Deli Sues Trademark Office, Claims Apostrophe Makes Its Cheesesteak Special
Posted Oct 11, 2012 4:30 AM CST
By Debra Cassens Weiss
A Philadelphia deli believes its cheesesteak is special, and the proof is in the apostrophe.
The deli appealed a decision by the Trademark Trial and Appeal Board that denied the mark on two grounds, the TTABlog says. The first: The mark is for a term that is primarily geographically descriptive. The second: The mark is confusingly similar to registered marks for the Philadelphia Cheesesteak Co., Philadelphia's Cheesesteak Co. and the Original Philadelphia Cheesesteak Co.
The suit (PDF) says the mark is not an attempt to improperly control the generic term “Philadelphia Cheesesteak.”
“The difference in the two phrases, of course, is an ('s),” the complaint says, “which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff—not just a Philadelphia Cheesesteak, but '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 suit also claims the owner of the registered marks is a wholesale supplier of raw meat. The deli, on the other hand, is seeking a trademark for a type of sandwich. "There is, accordingly, no likelihood of confusion," the suit says.