Princeton Vanguard, LLC v. Frito-Lay North America, Inc. ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
PRINCETON VANGUARD, LLC,
Appellant
v.
FRITO-LAY NORTH AMERICA, INC.,
Appellee
______________________
2014-1517
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91195552 and 92053001.
______________________
Decided: May 15, 2015
______________________
DAVID HAL BERNSTEIN, Debevoise & Plimpton LLP,
New York, NY, argued for appellant. Also represented by
JEREMY N. KLATELL, LAUREN E. KAPSKY.
WILLIAM G. BARBER, Pirkey Barber LLP, Austin, TX,
argued for appellee. Also represented by PAUL JOSEPH
THOMAS MADRID.
JOHN W. CRITTENDEN, Cooley LLP, San Francisco, CA,
for amicus curiae Counsel of American Survey Research
Organizations Incorporated. Also represented by VINCENT
2 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
JAMES BADOLATO, MORGAN AYN CHAMPION, Washington,
DC.
______________________
Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
O’MALLEY, Circuit Judge.
Princeton Vanguard, LLC (“Princeton Vanguard”) ap-
peals from the final decision of the Trademark Trial and
Appeal Board (“the Board”) cancelling its registration of
the mark PRETZEL CRISPS for pretzel crackers on the
Supplemental Register and denying its application to
register PRETZEL CRISPS on the Principal Register.
Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109
U.S.P.Q.2d 1949 (T.T.A.B. Feb. 28, 2014) (“Board Deci-
sion”). Because the Board applied the incorrect legal
standard in evaluating whether the mark is generic, we
vacate and remand for further proceedings.
BACKGROUND
On April 21, 2004, Princeton Vanguard filed U.S.
Trademark Application Serial No. 78/405,596, seeking to
register PRETZEL CRISPS in standard character format
for “pretzels” on an intent-to-use basis under § 1(b) of the
Lanham Act, 15 U.S.C. § 1051. The trademark examining
attorney refused registration on the Principal Register on
grounds that the proposed mark was merely descriptive
under 15 U.S.C. § 1052(e)(1). In response, Princeton
Vanguard: (1) amended its identification of goods from
“pretzels” to “pretzel crackers;” (2) disclaimed the exclu-
sive right to use the term “pretzel” apart from the mark
as a whole; and (3) requested registration on the Supple-
mental Register. Board Decision, 109 U.S.P.Q.2d at 1950
& n.1. Princeton Vanguard subsequently obtained Regis-
tration No. 2,980,303 for the PRETZEL CRISPS mark on
the Supplemental Register.
PRINCETON VANGUARD, LLC v. 3
FRITO-LAY NORTH AMERICA, INC.
Several years later, Princeton Vanguard filed U.S.
Trademark Application Serial No. 76/700,802, seeking to
register PRETZEL CRISPS in standard character format
for “pretzel crackers” on the Principal Register. In its
application, Princeton Vanguard identified October 6,
2004 as its first use of the mark in commerce, disclaimed
the exclusive right to use the term “pretzel” apart from
the mark as shown, and claimed acquired distinctiveness
in the mark as a whole. Id. at 1950 n.2.
On July 2, 2010, Frito-Lay North America, Inc. (“Fri-
to-Lay”) filed a notice of opposition to Princeton Van-
guard’s Application Serial No. 76/700,802 to register
PRETZEL CRISPS on the Principal Register. In its
opposition, Frito-Lay argued that the term PRETZEL
CRISPS is generic for pretzel crackers and thus is not
registrable. In the alternative, Frito-Lay asserted that
PRETZEL CRISPS is highly descriptive of a type of
cracker product and has not acquired distinctiveness. Id.
at 1950. Frito-Lay subsequently filed a petition to cancel
Supplemental Registration No. 2,980,303 on the same
grounds. The petition for cancellation was consolidated
with the opposition proceeding and both parties filed
motions for summary judgment.
In denying Frito-Lay’s motion for summary judgment
that the mark is generic, the Board found that Princeton
Vanguard’s submissions, including survey evidence and
news articles, “give[] rise to a genuine dispute regarding
the element of whether the public understands ‘pretzel
crisps’ as the generic wording for pretzel crackers, or as
designating applicant as the source of pretzel cracker
products bearing the mark.” Frito-Lay N. Am., Inc. v.
Princeton Vanguard, LLC, Opp’n Nos. 91190246 &
91195552, Canc’n No. 92053001, slip op. at 8 (T.T.A.B.
Feb. 9, 2011). The Board likewise denied Princeton
Vanguard’s later motion for summary judgment, finding a
genuine dispute as to whether the mark is generic for
pretzel crackers and whether it has acquired distinctive-
4 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
ness. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC,
Opp’n No. 91195552, Canc’n No. 92053001, slip op. at 3-4
(T.T.A.B. Sept. 5, 2012). The parties agreed to proceed to
trial on the summary judgment record, as well as supple-
mental expert declarations. That record included, among
other things, testimony in the form of declarations with
attached exhibits, media references, third party use in the
food industry, use by the parties themselves, and expert
survey evidence. Board Decision, 109 U.S.P.Q.2d at 1951.
Both parties filed trial briefs and, pursuant to Princeton
Vanguard’s request, the Board conducted oral argument.
On February 28, 2014, the Board sustained Frito-
Lay’s opposition to Princeton Vanguard’s application and
granted its petition for cancellation. Id. at 1960. 1 At the
outset, the Board found that “pretzel crisps” is a com-
pound term, not a phrase, and analyzed the terms indi-
vidually. Id. at 1953 (noting that “compound words that
do not add new meaning may be analyzed by their con-
stituent terms”). Specifically, the Board found that the
term “pretzel” in PRETZEL CRISPS is generic for pretzels
and pretzel snacks, and the term “crisps” is generic for
crackers. In reaching this conclusion, the Board cited:
(1) media references and third-party use of the term
“crisps” to identify crackers; (2) registrations disclaiming
the term “crisps”; (3) dictionary definitions of the word
“crisp”; (4) Princeton Vanguard’s admission that its
packages for its PRETZEL CRISPS products provide
nutritional facts for a serving size of a stated number of
“crisps”; (5) a few generic references to the combined term
“pretzel crisps;” and (6) the surveys of two of the parties’
1 The Board found that Frito-Lay has standing to
oppose the registration because it sells pretzels, crackers,
and other snack foods. Id. at 1951. Standing is not at
issue on appeal.
PRINCETON VANGUARD, LLC v. 5
FRITO-LAY NORTH AMERICA, INC.
experts: Dr. Alex Simonson for Frito-Lay and Dr. E.
Deborah Jay for Princeton Vanguard.
Dr. Simonson’s survey found that 41% of respondents
thought PRETZEL CRISPS was a brand name, 41%
thought it was a category name, and 18% answered “don’t
know” or “not sure.” Id. at 1957. Dr. Jay noted several
problems with Dr. Simonson’s methodology, including
that “the universe of survey participants was underinclu-
sive,” the two options of giving no opinion—“don’t know”
and “not sure”—may have caused confusion, and Dr.
Simonson failed to conduct a “mini-test” to determine
whether participants understood the difference between
brand names and category (generic) names. Id. at 1957-
58. The Board agreed with Dr. Jay’s criticisms of Dr.
Simonson’s survey, and thus gave Frito Lay’s survey little
probative weight. As to Dr. Jay’s survey—which found
that 55% of respondents thought that PRETZEL CRISPS
was a brand name, while 36% thought it was a common or
generic name—the Board noted Dr. Simonson’s objection
to the screening criteria, but did not adopt it. Id. at 1958.
The Board indicated that it considered the entire rec-
ord, including the surveys, but gave “controlling weight to
the dictionary definitions, evidence of use by the public,
including use by the media and by third-parties in the
food industry, and evidence of use by defendant itself.”
Id. at 1960. On this record, the Board found “PRETZEL
CRISPS” is generic for “pretzel crackers.” Id. The Board
explained that its conclusion would be the same if it had
analyzed PRETZEL CRISPS as a phrase instead of a
compound term, because “the words strung together as a
unified phrase also create a meaning that we find to be
understood by the relevant public as generic for ‘pretzel
crackers.’” Id. Given the Board’s finding of genericness,
it did not address whether the term PRETZEL CRISPS,
when used in connection with pretzel crackers, has ac-
quired distinctiveness. Id. at 1960 n.13.
6 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
Princeton Vanguard timely appealed to this court.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Pacer
Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Whether the
Board applied the correct legal standard in assessing the
mark is a question of law we review de novo. See In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345
(Fed. Cir. 2001). Whether an asserted mark is generic is
a question of fact. In re Hotels.com, LP, 573 F.3d 1300,
1301 (Fed. Cir. 2009). Accordingly, “[o]n appellate review
of the Board’s factual finding of genericness, we deter-
mine whether, on the entirety of the record, there was
substantial evidence to support the determination.” Id. at
1302. Substantial evidence requires “more than a mere
scintilla” and is “‘such relevant evidence as a reasonable
mind would accept as adequate’ to support a conclusion.”
Pacer Tech., 338 F.3d at 1349 (quoting Consol. Edison v.
NLRB, 305 U.S. 197, 229 (1938)).
On appeal, Princeton Vanguard argues that the Board
erred in its genericness analysis when it assessed the
PRETZEL CRISPS mark as a compound term instead of a
phrase. Specifically, Princeton Vanguard contends that
the Board “took the short-cut of analyzing whether the
words ‘pretzel’ and ‘crisps’ are each generic for a pretzel
and a cracker, and then it merely assumed the public
would understand the combined mark PRETZEL CRISPS
to be generic for ‘pretzel crackers’ without due considera-
tion of the actual evidence of record.” Appellant Br. 9.
According to Princeton Vanguard, by focusing solely on
the mark’s constituent parts, the Board: (1) deviated from
this court’s precedent, which requires consideration of the
mark it its entirety; and (2) failed to consider the evidence
PRINCETON VANGUARD, LLC v. 7
FRITO-LAY NORTH AMERICA, INC.
of record, which shows that the purchasing public under-
stands the term PRETZEL CRISPS to be a brand name.
For the reasons explained below, we agree with
Princeton Vanguard that the Board applied the incorrect
legal standard when it failed to consider the relevant
public’s understanding of the PRETZEL CRISPS mark in
its entirety.
A. The Board Applied the Incorrect Legal Standard
A generic term “is the common descriptive name of a
class of goods or services.” H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir.
1986). Because generic terms “are by definition incapa-
ble of indicating a particular source of the goods or ser-
vices,” they cannot be registered as trademarks. Dial-A-
Mattress, 240 F.3d at 1344. “The critical issue in generic-
ness cases is whether members of the relevant public
primarily use or understand the term sought to be pro-
tected to refer to the genus of goods or services in ques-
tion.” Marvin Ginn, 782 F.2d at 989-90.
We have said that determining a mark’s genericness
requires “a two-step inquiry: 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?” Id. at 990. Evidence of the public’s
understanding of the mark may be obtained from “any
competent source, such as consumer surveys, dictionaries,
newspapers and other publications.” In re Northland
Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir.
1985). In an opposition or cancellation proceeding, the
opposer or petitioner bears the burden of proving generic-
ness by a preponderance of the evidence. See Magic
8 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
Wand, Inc. v. RDB, Inc., 940 F.2d 638, 641-42 (Fed. Cir.
1991). 2
Applying the first prong of the Marvin Ginn test, the
Board defined the genus of goods at issue as “pretzel
crackers.” Board Decision, 109 U.S.P.Q.2d at 1952.
Turning to the second prong, the Board identified the
relevant public as “ordinary consumers who purchase and
eat pretzel crackers.” Id. Neither party disputes these
findings on appeal.
2 Although the parties agree that the relevant
standard is preponderance of the evidence, Frito-Lay
notes that they disputed who bore the burden of proof on
the issue of genericness at trial. Appellee Br. 20 n.5.
Frito-Lay argued to the Board that Princeton Vanguard
should bear the burden to show that its mark is not
generic because its registration on the Supplemental
Register is not prima facie evidence of the validity of the
registered mark. The parties did not brief this issue on
appeal. Indeed, Frito-Lay states that we “need not con-
sider this issue at this juncture,” but concedes that it
would become “relevant in the event of a remand.” Id.
We agree with the Board that the burden was on Frito-
Lay to prove genericness by a preponderance of the evi-
dence. See Am. Med. Rehab. Providers Ass’n. v. UB
Found. Activities, Inc., Opp. No. 91158512, Canc’n No.
92043381, 2008 WL 4674613, at *3 (T.T.A.B. Sept. 23,
2008) (“In an opposition/cancellation, the oppos-
er/petitioner has the burden of proving genericness by a
‘preponderance of the evidence.’”); Racine Indus., Inc. v.
Bane-Clene Corp., 35 U.S.P.Q.2d 1832, 1838 (T.T.A.B.
1994) (“Opposer, as the party contending that the desig-
nation ‘PCA’ is a generic term for applicant’s professional
carpet cleaners’ association, bears the burden of proof
thereof.”).
PRINCETON VANGUARD, LLC v. 9
FRITO-LAY NORTH AMERICA, INC.
The Board began its discussion of the public’s percep-
tion of the mark by stating that it “first must decide how
to analyze the term.” Id. Although the Board acknowl-
edged that the ultimate inquiry is whether the mark as a
whole is generic, it then cited In re Gould Paper Corp.,
834 F.2d 1017 (Fed. Cir. 1987), for the proposition that,
“in cases where the proposed mark is a compound term (in
other words a combination of two or more terms in ordi-
nary grammatical construction), genericness may be
established with evidence of the meaning of the constitu-
ent words.” Id. (citing Gould, 834 F.2d at 1019). The
Board indicated that, “[b]y contrast, ‘where the proposed
mark is a phrase . . . the board cannot simply cite defini-
tions and generic uses of the constituent terms of a mark;
it must conduct an inquiry into the meaning of the dis-
puted phrase as a whole.’” Id. (quoting Dial-A-Mattress,
240 F.3d at 1345 (citing In re Am. Fertility Soc’y, 188 F.3d
1341, 1347 (Fed. Cir. 1999))).
The Board appears to believe that there is a dichoto-
my in the standard applicable to a particular mark de-
pending on whether it is a compound term or a phrase.
According to the Board, if the mark is a compound term,
then Gould applies, and it can focus on the individual
words, but if it is a phrase, American Fertility requires
that the Board consider the mark in its entirety. Id. at
1953. Because the Board found “no additional meaning
added to ‘PRETZEL CRISPS’ in relation to ‘pretzel crack-
ers,’ when the individual terms are combined,” the Board
analyzed it as a compound term. Id. The Board then
considered the terms individually and concluded that
“pretzel” is generic for pretzels and pretzel snacks, and
“crisps” is generic for crackers. Id.
The problem with the Board’s analysis is that there is
only one legal standard for genericness: the two-part test
set forth in Marvin Ginn. Am. Fertility, 188 F.3d at 1348.
As noted, to determine whether a mark is generic under
that test, the Board must first identify the genus of goods
10 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
or services at issue, and then assess whether the public
understands the mark, as a whole, to refer to that genus.
Marvin Ginn, 782 F.2d at 990. On appeal, Frito-Lay cites
our decisions in Gould and American Fertility to suggest
that the Board can somehow short-cut its analysis of the
public’s perception where “the purported mark is a com-
pound term consisting merely of two generic words.”
Appellee Br. 21. As discussed below, however, there is no
such short-cut, and the test for genericness is the same,
regardless of whether the mark is a compound term or a
phrase. Neither Gould nor American Fertility hold oth-
erwise.
The applicant in Gould sought to register the mark
SCREENWIPE for goods identified as “pre-moistened,
anti-static cloth for cleaning computer and television
screens.” 834 F.2d at 1017. While the Board looked to
the individual definitions of “screen” and “wipe,” we found
that “Gould’s own submissions provided the most damag-
ing evidence that its alleged mark is generic and would be
perceived by the purchasing public as merely a common
name for its goods rather than a mark identifying the
good’s source.” Id. at 1018-19. Indeed, Gould described
its own product as “a . . . wipe . . . for . . . screens.” Id. at
1019. Given this admission, we noted that the “compound
immediately and unequivocally describes the purpose,
function and nature of the goods as Gould itself tells us.”
Id. (“Gould has simply joined the two most pertinent and
individually generic terms applicable to its product, and
then attempts to appropriate the ordinary compound thus
created as its trademark.”). In that context, where the
mark in its entirety has exactly the same meaning as the
individual words, we stated that “the PTO has satisfied
its evidentiary burden if, as it did in this case, it produces
evidence . . . that the separate words joined to form a
compound have a meaning identical to the meaning
common usage would ascribe to those words as a com-
pound.” Id. at 1018. Because “the terms remain as
PRINCETON VANGUARD, LLC v. 11
FRITO-LAY NORTH AMERICA, INC.
generic in the compound as individually,” we concluded
that the compound itself was generic. Id. at 1019.
In American Fertility, we explained that: (1) Gould
did not alter the legal standard for genericness; and
(2) the correct legal test “is set forth in Marvin Ginn and
is to be applied to a mark . . . as a whole, for the whole
may be greater than the sum of its parts.” Am. Fertility,
188 F.3d at 1348. In that case, the Board held that the
proposed mark—SOCIETY FOR REPRODUCTIVE
MEDICINE—was generic based on evidence of record
relating solely to the individual terms. Id. at 1344 (“De-
spite the lack of evidence of the public’s understanding of
the phrase as a whole, the Board held that the ‘combina-
tion of the terms ‘society’ and ‘reproductive medicine’
results in a designation, SOCIETY FOR
REPRODUCTIVE MEDICINE, which is also generic.’”)
(citation omitted). We vacated the Board’s decision on
appeal, finding that it applied the incorrect legal standard
when it “assumed the genericness of a phrase as a whole
based solely on proof of the genericness of its individual
terms.” Id. at 1342.
In reaching this conclusion in American Fertility, we
clarified that the Gould decision “did not purport to
modify Marvin Ginn . . . and seemingly sought to follow”
it by focusing on Gould’s generic use in its entirety. Id. at
1347. We reiterated that Marvin Ginn requires evidence
of the “genus of goods or services at issue” and the “un-
derstanding by the general public that the mark refers
primarily to ‘that genus of goods or services.’” Id.
“Properly interpreted, Gould does not justify a short-cut
around this test, but rather found that the evidence
presented met this burden.” Id. at 1348. We further
indicated that the Board “cannot simply cite definitions
and generic uses of the constituent terms of a mark . . . in
lieu of conducting an inquiry into the meaning of the
disputed phrase as a whole to hold a mark . . . generic.”
Id. at 1347. Accordingly, we remanded the case for the
12 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
Board to apply the Marvin Ginn test to the mark as a
whole. Id. at 1349.
In subsequent decisions, this court has reiterated
that, “[a]n inquiry into the public’s understanding of a
mark requires consideration of the mark as a whole.
Even if each of the constituent words in a combination
mark is generic, the combination is not generic unless the
entire formulation does not add any meaning to the
otherwise generic mark.” In re Steelbuilding.com, 415
F.3d 1293, 1297 (Fed. Cir. 2005). In Steelbuilding, the
applicant sought to register the mark
STEELBUILDING.COM in connection with “computer-
ized on-line retail services in the field of pre-engineered
metal buildings and roofing systems.” Id. at 1296. The
Board found that the mark was either generic or highly
descriptive, and that there was insufficient evidence of
acquired distinctiveness. Id. On appeal, we found
that the record did not contain substantial evidence that
“STEELBUILDING,” “in common usage, is a compound
word used to mean either ‘steel building’ or ‘steel build-
ings.’” Id. at 1298 (citing Gould, 834 F.2d at 1018). In
reaching this conclusion, we emphasized that Gould
required consideration of the mark in its entirety, and
that the applicant in Gould “admitted that ‘screen wipe’
denoted a ‘screen wipe.’” Id. at 1298. In other words, the
combined term at issue in Gould—SCREENWIPE—itself
described the genus of goods at issue. In contrast, the
applicant denied that “STEELBUILDING” describes
merely “steel buildings.” Id. Although the Board cited
evidence showing that “steel building” was generic, that
evidence did not “address directly the composite term
STEELBUILDING.” Id. at 1299. We concluded, there-
fore, that the record did not contain sufficient evidence to
PRINCETON VANGUARD, LLC v. 13
FRITO-LAY NORTH AMERICA, INC.
support the Board’s finding that STEELBUILDING.COM
was generic for the applicant’s services. Id. 3
On appeal, Frito-Lay argues that American Fertility is
distinguishable from this case because it involved a
phrase, not a compound term. According to Frito-Lay, the
applicable legal standard depends on an initial “factual
determination of whether the purported mark is a com-
pound term or a phrase.” Appellee Br. 36-37. 4 We disa-
3 Other decisions have likewise emphasized that
the Board must consider the mark in its entirety. See
Dial-A-Mattress, 240 F.3d at 1346 (“Analyzing the ‘1-888-
M-A-T-R-E-S-S’ mark as a whole, substantial evidence
does not support the conclusion that the mark is generic.
There is no record evidence that the relevant public refers
to the class of shop-at-home telephone mattress retailers
as ‘1-888-M-A-T-R-E-S-S.’”).
4 Frito-Lay cites Cummins Engine Co., Inc. v. Con-
tinental Motors Corp., 359 F.2d 892 (CCPA 1966), for the
proposition that analyzing compound terms individually
“has been a part of this Court’s trademark precedent for
nearly fifty years, if not longer.” Appellee Br. 23. In
Cummins, however, our predecessor court found that “the
definitions alone indicate that ‘turbodiesel’ is a word
which by its nature will convey a specific and correct
meaning which is such that it cannot become a trademark
as a result even of origination and first use.” Cummins,
359 F.2d at 894. The record also contained a “Flight”
magazine article which was published prior to the appli-
cant’s use of the term TURBODIESEL and referred to
“turbo-diesel” as an engine name. Id. at 894-95. Given
the evidence of record, the court concluded that the term
“turbodiesel” “would be recognized as a natural composite
term for designating such engines.” Id. at 895. Despite
Frito-Lay’s suggestion to the contrary, the court in Cum-
14 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
gree. Regardless of whether the mark is a compound
term or a phrase, the applicable test is the same and the
Board must consider the record evidence of the public’s
understanding of the mark as a whole. Am. Fertility, 188
F.3d at 1348-49. Our decision in Gould merely provides
additional assistance in assessing the genericness of
compound terms where it can be shown that “the public
understands the individual terms to be generic,” and the
joining of those terms into one compound word provides
no additional meaning. Id. It is not a short-cut and does
not supplant the two-part test set forth in Marvin Ginn.
Even in cases where we have recognized that Gould
provides an evidentiary standard applicable to compound
terms, we have nonetheless emphasized that the Board
must consider the mark in its entirety. See Hotels.com,
573 F.3d at 1304-06 (citing Gould and concluding that
“the Board satisfied its evidentiary burden, by demon-
strating that the separate terms ‘hotel’ and ‘.com’ in
combination have a meaning identical to the common
meaning of the separate components”); see also In re
1800Mattress.com IP, LLC, 586 F.3d 1359, 1363 (Fed. Cir.
2009).
In 1800Mattress.com, for example, the Board initially
considered the terms “mattress” and “.com” individually
and determined that they were both generic. 586 F.3d at
1363. We explained that the Board “then considered the
mark as a whole and determined that the combination
added no new meaning, relying on the prevalence of the
term ‘mattress.com’ in the website addresses of several
online mattress retailers that provide the same services
as Dial-A-Mattress.” Id. In affirming the Board’s deci-
sion, we indicated that the Board “properly determined”
that “the correct inquiry is whether the relevant public
mins looked to the public’s understanding of the mark as
a whole.
PRINCETON VANGUARD, LLC v. 15
FRITO-LAY NORTH AMERICA, INC.
would understand, when hearing the term ‘mattress.com,’
that it refers to online mattress stores.” Id. at 1364.
Accordingly, even in circumstances where the Board finds
it useful to consider the public’s understanding of the
individual words in a compound term as a first step in its
analysis, the Board must then consider available record
evidence of the public’s understanding of whether joining
those individual words into one lends additional meaning
to the mark as a whole. See id. at 1363-64; see Ho-
tels.com, 573 F.3d at 1304-06.
As noted, here, the Board determined that PRETZEL
CRISPS is a compound term, not a phrase, and evaluated
the terms individually under Gould. Board Decision, 109
U.S.P.Q.2d at 1953. The Board concluded that the “com-
monly understood meaning of the words ‘pretzel’ and
‘crisps,’ demonstrates that purchasers understand that
‘PRETZEL CRISPS’ identifies ‘pretzel crackers.’” Id. at
1959. Where, as here, the record is replete with evidence
of the public’s perception of the term PRETZEL CRISPS
as a whole, it is unclear why the Board would resort to
analyzing the terms individually or why it would believe
doing so would aid its analysis. In any event, as we have
explained, the appropriate legal standard set forth in
Marvin Ginn requires consideration of the mark as a
whole.
At the end of its decision, the Board stated in passing
that, although it analyzed the term PRETZEL CRISPS as
a compound term, “were we to analyze it as a phrase, on
this record, our conclusion would be the same, as the
words strung together as a unified phrase also create a
meaning that we find to be understood by the relevant
public as generic for ‘pretzel crackers.’” Board Decision,
109 U.S.P.Q.2d at 1960. But the Board’s decision lacks
any indicia that it actually engaged in such an analysis.
Specifically, as explained below, there is no evidence that
the Board conducted the necessary step of comparing its
findings with respect to the individual words to the record
16 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
evidence demonstrating the public’s understanding of the
combined term: PRETZEL CRISPS. By failing to do so,
the Board took the type of short-cut analysis we have said
is prohibited and ignored evidence that might compel a
contrary conclusion. See Am. Fertility, 188 F.3d at 1348
(stating that “Gould does not justify a short-cut around”
the test articulated in Marvin Ginn). We conclude, there-
fore, that the Board applied the incorrect legal standard
in its genericness determination. On remand, the Board
must consider evidence of the relevant public’s under-
standing of the term PRETZEL CRISPS in its entirety.
B. Evidence of Record
As previously discussed, the relevant public’s percep-
tion is the primary consideration in determining whether
a term is generic. In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987) (“It is
basic to the inquiry to determine whether members of the
relevant public primarily use or understand the term to
refer to the genus of goods or services.”). And, as noted,
evidence of the public’s perception may be obtained from
“any competent source, such as consumer surveys, dic-
tionaries, newspapers and other publications.” Northland
Aluminum, 777 F.2d at 1559.
One of our sister circuits has indicated that “direct
consumer evidence, e.g., consumer surveys and testimony
is preferable to indirect forms of evidence.” Berner Int’l
Corp. v. Mars Sales, Co., 987 F.2d 975, 982-83 (3d Cir.
1993) (“Consumer surveys have become almost de rigueur
in litigation over genericness.”) (internal citation and
quotation marks omitted). We likewise have recognized
that “consumer surveys may be a preferred method of
proving genericness.” BellSouth Corp. v. DataNational
Corp., 60 F.3d 1565, 1570 (Fed. Cir. 1995) (“While con-
sumer surveys may be a preferred method of proving
genericness under the proper test of purchaser under-
PRINCETON VANGUARD, LLC v. 17
FRITO-LAY NORTH AMERICA, INC.
standing, we are satisfied that on the facts of this case
genericness has been established under that test.”).
On appeal, Princeton Vanguard argues that the Board
cherry-picked the media references in the record and
chose only those references that supported genericness.
According to Princeton Vanguard, the Board failed to
consider evidence that, “since the launch of PRETZEL
CRISPS pretzel crackers, 86% of unsolicited media refer-
ences clearly use the term PRETZEL CRISPS” as a brand
name. Appellant Br. 23. Next, Princeton Vanguard
argues that the Board failed to consider the declarations
it presented from four independent participants in the
snack food industry who testified that they use and un-
derstand the term PRETZEL CRISPS exclusively to refer
to Snack Factory’s PRETZEL CRISPS products. 5 Instead,
the Board cited “two instances in which a snack food
company used the term PRETZEL CRISPS in an arguably
generic fashion.” Id. at 27. Finally, Princeton Vanguard
argues that the Board erred in disregarding the results of
Dr. Jay’s survey without any explanation.
In response, Frito-Lay argues that, “even if the Board
somehow ‘cherry picked’ generic uses of ‘pretzel crisps’ by
the media (which it did not), there is ample other evidence
supporting its genericness finding, including dictionary
definitions; generic use by Princeton, competitors, and
consumers; and survey evidence.” Appellee Br. 43-44.
Frito-Lay maintains that the Board’s findings are reason-
able and supported by substantial evidence.
Given our conclusion that the Board applied the in-
correct standard for genericness and our decision to
remand for application of the correct legal test, we need
5 Princeton Vanguard explains that it “has granted
Snack Factory an exclusive license to use the PRETZEL
CRISPS mark.” Appellant Br. 4 n.2.
18 PRINCETON VANGUARD, LLC v.
FRITO-LAY NORTH AMERICA, INC.
not analyze the parties’ specific arguments with respect to
the evidence of record. We reiterate, however, that sub-
stantial evidence review “requires an examination of the
record as a whole, taking into account both the evidence
that justifies and detracts from an agency’s opinion.”
Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006).
Our review under that standard “can only take place
when the agency explains its decisions with sufficient
precision, including the underlying factfindings and the
agency’s rationale.” Packard Press, Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000).
The record here contains significant evidence in the
form of declarations, survey evidence, and evidence of use
of PRETZEL CRISPS in the snack food industry and by
the media and Frito-Lay does not dispute Princeton
Vanguard’s description of much of it. Though the Board is
not required to discuss every piece of evidence, it cannot
focus primarily on evidence of the word “crisps” in isola-
tion, select a few pieces of evidence involving the com-
bined term “pretzel crisps,” and conclude that the
trademark is generic. Nor can it disregard the results of
survey evidence without explanation. Just as it may not
short-cut its legal analysis, the Board may not short-cut
its consideration of the factual record before it.
As previously noted, the Board expressly agreed with
Dr. Jay’s criticisms of Dr. Simonson’s survey and gave his
findings “little probative weight.” Board Decision, 109
U.S.P.Q.2d at 1958. In particular, the Board concluded
that the two “don’t know” and “not sure” answers “poten-
tially were confusing to survey participants, and may
have le[d] those who understood the survey question to
elect to indicate they did not.” Id. As to Dr. Jay’s survey,
which found that 55% of respondents thought that
PRETZEL CRISPS was a brand name, the Board merely
noted Dr. Simonson’s criticism, which was that “less than
65% of the initial group ‘of qualified respondents’ was
entered into the survey due to the underinclusive nature
PRINCETON VANGUARD, LLC v. 19
FRITO-LAY NORTH AMERICA, INC.
of the questions.” Id. at 1958. The Board did not agree
with this critique, however. Id. Nor did the Board call
into question Dr. Jay’s conclusion that “the primary
significance of the name ‘PRETZEL CRISPS’ to past and
prospective purchasers of salty snacks is as a brand
name.” Id. Nevertheless, in finding the mark generic, the
Board indicated that it considered the evidence of record
“including the surveys (which in any event arrive at
different conclusions),” but gave controlling weight to
dictionary definitions, evidence of use by the public, and
evidence of use by Princeton Vanguard. Id. at 1960. The
Board seems to have treated the surveys as though they
cancelled each other out, but failed to offer any explana-
tion for doing so. The Board thus overlooked or disre-
garded a genericness survey as to which it apparently
found no flaw. On remand, the Board will have the
opportunity to make the relevant factual findings based
on all of the evidence of record, and must give appropriate
consideration to the proffered survey evidence.
CONCLUSION
Because we find that the Board applied the incorrect
legal standard in assessing whether the term PRETZEL
CRISPS is generic, we vacate the Board’s decision cancel-
ling Registration No. 2,980,303 and its decision sustain-
ing Frito-Lay’s opposition to Application Serial No.
76/700,802. We remand for application of the appropriate
standard as set forth in Marvin Ginn and discussed
herein.
VACATED AND REMANDED