(CN) – A Philadelphia delicatessen has sued the U.S. Patent and Trademark Office over an apostrophe, insisting that its “Philadelphia’s Cheesesteak” is “so superlative” so “gloriously gluttonous,” it could not possibly be confused with the generic “Philadelphia Cheesesteak.”
Campo’s Deli at Market sued U.S. Patent and Trademark Officer Director David Kappos in Philadelphia Federal Court.
Campo’s Deli, a “Mom and Pop cheesesteak and hoagie shop, run by Mike and Denise Campo and their children Mike and Mia,” applied for a trademark in 2009, were rejected in 2010, appealed, and were rejected again after an oral hearing in March this year. But because the appeal board reversed the PTO’s refusal of trademark under §§ 1 and 45 of the Trademark Act, “regarding sufficiency of evidence of trademark’s use by plaintiff in commerce,” the Campos appeal de novo.
The doughty family says it’s been using the trademark since at least Jan. 1, 2009 at four retail outlets, including the home stadia of the Phillies, the Flyers and the Sixers.
Getting down to brass apostrophes, the Campos insist, in their 4-page complaint: “Plaintiff’s mark is, first and foremost, the description of a particular kind of sandwich of a particular quality or standard – a sandwich so superlative, it could only be called ‘Philadelphia’s Cheesesteak.’
“Plaintiff’s mark is not, in any sense, an attempt to improperly control the phrase ‘Philadelphia Cheesesteak,’ which is, by contrast, a generic term to describe a generic kind of sandwich.
“The difference in the two phrases, of course, is an (‘s)[,] which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff – not just a Philadelphia Cheesesteak, but ‘Philadelphia’s Cheesesteak.’
“Plaintiff’s mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.
“For example, plaintiff needs its mark so that in pursuing its franchising aspirations, the purchasing public will know that plaintiff provides a particular kind of Philadelphia Cheesesteak, of such tremendous quality, such a gustatory delight, and such a propensity for myocardial infarction that it could only be called ‘Philadelphia’s Cheesesteak’ – the very best example of what is otherwise a very common sandwich.”
However, “In the interest of full disclosure,” the Campos acknowledge the PTO’s assertion that the PTO has issued three trademarks “which the PTO believes are too similar to plaintiff’s mark, to wit: Philadelphia’s Cheesesteak Co. with a design for ‘prepared foods, namely, meat’; Philadelphia Cheesesteak Co. for ‘prepared foods, namely, meat’; and, The Original Philadelphia Cheesesteak Co. for ‘prepared foods, namely, meat’.” [Trademark registration numbers omitted.]
Naytheless, the Campos insist that there could be no confusion as the owner of the three cited trademarks, The Original Philadelphia Cheesesteak Co., is a wholesaler of raw, sliced ribeye “for the use of cheesesteak retailers such as plaintiff. (In fact, this company provides plaintiff with the meat used in plaintiff’s sandwiches.) The cited marks concern the particular company itself.
“Plaintiff’s mark, by contrast, concerns not the identification of a company, but rather the identification of a particular kind of generic sandwich: not just a Philadelphia Cheesesteak, but ‘Philadelphia’s Cheesesteak.’
“There is, accordingly, no likelihood of confusion between the requested trademark for a type of sandwich – ‘Philadelphia’s Cheesesteak’ – and three marks for a company which produces wholesale sliced meat. They have different products, different consumers, and entirely different avenues of commerce.”
Quod erat demonstrandum, saith Campo’s Deli. It wants the trademark. It is represented by J. Conor Corcoran.
The Courthouse News database contains 58 lawsuits concerning cheesesteaks, 19 of them from Philadelphia and the Delaware Valley.
Is this a great country, or what?
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