Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960
| Fed. Cir. | 2015Background
- Princeton Vanguard registered PRETZEL CRISPS on the Supplemental Register for “pretzel crackers,” then sought Principal Register registration claiming acquired distinctiveness. Frito-Lay opposed and petitioned to cancel, arguing genericness.
- The TTAB denied summary judgment for both parties, tried the consolidated opposition/cancellation on written record (declarations, media evidence, third-party uses, and two competing consumer surveys), and conducted oral argument.
- The Board treated PRETZEL CRISPS as a compound term, analyzed the constituent words separately (pretzel = generic; crisps = generic), and found the combined term generic for “pretzel crackers,” cancelling the Supplemental Registration and refusing Principal Registration.
- Princeton Vanguard appealed, contending the Board applied the wrong legal standard by focusing on constituent words rather than the mark as a whole and improperly discounting survey and media evidence supporting source-identification.
- The Federal Circuit held the Board applied an incorrect legal standard: the proper two-step Marvin Ginn test requires assessing whether the relevant public primarily understands the mark, as a whole, to refer to the genus; compound-term analysis cannot short-circuit that inquiry.
- The court vacated and remanded for the Board to evaluate whether PRETZEL CRISPS, considered in its entirety, is generic, and to give appropriate consideration to survey and other record evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PRETZEL CRISPS is generic for pretzel crackers | Board erred by dissecting the compound; must assess public understanding of the full mark; record shows substantial evidence of source-identification (surveys, media, industry declarations) | Board and Frito-Lay argued compound-term precedent allows analysis of constituent words and that record supports genericness | Vacated and remanded: Board applied incorrect legal standard; must apply Marvin Ginn two-step test to the mark as a whole and reassess the evidence (including surveys) |
| Whether Gould permits short-cut analysis of compound marks | Gould does not change Marvin Ginn; cannot assume compound genericness solely from component definitions | Frito-Lay contends Gould and related cases allow component-focused proof when combination adds no new meaning | Court: Gould is not a license to short-cut; component analysis may be explanatory but Board must still consider whether the combination adds meaning and how the public perceives the whole |
| Whether the Board properly weighed competing surveys | Princeton Vanguard: Board improperly discounted its survey and inadequately explained discounting of survey evidence | Frito-Lay: Board reasonably gave greater weight to dictionaries, media, third-party use | Court: Board must explain its weighing; cannot disregard or treat surveys as cancelling each other without reasoned analysis; must reassess on remand |
| Whether the Board’s factual findings are supported by substantial evidence | Princeton Vanguard: Board cherry-picked evidence favoring genericness and failed to consider whole record | Frito-Lay: ample record evidence supports Board’s finding (dictionaries, media, third-party and applicant use) | Court: Because wrong legal standard was applied, remand required; on remand Board must examine the entire record and explain findings with adequate precision for substantial-evidence review |
Key Cases Cited
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, 782 F.2d 987 (Fed. Cir.) (establishes two-step genericness test: genus and public understanding)
- In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir.) (compound terms may be found generic where joining generic parts adds no new meaning; not a shortcut around Marvin Ginn)
- In re American Fertility Soc’y, 188 F.3d 1341 (Fed. Cir.) (Board erred by assuming phrase generic based solely on individual term evidence; must consider mark as whole)
- In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir.) (reiterates need to assess public understanding of the whole mark)
- In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir.) (combination not generic unless whole adds no meaning beyond parts)
- Dial-A-Mattress Operating Corp. v. Mattress Toppers, 240 F.3d 1341 (Fed. Cir.) (mark must be analyzed as a whole for genericness)
- In re 1800Mattress.com IP, LLC, 586 F.3d 1359 (Fed. Cir.) (upheld compound analysis only after considering whether combination adds distinct public meaning)