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Fall 2006-11"Ricas" crackers infringe trademark of "Rica" crackers

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Number 65
Fall 2006

"Ricas" crackers infringe trademark of "Rica" crackers

In its opinion in the case of Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006), the U.S. Court of Appeals for the First Circuit discussed the factors used to determine the likelihood of confusion between two brands.

Sweet vs. salty

The Rica trademark for crackers, cookies and biscuits has been registered with the U.S. Patent and Trademark Office since 1969, initially by the Sunland Biscuit Company, and since 1976 by plaintiff Borinquen biscuit Corp., who purchased it. The product in question, a round, yellowish, semi-sweet cracker, has been sold in Puerto Rico since 1962. Borinquen uses a logo that consists of a red circle encompassing white letters. Rica is the only cookie, cracker or biscuit registered under that name.

In April of 2003 "the tectonic plates shifted," as the court stated, when defendant M.V. Trading Corp. began selling a round, yellowish, salty cracker under the name Nestle Ricas. This product's logo consisted of a white oval with red letters.

Borinquen sued, and the District Court granted a preliminary injunction prohibiting M.V. from selling its product. M.V. promptly appealed, but the Circuit Court affirmed the injunction.

Confusion

First the Court of Appeals concluded that Rica was eligible for trademark protection, and then went on to explore if the District Court had correctly concluded that Rica and Ricas were similar enough as to make it likely for consumers to be confused. The court listed eight factors to be considered:

1- the similarity of the marks,

2- the similarity of the goods,

3- the relationship between the parties' channels of trade,

4- the relationship between the parties' advertising,

5- the classes of prospective purchasers,

6- evidence of actual confusion,

7- the defendant's intent in adopting its mark, and

8- the strength of the plaintiff's mark.

"A proper analysis takes cognizance of all eight factors but assigns no single factor dispositive weight."

District Court

After applying the eight factors, the District Court had concluded that M.V.'s use of its mark was likely to result in consumer confusion. On one hand, the goods were dissimilar, no actual confusion had been shown, and no evidence existed that M.V. intended to mislead consumers. On the other, the remaining factors tended to favor a likelihood of confusion.

Court of Appeals

The Circuit Court started out by clarifying that the burden of a holder of a trademark is to show likelihood of confusion, not actual confusion. "Historically, we have attached substantial weight to a trademark holder's failure to prove actual confusion only in instances in which the relevant products have coexisted on the market for a long period of time." It added that such was not the case here, as M.V.'s product had been introduced to the Puerto Rico market in 2003.

As to the mark "strength" element, the court stated that the District Court had found that the Rica mark had been registered for more than three decades, that Borinquen's Rica was the only cookie, cracker or biscuit trademarked under that name in the United States, and that Borinquen's efforts in promoting and protecting its mark were in conformance with industry standards.


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