California Trademark Attorney® Blog

Philly Deli Refuses To Give Up Fight For Cheesesteak Trademark, Sues PTO

October 9, 2012

cheesesteak.jpgCalifornia - A Philadelphia deli sued U.S. Patent and Trademark Office Director David Kappos on Thursday after failing to convince the PTO or the office's Trademark Trial and Appeal Board to let it trademark the phrase "Philadelphia's Cheesesteak."

The deli is seeking a court declaration that the trademark is valid and fully enforceable and an accompanying order requiring Kappos to issue a registration for it on the Principal Register, according to TTABlog, which reported the lawsuit on Monday.
Campo's Deli at Market Inc. is a local Philadelphia mom and pop cheesesteak and hoagie shop run by Mike and Denise Campo and their family, with satellite locations at the Phillies stadium and the Flyers and Sixers arena.

Campo's originally filed its application with the PTO for registration of the trademark "Philadelphia's Cheesesteak" in June 2009. The PTO examining attorney ultimately refused registration, and Campo's appealed to the TTAB in November 2010.
In August the TTAB affirmed the PTO's justifications for refusing the trademark on the grounds of likelihood of confusion with previous marks as well as geographic refusal.
Campo's says it has been using the trademark since at least January 2009, strictly in association with its sale of cheesesteaks in a retail environment for direct and immediate consumption by the purchasing public.

The trademark describes "a sandwich so superlative, it could only be called 'Philadelphia's Cheesesteak,'" according to the complaint. The deli is not trying to improperly control the phrase "Philadelphia Cheesesteak," which is simply a generic term to describe a type of sandwich, it says.

"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,'" the complaint says.
The trademark is "descriptive of the unique and tremendously delicious goods [Campo's] 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," it says.

The deli needs to register the trademark in order to pursue its franchising aspirations, so that the purchasing public knows that it 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 complaint says.

Campo's could use the trademark at any store in any future location in the country, since it has nothing to do with the sandwich's geographic origin, the deli says.
"No customer at any such prospective location would be under the misconception that the sandwich purchased by the beach from a Campo's store is literally prepared in Philadelphia when, instead, it is prepared on location, at each satellite location, over a steaming hot griddle directly in front of the consumer," the complaint says.

In the TTAB's ruling, the board agreed with the PTO that the trademark is confusingly similar to three registered trademarks including "Philadelphia Cheesesteak Co.," and that the trademark is primarily descriptive.

But the existing trademarks concern the identification of a particular company specializing in prepared foods, namely meat, the complaint says. There is no likelihood of confusion between the requested trademark for a type of sandwich and the three trademarks for a company which produces wholesale sliced meat, it says.

Although the PTO has also refused to register the trademark on the grounds that the use of "Philadelphia's" is too geographically descriptive, the office has previously approved registrations for trademarks including "Philadelphia's Soft Rock Station," "Philadelphia's Big League Sandwich" and "Philadelphia's Home Town Builder," according to Campo's.