UnIP (UnIntellectual Property): “Texas Toast” Trademark

In an action for trademark infringement under 15 U.S.C. § 1125(a), the Sixth Circuit Court of Appeals upheld an Ohio District Court’s ruling in favor of defendant Roskam Baking Company.  Plaintiff, T. Marzetti Company, had alleged that it owned exclusive trademark rights in the term “Texas Toast” and that defendant’s use of “Texas Toast” for its croutons created a likelihood of consumer confusion.

The District Court, following a bench trial, held that “Texas Toast” was generic and not entitled to trademark protection, despite the fact that Plaintiff had appeared destined to obtain a USPTO trademark registration.  Relying upon key facts, including witness testimony establishing that “Texas Toast” is commonly understood to describe a large bread product rather the source of such large bread products, widespread third party use, and Plaintiff’s own generic use of the term, the Sixth Circuit affirmed.  It did not accept Plaintiff’s argument that the “primary significance test” should have been applied and reasoned that the clearly erroneous standard of review applied to the factual determination of genericness rather than the de novo standard of review for questions of law.

Needless to say, size does matter, especially when it comes to…croutons!

T. Marzetti Co. v. Roskam Baking Co.,No. 10-3784, __ F.3d __, 2012 WL 1889310 (6th Cir. May 25, 2012).




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