Frito-Lay North America, Inc.v.Snyder's-Lance Inc.

Trademark Trial and Appeal Board

Jan 19, 2022

91233483 (T.T.A.B. Jan. 19, 2022)

LTS January 19, 2022 Opposition No. 91233483 Frito-Lay North America, Inc. v. Snyder’s-Lance Inc. Before Wellington, Kuczma, and English, Administrative Trademark Judges. By the Board: Applicant seeks to register the following marks (collectively, “Applicant’s Marks”):  PRETZEL CRISPS, in standard characters, for “peanut butter-covered pretzel snacks” in International Class 30;1  PRETZEL CRISPS, in standard characters, for “chocolate-covered pretzel snacks” in International Class 30;2 and 1 Application Serial No. 87181950; filed September 23, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The application includes a claim of acquired distinctiveness of the mark as a whole under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), and a disclaimer of “PRETZEL.” 2 Application Serial No. 87181961; filed September 23, 2016, under Section 1(a) of the Trademark Act. The application includes a claim of acquired distinctiveness of the mark as a whole under Trademark Act Section 2(f), and a disclaimer of “PRETZEL.” UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Opposition No. 91233483 2  for “pretzel crackers” in International Class 30.3 Opposer opposes registration of Applicant’s Marks on the following grounds: (1) Applicant’s Marks are generic for Applicant’s identified goods; and (2) Applicant’s Marks, when used on or in connection with the identified goods, are merely descriptive of those goods and have not acquired distinctiveness. 1 TTABVUE 3-6, ¶¶ 1-16. This case now comes up for consideration of Opposer’s submission, filed September 20, 2021, captioned “Notice of Status of Related Proceedings and Motion for Judgment.” 9 TTABVUE. Opposer seeks judgment on its genericness claim under the doctrine of issue preclusion in light of decisions of the Board and the United States District Court for the Western District of North Carolina finding that the phrase “Pretzel Crisps” is generic for “pretzel crackers.” Id. We construe Opposer’s submission as a motion to resume proceedings and for summary judgment. Opposer’s motion is fully briefed.4 I. Background On July 2, 2010, Opposer filed Opposition No. 91195552 against Princeton Vanguard, LLC’s (“Princeton”)5 Principal Register application Serial No. 76700802 3 Application Serial No. 87189995; filed September 30, 2016, under Section 1(a) of the Trademark Act. The application includes a claim of acquired distinctiveness of the mark as a whole under Trademark Act Section 2(f) and a disclaimer of “PRETZEL.” 4 Opposer’s change of correspondence address, filed September 20, 2021, is noted, and the Board’s records have been updated accordingly. 5 Applicant, Snyder’s-Lance, Inc., is the parent company of Princeton Vanguard, LLC. 9 TTABVUE 3 n.2. Opposition No. 91233483 3 for the mark PRETZEL CRISPS, in standard characters, for “pretzel crackers” in International Class 30.6 9 TTABVUE 3. As grounds for opposition, Opposer asserted, inter alia, that that PRETZEL CRISPS is generic for pretzel crackers. Id. On September 10, 2010, Opposer filed Cancellation No. 92053001 seeking cancellation of Princeton’s Registration No. 2980303 on the Supplemental Register for the mark PRETZEL CRISPS, in standard characters, for “pretzel crackers” in International Class 30.7 Id. The proceedings were consolidated, with Opposition No. 91195552 designated as the parent proceeding (collectively, the “Related Proceedings”), and the Related Proceedings advanced through trial. Id. On March 20, 2017, Opposer filed its notice of opposition in the present proceeding, opposing registration of Applicant’s Marks. 1 TTABVUE. On April 4, 2017, before Applicant’s answer was due, Applicant filed a consented motion to suspend this proceeding pending disposition of the Related Proceedings. 4 TTABVUE. In its consented motion, Applicant stated that the Related Proceedings “involve[] the same parties and mark as this proceeding, and its outcome will have bearing on these oppositions.” Id. at 2. On April 11, 2017, the Board granted Applicant’s consented motion to suspend. 5 TTABVUE. On September 6, 2017, the Board issued its final decision in the Related Proceedings granting Opposer’s petition for cancellation of Registration No. 2980303 and sustaining Opposer’s opposition to application Serial No. 76700802 on the ground 6 Filed December 11, 2009, under Section 1(a) of the Trademark Act. “PRETZEL” is disclaimed. 7 Issued July 26, 2005. “PRETZEL” is disclaimed. Opposition No. 91233483 4 that PRETZEL CRISPS is generic for “pretzel crackers” (“the Board Order”).8 See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1206 (TTAB 2017).9 On November 9, 2017, Princeton and Applicant, its parent company, appealed the Board Order to the United States District Court for the Western District of North Carolina pursuant to 15 U.S.C. § 1071(b). 9 TTABVUE 4. On June 7, 2021, following a hearing on the merits, the District Court issued an order finding that the parties’ evidence “reflects that, on balance, consumers primarily perceive ‘pretzel crisps’ to be a common/generic name” (“the District Court Order”).10 Snyder’s Lance, Inc. v. Frito- Lay N. Am., Inc., - F. Supp. 3d -, 2021 BL 210326, at *30 (W.D.N.C. Jun. 7, 2021). The District Court ordered, inter alia, that: (1) “[t]he TTAB’s cancellation of the registration of the mark PRETZEL CRISPS for pretzel crackers on the Supplemental Register is affirmed, and the United States Patent and Trademark Office is hereby directed to cancel the mark on the Supplemental Register”; and (2) “[t]he TTAB’s denial of Princeton-Vanguard, LLC’s application to register PRETZEL CRISPS on the Principal Register is affirmed and Frito-Lay’s opposition to that application is sustained.” Id. 8 In the Board Order, the Board found in the alternative, “in the event of appeal,” that the term PRETZEL CRISPS is highly descriptive and has not acquired distinctiveness. Frito- Lay, 124 USPQ2d at 1206. 9 The Board notes that although the Board Order was not made of record, it is a published decision. 10 The Board notes that although the District Court Order was not made of record, it is a published decision. Opposition No. 91233483 5 On July 7, 2021, Applicant and Princeton filed a notice of appeal of the District Court Order to the United States Court of Appeals for the Fourth Circuit. 9 TTABVUE 9-11. On August 31, 2021, Applicant and Princeton filed a voluntary dismissal of their appeal with prejudice, which was granted by the Fourth Circuit the same day. Id. at 12-19. On September 20, 2021, Opposer notified the Board of the final disposition of the Related Proceedings and requested that judgment enter in its favor based on the decision from those proceedings.11 9 TTABVUE. II. Suspension for Related Proceedings Lifted The parties agree that the Related Proceedings which occasioned the suspension of this proceeding have been resolved. 9 TTABVUE 2 and 10 TTABVUE 2-3. Accordingly, this proceeding is no longer suspended for determination of the Related Proceedings. III. Opposer’s Motion for Summary Judgment A. Legal Standard Summary judgment is appropriate when there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The Board may not resolve disputes of material fact; it may only ascertain whether a genuine dispute regarding a material fact exists. See Lloyd’s 11 Opposer moved for summary judgment based on issue preclusion prior to Applicant answering. The Board may entertain a motion for summary judgment before an answer is filed if the motion asserts claim or issue preclusion or lack of jurisdiction of the Board. See Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 528.02 (2021). Opposition No. 91233483 6 Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute of material fact for trial. See Venture Out Props. LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007). B. The Parties’ Arguments Opposer argues that “the decisions of the Board and the District Court in the Related Proceedings compel the conclusion that PRETZEL CRISPS is generic for the goods identified” in the applications involved here. 9 TTABVUE 5-6. More specifically, Opposer argues that: (1) “[t]he question of whether PRETZEL CRISPS is generic for ‘pretzel snacks’ and ‘pretzel crackers’ was actually litigated and decided in the affirmative in the Related Proceedings” (id. at 6); and (2) Applicant “seek[s] registration of the identical term, PRETZEL CRISPS, for, respectively, ‘peanut butter-covered pretzel snacks,’ ‘chocolate-covered pretzel snacks,’ and ‘pretzel crackers,’ all categories of goods for which the term ‘pretzel crisps’ has been deemed generic by both this Board and the District Court” (id.). Opposition No. 91233483 7 In response, Applicant does not dispute Opposer’s discussion of the Board Order or District Court Order or that the doctrine of issue preclusion bars registration of the marks and goods set forth in application Serial Nos. 87181950 and 87181961. Applicant does, however, dispute that the doctrine of issue preclusion bars registration of the mark and goods in application Serial No. 87189995, i.e., for “pretzel crackers.” 10 TTABVUE 2-3. Applicant argues that: (1) the stylized mark may be registered if the words PRETZEL CRISPS are disclaimed; and (2) upon resumption of the instant proceedings, Applicant intends to move to amend application Serial No. 87189995 to disclaim PRETZEL CRISPS. Id. In reply, Opposer argues, inter alia, that: (1) “Applicant has not disputed that judgment should be entered in Opposer’s favor with respect to Application Serial Nos. 87/181,950 and 87/181,961, and that those applications should be refused on the grounds of genericness” (11 TTABVUE 2); and (2) “a motion to amend the application to disclaim PRETZEL CRISPS would be futile because the mark is generic, even in its slightly stylized form presented in script typeface” (id. at 3; see also id. at 3-5). C. Analysis 1. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action must be established in every inter partes proceeding.12 Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 12 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Court of Appeals for the Federal Circuit Opposition No. 91233483 8 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014)). To establish entitlement to a statutory cause of action under Section 14 of the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd., 2020 USPQ2d 10837 at *3; see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). In its notice of opposition, Opposer alleges, inter alia, that: (1) “through its predecessors in interest and title, and through its related companies, divisions and/or licensees[,]” it “has been engaged in the manufacture and sale of snack foods for over fifty years and is now one of the largest manufacturers of snack foods in the United States” (1 TTABVUE 3-4, ¶ 1); (2) “Opposer’s snack foods, including pretzels, crisps, and crackers, are marketed and sold in tremendous quantities on a nationwide basis, supported by many millions of dollars of advertising and promotion each year” (id. at 4, ¶2); (3) “Opposer’s snack foods are sold in almost every supermarket in the United States, as well as in numerous convenience stores, vending machines, mass merchandise stores, schools and other outlets” (id.); (4) “Opposer has manufactured snack foods for well over 50 years [and] has expanded its product lines to identify interpreting Sections 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Opposition No. 91233483 9 other snack food styles, flavors and shapes, manufactured and sold exclusively by Opposer” (id. at 4, ¶ 3); (5) “[p]roducts referred to as ‘crisps’ and ‘pretzel crisps’ have been sold by Opposer and/or other snack manufacturers” (id. at 5, ¶ 12); (6) “Opposer and others in the snack food industry have a present and prospective right to use the term “pretzel crisps” generically and/or descriptively in their business” (id. at 5, ¶ 14); and (7) “allowing the registration of Applicant’s marks would be a source of damage and injury to Opposer and others in the snack food industry inasmuch as it might preclude manufacturers from referring to pretzel crisps by a common, generic name for such goods” (id. at 5-6, ¶ 15). We find that, for purposes of this motion, Opposer has met its initial burden as to its entitlement to a statutory cause of action to pursue this case. First, Applicant has not contested Opposer’s entitlement to a statutory cause of action. Second, the Board found that Opposer had an entitlement to a statutory cause of action (then referred to as standing) in the Related Proceedings. Frito-Lay, 124 USPQ2d at 1187. Third, Applicant does not dispute that Opposer sells pretzels, crackers, and other snack foods. See Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354, at *4 (TTAB 2019) (“When challenging a mark as descriptive or generic, a plaintiff may establish standing by showing that it is engaged in the manufacture or sale of goods the same as or related to those covered by the challenged mark.”); see also Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 23 USPQ2d 1878, 1879 (TTAB 1992), aff’d, 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993). Opposition No. 91233483 10 2. Issue Preclusion a) Legal Standard The principle of issue preclusion (collateral estoppel) may bar relitigation of the same issue in a second action. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2051 (2015). “[T]he general rule is that ‘[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.’” Id. (quoting RESTATEMENT (SECOND) OF JUDGMENTS § 27, p. 250 (1980)). The application of issue preclusion requires: (1) identity of an issue in the current and prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) necessity of a determination of the issue in entering judgment in the prior proceeding; and (4) a full and fair opportunity existed, for the party with the burden of proof on that issue in the second proceeding, to have litigated the issue in the prior proceeding. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005) (citing Montana v. United States, 440 U.S. 147, 153-55 (1979)). Accord B&B Hardware, Inc., 113 USPQ2d at 2051. b) Application Serial Nos. 87181950 and 87181961 Inasmuch as Applicant does not oppose Opposer’s construed motion for summary judgment against application Serial Nos. 87181950 and 87181961, Opposer’s motion Opposition No. 91233483 11 for summary judgment is granted as to application Serial Nos. 87181950 and 87181961. c) Application Serial No. 87189995-Disclaimer Required and Application Remanded As noted, in application Serial No. 87189995, Applicant seeks registration of the stylized mark for “pretzel crackers,” based on a claim of acquired distinctiveness of the mark in its entirety and with a disclaimer of the sole term “Pretzel.” We find that the issue of genericness of the phrase “Pretzel Crisps” was actually raised, litigated and adjudged, it was necessary and essential to the Related Proceedings, and Applicant (as the parent company to the applicant in the Related Proceedings and a party to the appeal of the Board Order) was fully represented in those proceedings. Thus, the preclusive effect of the Board Order and District Court Order as to this stylized mark is that because “Pretzel Crisps” is generic for “pretzel crackers,” Applicant must disclaim the entire wording “Pretzel Crisps.” See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.03(b) (2021). The requirement for a disclaimer of all wording in the mark does not end our inquiry as to application Serial No. 87189995 and the registrability of the mark. The issue of whether the stylized mark has acquired distinctiveness was not at issue and was not litigated in the Related Proceedings.13 13 Therefore, to the extent Opposer seeks judgment as to application Serial No. 87189995 based on issue preclusion, Opposer’s construed motion for summary judgment as to that application is denied. Opposition No. 91233483 12 Applicant argues that the stylized mark may be registered after the term “Pretzel Crisps” is disclaimed. 10 TTABVUE 2-3. “A display of descriptive or otherwise unregistrable matter is not registrable on the Principal Register unless the design features of the asserted mark create an impression on the purchasers separate and apart from the impression made by the words themselves, or if it can be shown by evidence that the particular display which the applicant has adopted has acquired distinctiveness.” In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012); see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP § 1209.03(w). In other words, the mark subject to application Serial No. 87189995 may still be registrable “if it can be shown by evidence that the particular display which [Applicant] has adopted has acquired distinctiveness.”14 In re Sadoru Grp., Ltd., 105 USPQ2d at 1490. The circumstances involving the registrability of Applicant’s stylized mark have significantly changed from when the application was initially examined. Specifically, Applicant must now disclaim the generic term “Pretzel Crisps,” thus presenting the issue of whether the stylization or “particular display” of the mark has acquired distinctiveness. We therefore deem it appropriate to remand application Serial No. 87189995 to the Examining Attorney for the purpose of entering the disclaimer of “Pretzel Crisps,” and for reassessing the registrability of the stylized mark in light of 14 Applicant’s claim of acquired distinctiveness of the entire mark under Section 2(f) is a concession that the entire mark is not inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). Opposition No. 91233483 13 the disclaimer. See TMEP § 1209.03(w); see also In re Cordua Rests., Inc., 118 USPQ2d at 1639-40; In re Sambado & Son Inc., 45 USPQ2d 1312, 1316 (TTAB 1997); In re Cosmetic Factory, 220 USPQ 1103, 1104 (TTAB 1983). IV. Summary Opposer’s construed motion to resume proceedings is granted in that this proceeding is no longer suspended for determination of the Related Proceedings. Opposer’s construed motion for summary judgment is granted as to application Serial Nos. 87181950 and 87181961. Judgment is hereby entered against Applicant as to application Serial Nos. 87181950 and 87181961, the opposition is sustained as to application Serial Nos. 87181950 and 87181961, and registration to Applicant of the marks and goods in application Serial Nos. 87181950 and 87181961 is refused. Opposer’s construed motion for summary judgment as to application Serial No. 87189995 is denied. Application Serial No. 87189995 is remanded to the Examining Attorney for the purpose of entering the disclaimer of “Pretzel Crisps” and for reassessing the registrability of the stylized mark in application Serial No. 87189995. V. Proceeding Suspended This proceeding is suspended pending final determination by the Examining Attorney of application Serial No. 87189995, including any possible appeals.15 Within 15 The time for filing an appeal or for commencing a civil action concerning our decision granting summary judgment with respect to application Serial Nos. 87181950 and 87181961 runs from the date of the present decision. See Trademark Rule 2.145. Opposition No. 91233483 14 twenty days after final determination of application Serial No. 87189995, Applicant shall so notify the Board and call this case up for any appropriate action.16 During the suspension period, the Board shall be notified of any address changes for the parties or their attorneys. 16 If application Serial No. 87189995 is approved for publication by the Examining Attorney with the disclaimer of “Pretzel Crisps,” then, upon resumption, the Board will give Opposer leave to replead as appropriate.