Zatarain’s, Inc. v.

Oak Grove Smokehouse, Inc ISSUE:

Brief Fact Summary. Zatarain’s (Plaintiff) claimed that its trademark was a 1. Whether or not Fish-Fri is a suggestive term. No.
suggestive term and that Oak Grove Smokehouse, Inc. (Defendant) should
be liable for infringing it, but Oak Grove (Defendant) claimed it was a 2. Assuming Fish-Fri is a descriptive term, whether or not the fair-use
descriptive term subject to a fair use exception. defense could be set up. YES

Synopsis of Rule of Law. Descriptive terms are not protected by trademark 3. Whether or not Chick-Fri is a descriptive term with a secondary meaning
without a showing of secondary meaning in the minds of the public. afforded trademark protection. NO

RATIO:
FACTS:
1. Fish-Fri is a descriptive term. There are a few tests applied by the court
Zantarain is the manufacturer and distributor of a line “Fish-Fri” and “Chick-
in determining whether a term is descriptive or suggestive. Whenever a word
Fri”. The term “Fish-Fri” has been used by Zatarain’s or its predecessors
or phrase conveys an immediate idea of the qualities, characteristics, effect,
since 1950 and has been registered as a trademark since 1962. Likewise,
purpose, or ingredients of a product or service, it is classified as descriptive
“Chick-Fri” was used in the year 1968 by Zantarain and was registered as
(dictionary test – consult the dictionary for the meaning of the word); if a term
trademark in 1976. Oak Grove Smokehouse (Oak Grove) began marketing a
requires imagination, thought and perception to reach a conclusion as to the
“fish fry” and “chicken fry” in March 1979; Similarly, another company, Visko’s
nature of goods, it is suggestive (imagination test).
Fish Fry entered the batter mix market in 1980 with its product, “Visko’s Fish
Fry”.
In this case, a mere observation compels the conclusion that a product
branded “Fish-Fri” is a prepackaged coating or batter mix applied to fish prior
Zantarain filed its original complaint against Oak Grove in the US District
to cooking. The connection between the merchandise and the term is so
Court alleging infringement and unfair competition under the Lanham Act.
close and direct that even a consumer unfamiliar with the product will have
The defendants, Oak Grove and Visko counterclaimed for cancellation of the
an idea of its purpose of function.
trademarks “Fish-Fri” and “Chick-Fri”. The case was tried and the district
court found that the term “Fish-Fri” has acquired a secondary meaning in the
The third test applied by the court is whether the competitors would be likely
New Orleans geographical area and therefore, was entitled to trademark
to need the terms used in the trademark in describing their products. The
protection, but concluded that the defendants were entitled to fair use of the
court held there is a necessity to use the words because “even piscatorial
term “fish-fry” to describe the characteristics of their goods. Accordingly, the
gastronomes (nagpapaka-poetic pa yung ponente eh, badtrip) would agree
Court held that Oak Grove and Visko had not infringed the trademark of
that the words “fish” and “fry” suggests that a merchant whose batter mix is
Zatarain. With respect to Chick-Fri, the court held that it had not yet acquired
specially spiced for fishing is likely to find “fish fry” a useful term for
a secondary meaning to the minds of the consumers, hence, it ordered the
describing his product.”
cancellation of its trademark registration.
The final test examines the extent to which a term actually has been used by
On appeal, Zatarain claims that Fish-Fri is a suggestive term and therefore
others marketing a similar service or product. As noted above, a number of
not subject to the “fair-use defense”. It claims that even assuming that the fair
companies have already used the terms in describing their products.
use defense is applicable in this case, the appellees cannot invoke the
doctrine products. It further claims that Chick-Fri has acquired a secondary
In assessing the claim for secondary meaning, the major inquiry is the
meaning for the term.
consumer’s attitude towards the mark. The mark must denote to the
consumer “a single thing coming from a single source”. 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 Arbitrary or fanciful terms bear no relationship to the products or services to
secondary meaning. While none of these alone will prove it, the combination which they are applied. They are protectable without proof of secondary
would establish the necessary link in the minds of the consumers between a meaning (e.g. Kodak, Ivory – soap).
product and its source. The measure is not the quantity of the efforts, but its
effectiveness in altering the meaning of the term. Notes: (since Sir likes to ask concepts)

In this case, it was found that Zatarain and its predecessor have used the Classification of Marks
term continuously. It also acquired expenditures of over $400,000 for
advertising during the period from 1976 to 1981. For this, Zatarain sold a total The threshold issue in any action for trademark infringement is whether the
of 916,385 cases of Fish-Fri. Moreover, in a survey conducted by experts, it word or phrase is initially registerable or protectable.
was found that Zatarain was the product they would buy at the grocery store
as coating. Such is considered as heavily in Zatarain’s favor. Courts and commentators have traditionally divided potential trademarks into
four categories.
2. The fair-use defense can be set up. There is ample evidence to support
Potential trademarks
that the use of the words “fish fry” was fair and was made in good faith. Oak
Nature Registrable or not
Grove and Visko did not intend to use the term in a trademark sense and had
1. Generic the name of a particular No. can never attain trademark
never attempted to register the words as a trademark. In addition to this, they
genus or class of which an protection.
packaged their products in such a wat as to minimize any potential confusion
individual article or service
in the minds of consumers. is but a member." It  If at any time a registered
connotes the "basic nature trademark becomes generic as
3. “Chick Fri” is a secondary term without secondary meaning. It has of articles or services" to a particular product or
been used only in 1968 and was registered in 1976. Zatarain’s expenditures rather than the more service, the mark's registration
over Chick-Fri were mere “chikenfeed”. In fact there was no direct advertising individualized is subject to cancellation.
campaign to publicize the product. Zatarain has not overcome the burden of characteristics of a
proving secondary meaning. Having concluded that it is lacking secondary particular product.
meaning, the cancellation of its registration was proper. 2. identifies a characteristic or Ordinarily not protectable.
Descriptive quality of an article or They may become valid marks,
DOCTRINE: Generic term is the name of a particular genus or class of which service however, by acquiring a
an individual article or service is but a member. It can never attain trademark secondary meaning in the
protection. Furthermore, , if at any time a registered trademark becomes minds of the consuming public.
generic as to a particular product or service, the mark’s registration is subject Eg. Vision center
to cancellation. 3. requires the consumer to  A suggestive mark is protected
Suggestive exercise the imagination in without the necessity for proof
A descriptive term identifies a characteristic or quality of an article or service term order to draw a conclusion of secondary meaning.
such as its color, odor, function, dimensions or ingredients. They are not as to the nature of the Eg. Coppertone
ordinarily protectable as trademarks but they may become valid marks by goods and services.
acquiring a secondary meaning in the minds of the consumers. 4. Arbitrary bear no relationship to the protectable without the
or fanciful products or services to necessity for proof of secondary
A suggestive term suggests rather than describes some particular which they are applied meaning
characteristic of the goods or services to which it applies and requires the eg. Kodak
consumer to exercise the imagination in order to draw a conclusion as to the
nature of the goods or services. It is protected without the necessity for proof
of secondary meaning.
Secondary Meaning

GR: descriptive terms are not ordinarily protectable.

Except: when they acquire a secondary meaning for the consuming public.
How to establish a secondary meaning: a plaintiff "must show that the
primary significance of the term in the minds of the consuming public is
not the product but the producer."

Proof of secondary meaning is an issue only with respect to descriptive

marks; suggestive and arbitrary or fanciful marks are automatically protected
upon registration, and generic terms are unprotectible even if they have
acquired secondary meaning.

Fair Use Defense

Even when a descriptive term has acquired a secondary meaning

sufficient to warrant trademark protection, others may be entitled to use
the mark without incurring liability for trademark infringement.

 In essence, the fair use defense prevents a trademark registrant from
appropriating a descriptive term for its own use to the exclusion of others,
who may be prevented thereby from accurately describing their own
goods.