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April 28, 1994

V. PATEL & SONS, INC., et al., Defendants.

The opinion of the court was delivered by: MILTON I. SHADUR

 Deva Singh Sham Singh ("Deva Singh") sues V. Patel & Sons, Inc. d/b/a "Patel Brothers" ("Patel"), *fn1" charging infringement of Deva Singh's trademark used to identify its basmati rice. Patel too markets a brand of basmati rice. Both parties' brands feature elephants in their titles and on their burlap sacks, and their other similarities and differences are discussed later.

 Deva Singh has moved for summary judgment on two issues: (1) the validity of its mark and (2) the existence of a likelihood of confusion between its and Patel's trademarks and trade dress. *fn2" For the reasons stated in this memorandum opinion and order, both facets of its motion are denied.

 Summary Judgment Principles

 Familiar Rule 56(c) principles teach that to be "entitled to a judgment as a matter of law," the movant must establish the absence of any "genuine issue as to any material fact" ( Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986)). In that respect a "genuine issue" requires that there be sufficient evidence for a jury to return a verdict in favor of the nonmovant ( Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986)), while a "material fact" is one that "might affect the outcome of the suit under the governing law" ( id. at 248; Pritchard v. Rainfair, Inc., 945 F.2d 185, 191 (7th Cir.1991)). In applying those principles this Court is not required to draw "every conceivable inference from the record -- only those inferences that are reasonable" in favor of nonmovant Patel ( Bank Leumi Le-Israel, B.M. v. Lee, 928 F.2d 232, 236 (7th Cir.1991)).


 What follows in this section will suffice to establish the framework for the discussion of Deva Singh's motion. Other relevant facts, which fit somewhat better into the substantive legal discussion, will be set out later in this opinion.

 In 1984 Deva Singh customer Patel, a national distributor of Indian foodstuffs and owner of a chain of more than 20 retail grocery stores around the United States, began importing its own basmati rice marketed under the name "No. 718 Blue Elephant" brand. Its rice is packaged for Patel by American Dried Fruit of Bombay and is sold in burlap sacks bearing a blue elephant inside an octagon under the words "718 Blue Elephant" printed in red and blue. On the reverse side of the bag is a picture of Laxmi sitting in lotus position. Patel's bags come in 10 and 40 pound sizes.

 Deva Singh initially sent Patel a notice of infringement (P. Ex. 9, Mafat Patel Dep. 11-12). When Patel disregarded that notice, Deva Singh commenced this action against Patel and its secretary Mafat Patel (who is also the general manager of its daily business activities). This opinion will address the issue of the validity of Deva Singh's mark only briefly, with the bulk of the discussion devoted to the infringement question.


 Validity of a mark is a question totally distinct from the issue of likelihood of customer confusion. Not only is the proof of validity nondispositive of the latter issue, but it is not even one of the factors to be considered in evaluating the prospect of confusion ( Source Services Corp. v. Chicagoland JobSource, Inc., 643 F. Supp. 1523, 1532 (N.D.Ill. 1986), citing and quoting Union Carbide Corp. v. Ever-Ready Inc. 531 F.2d 366, 377 (7th Cir. 1976)):

Validity is a matter of the mark's ability to stand as a mark. . . . But likelihood of confusion is a matter of comparing one mark's recognition factor with that of another.

 In this instance the passage of time has rendered Deva Singh's Registration No. 1,308,227 (entered on the Trademark Principal Register on December 4, 1984) incontestible under 15 U.S.C. ยง 1065. But incontestability simply obviates any need for Deva Singh to prove the existence of secondary meaning for its mark to seek enforcement against a claimed infringer (Park ' N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196, 205, 83 L. Ed. 2d 582, 105 S. Ct. 658 (1985))--it does not at all equate to establishing the mark's status as valid in terms of its enforceability against the world (as contrasted with establishing Deva Singh's own right to use the mark).

 If the current posture of this action were at the trial stage, calling for a decision on the merits, this Court might well address both validity and infringement (something that the Federal Circuit has encouraged in the trial context in another sphere of intellectual property law, the field of patents--see, e.g., Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1582-83 (Fed. Cir. 1983)). But in this case the next-discussed topic of infringement defeats Deva Singh's motion in any event--and even more importantly, in the summary judgment context the question of the registered mark's validity poses a serious Article III case-or-controversy problem.

 While not denying the existence of that really dissimilar new design, Deva Singh asserts that it has not discontinued or abandoned its original one: It presents the declaration of Ravinder Chatha (P. Ex. D) that he or she is "a principal of Deva Singh" and that the company is currently selling under the old trademark and has no intention of discontinuing its use. But Patel counters with the affidavits of Mahesh Patel, Mohammed Bashir and Arvind Kumar Patel, retail grocers serving Indian and Pakistani clientele, who state that as of November 1993 Deva Singh's rice is no longer delivered to them in the former bags but instead arrives in bags bearing the new design. Even more significantly, the supplemental affidavit of Rakesh Patel reflects that he visited 30 Indian and Pakistani grocery stores around Chicago and confirmed that as of November 1993 Deva Singh's rice was no longer being distributed in the former sack (D. R. Ex. H).

 With the necessary inferences drawn in Patel's favor, there is at least a material question whether the registered mark is still in use. If it is not, any declaration of its validity would be no more than an advisory opinion. That is a risk this Court will not undertake, especially when Deva Singh's motion fails on its other branch in all events.

 Likelihood of Confusion

 That second branch calls for judicial inquiry into the probability that consumers in the relevant market will confuse the alleged infringer's mark with the plaintiff's mark ( Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993)). As our Court of Appeals framed the issue in AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 618 (7th Cir. 1993), quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992):

The "keystone" of trademark infringement is "likelihood of confusion" as to source, affiliation, connection or sponsorship of goods or services among the relevant class of customers and potential customers. *fn5"

 Smith, 7 F.3d at 1329 has recently enumerated the seven factors that commonly govern the analysis:

(1) similarity between the marks in appearance ...

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