59 F.3d 616 (7th Cir. 1995), 95-1721, August Storck K.G. v. Nabisco, Inc.

Docket Nº:95-1721.
Citation:59 F.3d 616
Party Name:AUGUST STORCK K.G. and Storck USA, L.P., Plaintiffs-Appellees, v. NABISCO, INC., Defendant-Appellant.
Case Date:May 23, 1995
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit
 
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Page 616

59 F.3d 616 (7th Cir. 1995)

AUGUST STORCK K.G. and Storck USA, L.P., Plaintiffs-Appellees,

v.

NABISCO, INC., Defendant-Appellant.

No. 95-1721.

United States Court of Appeals, Seventh Circuit

May 23, 1995

Argued May 11, 1995.

*

Order Denying Rehearing June 9, 1995.

Page 617

Kevin Charles Trock, Joseph F. Schmidt (argued), Judith L. Grubner, Martin L. Stern, Laff, Whitesel, Conte & Saret, Chicago, IL, for plaintiffs-appellees.

Peter V. Baugher, Steven A. Weiss, Donna M. Maus, Kenneth E. Kraus, Schopf & Weiss, Chicago, IL, James B. Swire (argued), Douglas C. Fairhurst, Helene M. Freeman, Townley & Updike, New York City, for defendant-appellant.

Before BAUER, WOOD, Jr., and EASTERBROOK, Circuit Judges.

EASTERBROOK, Circuit Judge.

"It happened a long time ago in the little village of Werther. There, the candymaker, Gustav Nebel, created his very finest candy, taking real butter, fresh cream, white and brown sugars, a pinch of salt, and lots of time. And because these butter candies tasted especially delicious, he called the candy 'Werther's Original', in honor of his little village of Werther." So reads the pitch on a bag of Werther's TM Original candies. Nabisco surely developed its competing candy a different way--in a chemist's lab, followed by testing in focus groups. Nabisco concluded that Nebel used too much sugar for modern tastes and worries; it substituted isomalt, hydrogenated glucose syrup, and acesulfame potassium. Its packaging of Life Savers TM Delites TM screams: "25% LOWER IN CALORIES THAN WERTHER'S TM ORIGINAL* CANDY". August Storck K.G., which makes and sells Werther's TM Original, learned about Life Savers TM Delites TM from prototype trade samples; the candy is not scheduled for introduction until this coming August. Storck did not appreciate the comparison and filed this suit under the Lanham Act, 15 U.S.C. Secs. 1114, 1125(a), arguing that Nabisco was about to infringe its trademark and trade dress. The district court issued a preliminary injunction, forbidding Nabisco to use the packaging it has devised. 1995 U.S. Dist. (N.D.Ill.). Nabisco tells us that if it must come up with new packaging the new candy cannot be introduced until 1996.

The prototype packaging for Life Savers TM Delites TM that Storck attached to the complaint used the words "Werther's Original" without either the TM symbol or the asterisk that Nabisco will include in the product offered for sale. The asterisk refers to a disclaimer: "WERTHER'S TM ORIGINAL is a registered trademark of and is made by August Storck KG. Storck does not make or license Life Savers Delites TM." Nabisco assures us that it does not (and never did) plan to market a product without the TM symbol or disclaimer, and that it told Storck so. Before the district judge issued the injunction, Nabisco gave him a copy of the consumer packaging. The judge remarked that if he had seen Nabisco's revised packaging earlier "the Court's ruling might have been different"--and then issued the injunction

Page 618

anyway. Yet Nabisco did not yield to the pressure of litigation, demonstrating in the process that an injunction is essential to prevent it from returning to its preferred practices; Nabisco's corporate policy calls for the use of an TM symbol and disclaimer when mentioning rivals' products. That an injunction could have been appropriate to prevent the use of Storck's registered trademark without the symbol and disclaimer does not mean that it is appropriate once the judge learns that all...

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