In this consolidated opposition and cancellation proceeding, the Board found the designation PRETZEL CRISPS
to be generic for "pretzel crackers" [PRETZEL disclaimed]. 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. Frito-Lay North America, Inc. v. Princeton Vanguard, LLC
, Opposition No. 91195552 and Cancellation No. 92053001 (February 28, 2014) [precedential].
There was no dispute that the genus of goods was adequately defined by the identification of goods in Princeton Vanguard's opposed application and challenged (Supplemental) registration: namely, "pretzel crackers." The relevant consuming is public comprised ordinary consumers who purchase and eat pretzel crackers. The question, then, was whether the relevant public understands the term "pretzel crisps" to refer primarily to the genus of goods.
The Board noted that "in cases where the proposed mark is a compound term (in other words a combination of two or more terms in ordinary grammatical construction), genericness may be established with evidence of the meaning of the constituent words." If the terms "remain as generic in the compound as individually, ... the compound is itself generic." (quoting In re Gould
). However, if the proposed mark is a phrase (like SOCIETY FOR REPRODUCTIVE MEDICINE), the Board cannot rely merely on definitions and generic uses of the constituent terms. It must conduct and inquiry into "the meaning of the disputed phrase as a whole." (quoting In re Dial-A-Mattress
, citing In re American Fertility
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."
There was no question that "pretzel" is generic for pretzel snacks, including pretzel crackers. As to the term "crisps," Frito-Lay submitted evidence of use of the word "crisps" by competitors to identify "crackers," of use of the word "crisps" in the media to identify "crackers," and of Princeton Vanguard's use of "crisps" to refer to its own "pretzel crackers" on its packaging. The Board also noted Frito-Lay's evidence of use of the combined term "pretzel crisps" by third-parties.
Each party submitted the results of a "Teflon" survey, but the Board accorded them little significance in its decision. Frito-Lay's survey (finding that 41% of respondents perceived PRETZEL CRISPS as a generic term and the same number as a brand name, 18% being undecided) was given little probative weight because the survey expert did not conduct a "mini-test," as recommended by Professor McCarthy, to make sure that his survey respondents understood the difference between a brand name and a common (or category) name. Princeton Vanguard's survey results indicated that 55% of respondents thought PRETZEL CRISPS was a brand name, and 36% thought it a common name.
The Board found that PRETZEL CRISPS, as used by Princeton Vanguard, would be understood by the relevant public to refer to "pretzel crackers." In making that determination, the Board considered the entirety of the record "including the surveys (which in any event arrive at different conclusions)," but it gave "controlling weight 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."
Finally, the Board pointed out that, even if it had analyzed PRETZEL CRISPS as a phrase, its conclusion would be the same, "as 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.'"
And so the Board granted Frito-Lay's petition for cancellation of defendant's Supplemental Registration, and it sustained the opposition to defendant's pending application.
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I'm hoping this case goes up on appeal to the CAFC, so that the appellate court can get rid of the compound word/phrase dichotomy that now confuses the Board's genericness determinations. The Board has seemingly been ignoring that dichotomy with increasing frequency by declaring that two-word phrases are actually "compound words."
By the way, I tried out Frito-Lay's "Teflon" survey at my firm. Of the twenty respondents, 9 thought it was a brand name, 7 thought it to be a category name, and 4 were not sure.
Text Copyright John L. Welch 2014.