Zatarains, Inc. v. Oak Grove Smokehouse, Inc.

698 F.2d 786 (5th Cir. 1983)

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Nature of the Case

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Facts

P manufactures and distributes 'Fish-Fri' and 'Chick-Fri.' Both are coating mixes for food. The term 'Fish-Fri' has been used by Zatarain's or its predecessor since 1950 and has been registered as a trademark since 1962. D began to use the term 'Chick-Fri' in 1968 and registered the term as a trademark in 1976. Four other companies market coatings for fried foods that are denominated 'fish fry' or 'chicken fry.' D began marketing a 'fish fry' and a 'chicken fry' in March 1979. P sued D alleging trademark infringement and unfair competition under the Lanham Act. D filed a counterclaim against P under the Sherman Act. D also counterclaimed for cancellation of the trademarks 'Fish-Fri' and 'Chick-Fri' under section 37 of the Lanham Act. The court classified the term 'Fish-Fri' as a descriptive term identifying a function of the product being sold and that it had acquired a secondary meaning in the New Orleans geographical area and therefore was entitled to trademark protection. The court held that D was entitled to fair use of the term 'fish fry' to describe characteristics of their goods. The court found that 'Chick-Fri' was a descriptive term that had not acquired a secondary meaning. It ordered that the trademark registration of 'Chick-Fri' should be canceled. Both parties appealed. P argues that 'Fish-Fri' is a suggestive term and therefore not subject to the 'fair use' defense.