Of Cold Cheesesteaks and Disrespected Apostrophes: In re Campo’s Deli at Market, Inc.
The confusion of the possessive “its” (no apostrophe) with the contractive “it’s” (with apostrophe) is an unequivocal signal of illiteracy and sets off a simple Pavlovian “kill” response in the average stickler.
-Lynne Truss, Eats, Shoots & Leaves
Earlier this year, I visited Philadelphia’s Wells Fargo Center to watch a struggling 76ers team lose to the New York Knicks. Annoyingly, the crowd was mostly boisterous Knicks fans, many sporting Carmelo Anthony jerseys. Before the game, I stood in line at Campo’s waiting for a hot-off-the-grill cheesesteak. As I watched thin-sliced beef sizzle on the grill, I confess I may have drooled a bit. My $10 sandwich turned out to be cold, however, apparently cooked and wrapped much earlier. Bait-and-switch or just bad luck? With that experience behind me, you’d think that I’d rejoice at the Trademark Trial and Appeal Board’s recent decision to deny Campo’s Deli at Market Inc.’s application to register “Philadelphia’s Cheesesteak.” Actually, however, I think the PTO slid Campo’s a “cold sandwich.” You see, like Lynne Truss, author of Eats, Shoots & Leaves, a remarkable little treatise on punctuation, I believe the apostrophe deserves more respect.
On October 4th, 2012, Campo’s filed a civil action in U.S. District Court for Pennsylvania’s Eastern District seeking to reverse the Board and have its “Philadelphia’s Cheesesteak” mark declared valid and enforceable. The examining attorney had refused registration because Campo’s mark so resembled previously registered marks (“Philadelphia Cheesesteak Co.” and “The Original Philadelphia Cheesesteak Company”) as to be likely to cause confusion, and because the mark is primarily geographically descriptive of applicant’s goods. On appeal, the Board affirmed.
In weighing likelihood of confusion, the Board parsed the words and dissed the apostrophe. It noted the similarity of “Philadelphia” and “Cheesesteak” in both marks and, citing In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009), it concluded that 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 argued that “Co.” or “Company” in the registered marks was distinguishing because those marks identified a company, not a product. Oddly, the Board replied that “no evidence” supported Campo’s claim. The Board concluded that the marks were “more similar than they are different” and that “confusion is likely.”
The Board also affirmed the examiner’s view that the marks were “primarily geographically descriptive.” The Board had little trouble concluding that Philadelphia was “a place known generally to the public,” and that the public would believe that Campo’s products originated in that place. Campo’s urged that its mark is not primarily geographically descriptive because Philly cheesesteaks are available nationwide, and “no cheesesteak purchaser would believe that the cheesesteak came from anywhere other than where it was purchased.” However, the Board noted that pesky apostrophe in the mark, which “underscores the geographic significance of the mark, namely that applicant’s cheesesteak is of, or from, Philadelphia.” Campo’s argued that the apostrophe “s” in “Philadelphia’s Cheesesteak” signifies quality, but the Board summarily dismissed that argument.
The Board seems to have missed the point of the apostrophe. Of course, it’s there to signify that we Philadelphians know our cheesesteaks (after all, it’s our sandwich), and we’ve reached a consensus that Campo’s cheesesteaks are simply the best. In its complaint, Campo’s says that its mark is “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.” The mark will help the public understand that Campo’s sandwich 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.”
And that sweet old apostrophe? According to the complaint, it “demarcates a particular kind of gloriously gluttonous sandwich provided only by Plaintiff – not just a Philadelphia Cheesesteak, but ‘Philadelphia’s Cheesesteak.’”
As you can tell, I’m rooting for Campo’s, despite my chilly meal at the Sixers game. The way I see it, a victory for Campo’s is a victory for the Rodney Dangerfield of punctuation marks–the tiny mark that could–the tractable and never-complaining apostrophe.
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