OTTO ROTH & COMPANY, INC., Appellant, v. UNIVERSAL FOODS CORPORATION Appellee., 640 F.2d 1317

Summary

Appellant applicant sought trademark registration for its products. Appellee opposer opposed appellant's registration and alleged that appellant's proposed trademark was likely to cause confusion based on appellee's prior and continuous use of its term for cheese products. The trademark office sustained appellee's opposition. On appeal the court reversed and held that a determination of the distinctiveness of appellee's mark was required. Appellee was previously denied a trademark because its term was considered merely descriptive. Under the Lanham Act, 15 U.S.C.S. §§ 2(d) and (e), appellee's opposition was entitled to be sustained if appellee's prior use created a likelihood of confusing consumers as to the source of the goods or that appellant's registration would frustrate appellee's right to use its term in a descriptive manner, free from harassment. To function as a trademark, appellee's term was required to be distinctive, either inherently or through a secondary meaning. ...