Top Tobacco, L.P. v. North Atlantic Opera ( 2007 )

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 07-1244
TOP TOBACCO, L.P., and REPUBLIC TOBACCO, L.P.,
Plaintiffs-Appellants,
v.
NORTH ATLANTIC OPERATING COMPANY, INC., and
NATIONAL TOBACCO COMPANY, L.P.,
Defendants-Appellees.
____________
Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 06 C 950—Matthew F. Kennelly, Judge.
____________
ARGUED NOVEMBER 8, 2007—DECIDED DECEMBER 4, 2007
____________
Before EASTERBROOK, Chief Judge, and FLAUM and
KANNE, Circuit Judges.
EASTERBROOK, Chief Judge. This case illustrates the
power of pictures. One glance is enough to decide the
appeal.
Top Tobacco, L.P., sells tobacco to people who want to
roll cigarettes by hand or make them using a cranked
machine. This is known as the roll-your-own, make-your-
own or RYO/MYO business. Top Tobacco and its predeces-
sors have been in this segment of the cigarette market
2 No. 07-1244
for more than 100 years, and the mark TOP®, printed
above a drawing of a spinning top, is well known among
merchants and customers of cigarette tobacco. North
Atlantic Operating Company and its predecessors also
have been in the roll-your-own, make-your-own business
for more than 100 years, though initially only as manufac-
turers of cigarette paper. Not until 1999 did North Atlantic
bring its own tobacco to market. The redesigned can
that it introduced in 2001 bears the phrase Fresh-Top™
Canister. Top Tobacco maintains in this suit under the
Lanham Act that none of its rivals may use the word “top”
as a trademark.
Trademarks are designed to inform potential buyers
who makes the goods on sale. See KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004);
Dastar Corp. v. Twentieth Century Fox Film Corp., 539
U.S. 23 (2003). Knowledge of origin may convey infor-
mation about a product’s attributes and quality, and
consistent attribution of origin is vital when vendors’
reputations matter. Without a way to know who makes
what, reputations cannot be created and evaluated, and
the process of competition will be less effective. See
generally William M. Landes & Richard A. Posner, The
Economic Structure of Intellectual Property Law 166–209
(2003).
Top Tobacco insists that it has exclusive rights to the
word “top” for use on tobacco in this market. But many
words have multiple meanings: “Top” may mean the
best, or a spinning toy, or a can’s lid. Top Tobacco uses
the word “top” in the second sense and may hope that
consumers will hear the first as well; North Atlantic uses
the word in its third sense, to refer to a pull-tab design
that keeps tobacco fresh. If English used different words
to encode these different meanings, there could not be a
trademark problem. Because our language gives the word
“top” so many different meanings, however, there is a
No. 07-1244 3
potential for confusion. But no one who saw these cans
side by side could be confused about who makes which:
The phrase “Fresh-Top Canister” on North American’s can
does not stand out; no consumer could miss the difference
between Top Tobacco’s TOP brand, with a spinning top,
and North Atlantic’s ZIG-ZAG® brand, with a picture of a
Zouave soldier. The trade dress (including colors and
typography) of each producer’s can is distinctive. Here is
a larger version of the ZIG-ZAG brand can.
4 No. 07-1244
The left panel shows the can as it was between 2001 and
2004, when Fresh-Top Canister was on the front (right
under “Classic American Blend”), and the two right
panels show the can as it was from 2004 through 2006,
when the phrase Fresh-Top Canister was on the side. The
phrase was removed in 2006 when North Atlantic re-
placed the aluminum pull-tab design with a plastic lid.
(This change does not make the case moot, because the
possibility of damages remains.)
The district court granted summary judgment for the
defendants, 2007 U.S. Dist. LEXIS 2838 (N.D. Ill. Jan. 4,
2007), and the pictures show why. It is next to impossible
to believe that any consumer, however careless, would
confuse these products. “Next to impossible” doesn’t mean
“absolutely impossible”; judges are not perceptual psychol-
ogists or marketing experts and may misunderstand how
trade dress affects purchasing decisions. But the pictures
are all we have. Top Tobacco did not conduct a survey of
consumers’ reactions to the cans and did not produce
an affidavit from even a single consumer or merchant
demonstrating confusion.
What Top Tobacco wants us to do is to ignore the
pictures and the lack of any reason to believe that any-
No. 07-1244 5
one ever has been befuddled. Like other courts, this cir-
cuit has articulated a multi-factor approach to assessing
the probability of confusion. See, e.g., Barbecue Marx, Inc.
v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir. 2000). These
factors include whether the trademarks use the same
word, whether they sound alike, and so on. Top Tobacco
insists that “Fresh Top” is spelled and sounds the same
as fresh “TOP”, and thus it traipses through the list. It
conveniently omits the fact that the phrase on the ZIG-
ZAG can is “Fresh-Top Canister”, with “Fresh-Top” serving
as a phrasal adjective modifying the word “canister” rather
than as the product’s brand. But it’s unnecessary to
belabor the point. A list of factors designed as proxies
for the likelihood of confusion can’t supersede the statu-
tory inquiry. If we know for sure that consumers are not
confused about a product’s origin, there is no need to
consult even a single proxy.
Top Tobacco says that merchants may have been con-
fused, because a few of the price lists that North Atlantic
sent to its wholesalers and retailers omitted the ZIG-
ZAG brand and gave prices for a “6 oz. Fresh-Top™ Can”
and a “.75 oz. Pocket Pouch™”. Yet all of these lists
prominently include the seller’s name (North Atlantic
or National Tobacco), and if any commercial buyer
thought that North Atlantic was selling the TOP brand
the record does not contain a shred of evidence to that
effect.
Finally, only a few words are required to address Top
Tobacco’s claim that it has a “famous” brand that was
diluted by the “Fresh-Top Canister” phrase. See 15 U.S.C.
§1125(c)(2)(a) (special protection for famous marks “widely
recognized by the general public of the United States as
a designator of source of the goods or services of the
mark’s owner”). There can be no doubt that TOP is an old
and recognized brand in the loose-cigarette-tobacco
market. There is also no doubt that “top” is commonly used
6 No. 07-1244
in the tobacco business, so that the appearance of that
word on a package does not affect the reputation of Top
Tobacco. One brand of chewing tobacco bears a large “Top
Leaf ” stamp. “Top Hat” is a well-known brand of cigar
tobacco. Marlboro sells cigarettes in a “Flip-Top® Box”.
Another brand of cigarettes is sold under the mark “Top
Score”. The “Tip-Top” brand of cigarette paper is avail-
able from the same sources as Top Tobacco’s tobacco.
When Top Tobacco obtained a federal registration for
its brand of loose cigarette tobacco, it assured the Patent
and Trademark Office that it was claiming only limited
rights in the word “top.” It could hardly be otherwise: the
word “top” is too common, and too widely used to refer to
the lids of packages—as well as parts of clothing ensem-
bles, masts of ships, summits of mountains, bundles of
wool used in spinning, half-innings of baseball, positions
in appellate litigation (the top-side brief), and flavors of
quark—to be appropriated by a single firm.
The portion of §1125 from which we have quoted was
amended in October 2006 to use “the general public” as
the benchmark. This change eliminated any possibility
of “niche fame,” which some courts had recognized before
the amendment. See Syndicate Sales, Inc. v. Hampshire
Paper Corp., 192 F.3d 633 (7th Cir. 1999). Top Tobacco
insists that even if the amendment (and North Atlantic’s
new packaging) preclude equitable relief, it is still en-
titled to damages under the old version of §1125. But
what we have said is enough to show that the word “top”
is not famously distinctive “as a designator of source” in
any sensibly specified niche of tobacco products.
AFFIRMED
No. 07-1244 7
A true Copy:
Teste:
________________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—12-4-07