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132 SUBJECT MATTER: REQUIREMENTS FOR TRADEMARK PROTECTION
The cases cited above, establish that when a term becomes the generic name of the product
to which it is applied, grounds for cancellation exist. . . . [C]ancellation may be decreed at
any time if the registered mark has become “the common descriptive name of an article or
substance,” The whole of Registration No. 358,781 thus was properly canceled. With
respect to Registration No. 703,279 only a part has become generic and cancellation on
that ground should be correspondingly limited.
. . . The generic term for A&F’s ‘safari cloth Bermuda shorts’, for example, is ‘Bermuda
shorts’, not ‘safari’; indeed one would suppose this garment to be almost ideally unsuited
for the forest or the jungle and there is no evidence that it has entered into the family
for which ‘Safari’ has become a generic adjective. The same analysis holds for luggage,
portable grills, and the rest of the suburban paraphernalia, from swimtrunks and raincoats to
belts and scarves, included in these registrations. HW alleged that these registrations were
procured by fraud, a claim which, if successful, would deny incontestability to A&F’s marks,
see § 14(c), 15 U.S.C. § 1064(c). But these allegations seem to have meant no more than that
HW believed the terms to be merely descriptive and hence unregistrable, and that the Patent
Office must have been duped into registering them in the first place without proof of
secondary meaning. However, we regard these terms as suggestive rather than “merely
descriptive.” Moreover, even if they were the latter, assuming that the person filing the
applications made the required allegation that “no other person, firm, corporation, or
association, to the best of his knowledge and belief, has the right to use such mark in
commerce either in the identical form thereof or in such near resemblance thereto as might
be calculated to deceive,” see § 1(a)(1), 15 U.S.C. § 1051(a)(1), there is nothing to show that
such statements were knowingly false when made.
So much of the judgment as dismissed the complaint is affirmed; so much of the
judgment as directed cancellation of the registrations is affirmed in part and reversed in
part, and the cause is remanded for the entry of a new judgment consistent with this
opinion. No costs.
Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc.
698 F.2d 786 (5th Cir. 1983)
GOLDBERG, Circuit Judge.
This appeal of a trademark dispute presents us with a menu of edible delights
sure to tempt connoisseurs of fish and fowl alike. At issue is the alleged infringement
of two trademarks, “Fish-Fri” and “Chick-Fri,” held by appellant Zatarain’s, Inc.
(“Zatarain’s”). . . .
. . .
Throughout this litigation, Zatarain’s has maintained that the term “Fish-Fri” is a
suggestive mark automatically protected from infringing uses by virtue of its registration
in 1962. Oak Grove and Visko’s assert that “fish fry” is a generic term identifying a class
of foodstuffs used to fry fish; alternatively, Oak Grove and Visko’s argue that “fish fry” is
merely descriptive of the characteristics of the product. The district court found that “Fish-
Fri” was a descriptive term identifying a function of the product being sold. Having
reviewed this finding under the appropriate “clearly erroneous” standard, we affirm.
We are mindful that “[t]he concept of descriptiveness must be construed rather
broadly.” Whenever a word or phrase conveys an immediate idea of the qualities,
characteristics, effect, purpose, or ingredients of a product or service, it is classified as