A couple of months ago you will recall that the USPTO’s Trademark Trial and Appeal Board (TTAB) held “Pretzel Crisps” generic for pretzel crackers.
Here are links to our previous coverage of the case:
- Packaging that Kills (a Trademark)
- Crisps = Chips = Crackers?
- A Picture is Worth a Thousand Words
- Tie Goes to the Brand or Generic Name?
It appears the TTAB’s decision will not be the final word on the matter, as last week, Princeton Vanguard gave notice it is appealing that unfavorable decision to the U.S. Court of Appeals for the Federal Circuit (CAFC).
The decision to appeal to the CAFC (as opposed to asking for a de novo trial in federal district court) is an interesting one given the CAFC’s SCREENWIPE genericness precedent — I’m thinking that will be a difficult case and precedent to avoid, but we’ll see how it goes.
Another consequence of selecting the CAFC as the reviewing court is the inability of either side to introduce further evidence in the case.
Our friend John Welch over at the TTABlog efficiently explains the CAFC’s genericness precedent this way (albeit in the ex parte context):
“[T]he PTO’s evidentiary burden in establishing genericness ‘is different depending on the type of mark an applicant seeks to register.’ For compound terms, it is sufficient to produce evidence ‘that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has ‘a meaning identical to the meaning common usage would ascribe to those words as a compound.'” In re Gould Paper Corp., 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens). However, when a mark is “more in the nature of a phrase, the PTO ‘must provide evidence of the meaning of the composite mark as a whole.'” In re American Fertility Society, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine because where the mark is a phrase evidence that each separate term is generic is not sufficient).”
I’m calling “Pretzel Crisps” a compound term governed by In re Gould Paper Corp., not a phrase governed by In re American Fertility Society, do you agree?
In the end, I’m not sure it really matters, as the TTAB also held it would have found “Pretzel Crisps” generic under either test, given all the evidence of record.
How do you come down on this one?