Takeaway: In the Seventh Circuit, to bring a trademark infringement lawsuit, including by dilution or reverse confusion, the litigant must present evidence of harm or likelihood of harm.
In Hugunin, et al. v. Land O’ Lakes, Inc., Case No. 15-2815 (7th Cir., Mar. 1, 2016) (Posner, J), the court addressed the issue of whether a famous mark can be diluted by the identical mark of a much smaller company and agreed with the district court for dismissing the trademark infringement claims and cross-claims because neither party had been, or was likely to be, harmed by the other.
Plaintiff Land O’ Lake makes and sells fishing bait and tackle in Wisconsin and currently sells to retailers in several states. In 2000, the USPTO registered its trademark LAND O LAKES for fishing tackle.
The defendant and counterclaimant Land O’ Lakes, Inc. is located in Minnesota and sells butter and other dairy products throughout the United States since 1920, when the company was founded.
After learning that the plaintiff had registered LAND O LAKES as a trademark for fishing tackle, the defendant wrote to the plaintiff and told him that Land O’ Lakes’ trademark was “famous” and had been in use much longer. The plaintiff’s original registration had lapsed and when applying again, the defendants opposed at the Trademark Trial and Appeal Board (TTAB) and the application was suspended pending the outcome of litigation.
The Seventh Circuit found the parties’ concern over their marks perplexing because “[i]t would be strange indeed for a dairy company to manufacture a product so remote from milk, butter, and cream [as fishing tackle], and there is no sign that the dairy company intends to take the plunge.” Similarly, the Court found no facts that suggested that Land O’ Lakes intended to make or sell fishing tackle. Thus, the court emphasized that there was no evidence of any confusion, and on this basis, the infringement claims were dismissed.
As for the defendant’s counterclaims claiming that the plaintiff’s use of the LAND O LAKES trademark diluted the value of their identical trademark, the district court found that the dilution claim was barred by laches and would not have fit either form of dilution, blurring, or tarnishment.
The Court concluded that “in this unusual case two firms sued each other though neither had been, is, or is likely to be harmed in the slightest by the other. The suit was rightly dismissed.”