April, 17th, 2018

By Natasha Rodriguez

Trademarks can be the cheesy glue that connects a business with its brand in a consumer’s mind. A trademark is a source identifier that can include “any word, name, symbol, or device, or any combination thereof.” 15 U.S.C. § 1127. Trademarks are classified into one of five categories based on their level of distinctiveness: (1) generic (e.g., ASPIRIN, BAND-AID); (2) descriptive (e.g., WINDOWS, INTERNATIONAL BUSINESS MACHINES); (3) suggestive (e.g., CITIBANK, MICROSOFT); (4) arbitrary (e.g., APPLE, SHELL); and (5) fanciful (e.g., EXXON, KODAK).

Arbitrary and fanciful trademarks have the greatest level of protection, while generic terms are not protectable because they describe the type of good. A term is typically classified as being generic if it is used exclusively to describe a product or good and competitors use the term to describe the product they are selling. A descriptive term, while a step above being generic, is only protectable if it has acquired distinctiveness.

In addition to obtaining protection on a single trademark, it is possible to obtain a family of trademarks where each trademark includes a term or characteristic that is common to the family. The common term or characteristic must be indicative of the common origin of the goods.  For example, a family of marks is MCNUGGETS, MCSKILLET, MCCAFE, MCGRIDDLES, MCFLURRY, MCDONALDS, etc.  Each of the marks have a recognizable common characteristic (e.g., MC) that the public associates not only with the individual marks, but also as a common characteristic of the family distinctive of McDonald’s restaurants. Similar to individual trademarks, the common term or characteristic for the family of trademarks cannot be generic or descriptive unless the term or characteristic has acquired a secondary meaning.

 Recently, in Illinois Tamale Co. v. El-Greg, Inc., the Northern District of Illinois analyzed an allegedly generic trademark and rights associated with its trademark family. The Plaintiff owns the registered trademark “PIZZA PUFFS” along with other trademarks that include the term “PUFFS,” (for example “GYRO PUFF,” “HAM, CHEESE, & JALAPENO PUFF,” “HAM & CHEESE PUFF,” “PULLED PORK BBQ PUFF,” “SPINACH & CHEESE PIZZA PUFFS,” “TACO PUFFS,” “BUFFALO CHICKEN PUFF,” and “REUBEN PUFF”) and claimed use of “PIZZA PUFFS” since the 1980s. Plaintiff sued the Defendant for trademark infringement based on Defendant’s use of the term “PIZZA PIES™ (PUFFS).”  The parties’ products are sold side-by-side and both use similar slogans (Plaintiff uses “MAKERS OF THE ‘ORIGINAL’ PIZZA PUFFS” and Defendant uses “MAKERS OF THE ‘ORIGINAL PUFFS’”). Below are images of Plaintiff’s labeling (top) and Defendant’s labeling (bottom).

 

In the case, the Defendant presented evidence that “pizza puff” is a generic term that describes a type of good, specifically dough with pizza filling. It also submitted evidence that other food manufacturers and hundreds of restaurants use the term “pizza puff.” On the other hand, Plaintiff presented evidence that there is a variation among products described as “pizza puffs” such that the term does not describe or identify a particular type of food product. In addition, Plaintiff provided evidence that many competing brands of similar products compete effectively without using the term “pizza puff.”

Despite the evidence that both parties provided, the court denied both parties’ motion for summary judgment regarding the genericness of “PIZZA PUFFS” because it found that both parties presented evidence that “is not so one-sided that there can be no doubt about how the question should be answered.” More specifically, the court concluded that a reasonable juror could find both that the “PIZZA PUFFS” mark is not generic, and that the use of the term “pizza puff” describes a “pizza-flavored dough-based product” rather than a specific brand. Regarding the family of trademarks, the court concluded that a reasonable factfinder could conclude that the family of trademarks is valid, based on evidence showing that consumers believe there is a family of marks based on the common “Puff” element. Since both parties’ summary judgement motions were denied, the case is pending a trial date and/or settlement discussions.

Practice Tip:

When filing for and registering a trademark or a family of trademarks, aim for an arbitrary or fanciful trademark or at the very least a suggestive trademark. If the proposed trademark is descriptive, be prepared to show evidence of acquired distinctiveness or secondary meaning. In addition, the longer the trademark has been in use, the better it is for a showing of acquired distinctiveness.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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