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

Illinois Tamale Company, Inc. v. LC Trademarks, Inc. (7th Cir. Jan. 16, 2026)

1. Introduction

This Seventh Circuit decision arises from a branding dispute between Illinois Tamale Company, Inc. (“Iltaco”), a Chicago-based food company selling a tortilla-wrapped stuffed sandwich product under the registered marks “Pizza Puff” (registered in 2009; treated as incontestable) and “Puff” (registered in 2022), and LC Trademarks, Inc. and Little Caesar Enterprises, Inc. (collectively “Little Caesars”), which launched the baked cup-style pizza product “Crazy Puffs” nationwide in March 2024.

Iltaco sued under the Lanham Act and Illinois law and sought a preliminary injunction to stop Little Caesars from using “Crazy Puff(s),” “Pizza Puff,” and “Puff” in product names and advertising. The district court denied injunctive relief as to “Crazy Puffs” and “Puff”, but granted it as to “Pizza Puff.” Little Caesars appealed the injunction on “Pizza Puff,” while Iltaco cross-appealed the denial as to “Crazy Puffs” and “Puff.”

The Seventh Circuit reversed the injunction as to “Pizza Puff” and affirmed the denial as to “Crazy Puffs” and “Puff.” In doing so, the court sharpened two practical doctrinal points that frequently decide preliminary-injunction fights in trademark cases: (i) how to test whether an (even incontestable) registered mark has become generic, and (ii) what “descriptive” means in the Lanham Act’s classic fair-use defense.

2. Summary of the Opinion

Preliminary injunction standard: A movant bears a “significant burden” and must show more than a “mere possibility” of success; the court flagged that applying a “better than negligible” merits standard would be error (citing Nken v. Holder and Seventh Circuit preliminary-injunction cases).
“Pizza Puff” injunction reversed: The district court erred in finding Iltaco likely to succeed on the merits because:
- Genericness: The district court did not apply the Lanham Act’s “primary significance” test for whether “Pizza Puff” had become generic; it instead leaned on language from Ty Inc. v. Softbelly’s Inc. about whether competitors can “compete effectively” without the term—an incorrect legal standard.
- Fair use: The district court misapplied the fair-use “descriptive” prong by effectively requiring Little Caesars’ product to be a “puff” (or to “look” like a puff). Under Seventh Circuit precedent, a term is descriptive if it refers to a characteristic of the goods, not if it literally depicts the goods.
“Crazy Puffs” and “Puff” injunction denial affirmed: The district court did not clearly err in finding no likelihood of confusion as to “Crazy Puffs” when evaluating the mark’s overall commercial impression; similarity of marks can be dispositive. As to “Puff,” Little Caesars could not appeal because it prevailed on the “Puff” injunction request below.

3. Analysis

A. Precedents Cited (and How They Shaped the Holding)

1) Preliminary-injunction framework and appellate review

Minocqua Brewing Co. v. Hess (citing Richwine v. Matuszak): supplied the standard of review—abuse of discretion overall, legal conclusions de novo, factual findings for clear error. The court used this to justify correcting the district court’s legal tests for genericness and descriptiveness.
Grubhub Inc. v. Relish Labs LLC and Life Spine, Inc. v. Aegis Spine, Inc.: framed the required showings (likelihood of success, inadequate legal remedies/irreparable harm, then balancing and public interest). Critically, Grubhub provided the sequencing rule the panel applied: without likely success, courts do not reach balancing.
Ill. Republican Party v. Pritzker, Nken v. Holder: reinforced that a preliminary injunction requires more than a “mere possibility” of success—supporting the panel’s skepticism about any “better than negligible” merits standard.
Lawson Prods., Inc. v. Avnet, Inc. and Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc.: supplied the doctrinal bridge from “wrong legal standard” to “abuse of discretion.” The panel leaned on these to reverse without needing to reweigh every factual issue.

2) Appealability and “no appeal from a favorable judgment”

Bd. Of Trs. Of Univ. of Ill. v. Organon Teknika Corp. LLC and United States v. Accra Pac, Inc.: used to reject Little Caesars’ attempt to appeal adverse reasoning about “Puff” when the judgment on that issue favored it. This is a practical appellate reminder: parties must appeal judgments, not dicta or unfavorable commentary.

3) Trademark validity, distinctiveness, and genericness—especially for incontestable marks

Platinum Home Mortg. Corp. v. Platinum Fin. Grp. and Packman v. Chi. Trib. Co.: supplied the familiar distinctiveness spectrum (generic → descriptive → suggestive → arbitrary → fanciful), anchoring the court’s framing that generic terms are never protectable and descriptive terms require secondary meaning.
Liquid Controls Corp. v. Liquid Control Corp. and Miller Brewing Co. v. G. Heileman Co.: reinforced that generic terms are unprotectable “under any circumstances” and that industry usage can evidence genericness.
U.S. Pat. & Trademark Off. v. Booking.com B. V. (with Wal-Mart Stores, Inc. v. Samara Bros., Inc.): provided the Supreme Court articulation of consumer-perception focus and the kinds of evidence relevant to primary significance (surveys, dictionaries, consumer/competitor usage). The Seventh Circuit treated Booking.com as controlling on the consumer-perception inquiry.
Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp. (quoting Door Sys., Inc. v. Pro-Line Door Sys., Inc.): supplied the key evidentiary point about the registration presumption: it “evaporates” once evidence of invalidity is presented. The panel used this concept to explain why Little Caesars’ genericness evidence mattered even against a registered mark.
Eco Mfg. LLC. v. Honeywell Int’l, Inc.: described the heightened protection of an incontestable mark and the narrow pathway to defeat it—showing the mark has become generic.
Ty Inc. v. Softbelly’s Inc.: became the cautionary tale. The district court relied on Ty’s “fateful step”/“cannot compete effectively” language, but the panel emphasized that Ty itself stated the legal test is “primary significance,” and that the “exclusive descriptor” language was not the governing standard.
Tech. Publ’g Co. v. Lebhar-Friedman, Inc.: did the decisive corrective work. It established that a trademark owner cannot block descriptive usage merely because alternative words exist, and that “any product may have many generic designations”—so availability of synonyms does not negate genericness.

4) Evidence of genericness: surveys, dictionaries, and USPTO registrations

Booking.com (n.6): supplied the evidentiary menu (surveys, dictionaries, usage by consumers and competitors).
Elliott v. Google, Inc.: provided the definition and acceptance of a Teflon survey format, which the panel treated as substantial evidence when it showed 83.3% generic perception of “pizza puff.”
Spraying Sys. Co. v. Delevan, Inc.: supported considering third-party USPTO registrations as probative of widespread descriptive usage; also supported counting inactive marks as still probative.
Facebook, Inc. v. Teachbook.com LLC: used to reject Iltaco’s argument that USPTO registrations are categorically unreliable; the panel distinguished “judicial notice” concerns from evidentiary relevance.
Illinois Tamale Co. v. El-Greg, Inc.: used to discount the probative value of online recipes as genericness evidence because popular branded foods often spawn “copycat” recipes—so recipes alone do not show a term is generic.
The opinion also cited several cases about the unreliability of Wikipedia-like sources for technical truth (e.g., Badasa v. Mukasey, Advanced Mech. Servs., Inc. v. Auto-Owners Ins. Co., Fleishman v. Cont’l Cas. Co., United States v. Lawson) while distinguishing the specific use here: crowd-sourced definitions were offered as evidence of public meaning, which is the genericness inquiry’s core.

5) Fair use: what “descriptive” means

SportFuel, Inc. v. PepsiCo, Inc., Packman v. Chi. Trib. Co., and Sorensen v. WD-40 Co.: provided the Seventh Circuit’s three-part classic fair-use framework under § 1115(b)(4): non-trademark use, descriptive use, and good faith.
Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd.: supplied the key doctrinal correction the panel applied. A descriptive term need not “bring to mind” or depict the product itself; it suffices that the term refers to a characteristic or quality of the goods.

6) Likelihood of confusion: overall commercial impression and mark similarity

Grubhub Inc. v. Relish Labs LLC (quoting Est. of P.D. Beckwith, Inc. v. Comm’r of Pats.): provided the “mark as a whole” principle, preventing “Puff” from being isolated as the sole similarity driver between “Crazy Puffs” and “Pizza Puff.”
Ty, Inc. v. Jones Grp., Inc.: supported the district court’s flexibility to weigh certain confusion factors more heavily.
Eli Lilly & Co. v. Nat. Answers, Inc.: supported the conclusion that dissimilar marks can defeat likelihood of confusion even if other factors favor the plaintiff.

B. Legal Reasoning: The Doctrinal Moves that Decided the Case

1) Genericness of an incontestable mark: “primary significance” is mandatory, and “exclusive descriptor” is not

The district court treated “Pizza Puff” as protectable largely because competitors could “compete effectively” using other names (Hot Pockets, pizza rolls, etc.). The Seventh Circuit held this was the wrong legal yardstick. The Lanham Act sets the test: whether “the primary significance of the registered mark to the relevant public” is as the generic name for the goods. The availability of alternative terms does not answer that question and cannot substitute for it.

Applying the proper framework, the panel emphasized the strength of Little Caesars’ evidence:

Teflon survey: 83.3% of relevant consumers perceived “pizza puff” as a common/generic term, 12.7% as a brand name. The district court erred in discounting this on the basis that “as few as ten percent” association might still yield confusion (language drawn from Ty Inc. v. Softbelly’s Inc.); confusion tolerance does not redefine the “primary significance” inquiry for genericness.
Crowd-sourced dictionary definitions: While not conclusive as “technical truth,” these definitions were relevant to public meaning—the precise question in a genericness analysis.
Third-party USPTO usage: Registrations and applications using “pizza puff” descriptively were probative of industry usage; the court rejected arguments that “inactive” marks are irrelevant, relying on Spraying Sys. Co. v. Delevan, Inc..

The court also separated stronger from weaker proof: it viewed online recipes as low-value evidence (given copycat recipe culture) and treated restaurant-menu references as ambiguous because Iltaco sells into third-party restaurants (making it unclear whether menus referenced Iltaco’s branded product). But even after discounting those items, the panel held that the survey/dictionary/USPTO evidence was sufficient to overcome the presumption of validity and that Iltaco did not explain how it would overcome that showing at trial—fatal at the preliminary-injunction stage.

2) Fair use: “descriptive” focuses on characteristics of the goods, not whether the goods literally match the term

The district court rejected Little Caesars’ fair-use defense because its product “looks like a mini-pizza or a pizza muffin or a pizza cupcake or a pizza bite” and thus was not obviously a “puff.” The Seventh Circuit deemed that a misapplication of the fair-use “descriptive” prong: a term is descriptive if it refers to a characteristic of the goods.

On the record, a Little Caesars representative described Crazy Puffs as “light and airy” and “puffy,” and the product undeniably contains pizza ingredients. The phrase “4 Hand-Held Pizza Puffs,” in context, functioned as a description of quantity and type of item being sold. Because the district court used the wrong legal standard and did not grapple with that descriptive-use evidence, granting an injunction on “Pizza Puff” was an abuse of discretion.

3) “Crazy Puffs”: mark-as-a-whole analysis and the decisive role of overall commercial impression

For Iltaco’s cross-appeal, the Seventh Circuit affirmed the denial of an injunction on “Crazy Puffs” because likelihood of confusion must be judged by the mark’s overall commercial impression, not by isolating the shared element “Puff.” The district court reasonably found that “Crazy” tied Little Caesars’ product to its long-running family of “Crazy” marks and branding, while “Pizza Puff” described the ingredients. Given the court’s discretion to weigh the similarity factor heavily, and precedent recognizing similarity as often decisive, there was no clear error.

C. Impact

1) Practical consequences for incontestable marks

The decision underscores that “incontestable” does not mean “invulnerable.” In the Seventh Circuit, a defendant can defeat preliminary injunctive relief by mounting a robust genericness showing tied to the primary-significance consumer-perception test—especially with a well-constructed Teflon survey. Plaintiffs relying on incontestability should anticipate the need to affirmatively rebut survey-driven genericness evidence early, not only at trial.

2) Reduced leverage from “synonyms exist” arguments

The opinion sharply limits a recurring plaintiff move: arguing a term cannot be generic because competitors can use other descriptions. Citing Tech. Publ’g Co. v. Lebhar-Friedman, Inc., the panel reaffirmed that multiple generic designations can exist and that the availability of alternative words does not prevent a term from being generic.

3) A clarified (and more defendant-friendly) application of classic fair use in advertising copy

The court’s fair-use discussion is likely to be cited by defendants using contested phrases as descriptors within larger marketing statements. By rejecting any requirement that the product must “look like” the word used, the opinion reinforces a characteristic-based descriptiveness inquiry that can protect marketing language where it plausibly conveys product qualities (texture, form, contents) rather than brand source.

4) Evidence forecasting at the preliminary-injunction stage

The court repeatedly framed the preliminary-injunction burden as requiring a concrete showing of “how [the movant] proposes to prove” key elements (citing Grubhub Inc. v. Relish Labs LLC). In practice, this pushes trademark plaintiffs to come prepared not merely with registration certificates and anecdotes, but with a plan to answer consumer-perception evidence (surveys, marketplace usage) head-on.

4. Complex Concepts Simplified

Incontestable mark: A registered mark that has been used continuously for five years after registration and meets statutory requirements. It gets enhanced protection, but it still can be attacked as generic.
Genericness / “primary significance” test: A mark is generic if, to the relevant public, its main meaning is the product category, not the producer. The question is “What do consumers think this word names?”
Teflon survey: A consumer survey method that teaches respondents the difference between brand names and common names, then asks them to classify the contested term.
Classic fair use (Lanham Act § 1115(b)(4)): A defense allowing use of a term in its ordinary descriptive sense (not as a source identifier), so long as the use is descriptive and in good faith.
Likelihood of confusion: The core infringement question—whether consumers are likely to think the defendant’s goods come from, are affiliated with, or are sponsored by the plaintiff. Marks are compared by their overall commercial impression, not by isolating a shared word.
USPTO disclaimer: A statement in a registration application that the applicant does not claim exclusive rights to a particular term (here, Little Caesars disclaimed “Puffs”), often because it is descriptive or generic.
Trade dress: The overall look and feel of branding/packaging (colors, logos, presentation). The court noted Little Caesars’ heavy use of its established trade name and orange “Crazy” branding, which can reduce confusion risk.

5. Conclusion

Illinois Tamale Company, Inc. v. LC Trademarks, Inc. is most significant for two clarifications that will shape preliminary-injunction practice in Seventh Circuit trademark cases. First, courts must assess whether an (even incontestable) mark has become generic using the Lanham Act’s primary-significance consumer-perception test; it is legal error to substitute a “competitors can compete without the term” inquiry. Second, for classic fair use, a defendant’s descriptive use need only refer to a characteristic of the goods, not literally depict the goods or match a lay visual expectation. Applying those principles, the Seventh Circuit reversed the “Pizza Puff” injunction while affirming the denial of relief against “Crazy Puffs” and “Puff,” reinforcing that early injunctive relief in trademark disputes turns on disciplined consumer-perception analysis and correctly framed defenses, not on labels alone.