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Illinois Tamale Co. v. El-Greg, Inc.

United States District Court, N.D. Illinois, Eastern Division

March 29, 2018

ILLINOIS TAMALE CO., an Illinois corporation, Plaintiff,
v.
EL-GREG, INC., an Illinois corporation, Defendant.

          MEMORANDUM OPINION AND ORDER

          MATTHEW F. KENNELLY, UNITED STATES DISTRICT JUDGE.

         Illinois 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.

         Background

         The Court takes the following undisputed facts from the parties' respective Local Rule 56.1 statements and accompanying exhibits.[1]

         Illinois 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.

         El-Greg 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 practices.

         (remainder of this page intentionally blank)

         Illinois Tamale offers the following photographs of the parties' respective Restaurant Depot labels:

         (Image Omitted)

         Am. Compl., Ex. E.

         (Image Omitted)

         Am. Compl., Ex. G-1.

         Both 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.

         El-Greg 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.

         Discussion

         A party 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).

         A. Genericness of ...


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