phrase as a whole." But the CAFC pointed out that there is no such dichotomy: "The problem with the Board’s analysis is that there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn."

Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49. Our decision in Gould merely provides additional assistance in assessing the genericness of compound terms where it can be shown that “the public understands the individual terms to be generic,” and the joining of those terms into one compound word provides no additional meaning. Id. It is not a short-cut and does not supplant the two-part test set forth in Marvin Ginn.

Consideration of the public's understanding of the constituent words of a compound term may be a useful first step in the genericness analysis, but the Board must then consider the record evidence regarding the public's understanding as to whether joining the words together lends any additional meaning. Here, the Board deemed PRETZEL CRISPS to be a compound term, not a phrase, and evaluated the individual terms under In re Gould. "Where, as here, the record is replete with evidence of the public’s perception of the term PRETZEL CRISPS as a whole, it is unclear why the Board would resort to analyzing the terms individually or why it would believe doing so would aid its analysis."

After analyzing the constituent words under In re Gould, the Board "stated in passing" that had it analyzed PRETZEL CRISPS as a phrase it would have reached the same conclusion because "the words strung together as a unified phrase also create a meaning that we find to be understood by the relevant public as generic for 'pretzel crackers.'" But the court found "no evidence that the Board conducted the necessary step of comparing its findings with respect to the individual words to the record evidence demonstrating the public's understanding of the combined term PRETZEL CRISPS."

The CAFC therefore concluded that the Board applied the incorrect legal standard. On remand, the Board must consider the evidence concerning the relevant public's understanding of the term PRETZEL CRISPS in its entirety.

The court went on to observe that the record contained "significant evidence in the form of declarations, survey evidence, and evidence of use of PRETZEL CRISPS in the snack food industry and by the media."

Though the Board is not required to discuss every piece of evidence, it cannot focus primarily on evidence of the word “crisps” in isolation, select a few pieces of evidence involving the combined term “pretzel crisps,” and conclude that the trademark is generic. Nor can it disregard the results of survey evidence without explanation. Just as it may not short-cut its legal analysis, the Board may not short-cut its consideration of the factual record before it.

The CAFC particularly noted the Board's questionable treatment of the survey evidence of record. The Board seemingly considered the respective survey evidence of the parties as cancelling each other out, but it did not explain why. However, it found no flaw in Princeton Vanguard's survey evidence (indicating that 55% of respondents thought PRETZEL CRISPS was a brand name and 36% thought it a common name), and expressly agreed with the criticism of Frito-Lay's survey. Instead the Board gave controlling weight to dictionary definitions, evidence of use by the public, and evidence of use by Princeton Vanguard. "On remand, the Board will have the opportunity to make the relevant factual findings based on all of the evidence of record, and must give appropriate consideration to the proffered survey evidence."

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TTABlog comment: The "dichotomy" that the CAFC complains about is a child of its own confusing precedents. If there is no such dichotomy, why does this opinion still talk about "compound terms" and "phrases?" Why not just look at the term proposed as a mark and ask, "what does the term mean?" based on all the record evidence?

Text Copyright John L. Welch 2015.


At 9:46 PM, Anonymous Anonymous said...

At some point, this Court or the Supreme Court will have to come to grips with the fact that sometimes the relevant public perception, perhaps reflected in a consumer survey, should not be relied upon if the result is to allow the appropriation of generic words. For example, a survey might well show recognition as a source of such words as "The Weather Channel," "The Sports Channel" or "Tennis Magazine," to give just a few examples. One can probably think of a number of others out there. Assuming that these terms are generic, perhaps someone should revisit the test for determining genericness (or even mere descriptiveness for that matter). Surveys, like affidavits from people in the trade, cannot always be relied on to determine the correct outcome of the question of genericness. Don't we know that if a term is in fact generic, no amount of recognition as a source will make it a trademark. A generic term is never supposed to attain trademark status. If this is the case, maybe we need a test that will work all the time, not just some of the time.


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