Snap Inc.v.NfoSnap, Inc.

Trademark Trial and Appeal Board

Apr 23, 2020

91238805 (T.T.A.B. Apr. 23, 2020)

KIM
April 23, 2020

Opposition No. 91238805

Snap Inc.1

v.
NfoSnap, Inc.

Before Zervas, Kuczma and Johnson,
Administrative Trademark Judges

By the Board:

On January 8, 2018, Snap Inc. (“Snap”) filed a notice of opposition against
NfoSnap, Inc.’s (“NfoSnap”) Application Serial No. 87330965 for the mark NFOSNAP
in standard characters for “computer software to allow controlled access for one or
multiple users to scan an optical code with a portable computer or imaging device to
access custom and interactive content” in International Class 9, pleading dilution and
likelihood of confusion2 with, inter alia, its standard character mark SNAPCHAT for
“computer application software for mobile phones, portable media players, and
handheld computers, namely, software for sending digital photos, videos, images, and

1 Snap Inc.’s change of correspondence address (filed September 13, 2019) has been noted
and entered into the proceeding file.
2 1 TTABVUE.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91238805

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text to others via the global computer network” in International Class 9.3 NfoSnap
denied the salient allegations of the notice of opposition in its answer, and
counterclaimed to cancel the ’712 registration alleging genericness.4 Snap denied the
salient allegations of the counterclaim in its answer.5 Discovery closed on March 11,
2019,6 and, as last reset, Snap’s pretrial disclosures were due on July 24, 2019.7
This matter now comes up on Snap’s motion (filed July 23, 2019)8 and on
NfoSnap’s cross-motion (filed September 5, 2019)9 for summary judgment on
NfoSnap’s counterclaim. The motions have been fully briefed.
Legal Standard and Burdens on Summary Judgment
A motion for summary judgment is a pretrial device intended to save the time and
expense of a full trial when the moving party is able to demonstrate, prior to trial,
that there is no genuine dispute of material fact, and that it is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992); and Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d

3 Registration No. 4375712 (“the ’712 registration”) registered on the Principal Register on
July 30, 2013, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Declaration
under Section 8 of the Trademark Act, 15 U.S.C. § 1058, accepted on July 15, 2019.
4 5 TTABVUE.
5 7 TTABVUE.
6 14 TTABVUE 6.
7 18 TTABVUE 1; 19 TTABVUE.
8 20 TTABVUE (public copy) and 21 TTABVUE (confidential copy).
9 31 TTABVUE. Since the Board presumes that later filings are intended to supersede
earlier versions of the same filing, NfoSnap’s filings at 27 TTABVUE, 29 TTABVUE and 30
TTABVUE, have been given no consideration.
Opposition No. 91238805

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1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence on summary judgment is viewed
in a light most favorable to the nonmoving party, and all reasonable inferences are
drawn in the nonmovant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra. A factual dispute will
be deemed genuine if, on the evidence of record, a reasonable fact finder could resolve
the matter in favor of the nonmoving party. See Olde Tyme Foods, Inc. v. Roundy’s,
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board does not
resolve disputes of material fact on summary judgment; rather, the Board only
ascertains whether disputes of material fact exist. See Univ. Book Store v. Univ. of
Wisconsin Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994); see also Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 249 (1986) (“at the summary judgment stage the
judge’s function is not himself to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for trial.”).
Where the party moving for summary judgment on a claim bears the burden of
proof at trial on that claim, the moving party “must lay out the elements of its claim,
citing the facts it believes satisfies those elements, and demonstrating why the record
is so one-sided as to rule out the prospect of the nonmovant prevailing.” 10A C.
WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil § 2727.1
(4th ed. 2019); see also Celotex, 477 U.S. at 331 (Brennan, J., dissenting) (“If the
moving party will bear the burden of persuasion at trial, that party must support its
motion with credible evidence—using any of the materials specified in [Fed. R. Civ.
P.] 56(c)—that would entitle it to a directed verdict if not controverted at trial.”).
Opposition No. 91238805

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Where the party moving for summary judgment does not bear the burden of proof
at trial, the party may discharge its initial burden of production by either submitting
affirmative evidence that negates an essential element of the nonmoving party’s
claim or by demonstrating that the nonmoving party’s evidence is insufficient to
establish an essential element of the claim. See id. at 321-26.
If the movant successfully discharges its initial burden of production, the burden
shifts to the nonmovant to demonstrate the existence of a genuine dispute for trial.
Id. at 324. This requires more than a mere showing “of a scintilla of evidence in
support of the [nonmovant’s] position …; there must be evidence on which the jury
could reasonably find for the [nonmovant]” and what may be considered reasonable
for a jury “necessarily implicates the substantive evidentiary standard of proof that
would apply at the trial on the merits.” Anderson, 477 U.S. at 252. Since the standard
of proof in Board inter partes proceedings on a claim of genericness is a
preponderance of the evidence, see Princeton Vanguard, LLC v. Frito-Lay N. Am.,
Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015), the Board must, on
summary judgment, “view the evidence presented through the prism of [this]
substantive evidentiary burden” in determining if a genuine dispute exists. Anderson,
477 U.S. at 254. If the nonmovant’s showing is insufficient to demonstrate that a
genuine dispute exists on an essential element of the subject claim, the moving party
is entitled to judgment as a matter of law. See Celotex, 477 U.S. at 322.
Opposition No. 91238805

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Legal Standard for Genericness
To prevail on a claim that a designation is generic, the claimant must identify the
genus of goods or services at issue and demonstrate that the relevant public
understands the designation primarily to refer to that genus of goods or services. See
H. Marvin Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986) (“The critical issue … is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.”). The inquiry “into the public’s understanding of a
mark requires consideration of the mark as a whole. Even if each of the constituent
words in a combination mark is generic, the combination is not generic unless the
entire formulation does not add any meaning to the otherwise generic mark.” In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).
The Parties’ Arguments on Snap’s Motion
Turning first to Snap’s motion, Snap argues that its registration is entitled to the
presumption of validity under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b),
which “includes the presumption that the mark subject thereof is not merely
descriptive of or generic in relation to the goods.” Editorial Am., S.A. v. Gruner + Jahr
Ag & Co., 213 USPQ 498, 504 (TTAB 1982). Since “[a] party moving for summary
judgment is entitled to the benefit of any relevant presumptions that support the
motion,” this presumption alone is sufficient to shift the burden of production to
NfoSnap. Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 216 USPQ 579, 582 (9th
Cir. 1982) (“By virtue of the presumption that the trademark ‘Coke’ is not generic,
Opposition No. 91238805

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Coca-Cola has met its burden of demonstrating that the genericness of the trademark
‘Coke’ does not raise a genuine issue of material fact.”).
Nevertheless, Snap also argues that the evidence thus far adduced by NfoSnap is
insufficient to establish an essential element of NfoSnap’s claim of genericness, i.e.,
that the relevant public understands SNAPCHAT, as a whole, primarily to refer to
the genus of goods at issue.
Snap first defines the relevant genus as the goods identified in the subject
registration, i.e., “computer application software for mobile phones, portable media
players, and handheld computers, namely, software for sending digital photos, videos,
images, and text to others via the global computer network,” and we agree that the
genus is as stated by Snap.10 See Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“a proper genericness inquiry focuses on the
description of [goods or] services set forth in the certificate of registration”).
Snap then points out that the evidence NfoSnap has produced only addresses the
genericness of the component terms “snap” and “chat” rather than the mark
SNAPCHAT as a whole and that NfoSnap has otherwise failed to produce any

10 NfoSnap defines the genus at issue not in terms of SNAPCHAT as a whole but rather in
terms of the individual components “snap” and “chat.” Specifically, NfoSnap identifies two
separate genera based on wording from the identification of goods in the ’712 registration,
i.e., “photo” and “sending … videos, images, and text to others via the global computer
network,” and contends that “snap” is commonly understood as “photo” and that “chat” is
commonly understood as “sending … videos, images, and text to others via the global
computer network” to conclude that “[t]he whole term is generic and is understood by the
relevant members of the public as referring to digital photos and informal conversations via
short text exchanges in a specific application as instant messaging, or by using images, voice,
video, or some combination of these.” 31 TTABVUE 11 and 20. Marvin Ginn requires us to
define only one genus.
Opposition No. 91238805

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evidence showing that the relevant public understands SNAPCHAT to primarily
refer to the genus of goods at issue.11
NfoSnap does not dispute that its evidence pertains to demonstrating that the
individual terms “snap” and “chat” are generic when used in reference to Snap’s
goods, but contends that “the same evidence shows that [SNAPCHAT] is generic”
because the joining of the component generic terms results in a compound term that
“does not create a different commercial impression from the parts [and] is nothing
more than the sum of its parts and is not capable of identifying and distinguishing a
single source and therefore the sum of the parts remains generic.”12
Discussion
The relevant public’s use or understanding of SNAPCHAT is critical to a
determination of the mark’s genericness and requires consideration of the mark as a
whole. See In re Steelbuilding.com, 75 USPQ2d at 1421. Accordingly, in order to
survive Snap’s motion for summary judgment, NfoSnap may not simply rest on a
showing that the constituent terms are generic or argument that such evidence is
sufficient to raise a genuine dispute of material fact. See Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (party opposing summary
judgment “must do more than simply show that there is some metaphysical doubt as
to the material facts.”). Rather, NfoSnap must adduce evidence sufficient to raise a
genuine dispute that the relevant public understands SNAPCHAT as a generic

11 20 TTABVUE 11-16.
12 31 TTABVUE 9 and 19.
Opposition No. 91238805

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designation for “computer application software for mobile phones, portable media
players, and handheld computers, namely, software for sending digital photos, videos,
images, and text to others via the global computer network.”
In its briefing, NfoSnap appears to equate the relevant members of the public to
the general public at large.13 This is overbroad and inaccurate. The relevant public in
a genericness inquiry are the “actual or potential purchasers of the goods or services.”
Magic Wand, 19 USPQ2d at 1553. Thus, based on the identification of goods in Snap’s
registration, which is unrestricted as to trade channels and end users, we presume,
for purposes of summary judgment, that the relevant consumers of Snap’s goods are
individuals who use mobile devices to send media and text messages to others via a
global computer network. See In re Mecca Grade Growers, LLC, 125 USPQ2d 1950,
1957 (TTAB 2018).
Most of the evidence NfoSnap has put forward seeks to establish the public’s
“common understanding” of each constituent term as a generic designation. This
evidence, however, is insufficient to raise a genuine dispute as to whether the
relevant public views SNAPCHAT as a generic designation for the genus of goods
herein because, as we have noted supra, even if genericness is proved as to the
constituent terms, the compound term will not be found generic “unless the entire
formulation does not add any meaning to the otherwise generic mark.” In re

13 See 31 TTABVUE 6 (“Opposer’s mark ‘SNAPCHAT’ is the combination of the generic terms
‘snap’ and ‘chat’ which are common terms recognized by the relevant public. These two terms
are used excessively in the general public as generic terms. The proliferation and use of smart
phones and mobile apps have greatly accelerated the use of digital photos and instant
messaging, a type of online chat; thereby further causing the terms ‘snap’ and ‘chat’ to become
a [sic] common and generic terms to the general public.”).
Opposition No. 91238805

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Steelbuilding.com, 75 USPQ2d at 1421. To that end, NfoSnap submitted dictionary
definitions of and references in online publications to SNAPCHAT as a whole. A
representative sampling of that evidence is reproduced below:
Online publications:

How to Use Snapchat: Share Vanishing Photos with Snap Chat
(from https://www.lifewire.com):14

Snapchat is a mobile messaging app for sharing pictures that disappear.

Snapchat: How the vanishing-photo app managed not to fade
(from https://phys.org):15

Snapchat has managed to build something lasting out of photos that
vanished almost instantly.
The fast-growing social network for millennials has come a long way
since its founder Evan Spiegel dropped out of Stanford University in
2012, three classes shy of graduation.

Snap: From disappearing photos to blockbuster IPO
(from https://www.usatoday.com):16

Originally an app to share moments privately, Snapchat grew out of a
Stanford University dorm room experiment that caught on big time with
young mobile users.

Instagram Direct takes a page from Snapchat with disappearing photos and
videos
(from https://www.androidpolice.com):17

... Instagram is adding some features you’re probably familiar with from
Snapchat—you can send images and videos that self-destruct after being
viewed.

14 31 TTABVUE 344.
15 Id. at 345.
16 Id. at 346.
17 Id. at 347.
Opposition No. 91238805

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How Reggie Brown invented Snapchat
(from https://techcrunch.com):18

They quickly realized it would be much easier and more private for
users, and thus more widely used, if they build a mobile app instead of
a website; to this day, Snapchat still does not offer a web product.
…
With the benefit of hindsight, we can see that Facebook developed the
conditions that allowed Snapchat to flourish.

The rise of Snapchat from a sexting app by Stanford frat bros to a $3 billion
IPO
(from https://www.businessinsider.com):19

Snapchat’s beginning sounds a lot like Facebook’s from “The Social
Network.”
…
At stake was the founding story of a social network to make photos
disappear. Snapchat’s founders ended up paying $157.5 million.
…
Snapchat wasn’t Spiegel’s first startup.
…
In Summer 2011, Snapchat was born—except it wasn’t called Snapchat
at first.
…
The now-duo changed the app’s name to Snapchat in September 2011,
its official birthday.

MUO article “What Is Snapchat and Is It Right for You?”:20

The popularity of Snapchat has skyrocketed since launch. And Snapchat
is especially popular with younger generations.
…
So, what is Snapchat? How does Snapchat work? Is Snapchat right for
you?
…
Snapchat is a multimedia app that can be used on smartphones running
Android or iOS. It allows you to send pictures or videos, named “Snaps,”
to friends. These Snaps vanish after they’ve been viewed.

18 Id. at 350 and 353.
19 Id. at 357-360.
20 Id. at 419-420.
Opposition No. 91238805

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The platform also offers a Chat function, similar to instant messaging
services like WhatsApp. The main difference, however, is that, as with
Snaps, Chats disappear once they’ve been viewed.

Online dictionary definitions

Cambridge Advanced Learner’s Dictionary & Thesaurus:21
Snapchat: the name of a social media service for sending pictures,
messages, and videos that are only available to be seen for a limited
amount of time.

SearchMobileComputing:22
Snapchat is a mobile app that allows users to send and receive “self-
destructing” photos and videos.

Techterms:23
Snapchat is a mobile app and service for sharing photos, videos, and
messages with other people. Once you view a message received via
Snapchat, it is automatically deleted.

NfoSnap relies on this evidence to argue that “the combination of the generic term
‘Snap’ with the generic term ‘Chat’ … is nothing more than the sum of its parts and
is not capable of identifying and distinguishing a single source and therefore the sum
of the parts remains generic.”24 The problem with this argument is that this very
same evidence of use of the compound term SNAPCHAT, including definitions
thereof, uniformly refer to Snap and demonstrate that SNAPCHAT as a whole does
indeed have a meaning beyond the generic meanings of the constituent terms.
Since the critical inquiry in determining genericness is the relevant public’s
understanding of the entirety of the designation against which the claim of

21 Id. at 369 and 411.
22 Id. at 369.
23 Id.
24 Id. at 9.
Opposition No. 91238805

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genericness is raised, NfoSnap’s evidence concerning the genericness of “snap” and
“chat” as separate terms is insufficient to raise a genuine dispute as to the
genericness of the combination SNAPCHAT in the face of NfoSnap’s own evidence to
the contrary. See Princeton Vanguard, 114 USPQ2d at 1832-33 (“even in
circumstances where the Board finds it useful to consider the public’s understanding
of the individual words in a compound term as a first step in its analysis, the Board
must then consider available record evidence of the public’s understanding of whether
joining those individual words into one lends additional meaning to the mark as a
whole.”).
Since NfoSnap has “fail[ed] to make a showing sufficient to establish the existence
of an element essential to [its] case” for which it bears the burden of proof at trial, see
Celotex Corp., 477 U.S. at 322, Snap is entitled to judgment as a matter of law on
NfoSnap’s counterclaim.
Decision
Snap’s motion for summary judgment on NfoSnap’s counterclaim of genericness
is GRANTED and the counterclaim is DISMISSED with prejudice.25
Proceedings are RESUMED on the following schedule:
Plaintiff's Pretrial Disclosures Due 5/22/2020
Plaintiff's 30-day Trial Period Ends 7/6/2020
Defendant's Pretrial Disclosures Due 7/21/2020

25 In view of the decision herein, NfoSnap’s cross-motion on its counterclaim is moot. The
parties are reminded that evidence submitted in support of or in opposition to a motion for
summary judgment is of record only for consideration of that motion. Any such evidence to
be considered at final hearing must be properly introduced during the appropriate trial
period. See, e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).
Opposition No. 91238805

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Defendant's 30-day Trial Period Ends 9/4/2020
Plaintiff's Rebuttal Disclosures Due 9/19/2020
Plaintiff's 15-day Rebuttal Period Ends 10/19/2020
Plaintiff's Opening Brief Due 12/18/2020
Defendant's Brief Due 1/17/2021
Plaintiff's Reply Brief Due 2/1/2021
Request for Oral Hearing (optional) Due 2/11/2021

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and
(b). Oral argument at final hearing will be scheduled only upon the timely submission
of a separate notice as allowed by Trademark Rule 2.129(a).
* * *