Trademark Review | June 2015

Is PRETZEL CRISPS a Generic Term? Federal Circuit Resets Standard for Genericness

In an earlier precedential decision, the TTAB held there was a dichotomy in the standard for determining whether an applied-for mark was generic, depending on whether the mark was a phrase or a compound term. The TTAB took the position that it had to consider the mark in its entirety only if the mark was a phrase, and that if the mark was a compound term, it could short-cut the analysis by focusing only on the individual words and not on the entirety of the mark. On appeal, the Federal Circuit held there is no such dichotomy. The test for genericness is the same, regardless of whether the mark is a compound term or a phrase. The TTAB must first identify the genus of goods or services at issue, and then assess whether the public understands the mark, as a whole, to refer to that genus.

Princeton Vanguard launched a brand of cracker-like pretzels, first registering the mark PRETZEL CRISPS on the Supplemental Register, and later filing an application to register the mark on the Principal Register. Frito-Lay challenged both the Supplemental Registration and the pending application, arguing that the name was either generic or, at the very least, a highly-descriptive and unprotectable name for the pretzel cracker products. The TTAB sided with Frito-Lay and ruled PRETZEL CRISPS was a generic term because the term “pretzel” is generic for pretzel snacks and the term “crisps” is generic for crackers.

Princeton Vanguard appealed, and the Federal Circuit determined that the TTAB had not applied the correct test. Although the TTAB correctly acknowledged the ultimate inquiry is whether the mark as a whole is generic, the TTAB asserted that, “in cases where the proposed mark is a compound term (in other words a combination of two or more terms in ordinary grammatical construction), genericness may be established with evidence of the meaning of the constituent words.” The TTAB went on to state “where the proposed mark is a phrase… the board cannot simply cite definitions and generic uses of the constituent terms of a mark; it must conduct an inquiry into the meaning of the disputed phrase as a whole.” The Federal Circuit held the TTAB erred by short-cutting its analysis by focusing on individual words. The Federal Circuit remanded the case for the TTAB to consider evidence of the relevant public’s understanding of the term PRETZEL CRISPS in its entirety.

Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., No. 2014-1517 (Fed. Cir. May 15, 2015).

Steroid Parody Strikes Out Against the Yankees

The New York Yankees won a ruling that prevented trademark registration of marks that parody alleged steroid use by the club’s players.

IET Products and Services Inc. (IET) filed one application to register: “THE HOUSE THAT JUICE BUILT” for T-shirts, baseball caps, hats, jackets and sweatshirts; another for the same mark used on mugs; and a third for the design mark shown below at left for T-shirts, baseball caps, hats, jackets, and sweatshirts.

New York Yankees Partnership (the Yankees), the owner of the New York Yankees Major League Baseball club, opposed IET’s applications on the grounds of likelihood of dilution by blurring, likelihood of confusion and false suggestion of connection. The TTAB only addressed the dilution claim.

In a precedential ruling, the TTAB refused to register the proposed marks on the grounds that the marks would interfere with the Yankees’ trademark rights in THE HOUSE THAT RUTH BUILT and the Yankees’ longtime logo, shown above on the right. The TTAB found that the IET’s proposed use of the marks would likely cause dilution of the Yankees’ trademarks.

Dilution by blurring occurs when association caused by the similarity between a mark and a famous mark impairs the distinctiveness of the famous mark. To prevail on its dilution claim, the Yankees had to prove that its marks are famous and distinctive. A mark is famous if it is widely recognized by the general consuming public as a designation of source for the goods or services of the mark’s owner.

The TTAB found that the Yankees’ registered logo design is famous based on evidence of use of the mark for a long duration, a high volume of sales for licensed products bearing the mark, and display of the mark in connection with national broadcasts, social media, and national sponsorships. Moreover, IET admitted on record that the Yankees’ logo was distinctive and acknowledged some degree of fame for the mark. The TTAB also found THE HOUSE THAT RUTH BUILT mark is famous based on evidence of the public and press using the mark as an indicator of source for the Yankees.

The Yankees were also required to show that IET’s use of each mark was likely to dilute the distinctiveness of the Yankees’ mark. The TTAB found a likelihood of dilution based on several factors: the degree of similarity between IET’s marks and the Yankees’ marks, the distinctiveness of the Yankees’ marks, the Yankees’ substantially exclusive use of its marks, the degree of recognition of the Yankees’ marks, and IET’s intent to create an association with the mark owned by the Yankees as evidenced by the parodic nature of the proposed marks.

IET asserted as an affirmative defense to the dilution claim that its marks are parodies and fall under fair use protection. However, the TTAB rejected IET’s fair use defense by looking at the text of the Trademark Act. The statute explicitly states that the fair use exclusion does not apply to use of a famous mark “as a designation of source for the person’s own goods or services.” Since IET was attempting to register its parodic marks as an indicator of source for its goods in commerce, it was not entitled to fair use protection.

New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (TTAB May 8, 2015) [precedential].