Plaintiff, T. Marzetti Company, appealed the district court’s finding that defendant’s, Roskam Baking Company’s, use of its trademark TEXAS TOAST on crouton packaging was non-infringing because the mark was generic.
Marzetti sells frozen Texas toast under the mark “New York Brand the Original Texas Toast,” and began using the mark on its croutons in 2007. Shortly after Marzetti began using the TEXAS TOAST mark on croutons, Roskam added a “Texas Toast” variety of crouton to its line of croutons. In February 2009, Marzetti filed trademark applications for TEXAS TOAST and THE ORIGINAL TEXAS TOAST with the United States Patent and Trademark Office and, in July 2010, upon publication for opposition, Roskam filed oppositions against the applications.
Marzetti sent Roskam a demand to cease and desist use of the TEXAS TOAST mark on its croutons, and when Roskam did not abide, Marzetti brought suit in federal court bringing both federal and state common law claims. Roskam raised the defense that the TEXAS TOAST mark applied to croutons was generic.
In determining whether the TEXAS TOAST mark was generic, the district court asked “whether the public perceives the term [TEXAS TOAST] primarily as the designation of the article.” In finding so, the district court stated, and the Sixth Circuit agreed, that TEXAS TOAST had come to mean “a bread product that is larger than normal, including sliced bread, frozen garlic bread, or croutons.” Thus, the Sixth Circuit upheld the lower court’s finding that the TEXAS TOAST mark, as applied to crouton packaging, is generic.