Federal Circuit: 30 years of use not enough to prove acquired distinctiveness if evidence is insufficient

United States of America

In In re Louisiana Fish Fry Products Ltd (Appeal No 13-1619, August 14 2015) (Reyna J, Newman J concurring), addressing the issue of distinctiveness, the US Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to deny registration of a plaintiff’s mark due to the dearth of evidence supporting the plaintiff’s claims that its mark had acquired distinctiveness.

Plaintiff Louisiana Fish Fry Products Ltd (LFFP) filed a trademark application for the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!. The examining attorney rejected the application, finding that the plaintiff's mark was generic and required a disclaimer with respect to the words 'fish fry products'. In response, LFFP argued that a disclaimer was not required because its proposed mark was not generic and had acquired distinctiveness. As evidence, LFFP cited several of its other registrations containing the words 'Louisiana fish fry products' and sales/advertising data for products bearing the mark LOUISIANA FISH FRY PRODUCTS. LFFP also provided declarations from its president, asserting that it had sold products for over 30 years under the mark LOUISIANA FISH FRY PRODUCTS. However, none of evidence demonstrated use of the words 'fish fry products' alone. In fact, LFFP disclaimed 'fish fry products' in several (but not all) of its prior registrations.

On appeal, the TTAB affirmed that the phrase 'fish fry products' was generic, explaining that the genus of the goods at issue is “sauces, marinades and spices,” and it was shown by clear evidence that the relevant public understands 'fish fry products' to refer to “a type of sauce, marinade or spice used for fish fries”. In other words, even when combined, 'fish fry' and 'products' retain their generic meanings. The TTAB also affirmed the examining attorney’s determination that LFFP did not meet its burden in proving acquired distinctiveness, as its evidence failed to show that, in the mind of the public, the primary significance of 'fish fry products' was to identify the source of the product, rather than the product itself, using its discretion not to accept LFFP’s statement of acquired distinctiveness based on prior use.

Upon a de novo review, the Federal Circuit majority declined to address the genericness issue, holding that substantial evidence supported the TTAB’s decision and that LFFP had failed to meet its burden of showing that 'fish fry products' had acquired distinctiveness. Here, the Federal Circuit cited the same evidentiary failures as the TTAB, namely, that 30 years’ use of 'Louisiana fish fry products' and multiple registrations that included the same phrase did not show that the phrase 'fish fry products' alone had acquired distinctiveness. The Federal Circuit also found that the TTAB was within its discretion to reject the plaintiff’s evidence showing years of prior use.

In concurrence, Judge Newman agreed that the registration was properly denied, but for the reason that the mark is “the generic and common descriptive name” for the products. Since “[g]eneric terms cannot be rescued by proof of distinctiveness” and are “by definition incapable of indicating source,” and a disclaimer of 'fish fry products' was properly required. Judge Newman also argued that the TTAB met its burden by clear evidence to show that 'fish fry products' is understood by the relevant public to refer to a genus of goods (ie, that either separately or combined, 'fish fry' and 'products' retain their generic meanings).

Lynne Boisineau, McDermott Will & Emery LLP, Orange County

Unlock unlimited access to all WTR content