Marketing types and legal types who review labels, be well advised to choose words used carefully.

In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol.

Frito-Lay’s successful 2014 generic challenge (pretzel crisps = pretzel crackers), was appealed to the Federal Circuit by the claimed trademark owner Princeton Vanguard, now Snyder’s Lance.

We followed this case up to the Federal Circuit appeal, then watched on the sidelines for a while:

Our friend, John Welch, over at the TTABlog, did a nice job summarizing the Federal Circuit’s decision vacating the Board’s genericness decision, sending it back for another and closer look.

John also nicely summarized the Board’s second look too, once again ordering cancellation of the Supplemental Registration and sustaining the Principal Register opposition on genericness grounds.

I’d like to remind our faithful readers again about the danger of self-inflicted wounds that can kill a trademark, one example being generic use in the Serving Size portion of the Nutrition Facts labels:

Makes it hard to avoid admitting during the litigation “that ‘crisps’ can be used as a term” for “pretzel crackers,” and that “packages for its PRETZEL CRISPS products provide nutrition facts for a serving size of a stated number of ‘crisps.’” These admissions proved helpful to Frito-Lay.

Another danger, it appears, is the lower case lettering use by others in mentioning the “pretzel crisps” product, a multitude of references apparently unpoliced by the claimed mark owner:

“[W]e note that there are many instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof. We note that many of these excerpts, from business as well as industry publications, are the work of authors who indicate an understanding that a brand is referenced by use of uppercase letters. Yet they use lower case letters to spell ‘pretzel crisps’ . . .”

Does that focus validate trademark counsel’s desire to steer away from using lower case branding, given the Board’s focus on type style? Or, if carefully managed, might the ills still be avoided?

Stay tuned on Princeton Vanguard’s next move following this loss, will it appeal again? If so, as John rightly asks, which appeal route makes the most sense, Federal Circuit again, or federal district court this time?

What’s more, Princeton Vanguard has been busy at the U.S. Trademark Office, apparently planning for a worst case scenario if it were to lose all protection for the bare wording “pretzel crisps” for “pretzel crackers,” which is where things stand for the moment. It has filed two new standard character word marks for slightly different goods, instead of “pretzel crackers”: “Peanut butter-covered pretzel snacks,” and “Chocolate-covered pretzel snacks.” And, this script for bare-bones “pretzel crackers”:

What say you, are the different goods descriptions enough to avoid genericness, and is the above shown script unique enough to permit exclusive ownership of a generic set of words?

Or, is it a little too light in the creativity department to infuse exclusive ownership potential into generic wording?

These questions will decided at some point along the line, since Frito-Lay has opposed these applications too.

  • It’s pretty clear that lawyers are driving this bus.

    Winning a trademark battle, even one this protracted, isn’t going to sell even one more pretzel snack.

    They’re going to have to find a better way to differentiate their offering. Maybe they could put it in a yellow box!

    • stevebaird

      Seth, thanks for sharing your perspective, it’s always nice to hear. Well, there’s an idea, however, a yellow box, might be jumping from the frying pan into the fire! Seriously though, from where I’m sitting, I do wonder more about the side trying to obtain exclusive rights in the wording “pretzel crisps,” especially given that party’s generic use of “crisps” on its own packaging.

      At some point, a would-be trademark owner needs to appreciate it’s time to cut its losses, learn from its mistakes, and move on to hopefully create something special to differentiate its offering. When a would-be trademark owner doesn’t proceed on such a reasonable path, and doubles down on its attempt to obtain exclusive rights, and is poised to obtain them from the USPTO unless a third party speaks up, I’m less critical of the side or sides that stand in the way.

      Reminds me of when Harley Davidson convinced the Trademark Office years ago that it should be granted exclusive trademark rights in the sound of a running Harley engine, and when the would-be mark was published for opposition, more than a half dozen “interested parties” filed oppositions to stand in the way of such a right being granted. The difference in that case is, Harley ended up dropping its application instead of fighting multiple opposers over many years of litigation.

      Actually, I refreshed my memory, and it even took Harley-Davidson longer than I remembered, almost 5 years of litigation before it pulled the plug:

      In any event, had Princeton Vanguard, and now Snyder’s Lance, wanted to only obtain exclusive rights in the script, as they are seeking now, albeit with a disclaimer of exclusive rights in the words themselves (in recognition of the generic nature of those words for the goods), I doubt Frito-Lay would have cared or opposed.