Buitoni Foods Corp. v. Gio. Buton & C.S.p.A.
| Decision Date | 24 May 1982 |
| Docket Number | Nos. 1064,1065,D,s. 1064 |
| Citation | 680 F.2d 290 |
| Parties | BUITONI FOODS CORPORATION, Plaintiff-Appellee-Cross-Appellant, v. GIO. BUTON & C. S.p.A., Defendant-Appellant-Cross-Appellee. ockets 81-7887, 82-7049. |
| Court | U.S. Court of Appeals — Second Circuit |
G. Franklin Rothwell, Bernard, Rothwell & Brown, Washington, D. C., for defendant-appellant-cross-appellee.
Guy W. Shoup, Wyatt, Gerber, Shoup, Scobey & Badie, New York City (Eliot S. Gerber, New York City, of counsel), for plaintiff-appellee-cross-appellant.
Before OAKES, CARDAMONE, and WINTER, Circuit Judges.
This appeal from a judgment of the United States District Court for the Eastern District of New York, Thomas C. Platt, Jr., Judge, involves a trademark infringement claim by Gio. Buton & C. S.p.A. (Buton), an Italian producer of brandies, liqueurs, and aperitif wines, against Buitoni Foods Corporation (Buitoni), a producer of Italian-style foods. Buton has exported vermouth and VECCHIA ROMAGNA brandy to the United States since 1961, and ROSSO ANTICO aperitif wine since 1976. Buton has registered its ROSSO ANTICO trademark, and has a registration application pending for the trademark BUTON. Buitoni, which has registered the BUITONI trademark both for Italian-style foods and for wines, began marketing table wines in 1975. Further facts about the two companies and their businesses are amply set forth in the appendix to the opinion below. See Buitoni Foods Corp. v. Geo. Buton & C. S.p.A., 530 F.Supp. 949, 959-73 (E.D.N.Y.1981).
Buton petitioned for cancellation of Buitoni's trademark registration for wine before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office in May 1977. The TTAB panel ordered the registration canceled in August 1979, finding that the BUITONI mark, as used on wines, so resembled the senior BUTON mark, as used in the related market for brandies, liqueurs, and aperitifs, that it was likely to cause confusion. Gio. Buton & C. S.p.A. v. Buitoni Foods Corp., 205 U.S.P.Q. (BNA) 477 (TTAB 1979).
Buitoni filed a complaint in district court in October 1979, seeking review of the TTAB cancellation ruling and an injunction against Buton for trademark infringement and unfair competition. Buton counterclaimed to enjoin Buitoni from using the BUITONI trademark on table wines, alleging common law trademark infringement, false designation of origin under the Lanham Act § 43(a), 15 U.S.C. § 1125(a), and dilution under New York law. At trial, Buitoni abandoned its infringement and unfair competition claims, amending its complaint to request only a declaration that it had a right to use the BUITONI mark for table wines, but that Buton did not have a right to use the BUTON mark for table wines and must accordingly amend its trademark registration application.
Judge Platt, finding that 530 F.Supp. at 959, reversed the TTAB cancellation order and held that Buitoni could continue to use its trademark on wines, provided that the signature of its president, Marco Buitoni, continued to accompany the mark on the wine bottle labels. Id. He also ordered that the description of goods in Buitoni's trademark registration be amended to read "table wine" instead of "wines," and that the description in Buton's pending registration application be amended to read "aperitif wine" instead of "wine." Id. Buton appeals from the ruling that there is no likelihood of confusion, and Buitoni cross-appeals from the court's signature requirement. We affirm on the appeal and reverse on the cross-appeal.
In analyzing the issue of likelihood of confusion, Judge Platt properly considered the so-called Polaroid factors, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). See Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 965-67 (2d Cir. 1981); McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130-31 (2d Cir. 1979). First, he found the strength of the BUTON mark in the United States "very weak" compared to the "relatively strong" BUITONI mark. 530 F.Supp. at 956. BUITONI is prominently displayed on Buitoni wine bottles (as it is on all Buitoni food products) while Buton's aperitif is labeled and advertised principally as ROSSO ANTICO, its brandy as VECCHIA ROMAGNA. 1 Moreover, Buitoni's advertising for its wines stresses the Buitoni's widely sold pasta and other Italian food products; Buton, in contrast, advertises ROSSO ANTICO without reference to the BUTON name. Thus the finding that BUITONI more distinctively identifies the source of the goods than does BUTON is well supported.
Second, the court below found the degree of similarity between the BUITONI and BUTON marks insubstantial, based on their phonetic differences and on the presence of Marco Buitoni's signature along with the BUITONI mark. Id. at 957. This finding is not clearly erroneous, and the court did not err in considering the difference in the marks' presentation-the BUITONI logo with and the BUTON name without a prominent signature, see McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d at 1133-34. Even where the BUTON name is prominent, as on its brandy bottle, it looks quite different from the BUITONI mark.
Third, the court found slight proximity between Buton's and Buitoni's alcoholic products, as they have different alcohol contents and different uses-Buitoni table wines with meals and Buton's drinks before and after meals. 530 F.Supp. at 957. Thus as did the chips and crackers at issue in Vitarroz Corp. v. Borden, Inc., 644 F.2d at 967, "the products in this case differ in ways that may be deemed material to consumers." Nor was there any evidence that Buton intended to begin marketing table wines for export, so that the likelihood of its bridging the gap between the products, the fourth Polaroid factor, was slight.
Fifth, there was no evidence of actual confusion between the names by American consumers, and the court could properly take the absence of proof of actual confusion into account, McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d at...
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