Sunmark, Inc. v. Ocean Spray Cranberries, Inc.

• Citation: 64 F.3d 1055
• Decision Date: 29 August 1995
• Docket Number: No. 95-1017,95-1017
• Parties: SUNMARK, INC., Plaintiff-Appellant, v. OCEAN SPRAY CRANBERRIES, INC., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

Page 1055

64 F.3d 1055

36 U.S.P.Q.2d 1046

SUNMARK, INC., Plaintiff-Appellant, v. OCEAN SPRAY CRANBERRIES, INC., Defendant-Appellee.

No. 95-1017.

United States Court of Appeals Seventh Circuit.

Argued May 11, 1995.

Decided Aug. 29, 1995.

George W. Hamman, Marvin Benn, Dawn M. Cassie (argued), Hamman & Benn, Chicago, IL, for plaintiff-appellant.

Lynn A. Tannehill, John W. Kozak, Leydig, Voit & Mayer, Chicago, IL, David H.T. Kane (argued), Siegrun D. Kane, Kathleen E. McCarthy, Chrystal A. LeRoy, Kane, Dalsimer, Sullivan, Kurucz, Levy, Eisele & Richard, New York City, for defendant-appellee.

Before BAUER, WOOD, Jr., and EASTERBROOK, Circuit Judges.

EASTERBROOK, Circuit Judge.

Sunmark produces Swee TARTS, a popular fruit-flavored sugar candy most often sold in a tablet form similar to a brightly colored aspirin. Ocean Spray Cranberries produces a variety of sugar-flavored cranberry juice drinks that they often advertise as tasting sweet and tart--or "sweet-tart." For want of a conjunction, Sunmark prays for an injunction; unhappy with the hyphenated version of the description, it has sued under the Lanham Act and the Illinois Anti-Dilution Act. After a three-day evidentiary hearing, a magistrate judge disparaged Sunmark's chances of prevailing on the merits. 1994 U.S.Dist. (N.D.Ill.). The district judge delivered a brief oral opinion that essentially adopted the magistrate judge's report, and he refused to grant a preliminary injunction.

Since 1963 Swee TARTS candy has been sold with this logo:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The "Swee" is rendered in bright blue, the "ARTS" in magenta; the "T" in the middle is divided between the two colors.

Ocean Spray has advertised its juices as "sweet-tart" sporadically since 1942. The two campaigns with the most media exposure drew objections from Sunmark or one of its predecessors (collectively Sunmark). A 1973 television commercial for Ocean Spray cranapple juice featured a Mounty and a maiden singing "Sweet-Tart" to the tune of "Sweetheart, Sweetheart, Sweetheart". Sunmark asked Ocean Spray to discontinue use of "sweet-tart." (The record does not reveal whether Nelson Eddy or the Royal Canadian Mounted Police registered a complaint. Now that the Mounties have appointed Disney as a marketing agent, Ocean Spray has more than Sunmark to be concerned about.) Ocean Spray responded that it saw no reason to quit using words it viewed as descriptive, and it continued running the commercials until the end of the campaign several months later. While it continued to use "sweet-tart" in newspaper advertising from time to time, Ocean Spray did not again use the term in any broadcast advertising until 1991.

That year Ocean Spray decided to distinguish its cranberry products from other juice drinks by making "sweet-tart" the centerpiece of its advertising. Television commercials featured actors' faces saying "sweet-tart"--sometimes with a pause, sometimes without--over a background jingle while the two words were superimposed on the screen. Sometimes color blocks surrounded the letters in sweet and tart, sometimes not. Sometimes the words were rendered in block letters, and sometimes tart was in oblique letters. The phrases "A Sweet Tart of a Deal", "Sweet-Tart Savings", and "Get the Sweet-Tart Taste of Ocean Spray" appeared in newspaper coupons. For two years, Sunmark and its predecessors negotiated with Ocean Spray. Unwilling to accept the (minor) concessions Ocean Spray offered, Sunmark sued in 1993 under the Lanham Act and the Illinois Anti-Dilution Act.

The initial question is whether Ocean Spray used Sunmark's mark at all. If it employed the words "sweet" and "tart" simply as descriptions, and "otherwise than as a mark," it didn't, and there can be no violation of the Lanham Act under what is known as the fair use defense. 15 U.S.C. Sec. 1115(b)(4); Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 951-54 (7th Cir.1992). This is a factual question, and therefore our review of the district court's findings is deferential. August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir.1995); Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1428 (7th Cir.1985). Section 1115(b)(4) also requires that the use be in good faith; Sunmark does not seriously dispute the district court's finding that Ocean Spray did not act in bad faith.

The district court found the words sweet and tart, and their conjunction, to be descriptive, although it acknowledged that the Swee TARTS logo cannot be called descriptive. Sunmark objects strenuously, arguing that sweet-tart is an oxymoron and therefore cannot be descriptive. Although an earlier litigation called the predecessor "Sweetarts" mark "uncommon, arbitrary, and distinct", Sweetarts v. Sunline, Inc., 380 F.2d 923, 927 (8th Cir.1967), the question in this litigation is not whether "sweet-tart" or the Swee TARTS logo is an arbitrary mark when used to describe Sunmark's candy--or, as in the eighth circuit's case, an entire corporation that sold many items including products not normally thought of as tart, like butter toffees and mixed chocolates. Instead the question is whether Ocean Spray has used "sweet-tart" descriptively, for a drink that has elements of both sweetness (it is sugared) and tartness (it is based on cranberries). Both sweet and tart are words of description in ordinary English, quite unlike words such as "Exxon" or "Kodak."

Under the Lanham Act it is irrelevant whether the Swee TARTS mark is itself descriptive, and the district court did not need to pursue the question. The potential descriptive nature of "sweet-tart" does not divest Sunmark of any rights to protect its mark "Swee TARTS", for that mark is incontestable under 15 U.S.C. Sec. 1065. "Swee TARTS" is no longer subject to challenge with respect to the products to which it applies, whether or not the mark is descriptive. Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Ocean Spray is not contesting the validity of the trademark; it was invoking its right to use a descriptive phrase as a descriptive phrase under Sec. 1115(b)(4), and Park 'N Fly is no barrier to this usage. Institute for Scientific Information, Inc. v. Gordon & Breach Science Publishers, Inc., 931 F.2d 1002, 1010 (3d Cir.1991).

That Swee TARTS is an incontestable mark for sugar candy does not make Sunmark the gatekeeper of these words for the whole food industry. Cf. Qualitex Co. v. Jacobson Products Co., --- U.S. ----, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (by adopting gold-green as a trademark color for press pads, a vendor cannot claim exclusive use of this color throughout commerce). Consider what would happen if a farm started selling apples under the FLUFFY APPLE mark. "Fluffy" is a fanciful description of an apple. Let us suppose it became well known, even incontestable, and that no one else could apply the word "fluffy" to an apple, or even to an orange. Would the vendor then be able to stop General Mills from advertising that you can make fluffy cakes from its batter? (We won't pursue the question whether, when introducing the Macintosh computer, Apple Computer needed the permission of anyone other than McIntosh Laboratories, a maker of electronic gear.)

The question under Sec. 1115(b)(4) is whether "sweet-tart" is descriptive as Ocean Spray uses it. "Sweet" is adjectival. "Tart" is adjectival. Sunmark concedes that "sweet and tart" is descriptive. The district court found that "sweet-tart" meets the bill as well, at least for a product having both attributes. For a word or mark to be considered descriptive it merely needs to refer to a characteristic of the product. Sands, Taylor & Wood, 978 F.2d at 952. The eighth circuit put a great deal of weight on the fact that "sweet-tart" is not in the dictionary. Language often outpaces dictionaries; phrases such as "sports drink," cf. PepsiCo, Inc. v. Redmond, 54 F.3d 1262 (7th Cir.1995), and "hard drive" could not be found in a 1967 dictionary, but we would not be under an obligation to consider them arbitrary today. In 1990, a full year before Ocean Spray began the advertising campaign that Sunmark complains of here, eight New York Times writers used the phrase "sweet-tart" in eleven articles. In comparison, only three 1990 New York Times stories used the adjective "chocolatey", which does appear in the dictionary, and only one New York Times story in 1990 referred to the candy SweeTarts.

Is there anything more to the Lanham Act inquiry? "The use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin of the product." William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528, 44 S.Ct. 615, 616, 68 L.Ed. 1161 (1924). True, a number of courts have implied that confusion is inconsistent with a fair use defense. Transgo, Inc. v. Ajac Transmission Parts Corp., 911 F.2d 363, 366 n. 2 (9th Cir.1990); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 n. 9 (2d Cir.1979). But none of these cases acknowledges William R. Warner or asks how an accurate description can be objectionable. At all events, none of these cases dealt with unrelated products. Zatarains, for example, involved two products for frying fish, one with the mark FISH-FRI, the other identified as a "fish fry". When the products involved are similar, "likelihood...