New York Trademark Attorney Blog
In a precedential decision released on February 28, 2014, the TTAB (Trademark Trial and Appeal Board) granted the petition for cancellation of Frito-Lay Inc. (“Frito-Lay”) and the Board declared the term “Pretzel Crisps” was generic for pretzel crackers. In turn, the Supplemental Registration for Pretzel Crisps owned by Princeton Vanguard, LLC (“Princeton”) was cancelled. Frito-Lay North America Inc., v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) [precedential]. Princeton filed an application for Pretzel Crisps for pretzel crackers on the Supplemental Register. The registration was issued on July 26, 2005 with a disclaimer of the exclusive right to use the term “pretzel” apart from the mark as shown. The United States Patent & Trademark Office (USPTO) allows trademarks to be registered on both the Principal and the Supplemental Register. The Principal Register is reserved for marks that are inherently distinctive and unique indicators of a single source of goods and/or services. The Supplemental Register maintains marks that are descriptive and at the time of registration are unable to indicate a single source of goods and/or services. Trademarks on the Principal Register are afforded the full benefits of the trademark laws, in contrast to marks on the Supplemental Register that receive partial advantages. See our webpage entitled Filing Your Mark On the Principal Register And Supplemental Register for more details on the two registers.
Trademarks on the Supplemental Register do receive certain key benefits. These benefits include being able to use the ® symbol in conjunction with the mark once it is registered, USPTO Examiners protecting it against potential registrations of confusingly similar marks under the Trademark Act Section 2(d), filing an infringement action in federal court, and lastly the Supplemental Registration can act as the basis for a foreign filing. In addition, if the mark acquires secondary meaning, the registrant can file a new application to register on the Principal Register. The registrant can demonstrate secondary meaning in various different manners, however continuous use of the trademark in commerce with the goods or services identified in the application for approximately five years is generally sufficient.
Several years after the Supplemental Registration for Pretzel Crisps issued, Princeton filed a trademark application for Pretzel Crisps on the Principal Register claiming acquired distinctiveness for the term as a whole. Frito Lay filed an opposition to this application in July 2010. Then in September 2010, Frito Lay filed a cancellation petition against the Supplemental Registration for Pretzel Crisps. The TTAB consolidated the cases.