By JLTA Staff Writer

The Sixth Circuit recently affirmed a lower court’s holding that the mark “Texas Toast” on packages of croutons was generic and thus not protectable under trademark law. T. Marzetti Co. v. Roskam Baking Co., No. 10-3784, 2012 WL 1889310 (6th Cir. May 25, 2012). The plaintiff, Marzetti, began selling croutons under the “Original Texas Toast” label in 2007. Eight months later, the defendant, Roskam, after seeing Marzetti’s new line of croutons for sale, also expanded its crouton line to include “Texas Toast” croutons. After Marzetti sued, the district court conducted a four-day bench trial and heard an expansive array of evidence, including testimony from 11 witnesses and 60 pages of post-trial briefs. The district court ultimately determined that “Texas Toast” is generic when applied to croutons, and, even if it was protectable, that Roskam’s use of the term did not create a likelihood of confusion among consumers.

The Sixth Circuit affirmed the district court’s holding that the term was generic. Reviewing the district court’s findings of fact for clear error, the Sixth Circuit held that witness testimony had indeed shown that “Texas toast is commonly understood to describe a large bread product, not a producer of bread products.” Notably, even the plaintiff, Marzetti, had used the term generically on the back of its crouton package (to describe the large croutons as “Texas-Sized bites”), and in its FY 2008 Annual Report (by referring to Texas toast croutons as a type of crouton, and not as a brand).

Marzetti had also alleged in its appeal that the district court failed to apply the proper test to determine whether its mark was generic, but the Sixth Circuit brushed the argument aside as a sly attempt to circumvent the clearly-erroneous standard. Marzetti was asking for the court to strictly apply the “primary significance test” (a test followed in some other circuits) which requires a two-step analysis for determining whether a mark is protectable: “a determination, first, of the ‘genus’ of the product at issue and, second, the primary significance of the mark at issue to the relevant public when used in the genus of products.” But the Sixth Circuit had none of it: “Sixth Circuit precedent does not require rigid adherence to the primary significance test.”

Take a look at the two products lined up side by side. The plaintiff’s (Marzetti) crouton package is on the left. What do you think; does the Texas toast mark on both packages look more like the brand of crouton or its type/flavor?