Philly cheesesteak makers sue U.S. Patent and Trademark Office over refusal to issue trademark

The owners of a Philadelphia eatery have filed suit against the director of the U.S. Patent

and Trademark Office over claims that the defendant refused to issue a valid trademark to the plaintiff’s cheesesteak sandwich.

Campo’s Deli at Market Inc., which has its flagship location at 214 Market St. in Philadelphia’s Old City section, claims in its federal civil action that the examining attorney for the U.S. Patent and Trademark Office refused registration of the plaintiff’s trademark, with the deli filing an appeal to the Trademark Trial and Appeal Board in late November 2010.

On March 29, 2012, during a hearing in Alexandria, Va., the board affirmed the PTO’s earlier ruling denying the trademark on the grounds of likelihood of confusion with previous trademarks and geographic refusal.

Philadelphia attorney J. Conor Corcoran filed a complaint on behalf of the deli on Oct. 4 at the U.S. District Court in Philadelphia.

The civil action claims that Campo’s Deli at Market, owned and operated by Mike and Denise Campo and their children, Mike and Mia, has been using its trademark since January 2009 in photographs, on store awnings and on the company’s website.

“Plaintiff’s use of the mark is strictly in accordance and association with its sale of Philadelphia Cheesesteak sandwiches, in a retail environment, for direct and immediate consumption of the same by the purchasing public,” the lawsuit reads. “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.’”

The crux of the complaint deals with the use of the apostrophe in the phrase “Philadelphia’s,” with the suit asserting that the 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.”

The complaint goes on to state that the 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 a 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.”

The suit states that the U.S. Patent and Trademark Office further denied the plaintiff’s trademark request on the grounds that there are three previously registered trademarks that the PTO believes are too similar to the plaintiff’s mark: Philadelphia’s Cheesesteak Co., Philadelphia Cheesesteak Co., and The Original Philadelphia Cheesesteak Co.

The suit, however, contends that the plaintiff’s mark and the others are entirely different, since the other three concern the identification of a particular company specializing in prepared foods, and not a mark identifying a particular kind of generic sandwich.

“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,” the lawsuit states. “They have different products, different consumers, and entirely different avenues of commerce.”

The plaintiff requests declaratory judgment that the requested trademark “Philadelphia’s Cheesesteak” is valid and fully enforceable, and ordering the director of the U.S. Patent and Trademark Office, David Kappos, who is the defendant in the litigation, to register the trademark.

 

The federal case number is 2:12-cv-05685-ER.