Under the headline “Trademarks Take On New Importance in Internet Era,” the New York Times today reports on a trademark dispute between snack food behemoth Frito-Lay and a serial entrepreneur over the registrability of the mark PRETZEL CRISPS. The headline is a bit misleading, as one would expect this article to discuss the reasons why trademarks are more important in this age of Internet search rather than a dispute involving off-line snack food brands. Regardless, this article warrants a discussion of fundamental principles of trademark law.
The first question courts will always ask in a dispute involving a trademark is whether the name a party seeks to protect is in fact entitled to such protection under the law. There are five categories of trademarks according to their protectability: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). “The latter three categories are deemed inherently distinctive and are automatically entitled to protection because they naturally ‘serve[ ] to identify a particular source of a product . . . .’ ” Id. (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). Descriptive marks “define a particular characteristic of the product in a way that does not require any exercise of the imagination.” Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 632 (9th Cir. 2005). A descriptive mark can receive trademark protection if it has acquired distinctiveness by establishing “secondary meaning” in the marketplace. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). “Generic marks give the general name of the product; they embrace an entire class of products.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998). “Generic marks are not capable of receiving protection because they identify the product, rather than the product’s source.” KP Permanent Make-Up, 408 F.3d at 602.
In the PRETZEL CRISPS dispute cited in the NY Times article, Frito-Lay seeks to cancel a trademark registration in the U.S. supplementary register and oppose trademark applications that were conditionally approved by the U.S. Patent and Trademark Office for registration in the primary register. The trademark applicant Princeton Vanguard, LLC (“Applicant”) seeks registration of its mark in connection with “pretzel crackers.” Last year, Frito Lay filed a motion for summary judgment requesting the Trademark Trial and Appeals Board (“TTAB”) to rule that, as a matter of law, the trademark PRETZEL CRISPS is generic for “pretzel crackers” and is therefore not entitled to registration.
To prove its claim that the trademark is generic, Frito-Lay must show that the mark refers to the class, genus or category of goods on which it is used. In other words, it must show that that terms “pretzel crisps” that compose the mark refers to the goods “pretzel crackers.” While this might be the case in the United Kingdom, I am not aware of the term crisps being used specifically to describe the genus of goods synonymous with crackers or chips in the United States. The Applicant provided substantial evidence, including expert surveys, to support its position that American consumers did not view the mark as referring to the genus of pretzel cracker products. The Board agreed with the Applicant and denied Frito-Lay’s motion. This decision leaves the trial of this case primarily on the issue of whether the mark has “secondary meaning.”
To determine whether a descriptive mark has secondary meaning, a finder of fact considers: “(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive.” Levi Strauss, 778 F.2d at 1358 (quoting Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985)) (alteration omitted). While the Applicant has provided a preview of its “secondary meaning” case when it opposed Frito-Lay’s summary judgment motion, the substantive case has not yet apparently been submitted to the Board.
While the PREZEL CRISP case is not ground breaking trademark precedent, the parties recently engaged in discovery disputes over the unresolved scope and duties of providing “electronically stored information” or ESI, a topic ripe for a separate blog post.
Patrick E. Guevara is a senior associate and represents small and mid-sized businesses and entrepreneurs in the Tri-Valley, the Greater San Francisco Bay Area, and the Central Valley in the areas of intellectual property, trademarks, copyrights, employment, real estate, and immigration.