A descriptive term identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients. Descriptive terms ordinarily are not protectable as trademarks, § 2(e)(1) of the Lanham Act, 15 U.S.C.S. § 1052(e)(1); they may become valid marks, however, by acquiring a secondary meaning in the minds of the consuming public. §§ 1052(e)(1) and (f). The distinction has important practical consequences, however; while a descriptive term may be elevated to trademark status with proof of secondary meaning, a generic term may never achieve trademark protection. A suggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and services. A suggestive mark is protected without the necessity for proof of secondary meaning. Arbitrary or fanciful terms bear no relationship to the products or services to which they are applied. Like suggestive terms, arbitrary and fanciful marks are protectable without proof of secondary meaning.
Zatarain’s (Plaintiff) manufactured and distributed food products. It registered the terms “Fish-Fri” and “Chick-Fri” as trademarks for its batter mixes used to fry foods. Oak Grove Smokehouse, Inc. (Defendant) began marketing a “fish fry” and a “chicken fry” in packages similar to those used by Plaintiff. Plaintiff brought suit for trademark infringement and unfair competition under the Lanham Act. The district court held that Zatarain’s (Plaintiff) trademark “Fish-Fri” was a descriptive term with an established secondary meaning, but held that the alleged infringers had a fair use defense to any asserted infringement of the term and that the registration of the term “Chick-Fri” should be canceled because it was a descriptive term that lacked any secondary meaning. Plaintiff appealed, claiming that its trademark “Fish-Fri” was a suggestive term that was automatically protected upon registration and therefore not subject to the “fair use” defense.
Are descriptive terms protected by trademark without a showing of secondary meaning in the minds of the public?
Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public. The district court was correct in applying the four prevailing tests of descriptiveness: 1) the dictionary definition, 2) the imagination test; usefulness of the term to competitors, and 4) actual use of the term by other merchants, in finding that “Fish-Fri”was a descriptive term identifying a function of the product being sold. Proof of secondary meaning is an issue only with respect to descriptive marks, and the burden of proof rests at all times with the plaintiff to establish such a meaning. The district court found that Plaintiff’s evidence established a secondary meaning for the term in the New Orleans area. However, Plaintiff has no legal claim to an exclusive right in the original, descriptive sense of the term. Therefore, Defendant is still free to use the words “fish fry” in the ordinary, descriptive sense, so long as such use will not tend to confuse customers as to the source of the goods. The record contains plenty of evidence to support the district court’s determination that Oak grove’s (Defendant) use of the term was fair and in good faith. Affirmed.