United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY, UNITED STATES DISTRICT JUDGE.
Tamale Co., which is known as Iltaco and owns the registered
trademark PIZZA PUFFS, among other PUFFS trademarks, has sued
El-Greg, Inc. for trademark and trade dress infringement,
unfair competition, and false advertising under the Lanham
Act and state law. The lawsuit concerns El-Greg's use of
the product names "Pizza Pies (Puffs), "
"Chili Cheese Puff, " and "Veggie Pizza Puff,
" as well as similarities between the parties'
slogans and packaging. Illinois Tamale also has asserted a
breach of contract claim, alleging that El-Greg breached a
prior settlement agreement in which El-Greg agreed not to use
"Pizza Puff" to market, advertise, or identify its
goods. Each side has moved for partial summary judgment,
focusing on the trademark-related claims as opposed to the
breach of contract claim. El-Greg contends that it is
entitled to summary judgment on the ground that "pizza
puff" is a generic term not subject to trademark
protection and that Illinois Tamale has no rights in a
"Puffs" family of marks. Illinois Tamale argues
that El-Greg cannot establish that "pizza puff" is
a generic term; it also seeks to strike El-Greg's
affirmative defense of fair use. For the following reasons,
the Court denies both parties' motions.
Court takes the following undisputed facts from the
parties' respective Local Rule 56.1 statements and
Tamale and El-Greg manufacture and sell competing versions of
a frozen, hand-held stuffed sandwich or dough pocket filled
with meat, cheese, and sauce. Illinois Tamale has been making
and selling such products to wholesalers and retailers under
the names "Pizza Puff" and / or "Pizza
Puffs" since 1976. Pl.'s Stat. of Material Facts in
Supp. of its Mot. for Partial Summ. J. (Pl.'s SOF) ¶
3. Illinois Tamale describes its original Pizza Puff product
on its website as "Pork Sausage and Mozzarella Cheese
with our Home-Style Pizza Sauce Wrapped [in] a Soft Flour
Tortilla." Pl.'s App. in Supp. of Opp'n to
Def.'s Summ. J. Mot. (Pl.'s App.), Ex. C, at 3.
Illinois Tamale's slogan is "MAKERS OF THE
'ORIGINAL' PIZZA PUFFS." Am. Compl., Ex. E.
Although the word "pizza" is disclaimed, Illinois
Tamale owns a trademark registration for the PIZZA PUFFS
mark. See PIZZA PUFFS, Reg. No. 3, 628, 959 (May 26,
2009), Am. Compl., Ex. A. Illinois Tamale contends-and
El-Greg does not dispute-that the PIZZA PUFFS trademark has
attained "incontestable" registration status by
virtue of how long it has been registered and in continuous
use. See id.; 15 U.S.C. § 1065.
began manufacturing and selling the "Pizza Pie" in
1989. El-Greg does not dispute that its Pizza Pie was
intended to be a copy of Illinois Tamale's Pizza Puffs
product. Def.'s Resp. to Pl.'s SOF ¶ 11. The
Pizza Pie is described in El-Greg's advertising as
"Cooked Pork, Real Mozzarella Cheese, Homemade Pizza
Sauce with our blend of fresh spices wrapped in a flaky
tortilla pocket." Am. Compl., Ex. F. Both Illinois
Tamale and El-Greg have sold their products to Restaurant
Depot, apparently a restaurant supply firm, for many years;
the products are sold side-by-side. In 2010, El-Greg changed
its Pizza Pie label, but only for products sold at Restaurant
Depot. El-Greg's Pizza Pie label for Restaurant Depot now
refers to the product as "PIZZA
PIESTM(PUFFS)." See Am. Compl., Ex.
G-1. El-Greg's modified label has a layout similar to
Illinois Tamale's Pizza Puffs label, and it includes the
slogan "MAKERS OF THE 'ORIGINAL PUFFS, '"
which is strikingly similar to Illinois Tamale's slogan.
Id. The present lawsuit is based in large part on
these facts, which Illinois Tamale contends support its
claims of trademark and trade dress infringement, false
advertising, unfair competition, and deceptive trade
of this page intentionally blank)
Tamale offers the following photographs of the parties'
respective Restaurant Depot labels:
Compl., Ex. E.
Compl., Ex. G-1.
Illinois Tamale and El-Greg sell more than just Pizza Puffs
and Pizza Pies / Pizza Pies (Puffs). While certain of their
other products bear little resemblance to the products at
issue, others are variations on the same stuffed sandwich /
dough pocket theme. Additional stuffed sandwich items
produced by Illinois Tamale since it first introduced Pizza
Puffs include Sloppy Joe Puffs; Taco Puffs; Gyro Puff; Ham
& Cheese Puff; Pepperoni Pizza Puff; Beef Pizza Puff;
4-Cheese Pizza Puff; Ham, Cheese & Jalapeno Puff; BBQ
Pulled Pork Puff; Reuben Puff; and Breakfast Puff.
See Am. Compl., Exs. B-C; Pl.'s SOMF, Exs. A, C,
N. Illinois Tamale owns trademark registrations for a number
of these products, including Taco Puffs and the Gyro Puff.
See Am. Compl, Exs. B-C. As for El-Greg, it sells,
in addition to the Pizza Pie / Pizza Pies (Puffs) product, a
similar "Chili Cheese Puff" item. El-Greg also
makes and sells phyllo dough "Spinach Puff" hors
d'oeuvres. Illinois Tamale alleges that El-Greg's use
of the word "puffs" for its pocket sandwiches not
only infringes on its registered PIZZA PUFFS mark, but also
constitutes unfair competition and infringes on Illinois
Tamale's claimed "Puffs" family of marks.
has moved for summary judgment on Illinois Tamale's
federal trademark infringement claim (count 1) and for
partial summary judgment on all the unfair competition claims
(counts 2, 4, and 5). Specifically, El-Greg contends (1) that
"pizza puffs" is a generic term not subject to
trademark protection, and (2) that Illinois Tamale cannot
establish rights to a "Puffs" family of marks.
Illinois Tamale has cross-moved for partial summary judgment,
arguing that, as a matter of law, El-Greg cannot prove that
"pizza puffs" is a generic term, nor can it
establish a fair use defense.
is entitled to summary judgment only if it demonstrates that
"there is no genuine dispute as to any material fact and
[it] is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). A genuine dispute as to a material fact
exists "if the evidence is such that a reasonable jury
could return a verdict for the nonmoving party."
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). On cross-motions for summary judgment, the Court
draws inferences "in favor of the party against whom the
motion under consideration is made." Cremation
Soc'y of Illinois, Inc. v. Int'l Bhd. of
Teamsters Local 727, 869 F.3d 610, 616 (7th Cir.
2017) (citation omitted).
Genericness of ...