In an earlier precedential decision, the TTAB held there was a dichotomy in the standard for determining whether an applied-for mark was generic, depending on whether the mark was a phrase or a compound term. The TTAB took the position that it had to consider the mark in its entirety only if the mark was a phrase, and that if the mark was a compound term, it could short-cut the analysis by focusing only on the individual words and not on the entirety of the mark. On appeal, the Federal Circuit held there is no such dichotomy. The test for genericness is the same, regardless of whether the mark is a compound term or a phrase. The TTAB must first identify the genus of goods or services at issue, and then assess whether the public understands the mark, as a whole, to refer to that genus.
Princeton Vanguard launched a brand of cracker-like pretzels, first registering the mark PRETZEL CRISPS on the Supplemental Register, and later filing an application to register the mark on the Principal Register. Frito-Lay challenged both the Supplemental Registration and the pending application, arguing that the name was either generic or, at the very least, a highly-descriptive and unprotectable name for the pretzel cracker products. The TTAB sided with Frito-Lay and ruled PRETZEL CRISPS was a generic term because the term “pretzel” is generic for pretzel snacks and the term “crisps” is generic for crackers.
Princeton Vanguard appealed, and the Federal Circuit determined that the TTAB had not applied the correct test. Although the TTAB correctly acknowledged the ultimate inquiry is whether the mark as a whole is generic, the TTAB asserted that, “in cases where the proposed mark is a compound term (in other words a combination of two or more terms in ordinary grammatical construction), genericness may be established with evidence of the meaning of the constituent words.” The TTAB went on to state “where the proposed mark is a phrase… the board cannot simply cite definitions and generic uses of the constituent terms of a mark; it must conduct an inquiry into the meaning of the disputed phrase as a whole.” The Federal Circuit held the TTAB erred by short-cutting its analysis by focusing on individual words. The Federal Circuit remanded the case for the TTAB to consider evidence of the relevant public’s understanding of the term PRETZEL CRISPS in its entirety.
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., No. 2014-1517 (Fed. Cir. May 15, 2015).