Neither Side Wins the Land O’ Lakes Tug of War

So in this unusual case two firms sued each other though neither had been, is, or is likely to be harmed in the slightest by the other. The suit was rightly dismissed.

This is the last paragraph of this Seventh Circuit trademark opinion, written by Judge Posner.

Jack Hugunin began selling the fishing tackle he manufactured in the Land O’ Lakes region of Wisconsin in 1997.  He decided to use LAND O LAKES as the trademark for his fishing tackle and received a registration from the USPTO in 2000. 

Land O’ Lakes, the Minnesota dairy products company, started sponsoring the Wal-Mart FLW Tour and began advertising in fishing magazines in 1997.  After Hugunin received his USPTO registration for LAND O LAKES for fishing tackle, Land O’ Lakes dairy company contacted Hugunin, informing him that his use infringed the dairy’s famous trademark and that Hugunin would need to get a license from the dairy to continue using the mark.  Hugunin refused.  The dairy then filed an opposition to Hugunin’s reapplication for his trademark, which had lapsed.  Hugunin then sued the dairy in federal district court, claiming that his use of the mark has priority in the fishing industry and that the dairy’s involvement in the fishing industry created reverse confusion.

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Rosetta Stone’s Trademark Infringement Suit Against Google Resuscitated by Fourth Circuit

Rosetta Stone sued Google over Google’s keyword search and advertising trademark use policies, contending that those policies create both a likelihood of consumer confusion and actual consumer confusion.  Rosetta Stone asserted that the likelihood of confusion and actual confusion misleads Internet purchasers into purchasing counterfeit Rosetta Stone software.  Rosetta Stone claimed the Lanham Act (trademark law) claims of direct, contributory and vicarious trademark infringement and trademark dilution, and the state law claim of unjust enrichment.

The district court granted Google’s summary judgment motion on the Lanham Act claims and dismissed the unjust enrichment claim.  On appeal, the Fourth Circuit affirmed the district court’s rulings on the vicarious infringement and unjust enrichment claims, but vacated the district court rulings on the direct infringement, contributory infringement and dilution claims and remanded those claims to the district court for further proceedings.

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