Land O’ Lakes Outdoors, Inc. and Land O’ Lakes Tackle Co., Inc., began their business selling fishing tackle in a Wisconsin town called Land O’ Lakes, a region “dotted” with lakes attractive to fishermen. Since 1997, these businesses sold fishing tackle to retailers in a number of states. In 2000, they received federal trademark registration for the mark LAND O LAKES in connection with fishing tackle.
Land O’ Lakes, Inc., based in the adjoining state of Minnesota, sells dairy products (“Land O’ Lake Dairy”) under its registered trademark LAND O LAKES.
In 1997, Land O’ Lakes Dairy became a sponsor for a sport-fishing tournament called the Wal-Mart FLW Tour and advertised its dairy products in fishing magazines. Three years later, after learning that the tackle companies had registered the mark for their tackle, Land O’ Lakes Dairy sent a cease and desist letter to the tackle companies, claiming that its mark was “famous” as it was in use since the 1920s, well before the tackle companies were formed or began selling their products. The tackle companies refused to cooperate with Land O’ Lakes Dairy, and a lawsuit, commenced by the tackle companies, ensued.
The 7th Circuit wondered why Land O’ Lakes Dairy was concerned enough to threaten the tackle companies, given that the companies produced very different goods, but also noted its surprise that the tackle companies would sue Land O’ Lakes Dairy when it did not make any competing or similar goods. The tackle companies claimed that the potential for a lawsuit scared off potential investors.
The court easily dismissed both parties’ claims. The court identified two types of dilution claims upon which trademark infringement could potentially apply. First, the court addressed a claim for blurring, where two companies with similar names but dissimilar products or industries create consumer confusion in the sense that the name connotes both companies in the consumer’s mind and the consumer must mindfully separate the two in reaching a decision. The second concept discussed the tarnishing of a name. Where a name is shared by two companies that do not compete, but where one of those companies is engaged in an unsavory business, the consumer will automatically associate in some way the name with both companies.
The court rejected the applicability of these concepts to this case. Confusion was not a concern as the two companies were engaged in completely dissimilar industries. By the same token, because neither party was engaged in a business that could negatively impact the other’s image, neither party could sustain a dilution claim. The court emphasized the inability of either company to be damaged by the other. The 2012 sales of Land O’ Lakes Dairy exceeded $4 billion, while the tackle companies had sales of less than $30,000. As such, the court found dubious any claim that the dairy company wanted to destroy or take over the tackle business or that the tackle companies’ sales were held back by the dairy company.
Finally, the court was not persuaded by the tackle companies’ claim of reverse confusion. This claim alleged that because they were the smaller of the two, people would automatically assume the mark with Land O’ Lakes Dairy, the far larger of the two. The court determined that the usage of the mark by the two parties were so different that no consumer would confuse or associate the mark with the other party.
At bottom, while the court did not dispute the similarity of the marks, it decided that the respective customers of these parties would not be confused, and dismissed the claims of both parties, highlighting that not every claim of infringement among similar marks is always successful.