T. Marzetti Co. v. Roskam Baking Co.

• Decision Date: 25 May 2012
• Docket Number: No. 10–3784.,10–3784.
• Parties: T. MARZETTI COMPANY, Plaintiff–Appellant, v. ROSKAM BAKING COMPANY, Defendant–Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

680 F.3d 629

102 U.S.P.Q.2d 1801

T. MARZETTI COMPANY, Plaintiff–Appellant,

v.ROSKAM BAKING COMPANY, Defendant–Appellee.

No. 10–3784.

United States Court of Appeals,Sixth Circuit.

Argued: Nov. 30, 2011.

Decided and Filed: May 25, 2012.

ARGUED:Brian J. Downey, Frost Brown Todd LLC, Columbus, Ohio, for Appellant. Matthew J. Gipson, Price, Heneveld, Cooper, DeWitt & Litton, LLP, Grand Rapids, Michigan, for Appellee. ON BRIEF:Brian J. Downey, Frost Brown Todd LLC, Columbus, Ohio, Matthew C. Blickensderfer, Frost Brown Todd LLC, Cincinnati, Ohio, for Appellant. Matthew J. Gipson, Steven L. Underwood, Jason L. Budd, Price, Heneveld, Cooper, DeWitt & Litton, LLP, Grand Rapids, Michigan, Alycia N. Broz, Vorys, Sater, Seymour and Pease, LLP, Columbus, Ohio, for Appellee.

Before: DAUGHTREY, MOORE, and McKEAGUE, Circuit Judges.

OPINION

MARTHA CRAIG DAUGHTREY, Circuit Judge.

In this action for trademark infringement under section 43(a), 15 U.S.C. § 1125(a), plaintiff T. Marzetti Company appeals the judgment of the district court in favor of defendant Roskam Baking Company. The alleged infringement involved Roskam's use of the mark “Texas Toast” on its packaged croutons. Marzetti contended that the term “Texas Toast” is a protectable mark and that Roskam's use created a likelihood of confusion among consumers. Roskam responded that, because the terminology is generic when describing a type of crouton, the mark “Texas Toast” is not entitled to trademark protection. After a bench trial,¹ the district court determined that “Texas Toast” is, in fact, generic when applied to croutons. Moreover, the district court held that even if “Texas Toast” were considered a protectable mark, Roskam's use did not create a likelihood of confusion among consumers. We agree with the court's decision on the generic quality of the mark and, therefore, find it unnecessary to discuss likelihood of confusion. We therefore affirm.

FACTUAL AND PROCEDURAL BACKGROUND

The evidence in the record indicates that Marzetti, an Ohio corporation, sells salad dressings, frozen garlic bread, noodles, vegetable dips, apple dips, mustard, and croutons. Roskam, a Michigan corporation, sells breads, caramel corn, candy bars, chocolate bars, doughnuts—and croutons. Marzetti and Roskam thus compete in the retail crouton business; in fact, Marzetti croutons and Roskam croutons are sold side-by-side in many food stores. Evidence at trial established that Texas toast is a large, square, thickly-sliced loaf of bread that has been baked in homes and sold commercially for many years. Marzetti, Walmart, Meijer, Pepperidge Farms, and several other brands currently produce frozen Texas toast, which is sold side-by-side in the freezer section of retail stores. Marzetti sells its frozen Texas toast under the housemark “New York Brand the Original Texas Toast.” Although Marzetti began selling frozen garlic bread in 1995, it has never tried to register “Texas Toast” and “The Original Texas Toast” as trademarks or taken legal action against its competitors over marks applied to bread.

Hoping to tie the success of its “New York Brand the Original Texas Toast” frozen bread to its crouton products, Marzetti began selling croutons under that name in 2007 and, at the time of trial, offered five different varieties of “New York Brand the Original Texas Toast” croutons. Marzetti's Texas toast croutons are not necessarily larger than other Marzetti brand croutons, although the “Texas Toast” packages contain only the two largest sizes of croutons produced by the company. The croutons are not made from actual Texas toast, but their packaging promises consumers “a bigger bite” and a “Texas Toast cut.” The packaging also states that the croutons are made by cutting loaves of bread into “Texas–Sized bites.” According to the record, “Texas–Sized” is intended to convey the expectation of a larger crouton.

Eight months after introducing the “Texas Toast” croutons, Marzetti conducted a consumer awareness survey. The results showed that none of the 675 individuals surveyed had unaided awareness of the “New York Brand The Original Texas Toast” croutons. In other words, when prompted to identify crouton brands, not one person identified Marzetti's “New York Brand the Original Texas Toast.” Only 11 percent of consumers surveyed had aided awareness. This survey is the only data available to measure consumer awareness, and Marzetti used and relied upon the data gathered.

In 2007, Cameron Roskam, a management-level employee at Roskam, saw Marzetti's “Texas Toast” croutons at a grocery store and suggested that the company develop and market a similar product under their existing Rothbury Farms brand name. Each of the eight types of croutons sold by Roskam carried the Rothbury Farms logo in the same size and same gold-colored font. Below the logo were words describing the type of crouton contained in the package, such as “Cheese Garlic,” “Italian Style,” or “Fat Free,” in large white font. The font style for the words “Texas Toast” was similar to that of the other types of Rothbury Farms croutons. The evidence indicated that Roskam used the term “Texas Toast” to convey to consumers something about the size of the croutons; the words were not intended as a brand name. The label “Texas Toast” on Roskam's packages looks substantially different from the words “Original Texas Toast” on Marzetti's packages.

In February 2009, Marzetti filed two trademark applications with the United States Patent and Trademark Office. The first application sought to register “Texas Toast” for use on croutons and tortilla strips. The second application sought to register “The Original Texas Toast” in connection with croutons and tortilla strips. The Patent Office denied both trademark applications because of the potential likelihood of confusion with the mark Texas toast for bakery goods. Marzetti submitted responses to the decisions, and the Patent Office examiner withdrew the refusals to both applications in November 2009. The Patent Office completed its final review of the “Texas Toast” and “The Original Texas Toast” trademark applications and approved them for publication, finding them to be, at a minimum, suggestive.² Both marks were published for opposition, and Roskam filed oppositions to the trademark applications in July, 2010.

In its internal documents, Marzetti has referred to its “Texas Toast” croutons as simply “the New York croutons,” and in its 2008 annual report it indicated that “New York Brand” is one of its registered brands and that “Texas Toast croutons” is one of its products. On the packages for Marzetti's “Texas Toast” products, which include frozen bread and croutons, the words “Texas Toast” and “The Original Texas Toast” always appear with the registered housemark “New York Brand.” Witnesses for Marzetti could not cite any instances of actual confusion between Marzetti's “Texas Toast” croutons and Roskam's “Texas Toast” croutons.

After becoming aware of the Rothbury Farms “Texas Toast” croutons, Marzetti contacted Roskam through counsel and demanded that Roskam “immediately and forever cease and desist any and all use of TEXAS TOAST for croutons and other salad toppings, or any other name confusingly similar to TEXAS TOAST.” When Roskam continued producing the croutons, Marzetti brought suit in federal court, alleging the following five causes of action: (1) violation of section 43(a) of the Lanham Act; (2) violation of the Ohio Uniform Deceptive Trade Practices Act; (3) a common-law trademark infringement claim; (4) a common-law unfair competition claim; and (5) a common-law dilution claim. Roskam filed an amended answer with counterclaims, seeking a declaratory judgment of non-violation regarding all of Marzetti's claims and an order finding Marzetti in violation of common-law unfair competition. Roskam also sought an award for damages and other relief. Prior to trial, Marzetti voluntarily dropped the common-law dilution claim and, at trial, Roskam agreed not to seek a declaratory judgment on its claim for dilution.

After conducting a bench trial, the district court held: (1) the mark “Texas Toast” is generic as applied to croutons; therefore, the mark does not qualify for trademark protection; and (2) Roskam's use of the words “Texas Toast” in the marketing of its croutons does not create a likelihood of confusion. The court also held that Marzetti had not engaged in unfair competition, and that Roskam was not entitled to damages or other relief. The district court entered judgment in favor of Roskam granting: a declaratory judgment of non-violation of section 43(a) of the Lanham Act; a declaratory judgment of non-violation of the Ohio Uniform Deceptive Trade Practices Act; a declaratory judgment of non-infringement of common-law trademark; and a declaratory judgment of non-violation under common-law of unfair competition. The plaintiff filed this timely appeal.

DISCUSSION

In an appeal from a judgment entered after a bench trial, we review the district court's findings of fact for clear error and its conclusions of law de novo. See Beaven v. U.S. Dep't of Justice, 622 F.3d 540, 547 (6th Cir.2010). Mixed questions of law and fact are also subject to de novo review. See Thoroughbred Software Int'l, Inc. v. Dice Corp., 488 F.3d 352, 358 (6th Cir.2007). “A finding of fact will only be clearly erroneous when, although there may be some evidence to support the finding, ‘the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.’ ” United States v. Darwich, 337 F.3d 645, 663 (6th Cir.2003) (quoting Anderson v. City of Bessemer City, 470 U.S. 564, 573, 105 S.Ct. 1504, 84 L.Ed.2d 518 (1985)). “If the district court's account of the evidence is plausible in light of the entire record, this court may not reverse that accounting, even if convinced that, had it been sitting as trier of fact, it would have weighed the evidence...