Princeton Vanguard, LLC, v. Frito-Lay North America, Inc., No. 2014-1517, 2015 U.S. App. LEXIS 8002 (Fed. Cir. May 15, 2015) (O'Malley, J.). Click Here for a copy of the opinion.
After successfully registered the trademark PRETZEL CRISPS for "pretzel crackers" on the Supplemental Register, Princeton Vanguard ("PV") applied for the Principal Register. Frito-Lay filed a notice of opposition to PV's application and a petition to cancel PV's Supplemental Registration. On summary judgment, the TTAB Board denied both parties' motions, "finding a genuine dispute as to whether the mark is generic for pretzel crackers and whether it had acquired distinctiveness." The parties then submitted trial briefs and the Board conducted oral argument.
Initially, the Board determined that PRETZEL CRISPS is a compound term and analyzed the words individually. Subsequently, the Board found that PRETZEL is generic for pretzels and pretzel snacks and that CRISPS is generic for crackers. Thus, PRETZEL CRISPS is generic for "pretzel crackers." The Board based its findings on media references, third party use of the term, dictionary definitions, and generic references to the combined term "pretzel crisps." Evidence also included expert surveys. However, the Board gave little weight to Frito-Lay's survey due to inherent flaws in the methodology. The Board also disregarded PV's survey but provided no explanation.
The issue on appeal was whether the Board applied the correct legal standard in evaluating whether the mark is generic. This requires a two-step inquiry: (1) "what is the genus of goods or services at issue" and (2) whether "the term sought to be registered or retained on the register is understood by the relevant public primarily to refer to that genus of goods or services." Whether the mark is a compound term or a phrase does not change this inquiry. Here, after concluding that PRETZEL CRISPS is a compound term, the Board did not "assess whether the public understands the mark, as a whole, to refer to that genus." The Court concluded that the Board applied the incorrect legal standard.
PV also argued that "the Board cherry-picked the media references in the record and chose only those references that supported genericness." The Court did not analyze the parties' arguments with respect to the evidence of record, but reiterated that "substantial evidence review 'requires an examination of the record as a whole, taking into account both the evidence that justifies and detracts from an agency's opinion.'" Because the Board disregarded PV's expert survey without any explanation, the Court required appropriate consideration be given to the proffered survey evidence on remand.
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