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

TTAB Error in Identifying Marks’ Genus Warrants Remand of Genericness Claim

Real Foods Pty. v. Frito-Lay North America, Inc.906 F.3d 965 (Fed. Cir. Oct. 4, 2018) (WALLACH, Linn, Hughes) (TTAB) (3 of 5 stars)

Fed Cir affirms TTAB’s refusal to register Real Foods’ CORN THINS and RICE THINS marks, but vacates dismissal of Frito-Lay’s genericness claim.

No error in finding of descriptiveness: Substantial evidence supported the TTAB’s determination that the CORN THINS and RICE THINS marks were merely descriptive of Real Foods’ goods, which were thin corn/rice cakes. Citing precedent concerning the application of the descriptiveness test, the opinion rejects Real Foods’ argument that some consumer imagination was required to reach a conclusion about the nature of the product. The TTAB also did not err in rejecting Real Foods’ argument that the marks were suggestive as a double entendre, conveying diet-friendly characteristics, as the record contained evidence of non-diet-friendly products using the term “thins.” The TTAB also did not err by taking into account an expert report from Frito-Lay concerning usage of “thins.” Per DuoProSS, 695 F.3d 1247 (Fed. Cir. 2012), that the report analyzed “thins” alone (not CORN THINS or RICE THINS) did not preclude reliance, so long as the TTAB in evaluating descriptiveness considered Real Foods’ mark as a whole, which it did. The opinion further notes that the parties here “[took] advantage of the TTAB’s Accelerated Case Resolution procedure,” and so waived any objections to admissibility (though they could contest the probative value of evidence). 906 F.3d at 977. The opinion also rejects Real Foods’ argument that the TTAB failed to consider tthird-partyregistrations of marks using “thins.” The TTAB identified several such registrations; per In re Cordua Restaurants, 823 F.3d 594 (Fed. Cir. 2016), prior registrations do not compel registration of Real Foods’ marks.

No error in finding of no acquired distinctiveness: Substantial evidence supported this finding, and the opinion discusses the record. The opinion also rejects Real Foods’ contention that the TTAB’s descriptiveness finding led it to place an inappropriately heavy burden on Real Foods. Per Royal Crown, 892 F.3d 1358 (Fed. Cir. 2018), a higher burden was appropriate due to the highly descriptive nature of Real Foods’ marks—but the TTAB did not make it too high. The TTAB also did not err in failing to hold that Real Foods’ exclusive, continuous use of the marks for a number of years was sufficient to establish prima facie acquired distinctiveness. 15 U.S.C. § 1052(f) and Louisiana Fish Fry, 797 F.3d 1332 (Fed. Cir. 2015), give the TTAB discretion over what weight to assign the evidence of continuous, exclusive use. The opinion declines to reweigh evidence concerning Real Foods’ sales and market position.

Error in the dismissal of Frito-Lay’s genericness claim: The TTAB erred by restricting the genus of goods for the CORN THINS and RICE THINS marks to “popped corn cakes and rice cakes.” The opinion discusses how, during the opposition proceedings, Real Foods had amended the broad designation of goods in its initial Applications to these classes. But “corn cakes and rice cakes are the species, not the genus,” in this case. 906 F.3d at 981. The TTAB did not explain why it treated “the narrowed identification of goods alone [as] the appropriate genus to use in its genericness analysis.” Id. On remand, the TTAB should reconsider its identification of the genus, and re-conduct its genericness analysis.

In a footnote, the Fed Cir confirms that Frito-Lay had standing to cross-appeal the denial of the genericness claim “because Frito-Lay is adversely affected by registrability on the supplemental register of a descriptive term that has not acquired secondary meaning and therefore may eventually become eligible for registration on the principal register.” 906 F.3d at 980 n.8.

KEYWORDS: TRADEMARK; GENERICNESS; DESCRIPTIVENESS; ACQUIRED DISTINCTIVENESS; OPPOSITION