## Facts

- A.J. Canfield Company developed and sold a successful soft drink called “Diet Chocolate Fudge Soda.”
- Harold Honickman and Concord Beverage Company competed in the same regional markets and sold a diet soda described as “Diet Chocolate Fudge Soda.”
- Canfield claimed rights in the designation “Diet Chocolate Fudge Soda,” alleging Concord’s use constituted false designation of origin and related violations under Lanham Act § 43(a).
- Canfield moved for a preliminary injunction to stop defendants from using the name “Diet Chocolate Fudge Soda.”
- The district court denied preliminary injunctive relief, and Canfield appealed.

## Issues

1. Whether “chocolate fudge,” as used to describe diet soda, is generic (or merely descriptive without secondary meaning) and therefore unprotectable under Lanham Act § 43(a).
2. If the designation were protectable, what geographic scope would attach to Canfield’s asserted rights for purposes of injunctive relief.

## Decision

- The Third Circuit affirmed the denial of a preliminary injunction.
- On the record at the preliminary-injunction stage, the court held “chocolate fudge” for diet soda is generic and thus cannot serve as a protectable mark under § 43(a).
- Because the term was generic, the court did not reach extended analysis of secondary meaning or geographic scope.

## Legal Principles

- Trademark protection depends on classification along the distinctiveness spectrum: generic terms are never protectable; descriptive terms require secondary meaning; suggestive, arbitrary, and fanciful terms are inherently protectable.
- A designation that primarily denotes a product’s flavor or other functional characteristic, rather than source, tends toward genericness when consumers would understand it as naming a type of product.
- Competitive need is relevant to genericness where excluding competitors from using the term would make it difficult or impossible to describe an essential product attribute to consumers.
- A party seeking a preliminary injunction must show, among other things, a sufficient likelihood of success on the merits; inability to claim exclusive rights in a generic designation defeats that showing.

## Conclusion

The court concluded that “chocolate fudge,” used to describe a diet soda’s flavor, functioned as the name of a product type rather than a source identifier, leaving it in the public domain and supporting denial of preliminary injunctive relief.


A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986)