Henri's Food Products Company, Inc., Counterdefendant-Appellee v. Kraft, Inc., Counterplaintiff-Appellant

717 F.2d 352
CourtCourt of Appeals for the Seventh Circuit
DecidedOctober 20, 1983
Docket82-2303, 82-2446
StatusPublished
Cited by99 cases

This text of 717 F.2d 352 (Henri's Food Products Company, Inc., Counterdefendant-Appellee v. Kraft, Inc., Counterplaintiff-Appellant) is published on Counsel Stack Legal Research, covering Court of Appeals for the Seventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Henri's Food Products Company, Inc., Counterdefendant-Appellee v. Kraft, Inc., Counterplaintiff-Appellant, 717 F.2d 352 (7th Cir. 1983).

Opinions

CUMMINGS, Chief Judge.

Kraft, Inc. (“Kraft”) appeals from a district court decision and order granting to Henri’s Food Products Co., Inc. (“Henri’s”) a declaratory judgment that its trademark Yogowhip used on spoonable salad dressing does not infringe Kraft’s registered trademark Miracle Whip or the word Whip, and denying Kraft’s trademark infringement counterclaim. The district court also denied Kraft’s counterclaim for injunctive relief against the mislabeling by Henri’s of a yogurt product as salad dressing, and refused to declare void and order cancellation of Henri’s trademark application for registration of a yogurt product as salad dressing.

In 1933 Kraft began marketing Miraole Whip Salad Dressing, a spoonable dressing. In the same year, Kraft was granted United States Trademark Registration 308,260 for the trademark Miraole Whip for salad dressing. In that application for registra[354]*354tion, and in several later filings Kraft disclaimed any rights in the word Whip alone apart from the composite mark Miraole Whip as shown. The trademark Miraole Whip is incontestable under 15 U.S.C. § 1065. Not until 1978, after the commencement of this action, did Kraft use the word Whip alone on salad dressing.

Kraft began using “Miracle Whip” in the early 1930’s in connection with a new machine and method for the continuous production of mayonnaise. The machine was referred to as the Miracle Whip Machine, which performed “miracles in mayonnaise blending” (App. 3). In 1933 Kraft introduced Miracle Whip Salad Dressing, created in its Miracle Whip Machine. Advertisements indicated that Miraole Whip Salad Dressing was creamy, silky smooth and fluffy light.

In 1973 and 1974 Henri’s developed a successful line of pourable dressings made with yogurt. In 1976 Henri’s decided to enter the spoonable salad dressing and the mayonnaise markets with two new products made with yogurt: YOGONAISE and YOGO-WHIP. These products are sold primarily in the midwest. Henri’s attempted to sell its Yogowhip and Yogonaise products with the same marketing approach used for its pourable dressings made with yogurt: the yogurt dressings taste good but are lower in fat than the leading competitors in the marketplace. Since 1958 Henri’s has had a registered trademark for the logo, referred to as the “Frenchman,” which has been used or affixed in labeling and advertising for Henri’s Yogowhip product. Since 1968 Henri’s has had a registered trademark for the word “Henri’s” which has also been used or affixed in labeling and advertising for Henri’s Yogowhip product. In July of 1976 Henri’s filed an application to register Yogowhip for salad dressing; that application has been stayed pending resolution of this case. In August 1981, just before trial, Henri’s filed an application to register Yo-gowhip as a reduced calorie dressing for salads.

The central issue in this appeal is whether Henri’s Yogowhip infringes on Kraft’s Miracle Whip trademark. The test for trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1), is “likelihood of confusion, deception or mistake on the part of the consuming public.” James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976). The key question therefore is whether it is likely that the consuming public will be confused into believing that Henri’s Yogowhip comes from the same source as Miracle Whip Salad Dressing. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 381 (7th Cir.1976), certiorari denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94. After reviewing the record, we cannot conclude that the district court clearly erred in finding no likelihood of confusion.

Infringement

In determining whether likelihood of confusion exists, this Circuit considers such factors as distinctiveness of the trademark in issue, similarity of the marks, similarity of the products, similarity in the channels of distribution, identity of advertising media utilized, the intent of the alleged infringer, and evidence of actual confusion. Union Carbide, supra, 531 F.2d at 381-382. The district court’s findings as to likelihood of confusion are findings of fact, and are subject to the clearly erroneous standard of review, Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 857 (7th Cir.1982), though to the extent the determination is predicated on the similarity of the marks themselves, this Court is in as good a position as the trial judge to determine likelihood of confusion. Union Carbide, supra, 531 F.2d at 383. Kraft argues, and Henri’s does not really dispute, that several of the above factors weigh on the infringement side of the balance. The district court found, and Kraft emphasizes, that Miracle Whip is an “extremely strong trademark” (App. 14). Both Miraole Whip and Yogowhip are sold through the same channels of distribution and are found in the same section of the supermarket. The products are advertised in the same media. The products themselves are similar in that both are spoonable salad dressings, though [355]*355Yogowhip contains yogurt and is a low fat dressing. On the more important factors— similarity of the marks, evidence of confusion, and intent of the alleged infringer— Kraft and Henri’s part company.

A. Similarity of the marks

An examination of MiRacle Whip and Yogowhip for similarity of “sound, sight and meaning,” Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 638 (9th Cir.1963); 1 J. Gilson, Trademark Protection and Practice § 5.02 (1979), reveals the following: Miracle Whip is two words and each word appears on a separate line. Yogowhip is one word and naturally appears on the same line. This distinction was given weight by the court in Plough, supra, 314 F.2d at 638, in comparing Coca Tan and Coca Tint to Coppertone. Miracle Whip has four syllables and Yogowhip has only three. The word Miracle is fanciful, revealing nothing about the product. The prefix Yogo on the other hand is descriptive, indicating a yogurt product. Miracle Whip and Yogowhip have the final syllable, Whip, in common, though as noted above it stands as a separate word in Miracle Whip.

Looking at the marks as a whole, Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 1295 (Cust. & Pat.App.1974), we agree with the district court that the differences outweigh the similarities. This is not to say that two trademarks having a final syllable in common can never be sufficiently similar to lead to a likelihood of confusion (Kraft Br. 29). To the contrary, this Circuit in G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 387 (1959), held that Bonamine infringed Dramamine. In comparing the marks, the Court found that they

contain the same number of syllables; they have the same stress pattern, with primary accent on the first syllable and secondary accent on the third; the last two syllables of Dramamine and Bona-mine are identical.

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Bluebook (online)
717 F.2d 352, Counsel Stack Legal Research, https://law.counselstack.com/opinion/henris-food-products-company-inc-counterdefendant-appellee-v-kraft-ca7-1983.