Note: This blog post is part of a series that reviews and discusses a number of significant trademark-related decisions handed down in 2015, including two from the U.S. Supreme Court and several from the U.S. Court of Appeals for the Federal Circuit and other Circuit Courts. Going forward, these rulings will impact how parties protect their trademark assets, including in particular the strategies that parties will need to employ to maximize their likelihood of success in litigation. To follow the entire blog series, click here. For more information, contact Kevin O’Shea.
It is well-known that a mark is generic when relevant consumers
primarily use or understand the term to refer to the genus of goods
or services in question. Thus, for example, “polo
shirt” has become the generic term for “a shirt with a
collar and a few buttons at the neck that you put on by pulling
over your head.” (See
merriam-webster.com/dictionary/polo%20shirt.) The Federal Circuit
recently clarified that in considering whether a phrase such as
“polo shirt” is generic, the whole phrase as perceived
by consumers – not the individual words in isolation –
must be considered. See Princeton Vanguard, LLC v. Frit-Lay
North Am., Inc., 786 F.3d 960 (Fed. Cir. 2015).
In Princeton, the manufacturer of “Pretzel
Crisps” filed an application to register the mark PRETZEL
CRISPS for “pretzels.” Id. at 962. The
Examining Attorney refused to register the mark on the Principal
Register because it was merely descriptive, so Princeton Vanguard
(1) amended its identification of goods to recite “pretzel
crackers”; (2) disclaimed “pretzel” apart from
the mark as a whole; and (3) requested registration on the
Supplemental Register. Id. Registration on the
Supplemental Register was subsequently granted. Id.
Several years later, Princeton Vanguard applied to register the
mark PRETZEL CRISPS on the Principal Register, claiming that the
mark as a whole had acquired distinctiveness through use in the
marketplace. Id. Frito-Lay filed an Opposition to the
application, as well as seeking to cancel the registration on the
Supplemental Register, arguing that the term PRETZEL CRISPS is
generic or, alternatively highly descriptive. Id. at
962-63. The Trademark Trial and Appeal Board (“TTAB”)
sustained Frito-Lay’s Opposition and granted its petition for
cancellation. Id. at 963. The Board found that
“pretzel crisps” is a compound term, rather than a
phrase, and on that basis considered each of the terms individually
and found them to be generic. Id. The Federal Circuit
reversed.
The Federal Circuit initially noted that “[t]he critical
issue in genericness cases is whether members of the relevant
public primarily use or understand the term sought to be protected
to refer to the genus of goods and services in question.”
Id. at 965 (quoting H. Marvin Ginn Corp. v.
Int’l Ass’n of Fire Chiefs, Inv., 782 F.2d 987,
989-90 (Fed. Cir. 1986)). The court further noted that
“determining a mark’s genericness requires 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
the genus of goods or services?” Id. (quoting
Marvin Ginn, 782 F.2d at 990.) Rather than simply applying
this test, the TTAB believed that it had to first determine whether
the mark was a compound term or a phrase because, according to the
TTAB, the Marvin Ginn test applies only to phrases,
whereas the constituents of a compound term should be analyzed
individually. Id. at 966.
The Federal Circuit rejected any notion that a
“short-cut” is available when the mark at issue is a
“compound term.” “The problem with the
[TTAB’s] analysis is that there is only one legal standard
for genericness: the two-part test set forth in Marvin
Ginn.” Id. Thus, to determine whether a mark is
generic, the mark must be considered as a
whole regardless of whether its constituents standing
alone would be generic in connection with the relevant genus of
goods or services. Id. at 966-67. Thus, practitioners must
be careful when assessing the genericness of a mark to consider the
entire mark, as it is perceived by the relevant public – the
“forest” – and to not focus on the constituent
terms – the “trees.”
The Federal Circuit also discussed relevant types of evidence that
can be considered in connection with a genericness analysis.
Specifically, the court explained that “evidence of the
public’s perception may be obtained from ‘any competent
source, such as consumer surveys, dictionaries, newspapers and
other publications.’” Id. at 969 (quoting
In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559
(Fed. Cir. 1985)). The court further noted that it has
“recognized that ‘consumer surveys may be a preferred
method of proving genericness.’” Id.
(quoting BellSouth Corp. v. DataNational Corp., 60 F.3d
1565, 1570 (Fed. Cir. 1995)). Thus, while consumer surveys are not
necessary, when they are available they are a particularly strong
form of evidence to show genericness (or lack thereof).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
