Libman Company v. Vining Industries, Incorporated

69 F.3d 1360, 1995 WL 680057
CourtCourt of Appeals for the Seventh Circuit
DecidedJanuary 10, 1996
Docket95-1905
StatusPublished
Cited by51 cases

This text of 69 F.3d 1360 (Libman Company v. Vining Industries, Incorporated) 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
Libman Company v. Vining Industries, Incorporated, 69 F.3d 1360, 1995 WL 680057 (7th Cir. 1996).

Opinions

POSNER, Chief Judge.

The Libman Company brought suit against Vining Industries for infringement of a federally registered trademark on a broom. After a bench trial, the district judge enjoined Vining from selling the infringing line of brooms and in addition awarded Libman almost $1.2 million in monetary relief, representing Vining’s profits from that sale. The main ground of the appeal, and the only one we need discuss, is that the district judge committed clear error in finding that consumers were likely to mistake Vining’s broom for Libman’s.

A broom has, of course, a head of bristles. In 1993, after being twice turned down, Lib-man succeeded in registering with the U.S. Patent and Trademark Office a trademark that consists of a color scheme in which one vertical band or segment of bristles is a different color (a “contrasting” color, in the language of the trademark registration) from the remaining bristles. The particular choice of contrasting colors is not part of the trademark, however. The contrasting-eolor band was sometimes red and sometimes green or black, the rest of the bristles being either a very dark gray, verging on black, with the red band, or a lighter gray with the green or black band. Libman had begun marketing these brooms in 1990. They sold well. In 1993 Vining began marketing its own contrasting-color broom, the contrasting colors being light and medium gray.

The parties agree that Libman cannot prove infringement of its trademark without proving that consumers of brooms are likely to be confused about the source of Vining’s brooms—and to think that they are Libman’s. 15 U.S.C. § 1114(l)(b); AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 615 (7th Cir.1993). A trademark is not a property right, but an identifier; so, provided no one is likely to be confused by the alleged infringer, there is no impairment of the interest that the trademark statute protects. The evidence of likelihood of confusion in this case is vanishingly thin. Vining sold several hundred thousand of the allegedly infringing brooms, yet there is no evidence that any consumer ever made such an error; if confusion were likely, one would expect at least one person out of this vast multitude to be confused, or more precisely one would expect Libman to have been able to find one such confused person. Nor was any survey conducted in an effort to determine the likelihood of confusion. The district court pointed out, moreover, that “from a distance, with the cardboard cover in place, the [Vining] broom doesn’t have the appearance of a Lib-man broom.” The head of each broom is sold with a plastic wrapper around it, but the opaque label affixed to Vining’s wrapper, unlike the label on Libman’s wrapper, is so large that it hides the contrasting colors of the bristles. It does not hide them completely, but, especially since they are merely different shades of gray, you have to peer pret[1362]*1362ty closely to notice this feature of the broom. The labels are not similar and of course the brand names are different. Consistent with the different style of packaging, Libman’s advertising (at least the advertising that is in the record, but that is all we have to go on) shows the undressed broom, its contrasting colors boldly displayed. Vining’s does not.

But “with their covers removed,” the judge went on to say, “the two brooms are quite similar in appearance.” The photographs in the record do not support this characterization, as the only thing the brooms have in common, besides being brooms, is that their bristles are in contrasting color bands rather than being all of one color. But this is an element of similarity and we shall not quibble over the district judge’s use of the word “quite.” The brooms, however, are sold in their wrappers. There is no evidence that the wrapper is ever removed before a sale to the consumer. (There is evidence that at trade shows the wrapper is sometimes removed, but those are promotions to the trade, not to consumers.) A consumer who is curious about the strength or stiffness or other tactile properties of the bristles can feel them through the plastic wrapper, which is very thin; she would have no occasion to ask the salesman to remove the wrapper.

So why is the undressed state of the broom relevant? Because the consumer might, upon removing the opaque wrapper from the Vining broom when she brought the broom home, think that she had bought a Libman rather than a Vining. Here is how her confusion might hurt Libman: The two brands of broom, though sold through the same type of outlet (supermarkets and mass-market retailers), are rarely sold by the same outlet, the reason being that retailers prefer to stock only one brand of broom. It’s a cheap but bulky item; they don’t want to fill up the store with different brands of it. Because a broom is so cheap (under $10), consumers don’t spend a lot of time mulling over their decision whether to buy. If their old broom is wearing out, which usually happens after a year or so, they’ll look for a new one the next time they find themselves in a store that sells brooms. Suppose that in 1993 you buy a Libman broom. You like it; you think it’s a great broom; and you associate the contrasting color bands with the name “Libman.” Eventually the broom wears out and you have to buy a new one. You find yourself in a store that does not stock the Libman broom (you don’t know this), but only the Vining broom. If you saw them side to side you would know that the Libman, and not the Vining, broom was the one you had had a good experience with. But you don’t see them side to side. All you see is a broom that has contrasting color bands. You think it’s a Libman broom, and buy it. Had you known it was not a Libman broom you would have waited to replace your old broom until you found yourself in a store that stocked the Libman broom.

This is a plausible narrative, one consistent not only with the objectives of trademark law but also with a large number of cases which hold that where, as in this case, the public does not encounter the parties’ trademarks together, the existence of minor differences that would clearly distinguish them in a side-by-side comparison does not refute an inference of likely confusion. E.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7th Cir.1988); James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.1976); Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d 186, 189 (5th Cir.1981); see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ¶ 23.17[2] (3d ed. 1995). As we put it years ago in a ease involving an alleged confusion between “Dramamine” and “Bonamine,” “we must determine the purchasing public’s state of mind when confronted by somewhat similar trade names singly presented.” G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 388 (7th Cir.1959) (emphasis in original).

It would have been nice had the district judge mentioned this theory of confusion rather than just moving without transition or explanation from the fact that the parties’ brooms are not confusingly similar when seen side by side to the conclusion that one infringed the trademark of the other. Lib-man did not object when at argument we judges looked at the brooms side by side and

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Cite This Page — Counsel Stack

Bluebook (online)
69 F.3d 1360, 1995 WL 680057, Counsel Stack Legal Research, https://law.counselstack.com/opinion/libman-company-v-vining-industries-incorporated-ca7-1996.