The opinion of the court was delivered by: Matthew F. Kennelly, District Judge
MEMORANDUM OPINION AND ORDER
Hickory Farms, Inc., owner of the registered trademark BEEF STICK and former owner of the trademark TURKEY STICK, sued Snackmasters, Inc., for trademark infringement, unfair competition, and dilution under the Lanham Act and has also asserted parallel state law claims arising out of Snackmasters' use of these terms for its products. Snackmasters counterclaimed for a declaratory judgment that both marks are generic and for cancellation of the registered BEEF STICK trademark. Snackmasters has moved for summary judgment on all counts of its counterclaim and Hickory Farms' complaint. Snackmasters contends that it is entitled to judgment as a matter of law because both marks are generic. For the following reasons, the Court grants Snackmasters' motion.
For the purpose of defendant's summary judgment motion, the Court views the evidence in the light most favorable to the plaintiff, drawing reasonable inferences in its favor. Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002).
Hickory Farms and Snackmasters both sell meat products that they label as beef stick and turkey stick. Hickory Farms is a nationwide seller and marketer of food and gift items, including beef and cheese products. Hickory Farms contracts with various manufacturers to provide products that Hickory Farms then markets under its brand. The Hickory Farms beef stick and turkey stick are made exclusively from beef and turkey, respectively. The Hickory Farms brand name features prominently on its packages of beef and turkey sticks.
Hickory Farms has a registered trademark in its brand name. It also owns registration number 875,260, issued on August 19, 1969, for the mark BEEF STICK with "beef" disclaimed.*fn1
Hickory Farms contends that BEEF STICK achieved "incontestable" registration status in 1975.*fn2
Previously, Hickory Farms owned registration number 1,814,938 for the mark HICKORY FARMS TURKEY STICK with "turkey" disclaimed. The registration has since lapsed. Hickory Farms re-applied, but Snackmasters filed an opposition to the registration with the PTO. As a result of Snackmasters' objection, the PTO did not re-register the trademark for the term turkey stick. See Pl. Exs. 15-16.
Snackmasters has a registered trademark in its brand name. Snackmasters has manufactured and sold meat snacks since 1982, when its brand of turkey jerky was introduced. In 2002 or 2003, Snackmasters introduced its own beef stick and turkey stick products. The Snackmasters beef stick and turkey stick are made of certified natural beef meat and range-grown turkey meat, respectively, with seasonings and spices added to create pepperoni or teriyaki flavors. The meats are pre-cooked and then stuffed into an elongated collagen casing to create a meat product in the form of a stick. Snackmasters uses its brand name and the terms beef stick or turkey stick on its packaging and promotional materials for these products. Snackmasters attests that its use of the terms beef stick and turkey stick is consistent with its use of other generic terminology on its product packaging, such as the terms beef jerky, turkey jerky, salmon jerky, and ahi jerky.*fn3
Many other companies, such as Old Wisconsin, Klement's, Trader Joe's, Flat Iron, Fraboni, Bridgford, Jimmy Dean, Big Joe's, Slim Jim, Berlin Farms, Debbi D's, Tombstone, The Swiss Colony, and the Wisconsin Cheeseman, among others, also use the terms beef stick and turkey stick to refer to their meat products that are packaged in stick form. See Def. Exs. 22-77, 101-285. Hickory Farms acknowledges this. See Pl. Resp. to Counterclaim, Def. App. 1, Ex. I.
When a district court rules on a motion for summary judgment, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in [its] favor." Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 255 (1986). Entry of summary judgment is appropriate only when the pleadings, depositions, answers to interrogatories, admissions, and affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(c).
The law classifies trademarks into five categories of increasing distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992); Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001). The level of protection accorded to a mark depends on its distinctiveness. Mil-Mar Shoe Co., Inc. v. Shonar Corp., 75 F.3d 1153, 1156-57 (7th Cir. 1996). A descriptive mark, for example, is one that merely describes the ingredients, qualities, or characteristics of a good. Such marks typically are not protectable as trademarks. Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986). To prove that a descriptive mark is protectable, a plaintiff must demonstrate that the mark has achieved "secondary meaning" in the relevant market -- in other words, ...