906 F.3d 965
Fed. Cir.2018Background
- Real Foods Pty Ltd. applied to register the marks CORN THINS and RICE THINS for "crispbread slices" described as popped corn cakes and rice cakes; Frito-Lay opposed as generic or merely descriptive without acquired distinctiveness.
- The TTAB held the marks merely descriptive and not shown to have acquired distinctiveness, but rejected Frito-Lay’s claim that the marks are generic.
- Real Foods appealed the descriptiveness and lack of secondary meaning findings; Frito-Lay cross-appealed the TTAB’s dismissal of genericness.
- The Federal Circuit reviewed legal conclusions de novo and factual findings for substantial evidence, affirming descriptiveness and lack of acquired distinctiveness but vacating and remanding the genericness analysis.
- Court found (1) "corn"/"rice" describe primary ingredients and "thins" describes a physical characteristic; (2) Real Foods disclaimed the ingredient terms; (3) advertising, third-party use, and consumer usage support descriptiveness; (4) sales, advertising, and survey evidence supported the TTAB’s finding that the marks have not acquired secondary meaning.
Issues
| Issue | Plaintiff's Argument (Real Foods) | Defendant's Argument (Frito-Lay) | Held |
|---|---|---|---|
| Are CORN THINS and RICE THINS suggestive or merely descriptive? | Marks require imagination and thus are suggestive. | Terms immediately convey ingredient and thinness; therefore descriptive. | Held descriptive; substantial evidence supports TTAB. |
| If descriptive, have the marks acquired distinctiveness (secondary meaning)? | Real Foods: long, substantially exclusive use, sales, advertising, and other evidence show acquired distinctiveness. | Frito‑Lay: evidence (including survey) shows limited consumer association with Real Foods. | Held not acquired distinctiveness; TTAB’s weighing of sales, advertising, exclusivity, and survey evidence supported denial. |
| Are the marks generic for the relevant genus? | (Real Foods) implicit: marks not generic. | Frito‑Lay: "thins" is a generic term for thin snack products including crackers/crispbreads. | TTAB dismissed genericness but Federal Circuit vacated-in-part: TTAB erred in defining the genus too narrowly and must reassess genericness for the proper genus (crispbread slices/crackers). |
| Was TTAB’s reliance on third‑party evidence and expert survey proper? | Real Foods: TTAB improperly relied on Frito‑Lay’s third‑party use evidence and survey; some evidence irrelevant. | Frito‑Lay: third‑party use and survey are competent evidence of public understanding. | Held TTAB properly considered the evidence; reliance was reasonable as probative; though genericness analysis must be redone with correct genus. |
Key Cases Cited
- In re N.C. Lottery, 866 F.3d 1363 (Fed. Cir. 2017) (standard for mark distinctiveness spectrum and review)
- Princeton Vanguard, LLC v. Frito‑Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (genericness/descriptiveness burdens and substantial evidence standard)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (definition of generic term as genus name)
- DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012) (consider mark’s commercial impression as a whole)
- In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) (may weigh components but view mark as a whole)
- Wal‑Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (inherent distinctiveness of suggestive/arbitrary/fanciful marks)
- In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010) (registrability of arbitrary/fanciful marks)
- In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir. 2015) (disclaimer and prima facie §1052(f) evidence)
- In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir. 2016) (USPTO must examine each application on its merits despite prior registrations)
- Royal Crown Co. v. Coca‑Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) (consumer understanding evidence for genericness and descriptiveness)
- In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (degree of descriptiveness affects burden to prove acquired distinctiveness)
- Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (factors for secondary meaning inquiry)
- In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (use of dictionary evidence to define terms in mark analysis)