Buitoni Foods Corp. v. Gio. Buton & CSPA

• Decision Date: 03 November 1981
• Docket Number: Civ. A. No. 79 C 2780.
• Citation: 530 F. Supp. 949
• Parties: BUITONI FOODS CORPORATION, Plaintiff, v. GIO. BUTON & C. S.p.A., Defendant.
• Court: U.S. District Court — Eastern District of New York

530 F. Supp. 949

BUITONI FOODS CORPORATION, Plaintiff, v. GIO. BUTON & C. S.p.A., Defendant.

Civ. A. No. 79 C 2780.

United States District Court, E. D. New York.

November 3, 1981.

COPYRIGHT MATERIAL OMITTED

Guy W. Shoup, Eliot S. Gerber, Barbara A. Larsen, Wyatt, Gerber, Shoup, Scobey & Badie, New York City, for plaintiff.

G. Franklin Rothwell, Bernard, Rothwell, Brown, P. C., Washington, D. C., Stuart B. Fisher, Smith, Steibel, Alexander & Saskor, P. C., New York City, for defendant.

MEMORANDUM & ORDER

PLATT, District Judge.

In this case plaintiff sues for trademark infringement under 15 U.S.C. § 1114 (FIRST CLAIM), common law trademark infringement (SECOND CLAIM), and unfair competition, namely, dilution under § 368(d) of the General Business Law of the State of New York (THIRD CLAIM). Plaintiff also seeks to review a ruling of United States Trademark Trial and Appeal Board ("TTAB") made under 15 U.S.C. § 1071(b) (FOURTH CLAIM).

Defendant has asserted counterclaims for common law trademark infringement (FIRST COUNTERCLAIM), unfair competition under 15 U.S.C. § 1125(a) (SECOND COUNTERCLAIM), common law unfair competition (SECOND COUNTERCLAIM), and unfair competition under § 368(d) of the New York General Business Law (THIRD COUNTERCLAIM).

The parties redefined the issues for determination at the trial (Tr. 208-209) as follows:

1.) "The fundamental issue is one of use and the public perception of that use.

Trademark law in the United States is based on use and public perception. That issue of use is further broken down to the two issues of nature of use (primary vs. incidental use of a trademark) and the extent of use.

The relevant issues of trademark law are nature of use, extent of use, use of a family name, and whether the BUITONI trademark, a famous trademark for Italian style food, is sufficiently strong so that it may be freely used on a closely related product — table wine (BPTB, p.2)."

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2.) "The most important issue before this Court is the proper wording of a decree to protect the parties and the public in their different trademarks and trade names asserted, (i) the Italian family name BUITONI and (ii) a name derived from a French name, BUTON (BPTB, p.4)."

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"The issue is: which of the trademarks should be protected with respect to table wine,

(i) the trademark BUITONI, which is used as the primary trademark on Buitoni products, whether they be food or table wine, or

(ii) the trademark BUTON, used incidentally on brandy and aperitif and never used on table wine (BPTB, p.8)."

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3.) "There is also the procedural necessity that the decision of the Trademark Trial and Appeal Board be reversed or modified and that an order be entered directing the maintenance of Buitoni's trademark registration for BUITONI wines or modifying it, as appropriate (BPTB, p.5)."

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"Thus, in this action, in addition to reversing or affirming the decision of the Trademark Trial and Appeal Board this Court may adjudge "... such other matter as the issues in the proceedings require, as the facts in the case may appear", 15 U.S.C. § 1071(b)(1) (BPTB, Appendix, p. 3)."

The parties have stipulated to the following facts:

1. Buitoni Foods Corporation is a New York corporation and its principal place of business, including its manufacturing plant, is at 450 Huyler Street, South Hackensack, New Jersey; it has offices in other states.

2. Buitoni Foods parent corporation is IBP Industrie Buitoni Perugina S.p.A. located at Via Cortonese 4, 06100 Perugia, Italy.

3A. Buitoni Foods owns Reg. No. 740,130 for BUITONI for macaroni, spaghetti, egg noodles, meat sauce, macaroni products, meatless sauce for macaroni products, clam sauce, canned tomatoes, rice, olive oil, tomato paste and tripe, spaghetti and meatballs in cans, mushroom sauce, meatless pizza sauce, bottled roasted peppers, frozen ravioli, frozen pizza, grated cheese and dehydrated soup.

3B. Buitoni Foods also owns Registration No. 884,225 for the mark BUITONI for macaroni, spaghetti, egg noodles, meat sauce for macaroni products, meatless sauce for macaroni products, clam sauce, spaghetti and meatballs in cans, mushroom sauce, meatless pizza sauce, frozen ravioli, frozen pizza and grated cheese.

3C. Buitoni Foods other trademark registration No. 1,040,711, is a subject of this controversy.

4. The first use of the mark BUITONI in connection with the food products is stated to be February 19th, 1941 on Reg. No. 740,130 and October 30, 1962 on Reg. No. 884,225.

5. In 1973 the Renfield Corporation a major wine importer, approached Buitoni Foods and requested permission to use the trademark BUITONI in connection with wines.

6. Buitoni Foods licensed use of the mark BUITONI to Renfield Corporation by an agreement dated November 9, 1973.

7. The mark BUITONI was first used in commerce in connection with wines in May of 1975, and first used in intrastate commerce on December 24, 1974.

8. On October 6, 1975, Buitoni filed an application to register BUITONI for use in connection with wines. This registration was issued June 1, 1976.

9. The total dollar volume of Buitoni wines sold from 1975-1978 was approximately $651,741 worth.

10. The Buitoni registration for wines issued on June 1, 1976 as Registration No. 1,040,711.

11. On May 12, 1977, Gio. Buton C.S.p.A. filed a petition to cancel Plaintiff's Registration No. 1,040,711 in the United States Patent and Trademark Office because in Buton's view Buitoni's use of its mark on wine was likely to cause confusion in view of Buton's use of BUTON on alcoholic beverages.

12. A cancellation proceeding was declared by the Trademark Trial and Appeal Board on June 2, 1977 under Cancellation No. 11,589.

13. The United States Patent and Trademark Office Trademark Trial and Appeal Board ordered cancellation of Buitoni's Registration No. 1,040,711 on August 31, 1979 on the grounds that "Registrant's Buitoni's mark `BUITONI' so resembles petitioner's Buton's previously used mark `BUTON' as to be likely, when applied to wines, to cause confusion, or to cause mistake or to deceive". Opinion of Trademark Trial and Appeal Board at 17.

14. The TTAB made the following findings:

A. "Petitioner (Buton) is engaged in the business of marketing brandy, liqueurs, and aperitif wines bearing the designation "BUTON", which Petitioner (Buton) uses both as a trademark and as a salient feature of its trade name, Gio. Buton C.S.p.A. (Opinion, p. 3)

B. "Petitioner's (Buton's) goods bearing the designation "BUTON" have been sold in commerce with the United States since at least as early as 1963 (Id.).

C. "The products are advertised in the United States on radio and television and through the print media. Buton's expenditures for advertising its "BUTON" products in the United States for the ten years prior to May, 1978 totalled approximately $50,000; sales thereof for the same 10-year period amounted to $490,000." (Id.)

D. "....... Petitioner (Buton) made continuous commercial use in the United States of the designation "BUTON" employed in the manner of the trademark, for various alcoholic beverages, including vermouth, for some twelve years prior to Respondent's (Buitoni's) first use of the mark "BUITONI" and design for wine, and the Petitioner (Buton) thereby acquired valuable rights in its said designation subsequent (presumably) to Respondent's (Buitoni's) establishment of rights in the mark "BUITONI" for pasta and other assorted food products prior to Respondent's (Buitoni's) expansion of its business under the mark "BUITONI" and design to wine. In view thereof, and since Respondent (Buitoni) has in any event failed to introduce any evidence to show that its expansion from pasta and other food products to wines was a natural one, we conclude that Petitioner (Buton) has priority of use "(Opinion at 12).

E. "..... it is clear that Petitioner (Buton) possesses a proprietary right in its mark sufficient to preclude the registration by a subsequent user of the same or similar mark for like or related goods." (Opinion at 15)

F. "For the foregoing reasons, we conclude that Respondent's (Buitoni's) mark "BUITONI" and design so resembles Petitioner's (Buton's) previously used mark "BUTON" as to be likely, when applied to wines, to cause confusion or to cause mistake or to deceive." Opinion at 17.

15. There is at present no written agreement between Buitoni Foods and Foreign Brands, Inc. to sell wines under the trademark BUITONI.

16. There is at present no written agreement between Foreign Brands, Inc. and any Italian or other wine manufacturer to sell wines under the trademark BUITONI.

17. There is at present no written agreement between Buitoni Foods and any Italian or other wine manufacturer to sell wines under the trademark BUITONI.

18. It is the obligation of an importer of foreign alcoholic beverages to obtain Certificate of Label approvals from the Federal Bureau of Alcohol, Tobacco and Firearms.

19. Foreign Brands has not yet applied for or obtained such Certificate of Label Approvals from the Federal Bureau of Alcohol, Tobacco and Firearms for labels for wine bearing the BUITONI trademark.

20. Foreign Brands is currently engaged in bankruptcy proceedings. The Petition was filed on October 22, 1979 under Chapter 11 in the United States Bankruptcy Court for the Southern District of New York. It is entitled In re Foreign Brands, Inc., I.D. # 79 Bkcy 10070. The proceeding has not been concluded and as of May 29, 1980, was expected by Manus Gass, President of Foreign Brands, to take another 60-90 days.

21. When wine was in the past sold under the BUITONI trademark (1975-1977), wine was advertised on the containers for Buitoni foods and in conjunction with Buitoni food.

22. Buitoni Foods' advertising with respect to its food products is directed to the American consumer market.

23. Buitoni Foods does not intend to await the outcome of this litigation before beginning importation of wines under the...