Deep Fried Descriptiveness

Fish fry season in full swing here in Wisconsin, but let’s be honest, when isn’t it?  Our love of Friday Night Fish has even inspired websites like Madison Fish Fry to help hungry folk find their next beer battered entrée.  Fish fry products, however, are more than something to stock up for the week’s end.  It was the center of a trademark battle that shows just how important having a non-descriptive mark can be.

If the trademark describes the good, it is a weak mark because lots of other marks can be very similar.  Trademark law wants people and companies to be able to describe their products, and if you give a descriptive mark the strength to stop similar marks, it takes away the ability to describe what it is.  That is not good for anybody.  Louisiana Fish Fry Products, Ltd. (“LFFP”) found that out the hard way when it tried to register the trademark “LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!” (the “Mark”) for “Marinade; Sauce mixes, namely barbeque shrimp sauce mix; Remoulade dressing; Cocktail sauce, Seafood sauce, Tartar sauce; Gumbo file; and Cayenne pepper” (the “Products”).

Before allowing registration of the Mark, the United States Patent and Trademark Office (“USPTO”) required LFFP to disclaim the phrase “fish fry products” because that term simply described the Products.  In fact, it is pretty hard to describe those products in another way.  (In my world, it isn’t a fish fry without tartar sauce.)  The USPTO held firm in spite of LFFP’s arguments trying to persuade them otherwise.

LFFP pushed back saying that they have spent a lot of time and money using that phrase on their products.  Through those efforts, LFFP claimed to have acquired a level of distinctiveness that consumers no longer think of “fish fry products” as simply a description of the Products, but rather the consumer associates that phrase with LFFP, and LFFP alone when it comes to the Products.  This is called secondary meaning.

However, LFFP did not show any proof that when customers say that phrase, they thought of LFFP, rather than any of the other sources of those wonderful sauces to enhance the battered goodies.  The USPTO and the courts are very hesitant to take away the ability to describe something.  Therefore, marks that simply describe what something is are going to be very weak, at best.  LFFP’s refusal to admit that “fish fry products” describes their sauces led to the refusal of the entire mark.

The lesson here is actually twofold: 1) Don’t rely on a descriptive mark to be a strong trademark and 2) Recognize the type of mark you have and act accordingly.  If you don’t do both, you risk losing it all.

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