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.

The district court dismissed Hugunin’s trademark infringement claim on the dairy’s motion for summary judgement.  The district court dismissed the dairy’s dilution counterclaim after a bench trial, finding that the dilution claim was barred by laches.

The Seventh Circuit ruled that the dairy’s dilution claim would not have succeeded, even if it had not been barred by laches.  Famous marks can be diluted either by blurring or by tarnishment.  Blurring occurs when consumers have to expend greater effort to distinguish whether a particular use of the diluted mark refers to the business that made the mark famous.  For example, is it Tiffany, the jewelry store, or Tiffany, the upscale restaurant?  Tarnishment occurs when the famous mark becomes associated with something that is likely unsavory to the mark owner.  For example, a striptease joint named “Tiffany” would bring the striptease joint to mind whenever reference was made to Tiffany, the jeweler.

It’s difficult to fit the present case into either species of dilution. Everyone recognizes ‘Tiffany’ as the name of a luxury jewelry store on Fifth Avenue in New York (with stores in other major cities), and seeing the name on a hotdog stand a passerby might think of the jewelry store and of the incongruity of a hot-dog stand’s having the same name; he might think the jewelry store’s cachet impaired by the coincidence and switch his patronage to Cartier or Harry Winston. Many consumers would recognize the name ‘LAND O LAKES’ as referring to the dairy company, but we can’t see how the company could be hurt by the use of the same name by a seller just of fishing tackle. The products of the two companies are too different, and the sale of fishing tackle is not so humble a business as the sale of hot dogs by street vendors. And so it is beyond unlikely that someone dissatisfied with LAND O LAKES fishing tackle would take revenge on the dairy company by not buying any of its products, or that a customer would have difficulty identifying Land O’Lakes’ dairy products because he had seen the LAND O LAKES mark used on Hugunin’s fishing tackle. Land O’Lakes products are advertised on their labels as dairy or other food products (such as instant cappuccino mixes), never as products relating to fishing.

(Opinion pdf pages 5 – 6).

The Seventh Circuit pointed out that Minnesota’s catchphrase, “Land of 10,000 Lakes” is in such widespread use that the Land O’ Lakes dairy company could not insist that it was the sole lawful user of Land O’ Lakes in advertising for all products.

Regarding Hugunin’s infringement claim, the Seventh Circuit ruled that

the dairy company’s use of the same trademark is confined to products so different from Hugunin’s that few if any consumers would think that simply by virtue of having an identical trademark the dairy company was competing with Hugunin in a different industry.

But just as no one watching a NASCAR race and seeing a racing car emblazoned with Budweiser’s logo would think that the beer company had entered the automobile industry, so no one reading the “Walleye Pro” ad or seeing a boat sponsored by the dairy company would think that the advertiser sells fishing tackle.

(Opinion pdf page 8).

This case is Hugunin v. Land O’ Lakes, Inc., No. 15-2815, Seventh Circuit Court of Appeals.

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