Chicago area, an accounting of profits, treble damages and
costs and fees.
Initially, defendant brought a counterclaim for trademark
infringement and unfair competition, based on defendant's
registration of "Cocktail" (U.S.Reg. No. 658,864) and
plaintiff's designation "Cocktail Treat" on its packages of
nut meats. Defendant has offered no proof on this counterclaim
and seeks its dismissal. However, plaintiff has refused to
stipulate to this dismissal and has alleged and sought to
prove as an affirmative defense that defendant's trademark is
invalid in that it was procured through fraud and also has
been abandoned. Plaintiff seeks cancellation of this mark.
This Court has jurisdiction in this suit by virtue of the
federal trademark laws (15 U.S.C. § 1051-1127), 28 U.S.C. § 1338,
and diversity of citizenship of the parties.
A trial has been held by the Court, and this opinion is
based upon the evidence introduced in the trial and the briefs
filed by the parties. The opinion embodies the findings of
fact and conclusions of law required by Rule 52(a), Federal
Rules of Civil Procedure.
Plaintiff's first cause of action concerns defendant's use
of "Ye Olde Tavern" for a very short period in 1964. Testimony
at the trial disclosed that the first sale of defendant's
product under this label occurred in June 1964, that shipment
to the first customer was made on or about July 5 or 6, 1964,
that the Chicago office reported plaintiff's objection to the
New York office on about July 9, 1964, and that the product
was immediately removed from the market on about July 15 or
16, 1964, after notice was received of the filing of
plaintiff's present suit. There was no evidence that defendant
has since marketed or intends to market products bearing this
label. An injunction is not available here. See, e.g.,
Champion Spark Plug Co. v. Reich, 121 F.2d 769 (8th Cir.
1941); cf. Walling v. T. Buettner & Co., 133 F.2d 306 (7th
Cir.) cert. denied 319 U.S. 771, 63 S.Ct. 1437, 87 L.Ed. 1719
(1943). Plaintiff has not shown any damages or harm resulting
from this specific act. Any sales which actually occurred
would have been minimal. Therefore, I hold that plaintiff is
not entitled to relief under its first cause of action.
Essentially, plaintiff's case is one of trademark
infringement under the common and statutory law.*fn1 Its
proof consisted of demonstrating that it had obtained prior
registration and use of the trademark "Ye Olde Tavern," that
defendant subsequently used the word "Tavern" in competition
with plaintiff, and in the submission of samples of the two
bags and other items bearing the labels of defendant and
plaintiff. The evidence also established that defendant knew
of plaintiff's mark and operations in the Chicago area at the
time defendant entered that market in 1964 with products
containing "Tavern" on their labels.
The test for trademark infringement is generally stated to
be "likelihood of confusion" of ordinary purchasers purchasing
in the ordinary manner. See, e.g., McLean v. Fleming, 96 U.S.
(6 Otto) 245, 251, 24 L.Ed. 828 (1877). Trademark infringement
should be distinguished from unfair competition; the former is
a narrower concept based upon the use by another of one's
distinctive mark, or of a salient part of it, and does not
necessarily depend upon the whole appearance or "dress" of the
products. The plaintiff in a trademark infringement suit has
an easier burden of proof, in that the prior use of the
trademark gives rise to a presumption of exclusive
right to it, and renders unnecessary proof of an actual intent
to defraud or of specific association by purchasers of the
mark with the producer. Moreover, registration under the
Lanham Act or Illinois statute creates a presumption of
adoption and continued use and is prima facie evidence of
validity. The plaintiff in a trademark infringement suit must
show prior use of its own mark and the defendant's use of a
"confusingly similar" mark in competition with it. See
generally 1 Nims, Unfair Competition and Trade-Marks §§ 1,
221b-221p (4th ed. 1947).
There is no problem here as to the prior use by the
plaintiff of its own mark. The only question is whether
plaintiff has shown that defendant is using a "confusingly
Plaintiff and defendant have primarily disagreed upon the
nature and sufficiency of evidence required to meet this
burden of proof. Both parties agree that the test is not
simply a "side-by-side" one, made by the court by comparing
personally the labels or marks. Rather, the test is one of
consumer confusion, in light of the manner in which consumers
purchase these products. See, e.g., Northam Warren Corp. v.
Universal Cosmetic Co., 18 F.2d 774, 775 (7th Cir. 1927).
Plaintiff here has only introduced copies of the two labels.
No evidence was introduced to show how consumers purchase
these products, to show any consumer association with
plaintiff's mark, or to show any actual confusion. However,
even in the absence of this type of evidence, the court can
proceed to visualize the likelihood of consumer confusion
wholly from the similarity of the marks. See, e.g., Pikle-Rite
Co. v. Chicago Pickle Co., 171 F. Supp. 671 (N.D.Ill. 1959).
I have carefully considered the two marks from the viewpoint
of an ordinary consumer, and I find they are not so
confusingly similar as to produce any likelihood of consumer
Plaintiff's trademark is "Ye Olde Tavern" written in English
script and superimposed upon a representation of a wooden
signboard. Defendant's label is "Planters Tavern Nuts" in
regular print and with "Planters Tavern" placed upon a sort of
signboard with a fanciful border. In terms of emphasis, all of
the words in plaintiff's trademark are uniform, while in
defendant's label "Planters" and "Nuts" are in larger and
bolder print than "Tavern."
Plaintiff argues that "Tavern" is the salient part of its
mark, and that defendant's use of this word, regardless of
what other words defendant uses with it, constitutes
infringement. It is possible to infringe a trademark by
adopting and using only a "salient part" of it. However,
plaintiff has introduced no evidence to demonstrate that
consumers actually refer to its product by the name "Tavern"
or otherwise to prove that "Tavern" is the salient part of its
mark. I do not find that "Tavern" is the salient part of
plaintiff's mark. It is the third of three words, and the
emphasis of plaintiff's mark would seem to rest more upon the
first two words, "Ye" and "Olde," which are uncommon and are
associated with the English script in which the whole mark is
lettered. Cf. Pikle-Rite Co. v. Chicago Pickle Co.,
171 F. Supp. 671, 675 (N.D.Ill. 1959). See generally 1 Nims, Unfair
Competition and Trade-Marks § 221f, at 680-82 (4th ed. 1947).
Similarity is to be judged by the consideration of each mark
as a whole. See generally 3 Callmann, Unfair Competition and
Trade-Marks § 81.1, at 1378-81 (2d ed. 1950); 1 Nims, Unfair
Competition and Trade-Marks § 221e (4th ed. 1947). Thus, in
John Morrell & Co. v. Reliable Packing Co., 295 F.2d 314 (7th
Cir. 1961), the court, in reversing the trial court finding of
infringement, looked to the full labels used by plaintiff and
defendant. Plaintiff in that case used "Morrell E-Z Cut Fully
Cooked Ham Smoked" whereas defendant used "Thompson Farms Brand
Easy-Carve Ham." The plaintiff's registered trademark covered
"E-Z Cut." The court held that plaintiff had not carried its
of showing likelihood of confusion in that it had always used
"Morrell," a well-known name, as part of its label, and
defendant had always used its brand name "Thompson Farms
Brand," which clearly indicated the source of origin, as a
part of its label. In Coca-Cola Co. v. Carlisle Bottling
Works, 43 F.2d 101 (E.D.Ky. 1929), aff'd 43 F.2d 119 (6th Cir.
1930), the court engaged in a detailed discussion of the whole
labels and marks involved, and held that "Roxa Kola" did not
infringe plaintiff's "Coca-Cola." The court stated:
"In making the comparison analysis of the two
trade-marks into their ultimate elements is
discouraged, if not denied. The would-be
purchaser does not analyze. The question is how
do the two trade-marks appear to him as a
whole. * * * In each case it is the tout ensemble
that counts. And, in the case of infringement of
trademarks, it would seem that the whole to be
taken into consideration, at least so far as
appearance is concerned, is not the trade-mark in
and of itself, but in its setting and also the
dress of the article to which the trade-mark is
affixed. The ultimate question is whether there
is such similarity that it is calculated to
deceive the ordinary purchaser. It is not
necessary that there be any evidence of actual
deception. But the absence of such evidence is
relevant to the question of similarity." 43 F.2d
Numerous other cases have stated and applied these same
principles. See, e.g., Hesmer Foods, Inc. v. Campbell Soup
Co., 346 F.2d 356 (7th Cir. 1965); John Morrell & Co. v.
Doyle, 97 F.2d 232 (7th Cir. 1938); Hiram Walker & Sons v.
Penn-Maryland Corp., 79 F.2d 836 (2d Cir. 1935). Applying
these principles to the present suit, it is apparent that
defendant's complete label could not be confused with the
Defendant's label as a whole reads "Planters Tavern Nuts,"
with emphasis on "Planters" and on the "Mr. Peanut" figure.
Defendant has registered trademarks both on "Planters" and on
"Mr. Peanut." Plaintiff has conceded, and evidence at the
trial reveals, that Planters is a well-known national brand
name for peanuts and other nut products. The lettering of
defendant's label is not in script, and the colors are
While infringement is not avoided because the infringer uses
his own name before the appropriated part of the mark, this
fact is relevant to a likelihood of confusion test. See, e.g.,
Celanese Corp. of America v. E.I. Du Pont De Nemours & Co.,
154 F.2d 143 (C.C.P.A. 1946). A distinction should be drawn in
these cases between situations where the alleged infringer's
name is unknown and where it is very well known as denoting a
particular brand or source. In the latter case, where the
brand name is prominently stressed in the label, there is not
likely to be any confusion as to source, which is the essence
of trademark infringement. See, e.g., John Morrell & Co. v.
Doyle, 97 F.2d 232 (7th Cir. 1938). Defendant's label bearing
the well-known brand name of "Planters" falls in this
Furthermore, defendant's bags are wholly distinct from
plaintiff's in color and form, as well as in the nature of the
lettering and in its position on the bags. Dissimilarity in
dress is relevant even in trademark infringement cases in
applying the likelihood of confusion test. See, e.g.,
Dwinell-Wright Co. v. National Fruit Product Co.,
140 F.2d 618, 623 (1st Cir. 1944); Nehi Corp. v. Mission Dry Corp.,
117 F. Supp. 116, 117 (D.Del. 1953).
Plaintiff has failed to show any trademark infringement in
this case, under either statutory or common law principles.
Since I have held that there is no trademark infringement in
this case, it is unnecessary to rule on defendant's
contentions that "tavern" is a generic or descriptive word,
not entitled to trademark protection under
15 U.S.C. § 1115(b)(4). However, defendant's evidence
of other uses of "tavern" by a number of manufacturers on
various products is relevant to the extent of protection
plaintiff is entitled to claim. In a field where there are
many trademarks containing similar elements, the owner's
protection must be strictly limited to his full registered
mark. Cf. Hesmer Foods, Inc. v. Campbell Soup Co.,
346 F.2d 356 (7th Cir. 1965). See generally 3 Callmann, Unfair
Competition and Trade-Marks § 82.1(l), at 1507-08 (2d ed.
1950). In this case there was specific evidence that plaintiff
knew of other uses of "tavern," including use by Old Tavern
Food Products Co. in Wisconsin on cheese products, plaintiff's
main product, prior to its registration of "Ye Olde Tavern" in
1957. Plaintiff cannot now seek broad protection for "tavern"
in other lines of competition.
Plaintiff produced no evidence in support of its claim of
unfair competition apart from the evidence already discussed.
Plaintiff, having failed to make any showing of "a likelihood
of consumer confusion," is in no position to pursue its claim
of unfair competition. Where unfair competition is charged,
the test of confusion encompasses the whole product and its
dress and not just the trademark. As I have already pointed
out, the whole dress of defendant's bag is different from
plaintiff's in color, in form and in conspicuous use of
defendant's name and symbol. In this situation plaintiff would
fail as to this portion of its claim even under the lenient
rule announced in Stiffel Co. v. Sears, Roebuck & Co.,
313 F.2d 115, 118 n. 7 (7th Cir. 1963).*fn2
Plaintiff's failure of proof would be even more complete
under the more stringent "unfair competition" test announced
in the later Seventh Circuit cases of Spangler Candy Co. v.
Crystal Pure Candy Co., 353 F.2d 641, 647-648 (7th Cir. 1965);
Aerosol Research Co. v. Scovill Mfg. Co., 334 F.2d 751, 757
(7th Cir. 1964). "Palming off" as decided in these cases
requires that the copied feature be nonfunctional and that it
have "secondary meaning" in the eyes of the public to the
point where they associate the feature with a particular
source. See generally Developments — Competitive Torts, 77
Harv.L.Rev. 888, 908-23 (1964). The only allegedly copied
feature here was the word "Tavern" in plaintiff's trademark.
Plaintiff has not shown in any way that customers associate
"Tavern" with its products, or with a particular brand or
products. Moreover, it has not shown that defendant had any
intent to "palm off" its products as those of the plaintiff, or
that this result in fact occurred. Plaintiff's evidence wholly
fails to establish its claim of unfair competition.
Plaintiff further seeks relief for "trademark dilution" and
"injury to business reputation" under Ill.Rev.Stat. ch. 140
§ 22 (1965). That section authorizes injunctive relief "if
there exists a likelihood of injury to business reputation or
of dilution of the distinctive quality of the mark * * *
notwithstanding the absence of competition between the parties
or of confusion as to the source of goods or services * * *."
I have previously held that this statute "only adds to the
plaintiff's rights * * * when the parties are not in actual
competition." See Spangler Candy Co. v. Crystal Pure Candy
Co., 235 F. Supp. 18, 23 (N.D.Ill. 1964), aff'd. 353 F.2d 641
(7th Cir. 1965). The statute provides for remedies without the
heavy burden of proving confusion in non-competitive
situations; in competitive situations confusion can be
presumed from substantial similarity in the marketplace.
See, e.g., Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830,
836-837 (7th Cir. 1963). Since the parties are in competition
in this case, and there is no trademark infringement or unfair
competition, the statute cannot aid the plaintiff.
However, even if the statute could be applied in competitive
as well as in noncompetitive situations, or if plaintiff's
claim can be restricted to its cheese products, where it does
not compete, plaintiff has not made out a cause of action for
dilution. The statute requires that the trademark or name be
"distinctive," and cases interpreting this requirement have
limited relief to situations where the name was original with
the plaintiff, where it acquired widespread reputation and
good will through plaintiff's efforts, and where the
defendant's name or mark was virtually identical. Compare
Polariod Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir. 1963)
with Carter Prods., Inc. v. Fleetwood Co., 333 F.2d 464 (7th
Cir. 1964) and with Esquire, Inc. v. Esquire Slipper Mfg. Co.,
243 F.2d 540 (1st Cir. 1957). In the present case, plaintiff
did not originate the word "tavern" and defendant's label does
not otherwise resemble plaintiff's. Moreover, as has been
noted previously, since there are many similar trademarks
registered and in use, plaintiff must be held strictly to its
exact and full mark. The fact that defendant conceded the
value of plaintiff's full mark on cheese products in the
Chicago area is therefore irrelevant. Similarly, there has
been no showing of any "likelihood of injury to business
reputation" and plaintiff is not entitled to relief on that
basis under the statute.
Defendant filed a counterclaim in this suit seeking an
injunction and damages for trademark infringement and unfair
competition based upon plaintiff's use, of the words "Cocktail
Treats" on its bags of salted nuts. Defendant has a registered
trademark for "Cocktail." (U.S.Reg. No. 658,864). Prior to the
trial defendant sought to have the counterclaim dismissed by
stipulation, but plaintiff would not concur. Defendant offered
no proof in the trial in support of the counterclaim.
Plaintiff, however, seeks affirmative relief in the form of
cancellation of defendant's trademark based upon alleged fraud
in its procurement and abandonment by virtue of a "licensing"
agreement with Kelling Nut Company. At the trial, plaintiff
introduced evidence relating to defendant's registration of
"Cocktail" in 1958, and to a settlement agreement defendant
entered into with Kelling Nut Company at that time, permitting
Kelling to continue using "Cocktail" on its tree-grown nuts in
return for Kelling's withdrawal of its opposition to
Plaintiff concedes that the counterclaim should be dismissed
but contends that it is entitled to the relief of cancellation
of defendant's trademark. I disagree.
Under the circumstances shown here, the dismissal of
defendant's counterclaim will be with prejudice. Plaintiff
will be fully able to continue to use "Cocktail" or "Cocktail
Treats" on its bags without interference by defendant. Since
no claim is presently being asserted against it, plaintiff has
no standing to ask for a cancellation of defendant's
trademark. There is no injury. If plaintiff is proceeding on
the assumption that it is representing the public in this
matter, it should file an appropriate petition for
cancellation in the Patent Office under the provisions of
15 U.S.C. § 1064. Even in that proceeding, plaintiff must show
likelihood of damage. See, e.g., Land O'Lakes Creameries, Inc.
v. Oconomowoc Canning Co., 221 F. Supp. 576 (E.D.Wise. 1963),
aff'd 330 F.2d 667 (7th Cir. 1964).
Plaintiff is entitled to no relief under its complaint, and
the complaint must be dismissed at plaintiff's costs.
Defendant is entitled to no relief under its counterclaim, and
the counterclaim must be dismissed at defendant's costs.
Defendant will prepare and present a proper order within five