JAMES G. HUGUNIN, LAND O' LAKES OUTDOORS, INC., and LAND O'LAKES TACKLE CO., INC., Plaintiffs-Appellants,
LAND O' LAKES, INC., Defendant-Appellee
Argued January 21, 2016
Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 11 C 9098 -- Joan B. Gottschall, Judge.
For JAMES G. HUGUNIN, an individual, Land O'Lakes Outdoors, Inc., LAND O'LAKES TACKLE CO., INC., Illinois corporations, Plaintiffs - Appellants: Mark VanBuren Partridge, Attorney, Partridge & Garcia, Chicago, IL.
For LAND O'LAKES, INC., a Minnesota corporation, Defendant - Appellee: James R. Steffen, Attorney, David R. Merritt, Attorney, Aaron D. Van Oort, Attorney, Faegre Baker Daniels LLP, Minneapolis, MN.
Before POSNER, EASTERBROOK, and KANNE, Circuit Judges.
[117 U.S.P.Q.2d 1880] Posner, Circuit Judge.
James Hugunin, the principal plaintiff (the others are two companies he owns), manufactures and sells fishing tackle. Although he lives in Illinois and his companies are incorporated there, he began selling his tackle in a town in northeastern Wisconsin called Land O' Lakes because it is located in a region dotted with lakes and therefore attractive to fishermen--the region is also called Land O' Lakes. Since his first sale, made in 1997 to a Wisconsin bait shop, Hugunin's enterprise has grown to a point at which his fishing tackle is sold to retailers in a number of states. In 2000 the U.S. Patent and Trademark Office registered LAND O LAKES as the trademark of his fishing tackle.
As it happens, Minnesota, which adjoins Wisconsin, is the home of a large agricultural cooperative named Land O' Lakes, Inc. that sells butter and other dairy products throughout the United States. It uses the same trademark on its products as Hugunin's companies do on their products--LAND O LAKES--and has been doing so since the 1920s, when the company was formed.
In 1997--the year Hugunin began selling fishing tackle--the dairy company became the official dairy sponsor of a sport-fishing tournament called the Wal-Mart FLW Tour and began advertising its dairy products in fishing magazines. Three years later, having learned that Hugunin
had registered LAND O LAKES as the trademark of his fishing tackle, the dairy company wrote him that LAND O LAKES was its trademark, was " famous" because it had been in use since long before Hugunin had appeared on the scene, and that Hugunin was infringing it and to be permitted to continue using it would need a license from the dairy company. He refused either to apply for a license or to give up the trademark, thereby precipitating a proceeding by the dairy company in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office opposing registration of Hugunin's trademark. (The original registration had lapsed; Land O' Lakes was opposing Hugunin's application to re No. register the trademark.) That proceeding is in a state of suspended animation pending the outcome of this case.
We're puzzled that the dairy company should have been worried by Hugunin's use of the same trademark. Though besides sponsoring the fishing tournament the company has advertised in fishing magazines and made other appeals to fishermen to buy its dairy products, it neither makes nor sells any devices or materials used in fishing (such as hooks, lines, sinkers, floats, rods, reels, baits, lures, spears, nets, gaffs, traps, waders, and tackle boxes--compendiously, fishing tackle)--any products, therefore, that might be confused with Hugunin's fishing tackle. It would be strange indeed for a dairy company to manufacture a product so remote from milk, butter, and cream, and there is no sign that the dairy company intends to take the plunge. The company sponsors the angling tournament and advertises in fishing magazines because fishermen, like the rest of us, are consumers of dairy products. All it advertises in those magazines are dairy products.
Equally puzzling, however, is why Hugunin and his companies are suing the dairy company for trademark infringement when there is nothing to suggest that the dairy company is thinking of making or selling fishing tackle. Can one imagine Land O' Lakes advertising: " we sell the finest dairy products and the best fishing tackle" ? It might even benefit Hugunin to have consumers confuse his modest enterprise with the mighty Land O' Lakes and thus assume, albeit incorrectly, that they were buying their fishing ...