Before Wallach, Linn, and Hughes. Appeal from the Trademark Trial and Appeal Board.

Summary: To determine whether a mark is generic, the TTAB must first properly identify the genus of the goods at issue. The genus must be based on the identification of goods set forth in the application, regardless of what the record may reveal as to the particular nature of the subject goods.

In an Opposition filed by Frito-Lay, the TTAB refused registration of Real Foods’ marks CORN THINS for “crispbread slices predominantly of corn, namely popped corn cakes” and RICE THINS for “crispbread slices primarily made of rice, namely rice cakes,” finding the marks to be merely descriptive and lacking acquired distinctiveness. The TTAB dismissed Frito-Lay's claims that the marks are generic.

The Federal Circuit affirmed on Real Foods’ appeal regarding descriptiveness and acquired distinctiveness.  But the Federal Circuit remanded on Frito-Lay’s cross-appeal regarding genericness.  On Frito-Lay’s genericness claim, the Federal Circuit found that the TTAB erred in identifying the proper genus of the goods at issue. During the opposition proceedings, Real Foods was allowed to narrow the applied-for goods by adding “namely popped corn cakes” and “namely rice cakes.” The TTAB, incorrectly determined the genus was only the narrowed identification of goods.  But the Applications showed that “popped corn cakes” and “rice cakes” are species of the broader genus crispbread slices.  The Federal Circuit remanded for the TTAB to reconsider its selected genus and conduct a genericness analysis based on the correct genus.