Federal Circuit affirms rejection of trademark for refusal to disclaim descriptive term

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Federal Circuit Review – Issue No. 64-04
Federal Circuit Affirms Rejection of Trademark Application for Refusal to Disclaim “Highly Descriptive” Term “FISH FRY PRODUCTS”

In re: Louisiana Fish Fry Products, Ltd., No. 2013-1619, 2015 U.S. App. LEXIS 14258 (Fed. Cir. Aug. 14, 2015) (Before Newman, Reyna, and Hughes, J.) (Opinion for the court, Reyna, J.). Click Here for a copy of the opinion.

On appeal from the Trademark Trial and Appeal Board (“TTAB”), the Federal Circuit affirmed the denial of a trademark registration for a mark using the term “FISH FRY PRODUCTS” based on insufficient evidence that the mark had acquired distinctiveness.

Louisiana Fish Fry filed a use-based trademark application for the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!  During prosecution of the application, the Examiner refused to register the mark without a disclaimer of the term FISH FRY PRODUCTS on the grounds that the term was not independently registrable. Louisiana Fish Fry submitted a declaration from its president stating that the mark LOUISIANA FISH FRY PRODUCTS had been in use for over thirty years, had been used extensively in advertising, and had acquired distinctiveness.  The Examiner maintained that the term FISH FRY PRODUCTS was generic, because the relevant public understood the term to refer to a variety of similar products. Alternatively, FISH FRY PRODUCTS was at least “highly descriptive,” which increased the burden to show distinctiveness: that the relevant public would recognize Louisiana Fish Fry as the source of the product.

Louisiana Fish Fry appealed to the TTAB, which affirmed the Examiner’s decision.  The Board found that FISH FRY PRODUCTS was generic for the products in question. It also affirmed that Louisiana Fish Fry failed to carry its burden of showing that FISH FRY PRODUCTS was distinctive, because its evidence related to LOUISIANA FISH FRY PRODUCTS and not to FISH FRY PRODUCTS standing alone.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness. Further, use of the larger term LOUISIANA FISH FRY PRODUCTS did not establish that the subset FISH FRY PRODUCTS is distinctive. The Court did not find it necessary to decide if the term is also generic, given that Louisiana Fish Fry’s failed to show distinctiveness.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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