Originally published October 11, 2012.
Via Courthouse News, a report of a trademark lawsuit that I’d think was merely “apostrophal” if not for the fact that that august publication says it’s for real — and because here’s the complaint off PACER. The story:
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 [sic] 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 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 apostrophe is worth saving; and the complaint (link above) is worth reading. Cooked up by Philadelphia’s J. Conor Corcoran, an acknowledged legal windmill-chaser, it is certainly far juicier than the standard fare, including ingredients such as:
16. 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.”
17. Plaintiffs 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.
18. 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 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.
Now, it is odd that the TTAB did not address the myocardial infarction argument in its August 7, 2012 decision (attached to the complaint). In such heart-rending situations I turn, naturally to John Welch, who explains like this:
I think Campo’s is saying that its “Philadelphia Cheesesteak” is the best in Philadelphia, or the one preferred by Philadelphians: i.e., of all the cheesesteaks in Philly, this is the one chosen by Philadelphia.
Which would, of course, make the mark geographically misdescriptive, cardiac-inducing-goodness or not. And what about that apostrophe that the Courthouse News people were so exercised about? The TTAB explains a matter of black-letter law:
Applicant’s mark is PHILADELPHIA’S CHEESESTEAK and registrant’s marks are PHILADELPHIA CHEESESTEAK CO. and design, PHILADELPHIA CHEESESTEAK CO. (in standard characters), and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. (in standard characters). The marks are very similar in sound, appearance and meaning because they contain the same words: “PHILADELPHIA” and “HEESESTEAK”. The inclusion or omission in the marks of an apostrophe “s” is an insignificant difference that is used to denote possession, and does not alter the similarity of the commercial impression of applicant’s mark to each of registrant’s marks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)(“The absence of the possessive form in applicant’s mark BINION has little, if any, significance for consumers in distinguishing it from the cited mark.”).
In fact, the complaint filed in federal court doesn’t really bring this issue up at all, unless you count that parenthentical bit in paragraph 16, but that distinction is not really central to the plaintiff’s claim, which seems less an issue of what the apostrophe “does” (i.e., it looks different so wouldn’t cause LIKELIHOOD OF CONFUSION) versus what it supposedly “means” (i.e., it means … um, something different).
Nu, so then why did Courthouse News focus on the apostrophe?
Basic journalism, of course: They needed a hook!
* A hoagie is what people in greater Philadelphia call a sandwich otherwise known as a submarine, hero or grinder sandwich (or other things). Shout out to former WPRB advertising client Hoagie Haven, which always comes to mind when I recall the central-Jersey days of my youth. Not that I can eat that stuff, mind you.