Federal Circuit agrees that CORN THINS and RICE THINS are least Merely Descriptive

In Real Foods Pty., Ltd. v. Frito-Lay North America, Inc., [2017-1959, 2017-2009] (October 4, 2018), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the TTAB’s decision that the Real Foods marks CORN THINS and RICE THINS  were merely descriptive and have not acquired distinctiveness.

Real Foods argued that the marks are merely suggestive, and not descriptive, and even if they are descriptive, they have acquired secondary meaning.  The Federal Circuit agreed with the TTAB that the marks were merely descriptive.  When determining whether a mark is merely descriptive, one must consider the commercial impression of a mark as a whole, viewed through the eyes of a consumer.  One must consider the mark in relation to the goods for which it is registered, asking whether someone who knows what the goods and services are will understand the mark to convey information about them.  The Federal Circuit found that substantial evidence supports the TTAB’s finding that the proposed marks are highly descriptive, noting that “corn” and “rice” are grains from which the products are made, and “thins” describe the physical characteristics of the products.  Viewing the marks as composites does not create a
different impression.

The Federal Circuit rejected Real Foods arguments about the source of evidence of public understanding of its marks, noting evidence of the public’s understanding of [a] term may be obtained from any competent source.  The Federal Circuit also rejected Real Foods’ arguments that the TTAB failed to properly consider third party registrations containing “THINS,” noting that these did not compel registration, because each application must be examined on its own merits.

The Federal Circuit also found that substantial evidence supported the TTAB’s finding of a lack of acquired distinctiveness.  To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success;
length and exclusivity of use; unsolicited media coverage; copying of the mark; and consumer studies.   Real Foods’ sales and advertising figures weigh against a finding of acquired distinctiveness.  Further Real Foods spent a relatively small amount on advertising as compared to other expenditures.  Finally, research conducted
by a third party on behalf of Real Foods demonstrates that consumers have low brand loyalty to and low preference for Real Foods’ corn and rice cakes, as compared to
its competitors.  Frito-Lay’s evidence showed low recognition of the terms are marks.

The Federal Circuit rejected Real Foods’ argument that the TTAB ignored evidence of substantially exclusive and continuous use, find that the TTAB expressly acknowledged the evidence, and was within its discretion to discount it.  As to other evidence, this too was within the TTAB’s right to weigh evidence, and declined the the invitation to re-weigh the evidence.

The TTAB dismissed Frito-Lay’s claim that CORN THINS and RICE THINS are generic.  Frito-Lay argued that the TTAB improperly narrowed genus of the goods and services, tracking Real Foods’ amendment to the description of goods, which related to the species of goods, rather than considering the genus.  Accordingly, the Federal Circuit remanded for the TTAB to reconsider its selected genus and conduct its genericness analysis in light of that genus.




GottaWannaNeedaGettaHava Injunction

Bojangles International LLC originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardees introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter which prompted Hardess to rename its sandwich Cajun Chicken Biscuit.  This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava  trademark.
It is a curious case because while Hardess indisputably used the phrase GottaWannaNeedaGettaHava in its tweet but not as a brand name, and arguably as a comparative reference to Bojangles’ arguing that its Cajun Fillet Biscuit is “better.” Would someone receiving this Tweet from Hardees really be confused?  Hardees started out using the Cajun Fillet Biscuit trademark, but quickly switched to Cajun Chicken Biscuit.  What would Bojangles expect Hardees to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or services.”  Hardees will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.  It will be interesting to see if Bojangles can make Hardees dance.

Federal Circuit Skewers Trademark Applicant

In In re Cordua Restaurants, Inc., [2015-1432] (May 13, 2016), the Federal Circuit affirmed the refusal of registration of the stylized mark  CHURRASCOS for restaurant services on the ground that term is generic.


Applicant operated a chain of restaurants branded as Churrascos, serving a variety of South American dishes, including grilled meats, including a signature “Churrasco Steak.”  Applicant applied and obtained Reg. No. 3,439,321 on CHURRASCOS for “restaurant and bar services; catering.”  However, the Examiner refused registration on the stylized version of CHURRASCOS because it “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”  The Board affirmed the refusal.

The Federal Circuit said that a generic term ‘is the common descriptive name of a class of goods or services, and that the critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.  Genericness is determined according to the two-step Ginn test: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?

Cordua argued that the Board misapplied the first step in focusing on its specific type of services, rather than on the broader description of services in the application, While agreeing that the focus should be on the description as set forth in the application, saying the correct question is not whether “churrascos” is generic as applied to Cordua’s own restaurants but rather whether the term is understood by the restaurant-going public to refer to the wider genus of restaurant services. However, the Federal Circuit found that the Board’s apparent error in considering Cordua’s own restaurant services is harmless, because in the end the Board focused on “restaurant services.” As to the second step of the Ginn test, the Federal Circuit found substantial evidence supported the finding that churrascos is the generic term for a type of cooked meat, and for a restaurant featuring churrasco steaks.

The Federal Circuit rejected Cordua’s argument that the “s” on the end of CHURRASCO made the term non-generic, because CHURRASCOS is not the proper plural of CHURRASCO, while the Federal Circuit countered that “pluralization commonly does not alter the meaning of a mark.”  Since “churrascos” is an English-language term, there is nothing in the record to indicate that the addition of the “S” at the end alters its meaning (beyond making the word plural).

The Federal Circuit said its precedent makes clear that a term is generic if the relevant public understands it to refer to a key aspect of the genus of goods or services in question.  The Federal Circuit said that there is substantial evidence in the record that “churrascos” refers to a key aspect of a class of restaurants because those restaurants are commonly referred to as “churrasco restaurants.”

Finally the Federal Circuit noted that stylized nature of the mark cannot save it from ineligibility as generic