The Federal Circuit Vacates And Remands The Board’s Refusal To Register PRETZEL CRISPS

The Court of Appeals for the Federal Circuit (Federal Circuit) vacated and remanded the matter of Princeton Vanguard, LLC vs. Frito-Lay North America, Inc. No. 2014-1517 (Fed. Cir. May 15, 2015) back to the Trademark Trial and Appeal Board. See our blog post entitled The TTAB Agrees With Frito Lay, Pretzel Crisps Are A Generic Term for a summary of the proceedings at the Trademark Trial and Appeal Board (the “Board”). The Board in a precedential decision cancelled the Supplemental Registration PRETZEL CRISPS finding that the term Pretzel Crisps was generic for pretzel crackers. In vacating and remanding the Board’s refusal to register the mark PRETZEL CRISP, the Federal Circuit is demanding a new decision based on the correct legal standard and application of the evidence in the record.

The Federal Circuit found that the Board applied the incorrect standard for determining genericness. The Board in granting the Petition for Cancellation held the term “Pretzel Crisps” was a compound term not a phrase and analyzed the terms individually. The Board further held that the word “pretzel” was generic for pretzel snacks and the term “crisps” was generic for crackers. The Board stated that it reviewed the entire record, including the surveys, but determined that “controlling” weight should be given to the dictionary definitions, evidence of use by the public, including use by the media and by third-parties in the food industry, and evidence of use by defendant itself.

The Board concluded that its determination would have been the same if it had analyzed PRETZEL CRISPS as a phrase instead of a compound term. The Board explained that the words used together create a meaning understood by the relevant consumer base to mean the generic for pretzel crackers. The Federal Circuit agreed with Princeton Vanguard’s argument that the Board failed to consider all the evidence in the record when it did not give weight to the public’s understanding of the mark in its entirety.

A generic term is the common descriptive name of a class of goods or services. Generic terms cannot function as source indicators. To determine if a trademark is generic one must apply a two step inquiry: 1) what is the subject class of goods or services and 2) does the relevant public understand the mark (as a whole or in its entirety) to refer to that class of goods. See our blog post entitled The TTAB Agrees With Frito Lay Pretzel Crisps Are A Generic Term for more information regarding the two-step inquiry. Evidence of the public’s understanding of the trademark (as a whole or in its entirety) can be obtained from any competent source. The Board defined the class of goods as pretzel crackers and the Board defined the relevant public as ordinary consumers who eat and purchase pretzel crackers.

However, the problem lies in that the Board’s decision lacks any indicia that it engaged in the correct analysis. On remand the Federal Circuit ruled that the Board must consider evidence of the relevant consumers’ understanding of the mark as a whole not separately according to the individual components. The Federal Circuit, as well as the other circuit courts have recommended looking to consumer surveys and consumer testimony for direct evidence of the public’s understanding of the mark. The record in this case contained ample evidence of the public’s understanding of the mark in its entirety, including declarations, survey evidence, and use of the trademark by the media and by the food industry. The case was remanded for use of the appropriate legal standard.

This is an example of the Board having a determination in mind at the beginning of a cancellation proceeding and hand picking the evidence in the record to attempt to support a pre-determined conclusion. It is important to have judicial oversight to the Board’s proceedings to remind all participants that determinations must be based on the totality of the evidence and that all the evidence must be weighed when applying the appropriate legal standard. If you have a trademark matter that may not have been properly decided by an Examining Attorney or by the Board, please feel free to contact one of our trademark attorneys for a courtesy consultation.