Incontestable Marks and Genericness at the Preliminary-Injunction Stage: “Primary Significance” Governs, and Fair Use Describes Characteristics—not Identity

Introduction

In Illinois Tamale Company, Inc. v. LC Trademarks, Inc., Illinois Tamale Company, Inc. (“Iltaco”), a long-established Chicago food company, sued LC Trademarks, Inc. and Little Caesar Enterprises, Inc. (collectively “Little Caesars”) for trademark infringement and related unfair-competition claims under the Lanham Act and Illinois law. The dispute arose after Little Caesars launched and heavily marketed a national product called “Crazy Puffs,” whose advertising also included the line “4 Hand-Held Pizza Puffs.”

Iltaco owns federal registrations for “Pizza Puff” (registered in 2009 and treated as incontestable in the opinion) and “Puff” (registered in 2022), and sought a preliminary injunction barring Little Caesars from using “Crazy Puff(s),” “Pizza Puff,” and “Puff.” The district court denied relief as to “Crazy Puffs” and “Puff,” but granted relief as to “Pizza Puff.” On appeal and cross-appeal, the Seventh Circuit affirmed the denials and reversed the injunction as to “Pizza Puff,” holding that Iltaco failed to demonstrate the requisite likelihood of success on the merits for preliminary relief.

Summary of the Opinion

The Seventh Circuit held that the district court abused its discretion in enjoining Little Caesars’ use of “Pizza Puff” because the court (i) applied the wrong legal approach to genericness by not using the Lanham Act’s “primary significance” test and (ii) misapplied the fair-use “descriptive” prong by effectively requiring that Little Caesars’ product be a “pizza puff,” rather than asking whether “Pizza Puff” describes a characteristic of the product. As to “Crazy Puffs” and “Puff,” the court affirmed denial of preliminary relief because Iltaco did not show a likelihood of confusion; the similarity analysis properly considered the marks “as a whole,” and the district court did not clearly err in finding “Crazy Puffs” commercially distinct from Iltaco’s marks.

Analysis

1) Precedents Cited

A. Preliminary-injunction framework and standard of review

Minocqua Brewing Co. v. Hess and Richwine v. Matuszak: Restate the appellate standard—abuse of discretion for grant/denial of preliminary injunctions, de novo for legal conclusions, clear error for factual findings.
Grubhub Inc. v. Relish Labs LLC and Life Spine, Inc. v. Aegis Spine, Inc.: Confirm the threshold requirements (likelihood of success and irreparable harm), the Lanham Act’s rebuttable presumption of irreparable harm upon a merits showing (referencing § 1116(a)), and that harms-balancing/public interest come only after likelihood of success is established.
Ill. Republican Party v. Pritzker, Nken v. Holder, and Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc.: Emphasize the “significant burden” for preliminary relief; reject “mere possibility” or “better than negligible” as sufficient; and treat application of the wrong standard as an abuse of discretion.
Lawson Prods., Inc. v. Avnet, Inc.: Used to underscore that applying an incorrect preliminary-injunction standard (and other legal errors) can constitute abuse of discretion.

B. Protectability, genericness, and incontestability

Platinum Home Mortg. Corp. v. Platinum Fin. Grp. and Packman v. Chi. Trib. Co.: Provide the classic distinctiveness spectrum (generic to fanciful) and frame protectability analysis.
Liquid Controls Corp. v. Liquid Control Corp. and Miller Brewing Co. v. G. Heileman Co.: Define generic terms and reiterate that generic terms are never protectable.
U.S. Pat. & Trademark Off. v. Booking.com B. V., Wal-Mart Stores, Inc. v. Samara Bros., Inc., and Uncommon, LLC v. Spigen, Inc.: Used to distinguish descriptive marks and secondary meaning (though the key issue here is genericness of an incontestable mark).
Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp. and Door Sys., Inc. v. Pro-Line Door Sys., Inc.: Explain the presumption of validity from registration and how it “evaporates” when evidence of invalidity is presented.
Eco Mfg. LLC. v. Honeywell Int'l, Inc.: Reinforces that an incontestable mark enjoys heightened protection, rebuttable (as relevant here) by proof that it has become generic.
Ty Inc. v. Softbelly's Inc.: Central to the opinion—but primarily to correct the district court’s reliance on dicta about “exclusive descriptor” and competitive necessity; the Seventh Circuit re-centers the inquiry on “primary significance.”
Tech. Publ'g Co. v. Lebhar-Friedman, Inc.: Provides the crucial corrective principle: a term is not less generic simply because alternative descriptors exist; availability of other terms cannot justify trademarking a generic term.
Spraying Sys. Co. v. Delevan, Inc.: Supports using third-party registrations as probative evidence of descriptive (or generic-leaning) usage, and notes that even inactive registrations can still be probative.
Facebook, Inc. v. Teachbook.com LLC: Addressed in the parties’ dispute over the evidentiary reliability of USPTO records (distinguishing judicial notice from admissibility/probative value).
Mil-Mar Shoe Co. v. Shonac Corp. and F. Corp. of N. Am. v. F., Ltd.: Provide the clear-error standard for categorizing marks and supply the “characteristic of the product” formulation later used in the fair-use discussion.

C. Fair use and “descriptive” use

Sport-Fuel, Inc. v. PepsiCo, Inc., KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., and CAE, Inc. v. Clean Air Eng'g, Inc.: Supply the Lanham Act framework: infringement requires protectability plus likelihood of confusion; fair use is an affirmative defense.
Sorensen v. WD-40 Co. and Packman v. Chi. Trib. Co.: Set out the three-part fair-use test: non-trademark use, descriptive use, and fair/good-faith use.
Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd.: Drive the key holding that “descriptive” does not mean the term must literally depict the product; it need only refer to a characteristic.

D. Likelihood of confusion and “mark as a whole”

Est. of P.D. Beckwith, Inc. v. Comm'r of Pats.: Establishes the foundational rule that commercial impression comes from the mark “as a whole,” not dissected into isolated elements.
Ty, Inc. v. Jones Grp., Inc. and Eli Lilly & Co. v. Nat. Answers, Inc.: Confirm the district court’s flexibility in weighing likelihood-of-confusion factors, and the central importance of similarity of marks.

E. Appellate standing to challenge favorable rulings

Bd. Of Trs. Of Univ. of Ill. v. Organon Teknika Corp. LLC and United States v. Accra Pac, Inc.: Support the court’s refusal to entertain Little Caesars’ attempt to appeal statements about “Puff” where the judgment on that issue was favorable to Little Caesars (no injunction entered as to “Puff”).

2) Legal Reasoning

A. The “Pizza Puff” injunction failed at the likelihood-of-success threshold

The court’s analysis is best read as enforcing rigor at the first step of the preliminary-injunction inquiry: a trademark plaintiff seeking immediate injunctive relief must demonstrate how it will prove the key elements of the claim and overcome core defenses. Relying on Grubhub Inc. v. Relish Labs LLC, the panel reiterated that without likelihood of success, the court does not proceed to balancing harms or public interest.

B. Protectability: the district court used the wrong genericness test

The decisive correction concerns how courts evaluate whether an incontestable mark has become generic. The Lanham Act specifies that “primary significance” to the relevant public controls (§ 1064(3)), and U.S. Pat. & Trademark Off. v. Booking.com B. V. reaffirmed that consumer perception is the touchstone. The district court, however, leaned on language from Ty Inc. v. Softbelly's Inc. about not declaring a mark generic until it becomes an “exclusive descriptor” such that competitors “cannot compete effectively without using the name.”

The Seventh Circuit treated that “exclusive descriptor” notion as an explanation of why generic terms are unprotectable, not the legal test. It then relied on Tech. Publ'g Co. v. Lebhar-Friedman, Inc. to reinforce that a term does not become protectable merely because alternative phrases exist; trademark law does not extend protection to a generic term on the ground that competitors can use other words.

C. Evidence of genericness: the court re-centered the analysis on consumer perception

The panel held Little Caesars introduced sufficient evidence to overcome the presumption of validity (even acknowledging incontestability), including:

A Teflon survey showing 83.3% of relevant consumers perceived “pizza puff” as a common (generic) name and only 12.7% as a brand name. The district court’s reliance on a statement in Ty Inc. v. Softbelly's Inc. (about 10% association potentially supporting confusion) was deemed inapposite to “primary significance,” which asks for the principal meaning to consumers.
Crowd-sourced dictionary/encyclopedia definitions offered not as technical lexicography, but as evidence of public usage. The opinion acknowledged reliability objections (with discussion of cases such as Badasa v. Mukasey, Advanced Mech. Servs., Inc. v. Auto-Owners Ins. Co., Fleishman v. Cont'l Cas. Co., and United States v. Lawson) yet treated such sources as relevant to consumer understanding.
Third-party USPTO usage, treated as probative (though not dispositive) under Spraying Sys. Co. v. Delevan, Inc., including the principle that inactive registrations may still illuminate descriptive usage.

With that record, the court concluded the presumption of validity was overcome and Iltaco did not adequately show how it would rebut the genericness showing at trial—making preliminary relief improper.

D. Fair use: “descriptive” use turns on characteristics, not categorical identity

Separately, the panel held the district court erred in rejecting Little Caesars’ fair use defense by reasoning that “Pizza Puffs” was not descriptive because the product “looks like” other items and it was “not apparent what part” is a “puff.” Citing Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd., the Seventh Circuit reiterated the correct inquiry: a descriptive term need only refer to a characteristic of the goods, not “bring to mind the product” as an exact depiction and not require that the goods be the named thing.

On the record, testimony that Crazy Puffs were “light and airy” and “puffy,” combined with the phrase “4 Hand-Held Pizza Puffs” describing what consumers receive, supported that “Pizza Puff” could function descriptively for Little Caesars’ product. Because the district court applied the wrong standard and did not grapple with that evidence, the injunction could not stand.

E. “Crazy Puffs” and “Puff”: similarity and commercial impression controlled

Affirming denial of injunctive relief on “Crazy Puffs” and “Puff,” the panel applied the “mark as a whole” principle from Est. of P.D. Beckwith, Inc. v. Comm'r of Pats., rejecting Iltaco’s effort to isolate “Puff” and treat shared word overlap as dispositive. The district court permissibly weighed similarity heavily (consistent with Eli Lilly & Co. v. Nat. Answers, Inc. and Ty, Inc. v. Jones Grp., Inc.), finding “Crazy” tied the product to Little Caesars’ established family of “Crazy” marks and created a different overall commercial impression than “Pizza Puff.”

3) Impact

Reaffirmation and enforcement of the Lanham Act’s genericness test. The opinion makes clear that, even with incontestable marks, courts must apply the statutory “primary significance” test and avoid drifting into competitor-need heuristics (such as “exclusive descriptor”). That doctrinal clarification matters most at the preliminary-injunction stage, where an incorrect test can quickly yield overbroad restraints on advertising language.
Survey evidence is positioned as especially powerful on genericness. By faulting the district court’s treatment of an 83.3% generic response as “not conclusive” based on confusion dicta, the decision signals that high-percentage survey results directly addressing genericness can be outcome-shaping when the governing question is principal consumer meaning.
Fair use gets practical breathing room for descriptive advertising. The court’s insistence that descriptiveness concerns characteristics (not whether the product perfectly matches a noun label) supports broader defensive use of descriptive phrases in marketing copy—particularly for food and consumer products whose names commonly blend ingredients and texture descriptors.
Reduced leverage for plaintiffs relying on overlapping generic/descriptive components. The “mark as a whole” analysis, combined with the genericness and fair-use holdings, limits the ability of plaintiffs to obtain preliminary injunctions based primarily on shared, arguably descriptive sub-terms (here, “puff(s)”).
Procedural reminder on appeals. The panel’s reliance on Bd. Of Trs. Of Univ. of Ill. v. Organon Teknika Corp. LLC and United States v. Accra Pac, Inc. underscores that parties generally cannot appeal favorable judgments merely to cleanse unfavorable reasoning—important in trademark cases where dicta about protectability might affect later phases.

Complex Concepts Simplified

“Incontestable” trademark: After certain statutory conditions (commonly continuous use for five years post-registration), a registrant can claim “incontestable” status, which strengthens the presumption that the mark is valid. But it can still be attacked on limited grounds—most relevant here, that it has become generic.
Genericness and “primary significance”: A term is generic if consumers primarily understand it as the name of a product category rather than a brand. The question is not “can competitors use other words,” but “what does the public mainly think this term means?”
Teflon survey: A consumer survey method that teaches respondents the difference between brand names and common names, then asks them to classify terms. It is commonly used to test whether a term is generic.
Fair use (trademark): Even if a plaintiff owns a mark, a defendant may use the same words descriptively (not as a brand) to describe its own product—so long as it is done fairly and in good faith. “Descriptive” means the words describe qualities or characteristics, not that the product must literally be the named item.
“Mark as a whole”: Courts compare the overall commercial impression of marks; sharing a single word does not automatically create confusion, particularly where the shared word is descriptive or common.

Conclusion

The Seventh Circuit’s decision narrows the availability of preliminary injunctions in trademark disputes where protectability and fair use are genuinely contested. The opinion’s central doctrinal contributions are (1) insisting that courts apply the Lanham Act’s “primary significance” test for genericness—rather than an “exclusive descriptor” or competitive-necessity proxy—and (2) clarifying that fair-use descriptiveness turns on whether words describe characteristics of the goods, not whether the goods perfectly match the label. In combination with a rigorous “mark as a whole” approach to similarity, the ruling strengthens doctrinal guardrails against early, speech-restrictive injunctions based on potentially generic or descriptive terminology.