General Mills, Inc. v. Henry Regnery Co.

• Citation: 421 F. Supp. 359
• Decision Date: 15 September 1976
• Docket Number: No. 76 C 2999.,76 C 2999.
• Parties: GENERAL MILLS, INC., a corporation, Plaintiff, v. HENRY REGNERY CO., a corporation, Defendant.
• Court: United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)

421 F. Supp. 359

GENERAL MILLS, INC., a corporation, Plaintiff, v. HENRY REGNERY CO., a corporation, Defendant.

No. 76 C 2999.

United States District Court, N. D. Illinois, E. D.

September 15, 1976.

Dean A. Olds, Chicago, Ill., for plaintiff.

Ashcraft & Ashcraft, Chicago, Ill., for defendant.

MEMORANDUM OPINION

FLAUM, District Judge.

This action arises under the trademark laws of the United States, in particular the Lanham Act, 15 U.S.C. §§ 1051 et seq. Plaintiff, General Mills, Inc., is the owner of Registrations No. 515,266, No. 945,279, and No. 945,806 for the trademark "BETTY CROCKER." In its complaint plaintiff alleges that it and its related companies have been and are now engaged in the business of producing, advertising and selling cookbooks and recipe cards throughout the United States and in foreign countries. Plaintiff also states that since 1939 it has sold these publications under the name of "BETTY CROCKER" and that extensive advertising was done in this and other countries to promote plaintiff's publications. As a result, plaintiff claims that the trademark "BETTY CROCKER" has become "an asset of substantial value as a symbol of plaintiff, its quality and goodwill."

Plaintiff's cause of action is based on the allegation that notwithstanding its common law and statutory rights in the trademark "BETTY CROCKER," defendant intends to publish and sell a cookbook with the title "Betty Cooker's Crock Book For Drunks" in commerce in the United States. Plaintiff alleges that such action by defendant would constitute a colorable imitation of and would be confusingly similar to plaintiff's trademark causing substantial and irreparable injury to plaintiff all in violation of 15 U.S.C. §§ 1114, 1125, as amended, and the common law. Both permanent injunctive relief and damages are sought.

The court has before it plaintiff's motion for preliminary injunction in which it seeks to enjoin defendant, pendente lite, from publishing its cookbook using the infringing title "Betty Cooker's Crock Book For Drunks." As the Seventh Circuit has stated:

The appropriateness of granting or denying a preliminary injunction "depends upon a balancing of several factors, including the likelihood of success on the merits, the lack of adequate remedy at law, the prospect of irreparable harm if the injunction is not issued and a comparison of the relative hardships imposed on the parties."

Washington v. Walker, 529 F.2d 1062, 1065 (7th Cir. 1976), quoting Banks v. Trainor, 525 F.2d 837, 841 (7th Cir. 1975), cert. denied, 424 U.S. 978, 96 S.Ct. 1484, 47 L.Ed.2d 748 (1976). Because this court finds that on the meager record before it plaintiff has not established a likelihood of success on the merits, plaintiff's motion for preliminary injunction is denied.

Although plaintiff has alleged violations by the defendant of 15 U.S.C. § 1125 and the common law, plaintiff relies totally upon 15 U.S.C. § 1114 to establish its right to relief in its present motion. Section 1114 provides:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

Thus, in order to establish a cause of action under 15 U.S.C. § 1114, as amended, plaintiff must show that defendant has used (1) a reproduction, counterfeit, copy or colorable imitation of a mark; (2) without the registrant's consent; (3) in commerce; (4) in connection with the sale, offering for sale, distribution or advertising of any goods; and (5) where such use is likely to cause confusion, or to cause mistake or to deceive. As there is no dispute concerning the first four elements of a section 1114 cause of action, the determination of this motion depends upon whether plaintiff has shown that there is a likelihood of confusion, mistake or deception by the publication of defendant's book with the allegedly infringing title.

As the court in Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976) stated in a section 1114 action, "a key issue . . . is whether it is likely that the public will be confused into believing that the products upon which the defendant's mark, Ever-Ready, appears emanate from the same source as products upon which plaintiff's mark, EVERREADY, appears." Id. at 381. See also FS Services, Inc. v. Custom Farm Services, Inc., 471 F.2d 671 (7th Cir. 1972); Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th Cir. 1965). Such likelihood of confusion is determined by a consideration of such factors as "the type of trademark in issue, the similarity of design, similarity of products, identity of retail outlets and purchasers, identity of advertising media utilized, defendant's intent, and actual confusion." Id. at 381-82.

After an examination of the evidence presented by the plaintiff, it is this court's opinion that the plaintiff has failed to establish a likelihood of success on the issue of whether the public is likely to be confused by the defendant's book and plaintiff's mark. Thus, although it appears that plaintiff's mark is strong and the plaintiff's and defendant's products are similar, the dissimilarity in design between the books and the lack of evidence presented by plaintiff to show actual confusion or identity of retail outlets, purchasers and advertising media utilized leads this court to the conclusion that at this stage of the litigation and on this record, interim relief is inappropriate.

First, an examination of the defendant's book cover and the cover of several cookbooks published by the plaintiff shows that the defendant's book is much smaller in size than plaintiff's works. Moreover, whereas each of plaintiff's books has the name "BETTY CROCKER" on the top of the cover, the defendant's book has the name "Morey Amsterdam," with the entire title of defendant's book being "Morey Amsterdam's Betty Cooker's Crock Book For Drunks."¹ Furthermore, while the covers of plaintiff's books show domestic family scenes or pictures of food, defendant's book shows a picture of Morey Amsterdam, a well-known comedian, pouring spirits into a salad. Thus, although it is true that the word "Betty" appears on plaintiff's books and defendant's work, viewed in their totality, 531 F.2d at 382; Quaker Oates v. General Mills, Inc., 134 F.2d 429, 432 (7th Cir. 1943), there is not a likelihood that the public will be confused or misled to believe in any way that the books are in any way related. And, while it is true that defendant is attempting a parody of plaintiff's books and mark, there is no evidence before this court to indicate that defendant is intentionally attempting to confuse the public as to the source of its work, or to deceive the public in any other way.

Second, although it is true that actual confusion is not necessary to establish a section 1114 violation, Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 (7th Cir. 1965), such evidence is helpful in determining the public's state of mind. In the case at bar, however, no such evidence of actual confusion and no surveys of consumer attitudes were presented by plaintiff in support of its motion. All that was presented were two affidavits of plaintiff's employees stating that plaintiff's trademark is quite strong and presents an image of conservatism and wholesomeness. This meager showing, in the face of the disparate appearance between the plaintiff's mark and defendant's cover, coupled with the lack of any evidence as to...