On My Mind Blog

Snap Inc., owner of the Snapchat social media app, applied to register SPECTACLES in plain and stylized lettering as a trademark for eye-wearable technology, which the parties agreed was in the “smart glasses” product category.  The PTO, and the TTAB on appeal, found SPECTACLES to be unregistrable for smart glasses, either because it is a generic product name for such products, or if not generic, then because it is merely descriptive of the products, with inadequate evidence of acquired distinctiveness (known as “secondary meaning”).

Rather than pursuing a further appeal to the Federal Circuit, Snap sought a review before a Federal District Court, to permit additions to the evidentiary record and to receive a fresh review by the Court.

GENERICISM v. DESCRIPTIVENESS

The Court began by determining that the “smart glasses” product category has two equal essential elements—computer hardware and wearable glasses. 

The Court next considered whether the evidence proved that the average buyers of smart glasses would consider the primary significance of SPECTACLES to be either the product’s generic name, or a descriptive term for at least one aspect of the product. 

The PTO presented evidence from (a) dictionaries, (b) Snap’s own marketing, (c) competitor product listings, and (d) online articles.  The Court evaluated this evidence in detail and found that in these contexts the mark had been used only descriptively.

The Court then reviewed the PTO’s two survey submissions intended to prove genericism.  These were Teflon surveys, the most recognized and accepted type of survey used in genericism disputes.  The Court said that “No survey is the ‘be-all and end-all’ proof of consumer perception,” and ultimately rejected these survey results.

Teflon Survey

 A Teflon Survey has three stages—(a) a “minicourse” to explain the difference between a brand and generic name; (b) a “mini test” in which the respondent must classify at least one pair of terms as a brand or as a generic term; and (c) to those who correctly classify those terms, there is the “main test”, where more terms (including the mark at issue and other “control” or “benchmark” terms) must be classified as a brand or as generic.

In the two Teflon Surveys the PTO presented to the Court, the survey expert claimed that no less than 73 to 82 percent of participants classified SPECTACLES as “a generic name that refers to a type of product that may be made by more than one company.” 

The Court discussed these surveys in detail, identifying at least four design flaws:

• Generic/Descriptive Distinction. The surveys did not test whether and to what extent respondents could distinguish between inherently non-distinctive (that is, generic) terms that name a product and descriptive terms that describe characteristics of that same product.  Either of such terms could apply to a product made by more than one company.

• Control Names. The surveys weighted too heavily fanciful or arbitrary (or at best suggestive) marks for the brand control names, and common vernacular words for the generic control names. These examples did not reflect the conceptual closeness of SPECTACLES and GLASSES.

For example, on the one hand, the brand name benchmarks VISION PRO (by Apple) and ECHO FRAMES (by Amazon) were popular brand names, or inextricably linked, to two of the most well-known companies, and BLADE (by Vuzix) was arbitrary or at best suggestive, for smart glasses.  On the other hand, the generic control names CAMERA GLASSES, WIFI GLASSES, and LENSES were inherently non-distinctive names, two of which included “GLASSES” and the third-- “LENSES.”  The Court found that this dichotomy resulted in a bias, which primed respondents to classify SPECTACLES as being one of the non-distinctive names.

• Mini Test Words. The “mini test” did not sufficiently educate participants about nondistinctive terms that could be either generic or descriptive, nor did it provide the opportunity to state how they would understand SPECTACLES, in the context of a purchasing experience.  Rather, it compelled respondents to choose between only a brand name and generic names, instead of giving the option to decide that SPECTACLES could be neither a brand nor generic, but instead could be a descriptive term.

• Main Test Wording. The surveys injected uncertainty into the results by asking respondents to classify terms by how much they “related or referred” to smart glasses.  Quoting the McCarthy treatise, the Court explained this is “a misleading and incorrect way of asking the crucial question because it smears the critical line between a generic name and a descriptive word.”

The Court concluded that these four categories were only the most significant design flaws, but it concluded that these were sufficient to demonstrate why the surveys’ absolute results were not reliable enough to find empirically that relevant consumers perceive the mark to be the generic name for smart glasses.

SUGGESTIVENESS v. DESCRIPTIVENESS

Having found that SPECTACLES is not generic, the Court went on to consider Snap’s contentions that this term is registrable, either as a suggestive mark, or as a descriptive mark that had acquired secondary meaning in the smart glasses market.  The PTO argued that this mark not only is not suggestive, but it is so highly descriptive that Snap had to meet a heightened burden to prove secondary meaning but failed to do so.

Suggestive marks, like descriptive marks, shed some light on the characteristics of the goods.  But a suggestive mark requires imagination or a mental leap to arrive at this understanding, while a descriptive mark does not. The Court recognized that, depending on the mark in question and the product, it can sometimes be hard to distinguish between these categories but found that SPECTACLES as applied to smart glasses is not one of these close calls—being highly descriptive, and not just merely descriptive.  

The evidence of linguistic and third-party usage, competitor product listings, as well as Snap’s own advertising, all overwhelmingly demonstrated to the Court that a consumer would instantaneously understand SPECTACLES “as a spot-on description of the prominent eyewear ‘form’ of smart glasses”.  Further, the Court rejected Snap’s arguments that SPECTACLES requires imagination merely because (a) it is old-fashioned (even an unusual and uncommon term may be descriptive), (b) it  may have a double entendre meaning (although here the possible reference to an event did not apply to the goods at issue), (c) consumers might not know if SPECTACLES refers to eyewear generally or to smart glasses (which did not catapult it into the suggestive side of the distinctiveness spectrum).

SECONDARY MEANING

Because the Court found SPECTACLES to be highly descriptive of smart glasses, Snap had a higher burden, to produce evidence that qualitatively or quantitively established secondary meaning.  This can be direct evidence of consumer surveys or consumer testimony, or it can be circumstantial evidence showing (a) if actual purchasers associate the mark with the producer, (b) the degree and manner of advertising, (c) the length and manner of use of the claimed mark, (d) whether such use has been exclusive, and (e) widespread third-party copying of the mark.

The Court determined that Snap’s seven years of continuous use of the mark, its advertising expenditures, and its gross sales revenue were evidence of secondary meaning, and that none of the competitor’s listings proved that Snap’s use had not been exclusive enough.  But the Court held that this evidence was circumstantial and failed to meet Snap’s burden, given the highly descriptive nature of the mark. Snap did not present any evidence of the relative value of its advertising, sales, and revenue figures.  In the Court’s view, absolute numbers, without context, may only signal product popularity or rapid market gains. Snap also did not proffer evidence suggesting that its rivals were poaching the SPECTACLES mark.

Thermos Survey

Snap submitted a Thermos survey to prove secondary meaning.  A Thermos survey is more open-ended than a Teflon survey.  It asks respondents to list words they would use in imagined purchasing situations to discuss a class of products, or to obtain products in a store, or to list brand names they know for relevant products.

The Court acknowledged that a Thermos survey might be open to misinterpretation because it is based on consumer’s subjective experiences, rather than their understanding of words.  Later, the Court pointed out that about 42 percent of respondents said they were familiar with brand names for smart glasses, but only 1 of those 144 respondents listed Snap’s SPECTACLES as a brand.  Most of the others listed products from Google, Ray-Ban or Bose instead.

Snap also submitted a 2019 “Brand Lift Study” it had conducted, to assess the effect of its advertising on brand awareness.  This study asked the open-ended question: “When thinking of wearable cameras, which come to mind?”.  The results mostly undercut Snap’s position, since 0 percent of the control group and only 1 percent of the respondents mentioned Snap’s branded SPECTACLES product first, in their unaided answers.  Similarly low percentages were found in surveys questioning U.S. Snapchat users and non-users.

CONCLUSION

The Court held that the evidence established (1) SPECTACLES is not generic for smart glasses, (2) Snap had not met its burden to prove that SPECTACLES is suggestive, and (3) Snap had not sufficiently proved that the highly descriptive mark SPECTACLES acquired secondary meaning.

Therefore, the Court remanded Snap’s applications to the PTO, to permit the SPECTACLES marks to be registered on the Supplemental Register, as marks that are descriptive, and have not yet acquired secondary meaning.

Snap Inc. v. Vidal, Case No. 2:22-cv-00085-SK (C. D. Cal. September 27, 2024).

Author’s Note:

The design and execution of consumer surveys is a complex matter.  Teflon surveys have been widely used and relied upon to show consumer understanding. The Court’s particular criticisms of the Teflon surveys in the Snap case may not be universally applicable or accepted.  But this opinion may suggest refinement of the terms to be used in surveys for descriptive and generic terms. 

Depending upon the characteristics of the mark and product category in issue in a particular case, and mindful of the danger of confusing respondents by making the survey too complicated, a survey expert may wish to consider, when appropriate:

• educating respondents about descriptive terms in addition to arbitrary or suggestive brands on the one hand and generic words on the other hand; and

• permitting respondents to designate a word as a brand (whether arbitrary or suggestive), a descriptive term (and whether or not it designates a single source) or a generic word (by asking if a word is the “common name” of the product or service).

Also, a survey expert may wish to make an extra effort, if possible, to use as “controls” terms that will avoid the criticism that the selected words create a bias in respondent answers as to the particular facts in issue.

For further information, please contact William M. Borchard or your CLL attorney.