Butter and Fishing Tackle – No Land O’Lakes Confusion

The Seventh Circuit Court of Appeals has held that fishing tackle sold under the trademark LAND O’LAKES is not confusingly similar to butter and other dairy products sold under the trademark LAND O’LAKES because LAND O’LAKES fishing tackle has been sold since the 1920s, the products are so different, and there is no evidence of actual confusion.  Additionally, the term LAND O’LAKES describes a geographic region where both parties co-exist.  Accordingly the appeals court affirmed the lower court decision dismisses thing both actions by both parties. Hugunin v Land O’Lakes, Inc., Case No.  11C-9098 (7th Cir.  March 1, 2016) (Available Here).  

The principal plaintiff in the case is the fishing tackle company who began selling his tackle in a Wisconsin town called LAND O’LAKES because the town is located in a region dotted with lakes and is attractive to fishermen.  In 2000 the USPTO Trademark Office registered the trademark LAND O’LAKES for fishing tackle.  In Minnesota which adjoins Wisconsin, there is a large agricultural dairy cooperative called LAND O’LAKES.  The cooperative sells butter and other dairy products.

In 1997, the dairy company began sponsoring a sportfishing tournament and begin advertising its LAND O’LAKES dairy products in fishing magazines in support of the tournament.

A conflict arose when one of the parties opposed registration of the fishing tackle trademark because the fishing tackle trademark registration had lapsed and the company had reapplied. The opposition action was suspended and federal court litigation arose.  

The lower court found, and the Appeals Court agreed, that although the fishing tackle company sued the dairy company, there was no evidence of any confusion for all these years.  The District Court also dismissed the dilution claim asserted by the dairy company because the dairy company had waited too long to make the claim.

The Appeals Court, citing Ty Inc.  v.  Perryman, 306 F.3d 509 (7th Cir.  2002), explained the difference between blurring and tarnish in connection with a Tiffany jewelry store and a Tiffany restaurant and further a Tiffany striptease joint.  With respect to the restaurant – jewelry store situation, consumers will have to think harder and there is a higher imagination cost to recognize the name of the jewelry store as compared with the Tiffany restaurant.  This is blurring which is one form of dilution.  

In the case of the Tiffany jewelry store and the Tiffany striptease joint, since consumers may associate the word Tiffany with a fancy jewelry store and that recollection will be tarnished by the association of the word with a strip joint, the Tiffany jewelry store mark is tarnished by the low brow use of the mark on the  strip joint.  Tarnishment is a second form of dilution.

The Court then noted that the dairy food cooperative in 2012 had revenue exceeding $4 billion whereas the fishing tackle company had revenue of less than $30,000.  The lower court had dismissed the fishing tackle company’s claim on summary judgment.  

Since the fishing tackle company argued that he was the first user of the LAND O’LAKES mark in the fishing industry, he had priority over the dairy cooperative’s use of the mark for fishing tournaments.  The Court noted that this is reverse confusion which occurs when a junior user of a trademark uses his size and market penetration to overwhelm the senior, but smaller, user of the same or similar mark.  However, the Court found that the products were so different and there was just no evidence of confusion over this long period of time, therefore, the complaint and the counter claims were dismissed.

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