Precedential No. 25: On Remand, TTAB Again Finds PRETZEL CRISPS Generic For Pretzel Crackers

In May 2015, the CAFC (opinion here) vacated the TTAB's decision (here) finding the term PRETZEL CRISPS to be generic for "pretzel crackers," and it remanded the case to the Board for application of the correct legal standard, namely the two-part test set forth in its Marvin Ginn decision. The CAFC concluded that the Board had failed to consider evidence of the relevant public's understanding of the term PRETZEL CRISPS as a whole. On remand, the TTAB has again ruled that PRETZEL CRISPS is generic for pretzel crackers. Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) [precedential] (Opinion by Judge Lorelei Ritchie).

Frito-Lay petitioned for cancellation of Princeton Vanguard's Supplemental Registration for the mark PRETZEL CRISPS for "pretzel crackers" [PRETZEL disclaimed], and it opposed PV's application to register that same mark on the Principal Register. In February 2014, the TTAB ruled in favor of Frito-Lay. In reaching its decision, the Board gave controlling weight to dictionary definitions of the constituent words, evidence of use by the public, including use by the media and by third-parties in the food industry, and applicant Princeton Vanguard's own use of the term. The Board found that when "pretzel" and "crisps" are combined, no additional meaning results, and therefore the purported mark PRETZEL CRISPS may be analyzed via its constituent terms, in accordance with In re Gould, using "the ordinary grammatical construction."  [TTABlogged here].

The CAFC, however, concluded that the Board had failed to consider evidence of the relevant public's understanding of PRETZEL CRISPS in its entirety. [TTABlogged here]. The Board "stated in passing" that had if it had 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.'" The court, however, 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."

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.

The CAFC therefore concluded that the Board applied the incorrect legal standard. On remand, the Board was directed to consider the evidence concerning the relevant public's understanding of the term PRETZEL CRISPS in its entirety. Furthermore, the Board must give "appropriate consideration to the proffered survey evidence."

Genericness: The test for genericness has two parts: (1) what is the genus of the goods; and (2) does the relevant public understand the designation at issue primarily to refer to that genus? There was no dispute that the category of goods here at issue is adequately defined by PV's identification of goods: "pretzel crackers." The relevant public comprises ordinary consumers who purchase and eat pretzel crackers. The focus, then, was on the relevant public's understanding of the term PRETZEL CRISPS.

The Board considered the dictionary definitions of "pretzel" and "crisp," the results of LexisNexis database searches of "pretzel crisps," media references, negative dictionary evidence, and consumer feedback.

The search results contained many references to the term "pretzel crisps" in lower case letters, while upper case letters were used for other terms that were "presumably considered by the authors to be brand names." On the whole, this evidence indicated "that consumers reading these articles may see Defendant as a potential source of 'pretzel crisps,' or 'pretzel crackers,' but would not view the applied-for mark “PRETZEL CRISPS” as a trademark identifying the source of the goods" Similarly, emails and product reviews used upper case letters for some words - often to indicate brands - but not for "pretzel crisps."

The Board found several declarations submitted by Defendant to be of limited probative value because the declarants were distributors of PV's products, not consumers. Moreover, although PV has used PRETZEL CRISPS as a source identifier, it has also used the term "pretzel crisps" to identify the type of goods, "which has contributed to and otherwise reflects a generic understanding of the term."

Each party submitted the results of a "Teflon" survey conducted to test how consumers perceive the term PRETZEL CRISPS. The Board, however, found these surveys to be irrelevant, because the Teflon survey format is not appropriate for a term that is not inherently distinctive. Because PRETZEL CRISPS is at least merely descriptive of the goods, the survey results merely reflect what the CCPA referred to as "de facto secondary meaning." See Weiss Noodle Co. 129 USPQ at 414.

Moreover, even if the survey results were relevant, they were not probative due to methodological flaws in the two surveys, and even if they were probative, the survey results overall supported a finding of genericness.

Considering all relevant evidence and arguments, the Board found that Frito-Lay had proven by a preponderance of the evidence that PRETZEL CRISPS is generic for "pretzel crackers."

Acquired Distinctiveness: For the sake of completeness, the Board also considered PV's claims that the term PRETZEL CRISPS had achieved acquired distinctiveness under Section 2(f). Frito-Lay established at least a prima facie case that PRETZEL CRISPS is highly descriptive of pretzel crackers. The burden shifted to PV to present evidence to overcome Frito-Lay's showing. Since the Board found the term “PRETZEL CRISPS”to be generic for “pretzel crackers,” it considered, for purposes of the alternative Section 2(f) analysis, that the term is "close to the genericness boundary on the continuum." Consequently, PV had a "heavy burden of showing acquired distinctiveness."

PV pointed to its extensive sales and advertising, unsolicited media coverage, and its survey results, but the Board found that evidence inadequate. A secondary meaning survey (the "Mantis survey") proffered by PV concluded that 38.7% of participants associated the term “PRETZEL CRISPS” with “only one company.” While the parties disagreed as to whether that fraction is sufficient to establish secondary meaning., the Board observed that "it has been stated that numbers in this range are 'marginal.'"

While this evidence regarding sales and advertising is impressive, it is significantly undercut by the evidence discussed previously that the relevant public and many survey respondents, including more than half the respondents to the Mantis survey, perceive the term “pretzel crisps” as referring to a product that may derive from multiple sources. Ultimately, the question is not the extent of advertising and promotion, but the success of it in establishing brand recognition.

The Board found that PV,s evidence of acquired distinctiveness was insufficient to establish acquired distinctiveness under Section 2(f).

Conclusion; The Board granted the petition for cancellation of PV's Supplemental Registration No. for PRETZEL CRISPS, and it sustained the opposition to registration. The Board also found, assuming arguendo that PRETZEL CRISPS is not generic,that the requirements for registration  under Section 2(f) were not satisfied.

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TTABlog comment: Compare the recent decision by the U.S. District Court for the Eastern District of Virginia, in which the court found persuasive a Teflon-type survey in ruling that BOOKING.COM is not generic for travel agency and hotel reservations services. [TTABlogged here]. Instead, the court deemed the term to be merely descriptive of the services, and then found that plaintiff had demonstrated secondary meaning as to hotel reservation services, but not as to travel agency services. If you were PV, would you seek review of the PRETZEL CRISPS decision via Section 1071(b) in a district court? or via 1071(a) at the CAFC? PS: PV has filed a civil action for review of the Board's decision, in the Western District of North Carolina.

Text Copyright John L. Welch 2017.