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

United States Court of Appeals
for the Federal Circuit
______________________
REAL FOODS PTY LTD.,
Appellant
v.
FRITO-LAY NORTH AMERICA, INC.,
Cross-Appellant
______________________
2017-1959, 2017-2009
______________________
Appeals from the United States Patent and Trade-
mark Office, Trademark Trial and Appeal Board in Nos.
91212680, 91213587.
______________________
SEALED OPINION ISSUED: September 21, 2018
PUBLIC OPINION ISSUED: October 4, 2018 *
______________________
JEANNE M. HAMBURG, Norris, McLaughlin & Marcus,
PA, New York, NY, argued for appellant. Also represent-
ed by STEPHANIE SPANGLER; KELLY WATKINS, Allentown,
PA.
WILLIAM G. BARBER, Pirkey Barber LLP, Austin, TX,
* This opinion was originally filed under seal and
has been unsealed in full.
2 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
argued for cross-appellant. Also represented by TYSON
DAVID SMITH, DAVID ARMENDARIZ.
______________________
Before WALLACH, LINN, and HUGHES, Circuit Judges.
WALLACH, Circuit Judge.
Appellant Real Foods Pty Ltd. (“Real Foods”) sought
registration of two marks: “CORN THINS,” for “crisp-
bread slices predominantly of corn, namely popped corn
cakes”; and “RICE THINS,” for “crispbread slices primari-
ly made of rice, namely rice cakes.” J.A. 279 (emphasis
omitted). Cross-Appellant Frito-Lay North America, Inc.
(“Frito-Lay”) opposed the registrations, arguing that the
proposed marks should be refused as either generic or
descriptive without having acquired distinctiveness. See
J.A. 241–43 (opposition to RICE THINS), 254–56 (opposi-
tion to CORN THINS). The U.S. Patent and Trademark
Office’s (“USPTO”) Trademark Trial and Appeal Board
(“TTAB”) refused registration of Real Foods’ applied-for
marks in an opinion finding the marks “are merely de-
scriptive and have not acquired distinctiveness,” Frito-
Lay N. Am., Inc. v. Real Foods Pty Ltd., Nos. 91212680,
91213587, 2017 WL 914086, at *21 (T.T.A.B. Feb. 21,
2017), but also dismissing Frito-Lay’s “genericness claim,”
id. at *14.
Both parties appeal. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(B) (2012). We affirm-in-part,
vacate-in-part, and remand.
DISCUSSION
Real Foods argues the TTAB erred in finding the pro-
posed marks “descriptive, rather than sugges-
tive, . . . because it applied incorrect legal standards in
evaluating the marks and failed to properly consider all of
the evidence of record.” Appellant’s Br. 20; see id. at 21–
35. Alternatively, Real Foods contends that, even if its
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 3
marks are descriptive, “[they] have acquired [distinctive-
ness].” Id. at 41 (capitalization modified); see id. at 41–61.
Frito-Lay cross-appeals the TTAB’s dismissal of its claim
that the proposed marks are generic. Cross-Appellant’s
Br. 15–22. After articulating the governing legal princi-
ples, we address Real Foods’ appeal and then Frito-Lay’s
cross-appeal.
I. Standard of Review and Legal Framework
We review the TTAB’s legal conclusions de novo and
its findings of fact for substantial evidence. In re N.C.
Lottery, 866 F.3d 1363, 1366 (Fed. Cir. 2017). “Substan-
tial evidence requires more than a mere scintilla and is
such relevant evidence as a reasonable mind would accept
as adequate to support a conclusion.” Princeton Van-
guard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 964
(Fed. Cir. 2015) (internal quotation marks and citation
omitted). “The [TTAB]’s finding[s] may be supported by
substantial evidence even if two inconsistent conclusions
can be drawn from the evidence.” Citigroup Inc. v. Capi-
tal City Bank Grp., Inc., 637 F.3d 1344, 1349 (Fed. Cir.
2011) (citation omitted).
“[T]here are four categories of [terms] that lie along a
spectrum” used to categorize proposed marks. In re N.C.
Lottery, 866 F.3d at 1366 (citation omitted). “When
arranged in an ascending order which roughly reflects
their eligibility for trademark status and the degree of
protection accorded, these four categories are: generic (or
common descriptive), merely descriptive, suggestive, and
arbitrary []or fanciful[] marks.” Id. (internal quotation
marks and citations omitted). “Placement of a term on
the fanciful-suggestive-descriptive-generic continuum is a
question of fact.” DuoProSS Meditech Corp. v. Inviro
Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012)
(quoting In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 1344 (Fed. Cir. 2001)).
4 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
Generic terms “cannot be registered as trademarks.”
Princeton Vanguard, 786 F.3d at 965 (citation omitted).
“A generic term is the common descriptive name of a class
of goods or services” and “[is] by definition incapable of
indicating a particular source of the goods or services.”
Id. (internal quotation marks and citations omitted); see
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992) (“[G]eneric marks . . . refer to the genus of which
the particular product is a species.” (internal quotation
marks, brackets, and citation omitted)).
Terms “that are merely descriptive cannot be regis-
tered [on the principal register 1] unless they acquire”
distinctiveness, which is “secondary meaning[,] under [15
U.S.C. § 1052(f) 2].” In re N.C. Lottery, 866 F.3d at 1366
(citation omitted); see 15 U.S.C. § 1052(f) (similar); see
also Two Pesos, 505 U.S. at 769 (“This acquired distinc-
tiveness is generally called ‘secondary meaning.’”). “A
1 The Lanham Act, see 15 U.S.C. §§ 1051–1072,
1091–1096, 1111–1129, 1141–1141n (2012), contains
provisions related to the principal register, see id.
§§ 1051–1072, which is the primary register for trade-
marks on which the USPTO maintains registered marks
“by which the goods of the applicant may be distinguished
from the goods of others,” id. § 1052. “A certificate of
registration of a mark upon the principal register” is
“prima facie evidence of the validity of the registered
mark and of the registration of the mark, of the owner’s
ownership of the mark, and of the owner’s exclusive right
to use the registered mark in commerce or in connection
with the goods or services specified in the certificate.” Id.
§ 1057(b).
2 Section 1052(f) provides that “nothing in this
chapter shall prevent the registration of a mark . . . which
has become distinctive of the applicant’s goods in com-
merce.” 15 U.S.C. § 1052(f) (emphasis added).
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 5
mark is merely descriptive if it immediately conveys
information concerning a feature, quality, or characteris-
tic of the goods or services for which registration is
sought.” In re N.C. Lottery, 866 F.3d at 1367 (citation
omitted). “The ‘descriptive’ category is not a monolithic
set of terms. Some terms are only slightly descriptive
and . . . [o]ther terms are highly descriptive . . . .”
2 J. McCarthy, Trademarks and Unfair Competition
§ 11:25 (5th ed. 2018) (emphases added). Secondary
meaning, required to register a descriptive mark, “occurs
when, in the minds of the public, the primary significance
of a mark is to identify the source of the product rather
than the product itself.” Wal-Mart Stores, Inc. v. Samara
Bros., Inc., 529 U.S. 205, 211 (2000) (internal quotation
marks, brackets, and citation omitted). “[T]he applicant’s
burden of showing acquired distinctiveness increases with
the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.” In re
Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005)
(citation omitted). 3
3 The Lanham Act also provides for registration on
the supplemental register. See 15 U.S.C. §§ 1091–1096;
see also In re Bush Bros. & Co., 884 F.2d 569, 570 (Fed.
Cir. 1989) (citations omitted) (“[A] mark that is ineligible
for registration on the [p]rincipal [r]egister because it is
‘merely descriptive’ of the goods or services, may be regis-
tered on the [s]upplemental [r]egister.”). “A mark may be
registered on the supplemental register if it is capable of
distinguishing the applicant’s goods or services,” even
though it has not yet acquired distinctiveness. In re Am.
Fertility Soc’y, 188 F.3d 1341, 1343 (Fed. Cir. 1999) (em-
phasis added); see 15 U.S.C. § 1091. By contrast, a mark
that is generic cannot be registered on the supplemental
register because it is “the ultimate in descriptiveness” and
therefore “cannot acquire distinctiveness.” Royal Crown
6 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
Terms that are suggestive, arbitrary, or fanciful are
“inherently distinctive” and therefore registrable. Wal-
Mart, 529 U.S. at 210–11; see In re Chippendales USA,
Inc., 622 F.3d 1346, 1350–51 (Fed. Cir. 2010) (discussing
registrability of these terms). “[A] suggestive mark
requires imagination, thought[,] and perception to reach a
conclusion about the nature of the goods.” In re N.C.
Lottery, 866 F.3d at 1367 (internal quotation marks and
citation omitted). Arbitrary or fanciful marks “contain
coined, arbitrary or fanciful words or phrases that have
been added to rather than withdrawn from the human
vocabulary by their owners, and have, from the very
beginning, been associated in the public mind with a
particular product,” and these marks “have created in the
public consciousness an impression or symbol of the
excellence of the particular product in question.” In re
Chippendales, 622 F.3d at 1350 n.2 (internal quotation
marks omitted) (quoting Moseley v. V Secret Catalogue,
Inc., 537 U.S. 418, 429 n.10 (2003)).
“In opposition proceedings, the opposer bears the bur-
den of establishing that the applicant does not have the
right to register its mark.” Hoover Co. v. Royal Appliance
Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001). Here, the
opposer, Frito-Lay, bears the burden of proving that the
term is generic or merely descriptive by a preponderance
of the evidence. See Princeton Vanguard, 786 F.3d at 965
Co. v. Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018)
(internal quotation marks and citation omitted). Regis-
tration on the supplemental register “confers considerably
fewer advantages than principal registration,” In re Am.
Fertility Soc’y, 188 F.3d at 1343, with supplemental
registration providing “no substantive trademark rights
beyond those under common law,” id. (quoting J. McCar-
thy, McCarthy on Trademarks and Unfair Competition
§ 19:36 (4th ed. 1999)).
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 7
(generic); StonCor Grp., Inc. v. Specialty Coatings, Inc.,
759 F.3d 1327, 1332 (Fed. Cir. 2014) (merely descriptive).
However, for acquired distinctiveness, which “serves as an
exception to a rejection,” Yamaha Int’l Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 1580 (Fed. Cir. 1988), the
applicant, Real Foods, has the “final burden . . . of going
forward with evidence to . . . establish acquired distinc-
tiveness by at least a preponderance of the evidence,” id.
at 1579 (internal quotation marks omitted).
II. Real Foods’ Appeal
A. Substantial Evidence Supports the TTAB’s Descrip-
tiveness Finding
The TTAB determined that both the terms CORN
THINS and RICE THINS “are merely descriptive of a
feature of [Real Foods’] respective goods,” Frito-Lay, 2017
WL 914086, at *17, and found the marks “highly descrip-
tive,” id. at *20. According to the TTAB, “a consumer will
immediately understand, when encountering the proposed
marks, that a feature or characteristic of [Real Foods’]
goods is that they are thin in cross section and made
primarily of corn in one instance and rice in the other.”
Id. at *15. The TTAB further explained that “because
each component of the [proposed marks] retains its mere-
ly descriptive significance in relation to the claimed goods,
each combination results in a composite that is itself
merely descriptive.” Id. at *17. Real Foods avers the
proposed marks are suggestive, rather than descriptive,
because they “require[] some imagination for the consum-
er to reach a conclusion about the nature of the product,”
and the TTAB failed to “examine the marks in their
entireties or in the context of the relevant product catego-
ry.” Appellant’s Br. 23 (capitalization modified); see id. at
23–27. We disagree with Real Foods.
“When determining whether a mark is merely de-
scriptive, the [TTAB] must consider the commercial
impression of a mark as a whole,” “viewed through the
8 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
eyes of a consumer.” DuoProSS, 695 F.3d at 1252, 1253
(emphasis added) (citation omitted). The TTAB should
“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.” Id. at 1254 (internal
quotation marks and citation omitted). “Evidence of the
public’s understanding of the term may be obtained from
any competent source, such as purchaser testimony,
consumer surveys, listings in dictionaries, trade journals,
newspapers[,] and other publications.” Royal Crown, 892
F.3d at 1366 (internal quotation marks and citation
omitted). In considering the mark as a whole, the TTAB
“may not ‘dissect’ the mark into isolated elements,” with-
out ever “consider[ing] . . . the entire mark,” DuoProSS,
695 F.3d at 1252, 1253, but it “may weigh the individual
components of the mark to determine the overall impres-
sion or the descriptiveness of the mark and its various
components,” In re Oppedahl & Larson LLP, 373 F.3d
1171, 1174 (Fed. Cir. 2004) (citation omitted).
Substantial evidence supports the TTAB’s finding
that the proposed marks are highly descriptive. The
terms “corn” and “rice,” both of which are grains, see
Frito-Lay, 2017 WL 914086, at *12 & nn.77–78 (taking
judicial notice of dictionary definitions of each term), 4
describe the primary ingredient in Real Foods’ respective
goods, see J.A. 471 (stating, in the declaration of Real
Foods’ managing director, “Real Foods’ products are
manufactured by placing rice or corn grains into a mold,
to which heat and pressure is applied, resulting in the
popping of the corn and puffing of the rice and their
formation into cakes”); see also J.A. 559 (providing, in
4 The parties do not contest the TTAB’s noticing of
these definitions. See generally Appellant’s Br.; Cross-
Appellant’s Br.
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 9
online marketing materials, that maize (i.e., corn) is the
primary ingredient by percentage in CORN THINS), 571
(providing, in similar marketing materials, that rice is the
primary ingredient in RICE THINS). Before the TTAB,
Real Foods disclaimed the terms “corn” and “rice” in its
proposed marks, see J.A. 156 (“No claim is made to the
exclusive right to use CORN apart from the mark as
shown.”), 210 (“No claim is made to the exclusive right to
use RICE apart from the mark as shown.”), thereby
recognizing the descriptive function of these terms, see In
re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed.
Cir. 2015) (“Disclaiming unregistrable components pre-
vents the applicant from asserting exclusive rights in the
disclaimed unregistrable terms.”). Indeed, the terms corn
and rice in Real Foods’ proposed marks are descriptive
because they identify “ingredients,” which are “qualities
or properties” of Real Foods’ goods. In re Gyulay, 820
F.2d 1216, 1218 (Fed. Cir. 1987) (internal quotation
marks and citation omitted).
Moreover, the term thins describes physical charac-
teristics of the corn and rice cakes. See J.A. 469 (stating,
in the declaration of Real Foods’ Managing Director, that
the “corn cakes are considerably slimmer than traditional
cakes, with slices under 0.8 centimeters in depth, as
compared to the usual 1.6 centimeters” (emphasis add-
ed)), 474 (stating, in the same declaration, that both
CORN THINS and RICE THINS have “slim dimensions”).
Indeed, Real Foods’ advertising materials use the word
“thin” to describe their products. See, e.g., J.A. 5097
(“They are a delicious thin corn cake, with ‘All Natural’
flavoring.” (emphasis added)), 5181 (describing the prod-
uct as having “THIN slices not thick”), 5188 (stating
“Corn & Rice Thins are THIN”). The record is replete
with evidence of the term thins being used in marks for
other, similar snack food products, see, e.g., J.A. 4076–78
(identifying, in Frito-Lay’s expert report, 119 products
using the term thins, including “Back to Nature Tomato
10 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
Herb Rice Thins,” “Baked Potato Thins,” “FalaFel Thins,”
“Pita Thins,” and “Wheat Thins”), which is evidence
relevant to the issue of the term’s descriptiveness, cf.
Royal Crown, 892 F.3d at 1370 (recognizing that indirect
evidence, including of “competitive use, evidence that
other companies use [a term] in combination with their
own . . . marks, third-party registrations[,] and applica-
tions for such combined marks,” may be relevant for
genericness). Thus, the proposed marks’ disclosure of this
thin “characteristic” or “feature” of the goods is descrip-
tive. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 1300 (Fed. Cir. 2012) (internal quotation marks and
citation omitted).
Viewing the marks as composites “do[es] not create a
different impression.” In re Oppedahl, 373 F.3d at 1177. 5
The composite marks are “merely descriptive” because
they “immediately convey[] knowledge of a quality or
characteristic of the product[s],” specifically the products’
main ingredients and thickness. Id. at 1173 (citation
omitted). Contrary to Real Foods’ argument, it is not
determinative that the marks do not also make reference
to the products being “cakes” or being made with “popped
or puffed ingredients.” Appellant’s Br. 16, 17; see In re
Oppedahl, 373 F.3d at 1173 (“A mark may be merely
descriptive even if it does not describe the full scope and
extent of the applicant’s goods or services.” (emphasis
5 The TTAB did not merely consider the two indi-
vidual terms in each of the marks without considering the
marks as a whole, as Real Foods contends. See Appel-
lant’s Br. 25–26. Instead, the TTAB first weighed the
individual components of the marks, then explicitly
discussed the marks as a whole, and concluded that even
the composite marks are descriptive, see Frito-Lay, 2017
WL 914086, at *17, as it is permitted to do, see In re
Oppedahl, 373 F.3d at 1174–75.
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 11
added) (internal quotation marks and citation omitted)). 6
Not only does the record reveal that Real Foods has
deployed the proposed marks as generic descriptors, see,
e.g., J.A. 5309 (referring, in Real Foods’ advertising
material, to the product as “Delicious Golden Corn Thins
With Real Flavoring,” with the term “Corn Thins” stylized
the same as the rest of the phrase), 5319 (same), but
purchasers of Real Foods’ products have also used these
terms to describe Real Foods’ products, rather than as
source identifiers for the products, which amounts to
direct evidence of the “commercial impression” of the
mark as a whole, DuoProSS, 695 F.3d at 1252; see, e.g.,
J.A. 5288 (referring, by a potential customer, to “[Real
Foods’] corn thins product”), 5318 (similar by an online
distributor of Real Foods’ product). Therefore, substantial
evidence supports the TTAB’s descriptiveness finding.
Real Foods’ counterarguments do not convince us oth-
erwise. First, Real Foods argues it provided evidence that
its marks are suggestive “in the form of marketing and
advertising materials that supported consumer under-
6 Real Foods identifies “alternative names that [it
believes] are merely descriptive,” such as “thin corn
cakes,” “slender corn cakes,” and “slim corn cakes.”
Appellant’s Br. 35 (internal quotation marks omitted).
However, it is difficult to see how Real Foods’ proposed
marks are sufficiently different from these admittedly
descriptive terms. To the extent Real Foods believes it is
deploying the word “thin” in a unique way, i.e., turning
that word into a noun by adding an “s,” see Frito-Lay,
2017 WL 914086, at *15 (finding “there is no definition
from a traditional dictionary for ‘thins’ as a noun”), such
use does not change the term’s descriptive function, see
2 McCarthy § 11:29 (“A mere change of form of a descrip-
tive term will not automatically remove it from the de-
scriptive category.” (emphasis added)).
12 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
standing of the marks . . . as a double entendre,” by
conveying “the low calorie, light[,] and diet-friendly char-
acteristics of the products.” Appellant’s Br. 27. Real
Foods cites In re Colonial Stores, Inc., see id., in which our
predecessor court held that an applicant’s proposed mark
“SUGAR & SPICE” was suggestive for “[b]akery prod-
ucts,” including “cakes, cookies, breads, rolls, donuts,
pastries, [and] crackers,” 394 F.2d 549, 549 (CCPA 1968)
(internal quotation marks omitted), even though they also
“describe[d] goods containing sugar and spice,” id. at 550.
The court explained that the mark at issue creates an
“unusual association” in the view of a consumer and
evokes the “immediate impression . . . of sugar and spice
with everything nice,” id. at 552 (emphasis added) (inter-
nal quotation marks and footnote omitted), by referencing
a well-known “nursery rhyme,” id. at 553. Here, however,
the TTAB rejected Real Foods’ argument “in light of the
evidence of use of ‘thins’ by other manufacturers on
cookies, which are not known for having a low caloric
content, and other snack foods such as pretzels, even
chocolate-coated pretzels.” Frito-Lay, 2017 WL 914086, at
*17; see id. (stating it was “not persuade[d]” by Real
Foods’ evidence). We find substantial evidence supports
the TTAB’s finding of no additional suggestive meaning of
the proposed marks because similar products, which are
not typically low in calories or known for healthfulness,
contain the same descriptive term of thins. See, e.g.,
J.A. 1069 (providing “ANNA’S GINGER THINS” for
gingerbread cookies), 2824 (providing a trademark appli-
cation seeking registration of “BROWNIE THINS” for
“dessert snacks . . . of cookies, cakes, donuts, brownies, or
muffins”), 4051–52 (listing several types of pretzel thins
in Frito-Lay’s expert report), 5775 (depicting, inter alia,
“barkTHINS,” a flavor of which is described as “Dark
Chocolate Pretzel Snacking Chocolate”). Therefore, it is
reasonable to conclude that Real Foods’ claimed addition-
al meaning of healthfulness would not attach in the eyes
of a consumer, see Frito-Lay, 2017 WL 914086, at *17,
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 13
such that substantial evidence supports the TTAB’s
conclusion, even if other evidence may reasonably allow
one to infer a healthfulness-related meaning, see
Citigroup, 637 F.3d at 1349 (explaining that substantial
evidence may support a decision “even if two inconsistent
conclusions can be drawn from the evidence”).
Second, Real Foods contends the TTAB “improperly
relied on Frito-Lay’s third party evidence,” contained in
its expert report, “concerning the usage of ‘THINS.’”
Appellant’s Br. 32 (capitalization modified). Specifically,
Real Foods argues that Frito-Lay’s expert report “did not
consider the meaning . . . of [the proposed marks] as a
whole” and only analyzed “crackers, chips, and other
snack foods[, which are] different from popped corn and
rice cakes.” Id. (emphasis added). The TTAB reasonably
relied on Frito-Lay’s expert report, which concluded “[t]he
word THINS when used for snack foods such as crackers,
cookies, wafers, biscuits, crispbreads, crispbread slices, or
crisps does not indicate the origin or source of the snack
food item.” J.A. 4010–11. There is no requirement that
an expert report provide an opinion as to the marks as a
whole for the TTAB to rely on it, and we decline to impose
such a requirement. Instead, the TTAB is required to
consider the mark “as a whole,” DuoProSS, 695 F.3d at
1252, which it did, see Frito-Lay, 2017 WL 914086, at *17.
In addition, as we have observed, “[e]vidence of the
public’s understanding of [a] term may be obtained from
any competent source.” Royal Crown, 892 F.3d at 1366
(emphasis added) (internal quotation marks and citation
omitted). Here, the parties waived “all objections to the
admissibility of the evidence . . . , but without prejudice to
[their] rights to rely on arguments concerning the proba-
tive value of such evidence,” in order to take advantage of
the TTAB’s “Accelerated Case Resolution . . . procedure.”
Frito-Lay, 2017 WL 914086, at *2 (footnote omitted).
Frito-Lay’s expert report is relevant to the inquiry be-
cause Real Foods’ own advertising material compares its
14 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
goods to snack foods, namely crackers. See, e.g., J.A. 5185
(calling its corn thins product “a substitute for tortilla
chips”), 5186 (referring to the same as “a real alternative
to bread, crackers, rice cakes[,] or crispbreads”), 5195
(describing its product as a “healthy popped corn cake”
that “taste[s] just like popcorn—in a cracker” (emphasis
added)). Although Real Foods now attempts to under-
mine the relevance of this evidence by characterizing its
proposed marks as limited to “popped corn and rice
cakes,” Appellant’s Br. 32, each of Real Foods’ applica-
tions identifies the goods as “crispbread slices,” which are
kinds of crackers, as discussed below, see infra Section III;
see also J.A. 164 (citing evidence, by a USPTO examiner,
that indicates corn cakes are a type of crispbread). There-
fore, it was not improper for the TTAB to rely on the third
party evidence contained in Frito-Lay’s expert report.
Third, Real Foods argues the TTAB “failed to consider
third party registrations of THINS.” Appellant’s Br. 33
(capitalization modified); see id. at 33–35. However, the
TTAB’s Opinion identified several trademark registra-
tions that “incorporate the term ‘thins,’” Frito-Lay, 2017
WL 914086, at *9–10; see id. at *9 (providing these marks
in a section entitled “Registrations by Others”), and
determined they “ha[ve] limited probative value” because
“each application must be examined on its own merits,”
id. at *5 n.18 (internal quotation marks and citation
omitted). The TTAB is correct that these prior registra-
tions do not compel registration of Real Foods’ proposed
marks. See In re Cordua Rests., Inc., 823 F.3d 594, 600
(Fed. Cir. 2016) (“The [US]PTO is required to examine all
trademark applications for compliance with each and
every eligibility requirement, . . . even if the [US]PTO
earlier mistakenly registered a similar or identical mark
suffering the same defect.”). Instead, as discussed, the
TTAB properly considered the proposed marks in light of
the record and adequately supported its finding that Real
Foods’ marks are highly descriptive.
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 15
B. Substantial Evidence Supports the TTAB’s Acquired
Distinctiveness Finding
The TTAB found that Real Foods “has not demon-
strated that its applied-for marks have acquired distinc-
tiveness.” Frito-Lay, 2017 WL 914086, at *20. The TTAB
noted that (1) Real Foods “has done little or no advertis-
ing of CORN THINS or RICE THINS”; (2) Real Foods’
“sales figures, while not insignificant, are not high”;
(3) “the use of THINS is not limited to [Real Foods]”; and
(4) a survey conducted by Frito-Lay’s expert, which had
“some probative value,” established “limited recognition of
CORN THINS as a mark.” Id. Real Foods argues the
TTAB erred because “its marks have acquired secondary
meaning” and maintains the TTAB failed to properly
consider the record evidence. Appellant’s Br. 41 (capitali-
zation modified). We disagree with Real Foods.
Acquired distinctiveness, i.e., “[s]econdary meaning,”
“is a term of art which denotes that there is an association
formed in the minds of the consumers between the mark
and the source or origin of the product.” Tone Bros., Inc.
v. Sysco Corp., 28 F.3d 1192, 1201 (Fed. Cir. 1994) (inter-
nal quotation marks and citation omitted). “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.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1379 (Fed. Cir. 2012) (citation omitted).
Substantial evidence supports the TTAB’s finding
that Real Foods’ proposed, highly descriptive marks have
not acquired distinctiveness. Real Foods’ sales and adver-
tising figures weigh against a finding of acquired distinc-
tiveness. The record indicates that Real Foods has spent
a relatively small amount on advertising as compared to
other expenditures, J.A. 5469 (providing annual U.S.
advertising figures relative to other expenditures); see
16 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
J.A. 5369 (acknowledging, by Real Foods’ marketing
manager, that Real Foods has a small advertising budg-
et), and that its overall sales figures are not high,
J.A. 5103 (discussing annual sales in the context of mar-
ket needs); see J.A. 1191 (showing a recent decrease in
overall sales numbers). Additionally, research conducted
by a third party on behalf of Real Foods demonstrates
that consumers have low brand loyalty to and low prefer-
ence for Real Foods’ corn and rice cakes, as compared to
its competitors’. See J.A. 5137 (depicting a graph compar-
ing consumer brand awareness for several companies
producing similar products).
Moreover, Frito-Lay’s expert survey established that
only around ten percent of respondents associated CORN
THINS with a particular company, see J.A. 4405 (stating
“a net of 10.3% of respondents stated that they associated
CORN THINS with only one company” and, when the pool
of respondents was limited to “only purchasers and pro-
spective purchasers of crispbreads/crispbread slices,” that
number increased to only “10.9% of the respondents”), and
that about half of those respondents identified a company
other than Real Foods, see J.A. 4412 (“42 of the 89 sub-
jects who indicated ‘only one company’ . . . specified the
name of a company other than Real Foods . . . .”). The
TTAB gave this survey “some probative” weight. Frito-
Lay, 2017 WL 914086, at *20. Similar survey data has
been held to demonstrate that a descriptive mark has not
acquired distinctiveness. For example, in Roselux Chemi-
cal Co. v. Parsons Ammonia Co., our predecessor court
reversed a trademark registration, finding the mark
descriptive and not having acquired distinctiveness,
where the survey data demonstrated that only “10% of the
people who actually know the [ammonia] product” called
it by the name of the proposed mark. 299 F.2d 855, 862
(CCPA 1962). The court reasoned that one could not
“assume therefrom that the primary significance of the
[descriptive term] to purchasers of ammonia is as a desig-
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 17
nation of origin.” Id.; cf. Princeton Vanguard, 786 F.3d at
969 (recognizing, for genericness, that direct consumer
survey evidence is considered probative and generally
“preferable to indirect forms of evidence” (internal quota-
tion marks and citation omitted)). Therefore, taken
together, this constitutes substantial evidence supporting
the TTAB’s finding.
Real Foods’ counterarguments are unavailing. First,
Real Foods avers that the TTAB’s “erroneous determina-
tion that the marks were ‘highly descriptive’ rendered it
impossible for Real Foods to establish secondary mean-
ing.” Appellant’s Br. 36 (capitalization modified); see id.
at 36–41. The TTAB did not place an inappropriately
heavy burden on Real Foods. Our case law provides that
“[w]here a mark sits on a sliding scale of descriptiveness
impacts the burden a proposed registrant must bear with
respect to its claim of acquired distinctiveness.” Royal
Crown, 892 F.3d at 1365; see In re Steelbuilding.com, 415
F.3d at 1301 (stating that, where a “proposed mark is
highly descriptive,” the “applicant had the burden to show
a concomitantly high level of secondary meaning”).
Rather than making it impossible for Real Foods to estab-
lish secondary meaning, the TTAB found the marks
“highly descriptive,” thereby properly placing a heavier
burden on Real Foods to prove distinctiveness. Frito-Lay,
2017 WL 914086, at *20.
Second, Real Foods argues the TTAB “ignored” evi-
dence of Real Foods’ “substantially exclusive and continu-
ous use of CORN THINS and RICE THINS over many
years,” which was “clear legal error” pursuant to § 1052(f).
Appellant’s Br. 42 (capitalization modified). However,
§ 1052(f) provides that “[t]he Director [of the USPTO] may
accept as prima facie evidence that the mark has become
distinctive . . . proof of substantially exclusive and contin-
uous use thereof as a mark by the applicant in commerce
for the [previous] five years.” 15 U.S.C. § 1052(f) (empha-
sis added). Therefore, while evidence of substantially
18 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
exclusive and continuous use may be sufficient to prove a
prima facie case of acquired distinctiveness, this is not
always the case. See In re La. Fish Fry, 797 F.3d at 1337.
“Particularly for a mark that is . . . highly descriptive like
[Real Foods’ proposed marks], the [TTAB] was within its
discretion not to accept [Real Foods’] alleged five years of
substantially exclusive and continuous use as prima facie
evidence of acquired distinctiveness.” Id. (italics omitted).
Moreover, the TTAB did not simply ignore this evidence;
it explicitly “acknowledged this evidence,” as Real Foods
admits. Appellant’s Br. 42 (citing Frito-Lay, 2017 WL
914086, at *19 n.112).
Third, Real Foods contends the TTAB (1) ignored evi-
dence of “Real Foods’ sales and top market share posi-
tion,” id. at 43 (capitalization modified); see id. at 43–45,
(2) “failed to properly weigh Real Foods’ [evidence of its]
marketing efforts,” id. at 45 (capitalization modified); see
id. at 45–54, and (3) “gave improper weight to Frito-Lay’s
flawed survey,” id. at 55 (capitalization modified); see id.
at 55–61. 7 The TTAB is entitled to weigh the evidence,
7 Many of Real Foods’ arguments mischaracterize
the TTAB’s findings. For example, Real Foods contends
the TTAB “erred when it found no probative value in Real
Foods’ expert [declaration],” Appellant’s Br. 53 (emphasis
added); however, the TTAB explicitly considered the
expert report and evidence in question but found it had
“little probative value on the question of acquired distinc-
tiveness.” Frito-Lay, 2017 WL 914086, at *18 (emphasis
added). Real Foods also states the “[TTAB] inappropri-
ately disregarded [certain] evidence by failing to consider
social media and online engagement with consumers,”
Appellant’s Br. 48; yet, the TTAB explicitly considered
this evidence, see, e.g., Frito-Lay, 2017 WL 914086, at *18
(“[Real Foods] has over 16,000 Facebook ‘likes’ and its
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 19
see Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
856 (1982) (“Determining the weight and credibility of the
evidence is the special province of the trier of fact.”), and
we reject Real Foods’ invitation to disturb the TTAB’s
findings by reweighing the evidence. Furthermore, to the
extent Real Foods believes the TTAB committed legal
error by failing to consider its marks “in the context of the
demand for the type of product and the size of the natural
foods markets in which [Real Foods] competes,” Appel-
lant’s Br. 44 (citations omitted), we find no merit in this
position. Real Foods’ “registration does not contain limi-
tations describing a particular channel of trade or class of
customer,” so “[its] goods . . . are assumed to travel in all
normal channels of trade.” Packard Press, Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 1361 (Fed. Cir. 2000); see
J.A. 53–208 (CORN THINS application), 209–26 (RICE
THINS application). Thus, the TTAB properly deter-
mined that Real Foods’ proposed marks have not acquired
distinctiveness.
III. Frito-Lay’s Cross-Appeal
The TTAB dismissed Frito-Lay’s claim that the pro-
posed marks are generic. Frito-Lay, 2017 WL 914086, at
*14. The TTAB identified the genus of the goods as
“popped corn cakes” for the CORN THINS mark and “rice
cakes” for the RICE THINS mark, and it further noted
the “relevant public is the general consuming public who
consume and eat the snack foods identified.” Id. at *4.
The TTAB then found Frito-Lay “failed to demonstrate by
a preponderance of the evidence that CORN THINS and
RICE THINS considered as a whole would be perceived by
consumers as generic for, respectively, popped corn cakes
and rice cakes.” Id. at *13. On cross-appeal, Frito-Lay
argues “[Real Foods’] marks are generic.” Cross-
products have been featured on several blogs.” (footnote
omitted)).
20 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
Appellant’s Br. 15 (capitalization modified); see id. at 15–
22. Specifically, Frito-Lay contends the TTAB erred by
finding “‘thins’ is not a generic term” “based solely on the
fact that it is used within some third-party brand names”
because “‘thins’ is commonly used as a generic term for
snack food products, including crackers and crispbread
slices.” Id. at 22. We agree that the TTAB erred, but not
for the reasons asserted by Frito-Lay. 8
“[A] term can be generic for a genus of goods or ser-
vices if the relevant public understands the term to refer
8 We have “a special obligation” to satisfy ourselves
of jurisdiction. Bender v. Williamsport Area Sch. Dist.,
475 U.S. 534, 541 (1986) (citation omitted). “A party that
is not adversely affected by a judgment lacks standing to”
cross-appeal. TypeRight Keyboard Corp. v. Microsoft
Corp., 374 F.3d 1151, 1156 (Fed. Cir. 2004) (citing Pub.
Serv. Comm’n v. Brashear Freight Lines, Inc., 306 U.S.
204, 206 (1939)); see Phigenix, Inc. v. Immunogen, Inc.,
845 F.3d 1168, 1172 (Fed. Cir. 2017) (applying standing
principles to appeals “from a final agency action”). Alt-
hough the TTAB refused registration of Real Foods’
proposed marks, Frito-Lay has standing to challenge the
TTAB’s finding of non-genericness because Frito-Lay is
adversely affected by registrability on the supplemental
register of a descriptive term that has not acquired sec-
ondary meaning and therefore may eventually become
eligible for registration on the principal register, In re
Bush Bros., 884 F.2d at 570; see 15 U.S.C. §§ 1052(f),
1091(a), while a generic term cannot, see Royal Crown,
892 F.3d at 1366. Further, a mark seeking supplemental
registration, unlike principal registration, “shall not be
published for or be subject to opposition.” 15 U.S.C.
§ 1092. But see id. (explaining further that a mark seek-
ing registration on the supplemental register is still
subject to cancellation proceedings).
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 21
to a key aspect of that genus.” Royal Crown, 892 F.3d at
1367 (ellipsis, internal quotation marks, and citation
omitted). Genericness involves a “two-step inquiry” that
asks: (1) “what is the genus of goods or services at issue,”
and (2) “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?” Princeton
Vanguard, 786 F.3d at 965 (internal quotation marks and
citation omitted); see id. at 968 (explaining that the TTAB
should consider “the record evidence of the public’s under-
standing of the mark as a whole”). “The authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of
goods set forth in the application[,] regardless of what the
record may reveal as to the particular nature of an appli-
cant’s goods . . . .” In re Cordua, 823 F.3d at 602 (internal
quotation marks and citation omitted).
The TTAB improperly narrowed the genus of the
goods at issue. The Applications initially identified the
goods as “[c]rispbread slices predominantly of corn,”
J.A. 53, and “crispbread slices primarily made of rice,”
J.A. 209. During the opposition proceedings, Real Foods
moved to amend the goods as “crispbread slices predomi-
nantly of corn, namely popped corn cakes” and “crispbread
slices primarily made of rice, namely rice cakes,” J.A. 279
(emphases added), and the TTAB granted Real Foods’
motion to amend, Frito-Lay, 2017 WL 914086, at *21. In
its Opinion, the TTAB defined the genus of the goods
strictly by reference to the newly added portion of the
amended language, identifying the genus as “popped corn
cakes” for the CORN THINS mark and “rice cakes” for the
RICE THINS mark. Id. at *4.
While recognizing that the amendment narrowed the
identification of goods, the TTAB failed to take into ac-
count in its determination of the genus under step one
that the Applications show that popped corn cakes and
rice cakes are types of crispbread slices, which, in turn,
22 REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC.
the record defines as types of crackers. See Frito-Lay,
2017 WL 914086, at *3 (relying on Frito-Lay’s concession
that “the record indisputably show[s] that popped corn
and rice cakes are kinds of crispbreads” to grant the
Motion to Amend (emphasis added) (internal quotation
marks and footnote omitted)); see also J.A. 94 (defining
“crispbreads” as “plain dry unsweetened cracker[s] made
from crushed grain”), 169 (defining, in an online diction-
ary, “crispbread” as “[a] kind of flat, dry bread or crack-
er”); cf. In re Hotels.com, L.P., 573 F.3d 1300, 1303–04,
1306 (Fed. Cir. 2009) (relying on dictionary definitions to
define an individual term within a mark).
This was error. As set forth in Real Foods’ Applica-
tions and the Motion to Amend, see J.A. 279, corn cakes
and rice cakes are the species, not the genus, see Two
Pesos, 505 U.S. at 768. In its Opinion, the TTAB failed to
provide any reasoning for its conclusion that the nar-
rowed identification of goods alone was the appropriate
genus to use in its genericness analysis. The TTAB’s
error in identifying the proper genus at step one, thereby
affected its analysis at step two. See Princeton Vanguard,
786 F.3d at 965. 9 Accordingly, we remand to the TTAB to
9 For instance, the TTAB determined that the rec-
ord did not establish “that ‘thins’ is a generic term for rice
cakes or popped corn cakes” or that the term’s use “is so
ubiquitous” within the genus, Frito-Lay, 2017 WL 914086,
at *12, but later found that “the ubiquity of use for food
products illustrates the term ‘thins’ is not inherently
distinctive for thin food products,” id. at *17 (emphasis
added). Had the TTAB identified a broader genus of
goods, such a determination might bear on, inter alia, the
ubiquity with which the term thins is used for that genus
and whether the mark “refers to a key aspect of the
genus.” Royal Crown, 892 F.3d at 1368.
REAL FOODS PTY LTD. v. FRITO-LAY N. AM., INC. 23
reconsider its selected genus and conduct its genericness
analysis in light of that genus.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, the Opinion of
the U.S. Patent and Trademark Office’s Trademark Trial
and Appeal Board is
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Frito-Lay.