Henri's Food Products Co., Inc. v. Kraft, Inc.

• Decision Date: 20 October 1983
• Docket Number: Nos. 82-2303,82-2446,s. 82-2303
• Citation: 717 F.2d 352
• Parties: HENRI'S FOOD PRODUCTS COMPANY, INC., Plaintiff, Counterdefendant-Appellee, v. KRAFT, INC., Defendant, Counterplaintiff-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 352

717 F.2d 352

220 U.S.P.Q. 386

HENRI'S FOOD PRODUCTS COMPANY, INC., Plaintiff Counterdefendant-Appellee, v. KRAFT, INC., Defendant, Counterplaintiff-Appellant.

Nos. 82-2303, 82-2446.

United States Court of Appeals Seventh Circuit.

Argued Jan. 12, 1983.

Decided Aug. 26, 1983.

Rehearing Denied Oct. 20, 1983.

Raymond R. Krueger, Charne, Glassner, Tehan, Clancy & Taitelman, Milwaukee, Wis., for plaintiff, counterdefendant-appellee.

Francis J. Higgins, Bell, Boyd & Lloyd, Chicago, Ill., for defendant, counterplaintiff-appellant.

Before CUMMINGS, Chief Judge, COFFEY, Circuit Judge, and SWYGERT, Senior Circuit Judge.

CUMMINGS, Chief Judge.

Kraft, Inc. ("Kraft") appeals from a district court decision and order granting to Henri's Food Products Co., Inc. ("Henri's") a declaratory judgment that its trademark YOGOWHIP used on spoonable salad dressing does not infringe Kraft's registered trademark MIRACLE WHIP or the word WHIP, and denying Kraft's trademark infringement counterclaim. The district court also denied Kraft's counterclaim for injunctive relief against the mislabeling by Henri's of a yogurt product as salad dressing, and refused to declare void and order cancellation of Henri's trademark application for registration of a yogurt product as salad dressing.

In 1933 Kraft began marketing MIRACLE WHIP Salad Dressing, a spoonable dressing. In the same year, Kraft was granted United States Trademark Registration 308,260 for the trademark MIRACLE WHIP for salad dressing. In that application for registration and in several later filings Kraft disclaimed any rights in the word WHIP alone apart from the composite mark MIRACLE WHIP as shown. The trademark MIRACLE WHIP is incontestable under 15 U.S.C. Sec. 1065. Not until 1978, after the commencement of this action, did Kraft use the word WHIP alone on salad dressing.

Kraft began using "Miracle Whip" in the early 1930's in connection with a new machine and method for the continuous production of mayonnaise. The machine was referred to as the Miracle Whip Machine, which performed "miracles in mayonnaise blending" (App. 3). In 1933 Kraft introduced MIRACLE WHIP Salad Dressing, created in its Miracle Whip Machine. Advertisements indicated that MIRACLE WHIP Salad Dressing was creamy, silky smooth and fluffy light.

In 1973 and 1974 Henri's developed a successful line of pourable dressings made with yogurt. In 1976 Henri's decided to enter the spoonable salad dressing and the mayonnaise markets with two new products made with yogurt: YOGONAISE and YOGOWHIP. These products are sold primarily in the midwest. Henri's attempted to sell its YOGOWHIP and YOGONAISE products with the same marketing approach used for its pourable dressings made with yogurt: the yogurt dressings taste good but are lower in fat than the leading competitors in the marketplace. Since 1958 Henri's has had a registered trademark for the logo, referred to as the "Frenchman," which has been used or affixed in labeling and advertising for Henri's YOGOWHIP product. Since 1968 Henri's has had a registered trademark for the word "Henri's" which has also been used or affixed in labeling and advertising for Henri's YOGOWHIP product. In July of 1976 Henri's filed an application to register YOGOWHIP for salad dressing; that application has been stayed pending resolution of this case. In August 1981, just before trial, Henri's filed an application to register YOGOWHIP as a reduced calorie dressing for salads.

The central issue in this appeal is whether Henri's YOGOWHIP infringes on Kraft's MIRACLE WHIP trademark. The test for trademark infringement under the Lanham Act, 15 U.S.C. Sec. 1114(1), is "likelihood of confusion, deception or mistake on the part of the consuming public." James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976). The key question therefore is whether it is likely that the consuming public will be confused into believing that Henri's YOGOWHIP comes from the same source as MIRACLE WHIP Salad Dressing. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 381 (7th Cir.1976), certiorari denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94. After reviewing the record, we cannot conclude that the district court clearly erred in finding no likelihood of confusion.

Infringement

In determining whether likelihood of confusion exists, this Circuit considers such factors as distinctiveness of the trademark in issue, similarity of the marks, similarity of the products, similarity in the channels of distribution, identity of advertising media utilized, the intent of the alleged infringer, and evidence of actual confusion. Union Carbide, supra, 531 F.2d at 381-382. The district court's findings as to likelihood of confusion are findings of fact, and are subject to the clearly erroneous standard of review, Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 857 (7th Cir.1982), though to the extent the determination is predicated on the similarity of the marks themselves, this Court is in as good a position as the trial judge to determine likelihood of confusion. Union Carbide, supra, 531 F.2d at 383. Kraft argues, and Henri's does not really dispute, that several of the above factors weigh on the infringement side of the balance. The district court found, and Kraft emphasizes, that MIRACLE WHIP is an "extremely strong trademark" (App. 14). Both MIRACLE WHIP and YOGOWHIP are sold through the same channels of distribution and are found in the same section of the supermarket. The products are advertised in the same media. The products themselves are similar in that both are spoonable salad dressings, though YOGOWHIP contains yogurt and is a low fat dressing. On the more important factors--similarity of the marks, evidence of confusion, and intent of the alleged infringer--Kraft and Henri's part company.

A. Similarity of the marks

An examination of MIRACLE WHIP and YOGOWHIP for similarity of "sound, sight and meaning," Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 638 (9th Cir.1963); 1 J. Gilson, Trademark Protection and Practice Sec. 5.02 (1979), reveals the following: MIRACLE WHIP is two words and each word appears on a separate line. YOGOWHIP is one word and naturally appears on the same line. This distinction was given weight by the court in Plough, supra, 314 F.2d at 638, in comparing COCA TAN and COCA TINT to COPPERTONE. MIRACLE WHIP has four syllables and YOGOWHIP has only three. The word MIRACLE is fanciful, revealing nothing about the product. The prefix YOGO on the other hand is descriptive, indicating a yogurt product. MIRACLE WHIP and YOGOWHIP have the final syllable, WHIP, in common, though as noted above it stands as a separate word in MIRACLE WHIP.

Looking at the marks as a whole, Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 1295 (Cust. & Pat.App.1974), we agree with the district court that the differences outweigh the similarities. This is not to say that two trademarks having a final syllable in common can never be sufficiently similar to lead to a likelihood of confusion (Kraft Br. 29). To the contrary, this Circuit in G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 387 (1959), held that BONAMINE infringed DRAMAMINE. In comparing the marks, the Court found that they

contain the same number of syllables; they have the same stress pattern, with primary accent on the first syllable and secondary accent on the third; the last two syllables of Dramamine and Bonamine are identical. The initial sounds of Dramamine and Bonamine ("d" and "b") are both what are known as "voiced plosives" and are acoustically similar; the consonants "m" and "n" are nasal sounds and are acoustically similar.

See also id. at 388-389 and cases cited therein. However, the Court also noted that reference to decisions as to other trademarks is not of great help because each case is dependent on its own facts, id. at 389. A comparison of the marks in this case shows far less similarity than in G.D. Searle, supra. The marks must be so similar that it is likely or probable, not just possible, that consumers, when presented with the marks singly, rather than side-by-side, would confuse Henri's YOGOWHIP with the source of MIRACLE WHIP. See James Burrough, supra, 540 F.2d at 275. Based on our examination of the marks, we think that a purchaser, even a supermarket shopper who will make a selection quickly and without careful examination, is likely to differentiate between the products.

This finding is further supported by the differences in the products' labels. Despite Kraft's objection to the district court's analysis of the labels (Br. 32-34), there is authority for the proposition that a comparison of the labels rather than simply the trademarks is appropriate. See McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1133 (2d Cir.1979); Sun-Maid Raisin Growers v. Sunaid Food Prods., Inc., 356 F.2d 467, 469 (5th Cir.1966); John Morrell & Co. v. Reliable Packing Co., 295 F.2d 314, 317 (7th Cir.1961); Ye Olde Tavern Cheese Prods., Inc. v. Planters Peanuts Div., 261 F.Supp. 200, 206 (N.D.Ill.1966), affirmed, 394 F.2d 833 (7th Cir.1967). When a prospective purchaser goes to the supermarket to buy salad dressing, it is the label that the purchaser sees. Sun-Maid, supra, 356 F.2d at 469. Kraft is of course correct in stating that in various fact situations the presence of a newcomer's housemark may enhance rather than lessen the likelihood of confusion. See W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 662 (2d Cir.1970); A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir.1972). Yet even Kraft agrees that a prominent housemark may also tend to lessen confusion. (Br.33). Here, though the "Henri's" trademark is in smaller type than the word YOGOWHIP, it appears in thick, bold, black print under the "Frenchman" trademark on the YOGOWHIP label. In addition, the district court found the YOGOWHIP label distinct from the...