United States: Federal Circuit Repairs 'Cracked' Pretzel Logic

Last Updated: July 17 2015
Article by Scott J. Slavick

Vacates TTAB decision on pretzel crisps, remands under Marvin Ginn

A fundamental precept in trademark law is that an applicant cannot receive registration if an applied-for mark is simply descriptive of the goods or services in connection with which it is to be used. A mark must be inherently distinctive, allowing the user to distinguish its goods and services from others' similar ones. 

This precludes registration for generic marks. In its precedential holding in the trademark touchstone Marvin Ginn case, the U.S. Court of Appeals for the Federal Circuit explained: "Determining whether a mark is generic ... involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" See H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986). 

In a recent precedential decision, a unanimous Federal Circuit panel vacated the Trademark Trial and Appeal Board's (TTAB) decision holding the mark Pretzel Crisps to be generic for "pretzel crackers," and remanded the case to the TTAB for application of the legal standard set forth in Marvin Ginn. The court concluded that the board had failed to consider evidence of the relevant public's understanding of the term pretzel crisps in its entirety. See Princeton Vanguard, LLC v. Frito-Lay North America, Inc., Appeal No. 14-1517 (Fed. Cir. May 15, 2015). 

The critical issue in cases that seek to establish if the word or words used in a trademark sought to be registered for a commercial product or service are to be considered generic is whether members of the relevant public primarily use or understand that mark to refer to the genus of the applied-for goods or services in question. 

In this case, the parties did not disagree that the genus of goods at issue was pretzel crackers and the relevant public were ordinary consumers who purchase and eat these types of crackers. Both the appellant and the respondent had conducted and entered as evidence their own experts' surveys of consumers to defend their respective positions. 

The TTAB had held that to determine if an applied-for mark was generic, it had to determine whether the applied-for trademark is generic as a whole. But the board went on to cite a different case, In re Gould, for the holding that when the applied-for mark is a "compound term"— that is, a trademark made up of a combination of two or more words in ordinary grammatical construction — then the board only has to consider the meanings of the words that make up the compound term. If the applied-for mark is a phrase, however, the board's previous holding in American Fertility requires the board to examine the meaning of the disputed phrase in its entirety. 

Compound term? Phrase? The Court of Appeals held that there was no such dichotomy. It explained that the error in the board's analysis was that there is only one legal test to determine if a trademark is generic, namely, the two-part test articulated in Marvin Ginn. Regardless of whether the applied-for mark is a compound term or a phrase, the right test to determine if it is generic is to consider the evidence of the public's understanding of the mark as a whole. See Am. Fertility, 188 F.3d at 1348-49. 

The court also explained that its decision in In re Gould was meant to assist in assessing the genericness of compound terms where evidence shows that the relevant public understands the individual terms to be generic and that putting those terms together to create a compound term does not create any new meaning. The analysis in In re Gould, it said, was not meant to be seen as a shortcut or as a correction of the two-part test in Marvin Ginn

The panel ruling also explained that while analyzing the public's understanding of the constituent words of a compound term may be a useful first step in determining whether a mark is generic, it is only the first step. The board should go on and consider the recorded evidence regarding the public's understanding as to whether joining the words together creates any additional meaning. 

In contrast, in Vanguard, the board had held pretzel crisps to be a compound term, not a phrase, and evaluated the individual terms under the In re Gould standard. The Court of Appeals stated in its discussion that it did not understand why the board analyzed pretzel and crisps separately when the evidence before the board was full of evidence of the public's perception of the term pretzel crisps as a whole.

The Federal Circuit was also troubled that after analyzing the constituent words under In re Gould, the board did not go into any detail into how it also analyzed pretzel crisps as a phrase. The board had simply held that if it had analyzed pretzel crisps as a phrase, then it still would have held it generic because the relevant public would have understood it to be so for pretzel crackers. The Federal Circuit, however, found no evidence that the board had conducted the required step of comparing the board's findings with respect to the individual words to the recorded evidence demonstrating the public's understanding of the combined term.

In sum, therefore, the Federal Circuit panel found that the TTAB had applied the incorrect legal standard and ordered on remand that the board must consider the evidence concerning the relevant public's understanding of pretzel crisps in its entirety. The court's opinion was that the evidentiary record before the board provide significant evidence for it to consider, in the form of declarations, survey evidence, and evidence of use of the phrase in the snack food industry and by the media.

The court also explained that though the board is not required to discuss every piece of evidence put before it, the TTAB cannot simply focus on evidence of what the word crisps means in isolation, then select a few pieces of evidence involving the combined term pretzel crisps, and conclude that the phrase as a trademark is generic. 

The appeals court appeared particularly troubled that the TTAB disregarded Princeton Vanguard's survey evidence without any explanation. Based on its opinion, it seemed that the board felt that the parties' surveys, in essence, cancelled each other out, but the board did not explain why it felt that way. For example, the board did not state that it had any problem with Princeton Vanguard's survey evidence indicating that 55 percent of respondents thought Pretzel Crisps was a brand name and only 36 percent thought it a common name. 

The TTAB's further consideration of this case on remand will be interesting to watch. Will the board simply button up its initial opinion by referencing Princeton Vanguard's evidence but still hold the term pretzel crisps generic? That would seem to comply with the Federal Circuit ruling, but would that be the right thing to do? 

Does the difference between a compound term and a phrase make any legitimate sense? Why does the Court of Appeals maintain these two terms? Where do the definitions of compound term and phrase diverge? Should it even matter? Did the Court of Appeals have it correct before, namely, there should be two standards? Do consumers view phrases differently from compound terms? Have we been trained to do so? 

This case may leave more questions than answers. And regardless of legal analysis, do we really want someone to be able to register a trademark pretzel crisps for pretzel crackers? Or is that, well, a bit crackers?

Originally published on InsideCounsel.com.

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Scott J. Slavick
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.