## Facts

- Zatarain’s, Inc. manufactured and sold numerous food products, including batter/coating mixes marketed under the marks “Fish-Fri” and “Chick-Fri.”
- Oak Grove Smokehouse, Inc. and Visko’s Fish Fry, Inc. sold competing coating/batter mixes and used the terms “fish fry” and “chicken fry” on their products.
- Zatarain’s sued under the Lanham Act and related unfair-competition theories, alleging infringement based on defendants’ use of “fish fry” and “chicken fry.”
- Defendants denied infringement, asserted statutory fair use for “fish fry,” and counterclaimed seeking cancellation of Zatarain’s registrations and damages under antitrust and related theories.
- The district court found “Fish-Fri” descriptive but protectable due to secondary meaning; nevertheless, it ruled defendants’ descriptive use of “fish fry” was fair use.
- The district court found “Chick-Fri” descriptive without secondary meaning and ordered its registration canceled; it dismissed defendants’ antitrust and related counterclaims.
- Zatarain’s appealed and defendants cross-appealed; the Fifth Circuit affirmed.

## Issues

1. Whether “Fish-Fri” and “Chick-Fri” are descriptive or suggestive marks, and what protection follows from that classification.
2. Whether Zatarain’s proved secondary meaning for each mark sufficient to make a descriptive term protectable.
3. Whether defendants could invoke statutory fair use to use “fish fry” descriptively despite “Fish-Fri” having secondary meaning.
4. Whether cancellation of the “Chick-Fri” registration and dismissal of defendants’ counterclaims were proper.

## Decision

- The Fifth Circuit held “Fish-Fri” is descriptive (not suggestive) because it directly conveys a batter mix used to fry fish and competitors have a legitimate need to use the words to describe similar products.
- The court affirmed that “Fish-Fri” had acquired secondary meaning in the relevant market based on long use, advertising and sales evidence, and consumer-survey evidence.
- The court nevertheless affirmed judgment for defendants on “Fish-Fri” because defendants used “fish fry” in good faith in its ordinary descriptive sense, within the statutory fair use doctrine.
- The court held “Chick-Fri” is descriptive and lacks secondary meaning; cancellation of the registration was affirmed.
- The court affirmed dismissal of antitrust, unfair trade practice, and labeling counterclaims for lack of evidentiary support.

## Legal Principles

- Trademark distinctiveness falls on a spectrum; descriptive terms directly convey a product feature or purpose, while suggestive terms require imagination to connect the mark with the goods.
- Descriptiveness may be evaluated through dictionary meaning, the imagination test, competitor need, and evidence of use by other merchants.
- A descriptive mark is protectable only upon proof of secondary meaning—consumer association of the term with a single source; the burden to prove secondary meaning remains with the party claiming rights.
- Statutory fair use permits good-faith use of another’s descriptive term “otherwise than as a mark” to describe one’s own goods; a holder of a descriptive mark cannot exclude competitors from ordinary descriptive usage.
- A descriptive mark lacking secondary meaning may be canceled despite registration.

## Conclusion

The Fifth Circuit affirmed that “Fish-Fri” is a valid descriptive mark with secondary meaning but does not bar competitors’ good-faith descriptive use of “fish fry,” and it affirmed cancellation of “Chick-Fri” for failure to prove secondary meaning while rejecting defendants’ counterclaims for insufficient proof.


Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)