Pattishall IP Blog

December 8, 2011

“Classic” Case of Trademark Infringement? Top Tobacco and North Atlantic Operating Company Argue Whether CLASSIC CANADIAN and CLASSIC AMERICAN BLEND are Confusingly Similar

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:47 am

By Janet Marvel, Trademark Attorney

Top Tobacco, L.P. v. North Atlantic Operating Co., Inc. (TTAB Nov. 21, 2011) (available at http://ttabvue.uspto.gov/ttabvue/v?pno=91180231&pty=OPP&eno=14) shows the very fluid application of facts to law in trademark cases, and therefore, that reasonable minds can differ.  Top filed oppositions before the Trademark Trial and Appeal Board (the “Board”) to various trademark applications filed by North Atlantic for the mark CLASSIC AMERICAN BLEND in logo form and standard characters, and petitioned to cancel North Atlantic’s registration of ZIG ZAG CLASSIC AMERICAN BLEND.  Top based its actions on a claim of likelihood of confusion with Top’s rights in and registration of CLASSIC CANADIAN.  Both parties’ marks covered the same goods, namely, tobacco products.

The Board found CLASSIC CANADIAN and CLASSIC AMERICAN BLEND to be confusingly similar and ruled on the oppositions in Top’s favor.  Given the extreme weakness of the marks, this ruling is somewhat mystifying.  The Board did not consider CLASSIC CANADIAN and ZIG ZAG CLASSIC AMERICAN BLEND to be confusingly similar, however, and denied Top’s petition to cancel.

In the oppositions, the Board evaluated the Dupont likelihood of confusion factors.  Most interesting is its evaluation of the similarity of the marks.  The Board found, not surprisingly, that “[t]he record overwhelmingly establishes that the CLASSIC CANADIAN mark has little intrinsic distinctiveness.”  As to “Classic,” Top’s own statements in the prosecution history for its CLASSIC CANADIAN registration were evidence, although not dispositive, that CLASSIC was suggestive of a “well-known” or “typical” type.

In addition to finding Top’s CLASSIC CANADIAN mark to be weak, the Board also agreed with North Atlantic that the parties’ ten years of co-existence without actual confusion weighed in favor of a finding of no likelihood of confusion.  However, the Board’s agreement with North Atlantic in the oppositions ended here.

The Board was apparently swayed most by the exact identity of some of the parties’ goods, noting that less similarity of marks is required for a finding of likelihood of confusion when marks are used on identical goods than would be required for a comparison of differing goods.  It noted that CLASSIC CANADIAN and CLASSIC AMERICAN were “equally highly suggestive” of a style of tobacco (a finding that could easily have supported a conclusion that the marks were not likely to be confused).  Thus, the Board found in Top’s favor on the oppositions.

However, the Board found for North American on Top’s petition to cancel ZIG ZAG CLASSIC AMERICAN BLEND, finding that inclusion of ZIG ZAG in North Atlantic’s mark “may avoid likely confusion where the marks in their entireties convey significantly different commercial impressions or the matter common to the marks is so suggestive or weak that any source-indicating value it has is overwhelmed by the addition of an arbitrary, distinctive element.”  Top argued that ZIG ZAG CLASSIC AMERICAN BLEND actually created “reverse confusion,” where the junior user’s use overwhelms that of the senior user.  In such circumstances, use of a house mark (like ZIG ZAG) is often held to increase, rather than diminish, confusion.  However, the Board held that there was insufficient evidence that North Atlantic was a ‘significantly larger or prominent newcomer’ who had ‘saturated the market’ with the ZIG ZAG CLASSIC AMERICAN BLEND mark, to have caused reverse confusion.

In this author’s opinion, confusion between these marks in the “real world” seems unlikely.  Board proceedings, however, look primarily at the marks and descriptions of goods in the parties’ registrations/applications.  In this case, neither party relied on a survey, which may or may not have supported a finding of no confusion.  Knowledge of the differences between federal court and Board practice, as well as an understanding of some rather arcane evidentiary rules, is required to effectively litigate a case before the Board.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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September 23, 2010

You Are Now Free to Use Crinkly Paper Towels: Eighth Circuit Affirms Finding that Sale of Generic Paper Towels Designed to Fit Branded Dispensers is Not Contributory Trademark Infringement

Filed under: Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:52 pm

by Uli Widmaier, Trademark Attorney

Do generic unbranded paper towels, dispensed from a branded dispenser, confuse consumers?  No, says the Eighth Circuit, despite a survey commissioned by defendant that showed 11% consumer confusion, a level that often suffices for a finding of liability.  What was the basis for the court’s holding?  The plaintiff’s own business practices, which refuted the gravamen of the plaintiff’s claim that the defendant’s sales created the likelihood of confusion.

In Georgia-Pacific Consumer Products LP v. Myers Supply, Inc., No. 09-2980, slip op. (8th Cir. Sept. 15, 2010), the Eighth Circuit affirmed the district court’s judgment after a bench trial for defendant Myers.  In 2002, plaintiff Georgia-Pacific (“GP”) had introduced a touchless paper towel dispenser known as “enMotion.”  The enMotion dispenser, which is prominently branded with the enMotion and GP trademarks, accepts 10-inch-wide paper towel rolls.  Until 2007, towel rolls of that width were unique in the paper towel dispenser business, and GP was their sole supplier.  In 2007, however, Myers began selling 10-inch rolls made by a third party, Drehle.  Since only the enMotion dispenser accepted that width, Myers knew “with 99% certainty,” as the court put it, that the paper towels would be installed in enMotion dispensers.  Id. at 1. (more…)

September 14, 2010

Is that COHIBA from Cuba? Not if it’s Sold in the U.S.: Second Circuit Reverses Ruling that U.S. Company Misappropriated the Cuban COHIBA Brand

Filed under: International, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:11 pm

by Phillip Barengolts

The Second Circuit may have finally ended the nearly 15 year legal battle between Empresa Cubana d/b/a Cubatabaco, the cigar making branch of the Cuban government, and U.S. cigar marketer General Cigar.  Now there will be two different marketers of “COHIBA” cigars in the world.  To see the practical impact of this decision, search for “cohiba cigars” in any search engine.

The Court of Appeals for the Second Circuit reversed the district court’s rulings that granted Cubatabaco relief from judgment against it under Fed. R. Civ. P. 60(b). Empresa Cubana del Tabaco v. General Cigar Co., Case No. 08-5878 (2d Cir. July 14, 2010) reversing 587 F. Supp. 2d 622 (S.D. N.Y. 2009) (appellate decision available at http://scholar.google.com/scholar_case?case=1756775939633617674).  Had the Second Circuit affirmed the district court’s rulings, General Cigar would have been enjoined from selling cigars under the COHIBA trademark in the U.S. (more…)

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