Zatarain's v. Oak Grove Smokehouse: Trademarks

Zatarain's FISH-FRI appeal gave trademark law its four descriptiveness tests and confirmed that competitors' fair use survives secondary meaning.

Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), decided February 25, 1983, is the case American trademark lawyers reach for when they need to explain where “descriptive” ends and “suggestive” begins. Judge Irving Goldberg, writing for a Fifth Circuit panel that included Judges Gee and Higginbotham, took a modest dispute over batter mix for frying fish and turned it into the canonical walkthrough of the four tests courts still use to classify word marks: the dictionary test, the imagination test, the competitors’ need test, and the third-party use test.

The opinion matters for a second reason that clearance and enforcement lawyers sometimes forget. Even after Zatarain’s proved that FISH-FRI had acquired secondary meaning in New Orleans, it still lost. The statutory fair use defense preserved its competitors’ right to call a fish fry a fish fry. Zatarain’s is therefore both a distinctiveness case and a limits-of-protection case, and the two halves teach a single lesson: rights in descriptive terms are always conditional.

At a glance

Case: Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)
Decided: February 25, 1983; opinion by Judge Irving L. Goldberg, joined by Judges Gee and Higginbotham; affirming the Eastern District of Louisiana
Holding: FISH-FRI is a descriptive term protectable only through secondary meaning, and even with secondary meaning competitors retain a statutory fair use right to employ “fish fry” descriptively; CHICK-FRI, lacking secondary meaning, was properly cancelled
Significance: The standard citation for the four descriptiveness tests and for the principle that fair use survives secondary meaning; final, and still good law

Two batter mixes and a crowded shelf

Zatarain’s, the New Orleans food company, sold a corn flour coating for frying fish under the registered mark FISH-FRI, used since 1950 and registered in 1962, and a companion seasoned chicken coating under the registered mark CHICK-FRI. In March 1979, Oak Grove Smokehouse of Baton Rouge began selling “FISH FRY” and “CHICKEN FRY” batter mixes in clear glassine packets; Visko’s Fish Fry, Inc. entered a year later with its own “fish fry.” Zatarain’s sued both for trademark infringement and unfair competition under the Lanham Act.

The district court found FISH-FRI descriptive but protected by secondary meaning in the New Orleans area, then held that the defendants were entitled to the fair use defense because they used the words in their ordinary descriptive sense. It found CHICK-FRI descriptive with no secondary meaning at all and ordered the registration cancelled. Zatarain’s appealed everything; the defendants cross-appealed from the dismissal of their counterclaims, which included a request for attorney’s fees under Lanham Act § 35. Reviewing the classifications under the clearly erroneous standard, the Fifth Circuit affirmed across the board.

The four tests for the descriptive-suggestive line

Judge Goldberg began with the familiar spectrum of Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976): generic, descriptive, suggestive, arbitrary or fanciful. The categories carry radically different consequences. A suggestive term is protectable the day it is adopted; a descriptive term earns protection only on proof of secondary meaning. Everything in the case turned on which side of that line FISH-FRI occupied, and the court’s enduring contribution was to organize the inquiry into four workable tests.

The dictionary test. Dictionary definitions are the natural starting point because they capture the ordinary significance of words to the public. Webster’s Third New International Dictionary defined “fish fry” as a picnic at which fish are caught, fried, and eaten, and as fried fish itself. A term whose plain definitions point directly at the product’s use is preliminary evidence of descriptiveness, and the phonetic spelling “Fish-Fri” changed nothing.

The imagination test. The most cited of the four asks how much imagination a consumer must exercise to connect the term to the goods. A term that requires “imagination, thought and perception” is suggestive; a term that directly conveys the product’s function is descriptive. FISH-FRI required no mental leap at all. As the court put it, even a consumer unfamiliar with the product “would doubtless have an idea of its purpose or function.” The connection was too close and direct to be anything but descriptive.

The competitors’ need test. Whether competitors are likely to need the term to describe their own products measures the same intuition from the supply side. Common sense, the court said, indicated that other merchants would find “fish fry” useful in describing their own batter mixes. Zatarain’s argued that rivals could coin other names, but the court rejected any premise that a product can be described in only one fashion; the question is whether the term is one competitors reasonably need, not whether alternatives exist.

The third-party use test. Finally, evidence of what the market actually does is telling. A number of companies besides Zatarain’s had chosen “fish fry” for their coatings, including Arnaud’s “Oyster Shrimp and Fish Fry,” which had competed with Zatarain’s for a decade or two. When sellers across the market independently reach for the same words, the words are most likely describing the goods rather than branding them.

All four tests pointed the same way. FISH-FRI was descriptive, and so, on parallel reasoning, was CHICK-FRI.

Secondary meaning: a close call, and a geographically small one

A descriptive term becomes protectable only when, in the public’s mind, its primary significance shifts from the product to the producer, the classic requirement of “a single thing coming from a single source.” Zatarain’s evidence was substantial but imperfect. It had spent over $400,000 advertising FISH-FRI between 1976 and 1981, and unit sales had grown steadily over decades. Yet as the court emphasized, the question is not the extent of promotional efforts but their effectiveness.

The survey evidence carried the day, barely. Zatarain’s expert conducted two surveys of women in the New Orleans area who fried fish at home: about 23 percent of telephone respondents and 28 of 100 mall respondents named FISH-FRI when asked about a product especially made for frying fish. The court noted the surveys’ flaw (no follow-up question asking who makes the product the respondent had in mind) and called the issue close, but it could not say the district court’s finding of secondary meaning in the New Orleans market was clearly erroneous. CHICK-FRI, in use only since 1968 and registered in 1976, had no comparable proof: Zatarain’s ran no direct advertising campaign for it, and the survey that helped FISH-FRI screened for people who fry fish, which told the court little about buyers of a chicken coating. Its registration fell under the cancellation power of 15 U.S.C. § 1119.

Fair use: winning secondary meaning and still not excluding competitors

The heart of the opinion for clearance lawyers is what happened next. Secondary meaning gave Zatarain’s rights only in the trademark sense of FISH-FRI. It acquired no exclusive right to the words in their “original, descriptive sense.” Under section 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115(b)(4), a defendant may use a descriptive term “fairly and in good faith only to describe to users” its own goods.

Oak Grove and Visko’s fit the defense squarely. They used “fish fry” to describe their products, not as a mark; they had never sought registration; they believed the words were ordinary English for the product category; and their packaging looked nothing like Zatarain’s. The district court found confusion at the grocery shelf virtually impossible, and the Fifth Circuit agreed the defendants were free to use the words in their ordinary descriptive sense so long as the use did not confuse customers about source. Two decades later the Supreme Court pushed the defense further in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), holding that fair use does not require the defendant to negate any likelihood of confusion. Zatarain’s supplied the doctrinal groundwork: descriptive words never fully leave the public domain.

Open questions

Zatarain’s organized the descriptiveness inquiry without mechanizing it, and the seams still show. The four tests have no fixed weights, and courts reach divergent results when the dictionary test and the imagination test pull in different directions, which keeps the descriptive-suggestive line the most litigated boundary in trademark law. The opinion also left the geography of secondary meaning underdeveloped: FISH-FRI’s protection was confined to the New Orleans area, but how a court should police rights that fade at a metropolitan border is a question the case raised more than it answered. And the survey criticism embedded in the opinion (association without a source-attribution follow-up) anticipated, without resolving, decades of methodological fights over how secondary meaning surveys must be framed.

Implications for brands and businesses

Name products above the descriptive line. Every dollar spent building secondary meaning in a descriptive term is a dollar a suggestive or arbitrary mark would not have required. Run a candidate name through the four Zatarain’s tests before adoption; if competitors would plausibly need the words, expect a long, expensive road at the USPTO and in court.
Secondary meaning is bought with evidence, not just advertising. Courts ask whether promotion worked, not how much it cost. Well-designed consumer surveys with source-attribution questions, sales trajectories, and market context matter more than gross spend.
A descriptive registration never silences honest description. Even a mark with secondary meaning cannot stop a rival’s good-faith, non-trademark use of the words. Enforcement letters aimed at plainly descriptive uses invite a fair use defense and, after KP Permanent Make-Up, can fail even where some confusion exists.
Weak siblings of strong marks are exposed. CHICK-FRI’s cancellation shows that a brand family’s junior members do not inherit the flagship’s secondary meaning. Registrations for descriptive line extensions need their own proof, or they are vulnerable under 15 U.S.C. § 1119.

Frequently asked questions

Are the four Zatarain’s tests still used today? Yes. Courts across the circuits continue to cite the dictionary, imagination, competitors’ need, and third-party use tests when sorting descriptive from suggestive marks, and the USPTO’s examination practice reflects the same considerations. No single test controls; they are converging lenses on how consumers and competitors actually use the words.

If a descriptive mark has secondary meaning, how can competitors still use the words? Because secondary meaning gives the owner rights only in the trademark significance of the term, not in its original descriptive sense. Under 15 U.S.C. § 1115(b)(4), a competitor may use the words fairly and in good faith solely to describe its own goods. Zatarain’s is the classic application, and the Supreme Court later confirmed in KP Permanent Make-Up that fair use can exist even alongside some consumer confusion.

Why was CHICK-FRI cancelled when FISH-FRI survived? Both were descriptive, but only FISH-FRI had proof of secondary meaning, and even that proof was limited to the New Orleans area. CHICK-FRI was a newer product, used only since 1968, with no direct advertising campaign behind it and survey evidence the court found close to worthless, so Zatarain’s could not show consumers associated the term with a single source. Without secondary meaning a descriptive registration cannot stand, and the court affirmed cancellation under 15 U.S.C. § 1119.