Libman Co. v. Vining Industries, Inc.

• Decision Date: 10 January 1996
• Docket Number: No. 95-1905,95-1905
• Citation: 36 USPQ2d 1751,69 F.3d 1360
• Parties: , 36 U.S.P.Q.2d 1751 LIBMAN COMPANY, Plaintiff-Appellee, v. VINING INDUSTRIES, INCORPORATED, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 1360

69 F.3d 1360

64 USLW 2349, 36 U.S.P.Q.2d 1751

LIBMAN COMPANY, Plaintiff-Appellee, v. VINING INDUSTRIES, INCORPORATED, Defendant-Appellant.

No. 95-1905.

United States Court of Appeals Seventh Circuit.

Argued Sept. 26, 1995.

Decided Nov. 16, 1995.

Rehearing and Suggestion for Rehearing En Banc Denied Jan. 10, 1996.

Michael R. Graham, Richard M. LaBarge (argued), Basil P. Mann, Marshall, O'Toole, Gerstein, Murray & Borun, Chicago, IL, for Plaintiff-Appellee.

Jean Marie R. Pechette, David C. Hilliard (argued), Joseph N. Welch, II, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, IL, for Defendant-Appellant.

Before POSNER, Chief Judge, and BAUER and COFFEY, Circuit Judges.

POSNER, Chief Judge.

The Libman Company brought suit against Vining Industries for infringement of a federally registered trademark on a broom. After a bench trial, the district judge enjoined Vining from selling the infringing line of brooms and in addition awarded Libman almost $1.2 million in monetary relief, representing Vining's profits from that sale. The main ground of the appeal, and the only one we need discuss, is that the district judge committed clear error in finding that consumers were likely to mistake Vining's broom for Libman's.

A broom has, of course, a head of bristles. In 1993, after being twice turned down, Libman succeeded in registering with the U.S. Patent and Trademark Office a trademark that consists of a color scheme in which one vertical band or segment of bristles is a different color (a "contrasting" color, in the language of the trademark registration) from the remaining bristles. The particular choice of contrasting colors is not part of the trademark, however. The contrasting-color band was sometimes red and sometimes green or black, the rest of the bristles being either a very dark gray, verging on black, with the red band, or a lighter gray with the green or black band. Libman had begun marketing these brooms in 1990. They sold well. In 1993 Vining began marketing its own contrasting-color broom, the contrasting colors being light and medium gray.

The parties agree that Libman cannot prove infringement of its trademark without proving that consumers of brooms are likely to be confused about the source of Vining's brooms--and to think that they are Libman's. 15 U.S.C. Sec. 1114(1)(b); AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 615 (7th Cir.1993). A trademark is not a property right, but an identifier; so, provided no one is likely to be confused by the alleged infringer, there is no impairment of the interest that the trademark statute protects. The evidence of likelihood of confusion in this case is vanishingly thin. Vining sold several hundred thousand of the allegedly infringing brooms, yet there is no evidence that any consumer ever made such an error; if confusion were likely, one would expect at least one person out of this vast multitude to be confused, or more precisely one would expect Libman to have been able to find one such confused person. Nor was any survey conducted in an effort to determine the likelihood of confusion. The district court pointed out, moreover, that "from a distance, with the cardboard cover in place, the [Vining] broom doesn't have the appearance of a Libman broom." The head of each broom is sold with a plastic wrapper around it, but the opaque label affixed to Vining's wrapper, unlike the label on Libman's wrapper, is so large that it hides the contrasting colors of the bristles. It does not hide them completely, but, especially since they are merely different shades of gray, you have to peer pretty closely to notice this feature of the broom. The labels are not similar and of course the brand names are different. Consistent with the different style of packaging, Libman's advertising (at least the advertising that is in the record, but that is all we have to go on) shows the undressed broom, its contrasting colors boldly displayed. Vining's does not.

But "with their covers removed," the judge went on to say, "the two brooms are quite similar in appearance." The photographs in the record do not support this characterization, as the only thing the brooms have in common, besides being brooms, is that their bristles are in contrasting color bands rather than being all of one color. But this is an element of similarity and we shall not quibble over the district judge's use of the word "quite." The brooms, however, are sold in their wrappers. There is no evidence that the wrapper is ever removed before a sale to the consumer. (There is evidence that at trade shows the wrapper is sometimes removed, but those are promotions to the trade, not to consumers.) A consumer who is curious about the strength or stiffness or other tactile properties of the bristles can feel them through the plastic wrapper, which is very thin; she would have no occasion to ask the salesman to remove the wrapper.

So why is the undressed state of the broom relevant? Because the consumer might, upon removing the opaque wrapper from the Vining broom when she brought the broom home, think that she had bought a Libman rather than a Vining. Here is how her confusion might hurt Libman: The two brands of broom, though sold through the same type of outlet (supermarkets and mass-market retailers), are rarely sold by the same outlet, the reason being that retailers prefer to stock only one brand of broom. It's a cheap but bulky item; they don't want to fill up the store with different brands of it. Because a broom is so cheap (under $10), consumers don't spend a lot of time mulling over their decision whether to buy. If their old broom is wearing out, which usually happens after a year or so, they'll look for a new one the next time they find themselves in a store that sells brooms. Suppose that in 1993 you buy a Libman broom. You like it; you think it's a great broom; and you associate the contrasting color bands with the name "Libman." Eventually the broom wears out and you have to buy a new one. You find yourself in a store that does not stock the Libman broom (you don't know this), but only the Vining broom. If you saw them side to side you would know that the Libman, and not the Vining, broom was the one you had had a good experience with. But you don't see them side to side. All you see is a broom that has contrasting color bands. You think it's a Libman broom, and buy it. Had you known it was not a Libman broom you would have waited to replace your old broom until you found yourself in a store that stocked the Libman broom.

This is a plausible narrative, one consistent not only with the objectives of trademark law but also with a large number of cases which hold that where, as in this case, the public does not encounter the parties' trademarks together, the existence of minor differences that would clearly distinguish them in a side-by-side comparison does not refute an inference of likely confusion. E.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7th Cir.1988); James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.1976); Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d 186, 189 (5th Cir.1981); see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition p 23.17 (3d ed. 1995). As we put it years ago in a case involving an alleged confusion between "Dramamine" and "Bonamine," "we must determine the purchasing public's state of mind when confronted by somewhat similar trade names singly presented." G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 388 (7th Cir.1959) (emphasis in original).

It would have been nice had the district judge mentioned this theory of confusion rather than just moving without transition or explanation from the fact that the parties' brooms are not confusingly similar when seen side by side to the conclusion that one infringed the trademark of the other. Libman did not object when at argument we judges looked at the brooms side by side and remarked their dissimilar appearance. It further muddied the waters at the argument by describing this case, as its brief had done as well, as a case of "reverse confusion." The term refers in trademark law to an entirely different practice, that of the alleged infringer's so saturating the market with advertising for his trademark that the public comes to believe that he, rather than the plaintiff, is the source of the plaintiff's trademarked product. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir.1992); 3 McCarthy, supra, p 23.01.

In view of the conceptual confusion it comes as no great surprise that Libman neglected to present evidence to support its misnamed theory that satisfied consumers of its broom might be fooled when they shopped for a replacement in a store that sold only Vining's broom. To insist on evidence might seem to be to commit the error of thinking that proof of actual confusion is required in a trademark-infringement case, and of course it is not unless damages are sought. Web Printing Controls Co. v. Oxy-Dry Corp., 906 F.2d 1202, 1204-05 (7th Cir.1990); Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc., 926 F.2d 134, 139 (2d Cir.1991). Libman sought injunctive relief and Vining's profits, not damages. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1126 (5th Cir.1991), aff'd on other grounds, 505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). But our point is only that a finding of likely confusion can no more be based on pure conjecture or a fetching narrative alone than any other finding on an issue on which the proponent bears the burden of proof.

To this Libman might reply that deliberate copying ("bad faith") is one of the factors that courts rely on in determining the likelihood of confusion. It is. Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 1070 (7th Cir.1992); Paddington Corp. v. Attiki...