721 F.Supp.3d 1070
C.D. Cal.2024Background
- Snap, Inc. seeks federal trademark registration for the term "SPECTACLES" for use with its "smart glasses" product, which incorporates camera technology into eyewear.
- The USPTO denied Snap's trademark applications, finding "spectacles" to be generic (or highly descriptive) for "smart glasses," with insufficient acquired distinctiveness.
- The Trademark Trial and Appeal Board (TTAB) affirmed the USPTO’s refusal on the same grounds.
- Snap sought de novo judicial review in federal district court under 15 U.S.C. § 1071(b), supplementing the record with new evidence.
- The USPTO and its director filed a motion for summary judgment, arguing the absence of a genuine dispute that the term is generic.
- Both sides submitted new evidence—including consumer surveys and expert reports—regarding how relevant consumers perceive "spectacles" in connection with "smart glasses."
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "spectacles" is generic for use with smart glasses | The term is not generic for smart glasses; consumer perception differs and evidence is disputed | The term is generic for smart glasses as it is for eyeglasses; genericness is clear | Denied summary judgment—genuine factual dispute remains |
| Appropriate genus for genericness analysis | "Smart glasses" is a distinct category, not automatically inclusive of all eyeglasses | Eyeglasses are a subset of smart glasses, making "spectacles" generic for the genus | Genus definition and key aspects are factually disputed |
| Weight of consumer perception evidence | Competing surveys and evidence suggest "spectacles" is source-identifying | Their survey shows strong consumer perception of genericness | Conflicting surveys require trial, not summary judgment |
| Use of "spectacles" in media and by competitors | Media and online uses largely identify Snap’s product; not widely generic for the category | Some marketing and competitor uses of "spectacles" are generic | Fact issue—evidence not one-sided enough for summary judgment |
Key Cases Cited
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard emphasizing genuine disputes of material fact)
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (explains why generic terms are not entitled to trademark protection)
- Booking.com B.V. v. U.S. Pat. & Trademark Off., 140 S. Ct. 2298 (consumer perception determines genericness; survey and other evidence are relevant)
- Filipino Yellow Pages, Inc. v. Asian J. Pubs., Inc., 198 F.3d 1143 (use of the primary significance test for genericness)
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (establishes the two-step test for genericness)