In Re Louisiana Fish Fry Products, Ltd.
797 F.3d 1332
| Fed. Cir. | 2015Background
- Louisiana Fish Fry Products, Ltd. applied to register the mark "LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!" for sauces, marinades, and spices; the PTO required a disclaimer of the component FISH FRY PRODUCTS.
- Examining Attorney argued FISH FRY PRODUCTS is generic ("fish fry" = fried fish; "products" = goods) and, alternatively, highly descriptive, so applicant must show acquired distinctiveness.
- Louisiana Fish Fry submitted declarations from its president, sales and advertising figures for LOUISIANA FISH FRY PRODUCTS, and prior registrations that include the phrase, asserting long use and secondary meaning.
- The Trademark Trial and Appeal Board affirmed the disclaimer requirement, finding record evidence showed the public understands FISH FRY PRODUCTS to identify sauces, marinades, or spices used with fish fries, and that applicant failed to show acquired distinctiveness for the specific term.
- The Federal Circuit affirmed: it did not reach genericness because substantial evidence supports the Board’s finding that Louisiana Fish Fry failed to prove acquired distinctiveness for FISH FRY PRODUCTS.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PTO proved FISH FRY PRODUCTS is generic | Term not generic; applicant used the full composite LOUISIANA FISH FRY PRODUCTS for decades | PTO: record (dictionaries, articles) shows public understands "fish fry products" as goods for fried fish | Court did not decide genericness; affirmed on other ground (see acquired distinctiveness) |
| Whether FISH FRY PRODUCTS acquired distinctiveness under §2(f) | Long, exclusive use; sales and $2.4M advertising for LOUISIANA FISH FRY PRODUCTS; prior registrations show secondary meaning | Evidence shows use of composite mark, not the specific component FISH FRY PRODUCTS; prior registrations disclaim the component | Applicant failed to prove acquired distinctiveness; substantial evidence supports Board |
| Whether Board improperly evaluated evidence piecemeal or contradicted precedent | Board should consider evidence holistically; prior registrations support distinctiveness; Kellogg decision conflicts | Board thoroughly considered registrations and record; standards differ from Kellogg; reasoned decisionmaking satisfied | Court rejects plaintiff’s procedural/error arguments; Board’s analysis upheld |
| Whether disclaimer requirement exceeded PTO authority | (Implicit) Applicant argued refusal to register without disclaimer was improper | PTO: §6(a) authorizes disclaimer of unregistrable components to avoid exclusive rights in generic/descriptive terms | Disclaimer requirement affirmed as properly imposed because applicant failed to show component is registrable |
Key Cases Cited
- H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, 782 F.2d 987 (Fed. Cir. 1986) (two-step test for genericness and trademark distinctiveness analysis)
- Merrill Lynch, Pierce, Fenner & Smith, Inc. v. 15 U.S.C. (In re Merrill Lynch), 828 F.2d 1567 (Fed. Cir. 1987) (PTO must prove genericness by clear evidence)
- Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (evidence for acquired distinctiveness: advertising, sales, length/exclusivity of use)
- Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (U.S. 1985) (generic terms are not registrable as trademarks)
- In re Wada, 194 F.3d 1297 (Fed. Cir. 1999) (PTO may require disclaimer of an unregistrable component of a composite mark)