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Tuesday, December 04, 2007

Ind. Decisions - 7th Circuit tobacco trademark case out of Illinois turns on pictures

In Top Tobacco v. North Atlantic Operating Co. (ND Ill), a 7-page opinion, Chief Judge Easterbrook writes:

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-yourown or RYO/MYO business. Top Tobacco and its predecessors have been in this segment of the cigarette market 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 manufacturers 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. * * *

But no one who saw these cans side by side could be confused about who makes which: [pp. 3-4 sets out pictures of tobacco containers] * * *

Top Tobacco insists that even if the amendment (and North Atlantic’s new packaging) preclude equitable relief, it is still entitled 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

Posted by Marcia Oddi on December 4, 2007 01:42 PM
Posted to Ind. (7th Cir.) Decisions