Pretzel Logic: Federal Circuit holds that TTAB Failed to Consider Mark as a Whole

webcontentAn application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness.

The holder of the PRETZEL CRISPS mark, Princeton Vanguard, originally applied to register it in 2004.  Not surprisingly, Princeton was diverted to the Supplemental Register given the non-distinctive nature of the mark.  It later followed the standard practice of re-applying for the Principal Register based on acquired distinctiveness.  At that point, however, snack titan Frito-Lay stepped in:  it opposed the application, and then filed an action to cancel the existing supplemental registration.

Frito-Lay prevailed in the TTAB.  The Board held that the mark consisted of two words, each of which referred to a genus of goods (“pretzels” referring to pretzels and pretzel snacks, and “crisps” referring to crackers).

Not so, held the Federal Circuit.  It admonished the Board for misconstruing its precedents:  although some of its cases did look at individual terms comprising the mark (such as in the Gould case, which involved the proposed mark SCREENWIPE), the overall inquiry always involves the mark as a whole.  Since the Board did not do this with respect to the combined term PRETZEL CRISPS, the Board committed legal error, and the case was reversed and remanded.

The Federal Circuit went on to make some interesting observations about the Board’s weighing of evidence on remand.  It noted that each side had submitted a survey addressing the question of whether the consuming public viewed the mark as a brand name or as a category name.  The Board appeared to have treated the two surveys as “canceling each other out” even though its opinion only agreed with criticisms of Frito-Lay’s survey.  In other words, the Federal Circuit was left with no reason why Princeton’s survey — which found that 55% of respondents thought PRETZEL CRISPS was a brand name, and only 36% thought it was a common or generic name — would not be persuasive evidence of registrability.  The Board will have some explaining to do on this issue.

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