Illinois Tamale Co. v. El-Greg, Inc., No. 16 C 5387, Slip Op. (N.D. Ill. Mar. 29, 2018) (Kennelly, J.).

Judge Kennelly denied plaintiff Illinois Tamale’s and defendant El-Greg’s cross-motions for summary judgment in this Lanham Act dispute regarding Illinois Tamale’s PIZZA PUFFS trademarks.

As an initial matter, the Court refused to consider any crowd-sourced definition of a term. Because the definition could be edited by anyone, it is not sufficiently reliable and, therefore, not admissible.

El-Greg offered “significant evidence” suggesting that PIZZA PUFF was generic. On the other hand, Illinois Tamale produced evidenced from which a reasonable fact-finder could “just as well” find that PIZZA PUFF was not generic as used to denote Illinois Tamale’s products. Because of the conflicting evidence and the ability to draw conflicting conclusions, the Court denied summary judgment as to both parties’ genericness summary judgment motions.

Illinois Tamale produced sufficient evidence to permit a reasonable factfinder to conclude that Illinois Tamale had a valid family of PUFF marks. For example:

  • Illinois Tamale began selling products using Pizza Puffs, Taco Puffs, Beef Puffs and Sloppy Joe Puffs by at least the mid-1980s, before El-Greg began using its marks.
  • According to Illinois Tamale’s survey, 43% of respondents believed that Pizza Puffs and Taco Puffs were from the same or affiliated companies. Additionally, 35.5% believed the same for Pizza Puffs and Sloppy Joe Puffs.

While the factfinder may ultimately decide the case the other way, Illinois Tamale provided sufficient evidence to avoid summary judgment.

The Court held that there was a question of fact as to the last element of El-Greg’s fair use defense – whether El-Greg used the PIZZA PUFF mark “fairly and in good faith.” Because the analysis is inherently subjective, El-Greg’s undisputed awareness of Illinois Tamale’s PIZZA PUFF mark and its product labels were insufficient for summary judgment of no fair use.