Intellectual Property Law

"Texas Toast" Generic for Big Croutons

By Michael Atkins

Plaintiff’s (left) and defendant’s use of “Texas Toast” with croutons

Not a Western District case, but an interesting one nonetheless.

T. Marzetti Co. sued Roskam Baking Company in the Southern District of Ohio, alleging that Roskam’s use of “Texas Toast” in connection with its croutons infringed Marzetti’s TEXAS TOAST trademark for croutons. Roskam defended in large part on the ground that “Texas Toast” is generic for large-size croutons. (Everything’s big in Texas.)

On May 27, after a bench trial, the court sided with Roskam. Here’s what it had to say on the issue of genericness:

“In this case ‘Texas Toast’ is generic. Texas Toast is commonly used as the name of a kind of good. Texas Toast has come to mean a bread product that is larger than normal, including sliced bread, frozen garlic bread, or croutons. Companies have been making and selling Texas Toast for many years, since 1995 when Marzetti started offering frozen, thickly sliced garlic bread in the freezer of grocery stores.

“Indeed, Marzetti acknowledges that other companies selling Texas Toast frozen garlic bread have not been using Texas Toast as a brand. Further, Marzetti relies upon the common understanding that Texas Toast means bigger than normal on the back of its crouton packages, referring to ‘bigger bites’ and ‘Texas-sized bites’ and representing that Texas Toast croutons are a large cut. In the manufacturing and marketing Texas Toast styled croutons, both Marzetti and Roskam rely upon the primary association of the public that Texas Toast conveys something about size.

“Marzetti has not met the burden to prove that the mark is not generic. Although Marzetti submitted trademark applications to the PTO to register Texas Toast and The Original Texas Toast, Marzetti’s own use of these terms convey an expectation of a larger than normal crouton. That use is consistent with the generic meaning of the words. Further, while Marzetti argues that Texas Toast and The Original Texas Toast are brands, the company’s own internal documents make reference to New York croutons. Marzetti’s annual report references Texas Toast croutons as one of the company’s products. Marzetti’s own consumer awareness study shows that none of the respondents identified, independent of any assistance, New York Brand The Original Texas Toast croutons as a product.”

The case cite is T. Marzetti Co. v. Roskam Baking Co., No. 09-584 (S.D. Ohio. May 27, 2010) (Marbley, M.J.).

Full post as published by Seattle Trademark Lawyer on June 10, 2010 (boomark / email).