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.
  • LexisNexis IconWestLaw LogoGoogle Scholar LogoPage 127, Bottom

    Descriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming public.

    LexisNexis IconWestLaw LogoGoogle Scholar LogoPage 128

    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.