District Court Overturns USPTO's Genericness Refusal of SPECTACLES for "Smart Glasses"

In a 60-page Memorandum Opinion and Order, the U.S. District Court for the Central District of California reversed the USPTO's refusal to register the mark SPECTACLES [in standard character and stylized form] for "smart glasses" on the ground of genericness, but upheld the finding of mere descriptiveness. The TTAB had affirmed the refusal [TTABlogged here], leading to this Section 1071 civil action for de novo review. Applicant Snap Inc.'s claim of acquired distinctiveness failed, but the court remanded the applications to the Office "to permit supplemental registration of SPECTACLES both as a word and stylized mark." Snap Inc. v. Vidal, Case No. 2:22-cv-00085-SK (C.D. Cal. Sept. 27, 2024).

Genericness: The parties agreed that the relevant "product category" based on Snap’s applications and its product specimens is "smart glasses." The question, then, was "whether 'consumers in fact perceive' SPECTACLES 'as the name' for that product class as such or 'as a term capable of distinguishing among members of the class.'"

The court found that the USPTO’s evidence - including Snap's use of the term, linguistic evidence, competitor usage, and media usage - proved only that "spectacles" is a descriptive—not generic—term for smart glasses. Furthermore, the Office's Teflon survey suffered from at least four design flaws (discussed in detail by the court), that rendered it non-probative.

[T]he surveys’ absolute numbers of respondents who classified SPECTACLES as a generic name are not reliable enough to find empirically that relevant consumers perceive the mark as a product name for smart glasses. Those seemingly high figures obscure the respondents who sorted SPECTACLES into the “generic” column because they thought it named smart glasses from those who did so because in their minds it could just as well have described the product.

The court concluded that the Office failed to prove "by clear and convincing evidence" that the term SPECTACLES is "primarily understood by most consumers of smart glasses as a generic name for that product." Instead, the evidence establishes that those consumers overwhelmingly understand the term to be a "description of the product’s prominent eyewear form rather than a generic name for smart glasses."

Descriptiveness/Acquired Distinctiveness: The court rejected Snap's contention that the term "Spectacles" is a double entendre, or that it is merely suggestive of smart glasses. "Snap has not proven that consumers need to employ any imagination to instantaneously associate SPECTACLES with one of the most essential aspects of smart glasses—its eyewear design."

The court noted that Snap’s seven years of continuous use of the SPECTACLES mark is prima facie evidence of secondary meaning. See 15 U.S.C. § 1052(f). Likewise, the limited evidence of advertising expenditures and gross sales revenues is "superficially probative of secondary meaning, too."

The PTO does not contest Snap’s claim that it has spent tens of millions of dollars on advertising between 2016 and 2022, including with billboards, vending machines, and both print and digital advertising. * * * Nor does the PTO deny Snap’s claim that it has sold (as of trial) an estimated 300,000 units of its products, not even including SPECTACLES 4, generating more than $37 million in gross revenues

But given the highly descriptive nature of the SPECTACLES mark, the court found that "this circumstantial evidence combined still fails to meet Snap’s burden." The sales and advertising figures lacked industry context, and the raw sales figures "may only point to product popularity or rapid market gains."

Snap has not produced enough evidence to prove even by a preponderance standard that SPECTACLES carries enough secondary meaning to be included immediately on the principal register. Still, the mark can acquire such source-identifying significance if for no other reason than the term’s arcane etymology and alternative dictionary meanings. SPECTACLES should thus be eligible for supplemental registration.

Conclusion: The court remanded the applications to the USPTO "so that the agency can take the necessary actions for amendment or approval of those applications to permit supplemental registration of SPECTACLES both as a word and stylized mark."

Read comments and post your comment here.

TTABlogger comment: Several things caught my eye. First, the court annoyingly misuses "trademark" as a verb (pages 3, 5n.3, and 6). Second, the court applied a "clear and convincing" standard of proof for genericness, citing the Federal Circuit'sCordua decision. Note that last year the Board switched to a preponderance of the evidence standard. In footnote 4, the district court recognized that change but explained that "because that change was announced only after Snap filed suit here, the PTO has agreed not to dispute in this case—while preserving its right to do so in another—that it must prove genericness by clear and convincing evidence. Also note that here, the court stated that even if it applied the lower standard it would not have found genericness. See footnote 17 at page 41.

Text Copyright John L. Welch 2024.