The Cheesesteak Apostrophe: Restaurant Sues USPTO to Trademark “Philadelphia’s Cheesesteak”

A well-known sandwich and a little punctuation mark are at the heart of a lawsuit between a Philadelphia restaurant and the United States Patent and Trademark Office. Campo’s Deli in Philadelphia, is suing the director of the Patent and Trademark Office, David Kappos, in response the USPTO’s rejection of their application, which sought to trademark the name “Philadelphia’s Cheesesteak.” The complaint was filed on October 4, 2012, in the United States Federal District Court for the Eastern District of Pennsylvania.

In 2009, Campo’s Deli, a sandwich shop run by Mike and Denise Campo and their children Mike and Mia, applied to trademark the name “Philadelphia’s Cheesesteak.” Their application was rejected in 2010, they appealed, and it was rejected once again after a hearing in March 2012.

On August 7, 2012, the Trademark Trial and Appeals Board (TTAB) at the United States Patent and Trademark Office issued an opinion affirming the Trademark Examiner’s rejection of the Campo’s Deli trademark.

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In addressing a critical component of their analysis, relating to likelihood of confusion with already existing trademarks, the TTAB explained:

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 “CHEESESTEAK”. 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.

Campo’s Deli does acknowledge that the Patent and Trademark Office has issued these 3 prior trademarks and that while they are similar to theirs, but argues that this should not affect the decision to deny or approve their own application.

In challenging the TTAB’s decision, Campo’s Deli insisted that PHILADELPHIA CHEESESTEAK CO., PHILADELPHIA CHEESESTEAK CO. and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. , all deal with the selling and distributing of meat, namely sliced rib eye used in the town’s namesake sandwich. They do not sell the sandwich itself, and this alone differentiates these companies from their deli, making it impossible to confuse their requested trademark with the three registered marks. “They have different products, different consumers, and entirely different avenues of commerce,” according to the complaint.

But is a little apostrophe that important? According to Campo’s Deli, it is. In the official complaint against the Patent and Trademark Office and Director Kappos, the following argument is made: “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 not, in any sense, an attempt to improperly control the phrase ‘Philadelphia Cheesesteak,’ which is, by contrast, a generic term to describe a generic kind of sandwich.”

They claim that the difference between the two phrases, although small, will differentiate their sandwich as not just any old Philadelphia Cheesesteak sandwich, but “Philadelphia’s Cheesesteak” sandwich, the be-all end-all that is provided only by Campo’s Deli.

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The Campo’s complaint states that the “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.”

Why should their sandwich be called Philadelphia’s Cheesesteak you ask? According to the complaint, the sandwich in questions is “of such 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.”

Attorney J. Conor Corcoran, the attorney who represents Campo’s Deli, maintains that the apostrophe is needed so that Campo’s Deli can expand its business. He states that trademarking the name will help franchise the business, which hopes to venture out to other cities and states. Corcoran states, “If we want to be the sterling benchmark for the Philadelphia cheesesteak, we need that mark.”

Campo’s Deli is located at 214 Market St. in the Old City section of Philadelphia. It also maintains satellite stations at Wells Fargo Center, Citizens Bank and at Liacouras Center.

With all this trouble, wouldn’t it be easier for Campo’s Deli to come up with another name for their sandwiches? It might be, but in the official complaint, they  state that they have been using the name since January of 2009 in their retail outlets. The name is featured on their store awnings, the company website and in company photos.

Campo’s Deli requests a judgment that their plea to trademark the name “Philadelphia’s Cheesesteak” is completely valid.  Accordingly, they are seeking an Order approving the registration of their mark and compelling the issuance of a trademark by the USPTO. In addition, Mike Campo himself simply wants to be known as having “Philadelphia’s Cheesesteak.” He tells KYW Newsradio, “We put out a good product and it’s different. (The trademark) is available, and I’d like to get it.”

Campo’s Deli likely has an uphill battle in this litigation, according to Mark Warzecha, an attorney who handles trademark procurement and litigation matters at the law firm of Zies, Widerman & Malek.  “The deli’s road to an Order approving the registration of their mark is as greasy as the sandwich Philadelphia is famous for,” says Warzecha. “The similarities between the Deli’s mark and the Registered marks are simply too great and the likelihood of confusion between them is too great.  In the end, I believe the Trademark Office will prevail.”

Now we wait for the case to unfold. Stay tuned!