In October 2018, the CAFC issued a spit decision in an appeal from the TTAB’s February 21, 2017 ruling [TTABlogged here] sustaining oppositions to registration of CORN THINS for “crispbread slices predominantly of corn, namely popped corn cakes,” and RICE THINS for “crispbread slices primarily made of rice, namely rice cakes” [CORN and RICE disclaimed]. The appellate court upheld the Board’s findings that the marks are merely descriptive of the goods and lack acquired distinctiveness. However, the court vacated the Board’s conclusion that the marks are not generic for the goods, remanding the case for reconsideration of the genus selected by the Board for its analysisReal Foods Pty., Ltd. v. Frito-Lay North America, Inc., 128 USPQ2d 1370 (Fed. Cir. 2018) [precedential].  [TTABlogged here]. On remand, the Board has found that CORN THINS and RICE THINS “refer to a subcategory of crackers” and are generic. Frito-Lay North America, Inc. v. Real Foods Pty. Ltd., Oppositions Nos. 91212680 and 91213587 (September 24, 2019) [not precedential] (Opinion by Judge Albert Zervas).
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The CAFC ruled that the TTAB “improperly narrowed the genus of the goods at issue.” The TTAB defined the genus of the goods as “popped corn cakes” for the CORN THINS mark and “rice cakes” for the RICE THINS mark. The Board failed to consider that popped corn cakes and rice cakes are types of crispbread slices, “which, in turn, the record defines as types of crackers.” The CAFC found that this was error. “[C]orn cakes and rice cakes are the species, not the genus.”

The CAFC remanded the case to the Board “to reconsider its selected genus and conduct is genericness analysis in light of that genus.”

The Board returned to the two-part Marvin Ginn test for determining the genericness of a designation: “(1) what is the genus of goods or services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services.” The Board observed that “[a]ny term that the relevant public uses or understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic.”

As to the genus, the Board focused on the identification of goods in each application: “crispbread slices predominantly of corn, namely popped corn cakes” and “crispbread slices primarily made of rice, namely rice cakes.” The relevant public is “the general consuming public who consume and eat the snack foods identified.”

The record evidence included dictionary definitions of the components of the composite marks, uses of “thins,” “rice thins” and “corn thins” in websites and articles, applicant’s promotional materials, third-party registrations, and Internet search results. The Board refused to consider applicant’s Teflon survey because survey evidence is not appropriate for determining genericness when the designation at issue is not inherently distinctive. See Princeton Vanguard, 124 USPQ2d at 1196.

The Board particularly focused on the word “thins” because the CAFC  said that “had the Board identified a broader genus of goods, such a determination might bear on, inter alia, the ubiquity with which the term thins is used for that genus and whether the mark ‘refers to a key aspect of the genus.'” It concluded that “thins” is “a generic term for a subcategory of crispbread slices.”

Having found the component terms to be generic, the Board then considered whether the involved combination marks refer to “a key aspect of the genus.”

The Board noted that there was little evidence of competitor or third-party use of “corn thins” and “rice thins” as combined terms. That does not, however, compel a finding that the terms are not generic. Even if applicant is first to use a term, it may still be generic.

The Board found that the terms CORN, RICE and THINS “retain their generic meaning when combined in both of the proposed marks.”

Most importantly, however, uses by applicant, by consumers, and by wholesalers of “corn thins” and “rice thins” that are (i) “stylized the same as the rest of [other words in a] phrase,” (ii) discuss ingredients or flavoring of the goods, and (iii) include the article ‘the’ before each term, are references to a subcategory of corn or rice crackers or crispbread slices and are not trademark uses.”

[W]e find that the combination of CORN THINS and RICE THINS as a whole imparts no new meaning and that the relevant public will understand CORN THINS and RICE THINS to refer to a subcategory or key aspect of crackers, or “crispbread slices predominantly of corn, namely popped corn cakes” and “crispbread slices primarily made of rice, namely rice cakes,” respectively. CORN THINS and RICE THINS are, therefore, generic terms and are incapable of identifying the source of such products; purchasers will understand and will use such terms to refer to as a subcategory of crackers.

The Board therefore sustained the oppositions on the ground of genericness.

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TTABlog comment: Will Real Foods go back to the CAFC for another review. Chances are thin, I think.

Text Copyright John L. Welch 2019.