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

COFFEY, Circuit Judge,

dissenting in part.

I respectfully dissent from the majority’s opinion because I find it ironic that a company owning a strong trademark after spending millions of dollars promoting the same and having successfully defended it in the courts can now be deprived of this *361valuable asset by a competitor who has provided the court with a wholly inadequate basis to justify such a result. I believe it is likely that the consuming public will be confused into believing that Henri’s “Yogowhip” dressing “comes from the same source” (is made by the same company) as “Miracle Whip” salad dressing, an impermissible situation since the underlying purpose of trademark law is to prevent confusion. I reach this conclusion since I am firmly convinced that it is clear that the word “whip” has developed a secondary meaning and a weighing of the factors necessary in a decision whether or not one trademark infringes upon another trademark clearly indicates that “Yogowhip” infringes upon both “whip” and “Miracle Whip.”

I. Secondary Meaning

The district court found, without stating adequate legal reasoning, that the word “whip” was “merely descriptive.” “A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming distinctive of the applicant’s goods (15 U.S.C. § 1052(f)), becomes a valid trademark.” Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977). See also Walt-West Enterprises, Inc. v. Gannett Co., Inc., 695 F.2d 1050, 1056 (7th Cir.1982). “Once a term ceases to be descriptive, for example, and commences to indicate the origin of a product, [as I am convinced it has in this fact situation], it has acquired a secondary meaning. Secondary meaning confers title and results in the attachment of the common law right to prevent infringing imitation of the mark in its trademark meaning.” E. Kintner and J. Lahr, An Intellectual Property Law Primer, at 257 (1982).

Several factors are relevant in the determination of whether or not a term has attained a secondary meaning: “The amount and manner of advertising, volume of sales, the length and manner of use, direct consumer testimony and consumer surveys.” Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d 366, 380 (7th Cir.1976). A brief history of “Miracle Whip” is required before engaging in the secondary meaning analysis. “Miracle Whip” salad dressing was originally introduced in 1933 and it became the market leader shortly thereafter and is still the best-selling salad dressing in the nation. The district court found that “Kraft has sold more than six billion units of ‘Miracle Whip’ Salad Dressing and has spent in excess of 70 million dollars in the promotion of the product.” Since the introduction of “Miracle Whip,” Kraft has vigorously protected its “Miracle Whip” trademark and the record is replete with examples of Kraft’s successful protective efforts including litigation when deemed necessary. See Kraft-Phenix Cheese Corp. v. Goldfarb, 7 F.Supp. 199 (S.D.Cal.1934) (“Wonder Whip” found to infringe “Miracle Whip”); Kraft Cheese Co. v. Leston Co., Inc., 43 F.Supp. 782 (E.D.Mo.1941) (“Leston’s Salad Whip” found to infringe “Miracle Whip”). But see National Dairy Products Corp. v. Parman-Kendall Corp., 122 U.S.P.Q. 332 (T.T.A.B.1959) (opposition to registration of “Avo-Whip” dismissed).1

Obviously the amount of advertising expenditures is not probative of secondary meaning unless those advertising efforts are successful in entrenching the word sought to be protected in the minds of the consuming public. When the consuming public equates the word “whip” with “Miracle Whip” salad dressing as opposed to being descriptive of the product, “whip” has acquired a secondary meaning. Therefore, consumers’ attitudes toward a trademark are the chief inquiry in a secondary meaning case of this type. Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 380. See also Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 802 (9th Cir.1970). “[W]hen a company causes the public to *362associate a certain word with that company’s business, that word has a secondary meaning and receives the full protection of the law of trademark and unfair competition.” American Footwear Corporation v. General Footwear Company Limited, 609 F.2d 655, 663 (2d Cir.1979), cert. denied, 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980). Our court has held that:

“A party attempting to appropriate the exclusive use of a descriptive term must persuade the court that the consuming public treats the term as a declaration that the item or service bearing the term originates at a single source, and thereby rebut the presumption that the public regards the term as merely describing an attribute of the item or service.”

Walt-West Enterprises, Inc. v. Gannett Company, Inc., 695 F.2d at 1058. For secondary meaning to attach to a certain word, the consuming public must give primary significance to that meaning which associates the word with a particular company’s business. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938); American Footwear Corporation v. General Footwear Company Limited, 609 F.2d at 671.

The record discloses that the two surveys conducted by Henri’s indicate that the consuming public gives primary significance to that meaning of “whip” which, associates “whip” with Kraft’s spoonable salad dressing business — “Miracle Whip.” It is highly significant that in response to questions designed to ascertain the meaning of the word “whip,” consumers in both surveys responded “Miracle Whip” more often than any other response. In the first survey, the Bendikas Survey, 38% of the consumers surveyed responded “Miracle Whip” when asked the following question: “When thinking about mayonnaise-type spoonable salad dressings, what does the word ‘whip’ mean to you?” 36% of the consumers surveyed provided the next most frequent response, answering with various terms (lighter, creamy, smooth, fluffy, etc.) descriptive of the physical properties of the product.2 In the second survey conducted, the Hardin Survey, 30.5% of the consumers surveyed responded “Miracle Whip” when asked the following question: “When looking at this product (unidentified ‘Miracle Whip’ jar) what meaning does the term ‘whip’ convey to you?” 30.3% of the consumers surveyed provided the next most prevalent response, “mayonnaise.” 13.7% of the consumers surveyed responded “salad dressing.” Henri’s contends that the “mayonnaise” responses and the “salad dressing” responses should be combined to obtain a total for “spoona-ble salad dressing products” which would then exceed the “Miracle Whip” responses. This is a weak attempt to reduce the significance of the “Miracle Whip” responses— that the predominant meaning of “whip” to consumers is “Miracle Whip Salad Dressing.” There is no basis for combining these two categories because none of the survey questions were meant to elicit a response from consumers in the context of “spoona-ble salad dressing” and it is common knowledge that not all salad dressing is spoonable and not all mayonnaise is used as spoonable salad dressing.

The record establishes that the surveys introduced into evidence convincingly proved that the primary meaning consumers have given the word “whip” is Kraft “Miracle Whip.” This is not surprising considering the vast sums of money Kraft has spent promoting “Miracle Whip,” the fact Kraft has sold over six billion jars of “Miracle Whip” and that Kraft has virtually exclusively used the word “whip” in the context of the spoonable salad dressing market for approximately fifty years. Considering this proof it is more than evident that the district court’s finding that “whip” has no *363secondary meaning is clearly erroneous. It is obvious the district court failed to give proper consideration to this issue. This is not surprising considering the district court began its analysis of the issue by stating it was “convinced” the issue was a “red herring.” Nor did the court recognize that “[t]he crucial question in a case involving ‘secondary meaning’ always [has been] whether the public is moved in any degree to buy an article because of its source.” Walt-West Enterprises v. Gannett Co., Inc., 695 F.2d at 1062 n. 14 (quoting American Footwear Corporation v. General Footwear Company Limited, 609 F.2d at 663). Consequently, the district court ignored the foregoing test and failed to apply it when analyzing whether or not “whip” was infringed by Henri’s use of “whip” by naming its product “Yogowhip.”

II. Infringement

The district court correctly ruled that the test for trademark infringement is the likelihood of confusion among consumers and that their interest is the paramount consideration. James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976). However, the district court has failed to protect the interest of the consuming public by failing to focus on the right of consumers not to be confused and, for some unknown reasons without foundation in the record, giving undue weight to Henri’s putative interests in the use of the word “whip.” The court also failed to require that Henri’s comply with its duty as a latecomer to avoid creating confusion in the market. Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 382.

The questions relevant to the infringement issue are: (1) whether or not “Yogow-hip” infringes “Miracle Whip,” and (2) (because I believe that the word “whip” has attained a secondary meaning) whether or not “Yogowhip” infringes Kraft’s use of the word “whip.” The following analysis is germane to both questions.

As the majority points out, several factors must be considered in the determination of whether there is a likelihood of consumer confusion: the type of trademark in issue, the similarity of design, the similarity of products, identity of retail outlets and purchasers, identity of advertising media utilized, defendant’s intent, and actual confusion. Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 381-82. The strength of the allegedly infringed mark is also relevant to this inquiry. Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th Cir.1965).

While the district court found that “Miracle Whip” was an “extremely strong trademark” it failed to give this factor the required weight mandated by caselaw and refused, without logical reasoning, to recognize that

“[a] mark that is strong because of its fame or its uniqueness, is more likely to be remembered and more likely to be associated in the public mind with a greater breadth of products or services, than is a mark that is weak . .. . ”

James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d at 276. See also James Burrough Ltd. v. Sign of the Beefeater, Inc., 572 F.2d 574, 577 (7th Cir.1978); AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979) (strong trademark inherently distinctive and will be given widest ambit of protection). “The strength or distinctiveness of a mark determines both the ease with which it may be established as a valid trademark and the degree of protection it will be accorded.” Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934 at 939 (10th Cir.1983) (quoting McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir.1979). The fame of “Miracle Whip” and “whip” creates the opportunity for others to ride on and benefit from Kraft’s goodwill “in the effort to attract consumers to goods and services which may be thought by consumers to be in some way associated with [Kraft]. That fame creates the ‘commercial magnetism’ referred to by the Supreme Court in Mishewaka Mfg. Co. v. Kresge Co., 316 U.S. 203 [62 S.Ct. 1022, 86 L.Ed. 1381] (1942).” James Burrough Ltd. v. Sign of *364the Beefeater, Inc., 540 F.2d at 277.3 The majority, while recognizing the strength of “Miracle Whip” as a trademark fails to consider this factor in its analysis. While conceding that three of the factors to be considered favor Kraft, namely, the similarity of products, the identity of retail outlets and purchasers, and the identity of advertising media utilized, the majority depreciates their significance in failing to discuss them. These factors are significant as they have a direct bearing on the ultimate question: whether or not there is a likelihood of consumer confusion. They failed to consider that “[converging marketing channels increase the likelihood of confusion.” Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934 at 941 (quoting AMF, Inc. v. Sleekcraft Boats, 599 F.2d at 353). Also, that “[c]onfusing similarity is most likely when the products themselves are very similar.” Id. Such is the case here since we have two similar products sold side-by-side in grocery stores. Furthermore, without citation, the majority considers three other factors: similarity of the trademarks, evidence of confusion and the intent of the alleged infringer to be the “more important” factors. I disagree not only with the majority’s deference to merely three out of the eight relevant factors to be considered in an infringement case, but also with their conclusion that these factors do not weigh in favor of infringement, a conclusion they somehow reach without setting forth a legal, logical basis.

In their analysis of the similarity factor, despite recognizing that a supermarket shopper makes a selection quickly and without careful examination, the majority proceeds to perform its own “examination” of the product labels giving substantial weight to factors such as the number of syllables in “Miracle Whip” and “Yogowhip” and the color and styling differences in the products’ labels. However, caselaw recites that “[a] side-by-side comparison of the marks is not the proper test. The test is the consumer’s state-of-mind when faced with the marks individually.” Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 382 (emphasis added). “Though the marks must be compared, they must be compared in light of what occurs in the marketplace, not in the courtroom.” James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d at 275. The majority’s “examination” is not the kind that would be undertaken by the typical consumer in the marketplace as “[t]he consuming public is unlikely ever to be presented with the opportunity for such comparison.” Id. “Buyers typically exercise little care in the selection of inexpensive items that may be purchased on impulse. Despite a lower degree of similarity, these items are more likely to be confused than expensive items which are chosen carefully.” Beer Nuts, Inc. v. Clover Club Foods Co., at 941 (citing Sun-Fun Products, Inc. v. Suntan Research Development, Inc., 656 F.2d 186, 191 (5th Cir.1981)). Spoonable salad dressing is an inexpensive item which will be purchased on “impulse.” The item also has a high rate of purchase frequency and consequently a scan of the available products and quick selection will be made rather than the lengthy purchase decision associated with expensive items. The fact Henri’s merchandising experts intentionally positioned “Yogowhip” next to “Miracle Whip” on retail grocery shelves further induced impulse purchase decisions to purchase “Yogowhip” instead of “Miracle Whip.” Also, the majority’s “examination” is clearly contradicted by the obvious confusion shown by a significant percentage of consumers in the survey admitted into evidence.

While no evidence of actual consumer “confusion” was presented to the court, “confusion” evidence in the form of a consumer survey was admitted. Such evidence is probative of the likelihood of confusion among consumers. The evidence of confu*365sion contained in the Hardin Survey showed that 7.6% of the consumers surveyed believed that “Yogowhip” was produced by Kraft or whatever company produced “Miracle Whip” salad dressing. Despite this, the district court erroneously ruled that such a level of confusion is not sufficient to find infringement.

Our court in James Burrough Ltd. v. Sign of the Beefeater, Inc. recognized that “the percentage of likely confusion required may vary from case-to-case . . .. ” 540 F.2d at 279. There the court found 15% confusion not to be de minimis and set no specific required level of confusion. Id. In that case, the products of the respective parties were not related (gin and roast beef dinners) and indeed direct competition between products is not necessary to a finding of infringement. However, “the more closely products are related, the more likely sources may be confused.” Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d at 382. Such is the case here where both products are spoonable salad dressings and it is entirely conceivable consumers would think “Yo-gowhip” was a reduced calorie salad dressing or a yogurt based salad dressing being introduced by the producers of “Miracle Whip.” In a case such as we are presented with, where the evidence shows that only roughly half as many consumers are confused than in James Burrough, Ltd., this lower confusion level is nonetheless extremely significant and should be accorded more weight because the products are in competition with each other and it is much more likely that this lower level of confusion will have a greater adverse impact upon the party seeking to protect its trademark (Kraft). While in James Burrough Ltd., supra, the only likely harm which would occur would be for some imbibers of “Beefeater” gin to switch to another brand if served an unsatisfactory meal at the “Sign of the Beefeater” restaurant, here Kraft stands to lose a significant portion of its “spoonable salad dressing” market share to Henri’s if some of the 7.6% “confused” consumers purchase “Yogowhip” because of a perceived connection with Kraft products. Without doubt, brand loyalty is an extremely important factor in consumer purchases. If it were not, Kraft would not have invested over 70 million dollars in advertising.

The majority adopts and gives great weight to Henri’s argument that Kraft has not presented eases to the court in which a 7.6% level of confusion constituted a likelihood of confusion. However, each case must be decided on its own facts and “the percentage of likely confusion required may vary from case to case, ...” James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d at 279. “As we said in G. LeBlanc Corporation v. H & A Selmer, Inc., [310 F.2d 449 (7th Cir.1962) ] we are not aided by citation of other registrations, the evidence frequently being so varied on the question of likelihood of confusion.” James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d at 279 n. 24. Our court has recognized “the right of the public to be free of confusion,” Id. at 274 (emphasis added), and that “[a] trademark owner has a property right only insofar as is necessary to prevent consumer confusion as to who produced the goods and to facilitate differentiation of the trademark owner’s goods.” Walt-West Enterprises, Inc. v. Gannett Company, Inc., 695 F.2d at 1057 (emphasis added) (quoting International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir.1980), cert. denied, 452 U.S. 941, 101 S.Ct. 3086, 69 L.Ed.2d 956 (1981)). It is clear that these cases are concerned with the existence of some “confusion” rather than a specific amount of confusion. Indeed the underlying purpose of trademark law is to prevent confusion. The survey evidence unquestionably proves that some “confusion” exists in the minds of consumers. This “confusion” is sufficient to establish the likelihood the public will be moved in some degree to purchase “Yogowhip” due to the misperception it is manufactured by Kraft. See Walt-West Enterprises v. Gannett Co., Inc., 695 F.2d at 1062 n. 14.

“A newcomer to a product field has an infinity of nonconflicting trademarks from which to choose, and he has a legal duty to select a mark which is totally dissimilar to trademarks already being used in the field.” *366Jockey International, Inc. v. Burkard, 185 U.S.P.Q. 201, 208 (S.D.Cal.1975). Accord, Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 392. “One who adopts a mark similar to another already established in the marketplace does so at his peril, . .. All doubts must be resolved against him.” Beer Nuts, Inc. v. Clover Club Foods Co., at 941 (citations omitted). Henri’s could have selected a dissimilar trademark with a minimum of effort. I would hold that there is clearly a sufficient amount of evidence to find that the amount of consumer confusion as to the origin of “Yogowhip” should cause this factor to weigh heavily against Henri’s on the issue of infringement.

Finally, the district court somehow, without reason and legal basis recited in the record, found persuasive Henri’s position that it did not intend to infringe upon Kraft’s trademark. The court instead found that Henri’s intended to compete with Kraft but did not intend to compete by misleading the consuming public to believe that “Yogowhip” was distributed by Kraft. The court reached this result because it was convinced Henri’s was “equally concerned with maintaining the distinctiveness of its products.” However, the evidence introduced at trial does not support this conclusion and clearly demonstrates that Henri’s paid no heed whatsoever to its legal duty as a latecomer in the spoonable salad dressing market to avoid all consumer confusion. See Union Carbide Corporation v. Ever-Ready, Inc., 531 F.2d at 382.

At trial Leslie O’Rourke, Henri’s executive vice president, testified that when he selected the name “Yogowhip” he was not aware of the “whipping” process used in making spoonable salad dressings. This factor not only negates the district court’s finding that the word “whip” was used by Henri’s in order to describe the process of making “Yogowhip,” but further indicates Henri’s intent to infringe on the “Miracle Whip” trademark as O’Rourke was aware of the leading position “Miracle Whip” held in the spoonable salad dressing market. Furthermore, O’Rourke had previously been informed of the “Miracle Whip” trademark and had been warned that the use of the term “Yogowhip” might in fact infringe upon that mark. O’Rourke also testified that he directed his brokers and salesmen to have “Yogowhip” placed on supermarket shelves immediately next to “Miracle Whip” products for the purposes of inducing “impulse” purchases of “Yogowhip” by individuals who might otherwise purchase “Miracle Whip.” This is a further attempt by Henri’s to seek the benefit of “Miracle Whip’s” reputation for quality. One of Henri’s foodbrokers also testified that it was his opinion that the “whip” in “Yogow-hip” was “undoubtedly conceived to give the impression that it is a similar product to the leader in the market, Miracle Whip.” I also believe that it is more than a mere coincidence that the most distinctive part of the “Yogowhip” label, the word “Yogow-hip,” appears in a lettering style virtually identical to that used by Kraft in the most distinctive portion of the “Miracle Whip” label, the words “Miracle Whip.”

While it is true that a party need not show intent to establish a “likelihood of confusion,” wrongful intent is viewed as presumptive evidence of the likelihood of confusion. See Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 857 (7th Cir.1982); Beer Nuts, Inc. v. Clover Club Foods Co., at 941. “Important in determining whether the second comer’s entrance into the market creates possible confusion, is any evidence of conscious imitation of the first comer’s product.” Harold F. Ritchie, Inc. v. Chesebrough-Pond’s, Inc., 281 F.2d 755, 758 (2d Cir.1960) (emphasis added). Since the evidence clearly establishes that a key member of Henri’s management team knew of the possibility of an infringement problem and yet encouraged the placement of the product in such a way as to maximize the potential “confusion” in the mind of the consuming public, the district court’s decision that there was no intent to deceive is clearly erroneous.

I would reverse the district court and find that “whip” has developed a secondary meaning when used in the context of a spoonable salad dressing, and that Henri’s use of the word “Yogowhip” infringed upon *367Kraft’s use of the words “Miracle Whip” and “whip.” I believe that the evidence clearly shows that the relevant factors, when balanced, easily weigh in Kraft’s favor and show that it is likely that a number of consumers will be confused as to the source of “Yogowhip.” As a result Henri’s will increase its profits at Kraft’s expense and some consumers whose expectations as to “Yogowhip” are not fulfilled will blame Kraft (by not purchasing Kraft products) and not Henri’s for his or her dissatisfaction. Since the interests of the consuming public are paramount, and on the state of this record I am convinced there is a significant amount of consumer confusion, I would reverse since we have a duty to protect the public.

. This case is distinguishable because there was nothing in the record suggesting that “the public uses ‘Whip’ or would recognize the word as meaning ‘Miracle Whip.’ ” 122 U.S.P.Q. at 332. The survey evidence discussed infra shows that a significant percentage of the public recognizes “whip” as meaning “Miracle Whip.”

. The district court found this survey biased and did not accept it into evidence for the purpose of determining the likelihood of confusion on the issue of infringement. The preceding question asked of the consumers and two other questions purportedly biased the survey in favor of Kraft by suggesting certain answers. However, there is no logical or legally sound reasoning set forth in the court’s ruling why the results of the survey should not be probative as to the secondary meaning issue. In any event the second survey conducted provides a sufficient basis for a finding of secondary meaning.

. Our court’s opinion in James Burrough Ltd. v. Sign of the Beefeater, Inc., should be given substantial deference since we were privileged to have Chief Judge Markey of the U.S. Court of Customs and Patent Appeals (now the U.S. Court of Appeals for the Federal Circuit) sit on the panel and author the opinion, giving our court the considerable benefit of his expertise in trademark law.