In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC (“Princeton Vanguard”) over the registrability of Princeton Vanguard’s PRETZEL CRISPS trademark. Frito claimed that “Pretzel Crisps” was a generic term that all parties are entitled to use to describe pretzel-style chips.

Princeton Vanguard launched its PRETZEL CRISPS brand in 2004. After receiving patent protection for its flattened pretzels, Princeton Vanguard registered the PRETZEL CRISPS brand, first on the Supplemental Register at the launch and then applying to register the mark on the Principal Register in 2009.

Frito challenged both marks at the Board, arguing that the name was either generic or, at the very least, a highly-descriptive and unprotectable name for the cracker-like products Princeton Vanguard was selling. The Board agreed with Frito. In holding the term “Pretzel Crisps” to be a generic term for flattened, crispy, pretzel-shaped snacks, the Board cited dictionary definitions, evidence of use by the public, references in the media, third-party food industry terminology, and some evidence of use by the defendant itself.

Although Princeton Vanguard noted during the proceedings that no other company used the combined term before the launch of PRETZEL CRISPS in 2004, being the originator of a term had little weight in considering whether the term was generic. In making its determination, the Board reasoned that “Pretzel Crisps” should be treated as merely a compound word of standard terms, rather than a more complex “phrase.” Under Board precedent, phrases need to be considered holistically, but compound words are simply analyzed by the common meaning of their constituent words. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014).

Princeton Vanguard appealed to the Federal Circuit.

Appeal

In a decision issued on May 15, 2015, the Federal Circuit vacated and remanded the Board’s decision for further proceedings, finding the Board applied the wrong legal standard for genericness. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015).

The Board’s analysis rested on a distinction between two lines of cases. According to the Board, if a mark is compound, then In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987) applied, allowing it to analyze the terms individually. If on the other hand, the mark is a phrase, then In re American Fertility, 188 F.3d 1341 (Fed. Cir. 1999) applied, requiring the Board to consider the mark in its entirety.

The Federal Circuit clarified that there was only one legal standard for genericness: the two-part test set forth in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986). Under this test, to determine whether a mark is generic, the Board must identify the genus of goods at issue and then assess whether the public understands the mark, as a whole, to refer to that genus. The test is the same regardless of whether the mark is a compound term or a phrase. The case was therefore remanded for further consideration of the possible genericness of “Pretzel Crisps” under the proper test.

Remand

On remand, the Board quickly answered the first question of the Marvin Ginn test: the genus of the goods was described in Princeton Vanguard’s identification of goods in the application and registration, namely “pretzel crackers.” The Board then turned to the second question of the Marvin Ginn test, namely, whether the relevant public understands “Pretzel Crisps” to refer to pretzel crackers. As the Federal Circuit instructed, the Board was required to determine the public perception of “PRETZEL CRISPS” as a whole.

However, even reviewing the mark as a whole, the Board stated that it was appropriate as a first step to analyze the constituent terms in the mark. In analyzing the constituent terms “pretzel” and “crisps,” the Board considered evidence such as dictionary definitions and third party references such as product reviews and advertisements. The record contained a wealth of evidence that the term “pretzel crisps,” taken as a whole, is understood to be a generic term for a pretzel-shaped cracker. There was also evidence that Princeton Vanguard’s own use of the term “Pretzel Crisp” was sometimes generic and only sometimes brand-identifying.

Princeton Vanguard’s distributors’ declarations were found by the Board to be underwhelming. As the Board viewed it, while the declarations informed of the personal knowledge and opinions of the four declarants, they represented a very small subsection of snack food distributors. Together, they accounted for only about 6 to 10 percent of the distributorship of Princeton Vanguard’s product. More importantly, distributors were not end consumers of the product, whose understanding controls in genericness cases such as these. To the extent the distributors’ declarations purported to convey the views and comments of end consumers, it was speculation and inadmissible hearsay.