“Primary Significance” Controls Genericness for Incontestable Marks; Descriptive Fair Use Turns on Product Characteristics, Not Product Identity

1. Introduction

In Illinois Tamale Company, Inc. v. LC Trademarks, Inc., Illinois Tamale Company, Inc. (“Iltaco”)—seller of the “Pizza Puff” product and owner of federal registrations for “Pizza Puff” (registered 2009) and “Puff” (registered 2022)—sued LC Trademarks, Inc. and Little Caesar Enterprises, Inc. (collectively, “Little Caesars”) over the 2024 national launch and marketing of “Crazy Puffs.”

The immediate dispute arose at the preliminary-injunction stage: Iltaco sought to stop Little Caesars from using “Crazy Puffs,” “Pizza Puff,” and “Puff” in product names and advertising. The district court denied relief as to “Crazy Puffs” and “Puff” (no likelihood of confusion), but granted relief as to “Pizza Puff.” On appeal, the Seventh Circuit reversed the injunction as to “Pizza Puff” and affirmed the rest.

The key issues were (i) the proper test for whether an incontestable registered mark has become generic, and (ii) how to apply the “descriptive” element of the Lanham Act fair-use defense when the challenged phrase is used to describe a product.

2. Summary of the Opinion

Preliminary-injunction standard: The movant must show likelihood of success—more than a “better than negligible” chance. The panel noted uncertainty about whether the district court used the wrong standard and reiterated that applying an incorrect standard is an abuse of discretion. (Citing Minocqua Brewing Co. v. Hess; Richwine v. Matuszak; Grubhub Inc. v. Relish Labs LLC; Life Spine, Inc. v. Aegis Spine, Inc.; Ill. Republican Party v. Pritzker; Nken v. Holder; Lawson Prods., Inc. v. Avnet, Inc.; Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc..)
“Pizza Puff” injunction reversed: The district court erred in its protectability analysis by failing to apply the Lanham Act’s “primary significance” test for genericness and by relying on an “exclusive descriptor/competition” framing derived from dicta. The record evidence (especially survey results) was sufficient to overcome the presumption of validity for an incontestable mark at this stage, and Iltaco failed to show it was likely to prove protectability at trial.
Fair use misapplied: The district court also erred in rejecting Little Caesars’ fair-use defense because it required the term to describe the product as that product (i.e., that Crazy Puffs “are” pizza puffs) rather than asking whether “pizza puff” describes a characteristic of the goods.
“Crazy Puffs” and “Puff” injunction denial affirmed: The court upheld the finding of no likelihood of confusion, emphasizing that similarity is assessed by the mark as a whole and that “Crazy Puffs” makes a different commercial impression from “Pizza Puff.” (Citing Grubhub Inc. v. Relish Labs LLC; Est. of P.D. Beckwith, Inc. v. Comm'r of Pats.; Ty, Inc. v. Jones Grp., Inc.; Eli Lilly & Co. v. Nat. Answers, Inc..)

3. Analysis

3.1 Precedents Cited (and How They Shaped the Outcome)

A. Preliminary injunction framework and appellate review

Minocqua Brewing Co. v. Hess and Richwine v. Matuszak: supplied the standard of review (abuse of discretion; legal conclusions de novo; factual findings clear error).
Grubhub Inc. v. Relish Labs LLC and Life Spine, Inc. v. Aegis Spine, Inc.: stated the modern Seventh Circuit sequencing—likelihood of success and inadequacy of legal remedies/irreparable harm first, then balance of harms and public interest. The panel used this structure to stop the analysis once Iltaco failed on likelihood of success.
Ill. Republican Party v. Pritzker and Nken v. Holder: reinforced that a preliminary injunction demands more than possibility and is not satisfied by a “better than negligible” chance.
Lawson Prods., Inc. v. Avnet, Inc. and Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc.: anchored reversal where the district court applies an incorrect legal standard.
Bd. Of Trs. Of Univ. of Ill. v. Organon Teknika Corp. LLC and United States v. Accra Pac, Inc.: limited Little Caesars’ ability to appeal favorable rulings—explaining why it could not appeal statements about “Puff” when it ultimately won that issue.

B. Trademark infringement elements and fair use

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. and CAE, Inc. v. Clean Air Eng'g, Inc.: framed the core infringement test—protectable mark plus likelihood of confusion.
SportFuel, Inc. v. PepsiCo, Inc., Packman v. Chi. Trib. Co., and Sorensen v. WD-40 Co.: supplied the Seventh Circuit articulation of the Lanham Act fair-use defense: 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.: were decisive on the fair-use “descriptive” prong. The panel relied on these cases to reject the district court’s “must depict the product” approach and to restate the correct rule: a term is descriptive if it refers to a characteristic of the goods, not if it perfectly “brings to mind” the goods as such.

C. Distinctiveness, genericness, and incontestability

Platinum Home Mortg. Corp. v. Platinum Fin. Grp. and Mil-Mar Shoe Co. v. Shonac Corp.: provided the distinctiveness spectrum and the “clear error” review standard for categorizing marks.
Liquid Controls Corp. v. Liquid Control Corp. and Miller Brewing Co. v. G. Heileman Co.: set out what “generic” means and why generic terms are never protectable.
U.S. Pat. & Trademark Oﬀ. v. Booking.com B. V.: supplied the principal legal test the district court missed. The panel used it to emphasize that genericness turns on consumer perception and that courts may consider surveys, dictionaries, consumer/competitor usage, and other evidence of meaning to the public.
Wal-Mart Stores, Inc. v. Samara Bros., Inc. and Uncommon, LLC v. Spigen, Inc.: were used to explain secondary meaning and how descriptive terms can become source identifiers in the public mind.
Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp. and Door Sys., Inc. v. Pro-Line Door Sys., Inc.: supported the proposition that the presumption of validity from registration can “evaporate” once evidence of invalidity is introduced.
Eco Mfg. LLC. v. Honeywell Int'l, Inc.: reinforced incontestability doctrine: an incontestable mark has heightened protection, but can still be attacked if it has become generic.

D. The “wrong test” for genericness and the role of alternative descriptors

Ty Inc. v. Softbelly's Inc.: the district court relied on dicta about when courts are reluctant to take the “fateful step” of declaring a mark generic because it may impair competition. The Seventh Circuit clarified that this is not the legal test and cannot substitute for the statutory “primary significance” inquiry.
Tech. Publ'g Co. v. Lebhar-Friedman, Inc.: was central to correcting the district court’s “others can compete without the term” reasoning. The panel reaffirmed that a term does not become less generic merely because other phrases exist; protecting a generic term because alternatives exist “extend[s] protection to a generic term,” contrary to trademark law.

E. Evidence of meaning to the public (surveys, dictionaries, registrations)

Elliott v. Google, Inc.: cited for what a “Teflon survey” is and why it is a commonly accepted format for testing genericness.
Spraying Sys. Co. v. Delevan, Inc.: supported using third-party USPTO registrations as probative of widespread descriptive usage (even if not dispositive standing alone).
Facebook, Inc. v. Teachbook.com LLC: addressed the limits of judicial notice of USPTO registrations; the panel distinguished that from the admissibility/probative value question.
Illinois Tamale Co. v. El-Greg, Inc.: used to discount the probative weight of internet “copycat” recipes as evidence of genericness.
The panel also discussed reliability concerns about crowd-sourced dictionaries, referencing: Badasa v. Mukasey, Advanced Mech. Servs., Inc. v. Auto-Owners Ins. Co., Fleishman v. Cont'l Cas. Co., United States v. Lawson, and Hawkins v. City of Phila.. The court’s nuanced point: crowd-sourced definitions may be weak for “technical correctness,” but can still be relevant to what terms mean to the public—the core of the primary-significance inquiry.

F. Likelihood of confusion—marks assessed “as a whole”

Est. of P.D. Beckwith, Inc. v. Comm'r of Pats. and Grubhub Inc. v. Relish Labs LLC: drove the “commercial impression” rule—assess marks in their entirety, not by isolating shared components.
Ty, Inc. v. Jones Grp., Inc. and Eli Lilly & Co. v. Nat. Answers, Inc.: supported the district court’s discretion to weigh the similarity factor heavily and to find no confusion even where some factors might favor the plaintiff.

3.2 Legal Reasoning (What the Seventh Circuit Actually Did)

Re-centered genericness on the statutory test. The panel treated the Lanham Act’s “primary significance” test in 15 U.S.C. § 1064(3) as controlling and held the district court’s “exclusive descriptor/competition” analysis (borrowed from dicta in Ty Inc. v. Softbelly's Inc.) was legal error. The availability of alternative descriptors does not answer whether the public primarily understands “Pizza Puff” as a product category.
Reassessed the evidentiary record through the correct lens. The court highlighted the strength of Little Caesars’ Teflon survey (83.3% generic vs. 12.7% brand) as powerful evidence of primary significance and rejected the district court’s suggestion that ~10% brand association (a confusion-oriented observation in Ty Inc. v. Softbelly's Inc.) undermined genericness. Dictionaries (even crowd-sourced ones) and USPTO registrations were treated as relevant corroboration of public/industry usage.
Found Iltaco had not carried its preliminary-injunction burden on protectability. Even for an incontestable mark, once substantial evidence of genericness is introduced, the presumption can be overcome for purposes of likelihood-of-success. On this record, the court found Iltaco did not show a sufficient path to proving protectability at trial.
Corrected the fair-use “descriptive” inquiry. The panel held the district court demanded too much by asking whether Crazy Puffs “are” pizza puffs. Under Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd., descriptive use requires only a reference to a characteristic. Evidence that Crazy Puffs are “puffy” and contain pizza ingredients, plus the phrase “4 Hand-Held Pizza Puffs” describing quantity/type, supported descriptiveness.
Affirmed the “Crazy Puffs” result on holistic mark comparison. For likelihood of confusion, the panel endorsed looking at “Crazy Puffs” as a whole and accepted the district court’s conclusion that “Crazy” connects to Little Caesars’ established “Crazy” family, producing a distinct overall commercial impression from “Pizza Puff.”
Stopped the preliminary-injunction analysis once likelihood of success failed. Following Grubhub Inc. v. Relish Labs LLC, the court did not reach balance of harms or public interest as to “Pizza Puff,” because likelihood of success is a gateway.

3.3 Impact (Practical Effects on Trademark Litigation)

Genericness challenges to incontestable marks gain clearer structure. Trial courts in the Seventh Circuit are reminded that “primary significance” is not optional and cannot be replaced by competition-oriented shorthand. This matters most at the preliminary-injunction stage, where misframing the test can lead to overbroad restraints on marketplace language.
Survey evidence is positioned as especially potent in genericness disputes. The opinion signals that robust survey results indicating strong majority generic perception can be decisive in overcoming presumptions of validity—especially when the court is evaluating likelihood of success and not making final merits findings.
Fair use: “descriptive of goods” is about characteristics, not taxonomy. The decision should reduce erroneous denials of fair use where a challenged phrase plausibly describes texture, form, ingredients, size, or other traits—even if the product is not the “archetypal” item suggested by the phrase.
Likelihood-of-confusion analysis remains mark-as-a-whole and context sensitive. The affirmance on “Crazy Puffs” reinforces that sharing a common word (“Puff”) is often insufficient when the overall commercial impression differs and where a defendant uses prominent house marks and consistent trade dress.

4. Complex Concepts Simplified

Incontestable trademark: A registered mark that has been used continuously for five years after registration can become “incontestable,” meaning it receives stronger protection. But it can still be attacked if it has become generic (the public uses it as the name of the product itself).
Genericness and the “primary significance” test: A term is generic if, to the relevant public, it primarily means “the kind of thing” rather than “who makes it.” The question is consumer perception—not whether competitors have other words they could use.
Teflon survey: A consumer survey 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.
Descriptive fair use (Lanham Act): Even if a plaintiff has trademark rights, a defendant may use the same words fairly to describe its own goods—so long as the words are not used as the defendant’s brand indicator. “Descriptive” means describing a characteristic (e.g., ingredients or texture), not proving the product fits a strict category label.
Likelihood of confusion: “mark as a whole”: Courts compare the overall commercial impression of the marks, not just shared pieces. Two marks can share a word yet be dissimilar in total impression.

5. Conclusion

The Seventh Circuit’s decision does two main things. First, it firmly reasserts that genericness—especially for an incontestable mark—must be assessed by the Lanham Act’s “primary significance” test, and courts may not substitute a competition/alternative-descriptor inquiry for that statutory standard. Second, it corrects a recurring fair-use error: a term is “descriptive” if it refers to a characteristic of the defendant’s goods, not only if it perfectly names the defendant’s product category.

Together, these holdings tighten preliminary-injunction practice in trademark cases by demanding correct doctrinal tests at the threshold—reducing the risk that early-stage injunctions will remove commonly used product language from the marketplace without a sound showing of protectability and without properly considering descriptive fair use.