[00:00:31] Speaker 03:
As we approach lunchtime, it's appropriate that our next case is Princeton-Vanguard v. Frito-Lay, 2014-15-17.

[00:00:45] Speaker 03:
We'll hear from Mr. Bernstein involving pretzel crisps.

[00:00:52] Speaker 01:
Thank you, Your Honor.

[00:00:53] Speaker 03:
No samples, I gather.

[00:00:56] Speaker 01:
I wish we could have brought samples to the court, but I know that

[00:00:59] Speaker 01:
hard to bring in exhibits.

[00:01:01] Speaker 03:
They wouldn't be crisp.

[00:01:02] Speaker 01:
No, they would be quite crisp.

[00:01:04] Speaker 01:
I hope your honors all have enjoyed each of our party's products.

[00:01:07] Speaker 01:
They certainly both are.

[00:01:08] Speaker 02:
I'm on a diet shot.

[00:01:09] Speaker 02:
I couldn't have partaken anyway.

[00:01:12] Speaker 01:
Well, I'd like to reserve five minutes, if I may, your honor.

[00:01:16] Speaker 01:
Nearly 20 years ago, Judge Rich, writing for this court, set a very clear standard.

[00:01:22] Speaker 01:
In Marvin Gin, Judge Rich explained that in deciding whether a mark is generic,

[00:01:28] Speaker 01:
He said the quote, critical issue is whether the public understands the mark to refer to the genus of goods or of course to it being a brand name.

[00:01:40] Speaker 01:
And a decade later in American Fertility, Chief Judge Michel explained further that the quote, correct legal test

[00:01:48] Speaker 01:
is to consider the mark as a whole.

[00:01:51] Speaker 03:
The authors of opinions, of course, are writing for the court.

[00:01:54] Speaker 03:
Yes, of course.

[00:01:55] Speaker 03:
Not necessarily for themselves.

[00:01:57] Speaker 01:
No, I agree.

[00:01:58] Speaker 01:
And in both cases, these are unanimous decisions.

[00:02:02] Speaker 01:
And I think they're both seminal decisions when it comes to the question of what is a generic mark or not.

[00:02:08] Speaker 01:
And in American Fertility, the court goes on to explain that the reason we need to look

[00:02:14] Speaker 01:
at the mark as a whole is that the whole may be greater than the sum of its parts.

[00:02:20] Speaker 01:
And that's a concept that we've seen in many cases since then.

[00:02:24] Speaker 01:
And I think there are two lessons that we can draw from this court's two seminal cases in this area.

[00:02:30] Speaker 01:
The first is that when it comes to assessing whether a mark is generic, what is completely key is the public's perception.

[00:02:38] Speaker 01:
It doesn't matter what I think or, candidly, what Your Honor thinks or an individual administrative law judge at the TCUB.

[00:02:44] Speaker 03:
But there were surveys on both sides here that the board wasn't persuaded by.

[00:02:49] Speaker 01:
I completely disagree with that, Your Honor.

[00:02:50] Speaker 01:
There were two surveys.

[00:02:53] Speaker 01:
The survey by Frito-Lay's expert, Dr. Simonson, was criticized expressly by the board.

[00:02:59] Speaker 01:
And the board said it's entitled to very little weight.

[00:03:03] Speaker 01:
And that's because Dr. Simonson's survey failed to follow one of the key tests

[00:03:08] Speaker 01:
in genericism surveys, which is you first test whether people understand the difference between a brand name and a generic term before you go on to ask them the key questions.

[00:03:18] Speaker 01:
The board goes on to criticize the survey and to expressly say it's entitled to very little weight.

[00:03:25] Speaker 01:
Dr. Jay also submitted a survey on our behalf, Your Honor.

[00:03:29] Speaker 01:
And the board does not indicate that it criticized her survey.

[00:03:33] Speaker 01:
The board doesn't indicate that it accepted any of the weaknesses that Frito-Lay expressed.

[00:03:39] Speaker 01:
And Dr. Jay's survey, and Dr. Jay, by the way, wrote the leading article on genericism surveys.

[00:03:44] Speaker 01:
I think she's one of the foremost experts in this area.

[00:03:47] Speaker 01:
She concluded that the majority of consumers, when they're asked about pretzel crisps, identify it as a brand name, not as a generic term.

[00:03:59] Speaker 03:
We consider the entirety of the record, including the surveys, but we give controlling evidence to the dictionary definitions, evidence of use by the public, by the medium, by the third parties, and by defendant itself.

[00:04:14] Speaker 01:
Actually, Your Honor, I think the board says something else, which is telling.

[00:04:18] Speaker 01:
And this is on page 828.

[00:04:28] Speaker 01:
The board says it considers the surveys, but Your Honor didn't include this parenthetical the board included, which is at the bottom of page 828 of the record.

[00:04:36] Speaker 01:
About the surveys, they say, which in any event arrive at different conclusions.

[00:04:41] Speaker 01:
Now, first of all, as a matter of fact, I think that's wrong, because the Dr. Simonson survey basically finds a 50-50 split.

[00:04:50] Speaker 01:
He didn't find that the majority of people understand pretzel crisps to be a generic term.

[00:04:56] Speaker 01:
But regardless of that, and so I think the surveys at one level could be seen as consistent, although Dr. J, of course, finds a higher percentage of people who believe it to be.

[00:05:05] Speaker 03:
But as you said, that's a finding of fact, and we give substantial evidence, deference, to the board.

[00:05:10] Speaker 01:
Yeah, and I want to get to that in just a moment.

[00:05:12] Speaker 01:
But on the surveys, for the board to say that it is going to give controlling weight to the non-survey evidence because the surveys reach different conclusions,

[00:05:23] Speaker 01:
That is incorrect when the board expressly rejects Dr. Simonson's survey and does not reject Dr. Jay's survey.

[00:05:31] Speaker 01:
You shouldn't consider two surveys and say, oh, they come to different conclusions, let me disregard them both, when one of them has been rejected and the other has not.

[00:05:40] Speaker 01:
And then with respect to the non-survey evidence,

[00:05:43] Speaker 01:
Candidly, Your Honor, the substantial evidence does not support a finding that the mark was generic.

[00:05:48] Speaker 01:
So let's look at the factors that you just identified.

[00:05:51] Speaker 04:
So what you're arguing is not only did they apply, in your view, the wrong legal standard, but even if they hadn't, they've made clearly erroneous factual findings with respect to their description of the evidence.

[00:06:05] Speaker 01:
That is correct, Your Honor.

[00:06:07] Speaker 01:
And I very much want to get to the legal standard.

[00:06:09] Speaker 01:
But before I do, let me address Judge Laurie's question about the non-survey evidence.

[00:06:14] Speaker 01:
I agree with you that those forms of evidence are critically important.

[00:06:18] Speaker 01:
So the board says, well, they gave controlling weight to the dictionary definitions.

[00:06:23] Speaker 01:
There is no dictionary definition of pretzel crisps that says it is a generic term describing these products.

[00:06:31] Speaker 01:
The only thing in the record

[00:06:33] Speaker 01:
And the record is replete with evidence that no dictionary has pretzel crisps as a term.

[00:06:39] Speaker 01:
The one encyclopedia that does is Wikipedia, and it identifies it as a brand.

[00:06:44] Speaker 01:
The board says it gives evidence to use by the public.

[00:06:47] Speaker 01:
We submitted evidence of media statements showing that 86% of the articles that were gathered and looked at, all the articles that both parties could find, 86% of them identified pretzel crisps as a brand

[00:07:02] Speaker 01:
not as a generic term.

[00:07:05] Speaker 01:
Frito-Lay takes quibbles with some of those, but candidly those quibbles don't hold up.

[00:07:11] Speaker 01:
Many of those references work to licensed terms, but when a licensee uses pretzel crisps because we've licensed them to do it, that of course is a use that endures to our benefit.

[00:07:22] Speaker 01:
That's a brand use.

[00:07:24] Speaker 01:
And they say that some of the references include the word pretzel crisps in the news reports in lowercase rather than in uppercase.

[00:07:31] Speaker 01:
But it's clear from the context of the articles, and this is all explained in our briefs, that in every one of those cases, they were referring to our brand.

[00:07:39] Speaker 01:
But even if we credited those, we're still looking at well over two thirds of all of the articles treat Pretzelcrisps as a brand name.

[00:07:48] Speaker 01:
The Google search, 98% of the top 100 references all refer to Pretzelcrisps as a brand name.

[00:07:54] Speaker 01:
So if we look at the media use and the public use, I actually don't believe that the finding that the mark

[00:08:00] Speaker 01:
is a generic term, is supported by substantial evidence.

[00:08:04] Speaker 01:
And we also look, Judge Laurie, at industry use.

[00:08:07] Speaker 01:
And that's important too.

[00:08:08] Speaker 01:
Many competitors in the industry specifically licensed the right to use the term pretzel crisp from us.

[00:08:15] Speaker 01:
And if they license the right, that's an acknowledgement of our brand rights.

[00:08:18] Speaker 01:
Indeed, even Frito-Lay's Sabra subsidiary

[00:08:22] Speaker 01:
licensed the right to use pretzel crisps.

[00:08:24] Speaker 01:
They sold a Sabra hummus product that included a packet of hummus and a little packet of pretzel crisps that you could dip them in.

[00:08:32] Speaker 01:
And on the package itself, it identifies pretzel crisps as our brand name.

[00:08:37] Speaker 01:
Again, not being used in a generic way.

[00:08:40] Speaker 01:
And on top of that, we have experts, four experts submitted their testimony, which was uncontradicted.

[00:08:47] Speaker 01:
And they talked about

[00:08:49] Speaker 01:
the extensive way in which the pretzel crisp mark is used as a brand name in the industry, and it's not used as a generic term.

[00:08:56] Speaker 04:
What is the difference between a compound mark and a phrase?

[00:09:03] Speaker 01:
Thank you for that question, Your Honor.

[00:09:04] Speaker 01:
So that brings me to the legal test I wanted to bring up.

[00:09:08] Speaker 01:
And I think this is an area where, candidly, there's been a lot of confusion in the board's case law on this.

[00:09:15] Speaker 01:
The Gould case is the one that brings up this concept of a compound term and allowing you to assess whether a mark is generic based on looking at its constituent parts.

[00:09:27] Speaker 01:
In that case, the court says if the terms separately are each generic,

[00:09:34] Speaker 01:
then that can inform the question of whether the compound is itself generic.

[00:09:38] Speaker 01:
But there's an important part of Gould that the board disregarded, and I think Frito-Lay has disregarded, and that is that you only use this test if the combined term provides no additional meaning other than the term separately.

[00:09:53] Speaker 01:
And Judge Michel explained in American Fertility, which was after Gould, that even if Gould applies, you still have to consider the mark as a whole.

[00:10:02] Speaker 01:
And so the question is, even if you take the term pretzel and the term crisp, and even if the board was correct, I don't agree about crisp, but even if the board was correct, that each of those are generic terms separately, it is crystal clear under this court's case law that the board has to consider the mark as a whole, and they did not do that.

[00:10:23] Speaker 02:
Is it the case that in order to have a compound term, you must have a marriage of two words?

[00:10:30] Speaker 01:
No, not necessarily.

[00:10:31] Speaker 01:
In the Dewa Press case, which Judge O'Malley had, it was a term snapped at an exclamation point.

[00:10:37] Speaker 01:
And the board, again, in that case, improperly dissected the mark and looked at each of those terms separately.

[00:10:43] Speaker 01:
That was a case involving descriptiveness, if I recall, rather than genericism, but it's the same test.

[00:10:48] Speaker 01:
And this court said that the board got it wrong.

[00:10:52] Speaker 01:
You don't dissect the mark.

[00:10:54] Speaker 01:
You don't look at them separately.

[00:10:55] Speaker 01:
You look at it as a single mark.

[00:10:57] Speaker 01:
Now, it may be, in some cases, like in Gould, where the mark was screen white, that the combined term doesn't add anything in addition.

[00:11:07] Speaker 01:
And indeed, in ex parte cases, where there's not much of a record, I can understand why the board might be able to rely on an analysis

[00:11:15] Speaker 01:
of the two words and then say, let's consider whether these words have anything in addition combined.

[00:11:22] Speaker 01:
But in this case, an inter-parties case with four experts, with multiple parties having testified for the declaration

[00:11:30] Speaker 01:
with two parties who have the financial resources to bring to the board all of the evidence of what this combined term means.

[00:11:37] Speaker 01:
In those cases, this shortcut around American fertility and around Martin Jinn is wrong.

[00:11:44] Speaker 01:
You should not shortcut the analysis of the mark as a whole and look only at the constituent terms.

[00:11:50] Speaker 01:
Rather, as Judge Michel said, you can't do a shortcut.

[00:11:53] Speaker 01:
Gould doesn't allow a shortcut.

[00:11:55] Speaker 01:
You still have to consider the meaning of the mark as a whole.

[00:11:58] Speaker 01:
I do have more to say, but I would like to reserve my time, if I may.

[00:12:02] Speaker 01:
And I'm happy to answer any questions you have when I come back.

[00:12:05] Speaker 03:
We will reserve a call you, Mr. Barber.

[00:12:09] Speaker 03:
Christine has told us that when looked at carefully, the board's decision crumbles.

[00:12:16] Speaker 03:
You differ, I'm sure.

[00:12:18] Speaker 00:
I certainly do, Your Honor.

[00:12:19] Speaker 00:
May it please the court, despite the fact that this court, like every other circuit, considers genericness to be purely a factual issue,

[00:12:27] Speaker 00:
Princeton's primary argument in this appeal is that the board applied an incorrect legal standard.

[00:12:32] Speaker 00:
What it's saying is that the board looks solely at the separate words, pretzel and crisps.

[00:12:38] Speaker 00:
and failed to consider the combined term pretzelcrisp.

[00:12:42] Speaker 00:
Well, if you just read the board's decision, that's not what it did at all.

[00:12:46] Speaker 04:
Well, it said in passing that we'll also look at the whole thing, but it didn't really do an analysis of the term as a whole.

[00:12:54] Speaker 00:
It discussed those competing surveys, and both competing surveys tested the term pretzelcrisp, and it also cited a number of examples from the record

[00:13:05] Speaker 00:
that show pretzel crisps being used generically by the media and by... Let me ask you personally.

[00:13:12] Speaker 04:
When we talk about substantial evidence, it doesn't mean that you can cherry pick some evidence and rely on it.

[00:13:18] Speaker 04:
It has to be substantial in the context of all of the evidence, including evidence that cuts against that conclusion, correct?

[00:13:24] Speaker 01:
Correct.

[00:13:25] Speaker 04:
In this particular case, you've got two surveys, one of which the board says is junk, and the other which the board doesn't criticize.

[00:13:32] Speaker 04:
But then the board discounts them both.

[00:13:34] Speaker 04:
Even though both of the surveys actually seem to indicate lack of genericness.

[00:13:40] Speaker 00:
Well, Dr. Simonson's survey indicated that only 41% of the consumers, well below 50%, but at 41% were 18%, so they didn't even know of it.

[00:13:55] Speaker 00:
And of course, we disagree with the board for disregarding the Simonson survey.

[00:14:01] Speaker 00:
But Dr. J's survey, they also noted some substantial flaws in that survey and then went on to say that they came to different conclusions and we're going to give control and weight to the other evidence in the case.

[00:14:16] Speaker 00:
And the other evidence in the case

[00:14:17] Speaker 04:
But they didn't note substantial flaws.

[00:14:20] Speaker 04:
They noted one or two things that the other side criticized, but they did not adopt those criticisms for purposes of discounting that survey the same way they did with respect to the Simonson survey.

[00:14:32] Speaker 00:
Well, I agree that they didn't go into as much detail on adopting the criticism, but there was really no other reason to say what the criticism was that Dr. Simonson leveled on Dr. Jay's survey unless they were giving that some credence.

[00:14:45] Speaker 00:
And then they said that they were giving controlling weight to the other evidence because the surveys came to different conclusions and cited nrayhotels.com.

[00:14:55] Speaker 00:
So I think in the context of the entire decision they were saying both surveys were flawed and at the very least they were saying in this particular case with all of the other evidence

[00:15:06] Speaker 00:
that they're not, that those are deserving of controlling weight.

[00:15:11] Speaker 00:
And the issue here on appeal is whether there's substantial evidence to support the factual findings of the board.

[00:15:17] Speaker 00:
And, you know, Mr. Bernstein wants to jump straight to the evidence of using the combined term presocris, and I want to address that too.

[00:15:26] Speaker 00:
But before you even get there, the board correctly applied the Gould standard.

[00:15:31] Speaker 00:
And the Gould standard, and this goes back before Gould, if you go back to Cummins Engine versus Condon Motors from the CCPA.

[00:15:41] Speaker 00:
In that case, the CCPA held that the term turbo diesel is generic as a compound term.

[00:15:48] Speaker 04:
And if you look at the record in that case... So are you saying we're not supposed to look at the totality of the mark?

[00:15:54] Speaker 00:
You are supposed to look at it, but you're also supposed to look at the separate terms themselves in a case where it's a compound term like this.

[00:16:02] Speaker 00:
That's important.

[00:16:03] Speaker 00:
When a company combines two generic terms,

[00:16:07] Speaker 04:
But they discount use of it in any way other than as a total mark.

[00:16:15] Speaker 00:
I'm sorry?

[00:16:15] Speaker 04:
They have disclaimed the right to mark pretzel or the right to mark crisp.

[00:16:22] Speaker 04:
They only want it as a total mark.

[00:16:25] Speaker 00:
Right.

[00:16:26] Speaker 00:
It's the same thing with turbo diesel.

[00:16:28] Speaker 00:
It's the same thing with screen wine.

[00:16:30] Speaker 00:
And if you look at the record in the turbo diesel case, the CCPA relied on

[00:16:34] Speaker 00:
Basically two things.

[00:16:36] Speaker 00:
One, dictionary definitions of the separate term.

[00:16:39] Speaker 00:
There was no dictionary definition of turbo diesel in that case.

[00:16:42] Speaker 00:
It was a definition of turbine and the short-informed turbo and diesel.

[00:16:47] Speaker 00:
And then the court also looked at a single magazine article, one article, that used the term turbo diesel generically.

[00:16:54] Speaker 00:
And the dissent pointed out, and this wasn't, Cummins was an inter-parte cancellation proceeding.

[00:16:59] Speaker 00:
It was not an ex-parte field.

[00:17:00] Speaker 00:
There was a robust record.

[00:17:02] Speaker 00:
There were numerous exhibits.

[00:17:04] Speaker 00:
And in fact, the dissent pointed out that the term turbo diesel was used as a trademark in almost all of the exhibits.

[00:17:11] Speaker 00:
And despite that, because you have a compound term consisting of two dictionary words, and there was a single magazine article that combined it generically, that that provides clear and convincing evidence that the combined term is generic.

[00:17:30] Speaker 00:
So before you even get to the other evidence of the combined term, you have binding precedence in Cummins and Gould.

[00:17:38] Speaker 04:
So you're telling us that the standard we should employ is that they can point to one piece of evidence that indicates genericism that the whole rest of the record should be ignored?

[00:17:48] Speaker 00:
I'm not saying to ignore the record.

[00:17:50] Speaker 00:
I'm saying in that particular case, there was one magazine article.

[00:17:54] Speaker 00:
In this case, there's much more evidence

[00:17:57] Speaker 04:
And several pieces of evidence, at least your friend on the other side says, the board mischaracterized.

[00:18:02] Speaker 00:
Well, in this record, there are over 100 generic references to the combined term pretopress in the media, including such outlets like the Wall Street Journal, CNN, ABC.

[00:18:18] Speaker 04:
But they point out that several of those references are mischaracterized and taken out of context.

[00:18:25] Speaker 00:
I don't think they were saying those were taken out of context.

[00:18:27] Speaker 00:
I think they're saying that there are a lot of other articles that refer to Pretzelcris in terms of Princeton's product.

[00:18:35] Speaker 00:
So they're saying if you look at all the articles, two-thirds of the articles refer to Pretzelcris as a brand of Princeton.

[00:18:42] Speaker 00:
Well, that's not the issue before the court.

[00:18:45] Speaker 00:
The issue is whether there's substantial evidence.

[00:18:47] Speaker 00:
to support the board's findings.

[00:18:50] Speaker 00:
And here there's certainly substantial evidence that the term pretzel is generic and the term crisps is generic.

[00:18:56] Speaker 00:
And that when you combine those two, there's no new meaning.

[00:18:59] Speaker 00:
There's nothing incongruous about pretzel crisps.

[00:19:02] Speaker 00:
It's not alliterative.

[00:19:03] Speaker 00:
It's not rhyming.

[00:19:04] Speaker 00:
There's nothing unique about it.

[00:19:06] Speaker 00:
And that was the point.

[00:19:07] Speaker 00:
Same thing with scream light.

[00:19:09] Speaker 00:
It was the same situation.

[00:19:11] Speaker 00:
Same thing with turbo diesel.

[00:19:12] Speaker 04:
And so when you have that situation... Your definition of what constitutes a compound mark is whenever it's two words.

[00:19:19] Speaker 00:
Whenever it's two generic words, and there's nothing... Well, that presupposes the generic determination, but... No, the separate words are generic.

[00:19:26] Speaker 04:
Okay, so two words.

[00:19:27] Speaker 04:
So if it's three words, it can't be a compound mark?

[00:19:30] Speaker 00:
It may or may not be.

[00:19:32] Speaker 00:
In American fertility, it was society for reproductive medicine.

[00:19:36] Speaker 00:
Of course, that includes a prepositional phrase.

[00:19:38] Speaker 03:
You're saying the two separate words here are each generic and the combination of the two of them adds nothing except what the separate components meant.

[00:19:50] Speaker 00:
Correct.

[00:19:51] Speaker 00:
They don't lose their descriptive meaning.

[00:19:53] Speaker 00:
There's nothing incongruous about it.

[00:19:55] Speaker 00:
That's what the Gould quote said.

[00:19:56] Speaker 00:
There's nothing unique about it.

[00:19:58] Speaker 00:
I suppose there might be a case where you combine two generic words and it's something really unique.

[00:20:03] Speaker 00:
It's something very distinctive.

[00:20:05] Speaker 00:
That's not the case here.

[00:20:06] Speaker 00:
It wasn't the case for screen white.

[00:20:08] Speaker 00:
It wasn't the case for turbo diesel.

[00:20:10] Speaker 03:
What about being descriptive?

[00:20:12] Speaker 03:
Did the board deal with descriptiveness?

[00:20:16] Speaker 00:
No.

[00:20:16] Speaker 00:
The board's decision is solely on the issue of generic.

[00:20:20] Speaker 03:
Then it would have had to have gone to secondary meaning.

[00:20:22] Speaker 00:
The board did not reach that issue because it determined that the mark was generic.

[00:20:30] Speaker 04:
What about the number of other cases like steel building and performance malware where we said those were phrases, they're not compound terms?

[00:20:37] Speaker 00:
Well, steel building, the court didn't really say that it was a phrase.

[00:20:41] Speaker 00:
In steel building, what the court said is that the board misunderstood the genus of the applicant services.

[00:20:47] Speaker 00:
And the board, the party there was not just applying to register steelbuilding.com for steel buildings.

[00:20:55] Speaker 00:
The genus, the court said that's what the board thought, but it was real, the applicant was really, it was an elaborate service.

[00:21:03] Speaker 00:
It was an interactive, highly interactive service.

[00:21:06] Speaker 00:
to enable users to design uniquely designed buildings.

[00:21:10] Speaker 04:
That was going to go to descriptiveness, not generics.

[00:21:12] Speaker 00:
It was a generics case.

[00:21:14] Speaker 00:
I know.

[00:21:16] Speaker 00:
And the court reversed the generics finding, but not because they found it a phrase.

[00:21:20] Speaker 00:
The only cases I'm aware of where this court has held that a mark was a phrase and not a compound term, and therefore the Gould analysis didn't apply, was American Fertility.

[00:21:29] Speaker 00:
That's society for reproductive medicine, includes a prepositional phrase.

[00:21:33] Speaker 00:
and 1-8-8 mattress.

[00:21:36] Speaker 00:
And the court there said that's more analogous to a phrase because the numeric prefix 8-8-8 is not a word.

[00:21:42] Speaker 04:
But the board repeatedly has done that.

[00:21:44] Speaker 04:
So performance mouthwear, for instance.

[00:21:48] Speaker 00:
They did say that one was a phrase.

[00:21:49] Speaker 00:
But I think in fairness, Your Honor, in that case, they're sort of giving the applicant the benefit of the doubt.

[00:21:55] Speaker 00:
They're saying, well,

[00:21:57] Speaker 00:
will consider it a phrase, but it's still generic.

[00:22:00] Speaker 00:
They found that the mark performance math were generic under the analysis of a phrase.

[00:22:06] Speaker 00:
So when they're given a choice between a compound term and a phrase, sometimes they'll say, okay, we'll consider it as a phrase, and we're giving the applicant the benefit of the doubt here.

[00:22:17] Speaker 00:
But it's still generic, even as a phrase.

[00:22:20] Speaker 00:
And in fact, the board here said if you consider pretzel crisps as a phrase, it's still generic.

[00:22:24] Speaker 00:
And there's substantial evidence in the record that not only the separate terms pretzel and crisps are generic and there's no new meaning when you put them together, so it's generic under the Gould analysis, but also there's substantial evidence in the record that the combined term pretzel-crisps is a generic term.

[00:22:43] Speaker 00:
Again, there's over 100 media articles, there's over 10 generic uses by competitors, and there are numerous generic uses by consumers in blogs and emails to Princeton.

[00:22:55] Speaker 00:
And so under both analyses as a compound term and as a phrase, there's substantial evidence supporting the board's decision that the mark is generic.

[00:23:18] Speaker 00:
If I could go back to your question, Judge O'Malley, about what's the difference between a compound term and a phrase, I think if you look at this court's decisions and its predecessor's decisions, where it's found a term to be a compound term, you have examples like turbo diesel, screen-wide, gas badge, which is from the app court decision that was also cited in the Gould case.

[00:23:47] Speaker 00:
Those are situations where you have two separate terms that are generic based on dictionary definitions or used by the applicant, which we have here.

[00:23:57] Speaker 00:
The applicant, Princeton, used the term Chris generically.

[00:24:02] Speaker 00:
for many, many years on its packaging and also in emails and contracts and award applications and things like that.

[00:24:11] Speaker 00:
So when you have two terms that are generic and you put them together and there's no new meaning that's added, that's what the discourse precedents have said

[00:24:22] Speaker 00:
is a compound term.

[00:24:24] Speaker 00:
And that's a very important thing.

[00:24:26] Speaker 00:
That means something.

[00:24:26] Speaker 00:
What do you mean by putting the two words together?

[00:24:28] Speaker 00:
By marrying the words?

[00:24:30] Speaker 00:
They could be put together with no space, but they don't have to be.

[00:24:34] Speaker 00:
In fact, Henry Gould said whether they're separate, with a space between them, or they're put together.

[00:24:38] Speaker 00:
It's still generic.

[00:24:40] Speaker 00:
And in fact, we think it's even more generic that there's still a space there because it's still recognized as two separate terms.

[00:24:45] Speaker 00:
And in fact, the children's DHA case, which you were on, Judge Raina, there was a space between children's and DHA.

[00:24:55] Speaker 00:
And in that case, as you'll recall, the court looked at and the board looked at the dictionary definitions of the word child and DHA separately.

[00:25:04] Speaker 00:
there wasn't a dictionary definition of children's DHA together.

[00:25:07] Speaker 02:
In all the cases you're citing, there seems to be the additional analysis by the court or the board in looking whether it considers a mark as a whole.

[00:25:17] Speaker 02:
That seems to be missing in this case.

[00:25:19] Speaker 02:
I don't see the analysis where the board went that further step.

[00:25:24] Speaker 02:
Because here, I mean, one of the words by itself is generic, but not the other.

[00:25:29] Speaker 00:
Well, they're both, the board found that they're both generic and they are.

[00:25:33] Speaker 00:
The both were Pretzel and Chris.

[00:25:35] Speaker 00:
They're both generic.

[00:25:36] Speaker 00:
And the board did say that, and recognize explicitly, that the ultimate determination is to look at the markets as a whole.

[00:25:44] Speaker 00:
But it said on the way there, on the road there, we can look at the two terms separately.

[00:25:47] Speaker 02:
They never did do that.

[00:25:49] Speaker 02:
They did that because... Had we had done it, we would have found the same.

[00:25:51] Speaker 02:
But they never did do that.

[00:25:53] Speaker 00:
Before that, though, they addressed the surveys, which did look at the term pretzelcrisps together.

[00:25:57] Speaker 02:
But they're looking later at whether the words are generic, separately.

[00:26:02] Speaker 00:
The surveys looked at the term pretzelcrisps together.

[00:26:06] Speaker 00:
and then the board also cited a number of examples in the record where pretzelcrisp was used generically by the media and by food competitors.

[00:26:16] Speaker 02:
Didn't discuss all of them, and there are many more in the record that the board didn't specifically... So if it's a compound term, once you find the two words of generic, you don't have to do anything else.

[00:26:25] Speaker 02:
But if it's a phrase, then you do have to do a separate analysis, don't you?

[00:26:29] Speaker 02:
As to the public understanding of

[00:26:32] Speaker 00:
The court's precedent seems to suggest that if it's a phrase and not a compound term, then it's improper to look at whether each term separately is generic.

[00:26:46] Speaker 00:
But where it's a compound term, like this one is, as the board found,

[00:26:50] Speaker 00:
then if both words are generic and no new meaning is added when they're together, that constitutes clear and convincing evidence that the mark as a whole is generic.

[00:27:01] Speaker 00:
So in that situation, the applicant starts out in a very deep hole on genericness before you even look at the evidence of the combined term.

[00:27:08] Speaker 00:
But here we have both.

[00:27:09] Speaker 00:
We have

[00:27:10] Speaker 00:
The separate terms are generic.

[00:27:12] Speaker 00:
There's nothing new added.

[00:27:13] Speaker 00:
So it's generic under the Gould turbo diesel standard.

[00:27:17] Speaker 00:
But it's also, there's also substantial evidence in the record that the combined term pretzel crust is generic.

[00:27:23] Speaker 00:
And the board did discuss some of that evidence.

[00:27:25] Speaker 00:
Not all of it, but it did discuss some.

[00:27:28] Speaker 03:
Thank you, Mr. Barber.

[00:27:29] Speaker 03:
Mr. Bernstein has a little more than four minutes.

[00:27:34] Speaker 01:
Thank you, Your Honor.

[00:27:36] Speaker 01:
This case presents this court with an opportunity to clarify what I think has become a very confused doctrine.

[00:27:43] Speaker 01:
Your Honours are struggling with the question of how do we tell whether a mark is a compound or is a phrase.

[00:27:48] Speaker 01:
And I agree.

[00:27:49] Speaker 01:
The case law provides very little guidance on this.

[00:27:53] Speaker 01:
But I actually think that we're focused in a bit on the wrong question.

[00:27:57] Speaker 01:
Because there is not two different tests.

[00:28:00] Speaker 01:
And American fertility is the key case to look at on this.

[00:28:03] Speaker 03:
In American fertility... American fertility is quite different.

[00:28:07] Speaker 03:
Here you have pretzels generic and crisps generic, but American isn't.

[00:28:14] Speaker 03:
It's quite a different story.

[00:28:15] Speaker 03:
And I don't understand why it's so difficult to understand what a compound term is.

[00:28:23] Speaker 03:
It's simply the combination of two and maybe more terms.

[00:28:28] Speaker 01:
Respectfully, Your Honor, I think it is more difficult, and certainly when we litigate these issues with the TTAB, where I am frequently, it is quite confusing to deal with the TTAB on whether it's a compound or a phrase, certainly a longer term.

[00:28:43] Speaker 03:
And what should be the test?

[00:28:46] Speaker 01:
Even if you look at Google, the test should not be is one test or the other.

[00:28:51] Speaker 01:
I think the board is wrong when it says that.

[00:28:53] Speaker 01:
American fertility says Gould is not a shortcut.

[00:28:56] Speaker 01:
The test is what does the mark mean as a whole?

[00:28:59] Speaker 01:
And as Georgiana, I think, has seen, you can look in this decision and you will struggle to find a place where the board really addresses what the mark means as a whole.

[00:29:10] Speaker 03:
But you can look at the components to see what the mark as a whole means.

[00:29:13] Speaker 01:
Gould says that you can look at them as a first step

[00:29:18] Speaker 01:
But the second step is key, and the board didn't do it.

[00:29:21] Speaker 01:
The second step is, and when you combine those two terms, is the meaning exactly the same, or could there be any different meaning?

[00:29:30] Speaker 02:
And so when Gould does that, it expresses that test with respect to a compound term, and not a phrase.

[00:29:41] Speaker 01:
Yes.

[00:29:42] Speaker 01:
and isn't.

[00:29:43] Speaker 02:
So if you say... That's because when you compound words, as the judge had already said, you get two words or three words and you put them together, that doesn't change the words at all.

[00:29:53] Speaker 02:
Sometimes it does, sometimes it doesn't.

[00:29:56] Speaker 03:
Well, if also crisp was applied here to a product that wasn't crisp,

[00:30:03] Speaker 03:
then you could say it was changed by the combination.

[00:30:07] Speaker 01:
Well, then we'd probably have a false advertising policy as well.

[00:30:11] Speaker 01:
But here's the key thing.

[00:30:12] Speaker 01:
The key thing, Your Honors, is whether you want to look at it as a compound or a phrase, either way, you have to consider whether the combined mark, the mark as a whole, means the same thing as the constituent parts in isolation or whether it means something different.

[00:30:28] Speaker 01:
And the board fails to assess

[00:30:31] Speaker 01:
whether the combined term pretzel crisps has some meaning separate from the meaning of its constituent words in isolation.

[00:30:38] Speaker 01:
The best evidence in my view of what the combined meaning is, is the surveys.

[00:30:43] Speaker 01:
I've already addressed those.

[00:30:45] Speaker 01:
I disagree respectfully with Mr. Barber when he says a few things.

[00:30:48] Speaker 01:
I disagree that there were 10 uses by competitors of pretzel crisps.

[00:30:52] Speaker 01:
It is not true.

[00:30:53] Speaker 01:
I agree that it is important to prevent the registration of generic terms because we don't want to grant monopolies in generic terms.

[00:31:01] Speaker 01:
None of our competitors need to use pretzel crisps.

[00:31:04] Speaker 01:
All of our competitors sell other products.

[00:31:07] Speaker 01:
The one competitor that ever used pretzel crisps was Kraft with a rich product and when we contacted them they agreed to take a license and they agreed to discontinue the use.

[00:31:18] Speaker 01:
Frito-Lay itself has products called Roll Gold Pretzel Waves and Roll Gold Pretzel Chips.

[00:31:24] Speaker 01:
We don't object to those.

[00:31:25] Speaker 01:
Our competitors aren't being stopped from selling their pretzel cracker products in competition with us.

[00:31:32] Speaker 01:
And I disagree that there are a hundred media uses of pretzel crisps generically.

[00:31:36] Speaker 01:
It's all in the record, but I would submit that many of those were mischaracterized and your honors have the record you can look at that.

[00:31:44] Speaker 01:
And I disagree with the notion that we've ever used pretzel crisps generically.

[00:31:48] Speaker 01:
My client has never once referred to the term pretzel crisps generically.

[00:31:52] Speaker 01:
We may certainly have used the word pretzel and the word crisp separately to refer to our product, but never did we ever say the category is pretzel crisps in the same way you would have potato chips.

[00:32:04] Speaker 01:
We always refer to our product as our brand.

[00:32:06] Speaker 01:
And so we would ask that the court

[00:32:09] Speaker 01:
reverse and find that there's not substantial evidence supporting the finding that the mark is generic.

[00:32:15] Speaker 01:
We also agree that another failure by the board was it never addressed the issue of secondary meaning.

[00:32:20] Speaker 01:
Had it done so, which it had done in other cases, we wouldn't have to go back down.

[00:32:25] Speaker 01:
But regrettably, I think the court will have to send us back on remand for the court then to consider whether there is, in fact, a quire distinction here.

[00:32:34] Speaker 03:
Thank you, Mr. Goldstein.

[00:32:35] Speaker 03:
Thank you, Your Honor.