Real Foods Pty Ltd. v. Frito-Lay North America, Inc.

Docket No. 2017-1959, -2009

October 4, 2018

Brief summary: TTAB’s decision refusing registration of RF’s marks following Frito-Lay’s opposition affirmed-in-part, vacated-in-part, and remanded (“highly descriptive” marks, “TTAB failed to provide any reasoning for its conclusion that the narrowed identification”).

Summary: Real Foods (RF) appealed TTAB refusal to register “CORN THINS” for “crisp-bread slices predominantly of corn, namely popped corn cakes” and “RICE THINS” for “crispbread slices primarily made of rice, namely rice cakes” following Frito-Lay’s opposition. The TTAB found the marks to be “are merely descriptive and have not acquired distinctiveness” and dismissed Frito-Lay’s “genericness claim”. The FC panel explained that it reviews “the TTAB’s legal conclusions de novo and its findings of fact for substantial evidence” (In re N.C. Lottery, FC 2017; Princeton, FC 2015 (“more than a mere scintilla and is such relevant evidence as a reasonable mind would accept as adequate”); Citigroup, FC 2011 (“may be supported by substantial evidence even if two inconsistent conclusions can be drawn from the evidence”)). The FC panel also explained “the fanciful-suggestive-descriptive-generic continuum” that “roughly reflects…eligibility for trademark status and the degree of protection afforded”: 1) “generic (or common descriptive)” (“common descriptive name of a class of goods or services”); 2) “merely descriptive” (must “acquire distinctiveness, which is ‘secondary meaning’” (15 USC § 1052(f); Wal-Mart, US 2000; In re Steelbuilding, FC 2005; in some cases may be registered on the supplemental register (see FN3)); 3) “suggestive”, “arbitrary”, or “fanciful” (“‘inherently distinctive’ and therefore registrable”, “have created in the public consciousness an impression or symbol of the excellence of the particular product in question”; Wal-Mart; In re Chippendales, FC 2010). And, the FC panel explained, “the opposer, Frito-Lay, bears the burden of proving that the term is generic or merely descriptive by a preponderance of the evidence” (Hoover, FC 2001). When condiering descriptiveness, “the TTAB must consider the commercial impression of a mark as a whole, ‘viewed through the eyes of a consumer’…asking ‘whether someone who know what the goods and services are will understand the mark to convey information about them’”. The FC panel disagreed with Real Foods and agreed with the TTAB that the proposed marks “are highly descriptive” (e.g., CORN and RICE were disclaimed apart from the mark, “thins describes physical characteristics”, viewing the marks “as composites ‘do[es] not create a different impression’” (In re Oppdahl, FC 2004)). It also agreed with the TTAB’s finding that RF had not shown “acquired distinctiveness” (no “secondary meaning”; e.g., RF “has done little or no advertising” using the terms, “sales figures, while not insignificant, are not high”; Roselux, CCPA 1962). The FC panel also found error with TTAB’s dismissal of “Frito-Lay’s claim that proposed marks are generic” by “improperly narrow[ing] the genus of the goods at issue” to the amended description submitted during the opposition proceedings (e.g., “the TTAB failed to provide any reasoning for its conclusion that the narrowed identification of goods alone was the appropriate genus to use in its genericness analysis”). The TTAB’s decision was therefore affirmed-in-part, vacated-in-part, and remanded.

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