In Re: Louisiana Fish Fry Products , 797 F.3d 1332 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: LOUISIANA FISH FRY PRODUCTS, LTD.,
Appellant
______________________
2013-1619
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board, in No.
77816809.
______________________
Decided: August 14, 2015
______________________
RONALD BENNETT FORD, JR., Roy, Kiesel, Ford, Doody
& Thurman, Baton Rouge, LA, argued for appellant. Also
represented by ALANA ODOM FERNANDEZ.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Michelle K. Lee. Also represented by
NATHAN K. KELLEY, CHRISTINA J. HIEBER.
______________________
Before NEWMAN, REYNA, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Concurring opinion filed by Circuit Judge NEWMAN.
2 IN RE: LOUISIANA FISH FRY PRODUCTS
REYNA, Circuit Judge.
Louisiana Fish Fry Products, Ltd. (“Louisiana Fish
Fry”) appeals the Trademark Trial and Appeal Board’s
(the “Board”) decision affirming the refusal to register the
mark LOUISIANA FISH FRY PRODUCTS BRING THE
TASTE OF LOUISIANA HOME! without a disclaimer of
FISH FRY PRODUCTS. Because substantial evidence
supports the Board’s finding that Louisiana Fish Fry has
not established that FISH FRY PRODUCTS has acquired
distinctiveness, we affirm.
BACKGROUND
Louisiana Fish Fry filed a use-based application with
the Patent and Trademark Office (“PTO”) for the mark
LOUISIANA FISH FRY PRODUCTS BRING THE
TASTE OF LOUISIANA HOME!, and the design shown
below.
Louisiana Fish Fry identified the following goods for the
mark: “Marinade; Sauce mixes, namely barbecue shrimp
sauce mix; Remoulade dressing; Cocktail sauce, Seafood
sauce; Tartar sauce; Gumbo file; and Cayenne pepper.”
During prosecution, the Examining Attorney refused to
IN RE: LOUISIANA FISH FRY PRODUCTS 3
register the mark absent a disclaimer of FISH FRY
PRODUCTS on the basis that this term is not inde-
pendently registrable.
Louisiana Fish Fry argued that a disclaimer of FISH
FRY PRODUCTS was not necessary because the term
was both not generic and it had acquired distinctiveness.
In support of this position, Louisiana Fish Fry submitted
a declaration of its President, William Pizzolato, stating
that Louisiana Fish Fry had been using LOUISIANA
FISH FRY PRODUCTS for at least thirty years. Mr.
Pizzolato also provided sales and advertising data for
products bearing the mark LOUISIANA FISH FRY
PRODUCTS. Louisiana Fish Fry further contended that
its other registrations containing LOUISIANA FISH FRY
PRODUCTS also showed that FISH FRY PRODUCTS
had acquired distinctiveness.
The Examining Attorney maintained the requirement
to disclaim FISH FRY PRODUCTS, asserting that the
term was generic. Citing numerous articles and recipes,
the Examining Attorney asserted that the relevant public
understands “fish fry” to identify fried fish meals. The
dictionary definition of “products” indicated that the
relevant public understands this word to mean “the goods
or services produced by a company.” Combining these
findings, the Examining Attorney found FISH FRY
PRODUCTS to be generic because the cited evidence
indicated that the relevant public understood the term to
refer to sauces, marinades and spices used on or with fish
fries or fried fish.
In the alternative, the Examining Attorney noted that
FISH FRY PRODUCTS is, at least, “highly descriptive,”
thus elevating the burden Louisiana Fish Fry had to meet
to show acquired distinctiveness. The Examining Attor-
ney concluded that Louisiana Fish Fry failed to carry its
burden because the evidence it submitted only related to
4 IN RE: LOUISIANA FISH FRY PRODUCTS
the term LOUISIANA FISH FRY PRODUCTS, not specif-
ically to FISH FRY PRODUCTS. Louisiana Fish Fry’s
other registrations were similarly insufficient because the
phrase FISH FRY PRODUCTS was disclaimed in these
prior registrations. The Examining Attorney thus main-
tained that, even if the term was not generic, it was still
not registrable because Louisiana Fish Fry failed to show
that it had acquired distinctiveness.
On appeal, the Board affirmed. In re La. Fish Fry
Prods., Ltd., No. 77816809 (T.T.A.B. 2013) (“Board Op.”).
First addressing genericness, the Board determined that
the genus of the goods at issue is “sauces, marinades and
spices,” and that clear evidence established that the
relevant public understands FISH FRY PRODUCTS to
“identify a type of sauce, marinade or spice used for fish
fries.” Id. at *7–8. The Board agreed with the Examining
Attorney that the record evidence showed that the rele-
vant public understands “fish fry” to refer to fried fish
meals. Id. at *8–16. Quoting a dictionary definition, the
Board further found that the relevant public understands
“products” to mean, inter alia, “something produced;
especially: COMMODITY (2): something . . . that is mar-
keted or sold as a commodity.” Id. at *8 (citing Merriam-
Webster Online (Merriam-webster.com)) (ellipsis in the
Board Op.). The Board determined that FISH FRY
PRODUCTS is generic because “fish fry” and “products”
retain their “generic significance” when combined. Board
Op. at *17.
The Board also affirmed the Examining Attorney’s
conclusion that Louisiana Fish Fry failed to carry its
burden of showing that FISH FRY PRODUCTS has
acquired distinctiveness. Id. at *27. The evidence that
Louisiana Fish Fry submitted only related to the mark
LOUISIANA FISH FRY PRODUCTS, and not specifically
to FISH FRY PRODUCTS. Id. at *27. The Board thus
affirmed the Examining Attorney’s refusal to register
IN RE: LOUISIANA FISH FRY PRODUCTS 5
LOUISIANA FISH FRY PRODUCTS BRING THE
TASTE OF LOUISIANA HOME! without a disclaimer of
FISH FRY PRODUCTS. Id. at *28.
DISCUSSION
Louisiana Fish Fry challenges the PTO’s requirement
that it must disclaim FISH FRY PRODUCTS as a condi-
tion for registering the mark LOUISIANA FISH FRY
PRODUCTS BRING THE TASTE OF LOUISIANA
HOME!. Specifically, Louisiana Fish Fry contends that
the PTO failed to meet its burden to establish that the
term FISH FRY PRODUCTS is generic and that the term
has acquired distinctiveness.
We review the Board’s legal conclusions de novo and
its factual determinations for substantial evidence. In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344
(Fed. Cir. 2001). Genericness and acquired distinctive-
ness are factual determinations that we review for sub-
stantial evidence. In re 1800Mattress.com IP, LLC, 586
F.3d 1359, 1361 (Fed. Cir. 2009); G.H. Mumm & Cie v.
Desnoes & Geddes, Ltd., 917 F.2d 1292, 1294 (Fed. Cir.
1990). The PTO bears the burden of proving genericness
by clear evidence. In re Merrill Lynch, Pierce, Fenner, &
Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987). The
applicant, however, bears the burden of proving acquired
distinctiveness. In re Steelbuilding.com, 415 F.3d 1293,
1297 (Fed. Cir. 2005). The PTO can condition the regis-
tration of a larger mark on an applicant’s disclaimer of an
“unregistrable component of a mark otherwise registra-
ble.” 15 U.S.C. § 1056(a); In re Stereotaxis, Inc., 429 F.3d
1039, 1041 (Fed. Cir. 2005). Disclaiming unregistrable
components prevents the applicant from asserting exclu-
sive rights in the disclaimed unregistrable terms. See In
re Wada, 194 F.3d 1297, 1301 (Fed. Cir. 1999).
Section 2(e)(1) of the Lanham Act precludes registra-
tion of a mark that “when used on or in connection with
6 IN RE: LOUISIANA FISH FRY PRODUCTS
the goods of the applicant is merely descriptive . . . of
them .” 15 U.S.C. § 1052(e)(1). Some descriptive marks
can, however, acquire distinctiveness and may be regis-
trable on that basis. 15 U.S.C. § 1052(f). A generic mark,
being the “ultimate in descriptiveness,” cannot acquire
distinctiveness. H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986).
We do not need to reach the Board’s genericness de-
termination because we hold that substantial evidence
supports the Board’s determination that Louisiana Fish
Fry failed to show that FISH FRY PRODUCTS has ac-
quired distinctiveness. In general, to establish that a
term has acquired distinctiveness, “an applicant must
show that in the minds of the public, the primary signifi-
cance of a product feature or term is to identify the source
of the product rather than the product itself.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1379 (Fed. Cir. 2012) (internal quotation marks omitted).
To meet this burden, the applicant can cite evidence such
as advertising expenditures and sales success, and length
and exclusivity of use. Id. Here, the Board noted that
because FISH FRY PRODUCTS is “highly descriptive,”
Louisiana Fish Fry faces an elevated burden to establish
acquired distinctiveness. Board Op. at *20. The Board
concluded that Louisiana Fish Fry had not carried this
burden because the evidence that it cited did not relate
specifically to the term at issue, i.e., FISH FRY
PRODUCTS. Id. at *27–28.
On appeal, Louisiana Fish Fry does not challenge the
Board’s finding that the term FISH FRY PRODUCTS is
highly descriptive. Rather, Louisiana Fish Fry argues
that the Board erred by considering each piece of evidence
that it cited separately in a vacuum, not as a whole.
Appellant Br. 20–21. Louisiana Fish Fry also argues that
the Board improperly disregarded other registrations
because the term FISH FRY PRODUCTS had been dis-
IN RE: LOUISIANA FISH FRY PRODUCTS 7
claimed in some of those registrations. Id. at 26–27.
Finally, Louisiana Fish Fry argues that the Board ran
afoul of the “reasoned decisionmaking” doctrine because
its previous determination allegedly conflicts with its
determination in Kellogg Co. v. General Mills Inc., No.
91125884 (T.T.A.B. 2007). Id. at 22–26.
The PTO responds that the Board correctly found that
none of Louisiana Fish Fry’s evidence relates specifically
to the public’s understanding of the term FISH FRY
PRODUCTS. Appellee Br. 36–37. Louisiana Fish Fry’s
prior registrations similarly do not evidence source-
identifying capability because they include other words
beyond FISH FRY PRODUCTS. Id. at 40–42. The “rea-
soned decisionmaking” doctrine does not, according to the
PTO, control in this case because that doctrine applies for
different decisions based on the same legal standard, and
the relevant standards for this case and Kellogg are
different. Id. at 37–40.
Substantial evidence supports the Board’s conclusion
that Louisiana Fish Fry has not established that FISH
FRY PRODUCTS has acquired distinctiveness. To show
that FISH FRY PRODUCTS had acquired distinctiveness,
Louisiana Fish Fry provided two declarations from its
President, Mr. Pizzolato, and five registrations that
include the term FISH FRY PRODUCTS. In his first
declaration, Mr. Pizzolato states that FISH FRY
PRODUCTS has become distinctive through Louisiana
Fish Fry’s “substantially exclusive and continuous use” of
the mark for at least the last five years. J.A. 103. Alt-
hough Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f),
provides that that the PTO may accept five years of
“substantially exclusive and continuous” use as prima
facie evidence of acquired distinctiveness, the statute does
not require the PTO to do so. Particularly for a mark that
is as highly descriptive like FISH FRY PRODUCTS, the
Board was within its discretion not to accept Louisiana
8 IN RE: LOUISIANA FISH FRY PRODUCTS
Fish Fry’s alleged five years of substantially exclusive and
continuous use as prima facie evidence of acquired dis-
tinctiveness.
In his second declaration, Mr. Pizzolato stated that
“[o]ver the past thirty (30) years, we have used the mark
LOUISIANA FISH FRY PRODUCTS on a wide variety of
food products.” J.A. 464. Mr. Pizzolato also provided
Louisiana Fish Fry’s gross sales figures for food products
bearing LOUISIANA FISH FRY PRODUCTS for 2007–
2010. J.A. 465. According to Mr. Pizzolato, from 2009 to
2011 Louisiana Fish Fry also expended over $ 2.4 million
on advertising bearing LOUISIANA FISH FRY
PRODUCTS. J.A. 466. As the PTO points out, however,
all of these data involve uses of LOUISIANA FISH FRY
PRODUCTS, and thus do not establish that FISH FRY
PRODUCTS has acquired distinctiveness. In re Chem.
Dynamics, Inc., 839 F.2d 1569, 1571 (Fed. Cir. 1988).
Similarly Louisiana Fish Fry’s reliance on other regis-
trations that include the term FISH FRY PRODUCTS is
misplaced. Contrary to Louisiana Fish Fry’s contentions,
the Board thoroughly considered these registrations. The
Board correctly determined that none of these marks
indicate that FISH FRY PRODUCTS has acquired dis-
tinctiveness. Three of those registrations, nos. 2794015,
2827057, and 2827571, are for the same mark as the one
at issue here, i.e., LOUISIANA FISH FRY PRODUCTS
BRING THE TASTE OF LOUISIANA HOME!. The
remaining registrations, nos. 28018982 and 2827058, are
for the mark LOUISIANA FISH FRY PRODUCTS.
Thus, viewed separately or as a whole, Louisiana Fish
Fry’s evidence does not establish that the specific term at
issue here, FISH FRY PRODUCTS, has acquired distinc-
tiveness.
Finally, we agree with the PTO that the Board’s deci-
sion did not run afoul of the “reasoned decisionmaking”
IN RE: LOUISIANA FISH FRY PRODUCTS 9
doctrine. Under this doctrine, courts will set aside an
agency’s decision if it is not “supported by the reasons
that the agenc[y] adduce[s].” Allentown Mack Sales &
Serv., Inc. v. N.L.R.B., 522 U.S. 359, 374 (1998). The
Board, however, provided detailed reasons for why it
determined that FISH FRY PRODUCTS has not acquired
distinctiveness, and Louisiana Fish Fry does not argue to
the contrary. Even if the Board’s decision contradicted
Kellogg, which it does not, Louisiana Fish Fry has failed
to explain how such a conflict implicates the reasoned
decisionmaking doctrine.
CONCLUSION
We hold that substantial evidence supports the
Board’s determination that Louisiana Fish Fry did not
carry its burden of showing that FISH FRY PRODUCTS
acquired distinctiveness. On that basis, the PTO’s deci-
sion refusing to register LOUISIANA FISH FRY
PRODUCTS BRING THE TASTE OF LOUISIANA
HOME! absent a disclaimer of FISH FRY PRODUCTS is
affirmed.
AFFIRMED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: LOUISIANA FISH FRY PRODUCTS, LTD.,
Appellant
______________________
2013-1619
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board, in No.
77816809.
______________________
NEWMAN, Circuit Judge, concurring in the result.
I agree that registration was properly denied. 1 How-
ever, I would sustain the denial on the principal ground
relied on by the Trademark Trial and Appeal Board
(“Board”); that is, that the Applicant should disclaim any
exclusive right to “fish fry products” because the term is
the generic and common descriptive name for these prod-
ucts.
I do not share my colleagues’ view that there simply
was inadequate evidence of acquired distinctiveness.
Generic terms and common descriptive names cannot
acquire trademark status, and evidence purporting to
show acquired distinctiveness or secondary meaning is
irrelevant.
1 In re Louisiana Fish Fry Prods. Ltd., 2013 WL
3191197 (T.T.A.B. 2013) (“Board. Op.”).
2 IN RE: LOUISIANA FISH FRY PRODUCTS
The Board’s ruling that the phrase “fish fry products”
is a generic or common descriptive name for the products
for which registration is sought is not incorrect, and the
required disclaimer is well within the Board’s discretion-
ary authority. I would affirm the Board’s decision on this
ground, and thus concur in the judgment of affirmance of
denial of registration absent the disclaimer that was
requested by the examiner and affirmed by the Board.
DISCUSSION
The Board conditionally approved the application to
register the phrase “EST. 1982 LOUISIANA FISH FRY
PRODUCTS BRING THE TASTE OF LOUISIANA
HOME!” including design elements, on the applicant’s
disclaimer of any exclusive right in the term “fish fry
products.” The applicant refused to file this disclaimer.
The Board, applying §6(a) of the Lanham Trademark
Act, 15 U.S.C. §1056(a), explained the disclaimer re-
quirement and its long-standing precedent:
“As used in trademark registrations, a disclaimer
of a component of a composite mark amounts
merely to a statement that, in so far as that par-
ticular registration is concerned, no rights are be-
ing asserted in the disclaimed component
standing alone, but rights are asserted in the
composite; and the particular registration repre-
sents only such rights as flow from the use of the
composite mark.”
Board Op. at *2 (quoting Sprague Electric Co. v. Erie
Resistor Corp., 101 U.S.P.Q. (BNA) 486, 486-87 (Comm’r Pats.
1954)). Trademark registration may be refused based on
failure to comply with a proper requirement for disclaim-
er. In re Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005);
In re Richardson Ink Co., 511 F.2d 559 (C.C.P.A. 1975); In
re Pendleton Tool Indus., Inc., 157 U.S.P.Q. 114 (T.T.A.B.
1968). Here, the required disclaimer arose from the
IN RE: LOUISIANA FISH FRY PRODUCTS 3
examiner’s and the Board’s conclusion that “fish fry
products” is a generic or common descriptive term; this is
the foundation of this appeal.
A
Trademark status on the ground of acquired distinc-
tiveness, provided by Section 2(f) of the Lanham Act, 15
U.S.C. §1052(f), is not available to terms that are the
generic or common descriptive name of the goods, for such
terms are not amenable to exclusive rights. The panel
majority’s focus solely on “acquired distinctiveness”
presupposes that trademark status is here available; that
is, that “fish fry products” is not a generic or common
descriptive name for these products, and would not be so
recognized by the consuming public.
When a term is the common descriptive or generic
name of the goods, “evidence of secondary meaning cannot
change the result.” In re Northland Aluminum Prods.,
Inc., 777 F.2d 1556, 1560 (Fed. Cir. 1985). Thus the court
must first determine whether the Board was correct in
finding that “fish fry products” is a generic term or com-
mon descriptive name, for only if that finding is incorrect
does the question arise of acquired distinctiveness.
The panel majority, directing appellate review solely
to the question of acquired distinctiveness, necessarily
presupposes that “fish fry products” is not a generic or
common descriptive name, for “[g]eneric terms cannot be
rescued by proof of distinctiveness or secondary meaning
no matter how voluminous the proffered evidence may
be.” Northland Aluminum, 777 F.2d at 1558. This is the
established rule, for generic terms by definition are inca-
pable of indicating a unique source. See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569
(Fed. Cir. 1987) (“Generic terms, by definition incapable of
indicating source, are the antithesis of trademarks, and
can never attain trademark status.” (citing Dan Robins &
4 IN RE: LOUISIANA FISH FRY PRODUCTS
Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 1014
(C.C.P.A. 1979))).
Section 6(a) of the Lanham Act, 15 U.S.C. §1056(a),
authorizes the Patent and Trademark Office to “require
the applicant to disclaim an unregistrable component of a
mark otherwise registrable.” See In re Hiromichi Wada,
194 F.3d 1297, 1301 (Fed. Cir. 1999) (“Disclaimer of
generic terms in composite marks allows marks contain-
ing generic terms to be registered as a whole while pre-
venting any exclusive rights in the generic terms
themselves.”). Acting within this authority, the Board
advised the applicant as follows:
A proper disclaimer reads as follows: “No claim is
made to the exclusive right to use FISH FRY
PRODUCTS apart from the mark as shown.”
Board Op. at *14 n.18 (extending time for filing disclaim-
er). The applicant declined.
B
The applicant challenges the Board’s requirement for
disclaimer, stating that the Board did not meet its burden
of proving by “clear evidence” that the phrase “fish fry
products” is generic, and that other errors were made.
When a fact is required to be found by clear evidence
and not a mere preponderance, appellate review of
whether an agency finding is supported by substantial
evidence will “take this heightened burden into account.”
In re Hotels.com, L.P., 573 F.3d 1300, 1302 (Fed. Cir.
2009). Here, we need not decide whether to take a
heightened burden into account, for on either standard
the Board’s decision must be sustained.
The applicant identified its products as “Marinade;
Sauce mixes, namely, barbecue shrimp sauce mix; Re-
moulade dressing; Cocktail sauce, Seafood sauce; Tartar
sauce; Gumbo filé; and Cayenne pepper.” J.A. 36. The
IN RE: LOUISIANA FISH FRY PRODUCTS 5
Board applied the two-step inquiry set forth in Marvin
Ginn, first to determine the genus or class of the goods at
issue, and second to determine whether the term is “un-
derstood by the relevant public primarily to refer to that
genus of goods.” H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986).
The Board found the phrase “fish fry products” to be
“the combination of two generic terms, ‘Fish Fry’ and
‘Products,’ joined to create a compound term.” Board Op.
at *8. Citing dictionaries and published articles, the
Board stated “there is no dispute that the term ‘Fish Fry’
is a unitary term that means fried fish.” Id. The Board
found that, as used in “fish fry products,” the word “prod-
ucts” has the dictionary definition of “something pro-
duced” and is without source-identifying capability. Id.
Thus the Board found the phrase “fish fry products” to be
a generic or common descriptive term for products used
with fried fish:
Based on the record described below, we find that
there is clear evidence to support a finding that
the relevant public, when it considers FISH FRY
PRODUCTS in conjunction with sauces, mari-
nades and spices, readily understands the term to
identify a type of sauce, marinade or spice used
for fish fries.
Board Op. at *4. The Board explained that “used for fish
fries” defines the understanding of the relevant public for
the goods subject to the proposed trademark. Id.
The applicant does not dispute the Board’s definition
of its goods, and states: “In the present matter, the Board
correctly identified the genus of the goods as ‘marinades,
sauces, and spices.’” Reply Br. at 1. The applicant also
does not dispute the Board’s description of the relevant
public as “ordinary consumers who eat fried fish.” How-
ever, the applicant states that the Board committed legal
6 IN RE: LOUISIANA FISH FRY PRODUCTS
error because it found that “fish fry products” is generic
only for these goods when used with fried fish.
The applicant argues that the phrase “fish fry prod-
ucts” was improperly separated by the Board into “fish
fry” and “products,” whereas the term is a composite mark
of the entire phrase. The applicant argues that the whole
is greater than the sum of its parts. It is indeed appro-
priate, when determining whether a mark is generic, to
assess the mark as a whole. See Marvin Ginn, 782 F.2d
at 990–91. When the words form a composite phrase, the
inquiry is whether the words as joined have the same
meaning as in their separate common usage. See, e.g., In
re Hotels.com, 573 F.3d at 1303–05 (reviewing the mark
“viewed in its entirety” as well as the meaning of the
individual words).
The Board found that the phrase “fish fry products” is
composed of words in “ordinary grammatical construction”
and that each component word retains its common mean-
ing in the combination. It was not reasonably argued that
“fish fry products” as a phrase would be understood by the
consuming public to have a meaning different from the
meaning imparted by the separate words. The Board
cited the examiner’s record of extensive usage of the
words “fish fry” and “products,” and concluded that the
phrase “fish fry products” does not and cannot indicate a
single source of these products used with fried fish.
The Board responded to all of the applicant’s argu-
ments, and supported the conclusion that the consuming
public would understand “fish fry products” as a generic
or common descriptive term for products used with fried
fish, including sauces, marinades and spices. The Board’s
finding should be affirmed. On this finding, the phrase
“fish fry products” does not have trademark status and
cannot acquire trademark status.
IN RE: LOUISIANA FISH FRY PRODUCTS 7
C
The Board, to meet the obligation of agency complete-
ness, discussed the applicant’s argument of acquired
distinctiveness, and found it lacking. This discussion does
not avoid our appellate obligation to review the Board’s
finding that “fish fry products” is a generic and common
name, and does not limit the issue to that of acquired
distinctiveness.
My colleagues hold that they do “not need [to] reach
the Board’s genericness determination because . . . sub-
stantial evidence supports the Board’s determination that
Louisiana Fish Fry failed to show that FISH FRY
PRODUCTS has acquired distinctiveness.” Maj. Op. at 6.
However, a decision on this ground presupposes that the
term “fish fry products” could achieve trademark status
based on acquired distinctiveness.
Lanham Act section 2(f) requires establishing that the
term is not a generic or common descriptive name, in
order to achieve registration based on evidence of ac-
quired distinctiveness. A trademark serves to “identify
and distinguish” the applicant’s goods from the goods of
others and “indicate the source of the goods.” Lanham
Act §§ 2 & 45, 15 U.S.C. §§ 1032 & 1127. Terms that are
the generic or common descriptive name of the goods do
not perform this role. “A generic term is the common
descriptive name of a class of goods or services, and . . .
can never be registered as a trademark.” Park ‘N Fly, Inc.
v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985).
The question on appeal requires resolution of whether
“fish fry products” is a generic or descriptive common
name for the products with which the term is associated,
for if “fish fry products” is in the different legal category of
“merely descriptive,” trademark status is a matter of
weight and probative value of evidence of acquired dis-
tinctiveness. If this is the court’s ruling with respect to
8 IN RE: LOUISIANA FISH FRY PRODUCTS
“fish fry products” it should be clearly stated, so that the
applicant can rely on it.
CONCLUSION
Only if the Board’s finding of generic or common de-
scriptive name is incorrect, does the factual question of
acquired distinctiveness become relevant to trademark
registration. I conclude that the Board did not err, and
that the disclaimer of “fish fry products” was properly
imposed. I would affirm the Board’s decision, on that
ground.