Is the phrase “Pretzel Crisps” a trademark, meaning something that identifies the source of the goods, or a generic term? Frito-Lay thinks it’s generic, and, in a recent decision, the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) agreed.
Trademark lawyers talk a lot about genericide – the danger that a protected trademark can become a generic term due to misuse or failure to protect the mark by its owners. I’m working on a piece right now arguing that fears of genericide are overblown. But this case doesn’t involve genericide; it’s about whether PRETZEL CRISPS was ever really a protectable trademark in the first place.
In 2006, Princeton Vanguard (PV) obtained a USPTO Supplemental Registration for their purported trademark PRETZEL CRISPS for the goods “pretzel crackers.” They disclaimed any exclusive right to the word “pretzel” outside of the context of this specific trademark. They were simply asserting that the phrase PRETZEL CRISPS, as a whole, uniquely identified their products.
In 2010, Frito-Lay filed a petition to cancel PV’s trademark before the TTAB on the grounds that the phrase was generic. A generic term can’t be a trademark. Anyone can use a generic term to describe their goods or services.
There is a two-part test used to determine whether a designation is generic:
(1) what is the genus of goods at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods? H. Marvin Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The public’s perception is the primary consideration in determining whether a term is generic. Loglan Inst. Inc. v. Logical Language Group Inc., 902 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992).
They dispensed with part 1 by stating, “There is no dispute that the category of goods here is adequately defined by defendant’s identification of goods in the application and subject registration, ‘pretzel crackers.'”
As for part 2, they began by noting that the relevant public here is anyone who might buy and eat pretzel crackers (so, anyone who’s not gluten-free, I guess.)
Next the TTAB discussed whether PRETZEL CRISPS is a compound term (made up of several words that can be analyzed independently) or a unitary phrase that can only be understood as a whole. PV’s assertion was the latter. The TTAB disagreed and noted that “compound words that do not add new meaning may be analyzed by their constituent terms.”
So, breaking the phrase down into its two constituent words, we know that “pretzel” is generic for, well, pretzels. But is “crisp” synonymous with “cracker?” (This is the tense, exciting part of the blog post, folks.)
Frito-Lay submitted images of a variety of cracker-type products that are called “crisps.” Even PV’s own nutritional information referred to its so-called “pretzel crackers” as “crisps” (but wait, I thought “crisps” was part of a unitary phrase…)
The parties also submitted survey evidence. dictionary definitions, evidence of use by the public and the media. It all came down to:
We accordingly find on this record that the designation “PRETZEL CRISPS” is generic for “pretzel crackers.”
The takeaway is that you shouldn’t assume that just because you’ve managed to register a trademark with the USPTO, it’s therefore not a generic term. Instead, choose a mark that uniquely identifies your company as the source of the goods or services.
Sadly, there was no evidence supporting the position that Milhouse van Houten’s dad Kirk is “a pretty big wheel down at the cracker factory.”