Pikle-Rite Company v. Chicago Pickle Co.

• Decision Date: 13 January 1959
• Docket Number: No. 57 C 863.,57 C 863.
• Parties: PIKLE-RITE COMPANY, Inc., v. CHICAGO PICKLE CO., Inc.
• Court: U.S. District Court — Northern District of Illinois

171 F. Supp. 671

PIKLE-RITE COMPANY, Inc., v. CHICAGO PICKLE CO., Inc.

No. 57 C 863.

United States District Court N. D. Illinois.

January 13, 1959.

John F. Brezina, John Charles Brezina, Chicago, Ill., for plaintiff.

Samuel Z. Goldman, Chicago, Ill., for defendant.

JULIUS J. HOFFMAN, District Judge.

This is an action for trade-mark infringement and unfair competition in which the plaintiff seeks an injunction, an accounting and treble damages.

The plaintiff is an Illinois corporation having its principal office and place of business in Pulaski, Wisconsin. The defendant is an Illinois corporation having its principal office and place of business in Chicago. In 1932, plaintiff's predecessor, John A. Wood, established the business of preparing and selling bottled pickles and related products. In 1942, this business was taken over by Pikle-Rite Company, an unincorporated business entity which was incorporated in 1948. Since 1932, plaintiff and its predecessors have owned and used the trade-mark "Polka" to designate different varieties of pickles which are sold primarily in self-service grocery stores in Illinois, Wisconsin, Iowa, Michigan, Minnesota, Indiana and Ohio. Since 1934, the name "Polka" has been registered as a trade-mark under the laws of Illinois. On August 7, 1956, plaintiff was granted a federal trade-mark registration on the name "Polka." As registered, the name is preceded and followed by a pair of musical notes. The name "Polka," as applied to pickle products, is fanciful, arbitrary, non-descriptive and non-generic, and is a valid trademark.

Representative labels under which plaintiff markets some of its "Polka"-brand pickle products are as follows:

Although the plaintiff prepares and bottles other vegetables, its "Polka"-brand pickle products are its principal items of business. The plaintiff has advertised its "Polka"-brand products through the media of television, radio, newspapers, window posters, shelf posters and gifts such as pencils, lazy susans and plastic aprons. However, the evidence discloses no comprehensive advertising expenditures.

For the period January 1953 through June 1957, the total amount of sales of "Polka"-brand products was $311,184.11. The yearly amount of sales of these products was as follows:

                    1953 ...............$ 49,014.75
                    1954 ...............  45,230.58
                    1955 ...............  68,461.56
                    1956 ............... 100,037.32
                    1957 ...............  48,439.90
                      (through June)
                

There is no evidence on the question whether the pickle business as a whole was substantially better in 1956 than it was in 1955. Nor is there any evidence on the question whether the plaintiff expanded its business or its advertising in 1956.

In December 1956, defendant began to distribute pickles in bottles which bore the brand-name "Pol-Pak." Defendant's label is as follows:

The defendant markets its products through self-service grocery stores. However, the evidence does not disclose whether the defendant utilizes this method exclusively or even primarily.

With reference to infringement, the basic issue in this case is whether the defendant's use of the name "Pol-Pak" on its products "* * * is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods." 15 U.S.C.A. § 1114(1) (a). For the reasons which follow, I am of the opinion that the defendant's brand-name "Pol-Pak" is confusingly similar to the plaintiff's trade-mark "Polka," and that the plaintiff is entitled to injunctive relief. However, I am also of the opinion that the plaintiff is not entitled to an accounting and damages.

There is no dispute between the parties as to the law which is applicable to the instant case. In Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 1927, 18 F.2d 774, at page 775, the law of infringement was stated as follows:

"Whether there is an infringement of a trade-mark does not depend upon the use of identical words, nor on the question as to whether they are so similar that a person looking at one would be deceived into the belief that it was the other; but it is sufficient if one adopts a trade-name or a trade-mark so like another in form, spelling, or sound that one, with a not very definite or clear recollection as to the real trade-mark, is likely to become confused or misled." (Emphasis added.)

This rule has been applied in numerous other cases. Nu-Enamel Corp. v. Armstrong Paint & Varnish Works, 7 Cir., 1938, 95 F.2d 448, affirmed 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195; California Fruit Growers Exchange v. Windsor Beverages, 7 Cir., 1941, 118 F.2d 149; Syncromatic Corp. v. Eureka Williams Corp., 7 Cir., 1949, 174 F.2d 649, certiorari denied 1949, 338 U.S. 829, 70 S.Ct. 79, 94 L.Ed. 504; Albert Dickinson Co. v. Mellos Peanut Co., 7 Cir., 1950, 179 F.2d 265; Benrose Fabrics Corp. v. Rosenstein, 7 Cir., 1950, 183 F.2d 355; Independent Nail & Pack. Co. v. Stronghold Screw Prod., 7 Cir., 1953, 205 F.2d 921, certiorari denied 1953, 346 U.S. 886, 74 S.Ct. 138, 98 L.Ed. 391; Keller Products v. Rubber Linings Corp., 7 Cir., 1954, 213 F.2d 382, 47 A.L.R.2d 1108; Square D. Co. v. Sorenson, 7 Cir., 1955, 224 F.2d 61.

In determining whether the likelihood of confusion exists, it should be noted that:

"The ascertainment of probability of confusion because of similarity of trade names presents a problem not solvable by a precise rule or measure. Rather is it a matter of varying human reactions to situations incapable of exact appraisement. We are to determine, as was the District Judge, the purchasing public's state of mind when confronted by somewhat similar trade names singly presented. Is the similarity of name or dress such as to delude the public or will the prospective buyer readily differentiate between the two names? We can only contemplate, speculate, and weigh the probabilities of deception arising from the similarities and conclude as our, and the District Judge's, reactions persuade us." Colburn v. Puritan Mills, 7 Cir., 1939, 108 F.2d 377, at page 378.

Although the question presented by the instant case cannot be solved by precise rule or measure, certain factors are relevant. Whether infringement exists is not to be determined solely by a side-by-side comparison of the names in question. Square D. Co. v. Sorenson, 7 Cir., 1955, 224 F.2d 61; Albert Dickinson Co. v. Mellos Peanut Co., 7 Cir., 1950, 179 F.2d 265. Although it is proper to consider the names as a whole, the names should not be examined with a microscope to detect minute differences. Syncromatic Corp. v. Eureka Williams Corp., 7 Cir., 1949, 174 F.2d 649, certiorari denied 1949, 338 U.S. 829, 70 S.Ct. 79, 94 L.Ed. 504. To constitute infringement, it is not necessary that the defendant appropriate the whole of plaintiff's mark, and the imitation need only be slight if it attaches to the salient feature of plaintiff's mark. Independent Nail & Pack. Co. v. Stronghold Screw Prod., 7 Cir., 1953, 205 F.2d 921. The court should also consider the form, spelling and sound of the marks in question, Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 1927, 18 F.2d 774; whether the products involved are the same or similar, Benrose Fabrics Corp. v. Rosenstein, 7 Cir., 1950, 183 F.2d 355; whether the products are sold to the same prospective customers, Independent Nail & Pack. Co. v. Stronghold Screw Prod., supra, and whether the conditions under which the products are purchased are the same or similar, Albert Dickinson Co. v. Mellos Peanut Co., supra.

In the instant case, there is no evidence that any purchaser was, in fact, confused or misled by the defendant's use of the name "Pol-Pak." However, it was not necessary for the plaintiff to prove actual confusion. The statutory test is likelihood of confusion. 15 U.S.C. A. § 1114(1)(a); Keller Products v. Rubber Linings Corp., 7 Cir., 1954, 213 F.2d 382, 47 A.L.R.2d 1108; Independent Nail & Pack. Co. v. Stronghold Screw Prod., supra.

I am of the opinion that the defendant's use of the name "Pol-Pak" gives rise to the likelihood of confusing similarity. The salient part of defendant's brand-name, i.e., "Pol," constitutes three-fifths of plaintiff's trade-mark. Common experience teaches that an individual will more readily remember the first part of a name than some other part. Further, to the extent that the defendant's pickles are sold in self-service grocery stores, the parties utilize the same or similar commercial channels, the prospective purchaser is the same, and the conditions under which the products are purchased are the same or similar. The names "Polka" and "Pol-Pak" are not more dissimilar than the names "Cutex" and "Cuticlean" which were held to be confusingly similar in Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 1927, 18 F.2d 774. The Northam case also refutes defendant's contention that the name "Pol" is but an abbreviation for the descriptive word "Polish," and is, therefore, not infringing. In the Northam case, the designation "Cuti" was an abbreviation for the descriptive or generic word "cuticle," but the court held that "Cuticlean" infringed "Cutex."

The defendant contends that a side-by-side comparison of the label...