"Pretzel Crisps" Generic for Pretzel Crackers: TTAB

Practical Law Legal Update 1-559-8885 (Approx. 5 pages)

"Pretzel Crisps" Generic for Pretzel Crackers: TTAB

by Practical Law Intellectual Property & Technology

Background

The defendant, Princeton Vanguard, LLC, obtained registration on the Supplemental Register for the designation "Pretzel Crisps" for "pretzel crackers." Princeton Vanguard then filed an application to register the same mark on the Principal Register. Plaintiff, Frito-Lay North America, Inc., filed both an opposition to Princeton Vanguard's application and a petition to cancel Princeton Vanguard's Supplemental Registration on the grounds that:

The term "Pretzel Crisps" is generic when used for pretzel crackers.
Alternatively, "Pretzel Crisps" is highly descriptive as applied to pretzel crackers and has not acquired distinctiveness.

The cases were consolidated and both parties filed motions for summary judgment.

Outcome

The TTAB agreed with Frito-Lay and:

Granted Frito-Lay's petition to cancel Princeton Vanguard's Supplemental Registration for "Pretzel Crisps" on the ground of genericness.
Sustained Frito-Lay's opposition to Princeton Vanguard's attempted registration of "Pretzel Crisps" on the Principal Register on the ground of genericness.

Genericness

The TTAB assessed genericness under a two-part test that examines:

The genus of goods at issue.
Whether the relevant public understands the designation primarily to refer to that genus of goods.

For the first part of the genericness test, the TTAB noted there was no dispute that Princeton Vanguard's identification of goods in its application and registration, namely "pretzel crackers," adequately defined the category of goods.

Public Perception

For the second part of the test, the TTAB first established that the relevant consuming public was made up of ordinary consumers who purchase and eat pretzel crackers. The TTAB then analyzed the public perception of the term "Pretzel Crisps" applied to pretzel crackers. The TTAB first addressed the question of whether to analyze the term as a compound term or a phrase.

Compound Term vs. Phrase

When determining whether a proposed mark is generic, the TTAB may analyze the component parts of the mark as a compound term or a phrase under the following standards:

If the proposed mark is a compound term, the TTAB considers the meaning of the constituent terms. If the terms are individually generic, the compound created is itself generic.
If the proposed mark is a phrase, the TTAB must look at the meaning of the disputed phrase as a whole. The TTAB cannot just cite definitions and generic uses of the constituent terms.

Frito-Lay argued "Pretzel Crisps" was a compound term while Princeton Vanguard argued it was a phrase. The TTAB agreed with Frito-Lay finding "Pretzel Crisps" was a compound term that was generic for "pretzel crackers" because:

Combining the individual terms did not add meaning to "Pretzel Crisps" in relation to "pretzel crackers."
The term "pretzel" in "Pretzel Crisps" refers to a type of pretzel, and therefore is generic for pretzels and pretzel snacks. Pretzels and pretzel snacks includes the category of goods at issue , namely pretzel crackers.
The term "crisp" has become to be known as one name for a "cracker."

The TTAB also noted that even if it analyzed "pretzel crisps" as a phrase, the record would still support a finding of genericness because the words strung together as a unified phrase also creates a meaning understood by the relevant public as generic for "pretzel crackers."

Evidence Supporting Genericness

When assessing the meaning of "crisps," the TTAB considered the entire record, but gave controlling weight to:

Dictionary definitions.
Evidence of use by the public, including use by the media and third parties in the food industry.
Evidence of use by Princeton Vanguard itself.

Competitive and Media Use

Frito-Lay submitted several instances of competitive use of the terms "crisps" for "crackers" including, among other uses:

Special K Cracker Crisps.
Triscuit Thin Crisps.
Wheatables Nut Crisps.

Additionally, Frito-Lay submitted evidence of third party or media references naming or identifying "crackers" as "crisps" from sources like Kashi and Trader Joe's.

Registrations Disclaiming Use

Frito-Lay also submitted evidence of registrations with the term CRISPS for "crackers" disclaiming the term CRISPS. For example, POP-TARTS MINI CRISPS.

Dictionary Definitions

The TTAB also took judicial notice of relevant portions of the dictionary definition for "crisp" from Merriam-Webster's Collegiate Dictionary and The American Heritage College Dictionary.

Defendant's Responses to Requests for Admissions

The TTAB also noted certain of Princeton Vanguard's responses to requests for admission that were relevant to showing "Pretzel Crisps" was generic for pretzel crackers. For example, Princeton Vanguard admitted that certain of its packages provided nutrition facts for a serving size of a state number of "crisps."

Expert Surveys

Both parties submitted survey evidence and expert declarations and each party criticized the other's survey. Each party submitted varying results from a Teflon format survey on whether "Pretzel Crisps" was generic.

The TTAB did not find either party's survey particularly probative and noted that:

Frito-Lay's survey offered little probative value because:
- no mini-test was given to determine whether participants understood the difference between brand and common (or category) names; and
- the "don't know" and "not sure" answer options were potentially confusing to participants and may have led those who understood the survey question to indicate that they did not.
Princeton Vanguard's survey was flawed because less than 65% of the initial group of qualified respondents was entered into the survey due to the underinclusive nature of the questions.

References to the Combined Term "Pretzel Crisps"

The TTAB also considered Frito-Lay's six submissions of generic references to the combined term from print magazines, newspapers and websites. For example, "There are even alternatives to alternative snacks. Don't want a fried potato chip? Try a baked one. If a baked chip has too many calories, try a pretzel crisp instead," from New Products Magazine in September 2007.

Practical Implications

The decision is noteworthy for highlighting the evidentiary considerations for applying the TTAB's genericness test. In particular, the decision highlights the potential importance of:

Dictionary definitions.
Evidence of use by the public, media and competitors.
Evidence of the defendant's own use.

Update: On May 15, 2015, the US Court of Appeals for the Federal Circuit vacated the TTAB's decision and remanded for further proceedings, ruling that the TTAB applied the incorrect legal standard in evaluating whether the mark was generic (Princeton Vanguard, LLC v. Frito-Lay North America, Inc., No. 2014-1517 (Fed. Cir. May 15, 2015)). The Federal Circuit held that the TTAB erred in considering "Pretzel Crisps" as two separate terms rather than the mark as a whole. The court further stated that, on remand, the TTAB should consider evidence of the public's understanding of the term "Pretzel Crisps," including genericness survey evidence.

"Pretzel Crisps" Generic for Pretzel Crackers: TTAB | Practical Law