Tuesday, August 18, 2015

CAFC Affirms TTAB: FISH FRY PRODUCTS Lacks Acquired Distinctiveness, Disclaimer Required

The U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, upheld the TTAB's ruling (here) requiring disclaimer of the term FISH FRY PRODUCTS in the mark shown below, for "marinade; sauce mixes, namely, barbecue shrimp sauce mix; remoulade dressing; cocktail sauce, seafood sauce; tartar sauce; gumbo filé; and cayenne pepper." The Board found the phrase to be generic, and alternatively merely descriptive of the goods and lacking in acquired distinctiveness. The CAFC affirmed on the latter ground, declining to reach the genericness issue. In a concurrence, Circuit Judge Newman asserted that the court should have affirmed on the genericness ground and not reached acquired distinctiveness. In re Louisiana Fish Fry Products, Ltd., Appeal No. 13-1619 (Fed. Cir. August 14, 2015) [precedential]

Acquired distinctiveness is a factual determination that the CAFC reviews under the substantial evidence standard. The PTO bears the burden to prove genericness by clear evidence, but the applicant bears the burden to prove acquired distinctiveness.

The Board deemed FISH FRY PRODUCTS to be "highly descriptive," a finding that Louisiana Fish Fry did not challenge in this appeal. As a result of that finding, Louisiana Fish Fry was faced with an "elevated burden to establish acquired distinctiveness." The Board concluded that this burden was not met because Louisiana Fish Fry's evidence did not relate specifically to the term FISH FRY PRODUCTS.

Louisiana Fish Fry provided two declarations from its president, along with five registrations for marks that include the term FISH FRY PRODUCTS. The first declaration merely asserted that the term had become distinctive through "substantially exclusive and continuous use" for the at least the last five years. Given the highly descriptive nature of the term, however, the Board was within its discretion not to accept the five-year statement as prima facie evidence of acquired distinctiveness.

The second declaration stated that the mark LOUISIANA FISH FRY PRODUCTS had been in use for thirty years, and it provided certain sales and advertising figures. However, this data did not reflect use of FISH FRY PRODUCTS by itself, and so did not establish acquired distinctiveness as to that term. Likewise, Louisiana Fish Fry's other registrations concerned marks that included FISH FRY PRODUCTS with other words (for example, LOUISIANA FISH FRY PRODUCTS).

The court held that substantial evidence supported the Board's determination that Louisiana Fish Fry did not carry its burden to prove that FISH FRY PRODUCTS had acquired distinctiveness, and it affirmed the Board's ruling.

Judge Newman concurred in the result, but she would have sustained the denial of registration on the ground of genericness. Only if the Board's ruling on genericness was incorrect should the CAFC have reached the issue of acquired distinctiveness. The majority, one might say, put the fishcart before the fish.

Read comments and post your comment here.

TTABlog notes: The only person I know from Louisiana is my former colleague, Ian Mullet. I wonder what he thinks of this decision? One of the angelfish in Doug Wolf's aquarium died this weekend. It's name was Louisiana. Coincidence?

Text Copyright John L. Welch 2015.


At 2:31 PM, Blogger Ian Mullet said...

I think they got the facts right. As just one relevant consumer, I can tell you that I'm very familiar with the design and the name "Louisiana Fish Fry Products," but if you showed me the words "Fish Fry Products" by themselves, then the general meaning of the term rather than the specific brand would come to mind. No secondary meaning for me.


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