Beer Nuts, Inc. v. Clover Club Foods Co.

520 F. Supp. 395, 214 U.S.P.Q. (BNA) 60, 1981 U.S. Dist. LEXIS 12407
CourtDistrict Court, D. Utah
DecidedApril 20, 1981
DocketCiv. NC 79-0082
StatusPublished
Cited by3 cases

This text of 520 F. Supp. 395 (Beer Nuts, Inc. v. Clover Club Foods Co.) is published on Counsel Stack Legal Research, covering District Court, D. Utah primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Beer Nuts, Inc. v. Clover Club Foods Co., 520 F. Supp. 395, 214 U.S.P.Q. (BNA) 60, 1981 U.S. Dist. LEXIS 12407 (D. Utah 1981).

Opinion

MEMORANDUM OPINION

JENKINS, District Judge.

This is an action for trademark infringement and unfair competition with a counterclaim asking that the plaintiff’s registered mark be declared void and struck from the Trademark Registration Rolls.

Jurisdiction is footed on 15 U.S.C. § 1121, 28 U.S.C. § 1338(a), 28 U.S.C. § 1338(b) and 28 U.S.C. § 1332 and is found present. Venue is proper.

Plaintiff Beer Nuts, Inc., asserts that defendant’s use of the term “Brew Nuts” and a drawing of an overflowing stein on packaging used in the sale of a sweet and salted peanut, is a colorable imitation of plaintiff’s registered mark “Beer Nuts” and infringes on plaintiff’s rights under federal, state and common law. 1

Plaintiff asks that defendant’s use of the term “Brew Nuts” and the overflowing stein symbol be enjoined. Plaintiff further seeks an accounting, damages for prior infringement as well as attorneys fees and costs. By way of defense, defendant asserts that the registration of “Beer Nuts” was fraudulent, that the registration rolls should be revised by striking the registra *397 tion from the rolls, and that it be determined that the term used (Beer Nuts) is generic or descriptive in nature and is incapable of exclusive use by plaintiff. 2

Each party vends a sweetened and salted red-skinned peanut. Plaintiff also sells cashews. Plaintiff vends all of its nut products under the name “Beer Nuts”. The bulk of each product sold by each party is sold in super markets, although plaintiff vends its products in and through a wide band of outlets including taverns and beer halls throughout the continental United States.

While a multitude of questions were presented to the Court, the question of genuine importance to the parties in this case is whether there is a likelihood of confusion 3 by the purchasing public as to the source —that is to say, the origin — of the competing products of plaintiff and defendant. 4

According to weight of authority such a determination is a question of fact. 5 The policy footings justifying one having a publicly sanctioned monopoly of a mark used in trade are traditionally stated as (1) minimizing the likelihood of public confusion as to the origin or source of goods marketed under the mark, and (2) precluding another from unfairly appropriating to himself the good will and the good name— the potential and repeat business — to which the mark owner is rightfully entitled as a result of his expenditure of energy and effort in creating a mark with public recognition and acceptance. 6 In short, in the world of commerce and trade, no one ought to be allowed to trade on another’s good name or trade on another’s recognized mark. 7

There are some symbols including some words — generic in nature — which because of their early and widespread use or their particular form are incapable of exclusive appropriation by one who wishes to use them as his own private mark in the very public world of trade and commerce.

The defendant here suggests that included in such a class of symbols are those words currently used by plaintiff — Beer Nuts — and based in part thereon by way of counterclaim asks this Court to strike “Beer Nuts” from the Register of Marks maintained by the Commissioner of Patents.

Plaintiff counters by relating a compelling story of plaintiff and its predecessors’ dream of commercial success come true by the exploitation of the humble red-skinned peanut, delicately salted, ingratiatingly glazed by corn syrup and coconut oil and labeled, “with a bit of deviltry”, “Beer Nuts”. The principal product marketed under that label has achieved national acceptance resulting in current sales of about a million dollars per month.

*398 While there may be a lingering question as to whether the mark should have been registered at all, there is no question that since registration in 1955, there have been large expenditures of time, effort and money in giving the mark “Beer Nuts”, a life of its own — i. e., widespread identification, acceptance, recognition and credence in the market place — in short, a secondary meaning.

Beer Nuts, Inc. is the owner of the Beer Nuts mark. It licenses the use of the mark to family controlled distributors who purchase the product from a family controlled processor. The salting and sweetening process was originally patented. The patent has expired.

The home office of Beer Nuts, Inc., as indicated on each package of product, is Bloomington, Illinois. The product is marketed in a variety of packages from vacuum packed tins to “see-thru” cellophane bags. The words “Beer Nuts” appear prominently near the top of a typical package. The printing is red on a white background or white on a red background. There is a variety of red and white striping at the top and bottom of the bags always with ®, the registration notice in juxtaposition to the words “Beer Nuts”. There is a legend on the bag which states, “Distributed by Beer Nuts, Inc., Bloomington, 111. 61701.” A typical package is annexed.

Defendant packages and distributes a similar product, namely a red-skinned sweet and salted peanut in a partially “see-thru” bag, partially colored brown of various shades, with the logo “Clover Club” in the upper left hand corner, a drawing of an overflowing stein, and the words “Brew Nuts” set in brown on an orange background near the top of the package. In smaller type below the words “Brew Nuts” are the words “sweetened salted peanuts”. On the reverse side, similar words appear. In the lower left hand corner of the typical package it states, “Clover Club Foods Company, General Offices, Kaysville, Utah 84037, ‘Plants throughout the West’.” A typical package is annexed.

Is there a likelihood of confusion as to origin of the competing products? I find there is not.

While the peanut product is similar and the markets overlap in those areas of the United States where Clover Club Foods Company operates, (generally the Inter-mountain West), the product packaging and wording are sufficiently unique so as to preclude any likelihood of confusion as to the origin of the competing products.

First, the home office of each vendor is plainly stamped on each package: Bloomington, Illinois and Kaysville, Utah, respectively. The distinctive logo of each is prominently displayed — plaintiff’s Beer Nuts, Inc.® and defendant’s distinctive Clover Club mark used by it on hundreds of products.

Second,

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Bluebook (online)
520 F. Supp. 395, 214 U.S.P.Q. (BNA) 60, 1981 U.S. Dist. LEXIS 12407, Counsel Stack Legal Research, https://law.counselstack.com/opinion/beer-nuts-inc-v-clover-club-foods-co-utd-1981.