You Shall Not Pass: Hurdles to Federal Trademark Registration

Hurdles to Federal Trademark Registration Part 1 – Generic Marks

Despite being used lawfully in commerce, a trade or service mark may be refused registration by the United States Patent and Trademark Office (“USPTO”) under Section 2 of the Trademark Act of 1946 (the “Lanham Act”) if the proposed mark is “generic,” “merely descriptive or deceptively misdescriptive,” or likely “to cause confusion” with another registered or used mark.

In Frito-Lay North America, Inc. v. Princeton Vanguard, 124 U.S.P.Q. 2d 1184 (TTAB 2017), Princeton Vanguard sought to register “Pretzel Crisps” on the Principal Register for pretzel crackers, claiming the mark as a whole acquired sufficient distinctiveness under Section 2(f) of the Lanham Act.

Frito-Lay opposed the registration, primarily on the grounds that when used in connection with pretzel crackers, “pretzel crisps” was generic. The Board employed a two-part test to determine whether the proposed mark was generic:

1. What is the genus of goods at issue? and,
2. Does the relevant public understand the designation primarily to refer to that genus of goods?

With the first element undisputed, the Board sought to determine the public perception of the term “pretzel crisps” as it applied to “pretzel crackers.” The Board found that media references, product reviews, and consumer feedback supported the notion that “pretzel crisps” was perceived by the relevant public as a name for a type of snack product that derives from multiple sources, rather than distinctive of a single source like Princeton Vanguard. Lastly, the Board determined that Princeton Vanguard had contributed to and otherwise reflected a generic understanding of the term through product marketing statements such as “[W]e do have a copyright on the name Pretzel Crisps, but because it’s two pretty generic words, there could be a challenge to it.” Thus “pretzel crisps,” when used in connection with pretzel crackers, was deemed generic.

In Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, Appeal No. 2016-2375 (Fed. Cir. 2018), the Federal Circuit Court of Appeals vacated the TTAB’s dismissal of Royal Crown’s opposition to The Coca Cola Company’s (“Coca Cola”) trademarks for various soft and sports drinks including the term “Zero.”

The USPTO registered various Coca Cola marks, including the term “Zero,” as part of a family of Zero marks without disclaiming the term Zero. Royal Crown filed opposition to the marks and argued that the term “Zero” was generic when applied to certain beverage products and failed to indicate the source of the goods. Because Royal Crown failed to offer direct consumer expectation or dictionary evidence linking “Zero” to soft drinks, the TTAB found Royal Crown failed to demonstrate that “Zero” was generic for the genus of goods Coca Cola identified in its applications, i.e. soft drinks, energy drinks, and sports drinks. The Board also found that the third-party registrations of record were as consistent with a conclusion that “Zero” is descriptive, rather than generic, as applied to the types of drinks in questions.

The court clarified that the public’s perception is the primary consideration in determining whether a mark is generic. Royal Crown’s offered evidence of genericness – public references of various internet postings over five years – did not establish that consumers primarily use or understand “zero” to refer to soft, sports, or energy drinks. Royal Crown tried to raise the argument that zero or 0 was used generically to refer to the zero-calorie nature of the product, not its source, to which the TTAB stated: “Although such uses of ZERO and 0 by Coca Cola certainly convey information about the nature of its products – including primarily that they contain zero (or at least fewer than five) calories – they do not name the genus of those goods.”

In In re Empire Tech. Dev. LLC, 12 U.S.P.Q. 2d 1544 (TTAB 2017), the applicant appealed the USPTO’s refusal to register Empire Tech’s mark “Coffee Flour” because it found the applied-for mark to be a generic term for flour made from coffee cherry skins. Generic marks are those that, due to their popularity or significance, have become the generic name for the product or service in question. Empire Tech tried to register “Coffee Flour” for “flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use.” The Trademark Trial and Appeal Board (“TTAB”) affirmed the refusal to register the “Coffee Flour” mark finding that the genus for the product in question was “flour made from coffee cherry skins, pulp and pectin.” While the Board noted the uniqueness of the appeal – in that applicant was the first and only producer and seller of this new product of flour made from coffee cherry skins, pulp, and pectin — the Board nevertheless concluded that the law did not permit anyone to obtain a monopoly on the use of a descriptive term simply by using it first.

The TTAB found that the words “coffee” and “flour” together yielded “essentially the apt or common name for the genus of goods at issue.” Significantly, the applicant was unable to furnish what it thought the generic term for the product actually was. Through analyzing various news articles and press releases, the record revealed that “coffee flour” referred to a new type of flour, but never as the brand name for a product identified by another generic term. And the fact that applicant actively and tacitly encouraged the public’s generic use of coffee flour in public-facing materials, its principals used coffee flour as a generic term in its interactions with the media, and there was no proof that applicant took any steps to correct the media’s generic use of coffee flour supported the TTAB’s denial of registration.

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