Seventh Circuit applies 'next to impossible' likelihood of confusion test

In Top Tobacco LP v North Atlantic Operating Company Inc (Case 07-1244, December 4 2007), the US Court of Appeals for the Seventh Circuit, relying on pictures of the competing products and packaging, has confirmed that a picture really is worth a thousand words.

Top Tobacco LP and North Atlantic Operating Company Inc compete in the 'roll your own' cigarette tobacco market. Top Tobacco uses the mark TOP and a drawing of a spinning top on canisters of its tobacco. The mark has been used for more than 100 years and was deemed by the court to be "well known among merchants and customers of cigarette tobacco". In 2001 North Atlantic began to offer tobacco in a canister bearing its leading brand ZIG-ZAG and the mark FRESH-TOP CANISTER.

Top Tobacco sued North Atlantic for trademark infringement and dilution. The district court granted summary judgment to North Atlantic, ruling that no reasonable jury could find that consumers were likely to be confused and that the TOP mark was not famous.

On appeal, the Seventh Circuit affirmed, expressly stating that the pictures showed the reasons for its decision. The court found it "next to impossible" to believe that any consumer, however careless, would confuse the origin of the products. While the court recognized that "next to impossible" does not mean "absolutely impossible", the pictures were enough to establish that there was no possible likelihood of confusion. The pictures were all the court had at its disposal, since Top Tobacco offered neither a survey nor evidence of actual confusion. Thus, where Top Tobacco saw infringement, the court saw only the beauty of fair use and competition. The court also refused to find the mark "famously distinctive" and would not entertain any 'niche fame'.

The case demonstrates the danger of not conducting a survey and relying on a side-by-side comparison of product packaging. Pictures may be worth a thousand words, but at least one party will not like what they say.

Emily Brown Bienko and Stephen M Schaetzel, King & Spalding LLP, New York and Atlanta

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