IP Law Daily, TRADEMARK—C.D. Cal.: Snapchat can proceed with case against USPTO for registration of SPECTACLES mark, (Mar 8, 2024)

By Thomas K. Lauletta, J.D.

USPTO failed to show as a matter of law that the mark was generic or highly descriptive of Snap’s smart glasses.

The U.S. District Court in Los Angles, California, denied a motion of summary judgment by the USPTO against Snap Inc.’s efforts to register its SPECTACLES mark relating to “smart glasses” that utilize camera technology that enable wearers to capture and post photos in the Snapchat app. The USPTO had denied registration for SPECTACLES, ruling that the mark was generic or, alternatively, was highly descriptive, without proof of acquired distinctiveness. Viewing the evidence in a light most favorable to non-moving party Snap, the court held that summary judgment was inappropriate because several questions of disputed facts were present (Snap Inc. v. Vidal, March 4, 2024, Kim, S.).

Snap Inc. owns the popular Snapchat app and instant messaging service. Snap filed two applications to register its SPECTACLES mark, in standard characters and in stylized form, for “computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data,” including smart glasses and camera glasses in International Class 9. SNAP’s SPECTACLES glasses utilize camera and computer technology to take pictures and videos and display them on the Snapchat app.

The Trademark Trial and Appeal Board upheld the USPTO’s refusal to register the SPECTACLES mark on the ground that it was generic, or alternately that it was highly descriptive without gaining acquired distinctiveness. Snap sought judicial review of this refusal to register, and in the instant action, the USPTO moved for summary judgment against Snap’s claims.

Summary judgment. The court first noted that because trademark disputes typically turn on factual questions, summary judgment is generally disfavored to resolve trademark questions. Further, the court stated that in registration proceedings, the USPTO bears the burden of proving that a proposed mark is generic.

Under the Lanham Act, the question of genericness turns on the “primary significance of the registered mark to the relevant public.” Under this test, the critical issue is how members of the relevant public primarily understand the term sought to be protected.

Consumer perception of “Spectacles.” Understandably, the parties advanced different standards for determining genericness. For the USPTO, so long as the evidence showed that consumers primarily understood the term “spectacles” to be generic for conventional “eyeglasses,” it must be also generic for modern “smart glasses.” For Snap, so long as the evidence showed that few consumers used the term “spectacles” to name the class of “smart glasses,” there must remain a genuinely disputed fact question about consumer perception of its asserted SPECTACLES mark.

To decide the question of genericness of the SPECTACLES mark for purposes of summary judgment, the court looked to evidence relating to: (1) dictionary definitions; (2) whether Snap used “glasses” to describe an intrinsic feature or function of its own product; (3) different uses of the term “spectacles” by the public; (4) competitor use of the term in Internet shopping searches; and (5) consumer surveys.

Dictionary definitions. The court found that the dictionary definitions offered by the parties were not decisive either way for summary judgment purposes. Central to the question here is that the dictionary definitions offered by the parties raised a genuine issue of fact about the USPTO’s view that “spectacles” is a generic term for “smart glasses.

Snap’s use of “glasses.” Although the court stated that the manner by which a Snap company employee used the terms “sunglasses” and “glasses,” and Snap’s use of the terms in advertisements might support the USPTO’s genericness argument, this question was open to a factual dispute.

Public’s use of “Spectacles.” When viewed with all permissible inferences in Snap’s favor, existing evidence and new evidence established the existence of a genuine dispute of material fact about consumer perception of the term “spectacles” as applied to “smart glasses.” The court stated that the relative weight and persuasiveness of this public media evidence should be tested at trial, rather than by a motion for summary judgment.

Use of the term by competitors. Although the court noted that the USPTO had presented probative competitor use evidence, this evidence was not so overwhelming to dictate summary judgment for the USPTO on the question of genericness.

Consumer surveys. The court held that each of the parties’ offering competing new consumer surveys regarding the issue of consumer perceptions precluded an entry of summary judgment in favor of the USPTO. The relative evidentiary weight of these competing survey results was a matter best addressed at trial.

Court action. The district court denied the USPTO’s motion for summary judgment.

The Case is No. 2:22-cv-00085-SK.

Attorneys: David Hal Bernstein (Debevoise and Plimpton LLP) for Snap Inc. Jasmin Yang, U.S. Attorney’s Office, for Katherine K. Vidal, Drew Hirshfeld and the USPTO.

Companies: Snap Inc.

Cases: Trademark CaliforniaNews GCNNews