Falcon Rice Mill, Inc. v. Community Rice Mill, Inc.

• Decision Date: 21 February 1984
• Docket Number: No. 82-4451,82-4451
• Citation: 725 F.2d 336
• Parties: FALCON RICE MILL, INC., Plaintiff-Appellant, v. COMMUNITY RICE MILL, INC. and James Vidrine, Defendants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 336

725 F.2d 336

222 U.S.P.Q. 197

FALCON RICE MILL, INC., Plaintiff-Appellant, v. COMMUNITY RICE MILL, INC. and James Vidrine, Defendants-Appellees.

No. 82-4451.

United States Court of Appeals Fifth Circuit.

Feb. 21, 1984.

L. Lawton Rogers, III, Joseph M. Killeen, Arlington, Va., for plaintiff-appellant.

J. Winston Ardoin, Eunice, La., for defendants-appellees.

Appeal from the United States District Court for the Western District of Louisiana.

Before WISDOM, REAVLEY, and JOHNSON, Circuit Judges.

WISDOM, Circuit Judge:

Falcon Rice Mill (Falcon) brought this suit, alleging that the defendants, Community Rice Mill (Community) and James Vidrine, were guilty of unfair competition and trade dress infringement. ¹ Falcon sought to recover damages and to enjoin the defendants from using certain trade dress for their rice. After trial the district court denied the injunction and dismissed all claims on the ground that Falcon had not established a likelihood of confusion. We affirm.

I.

Falcon, located in Crowley, Louisiana, is the successor of Rice City Milling Co., Inc. Rice City marketed, and Falcon continues to market, its rice in Louisiana and Texas using a variety of packages, including the three packages at issue here. ²

Falcon sells "HOME COUNTRY" medium grain rice in a white or brown paper bag (Fig. 1). On the front of the bag, in the center, is a large rectangular drawing, in green, brown, and white, of a plantation house shaded by a large, moss-laden oak tree. Above this drawing are the words "HOME COUNTRY" in large green capital letters. Below the picture are the words "OLD FASHIONED MEDIUM GRAIN" in smaller black capital letters, the word "RICE" in green capital letters, and the name and address of the mill and the net weight of the package, in black capital letters. On the sides of the package, the legend "HOME COUNTRY OLD FASHIONED MEDIUM GRAIN RICE" is repeated in green and black letters.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Falcon also sells medium grain rice under the "ED'S" label (Fig. 2). ³ This rice is sold in clear plastic bags. In the center of the bag is a map, in dark blue, of the State of Louisiana. The word "LOUISIANA" in white capital letters runs diagonally across the state. A white star and the word "CROWLEY" indicate the location of the mill. Wavy red and white lines below the state represent the Gulf of Mexico. To the left of the northwest corner of the map is the word "ED'S" in red letters on a white background. To the right appears the legend "EXTRA FANCY MEDIUM GRAIN" in blue capital letters, the word "rice" in large white lower case letters outlined in red and white, and the net weight in small blue capitals. The legend "ED'S EXTRA FANCY MEDIUM GRAIN RICE" is repeated in red, blue, and white on the sides.

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Falcon sells long grain, or Toro, rice in white paper bags (Fig. 3). The word "TORO", in large orange or red capital letters, appears within a blue oval. Below this, also in orange or red capitals, are the words "LONG GRAIN RICE", the name and address of the mill superimposed on a blue band, and the net weight. "TORO LONG GRAIN RICE" appears on the sides and bottom of the package, again with the word "TORO" within a blue oval.

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The individual defendant, James Vidrine, worked as a broker for Rice City until June 1, 1981. At that time, Falcon Rice bought Rice City, and did not employ Vidrine. Shortly thereafter, Vidrine became a broker for Community, located in Mamou, Louisiana, approximately 35 miles north of Crowley. He designed, or participated in the design of, new packages for Community medium and long grain rice, and began calling on many of the same customers he had called on while employed by Rice City.

After Vidrine went to work at Community Rice, the company adopted a new mark, "CAJUN COUNTRY". Vidrine testified that this mark is federally registered and that he purchased the right to use it on rice packages from another food manufacturer. This mark appears in decorative capital letters on both the medium and long grain packages. The medium grain package is a clear plastic bag with a map of Louisiana in green (Fig. 4). The mark "CAJUN COUNTRY" appears above this map in black letters outlined in white. On the map, in black capital letters, are the words "LOUISIANA GROWN" and "LOUISIANA MILLED", a small star in a circle and the word "MAMOU" indicating the mill location. The map rests atop a large, irregularly shaped, dark blue area suggesting the Gulf of Mexico. In this area, in small white capital letters, are the words "OLD FASHION MEDIUM GRAIN RICE". The name and address of the mill and the net weight appear below in black capital letters. Scattered about the face of the package are five oblong yellow shapes with jagged black edges, and the words (in black script lettering) "Boudin", "Gumbo", "Etouffe", "Rice Dressing", "Sauce Piquante", and "Jambalaya". The legend "CAJUN COUNTRY OLD FASHION MEDIUM GRAIN RICE" appears in black on the sides of the package, with the words "CAJUN COUNTRY" and "RICE" in the same decorative lettering used on the front of package.

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Community's long grain (Toro) package is also a clear plastic bag (Fig. 5). From top to bottom the front of the package is labeled as follows: "CAJUN COUNTRY" in decorative blue capital letters outlined in white; "LONG GRAIN" in orange capital letters outlined in white; a blue hexagon with the word "TORO" superimposed in orange; "LOUISIANA GROWN LOUISIANA MILLED" in blue capital letters; "RICE" in orange capitals outlined in white; the net weight of the rice and name and address of the mill in blue capital letters outlined in white. "CAJUN COUNTRY LONG GRAIN RICE" appears along the sides of the bag.

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Falcon filed its complaint on July 28, 1982, asserting four causes of action: unfair competition violating section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982); state trademark infringement in violation of La.Rev.Stat.Ann. Sec. 51:222 (West Supp.1982); unfair competition violating La.Rev.Stat.Ann. Sec. 51:411 (West 1965); and "common law trademark infringement and unfair competition" under Texas law. Except for the Louisiana trademark claim, each cause of action alleged that Community's packages, considered in their entirety, were confusingly or deceptively similar to Falcon's. ⁴

On September 13, 1982, the district court conducted a hearing on Falcon's application for an injunction. The parties stipulated that this hearing would constitute a trial on the merits. At the end of the trial, the court orally denied the injunction, rendered judgment for defendants, and dismissed the complaint. ⁵ On October 8, 1982, the court issued a brief memorandum, entitled "Reasons for Judgment", holding that Falcon had failed to establish a likelihood of confusion between its products and Community's products. Falcon appeals.

II.

Although Falcon asserts four causes of action, the underlying issue is the same in each: are Community's packages so similar to Falcon's that they create a likelihood of confusion as to the source of the products? ⁶ "[T]he basic test under every type of 'unfair competition' is the 'likelihood of confusion' test." Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 5 Cir.1981, 659 F.2d 695, 703, cert. denied, 1982, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342; accord, Amstar Corp. v. Domino's Pizza, Inc., 5 Cir., 615 F.2d 252, 265, cert denied, 1980, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129. In this circuit it is well settled that likelihood of confusion is a question of fact and the trial court's determination may be reversed only if clearly erroneous. ⁷ Chevron, 659 F.2d at 703; Amstar, 615 F.2d at 257-58; T.G.I. Friday's, Inc. v. International Restaurant Group, Inc., 5 Cir.1978, 569 F.2d 895, 899; American Foods, Inc. v. Golden Flake, Inc., 5 Cir.1963, 312 F.2d 619, 624; Sears Roebuck & Co. v. All States Life Ins. Co., 5 Cir., 246 F.2d 161, 168, cert. denied, 1957, 355 U.S. 894, 78 S.Ct. 268, 2 L.Ed.2d 192. If the trial court misapplies the governing legal standards, however, the "clearly erroneous" standard is inapplicable. Chevron, 659 F.2d at 703; Continental Motors Corp. v. Continental Aviation Corp., 5 Cir.1967, 375 F.2d 857, 859. Falcon argues that the court's findings in this case are thus tainted and urges us to examine the facts on our own. Our examination of the record convinces us, however, that the district court's opinion shows an understanding and application of the proper legal standards.

Falcon argues first that the district court misconstrued this case as one involving only trademark, not trade dress. ⁸ The difference is an important one. Falcon concedes that the mark "Toro" is descriptive and that Community's mark "CAJUN COUNTRY" does not per se infringe Falcon's mark "HOME COUNTRY", but argues that the overall appearance of Community's packages is confusingly similar to the overall appearance of Falcon's packages. Falcon points to language in the district court's opinion that, Falcon says, demonstrates that the court misunderstood this distinction. The court used the term "trade dress" only once, in the first sentence of the opinion, and thereafter used the word "trademark". The court also noted that "TORO" is a very weak "trademark", and stated that Falcon desires "to permanently enjoin the use by defendants of Vidrine's federally registered trademark, 'Cajun Country', as that mark is presently employed on Community's products".

Without doubt, the Lanham Act and state law doctrines of unfair competition protect trade dress as well as individual trademarks. Chevron, 659 F.2d at 702; Sun-Fun Products v. Suntan Research & Development, Inc., 5 Cir.1981, 656 F.2d...