Snap Inc., owner of Snapchat, sought to register SPECTACLES as a trademark for its eye-wearable technology product (i.e., smart glasses), but was refused by the U.S. Patent and Trademark Office ("USPTO") which the Trademark Trial and Appeal Board ("TTAB") affirmed, holding that “spectacles” is a generic product name for “smart glasses” and thus unprotectable and not registrable under the Lanham Act. In the alternative, the TTAB held that if not generic for smart glasses, then “spectacles” is still unregistrable as a trademark because it is merely descriptive of the product with inadequate evidence of secondary meaning. On appeal, the U.S. District Court for the Central District of California reversed the holding of genericness, but affirmed that SPECTACLES was merely descriptive with inadequate evidence of secondary meaning. Snap Inc. v. Vidal, No. 2:22-cv-00085-SK (C.D. Cal. Sept. 27, 2024).
Snap appealed the TTAB's ruling to the district court under 15 U.S.C. § 1071(b), rather than to the Federal Circuit based on the existing administrative record, so that more evidence, including dueling expert opinions and consumer surveys could be submitted in de novo civil proceedings. This evidence was presented at a bench trial where the parties' experts and a former Snap employee had testified.
Generic terms "cannot be registered as trademarks" because, as the name of a class of goods or services, by definition they are incapable of indicating a particular source of the goods or services. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 972 (Fed. Cir. 2018) (citation omitted);Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) ("generic marks ... refer to the genus of which the particular product is a species" (internal quotation marks, brackets, and citation omitted)).
Determining genericness is a two-step inquiry.
The first step in determining genericness is to determine with specificity the genus of goods and services for which the designation is sought to be registered. Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 965 (Fed. Cir. 2015).
In the second step, the factfinder must determine how “members of the relevant public primarily use or understand the term sought to be protected” as applied to the relevant genus of goods or services defined in the first step. H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986).
The parties' stipulated that “smart glasses” was the relevant genus (eyewear with embedded computer technology as a key aspect); but the Court noted that the USPTO made a “subtle rhetorical move” to abstract the relevant product to a higher level of generality, namely the unclaimed category of eyewear.
Left unquestioned, that maneuver rigs the genus inquiry (at step one) to effectively preordain a finding of genericness (at step two). See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 301 (3d Cir. 1986) (Once a relevant genus is defined at step one, the “resulting question” in step two “often decides itself.”). “By expanding or contracting the definition of a ‘genus' of goods or services, a court can substantially affect the final determination of whether a term is a ‘generic name.'” 2 McCarthy § 12.23.6
Because smart glasses have two defining attributes: its outer eyewear design and its inner “computer technology”; the term “spectacles” can connote the smart product's undeniable physical resemblance to conventional glasses, but “it doesn't categorically name, smart glasses.”
The Court also criticized design flaws in the USPTO's Teflon survey and concluded that the Office failed to prove "by clear and convincing evidence" that the term SPECTACLES is "primarily understood by most consumers of smart glasses as a generic name for that product." Instead, the evidence establishes that those consumers overwhelmingly understand the term to be a "description of the product's prominent eyewear form rather than a generic name for smart glasses."
On the other hand, "Snap has not proven that consumers need to employ any imagination to instantaneously associate SPECTACLES with one of the most essential aspects of smart glasses—its eyewear design."
The Court found that Snap's circumstantial evidence of its seven years of use in commerce and its advertising expeditures, while high in absolute terms, failed to meet Snap's burden given the highly descriptive nature of the SPECTACLES mark. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1337 (Fed. Cir. 2015) (continuous and exclusive use evidence held insufficient given highly descriptive nature of mark); In re Boston Beer Co. L.P., 198 F.3d 1370, 1371, 1373 (Fed. Cir. 1999) ($85 million in annual sales and $10 million in advertising costs held insufficient given highly descriptive nature of mark). Snap presented no evidence to establish any baseline to understand those costs in relative terms. The mere “large expenditure of money does not in itself create legally protectable rights.” Carter-Wallace,Inc. v. Procter & Gamble Co., 434 F.2d 794, 800 (9th Cir. 1970) (quoting Smith v. Chanel, Inc., 402 F.2d 562, 568 (9th Cir. 1968)).
Snap's sales and revenue figures provide no convincing proxy for secondary meaning.
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Snap has not produced enough evidence to prove even by a preponderance standard that SPECTACLES carries enough secondary meaning to be included immediately on the principal register. Still, the mark can acquire such source-identifying significance if for no other reason than the term's arcane etymology and alternative dictionary meanings. SPECTACLES should thus be eligible for supplemental registration.
The district court thus entered judgment remanding the trademark applications to the USPTO to permit the supplemental registration of SPECTACLES both as a word and stylized mark.
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