DuetsBlog Collaborations in Creativity & the Law

Tie Goes to the Brand or Generic Name?

Posted in Articles, Branding, Food, Genericide, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Boys baseball occupied a fair portion of my evenings last week and this past weekend, a game where almost everyone has at least heard: The tie goes to the runner (when it comes to running the bases anyway – because when it comes to the final score the game continues until someone wins, even if it takes twenty innings, as the Marlins outlasted the Mets this past weekend).

How are ties played out when it comes to brands as compared to generic product names?

Although actual ties seem quite rare in our world of very precise measurement, the Trademark Trial and Appeal Board (TTAB) is being asked to decide who wins if there is a “statistical tie” between those relevant consumers who understand a designation as generic and those who understand it as a brand name, as part of a high-profile, four-year-long trademark dispute over registration of the “Pretzel Crisps” snack food product name: Frito-Lay North America, Inc. v. Princeton Vanguard, LLC.

The case is proceeding to trial at the TTAB because prior attempts by both parties to have the question of genericness decided on the basis of summary judgment failed. On February 9, 2011, the TTAB denied Frito-Lay’s motion for summary judgment which had sought a ruling that ”pretzel crisps” is another generic name for “pretzel crackers” (pdf of decision is here), and on September 5, 2012, the TTAB denied Princeton Vanguard’s motion for summary judgment which had sought a ruling that “pretzel crisps” is not a generic name for “pretzel crackers” (pdf of decision is here).

A few months ago the trial briefing was completed and the parties now await the Board’s scheduling of oral argument. The trial briefs are a fascinating read, highly experienced and competent counsel on both sides, see for yourself: (1) Frito-Lay’s Trial Brief; (2) Princeton Vanguard’s Trial Brief; and (3) Frito-Lay’s Rebuttal Brief.

To the extent the survey evidence and testimony found credible and given weight by the TTAB shows the percentage of respondents equal and on opposite ends of the brand/generic divide, what would you consider persuasive to break the tie?