v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn’t have to be toasted for the name to fit.

But, what if you’re selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn’t start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company’s claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company’s claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term’s placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn’t cut short and decided on summary judgment with a limited record, we’ll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I’ll have to say, at this point, "Texas Toast" sounds to me like a category of croutons — those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza — each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn’t matter if you’re the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant’s use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant’s first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn’t likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti’s mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti’s claimed TEXAS TOAST mark for croutons, so it doesn’t become registered prior to trial, but we’ll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer’s imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti’s suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff’s own description of its croutons below the jump.

We think croutons should be big and bold — big in size and bold in flavor. That’s why we’ve developed New York Brand Texas Toast Croutons with the Texas Toast cut. They’re made with the same commitment to great taste that’s made New York Brand Texas Toast America’s top-selling frozen garlic bread.

We start with home-baked French bread, generously seasoned for optimal taste satisfaction, and then we cut the loaves into big Texas-sized bites. Bigger bites and bolder flavor — that’s what makes New York Brand Texas Toast Croutons so delicious!

Does this explanation help or hurt the plaintiff’s case?

Does it remind you of the SmashBurger fiasco from not too long ago?

  • Hi, Stephen.
    My associate, Alan Clark, and I concur that TEXAS TOAST is merely descriptive of croutons. It’s not generic because I don’t need to use TEXAS TOAST to describe fat slices of bread and it’s not suggestive because it immediately describes a characteristic of the product.

  • Alan and Steve, thanks for dropping by and sharing your thoughts and perspective on the question.
    You may be right about descriptiveness. If so, for Marzetti to have enforceable rights, it will need to show it acquired distinctiveness or secondary meaning in TEXAS TOAST as a source indicator for its croutons in a short two-year period of time. That is a tall order.
    On the line between genericness and descriptiveness, I think it will come down to whether consumers, when confronted with the use of TEXAS TOAST on croutons, understand it as a category of croutons, namely, those made from texas toast, even if, in fact they are not. Consumer understanding of the term will control at the end of the day.
    As a consumer of texas toast, I would assume that the croutons are made from texas toast bread, but I’m only one consumer.
    Thanks again for your perspective.

  • Jeff Camp

    Texas Toast is a generic at best. Not to mention that when I hear “Texas Toast croutons,” my first thought…is there going to be room for the salad?
    I guess it won’t matter, because I’ll have a salad with Texas Toast croutons, right next to my serving of Stouffers(r)Family Sized Linoleum-Layered Lasagna. Then when I’m putting away the leftovers in Alka-Selzer(r) Wrapping, I know that I’ve saved some money and calories by skipping a night out at Claim Jumper’s(r)Food & Lube.

  • When “Texas Toast” becomes a category name for thick bread ( http://en.wikipedia.org/wiki/Texas_toast ) and Texas Toast is marketed by several brand names, I’d say Texas Toast croutons are generic. Who is minding the store at the Trademark Office?

  • When I think of Texas Toast I do not think of croutons, no matter how big and thick they might be. Maybe I am too literal here, but I have a very clear picture of Texas Toast, and it’s, well, it’s TOAST.

  • Fair enough, but what if they were cut from texas toast? I don’t know if that is true, but it seems more than plausible consumers might assume the croutons are cut from texas toast.

  • I think we get into a design issue at this point. If I picked up a package of “Texas Toast Croutons” in a store, then logically I would expect to see some kind of visual on the package of the Texas Toast BEFORE it was cut into croutons, kind of behind the croutons and on a plate, you know, and maybe with a knife or some kind of crouton-cutting device?
    And then maybe the croutons in the foreground on top of soup or a salad. Just quickie conceptual thinking here. (I am a visual person after all.) ;-)

  • What is texas toast? Now if they were barbequed bread with chile and texan type spices for the croutons,…. there is an immediate and strong emotional connection with product and texas….

  • Texas toast is white bread that has been sliced into thick, 1-inch or more slices, then toasted. The shape is square, without the rounded cap of typical bread loaves. Texas toast is often served at barbecue restaurants, plus Sonic has used it on some of their “toaster” sandwiches instead of buns. You can sometimes find it in the bread aisle or in the frozen food cases, but I think it is mostly sold directly to restaurants. Texas toast has nothing to do with Texas flavors such as barbecue or Tex-Mex foods.
    Texas toast croutons sound like thick white-bread croutons that are made from Texas toast. I’m on the fence as to whether it sounds like a brand name or a generic descriptor, but I’m leaning to it being generic.

  • My favorite croutons come from our local farmers market and they are indeed much like Kathi describes. They are made from Italian or French bread, or maybe a mix of the two, and have been toasted and tossed in olive oil, garlic and herbs. So they don’t much resemble Texas Toast in any way.

  • I would assume these croutons are cut from Texas toast. Sounds like they would be marketed with a “down-home” appeal, rather than a gourmet or foreign quality. Their geographic market might be limited to Texas and the Southeast, but they could have a novelty appeal in other parts of the U.S. or outside the United States.

  • Charles K

    Seems to me that “New York Brand Texas Toast Croutons with the Texas Toast cut” is fodder to assert genericness. “New York Brand _______” of soemthing generic, like “Kleenex Brand _____” (tissues). Second, seems like consumers in Texas could have a stronger impression of anything named Texas Toast than in other parts of the country. Here, in Texas, it really does mean a type of bread to the buying public.