Hot Topics in Trademark Law 2015 Series: There Is No Shortcut For Genericness – It’s The Forest, Not

January 12, 2016 by Kevin O'Shea, Partner
Hot Topics in Trademark Law 2015 Series: There Is No Shortcut For Genericness – It’s The Forest, Not The Trees, That Matters

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).



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