Primary-Significance Governs Genericness (Not “Exclusive Descriptor”): Survey-Driven Reversal of “Pizza Puff” Preliminary Injunction

Case: Illinois Tamale Company, Inc. v. LC Trademarks, Inc. and Little Caesar Enterprises, Inc. (7th Cir. Jan. 16, 2026)
Posture: Interlocutory appeals from a preliminary injunction order in a Lanham Act case.

1. Introduction

This dispute pits a long-standing Chicago food company, Illinois Tamale Company, Inc. (“Iltaco”), against Little Caesars, a national pizza chain, over Little Caesars’ 2024 launch and advertising of its “Crazy Puffs” product. Iltaco owns federal registrations for “Pizza Puff” (registered 2009; treated as incontestable in the opinion) and “Puff” (registered 2022), and it sells stuffed sandwich products under those marks. Little Caesars markets “Crazy Puffs” using its established “Crazy” family of marks and trade dress, and in some advertising includes the descriptive line “4 Hand-Held Pizza Puffs.”

The core issues on appeal were whether Iltaco was entitled to preliminary injunctive relief barring Little Caesars from using (i) “Pizza Puff,” (ii) “Crazy Puffs,” and/or (iii) “Puff,” and—most importantly—whether Iltaco had shown a sufficient likelihood of success on the merits as to protectability and defenses.

2. Summary of the Opinion

The Seventh Circuit affirmed in part and reversed in part. It reversed the portion of the preliminary injunction that barred Little Caesars from using “Pizza Puff,” holding that the district court made material legal errors in assessing (a) whether “Pizza Puff” is generic under the Lanham Act’s “primary significance” test and (b) whether Little Caesars’ use could qualify as descriptive “fair use.” It affirmed denial of injunctive relief as to “Crazy Puffs” and “Puff,” finding no clear error in the district court’s determination that Iltaco failed to show a likelihood of confusion as to those terms.

3. Analysis

3.1. Precedents Cited

The opinion is precedent-heavy and uses earlier decisions to (i) fix the preliminary-injunction standard, (ii) restate the trademark validity spectrum, (iii) correct the genericness framework for incontestable marks, (iv) sharpen the fair-use descriptiveness inquiry, and (v) reinforce a “mark-as-a-whole” approach to similarity.

• Minocqua Brewing Co. v. Hess and Richwine v. Matuszak: cited for the appellate standard of review (abuse of discretion; de novo for legal conclusions; clear error for factual findings).
• Grubhub Inc. v. Relish Labs LLC and Life Spine, Inc. v. Aegis Spine, Inc.: establish the preliminary-injunction elements, including the requirement of showing likelihood of success and inadequacy of legal remedies; they also situate the Lanham Act’s rebuttable presumption of irreparable harm upon a showing of likely success.
• Ill. Republican Party v. Pritzker and Nken v. Holder: used to reject a diluted merits standard (“better than negligible”) and to emphasize the movant’s “significant burden.”
• Lawson Prods., Inc. v. Avnet, Inc. and Arwa Chiropractic, P.C. v. Med-Care Diabetic & Med. Supplies, Inc.: support the proposition that applying the wrong legal standard is itself an abuse of discretion.
• KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., CAE, Inc. v. Clean Air Eng'g, Inc., SportFuel, Inc. v. PepsiCo, Inc.: supply the core Lanham Act infringement formulation (protectability + likelihood of confusion) and the role of defenses.
• Packman v. Chi. Trib. Co. and Sorensen v. WD-40 Co.: articulate the Seventh Circuit’s fair-use framework and its elements (non-trademark use, descriptive use, fair and good faith use).
• Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Mil-Mar Shoe Co. v. Shonac Corp., Liquid Controls Corp. v. Liquid Control Corp., Miller Brewing Co. v. G. Heileman Co.: guide classification along the distinctiveness spectrum and the consequences of genericness (no protection “under any circumstances”).
• U.S. Pat. & Trademark Off. v. Booking.com B. V. and Wal-Mart Stores, Inc. v. Samara Bros., Inc.: confirm the “primary significance” test for genericness and the evidentiary universe relevant to consumer perception (surveys, dictionaries, usage by consumers and competitors, etc.).
• Ty Inc. v. Softbelly's Inc.: the district court relied on its “exclusive descriptor” language; the Seventh Circuit characterized that language as not the controlling genericness test and reaffirmed that Ty itself recognized “primary significance.”
• Tech. Publ'g Co. v. Lebhar-Friedman, Inc.: crucial to the opinion’s doctrinal correction: genericness is not avoided because competitors could use alternative terms; protecting a generic term because alternatives exist would be “at odds with trademark law.”
• Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp. and Door Sys., Inc. v. Pro-Line Door Sys., Inc.: invoked to describe how the presumption of trademark validity “evaporates” once evidence of invalidity is introduced.
• Eco Mfg. LLC. v. Honeywell Int'l, Inc.: cited for the rule that an incontestable mark can be attacked only by showing it has become generic.
• Spraying Sys. Co. v. Delevan, Inc.: used to support reliance on third-party USPTO registrations as evidence of widespread descriptive (and here, potentially generic) usage, including that inactive registrations may remain probative.
• Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd.: central to the fair-use correction: a descriptive term need not “depict” the product; it must only refer to a characteristic of the product.
• Est. of P.D. Beckwith, Inc. v. Comm'r of Pats.: reinforces that likelihood-of-confusion analysis looks at the “commercial impression” of a mark “as a whole.”
• Ty, Inc. v. Jones Grp., Inc. and Eli Lilly & Co. v. Nat. Answers, Inc.: cited for flexibility in weighting likelihood-of-confusion factors and the centrality of similarity of marks.
• 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” favorable rulings as to “Puff.”
• Illinois Tamale Co. v. El-Greg, Inc.: used to discount the probative force of online recipes as evidence of genericness.

3.2. Legal Reasoning

A. Preliminary Injunction Merits: “More than a mere possibility”

The Seventh Circuit underscores that a preliminary injunction requires a robust merits showing. The movant must do more than show a “better than negligible” chance; it must show a genuine likelihood of success and explain how it will prove key elements. This framing matters because the panel uses it to justify stopping the preliminary-injunction analysis once Iltaco fails on likelihood of success, without reaching balancing of harms or public interest.

B. Protectability of an incontestable mark: the court must apply the Lanham Act’s “primary significance” test

The district court upheld “Pizza Puff” as protectable largely because competitors could “compete effectively” without using the phrase. The Seventh Circuit treated that approach as a legal error because it is not the statutory test for genericness. Under 15 U.S.C. § 1064(3) and U.S. Pat. & Trademark Off. v. Booking.com B. V., the inquiry is whether the term’s primary significance to the relevant public is the product category rather than a source-indicator.

Applying the correct framework, the panel considered the kinds of evidence Booking.com highlights:

• Consumer survey evidence: Little Caesars produced a Teflon survey showing 83.3% of relevant consumers perceived “pizza puff” as a common (generic) term, and 12.7% as a brand name. The district court discounted this by citing dicta from Ty Inc. v. Softbelly's Inc. about 10% association potentially supporting confusion. The Seventh Circuit rejected that move as mismatched to “primary significance,” noting that majority usage controls genericness and that 80%+ generic perception is strong evidence.
• Dictionaries (including crowd-sourced): The panel treated crowd-sourced dictionary definitions as relevant to public perception even if less reliable for “technical” meaning. The court did not deem them dispositive but counted them as weighing toward genericness.
• Industry and USPTO usage: Third-party USPTO registrations and applications using “pizza puff” descriptively were treated as probative in the manner of Spraying Sys. Co. v. Delevan, Inc., including the proposition that inactive registrations can still carry evidentiary weight.
• Lower-value signals: Online recipes were discounted (per Illinois Tamale Co. v. El-Greg, Inc.) and menus were treated as ambiguous because Iltaco supplies products to third-party restaurants, complicating whether “pizza puff” was used generically or to refer to Iltaco’s brand.

The panel concluded that this collective record was sufficient to overcome the presumption of validity (even for an incontestable mark, where the attack is genericness), and that Iltaco failed—at the preliminary stage—to show how it could rebut that evidence at trial. That failure alone defeated likelihood of success as to “Pizza Puff.”

C. Fair use: “descriptive” means “refers to a characteristic,” not “accurately names the product”

The Seventh Circuit identified an additional legal error: the district court rejected Little Caesars’ fair-use defense because it found Crazy Puffs did not “look like” a puff and therefore “Pizza Puffs” was not descriptive. The panel held this misstates the legal standard under Sands, Taylor & Wood Co. v. Quaker Oats Co. and F. Corp. of N. Am. v. F., Ltd.: a term is descriptive if it refers to a characteristic or quality of the goods, not if it literally depicts the product or if the product neatly fits a single culinary taxonomy.

On the record presented, “Pizza Puff” could describe a characteristic of Crazy Puffs (puffy/light/airy + pizza ingredients), and the phrase appeared in the informational line “4 Hand-Held Pizza Puffs,” which the panel viewed as plainly quantity/format description. Because the district court applied the wrong test and did not grapple with this evidence under the correct standard, the preliminary injunction could not stand.

D. “Crazy Puffs” and “Puff”: mark-as-a-whole similarity and deference to factor-weighting

As to “Crazy Puffs,” the panel affirmed denial of injunctive relief. Relying on Grubhub Inc. v. Relish Labs LLC (quoting Est. of P.D. Beckwith, Inc. v. Comm'r of Pats.), the court reiterated that similarity must be assessed by the mark’s overall commercial impression, not by isolating a shared element like “Puff.” The district court’s emphasis on “Crazy” as a brand-family signal and on the distinct overall impression fell within its discretion under Ty, Inc. v. Jones Grp., Inc., and was reinforced by Eli Lilly & Co. v. Nat. Answers, Inc. (dissimilarity can defeat confusion even if other factors favor the plaintiff).

As to “Puff,” the panel’s key procedural point was that Little Caesars could not appeal a favorable judgment denying the injunction. Substantively, the court left the district court’s “no likelihood of confusion” ruling intact.

3.3. Impact

• Re-centers genericness disputes on statutory “primary significance,” while expressly rejecting an “exclusive descriptor/competitors can compete without it” shortcut. District courts in the circuit are put on notice that competitors’ ability to use alternative terms does not resolve genericness.
• Elevates the practical importance of properly designed consumer surveys at the preliminary-injunction stage in trademark validity fights, especially where an incontestable mark is attacked as generic. The opinion signals skepticism toward minimizing strong “generic” majorities by importing likelihood-of-confusion logic.
• Clarifies evidentiary relevance in genericness inquiries: crowd-sourced dictionary definitions may be imperfect but can still inform public meaning; third-party USPTO materials can be probative (even if some are inactive), and internet “recipes” are weak indicators of genericness.
• Tightens fair-use analysis by focusing on “characteristics” rather than taxonomy, which can broaden defendants’ ability to describe products even when plaintiffs own registrations using the same words.
• Reinforces the “stop” rule in preliminary injunctions: once likelihood of success fails, courts should not proceed to balancing harms or public interest (as framed through Grubhub Inc. v. Relish Labs LLC).

4. Complex Concepts Simplified

• Incontestable trademark: After certain statutory conditions (including continuous use for five years), a registered mark gains heightened protection. But it can still be attacked if it has become generic.
• Generic vs. descriptive vs. suggestive:
  • Generic = the category name (never protected).
  • Descriptive = describes features/ingredients/qualities (protected only if it has “secondary meaning,” i.e., consumers associate it with one source).
  • Suggestive/arbitrary/fanciful = increasingly distinctive (generally protected without proving secondary meaning).
• Primary significance test: asks what most consumers think the term means—a type of product or a brand/source.
• Teflon survey: a consumer survey format that teaches respondents “brand name vs. common name” and then asks them to classify terms (used to test genericness).
• Fair use (Lanham Act): allows use of trademarked words when used not as a brand but to describe the defendant’s goods, fairly and in good faith.
• Mark “as a whole”: similarity and confusion are assessed by overall commercial impression, not by pulling out one shared word.

5. Conclusion

Illinois Tamale Company, Inc. v. LC Trademarks, Inc. is a corrective Seventh Circuit decision with two practical holdings: (1) courts assessing whether an incontestable mark has become generic must apply the Lanham Act’s “primary significance” test—competitors’ ability to use other terminology does not decide genericness; and (2) descriptive fair use turns on whether the term refers to a characteristic of the goods, not whether the goods neatly match the plaintiff’s named product category. By reversing the “Pizza Puff” injunction while affirming the denial as to “Crazy Puffs” and “Puff,” the court both tightened the merits threshold for preliminary relief and sharpened the doctrinal tools that govern genericness and fair-use disputes in food-and-product naming conflicts.