Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960, 2015 U.S. App. LEXIS 8002, 114 U.S.P.Q. 2d (BNA) 1827 (2015)
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Rule of Law:
When determining if a trademark is generic, the mark must be evaluated as a whole to ascertain its primary significance to the relevant public, regardless of whether the mark is a compound term or a phrase. It is a legal error to analyze the genericness of the mark's constituent parts individually without considering the meaning of the combined term to the public.
Facts:
- Princeton Vanguard developed a product described as 'pretzel crackers.'
- On October 6, 2004, Princeton Vanguard began selling this product under the brand name PRETZEL CRISPS.
- The product's packaging provided nutritional facts for a serving size based on a stated number of 'crisps.'
- Frito-Lay North America, Inc. is a competitor that sells pretzels, crackers, and other snack foods.
Procedural Posture:
- Princeton Vanguard filed an application to register PRETZEL CRISPS for 'pretzel crackers' on the Principal Register, claiming acquired distinctiveness.
- This followed a previous registration of the same mark on the Supplemental Register.
- Frito-Lay filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB), arguing the mark was generic.
- Frito-Lay also filed a petition to cancel Princeton Vanguard's existing registration on the Supplemental Register.
- The TTAB consolidated the opposition and cancellation proceedings.
- After denying cross-motions for summary judgment, the case proceeded to trial on the summary judgment record.
- The TTAB sustained Frito-Lay’s opposition and granted its petition for cancellation, finding the mark PRETZEL CRISPS generic.
- Princeton Vanguard (appellant) appealed the TTAB's final decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does the legal standard for determining if a compound trademark is generic require an analysis of the public's understanding of the mark as a whole, rather than an analysis of its individual constituent parts?
Opinions:
Majority - O’Malley, Circuit Judge.
Yes, the test for trademark genericness requires that the mark be analyzed as a whole to determine the relevant public's primary understanding of the term. The Trademark Trial and Appeal Board erred by applying an incorrect legal standard when it evaluated the genericness of 'PRETZEL' and 'CRISPS' separately before concluding that the compound term PRETZEL CRISPS was generic. The court clarified that there is only one standard for genericness, established in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., which mandates assessing the public's understanding of the mark in its entirety. Cases like In re Gould Paper Corp. do not create a 'short-cut' that allows the Board to bypass this requirement for compound terms; rather, the central inquiry must always be how the public perceives the complete mark. The Board's failure to properly analyze the mark as a whole and its disregard for significant evidence, such as consumer surveys, necessitated vacating its decision and remanding for application of the correct legal standard.
Analysis:
This decision reinforces that the 'mark as a whole' doctrine is the singular and mandatory standard for all genericness analyses, eliminating any perceived distinction between phrases and compound terms. It serves as a strong check on the Trademark Trial and Appeal Board, preventing it from taking an analytical 'short-cut' by dissecting marks into their component parts without considering whether the combination creates a new, source-identifying meaning. The ruling emphasizes the importance of evidence regarding public perception, such as consumer surveys, and clarifies that such evidence cannot be dismissed without proper explanation. This strengthens the position of trademark holders whose marks consist of individually common words but may be distinctive when combined.
