As I was looking at a photo of the fish my nephew caught this weekend, I wondered if my brother and my sister-in-law would be inviting me to a fish fry.

nephewIndeed, a fish fry was on my mind after having just read the Federal Circuit’s recent decision. In that case, Louisiana Fish Fry Products, Ltd. (“the Company”) sought to overturn the Trademark Trial and Appeal Board’s (“Board”) refusal to register the mark:


The Company sought to use the mark with various sauces, marinade and Cayenne pepper. I am getting hungry just reading this as these are all good fish toppings.

In appealing, the Company argued that “FISH FRY” and “PRODUCTS” were not generic and had acquired distinctiveness. As an aside, a generic trademark is synonymous for a class of product that is commonly used. For example, aspirin, thermos, yo-yo and escalator, have been declared generic by United States courts.

The Federal Circuit disagreed with the Company. Instead, the Federal Circuit found that a disclaimer was needed for “FISH FRY PRODUCTS” and it had not acquired distinctiveness.

The Federal Circuit found that there was substantial evidence supporting the Board’s determination that the company had failed to show that “FISH FRY PRODUCTS” had acquired distinctiveness. To establish distinctiveness, the Company would have had to show that “in the minds of the public, the primary significance of a product feature or term is to identify the source of the product, rather than the product itself.” The Federal Circuit found that it had not done so. Because of the failure to provide substantial evidence of distinctiveness, the Federal Circuit did not reach the issue of genericness.

You may ask what would have been needed to establish acquired distinctiveness. In the Fish Fry majority opinion, the Federal Circuit relied on a prior decision involving the accessible luxury product manufacturer Coach Services Inc. (“the Coach Store”). (Yes, I must admit I still own a now-battered small black Coach purse that I bought many years ago). In that decision, the applicant Triumph used the COACH Mark with its books and software that helped people prepare for standardized tests. The Coach Store argued that there was no evidence that Triumph’s descriptive COACH marks had acquired distinctiveness. The Board had found that the COACH Mark was merely descriptive of Triumph’s educational materials because it immediately conveyed to purchasers the purpose of the materials. In other words, they coached people on how to succeed on the standardized tests. However, the mark could be registered because it had acquired distinctiveness based on: (1) Triumph being the largest publisher of these types of materials; (2) impressive advertising expenditures and revenues over a number of years; and (3) Triumph’s promotion of the COACH Mark with its books since at least 1989.

Although agreeing on the outcome of the case, Judge Pauline Newman disagreed on the basis for the decision. In her well-reasoned concurrence, Judge Newman explained that “[g]eneric terms and common descriptive names cannot acquire trademark status, and evidence purporting to show acquired distinctiveness of secondary meaning is irrelevant.” She further explained that “[w]hen a term is the common descriptive or generic name of the goods, evidence of secondary meaning cannot change the result.” Generic terms by default are not capable of indicating a unique source. Because “Fish Fry Products” is a generic and common descriptive name for these products, Judge Newman concluded that registration of the application was properly denied by the Board.

Whose analysis (the majority or Judge Newman) do you find more persuasive? Is anyone else hoping to be invited to a fish fry this weekend?