Published on:

The TTAB agrees with Frito-Lay, Pretzel Crisps Are A Generic Term

In a precedential decision released on February 28, 2014, the TTAB (Trademark Trial and Appeal Board) granted the petition for cancellation of Frito-Lay Inc. (“Frito-Lay”) and the Board declared the term “Pretzel Crisps” was generic for pretzel crackers. In turn, the Supplemental Registration for Pretzel Crisps owned by Princeton Vanguard, LLC (“Princeton”) was cancelled. Frito-Lay North America Inc., v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) [precedential]. Princeton filed an application for Pretzel Crisps for pretzel crackers on the Supplemental Register. The registration was issued on July 26, 2005 with a disclaimer of the exclusive right to use the term “pretzel” apart from the mark as shown. The United States Patent & Trademark Office (USPTO) allows trademarks to be registered on both the Principal and the Supplemental Register. The Principal Register is reserved for marks that are inherently distinctive and unique indicators of a single source of goods and/or services. The Supplemental Register maintains marks that are descriptive and at the time of registration are unable to indicate a single source of goods and/or services. Trademarks on the Principal Register are afforded the full benefits of the trademark laws, in contrast to marks on the Supplemental Register that receive partial advantages. See our webpage entitled Filing Your Mark On the Principal Register And Supplemental Register for more details on the two registers.

Trademarks on the Supplemental Register do receive certain key benefits. These benefits include being able to use the ® symbol in conjunction with the mark once it is registered, USPTO Examiners protecting it against potential registrations of confusingly similar marks under the Trademark Act Section 2(d), filing an infringement action in federal court, and lastly the Supplemental Registration can act as the basis for a foreign filing. In addition, if the mark acquires secondary meaning, the registrant can file a new application to register on the Principal Register. The registrant can demonstrate secondary meaning in various different manners, however continuous use of the trademark in commerce with the goods or services identified in the application for approximately five years is generally sufficient.

Several years after the Supplemental Registration for Pretzel Crisps issued, Princeton filed a trademark application for Pretzel Crisps on the Principal Register claiming acquired distinctiveness for the term as a whole. Frito Lay filed an opposition to this application in July 2010. Then in September 2010, Frito Lay filed a cancellation petition against the Supplemental Registration for Pretzel Crisps. The TTAB consolidated the cases.

Frito Lay first had to prove that it had “standing” to bring these matters. To prove standing it had to show that it was engaged in the manufacture or sale of the same type of goods or related goods of those of the registrant. This demonstrates to the Board that the plaintiff has the right to use the term in a generic or descriptive manner. The TTAB uses a two-part test to determine if a term is generic: (1) what is the class of goods at issue? and (2) does the relevant consuming public understand that the designation primarily refers to that class of goods? See Marvin Ginn Corp. v. Int’l Assoc. of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).  Frito Lay had the burden to prove that the term was generic by a preponderance of the evidence. Potential competent sources of evidence include, but are not limited to newspapers and publications, surveys, trade journals, dictionary definitions, or testimony. The objective is to demonstrate the relevant public’s understanding of the term.

In support of its case Frito Lay presented several competitors that used the term “crisps” to name or identify “crackers”. It showed that the defendant’s nutritional information on the packaging used the term “cracker” and “crisps” interchangeably. In addition, it submitted proof that third parties and the media named or identified “crackers” as “crisps”. There was also evidence of registrations containing the term “crisps” for crackers that were required to disclaim the term “crisps”. Lastly, there was survey evidence presented by both sides and the Board took judicial notice of the dictionary definition of the term “crisps”.

After consideration of all the evidence, the Board determined that Pretzel Crisps as used by the Defendant would be understood by the relevant public to mean pretzel crackers and thus found the term to be generic. This should serve as important lesson in branding. Avoid using the simple descriptive terms as trademarks because they are weak marks that may be challenged by your competitors or worse cancelled. See our webpage entitled The Importance Of Selecting A Distinctive and An Inventive Trademark where we explain why merely descriptive marks should be avoided. See also our blog post entitled Has One Of Tiffany and Company’s Trademarks Become Generic, where we discuss in more detail the risks of choosing descriptive marks. If you are in need of trademark counsel, please feel free to call us and speak with one of our NY trademark lawyers and receive a courtesy consultation.