No. Zatarain's can't stop others from using the words 'fish fry'. The court said 'Fish-Fri' is a 'descriptive' name because it just describes what the product is for. Normally you can't trademark descriptive words, but because Zatarain's had used the name for so long, many people in New Orleans automatically thought of Zatarain's when they heard 'Fish-Fri'. Even so, the court said competitors have a 'fair use' right to use those words to honestly describe their own product. Since Oak Grove and Visko's weren't trying to copy Zatarain's look or fool customers, their use was fair. For 'Chick-Fri', the court said not enough people connected that name with Zatarain's, so they lost that trademark altogether.

The appeals court agrees with the lower court. 'Fish-Fri' is a descriptive name, but people in New Orleans connect it to Zatarain's, so Zatarain's gets some trademark protection. But Oak Grove and Visko's can still use 'fish fry' to honestly describe their own products since it won't confuse customers. For 'Chick-Fri', the court says it's descriptive but people don't link it to Zatarain's, so it doesn't get trademark protection. The court cancels the 'Chick-Fri' trademark. The court explains that to get protection for a descriptive name, a company must show that people primarily think of the company, not just the product, when they see that name. Surveys are the best way to show this. The court also explains the different types of trademarks, from generic to unique, and the protection each gets.

We agree with the lower court. 'Fish-Fri' is a descriptive name, but people in New Orleans connect it to Zatarain's, so Zatarain's gets some trademark protection. But Oak Grove and Visko's can still use 'fish fry' to honestly describe their own products since it won't confuse customers. For 'Chick-Fri,' we say it's descriptive but people don't link it to Zatarain's, so it doesn't get trademark protection. We cancel the 'Chick-Fri' trademark. We explain that to get protection for a descriptive name, a company must show that people primarily think of the company, not just the product, when they see that name. Surveys are the best way to show this. We also explain the different types of trademarks, from generic to unique, and the protection each gets.

T] he authorities are in agreement that survey evidence is the most direct and persuasive way of establishing secondary meaning

A mark is descriptive if it "identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients."

Courts and commentators have traditionally divided potential trademarks into four categories that may be classified as (1) generic,(2) descriptive,(3) suggestive, or (4) arbitrary or fanciful.

—alleged infringers were free to use words contained in a trademark "in their ordinary, descriptive sense, so long as such use [did] not tend to confuse customers as to the source of the goods

Arbitrary or fanciful terms "bear no relationship to the products or services to which they are applied."

—evidence relevant to determination of secondary meaning includes (1) length and manner of the use of the mark,(2) nature and extent of advertising and promotion of mark,(3) volume of sales, and (4) instances of actual confusion

A third test used to classify descriptive marks is " `whether competitors would be likely to need the terms used in the trademark in describing their products.'"

First, BRIZZY is not descriptive, because it does not "convey [] an immediate idea" about the characteristics of hard seltzers.

Descriptive marks are protectable only if there is proof they have acquired secondary meaning for the consuming public.

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 or services. "

No. A competitor's good faith use of a descriptive term in its ordinary descriptive sense does not constitute infringement, even if that term has acquired secondary meaning as a trademark. The court found that 'Fish-Fri' is a descriptive term, as it conveys an immediate idea of the product's function. While Zatarain's successfully established that 'Fish-Fri' had acquired a secondary meaning in the New Orleans area through advertising, sales, and long use, this protection does not grant a monopoly over the primary, descriptive meaning of the words. Oak Grove and Visko's were entitled to the 'fair use' defense because they used 'fish fry' in its ordinary descriptive sense, not as a trademark, and their distinct packaging prevented a likelihood of consumer confusion. Regarding 'Chick-Fri,' the court found it was a descriptive term that had failed to acquire secondary meaning due to insufficient advertising and weak survey evidence, and therefore ordered the cancellation of its trademark registration.

The court affirms the district court's findings. 'Fish-Fri' is a descriptive term that has acquired secondary meaning in the New Orleans area, entitling Zatarain's to trademark protection. However, Oak Grove and Visko's are still entitled to use 'fish fry' in its primary descriptive sense under the 'fair use' defense, as there is no likelihood of consumer confusion. Regarding 'Chick-Fri', the court agrees that it is a descriptive term lacking secondary meaning, and therefore not entitled to trademark protection. The court upholds the cancellation of the 'Chick-Fri' trademark registration. The court emphasizes that to establish 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. Survey evidence is the most direct and persuasive way of establishing secondary meaning. The court also clarifies the classification of trademarks into generic, descriptive, suggestive, and arbitrary or fanciful terms, each with varying degrees of protection.

We affirm the district court's findings. 'Fish-Fri' is a descriptive term that has acquired secondary meaning in the New Orleans area, entitling Zatarain's to trademark protection. However, Oak Grove and Visko's are still entitled to use 'fish fry' in its primary descriptive sense under the 'fair use' defense, as there is no likelihood of consumer confusion. Regarding 'Chick-Fri', we agree that it is a descriptive term lacking secondary meaning, and therefore not entitled to trademark protection. We uphold the cancellation of the 'Chick-Fri' trademark registration. We emphasize that to establish 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. Survey evidence is the most direct and persuasive way of establishing secondary meaning. We also clarify the classification of trademarks into generic, descriptive, suggestive, and arbitrary or fanciful terms, each with varying degrees of protection.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.

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