542 F.Supp.3d 371
W.D.N.C.2021Background
- Plaintiffs Snyder’s‑Lance (parent) and Princeton‑Vanguard own and market the PRETZEL CRISPS product (launched 2004) and obtained a Supplemental Register registration in 2005.
- Frito‑Lay opposed Princeton‑Vanguard’s Principal Register application and petitioned to cancel the Supplemental registration, arguing PRETZEL CRISPS is generic.
- The TTAB cancelled the Supplemental registration and denied Principal registration; the Federal Circuit vacated and remanded for analysis of the mark “in its entirety,” the TTAB reaffirmed, and Plaintiffs filed this district‑court action.
- Parties waived live testimony; the district court reviewed the TTAB record plus further evidence de novo (while according weight to TTAB findings per Kappos) and applied the Federal Circuit’s rule that Frito‑Lay bears the burden to prove genericness by a preponderance.
- The court weighed dictionaries, media/industry usage, third‑party uses, Plaintiffs’ policing and surveys, and concluded PRETZEL CRISPS is generic; it affirmed the TTAB’s cancellation and denial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PRETZEL CRISPS is generic for pretzel crackers | PRETZEL CRISPS functions as a brand; surveys, media, and social mentions show consumers view it as a trademark | The words “pretzel” and “crisps” are generic; their combination adds no source‑identifying meaning; usage by others and surveys support genericness | PRETZEL CRISPS is generic; registration cancelled and Principal application denied |
| Standard of review and burden of proof | Court should respect TTAB findings and apply APA substantial‑evidence where appropriate | Court must consider TTAB record plus new evidence de novo; Frito‑Lay must nonetheless prove genericness | Court reviews new evidence de novo (may accord TTAB findings weight); Frito‑Lay bears burden by preponderance per Federal Circuit |
| Weight and probative value of consumer surveys | Plaintiffs’ Teflon‑style and other surveys show majority/industry recognition of brand | Defendant’s surveys and critiques show results are inconclusive or favor genericness | Jay survey inconclusive (55% with ±7% MOE); Mantis Teflon survey favors genericness; overall surveys slightly favor generic or are inconclusive |
| Media, third‑party usage, Google/social evidence, and policing | Media and social citations demonstrate brand use; enforcement shows others acknowledge mark | Many references are Plaintiffs’ own materials or business notes; independent third‑party uses show generic usage; policing suppressed competitor use | Court discounted self‑authored materials, gave weight to independent generic uses and to context showing policing explains lack of competitor use |
| Whether combining two generic elements yields distinctiveness | Combination creates a separable brand identity | The compound adds no additional meaning beyond its components | Combination yields no additional source‑identifying meaning; mark remains generic |
Key Cases Cited
- United States Pat. & Trademark Off. v. Booking.com B.V., 140 S. Ct. 2298 (2020) (surveys may help but require careful design; compound generic elements analysis)
- Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111 (1938) (primary significance test: whether public primarily understands term as product or producer)
- Kappos v. Hyatt, 566 U.S. 431 (2012) (district court reviews agency record de novo but may weigh agency findings when assessing new evidence)
- Princeton Vanguard, LLC v. Frito‑Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (burden allocation and remand to consider mark in its entirety)
- Snyder's‑Lance, Inc. v. Frito‑Lay N. Am., Inc., 991 F.3d 512 (4th Cir. 2021) (procedural remand reversing dismissal for lack of jurisdiction)
- In re Hotels.com, LP, 573 F.3d 1300 (Fed. Cir. 2009) (genericness is a question of fact)
- George & Co. v. Imagination Entm't Ltd., 575 F.3d 383 (4th Cir. 2009) (trademark distinctiveness categories)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (commercial success and consumer association cannot confer trademark rights on a generic term)