Please join me for a live and informative 90 minute Strafford law webinar a week from tomorrow, on Wednesday August 13, at noon CST.
The topic to be covered is “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” and here is a link for more information.
For the discussion, I’m joined by two very…
Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP
Social media companies are some of the biggest growth businesses out there and the very nature of their businesses is global. One of the stronger performers is Pinterest, which offers an online platform to manage images and other content on an online pinboard. As…
When getting your wings might give you trouble from the one that gives you wings:
Interesting and unlikely adversaries to say the least.
"Just because you can," is rarely a good reason to support a decision that really matters. This principle is no less true in the trademark world than it is elsewhere.
So, relying on your own navigation of the U.S. Patent and Trademark Office’s (USPTO) online search database without also seeking a trademark attorney’s competent analysis of the…
Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color…
Basically, the Trademark Trial and Appeal Board (TTAB) of…
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?
- Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
- Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
- 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.…
A couple of months ago I blogged about Branding Exclamations!
Before that I blogged about Increasingly Intense Ellipsis Branding . . . .
Now, it appears I must revisit the subject of punctuation mark branding given Cadbury Adams’ new Mega Mystery Stride brand gum, prominently featuring a question mark logo on the packaging where the S logo normally…
–Sharon Armstrong, Attorney
Thinking about filing a trademark opposition against a competitor’s pending trademark application? Thinking about filing a civil suit against a competitor’s corresponding trademark use? Often, upon the filing of a civil trademark suit and a request to the Trademark Trial and Appeal Board (“TTAB”), the TTAB will suspend the opposition pending the…