BRICK OVEN for pizza is generic, any way you slice it

In Schwan's IP LLC v Kraft Pizza Company, the US Court of Appeals for the Eighth Circuit has affirmed a district court ruling that the term 'brick oven' for pizza is generic and therefore cannot be afforded trademark protection.

In March 2003 Schwan's began selling its FRESCHETTA brand of frozen pizzas under the additional name Brick Oven, a term that Kraft Pizza Company, part of the Kraft Foods group, had also considered using, but rejected, in connection with its line of frozen pizzas in early 2003. Several months after Schwan's launch of its Brick Oven line of pizzas, Kraft created and marketed its Tombstone Brick Oven style pizza. Schwan's sued Kraft for trademark infringement and Kraft filed for summary judgment on the basis that the term 'brick oven' is generic as used to identify pizza or, in the alternative, is descriptive and lacks secondary meaning. The district court granted Kraft's motion, finding the term 'brick oven' to be generic or, at the very least, descriptive without secondary meaning. Schwan's appealed.

The Eighth Circuit affirmed the district court ruling, explaining that a generic term is incapable of functioning as a trademark because it does not identify the source of a product, but rather the basic nature of the product; in other words, "it denotes the thing itself". As such, a party cannot have the exclusive right to use a generic term, regardless of whether the term is associated with a single source of the product, because third parties must be allowed to describe the fundamental characteristics of competing products.

In reviewing the evidence that supported a finding that the term 'brick oven' is generic, the Eighth Circuit cited the statement by the head of Schwan's FRESCHETTA brand that brick oven pizza is "a pizza that is cooked in a brick oven". Further, certain language in Schwan's patent application for its Brick Oven product supported the genericness of the term, and Schwan's had even certified to the US Department of Agriculture that it baked its pizza's crust in a "direct fire brick oven". Additionally, there was substantial evidence that third parties in the industry also used the term to identify pizza baked in a brick oven. Moreover, the US Patent and Trademark Office had denied registration of Schwan's trademark on three occasions, ultimately concluding that 'brick oven' was generic of frozen pizza and pizza in general. Schwan's attempts on appeal to distinguish restaurant pizza and frozen pizza markets were also unavailing where the head of the FRESCHETTA brand also testified that frozen pizza purchasers were merely a subset of restaurant pizza purchasers.

Finally, the Eighth Circuit rejected Schwan's argument that the district court erred in refusing to consider Schwan's survey evidence. The court held that where the term at issue was generic prior to its association with the product at issue in the case, survey evidence is irrelevant because it could only demonstrate that consumers had come to identify the term with that product and not that a generic term had become protectable as a trademark.

The decision is a reminder that language used in patent applications is often considered by trademark examiners when evaluating an application for trademark registration. Accordingly, it is important to counsel clients against adopting a mark that is similar to language in a utility patent that could call into question the distinctiveness of the mark. Further, attorneys are advised to review any patent application and registration associated with the product to be offered under the proposed mark to determine whether language in the patent could adversely affect the overall strength and registrability of the mark.

Linda Lamberson, McDermott Will & Emery LLP, Chicago

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