Docket No. 2013-1619
NEWMAN(C), REYNA, HUGHES
August 14, 2015
Brief Summary: PTO refusal to register LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME! without disclaiming FISH FRY PRODUCTS affirmed, fiding no showing of acquired distinctiveness.
Summary: LFF appealed refusal of PTO to register its use-based application for the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!, and a design, without disclaiming FISH FRY PRODUCTS. During prosecution, LFFP argued a disclaimer was not necessary because the term is not generic and has acquired distinctiveness, submitting a declaration by its president regarding its use for over 30 years. The Examining Attorney found the term “to be generic because the cited evidence indicated that the relevant public understood the term to refer to sauces, marinades and spices used on or with fish fries or fried fish” or, “[i]n the alternative…is, at least, ‘highly descriptive’, thus elevating the burden [LFF] had to meet to show distinctiveness.” And the evidence submitted only related to LOUISIANA FISH FRY PRODUCTS, not FISH FRY PRODUCTS per se. The Board affirmed the examiner’s decision (“generic because ‘fish fry’ and ‘products’ retain their ‘generic significance’ when combined” and LFF could not show acquired distinctiveness). The FC panel agreed with the PTO’s conclusion, finding LFF failed to show FISH FRY PRODUCTS had acquired distinctiveness. LFF argued “the Board erred by considering each piece of evidence that it cited separately in a vacuum, not as a whole” and relied on evidence of other registrations that include the term FISH FRY PRODUCTS. But the FC panel was not convinced, concluding the PTO did not run afoul of the ‘reasoned decisionmaking’ doctrine” under which “courts will set aside an agency’s decision if it is not supported by the reasons that the agenc[y] adduce[s]” (Allentown Mack Sales, US 1998). Judge Newman agreed with the ultimate conclusion but wrote that it should be based on the generic and common descriptive nature of FISH FRY PRODUCTS.