Brief Fact Summary. Zatarain’s (Plaintiff) claimed that its trademark was a â€œsuggestiveâ€ term and that Oak Grove Smokehouse, Inc. (Defendant) should be liable for infringing it, but Oak Grove (Defendant) claimed it was a â€œdescriptiveâ€ term subject to a fair use exception.
Synopsis of Rule of Law. Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public.
To establish secondary meaning for a descriptive term, a high degree of proof is necessary.View Full Point of Law
Issue. Are descriptive terms protected by trademark without a showing of secondary meaning in the minds of the public?
Held. (Goldberg, J.) No. 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 â€œFish-Friâ€ 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 â€œfish fryâ€ 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.
Discussion. The trademark â€œfair useâ€ defense is different from the copyright law fair use doctrine. In the trademark law, a junior user is not liable of infringement of a senior user’s established trademark meaning if the mark is being used in its descriptive sense. This defense is only available to infringers of â€œdescriptiveâ€ marks.