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The Snack Industry Has Not Learned From Past Mistakes

The US Court of Appeals for the Federal Circuit (the “CAFC”) affirmed the Trademark Trial and Appeal Board’s (the “Board”) decision refusing to register the marks CORN THINS and RICE THINS for snack foods, and vacated the Board’s decision dismissing a claim that these same marks were generic. See Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., Case Nos. 17-1959-2009 (Fed. Cir. Oct. 4, 2018). The Board not only held that the marks CORN THINS and RICE THINS were merely descriptive, but that the marks also failed to acquire distinctiveness.  See also the matter finding PRETZEL CRISPS to be generic for pretzel crackers. It is time for the snack industry to pay attention to the past, and consider adopting inherently distinctive marks.

The evidence showed the sales figures were not high, and a relatively small amount of funds were spent on advertising and marketing. Frito-Lay opposed the marks CORN THINS and RICE THINS, arguing that the marks should either be held generic or merely descriptive without a finding of secondary meaning (acquired distinctiveness). As part of the evidence submitted into the record, Frito-Lay produced a survey showing only ten percent of consumers associated the marks with a particular source. The CAFC determined that CORN THINS and RICE THINS were not only merely descriptive of snack foods, but in fact the marks were highly descriptive. In certain cases, five years of substantial and continuous use can allow a mark to acquire distinctiveness when the mark is not inherently distinctive, but this is not the case where the mark is found to be highly descriptive of the goods. The Court stated that an applicant’s burden increases when the mark is highly descriptive. In other words, a more descriptive mark requires more evidence of secondary meaning.

Real Foods argued that the marks were suggestive. Suggestive marks are inherently distinctive trademarks requiring imagination, thought and perception to determine the nature of the goods. Real Foods was hoping for a reversal of the descriptiveness finding, as was made in In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. The snack company attempted to convince the CAFC that there was a double entendre associated with the marks. Real Foods argued that the marks CORN THINS and RICE THINS not only conveyed that the snack food was of a physically thin nature, but it was a diet friendly and low calorie snack. The evidence below explains why this argument failed.

The Court rejected this argument because snack food companies frequently use the term “Thins” to describe goods such as cookies and chocolate covered pretzels, not known to be low calorie foods. These food companies use the term “Thins” to describe a physical attribute of the snack food.  The following third-party uses of the term, “Thins” was submitted into the record, Frito-Lay used the term “Thins” for ROLD GOLD Pretzel Thins, STACY’S Pretzel Thins, TOSTITOS Cinnamon Thins, and DORITOS Tortilla Thins. In addition, there was other third-party uses of “Thins” for snacks, such as SESMARK Rice Thins, NABISCO Vegetable Thins, KEEBLER TOWN HOUSE Vegetable Thins, GRATIFY Sea Salt Thins, BLUE DIAMOND Artisan Nut Thins, and PEPPERIDGE FARM Pretzel Thins to name a few.

In addition, there were multiple third-party registrations containing the term “Thins” to describe snack foods and other food products for its physical characteristic. It was held that the public’s understanding of the term “Thins” was cracker products and other food products having a physically thin cross section. Evidence of the public’s understanding can come from any competent source such as listings in dictionaries, consumer surveys, publications, newspapers, or purchasers’ testimony. In the end, the CAFC affirmed the ruling that the marks were highly suggestive and had not acquired distinctiveness.

Regarding the cross-appeal by Frito-Lay, the CAFC agreed with Frito-Lay that the Board committed error, but for different reasons then those asserted by Frito-Lay. The Court reasoned that the Board too narrowly defined the genus of the goods at issue to “popped corn cakes” and “rice cakes”. The CAFC stated the test to be applied to determinations for generic goods as follows: (1) what is the genus of goods or services at issue; and (2) is the term seeking registration understood by the relevant public primarily to refer to that genus of goods or services. See our blog entitled, The Federal Circuit Vacates And Remands The Board’s Refusal To Register PRETZEL CRISPS, for more on this two-step inquiry. The Court remanded the matter because the Board’s error in step one in failing to identify the proper genus impacted step two of the analysis. We will have to wait to see if upon the Board’s further consideration, if the marks CORN THINS and RICE THINS are determined to be generic. If you have questions, concerning the conceptual strength of your mark, please contact the firm for a courtesy consultation.