Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass'n , 465 F.3d 1102 ( 2006 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
TILLAMOOK COUNTRY SMOKER, INC., 
an Oregon corporation,
No. 04-35843
Plaintiff-Appellee,
D.C. No.
v.
 CV-02-01540
TILLAMOOK COUNTY CREAMERY MWM
ASSOCIATION, an Oregon
OPINION
cooperative corporation,
Defendant-Appellant.

Appeal from the United States District Court
for the District of Oregon
Michael W. Mosman, District Judge, Presiding
Argued and Submitted
September 12, 2006—Portland, Oregon
Filed October 11, 2006
Before: Michael Daly Hawkins, Barry G. Silverman, and
Ronald M. Gould, Circuit Judges.
Opinion by Judge Silverman
17525
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17529
COUNSEL
John Peter Staples, Chernoff, Vilhauer, McClung & Stenzel,
Portland, Oregon, for the defendant-appellant.
James N. Westwood, Stoel Rives, Portland, Oregon, for the
the plaintiff-appellee.
OPINION
SILVERMAN, Circuit Judge:
The Tillamook County Creamery Association, the maker of
the Tillamook brand of cheese for nearly a hundred years, has
a beef with a company called Tillamook Country Smoker, a
purveyor of smoked meats and jerky. In 1976, Tillamook
Country Smoker began selling its meat products under its
name. The cheese people had actual knowledge of Tillamook
Country Smoker’s activities, but never said a word. Not only
17530 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
that, the cheese folks even sold Tillamook Country Smoker’s
products in its own gift shop and in its mail-order catalog.
Twenty-five years later, when Tillamook Country Smoker
began selling its meat snacks in supermarkets, the cheese peo-
ple for the first time claimed trademark infringement and
sought to enjoin the meat people from making any further use
of the Tillamook Country Smoker name. The cheese people
explain their quarter-century delay in taking action against
Tillamook Country Smoker by contending that they are vic-
tims of “progressive encroachment.” The district court ruled
that the cheese people are barred by laches. We agree.
I. Background
The Tillamook County Creamery Association
(“Creamery”) is a 150-member dairy cooperative in the city
of Tillamook in Tillamook County, Oregon. The association
has a major presence in the area. On its official website, Tilla-
mook County describes itself as “The Land of Cheese, Trees
and Ocean Breeze.” See Tillamook County, Oregon, at
http://www.co.tillamook.or.us (last visited Sept. 25, 2006).
Creamery markets its products nationally through retail
grocery and club stores, with annual revenues topping $250
million. Its primary product is cheese, and is second only to
Kraft in the sale of certain cheeses. Besides selling in retail
stores, Creamery also maintains a mail-order catalog and a
factory store along Highway 101 in Tillamook.
Creamery began using the “Tillamook” mark for its cheese
and butter products as early at 1918. It registered the “Tilla-
mook” mark with the U.S. Patent and Trademark Office
(“PTO”) in 1921 and 1950.
In 1975, a member of the Creamery Association, Crawford
Smith, approached Creamery’s General Manager Beale Dixon
about his desire to start a processed meat company. Smith
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17531
informed Dixon of his wish to operate the business under the
mark “Tillamook Country Smoker.” Dixon did not object “so
long as Mr. Smith did not build a cheese factory.” Tillamook
Country Smoker (“Smoker”), also based in Tillamook
County, was thus born. Today, it employs about 250 workers
and grosses $41 million annually.
Smoker began operations in 1976, employing a number of
label designs. Two prominent designs featured a “burning
ham” and a ribbon. All labels, however, featured the words
“Tillamook Country Smoker.” On some of its labels the word
“Tillamook” was the same font size as “Country Smoker.” On
several others, the word “Tillamook” was larger than “Coun-
try Smoker.” Creamery never objected.
Smoker’s original product line was marketed to deli count-
ers. After 10 months, Smoker began distributing jerky and
smoked beef chunks primarily to convenience stores and
mom-and-pop groceries, although some of Smoker’s products
ended up in supermarkets as early as 1984. Not only did
Creamery refrain from objecting to Smoker’s use of the word
“Tillamook,” it actively encouraged the use by selling Smok-
er’s products in its own store and mail-order catalog.
In 1985, after approximately 10 years in business, Smoker
applied for registration of the mark “Tillamook Country
Smoker.” Smoker notified Creamery of this application, but
Creamery said nothing. The PTO refused the application
because the mark was “confusingly similar” with Creamery’s,
and the two companies were selling complementary products
in similar channels of trade. Nevertheless, Smoker continued
to use the mark after the PTO’s rejection — all without com-
plaint from Creamery.
In 1995, Smoker filed a new trademark application seeking
to register a combined word and design mark consisting of the
words “Tillamook Country Smoker” fronting its “ribbon”
design. Creamery did not object, and the PTO approved this
17532 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
application in 1997. The parties refer to this label as Smoker’s
“ribbon design” mark, the registration of which Creamery
seeks to cancel in this litigation.
Creamery and Smoker’s symbiotic relationship continued
during this period. Creamery’s catalog often described its
products and Smoker’s with little distinction between the
companies. For example, in its 1997-1998 catalog, Creamery
referred to Smoker’s “Jerky in a Jar” as “our one pound jars
of Old Style Beef Jerky” (emphasis added). Similar cheese
and meat combinations were also offered in Creamery’s fac-
tory store and website. During this period, Smoker employees
would regularly deliver its products to Creamery. Creamery
would then deliver Smoker’s products to customers.
In the mid-1990s, Smoker sought to increase its direct sales
to grocery stores. Believing that its brand image was unsuited
for grocery chains, Smoker hired a label designer and brand
consultant. In a report dated November 12, 1996, the consul-
tant informed Smoker that it lacked brand identity with its
customers due in large part to the generic look of Smoker’s
past labels, and Smoker’s inconsistent label designs. In
response, Smoker re-branded most of its products with the
“circle T” design. The word “Tillamook” appeared in block
lettering above the small phrase “Country Smoker.” Below or
to the side of “Tillamook Country Smoker” appeared a large
“T” with a circle around it.
Smoker’s direct sales to grocery stores and club ware-
houses grew significantly in the following years. In 1997,
sales to such entities were less than $170,000. By 2002,
Smoker’s sales had increased to over $7 million.
Smoker submitted two trademark applications during this
period. First, on September 21, 1999 — and despite the
PTO’s prior denial in 1985 — Smoker applied for registration
of the “Tillamook Country Smoker” word mark. The PTO
approved the application, but before the final registration was
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17533
issued, Creamery lodged its opposition. In 2002, Creamery
sought to cancel Smoker’s 1997 registration of its ribbon-
design. Second, on April 10, 2000, Smoker applied for regis-
tration of the word mark “Tillamook Jerky.” The PTO denied
the application, ruling that the “Tillamook” wording was
“highly similar” with Creamery’s registered mark.
In 1998, Creamery began recording instances of brand con-
fusion between its products and Smoker’s. Several grocery
chains wrongly displayed Smoker’s products under the
Creamery “Tillamook” mark or the Creamery logo. Another
chain mistakenly sent invoices for Smoker products to Cream-
ery. Consumers also contacted Creamery about Smoker prod-
ucts, including a group of teachers who worried about the
resemblance between Smoker’s “jerky chew” product and
chewing tobacco. Between 1997 and 1999, Creamery noted
four confusion contacts. In 2000, the number of confusion
contacts rose to 40 instances, 96 in 2001, and 106 in 2002.
In September 2000, twenty-five years after Tillamook
Country Smoker began business and started selling under that
name, Creamery wrote a cease-and-desist letter to Smoker,
objecting to Smoker’s use of the word “Tillamook.” In
response, Smoker brought this suit in the District of Oregon
seeking the following declaratory judgments: (i) Smoker is
the owner of the trademark “Tillamook Country Smoker” and
the mark does not infringe on Creamery’s “Tillamook” mark;
(ii) Smoker’s registration of the ribbon-design mark is valid;
and (iii) Smoker is entitled to issuance of a trademark regis-
tration for the word mark “Tillamook Country Smoker.”
Creamery asserted various counterclaims for trademark
infringement, dilution, and unfair competition. It sought an
injunction preventing Smoker from using the name “Tilla-
mook” or any other mark which is likely to cause confusion.
Additionally, Creamery sought an order declaring that Smok-
er’s use of the “Tillamook Country Smoker” mark, the “Tilla-
17534 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
mook Jerky” mark, and the “TillamookJerky.com” domain
name infringed on Creamery’s trademark.
The parties filed cross-motions for summary judgment. The
district court granted partial summary judgment to Smoker on
the use of the “Tillamook Country Smoker” mark, finding that
Creamery’s objections were barred by laches. Tillamook
Country Smoker, Inc. v. Tillamook County Creamery Ass’n
(“Tillamook I”), 311 F. Supp. 2d 1023, 1040 (D. Or. 2004).
The court granted partial summary judgment to Creamery,
finding that Smoker’s use of the “Tillamook Jerky” mark was
infringing. Id. at 1044-45.
In a second opinion, the court granted Smoker’s motion for
summary judgment regarding the registration of the “Tilla-
mook Country Smoker” mark, holding that Smoker’s use of
the marks would not cause a likelihood of confusion. Tilla-
mook Country Smoker, Inc. v. Tillamook County Creamery
Ass’n (“Tillamook II”), 333 F. Supp. 2d 975, 983-85 (D. Or.
2004).
II. Jurisdiction
The district court had jurisdiction under 28 U.S.C. § 1331and § 1338(a). We have jurisdiction pursuant to 28 U.S.C.
§ 1291.
III. Analysis
A. Trademark Infringement Claim
[1] In its counterclaim, Creamery sought prospective equi-
table relief — an injunction against Smoker’s continued use
of the “Tillamook” mark — on a theory of trademark
infringement. An infringement claim under the Trademark
Act of 1946 (“Lanham Act”), 15 U.S.C. § 1114(1), requires
the trademark owner to demonstrate “that the alleged infring-
er’s use of the mark is likely to cause confusion, or to cause
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17535
mistake, or to deceive consumers.” Reno Air Racing Ass’n v.
McCord, 452 F.3d 1126, 1134 (9th Cir. 2006) (citation and
internal quotation marks omitted). Smoker has raised the
defense of laches, which can defeat an otherwise valid claim
under the Lanham Act. See Jarrow Formulas, Inc. v. Nutri-
tion Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002).
[2] The limitations period for laches starts “from the time
the plaintiff knew or should have known about its potential
cause of action.” Id. at 838; see also ProFitness Physical
Therapy Center v. Pro-Fit Orthopedic and Sports Physical
Therapy P.C., 314 F.3d 62, 70 (2d Cir. 2002) (“[A] plaintiff
should not be obligated to sue until its right to protection has
ripened such that plaintiff knew or should have known . . .
that [it] had a provable infringement claim against defen-
dant.”); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,
462 (4th Cir. 1996) (holding that the trademark owner need
not sue “until the likelihood of confusion looms large”) (cita-
tion and internal quotation marks omitted).
[3] In analogizing a laches claim where an injunction is
sought, courts first determine when the statute of limitations
period expired for “the most closely analogous action under
state law.” Jarrow Formulas, 304 F.3d at 836. If the plaintiff
filed within that period, there is a strong presumption against
laches. If the plaintiff filed outside that period, the presump-
tion is reversed. See id. at 838. The district court identified
two possible limitations periods under Oregon law—two
years or ten years. 311 F. Supp. 2d. at 1031. Neither party
contests this ruling, nor is it disputed that Smoker began using
the “Tillamook Country Smoker” mark in 1976 and that
Creamery did not file suit until 2002.
[4] The district court then must balance the following six
factors to determine whether the trademark owner’s delay in
filing suit was unreasonable and, therefore, barred: “(1)
strength and value of the trademark rights asserted; (2) plain-
tiff’s diligence in enforcing mark; (3) harm to senior user if
17536 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
relief is denied; (4) good faith ignorance by junior user; (5)
competition between senior and junior users; and (6) extent of
harm suffered by the junior user because of senior user’s
delay.” E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607
(9th Cir. 1983). The party asserting laches must demonstrate
that it has “suffered prejudice as a result of the plaintiff’s
unreasonable delay in filing suit.” Jarrow Formulas, 304 F.3d
at 835. Creamery does not challenge this finding of the dis-
trict court.
On appeal, Creamery advances three arguments for why
laches should not bar its claims: first, the starting point of the
laches period should be 1998, when Smoker began its direct
sales to grocery stores, and not Smoker’s origination in 1976;
second, the district court improperly analyzed the second E-
Systems factor (diligence) when it rejected Creamery’s asser-
tions of progressive encroachment; and third, Smoker’s
alleged bad faith disentitles it to the defense of laches.
1. The beginning of the laches period
[5] Our precedents do not define the standard of review for
determining the starting date of a laches period. In an analo-
gous circumstance, the question of when the statute of limita-
tions begins to run for an action at law is reviewed de novo.
See, e.g., Orr v. Bank of America, NT & SA, 285 F.3d 764,
780 (9th Cir. 2002). De novo review is thus appropriate here.
[6] The undisputed record demonstrates that Creamery
knew or should have known of possible customer confusion
shortly after Smoker’s origination in 1976. Smoker has
always displayed the words “Tillamook Country Smoker” on
its products. Those products were complementary to Cream-
ery’s products and sold through Creamery’s catalog, factory
store, and website, even after the new “circle T” label was
adopted in 1997. “A plaintiff is certainly put on notice [for
laches] where for many years the parties had plants in the
same city and plaintiff had many business contacts with
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17537
defendant.” 5 McCarthy on Trademarks and Unfair Competi-
tion § 31:38; see also Borg-Warner Corp. v. York-Shipley,
Inc., 293 F.2d 88, 94 (7th Cir. 1961).
Creamery argues that the laches clock should be delayed
because Creamery’s and Smoker’s products did not share the
same primary channel of distribution — supermarkets — until
1998. We rejected a similar argument in Grupo Gigante SA
De CV v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004).
In Grupo Gigante, a large Mexican grocery chain named
“Grupo Gigante” filed a trademark infringement action
against the owner of two small San Diego grocery stores
named “Gigante Market.” Grupo Gigante had superior rights
to the “Gigante” mark when the small stores opened in 1991,
but waited until 1999 to bring suit, when the first Grupo
Gigante stores opened in Southern California. Only at this
point, Grupo Gigante argued, did the laches clock start to run
because the “likelihood of confusion loom[ed] large.” Id. at
1103. We disagreed:
That argument rings hollow in the light of Grupo
Gigante’s argument that its mark already was well
known in San Diego Country in 1991. Grupo
Gigante cannot logically argue that it had established
a protectable interest in the Gigante mark in the
[defendant’s] trading area in 1991, but was not
obliged to protect that interest until 1999.
Id.[7] Similarly, Creamery had a protectable interest in 1976
when Smoker first adopted the “Tillamook Country Smoker”
mark. Even though Creamery and Smoker may not have oper-
ated in the identical commercial channels at the time, the two
companies were using similar marks on complementary prod-
ucts in the same geographical area, creating the prospect of
confusion. Creamery had actual notice of Smoker’s allegedly
17538 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
infringing mark soon after Smoker’s inception, thereby start-
ing the laches period. Because the analogous state limitations
period had long expired prior to Creamery’s filing in 2002,
there is a presumption favoring Smoker’s laches defense. Dil-
igence on Creamery’s part would have required it to speak up
in 1976 or shortly thereafter.
2. The second E-Systems factor: diligence in
enforcement
When reviewing a district court’s grant of summary judg-
ment on the basis of laches, certain aspects of the district
court’s decision are reviewed de novo, such as whether the
district court decided material factual disputes that need to be
resolved at trial. See Jarrow Formulas, 304 F.3d at 833-34.
On the other hand, the district court’s application of the dif-
ferent E-Systems factors is entitled to deference. Id. at 834.
[8] Creamery raises the doctrine of progressive encroach-
ment in an effort to explain and excuse its long delay in bring-
ing suit. Under this doctrine, the trademark owner need not
sue in the face of de minimis infringement by the junior user.
The owner may wait until “the junior user of a mark moves
into direct competition . . . selling the same ‘product’ through
the same channels and causing actual market confusion.” Pru-
dential Ins. Co. of America. v. Gibraltar Fin. Corp. of Cali-
fornia, 694 F.2d 1150, 1154 (9th Cir. 1982); see also
ProFitness Physical Therapy Center, 314 F.3d at 70 (asking
whether “the [junior user], after beginning its use of the mark,
redirected its business so that it more squarely competed with
plaintiff and thereby increased the likelihood of public confu-
sion of the marks”). Common methods of encroachment are
the junior user’s expansion of its business into different
regions or into different markets. See Grupo Gigante, 391
F.3d at 1103 (citing Prudential Ins. Co., 694 F.2d at 1154).
[9] We hold that the district court did not abuse its discre-
tion when it found no progressive encroachment from Smok-
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17539
er’s redesign of its labels, or Smoker’s direct sales to grocery
stores. As to the labeling, the district court reasonably con-
cluded that Smoker’s 1997 redesign “[did] not in any way
make the new packaging more similar to Creamery’s packag-
ing.” Tillamook I, 311 F. Supp. 2d at 1035. The pre-1997
labels all had used the phrase “Tillamook Country Smoker,”
and some had emphasized the word “Tillamook.” Id. The
1997 redesign, adopting a uniform font and adding a “circle
T” logo, was an insignificant change. Id. Likewise, the district
court did not abuse its discretion in finding that Smoker’s new
font and color scheme did not cause a material increase in
consumer confusion.
[10] Similarly, the district court did not abuse its discretion
in finding that Smoker’s commencement of sales to supermar-
kets in 1997 represented normal business growth, not progres-
sive encroachment. To establish progressive encroachment,
Creamery would have had to show that Smoker “expand[ed]
its business into different regions or into different markets.”
Grupo Gigante, 391 F.3d at 1103 (emphasis added). A junior
user’s growth of its existing business and the concomitant
increase in its use of the mark do not constitute progressive
encroachment. See Prudential Ins., 694 F.2d at 1154
(“[G]rowth alone does not infringement make.”). Had Smoker
“expanded its business” into selling cheese in grocery stores,
it would be a different story.
3. The fourth E-Systems factor: good faith ignorance
by the junior user
Creamery also argues that Smoker may not claim a laches
defense because it did not act in “good faith ignorance” of
Creamery’s trademark right. The district court did not abuse
its discretion in rejecting this argument.
[11] The district court relied on two pieces of evidence in
the record to reject Creamery’s assertions. First, the court
recounted the 1975 meeting between Creamery General Man-
17540 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
ager Beale Dixon and Smoker founder Crawford Smith,
where Dixon stated that he would object to “Tillamook Coun-
try Smoker” only if Smoker was “going to build a cheese
plant.” Tillamook I, 311 F. Supp. 2d at 1026, 1032. Second,
the court noted that Creamery had sold Smoker’s products in
its factory store and catalog for years without objecting to the
use of the mark. Id. at 1032. These facts refute any claim of
bad faith on the part of Smoker.
B. Injunction Based on “Inevitable Confusion”
Creamery argues that even if its claim is subject to laches,
an injunction still should have issued to protect the public
from “inevitable confusion” between the two product lines.
See 15 U.S.C. § 1116(a) (granting district courts the “power
to grant injunctions, according to principles of equity . . . , to
prevent the violation of any right” of the trademark owner).
The district court was not persuaded by this argument and nei-
ther are we.
[12] As we recognized in Jarrow Formulas, the danger of
“inevitable confusion” between products will defeat a suc-
cessful laches defense only in a narrow set of circumstances:
[I]n order to ensure that laches remains a viable
defense to Lanham Act claims, the public’s interest
will trump laches only when the suit concerns allega-
tions that the product is harmful or otherwise a threat
to public safety and well being.
304 F.3d at 841. Creamery has not alleged that Smoker’s meat
snacks are harmful or otherwise threaten the public’s safety or
well being. It thus cannot show an overriding public interest
that trumps Smoker’s laches defense.
Even if we were inclined to narrow the Jarrow Formulas
rule, this would not be the case for it. As the district court
noted, “Creamery[ ] affirmatively [held] out Smoker’s prod-
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17541
ucts” in its catalog, store, and website, prompting some of the
confusion of which it now complains of. Tillamook I, 311 F.
Supp. 2d at 1040. As the issuance of an injunction involves
a balancing of equities, we generally leave the decision to the
considered judgment of the district court. See Reno Air Rac-
ing, 452 F.3d at 1137-38. Nothing in the record leads us to
second guess the court’s conclusion that the equities favor
Smoker in this case.
C. Trademark Registration Claim
In its counterclaim, Creamery sought an order from the dis-
trict court directing the PTO (1) to cancel Smoker’s ribbon-
design mark already registered in 1997, and (2) to refuse reg-
istration of Smoker’s word-only mark for “Tillamook Country
Smoker,” for which Smoker applied in 1999. Section 37 of
the Lanham Act, 15 U.S.C. § 1119, permits district courts to
resolve these subsidiary registration disputes when joined
with an infringement claim.
[13] Under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d),
the test for trademark registration uses the same “likelihood
of confusion” standard as the test for trademark infringement.
See Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1364
(Fed. Cir. 2000); 6 McCarthy on Trademarks and Unfair
Competition § 23:78. In granting summary judgment for
Smoker, the district court ruled that Creamery had conclu-
sively admitted during discovery that Smoker’s ribbon-design
mark and its longstanding use of “Tillamook Country Smok-
er” did not create a “likelihood of confusion” with Cream-
ery’s trademarks. Tillamook II, 333 F. Supp. 2d at 985.
Creamery argues that the district court misconstrued its
response to a request for admission. We agree with the district
court.
17542 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
1. Rule 36 admissions
[14] Rule 36 of the Federal Rules of Civil Procedure per-
mits a party to “serve upon any other party a written request
for the admission . . . of the truth of any matters within the
scope of Rule 26(b)(1) set forth in the request that relate to
statements or opinions of fact or the application of law to
fact.” Fed. R. Civ. P. 36(a). The effect of the admission is
such that “[a]ny matter admitted under this rule is conclu-
sively established” unless the court grants a motion to waive
or amend. Fed. R. Civ. P. 36(b).1 As the district court noted,
the court and parties are bound by such admissions, which
cannot be “ignored by the district court simply because it
finds the evidence presented by the party against whom the
admission operates more credible.” Tillamook II, 333 F. Supp.
2d at 984 (citation omitted).
“Where the district court’s ruling rests solely on law and
the facts are established or undisputed, review is de novo.”
Ford Motor Co. v. Todecheene, 394 F.3d 1170, 1173-74 (9th
Cir. 2005) (citation omitted).
2. The meaning of Request No. 79
The request for admission at issue reads:
Request No. 79: [Creamery] alleges that [Smoker’s]
activities between 1995 and 2000
violated [Creamery’s] rights in TIL-
LAMOOK.
Response: Objection, the term “[Smoker’s]
activity” is vague and ambiguous.
Moreover, Defendant is not aware
of the full nature and extent of
1
Creamery has not moved to amend or withdraw the admission at issue.
See Tillamook II, 333 F. Supp. 2d at 985.
TILLAMOOK COUNTRY v. TILLAMOOK COUNTY 17543
[Smoker’s] activities between 1995
and 2000. Without waiving the
foregoing objection and subject to
the limitations of those objections:
Defendant admits that [Smoker’s]
activities began violating [Cream-
ery’s] rights in the word TILLA-
MOOK at some point in the latter
part of the stated time period.
(emphasis added).
The district court construed Creamery’s response as a con-
clusive admission that Smoker’s ribbon-design mark and “Til-
lamook Country Smoker” word mark did not violate any of its
trademark rights until 1997, which proves that there was no
likelihood of confusion before that. Tillamook II, 333 F. Supp.
2d at 985. The district court held that this admission was fatal
to Creamery’s registration claims. Id.Creamery, by contrast, frames this admission as an opinion
on a matter of law; it says it was “a somewhat compressed
statement of Creamery’s position on laches.” Creamery dis-
claims any admission of fact in the statement.
The difficulty with Creamery’s position is that the request
for admission includes an underlying admission of fact that
traverses both its infringement and registration claims. In its
response, Creamery admits that Smoker did not violate
Creamery’s rights until the latter part of the 1995-2000 time
period, which it later identified as 1997. A concession that
there was no actionable infringement by Smoker prior to 1997
necessarily includes a concession that there was no “likeli-
hood of confusion” from Smoker’s marketing prior to 1997.
The latter automatically follows from the former because an
actionable infringement claim has one element — a “likeli-
hood of confusion.”
17544 TILLAMOOK COUNTRY v. TILLAMOOK COUNTY
Creamery contends that this reasoning suffers from a logi-
cal fallacy, arguing that two marks may be “confusingly simi-
lar” and still not give rise to an actionable infringement claim
(because, for instance, the marks were used in different geo-
graphic areas or markets). This misstates the test for infringe-
ment. “Confusion, or the likelihood of confusion, not
competition, is the real test for trademark infringement.” Con-
tinental Motors Corp. v. Continental Aviation Corp., 375 F.2d
857, 861 (5th Cir. 1967) (emphasis added). Even in the case
of non-competing goods, so long as “the reasonably prudent
purchaser [is] likely to be confused” between the marks, the
trademark owner has a right — and an obligation, in order to
avoid laches — to bring an infringement claim. 4 McCarthy
on Trademarks and Unfair Competition § 24:1 (emphasis
added).
[15] Creamery’s response to Smoker’s request for admis-
sion was aimed at advancing Creamery’s position on laches,
but at the same time, it cut the heart out of Creamery’s request
to cancel the registration of Smoker’s “ribbon-design” mark
and application to register the “Tillamook Country Smoker”
word mark. Smoker used both marks extensively prior to
1997 and those usages, according to Creamery’s admission,
did not create a likelihood of confusion with Creamery’s
marks. The district court correctly granted summary judgment
to Smoker with respect to the registration claims.
AFFIRMED.