ILLINOIS TAMALE COMPANY, INC., doing business as ILTACO v. LC TRADEMARKS, INC. and LITTLE CAESAR ENTERPRISES, INC.
Nos. 24-3317, 25-1072, 25-1076 & 25-1112
United States Court of Appeals For the Seventh Circuit
ARGUED NOVEMBER 14, 2025 — DECIDED JANUARY 16, 2026
Appeals from the United States District Court for the Northern District of Illinois, Eastern Division. No. 1:24-cv-05210 — Jeremy C. Daniel, Judge.
ST. EVE, Circuit Judge. Illinois Tamale Company, Inc. (“Iltaco“), a Chicago-based food company, brought this trademark infringement action against LC Trademarks, Inc. and Little Caesar Enterprises, Inc. (collectively “Little Caesars“), based on Little Caesars’ advertising for its “Crazy Puffs” food product. Iltaco claimed Little Caesars’ Crazy Puffs product and advertising caused a substantial likelihood of confusion
I. Background
A. Factual Background
Iltaco is a Chicago-based food company founded in 1927. In 1976, Iltaco began selling its pizza puff product, which is similar to a calzone but made from a flour tortilla wrapped around pizza toppings and can be fried or baked. Iltaco now sells its pizza puffs nationwide and has expanded its line of stuffed sandwich products to include a wide range of ingredients. Iltaco‘s list of registered trademarks includes the “Pizza Puff,” “Gyro Puff,” “Ham Breakfast Puff,” “Sausage Breakfast Puff,” and “Spinach & Cheese Puff.” Specifically, it registered its “Pizza Puff” trademark on May 26, 2009. It also has a registered trademark for “Puff” as of May 3, 2022. Iltaco advertises its stuffed sandwich products under the “Pizza Puff” and “Puff” trademarks.
Little Caesars is a large chain of pizza restaurants founded in the United States with restaurant franchises worldwide. In
Since launching Crazy Puffs, Little Caesars has marketed its puffs heavily using its “Little Caesars” trade name and the classic Little Caesars trade dress—the Roman Character logo, “Hot-N-Ready” tagline, “Crazy” mark, and bright orange coloring. Crazy Puffs marketing materials include a line reading “4 Hand-Held Pizza Puffs,” which appears in small print directly below “Crazy Puffs.” The phrase “Pizza Puffs” appears as part of “4 Hand-Held Pizza Puffs,” which always appears in conjunction with the “Crazy Puffs” mark.
Little Caesars sells Crazy Puffs exclusively through its restaurants, where customers can purchase them through traditional carryout or delivery channels. Little Caesars does not sell Crazy Puffs in grocery stores, convenience stores, or third-party restaurants.
B. Procedural Background
The present dispute began in April 2024 when Iltaco sent Little Caesars a cease-and-desist letter claiming “Crazy Puffs” and “4 Hand-Held Pizza Puffs” infringed Iltaco‘s trademark rights in its “Pizza Puff” and “Puff” marks. Little Caesars disputed the merits of Iltaco‘s claims and continued to use both “Crazy Puffs” and “4 Hand-Held Pizza Puffs.”
On June 21, 2024, Iltaco brought a four count complaint against Little Caesars, asserting claims under Section 32 of the
II. Legal Standard
“We review the district court‘s denial of the motion for a preliminary injunction for an abuse of discretion, viewing its legal conclusions de novo, and findings of fact for clear error.” Minocqua Brewing Co. v. Hess, 160 F.4th 849, 851 (7th Cir. 2025) (citing Richwine v. Matuszak, 148 F.4th 942, 952 (7th Cir. 2025)).
A district court may grant a preliminary injunction where the “movant shows that it is likely to succeed on the merits of
“[A]n applicant for preliminary relief bears a significant burden,” Ill. Republican Party v. Pritzker, 973 F.3d 760, 763 (7th Cir. 2020), and must show more than “a mere possibility of success” on the merits to prevail, Life Spine, Inc., 8 F.4th at 540. It is not enough, as Iltaco asserts, to show only a “better than negligible” chance of succeeding on the merits.3 Nken v. Holder, 556 U.S. 418, 434 (2009). Of course, the movant “need not show that it definitely will win the case,” but it “must
III. Discussion
Trademark law serves the dual purposes of protecting customers’ desires to make informed purchasing decisions based on familiar, trustworthy marks, and protecting trademark owners against misappropriation of marks in which they have invested significant time, energy, and resources. See id.
The Trademark Act of 1946, known as the
The Lanham Act also provides affirmative defenses to counter a plaintiff‘s claims, including the “fair use” defense. See
A. “Pizza Puff”
The district court found Iltaco was likely to succeed on the merits of its trademark infringement action for its “Pizza Puff” mark. In doing so, the court found Iltaco was likely to succeed in showing “Pizza Puff” was a protectable mark, that no fair use defense applied, and that there was substantial likelihood of confusion between both parties’ use of “Pizza Puff.” We address the district court‘s findings regarding protectability and fair use,4 and ultimately reverse the preliminary injunction on Little Caesars’ use of “Pizza Puff” because Iltaco failed to meet its burden of establishing a sufficient likelihood of success on the merits of its claim.
1. Protectability Analysis
To succeed on a trademark infringement action, the mark or marks at issue must be protectable under the Lanham Act in the first place. Whether a mark is entitled to protection depends upon where it falls on a spectrum of increasing distinctiveness from (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. Platinum Home Mortg. Corp. v. Platinum Fin. Grp., 149 F.3d 722, 727 (7th Cir. 1998); Packman, 267 F.3d at 638. We review the district court‘s factual
A trademark infringement action must fail if the mark is generic and will usually fail if the mark is descriptive. Generic terms, which are the terms “commonly used as the name of a kind of goods,” Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986), may not be trademark protected “under any circumstances,” Miller Brewing Co. v. G. Heileman Co., 561 F.2d 75, 79 (7th Cir. 1977). Descriptive terms, which describe the ingredients, characteristics, or qualities of an article, are protected only if the holder can establish that the mark has acquired a secondary meaning. U.S. Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549, 553 (2020). Secondary meaning attaches to marks that have “achieve[d] significance ‘in the minds of the public’ as identifying the applicant‘s goods or services.” Id. (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000)). “Holiday Inn,” for example, describes a vacation accommodation, but most people associate the term with one specific brand. See also Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 420 (7th Cir. 2019) (“5-Hour Energy . . . describes the caffeinated shot, but is readily associated by most customers with one maker.” (internal quotations omitted)).
The district court found Iltaco‘s “Pizza Puff” mark was protectable because Little Caesars failed to overcome the presumption of protection afforded to incontestable marks. Because the court committed several errors in its analysis, and because Iltaco did not otherwise show it was likely to succeed in proving its mark is protectable, we reverse this portion of the court‘s decision.
a. Primary Significance Test for Genericness
Whether a registered mark has become a generic term turns on the mark‘s “primary significance” to the relevant public.
Our language in Ty may explain one reason why generic marks are not protectable—i.e., because protecting generic marks would stymie competition from sellers of similar products unable to sufficiently describe their product. But it is not the correct test for genericness. The plain language of the Lanham Act, Supreme Court precedent, and even a previous paragraph in Ty explain that we assess the mark‘s primary significance to determine whether it has become generic and thus unprotectable under the Lanham Act. See
b. Primary Significance of “Pizza Puff”
Viewed under the correct standard, the issue is whether the primary significance of “Pizza Puff” to consumers is as a generic term describing a class of products or a distinctive term indicating association with a particular brand.
Little Caesars presented extensive evidence to show that the primary significance of Iltaco‘s incontestable7 “Pizza Puff” mark to consumers is as a generic term. First, Little Caesars presented the results of a Teflon survey,8 showing 83.3% of consumers of dough-based, pizza-ingredient-filled foods perceive “pizza puff” as a common (i.e., generic) term, while only 12.7% perceive the term as a brand name. The district court dismissed this strong evidence of genericness by finding it was “not conclusive” because in Ty we said, in dicta, that as few as ten percent of consumers associating a mark with an owner‘s brand could result in consumer confusion. 353 F.3d at 531. We cannot accept that ten percent of consumers is a relevant percentage for the genericness test, which focuses on the “primary significance” of a product to consumers. “[I]f a survey showed that 75 percent of the public regard the word as generic, then that is its majority usage and its ‘principal significance.‘” McCarthy § 12:6. Primary significance requires far
Little Caesars also presented several definitions of “pizza puff” drawn from crowd-sourced dictionaries to show the term has acquired a generic meaning. Definitions.net describes a pizza puff as “A dough pouch filled with the ingredients of a pizza, such as cheese, pizza sauce, sausage, and pepperoni, and usually deep fried.” Kiddle Encyclopedia (an online encyclopedia for kids) describes a pizza puff as “A deep-fried dough pocket filled with cheese, tomato sauce, and other pizza ingredients such as sausage or pepperoni.” Though the district court did not address these proffered pizza puff definitions, Iltaco argues on appeal that the crowd-sourced dictionary definitions are unreliable evidence because anyone can edit an online crowd-sourced dictionary. But Little Caesars introduced these definitions to show how the public uses and perceives the term “pizza puff.” Our genericness analysis inquires into the primary significance of a term to the public, not its unequivocal technical definition.9
Crowd-sourced dictionary definitions inform that question, so they are relevant to our analysis and weigh in favor of genericness. Still, the fact that anyone can edit a crowd-sourced dictionary definition bears on the weight of Little Caesars’ dictionary evidence.
The district court acknowledged, though did not analyze, evidence Little Caesars introduced of third parties using “pizza puff” in their USPTO applications and registrations to indicate the term has widespread generic use in the industry. We have found third-party registrations probative of a term‘s widespread descriptive use where over fifty third-party registrations used the same term to describe a similar quality. See Spraying Sys. Co. v. Delevan, Inc., 975 F.2d 387, 393 (7th Cir. 1992) (finding the suffix “JET” descriptive of a hose product based in part on fifty other registrations using “JET” to describe similar high-velocity water stream products). Here, the five USPTO registrations cited by Little Caesars may not be dispositive on their own, but together with consumer survey
Iltaco‘s arguments to the contrary—that the USPTO descriptions are unreliable evidence and that they do not apply because some of the marks using “pizza puff” as a descriptor are inactive—do not counter this evidence. Iltaco relies on a district court decision stating that USPTO registrations are not sufficiently reliable for the court to take judicial notice of them, not that they are unreliable evidence altogether. Facebook, Inc. v. Teachbook.com LLC, 819 F. Supp. 2d 764, 772 (N.D. Ill. 2011). And USPTO registrations using “pizza puff” are probative of how other companies in the food industry use that term even if they are inactive. Spraying Sys., 975 F.2d at 393 (“[T]hose [registered trademarks] that are not [in current use] can still be probative on the issue of descriptiveness.“).
Not all of Little Caesars’ evidence of genericness is as compelling. Online recipes for pizza puffs have low evidentiary value because the internet is replete with copycat recipes teaching home cooks how to replicate popular, often trademarked, dishes at home (e.g., recipes for homemade Hot Pockets, Pop-Tarts, etc.).10 Little Caesars also introduced evidence of menus listing “pizza puff” alongside generic food
Even so, the district court ultimately erred by finding Iltaco was likely to succeed in showing “Pizza Puff” is protectable because the court failed to apply the primary significance test and the record did not support its final decision. Little Caesars’ consumer survey data, dictionary definitions, and USPTO registrations showing generic usage were sufficient to overcome the presumption of trademark validity, and Iltaco did not show how it could overcome this evidence at trial to prove “Pizza Puff” is a protectable mark. Iltaco thus failed to carry its burden of showing a likelihood of success on the
2. Fair Use Analysis
Even if “Pizza Puff” is sufficiently distinctive to merit protection under the Lanham Act, Iltaco cannot prevail without showing how it will successfully counter Little Caesars’ fair use defense. A defendant in a trademark infringement case may invoke the “fair use” defense by demonstrating that (1) it used the phrase at issue in a non-trademark capacity, (2) the phrase is descriptive of its goods and services, and (3) it used the phrase “fairly and in good faith” only to describe its goods.
Little Caesars asserted a fair use defense in response to Iltaco‘s preliminary injunction motion, but the district court rejected the defense based on the second prong,12 explaining:
The defendants have not shown that “PIZZA PUFFS” is descriptive of their goods. The defendants[‘] product looks like a mini-pizza or a pizza muffin or a pizza cupcake or a pizza bite. It is not apparent what part of the defendants’ product is a puff, which means that the mark is not descriptive of the defendants’ goods.
The district court erred in reaching this conclusion because it misapplied the relevant legal standard to determine whether “Pizza Puff” is descriptive of Little Caesars’ product. The district court mistakenly required Little Caesars’ product
Under the correct test, the district court‘s determination that “Pizza Puff” is not descriptive falls short. A Little Caesars representative testified that “Crazy Puffs” are “light and airy muffins” that are “puffy.” No one disputes that Crazy Puffs are filled with pizza ingredients like cheese, tomato sauce, meat, and vegetables. This evidence fairly shows that “Pizza Puff” describes a Crazy Puff, which is a puffy and airy muffin containing pizza ingredients. And “Pizza Puff” appears as part of the phrase “4 Hand-Held Pizza Puffs,” which is clearly describing the quantity, size, and type of food customers can expect when they purchase a Crazy Puff. The district court did not consider this evidence or explain how Iltaco could counter it at trial. Because the district court applied the wrong standard, the district court abused its discretion in granting the preliminary injunction for “Pizza Puff.” See Lawson Prods., 782 F.2d at 1437 (“[A] factual or legal error may alone be sufficient to establish that the court ‘abused its discretion’ in making its final determination.“).
The district court found Iltaco failed to meet its burden with respect to Little Caesars’ use of its “Crazy Puffs” mark because Iltaco did not show there was a likelihood of confusion between Little Caesars’ “Crazy Puffs” mark and Iltaco‘s “Pizza Puff” or “Puff” marks. The court did not clearly err in either determination, so we affirm its decision regarding both marks.
The district court correctly rejected Iltaco‘s suggestion that “Crazy Puffs” and “Pizza Puff” were confusingly similar because both contain the word “Puff.” When evaluating the likelihood of confusion between marks, “we must keep in mind that ‘[t]he commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail.‘” Grubhub, 80 F.4th at 848 (quoting Est. of P.D. Beckwith, Inc. v. Comm‘r of Pats., 252 U.S. 538, 545–46 (1920)). Thus, we cannot look at “Puff” (from “Crazy Puffs“) in isolation and find it confusingly similar to “Puff” in Iltaco‘s “Pizza Puff” name. We must consider the “Crazy Puffs” mark in its entirety, as the district court rightly explained.
Viewing the “Crazy Puffs” mark as a whole, the district court did not err in finding no likelihood of confusion with “Pizza Puff.” The court found the two terms are significantly different because Iltaco‘s mark denotes the ingredients found in the product while Little Caesars’ mark uses “Crazy” to tie its product to its own family of Crazy marks. Iltaco‘s mark describes what a consumer can expect to find inside the puff, while Little Caesars’ mark designates its brand. Though the court found other likelihood-of-confusion factors may favor Iltaco, it held “the difference in the marks’ overall impression
A district court has broad “flexibility to determine what [likelihood-of-confusion] factors are most critical in a case.” Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 901 (7th Cir. 2001). And because the similarity of the marks is one of the most important considerations, a district court does not abuse its discretion by finding no likelihood of confusion based on dissimilar marks even when other factors weigh in favor of confusion. Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456, 462 (7th Cir. 2000). Here, the district court made a reasoned determination that the two marks were not similar and did not abuse its discretion in weighing the similarity factor heavily to find no likelihood of success in showing likelihood of confusion.
* * *
Because Iltaco did not show it is likely to succeed in proving that “Pizza Puff” is protectable or rebutting Little Caesars’ fair use defense at trial, Iltaco has not established a likelihood of success on the merits. Accordingly, we do not proceed to the harms-balancing or public interest steps of the preliminary injunction analysis. See Grubhub, 80 F.4th at 844 (“[Only] [u]pon a showing of [likelihood of success on the merits], the court weighs the harm of denying an injunction to the movant.“).
The district court abused its discretion by granting the preliminary injunction as to “Pizza Puff,” but did not abuse its discretion in denying the injunction regarding “Crazy Puffs” or “Puff.”
The judgment of the district court is
AFFIRMED IN PART AND REVERSED IN PART.