The Board dismissed Applicant NfoSnap’s counterclaim alleging that the mark SNAPCHAT is generic for “computer application software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network,” due to failure of proof. NfoSnap submitted evidence regarding the genericness of “snap” and “chat” as separate terms, but failed to raise “a genuine dispute as to the genericness of the combination SNAPCHAT in the face of NfoSnap’s own evidence to the contrary.” Snap Inc. v. NfoSnap, Inc.., Opposition No. 91238805 (April 23, 2020) [not precedential].

NfoSnap applied to register the mark NFOSNAP for “computer software to allow controlled access for one or multiple users to scan an optical code with a portable computer or imaging device to access custom and interactive content.” Snap, Inc. opposed, claiming likelihood of confusion with, and likelihood of dilution of, its registered mark SNAPCHAT. Snap, Inc. moved for summary judgment on NfoSnap’s counterclaim for cancellation on the ground of genericness, and NfoSnap filed a cross-motion for summary judgment on the counterclaim.

The Board observed that when the party moving for summary judgment does not bear the burden of proof at trial, it may discharge its initial burden of production by either submitting affirmative evidence that negates an essential element of the nonmoving party’s claim or by demonstrating that the nonmoving party’s evidence is insufficient to establish an essential element of the claim. As to its genericness claim, NfoSnap bore the ultimate burden to prove genericness by a preponderance of the evidence.

One asserting genericness must “identify the genus of goods or services at issue and demonstrate that the relevant public understands the designation primarily to refer to that genus of goods or services.”

The inquiry “into the public’s understanding of a mark requires consideration of the mark as a whole. Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.” In re, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).

The registration for the mark SNAPCHAT, it is presumptively valid under Section 7(b) of the Lanham Act, and that presumption alone was enough to shift the burden of production to NfoSnap. Snap argued that the evidence submitted by NfoSnap was insufficient to prove that the the relevant public understands SNAPCHAT, as a whole, to primarily refer to the genus of goods at issue.

The genus of good at issue was appropriately identified in Snap’s registration: “computer application software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network.” NfoSnap’s evidence, however, addressed only the component terms rather than the mark SNAPCHAT as a whole.

NfoSnap contended, however, that “the same evidence shows that [SNAPCHAT] is generic” because the compound term that “does not create a different commercial impression from the parts [and] is nothing more than the sum of its parts and is not capable of identifying and distinguishing a single source and therefore the sum of the parts remains generic.” Not good enough, said the Board:

The relevant public’s use or understanding of SNAPCHAT is critical to a determination of the mark’s genericness and requires consideration of the mark as a whole. See In re, 75 USPQ2d at 1421. Accordingly, in order to survive Snap’s motion for summary judgment, NfoSnap may not simply rest on a showing that the constituent terms are generic or argument that such evidence is sufficient to raise a genuine dispute of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)

NfoSnap did offer some evidence in an effort to show that SNAPCHAT as a whole is generic: dictionary definitions and online references. However, the Board found that this evidence “uniformly refer[s] to Snap and demonstrate[s] that SNAPCHAT as a whole does indeed have a meaning beyond the generic meanings of the constituent terms.”

The Board concluded that because NfoSnap  “fail[ed] to make a showing sufficient to establish the existenceof an element essential to [its] case” for which it bears the burden of proof at trial, see Celotex Corp., 477 U.S. at 322, Snap is entitled to judgment as a matter of law on NfoSnap’s counterclaim.”

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Text Copyright John L. Welch 2020.