In Re Louisiana Fish Fry Products, Ltd.

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 USPQ 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.