Zatarians, Inc. v. Oak Grove Smokehouse, Inc.
698 F.2d 786 (1983)

  • Zatarians manufactured "Fish-Fri" and "Chick-Fri" batter mixes for frying.
    • Both terms were registered trademarks for Zatarians.
  • Oak Grove marketed similar batter mixes, called "Fish Fry" and "Chicken Fry".
    • The Oak Grove mixes had different ingredients than the Zatarians mixes.
    • A second company, Visko also made a similar product with a similar name.
  • Zatarians sued Oak Grove and Visko for trademark infringement.
    • Oak Grove countersued in an attempt to cancel the trademark under 15 U.S.C. 1119 (the Lantham Act).
  • The Trial Court found for Oak Grove, Zatarians appealed.
    • The Trial Court found that the trademark "Fish-Fri" was a descriptive term with an established secondary meaning, and so Oak Grove had a right to use it via fair use.
    • The Court found that "Chick-Fri" was a descriptive term with no secondary meaning and therefore the trademark was canceled.
  • The Appellate Court affirmed.
    • The Appellate Court found that "Fish Fri" was a descriptive term, and in order to be trademarkable, there must be an established secondary meaning.
    • The Court found that in order to show a secondary meaning, Zatarians would have to show that the primary significance of the term in the minds of the consuming public is not the product but the producer.
      • The term "Chick-Fri" was a recent Zatarian's trademark, and the public didn't associate the term with Zatarian's specifically, so there is no secondary meaning. Therefore, the trademark is invalid.
      • However, the Court found that the public tended to associate the term "Fish Fri" with Zatarians so the term was trademarkable.
    • The Court found that even if a descriptive trademark has a legitimate trademark based on a secondary meaning, it is still possible for others to use the words, as longs as they only use them in a descriptive manner.
      • Although Zatarian's "Fish-Fri" was established in the public's consciousness, Oak Grove and Visko could use it as a descriptive term for their fish frying product. (The term "fish fry" appears in the dictionary.)
      • It would be difficult for Oak Grove and Visko to market their product without alerting consumers that it is used to fry fish.
    • The Court noted that the fact Zatarian's misspelled "fry" doesn't make the term "Fish-Fri" trademarkable.
  • Potential trademarks fall into four categories:
    • Generic
      • "The name of a particular genus or class of which an individual article is a member."
      • Things like "aspirin" or "thermos" or "cellophane"
      • These are never trademarkable.
      • If you could trademark these, it would bar people from marketing competing products.
    • Descriptive
      • "Identifies a characteristic of quality of an article or service."
      • Things like "Vision Center" or "Raisin Bran"
      • These are ordinarily not trademarkable, but might become trademarkable if they acquire a secondary meaning.
    • Suggestive
      • Suggests, rather than describes a particular characteristic, but requires the consumer to exercise some imagination in order to draw conclusions about the product.
      • Things like "Coppertone" or "Wrangler"
      • These are trademarkable without proof of secondary meaning.
    • Arbitrary or Fanciful
      • Bears no relations to the product or service it refers to.
      • Fanciful are things like "Kodak" that have no meaning.
      • Arbitrary are things like "Ivory Soap" that use real words but those words have no connection to the product.
      • These are trademarkable without proof of secondary meaning.