View opinion on Lexis AdvanceDescriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming public.
Trademark Law and Practice, Pages 126–128
Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.
United States Court of Appeals for the Fifth Circuit, 1983
Facts:
Plaintiff had a trademark on Fish-Fri. Defendants sold coatings for fried fish with labels says "fish fry." Plaintiff sued them for infringing on its trademark.
Procedural History:
District court found that Fish-Fri was a descriptive term identifying a function of the product sold.
Issues:
Is Fish-Fri descriptive of the product?
Can plaintiff protect its trademark?
Defendant's Argument:
Fish fry is a generic term for foodstuffs used to fry fish. Alternatively, it's merely descriptive of the characteristics of the product.
Rules:
There are many tests used for classifying a mark as descriptive:
- The dictionary test
- The "imagination test"
- "If a term 'requires imagination, thought and perception to reach a conclusion as to the nature of goods,' it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product."
- Whether the trademarked terms are needed by competitors to describe the product
- How much the term has been used descriptively by competitors.
Page 127, Bottom
In assessing a claim of secondary meaning, the major inquiry is the consumer’s attitude toward the mark. The mark must denote to the consumer “a single thing coming from a single source,” to support a finding of secondary meaning. . . . Factors such as amount and manner of advertising, volume of sales, and length and manner of use may serve as circumstantial evidence relevant to the issue of secondary meaning.
Reasoning:
- Webster's dictionary defines "fish fry" as a picnic where fish are fried, or fried fish itself. This implies that Fish-Fri is descriptive.
- Observation alone can tell one that Fish-Fri is a batter mix for frying fish. It does not require any imagination and thus must be considered descriptive under this test.
- It is common sense that a batter mix would use a term like this. Fish is a common food, and frying is a very popular method of preparing it. There are few synonyms to these words, so it is likely that these terms would be used descriptively.
- As mentioned, the defendants and others have named their products similarly to plaintiff. When so many companies come up with the same name, it is likely a descriptive one.
In light of these tests, it is clear that the district court's judgment was correct.
Plaintiff has been using its trademark for over 30 years. It is a popular product and surveys indicate roughly a quarter of people specify Zatarain's Fish-Fri when thinking of fish coatings.
Holding:
Fish-Fri is descriptive but has gained a secondary meaning and thus is protectable. Affirmed.