IP Law Daily Descriptiveness of CORN THINS and RICE THINS for crispbread affirmed; genericness question remanded
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Thursday, October 4, 2018

Descriptiveness of CORN THINS and RICE THINS for crispbread affirmed; genericness question remanded

By Cheryl Beise, J.D.

In an opposition proceeding brought by Frito-Lay North America against Real Foods Pty Ltd., the Trademark Trial and Appeal Board properly determined that the marks CORN THINS and RICE THINS were highly descriptive of their respective goods—"crispbread slices predominantly of corn, namely popped corn cakes" and "crispbread slices primarily made of rice, namely rice cakes"—and that Real Foods failed to prove that the marks had acquired distinctiveness among consumers, the U.S. Court of Appeals for the Federal Circuit has decided. The Board’s decision to sustain Frito Lay’s opposition to registration of the marks on the ground of mere descriptiveness was affirmed. However, the Board’s dismissal of Frito Lay’s opposition on the ground of genericness was reversed because the Board erred by unduly narrowing the genus of goods at issue. The court remanded the case to the Board to reconsider its selected genus and to conduct a genericness analysis in light of that genus (Real Foods Pty Ltd. v. Frito-Lay North America, Inc., October 4, 2018, Wallach, E.).

Real Foods Pty. Ltd. sought to register two marks: CORN THINS for "crispbread slices predominantly of corn" and RICE THINS for "crispbread slices primarily made of rice," on the basis of existing Australian registrations. The terms CORN and RICE were disclaimed. During prosecution, the Board allowed Real Foods to amend its descriptions of the goods to "crispbread slices predominantly of corn, namely popped corn cakes" for the CORN THINS application, and "crispbread slices primarily made of rice, namely rice cakes" for the RICE THINS application.

Frito-Lay North America, Inc. filed oppositions to the Real Food’s applications, alleging that RICE THINS and CORN THINS were (1) generic names for the goods; (2) so highly descriptive of the goods as to be incapable of acquiring distinctiveness; and (3) merely descriptive of thin slices of crispbread made of rice or corn. The Trademark Trial and Appeal Board sustained both oppositions on the ground that the marks were merely descriptive of Real Food’s crispbread slices (or crackers) and were without acquired distinctiveness. The Board dismissed, however, Frito-Lay’s claims that the marks were generic or were incapable of acquiring distinctiveness.

Both parties appealed. Real Foods argued the Board erred in finding the proposed marks were descriptive, rather than suggestive. Alternatively, Real Foods contended that, even if the marks were descriptive, there was sufficient evidence that they had acquired distinctiveness. Frito-Lay cross-appealed the Board’s dismissal of its claim that the proposed marks were generic.

Descriptiveness. A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.

The Federal Circuit found that substantial evidence supported the Board’s finding that the proposed marks were "highly descriptive." The terms "corn" and "rice" described the primary ingredient in Real Foods’ respective goods. In addition, Real Foods had disclaimed both terms, thereby recognizing the descriptive nature of the terms. The court additionally found that the term "thins" described a physical characteristic, namely, the thin shape, of Real Foods’ corn and rice cakes. The record evidence showed that third parties commonly used the word "thin" to describe similar snack food products. Real Foods’ own advertising materials used the word "thin" to describe their products. Finally, viewing each mark as a composite whole did not create a different commercial impression, according to the court. Each element retained its individual descriptive significance and each combination resulted in a composite mark that was merely descriptive.

The court rejected Real Foods’ arguments that the Board improperly weighed or ignored evidence.

Acquired distinctiveness. The court also determined that substantial evidence supported the Board’s finding that Real Foods failed to establish that its proposed marks had acquired distinctiveness. Real Foods’ sales and advertising figures weighed against a finding of acquired distinctiveness. Research conducted by a third party on behalf of Real Foods demonstrated that consumers had low brand loyalty to and low preference for Real Foods’ corn and rice cakes, as compared to its competitors’ products. Frito-Lay’s expert survey established that only around ten percent of respondents associated CORN THINS with any particular company and only about half of those identified Real Foods.

Contrary to Real Foods’ contention, the Board properly placed a higher burden of proving acquired distinctiveness on Real Foods in light of the highly descriptive nature of the marks. The Board also acted within its discretion in finding that Real Foods’ evidence of exclusive and continuous use did not constitute prima facie evidence of acquired distinctiveness. The Federal Circuit declined Real Foods’ invitation to usurp the province of the Board and reweigh the evidence.

Genericness. Frito-Lay argued that the Board erred in finding that Real Foods’ marks were not generic. The parties agreed that CORN and RICE were the generic names for the key ingredients of the respective goods, but they disputed whether the individual term THINS and the composite marks were generic. Frito-Lay contended that "thins" was a generic term for snack food products, including crackers and crispbread slices.

Evaluating genericness involves a two-step inquiry: (1) identifying the genus of goods or services at issue, and (2) determining whether the term at issue is understood by the relevant public primarily to refer to that genus of goods or services. The Board identified the genus of the goods as "popped corn cakes" for the CORN THINS mark and "rice cakes" for the RICE THINS mark, and further found that the "relevant public is the general consuming public who consume and eat the snack foods identified. The Board concluded that Frito-Lay failed to establish that the marks as a whole would be perceived by consumers as generic for, respectively, popped corn cakes and rice cakes.

The Federal Circuit found that the Board in this case improperly narrowed the genus of the goods at issue. The Board identified the genus of the goods strictly by reference to the narrowing language Real Foods added to its applications. Real Foods’s amended applications identified the goods as: "crispbread slices predominantly of corn, namely popped corn cakes" for the CORN THINS application; and "crispbread slices primarily made of rice, namely rice cakes" for the RICE THINS application. The Federal Circuit suggested that that "corn cakes" and "rice cakes" identified the species, not the genus of the goods. The court pointed out that the Board "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 Board’s error in identifying the proper genus at step one, affected its analysis at step two, the court reasoned. The case was remanded to the Board for reconsideration its selected genus and to conduct a genericness analysis in light of that genus.

This case is Nos. 2017-1959 and 2017-2009.

Attorneys: Jeanne M. Hamburg (Norris McLaughlin & Marcus, PA) for Real Foods Pty Ltd. William G. Barber (Pirkey Barber LLP) for Frito-Lay North America, Inc.

Companies: Real Foods Pty Ltd.; Frito-Lay North America, Inc.

MainStory: TopStory Trademark FedCirNews

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