In the

United States Court of Appeals

For the Seventh Circuit ____________

No. 07-1244

TOP TOBACCO, L.P., and REPUBLIC TOBACCO, L.P.,

Plaintiffs-Appellants,

v.

NORTH ATLANTIC OPERATING COMPANY, INC., and

NATIONAL TOBACCO COMPANY, L.P.,

Defendants-Appellees.

____________

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 06 C 950—Matthew F. Kennelly, Judge.

____________

ARGUED NOVEMBER 8, 2007—DECIDED DECEMBER 4, 2007

____________

Before EASTERBROOK, Chief Judge, and FLAUM and

KANNE, Circuit Judges.

EASTERBROOK, Chief Judge. 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
2 No. 07-1244

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-TopTM

Canister. Top Tobacco maintains in this suit under the

Lanham Act that none of its rivals may use the word “top”

as a trademark.

Trademarks are designed to inform potential buyers

who makes the goods on sale. See KP Permanent Make-Up,

Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004);

Dastar Corp. v. Twentieth Century Fox Film Corp., 539

U.S. 23 (2003). Knowledge of origin may convey information about a product’s attributes and quality, and

consistent attribution of origin is vital when vendors’

reputations matter. Without a way to know who makes

what, reputations cannot be created and evaluated, and

the process of competition will be less effective. See

generally William M. Landes & Richard A. Posner, The

Economic Structure of Intellectual Property Law 166–209

(2003).

Top Tobacco insists that it has exclusive rights to the

word “top” for use on tobacco in this market. But many

words have multiple meanings: “Top” may mean the

best, or a spinning toy, or a can’s lid. Top Tobacco uses

the word “top” in the second sense and may hope that

consumers will hear the first as well; North Atlantic uses

the word in its third sense, to refer to a pull-tab design

that keeps tobacco fresh. If English used different words

to encode these different meanings, there could not be a

trademark problem. Because our language gives the word

“top” so many different meanings, however, there is a
No. 07-1244 3

potential for confusion. But no one who saw these cans

side by side could be confused about who makes which:

The phrase “Fresh-Top Canister” on North American’s can

does not stand out; no consumer could miss the difference

between Top Tobacco’s TOP brand, with a spinning top,

and North Atlantic’s ZIG-ZAG® brand, with a picture of a

Zouave soldier. The trade dress (including colors and

typography) of each producer’s can is distinctive. Here is

a larger version of the ZIG-ZAG brand can.
4 No. 07-1244

The left panel shows the can as it was between 2001 and

2004, when Fresh-Top Canister was on the front (right

under “Classic American Blend”), and the two right

panels show the can as it was from 2004 through 2006,

when the phrase Fresh-Top Canister was on the side. The

phrase was removed in 2006 when North Atlantic replaced the aluminum pull-tab design with a plastic lid.

(This change does not make the case moot, because the

possibility of damages remains.)

The district court granted summary judgment for the

defendants, 2007 U.S. Dist. LEXIS 2838 (N.D. Ill. Jan. 4,

2007), and the pictures show why. It is next to impossible

to believe that any consumer, however careless, would

confuse these products. “Next to impossible” doesn’t mean

“absolutely impossible”; judges are not perceptual psychologists or marketing experts and may misunderstand how

trade dress affects purchasing decisions. But the pictures

are all we have. Top Tobacco did not conduct a survey of

consumers’ reactions to the cans and did not produce

an affidavit from even a single consumer or merchant

demonstrating confusion.

What Top Tobacco wants us to do is to ignore the

pictures and the lack of any reason to believe that any-
No. 07-1244 5

one ever has been befuddled. Like other courts, this circuit has articulated a multi-factor approach to assessing

the probability of confusion. See, e.g., Barbecue Marx, Inc.

v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir. 2000). These

factors include whether the trademarks use the same

word, whether they sound alike, and so on. Top Tobacco

insists that “Fresh Top” is spelled and sounds the same

as fresh “TOP”, and thus it traipses through the list. It

conveniently omits the fact that the phrase on the ZIGZAG can is “Fresh-Top Canister”, with “Fresh-Top” serving

as a phrasal adjective modifying the word “canister” rather

than as the product’s brand. But it’s unnecessary to

belabor the point. A list of factors designed as proxies

for the likelihood of confusion can’t supersede the statutory inquiry. If we know for sure that consumers are not

confused about a product’s origin, there is no need to

consult even a single proxy.

Top Tobacco says that merchants may have been confused, because a few of the price lists that North Atlantic

sent to its wholesalers and retailers omitted the ZIGZAG brand and gave prices for a “6 oz. Fresh-TopTM Can”

and a “.75 oz. Pocket PouchTM”. Yet all of these lists

prominently include the seller’s name (North Atlantic

or National Tobacco), and if any commercial buyer

thought that North Atlantic was selling the TOP brand

the record does not contain a shred of evidence to that

effect.

Finally, only a few words are required to address Top

Tobacco’s claim that it has a “famous” brand that was

diluted by the “Fresh-Top Canister” phrase. See 15 U.S.C.

§1125(c)(2)(a) (special protection for famous marks “widely

recognized by the general public of the United States as

a designator of source of the goods or services of the

mark’s owner”). There can be no doubt that TOP is an old

and recognized brand in the loose-cigarette-tobacco

market. There is also no doubt that “top” is commonly used
6 No. 07-1244

in the tobacco business, so that the appearance of that

word on a package does not affect the reputation of Top

Tobacco. One brand of chewing tobacco bears a large “Top

Leaf” stamp. “Top Hat” is a well-known brand of cigar

tobacco. Marlboro sells cigarettes in a “Flip-Top® Box”.

Another brand of cigarettes is sold under the mark “Top

Score”. The “Tip-Top” brand of cigarette paper is available from the same sources as Top Tobacco’s tobacco.

When Top Tobacco obtained a federal registration for

its brand of loose cigarette tobacco, it assured the Patent

and Trademark Office that it was claiming only limited

rights in the word “top.” It could hardly be otherwise: the

word “top” is too common, and too widely used to refer to

the lids of packages—as well as parts of clothing ensembles, masts of ships, summits of mountains, bundles of

wool used in spinning, half-innings of baseball, positions

in appellate litigation (the top-side brief), and flavors of

quark—to be appropriated by a single firm.

The portion of §1125 from which we have quoted was

amended in October 2006 to use “the general public” as

the benchmark. This change eliminated any possibility

of “niche fame,” which some courts had recognized before

the amendment. See Syndicate Sales, Inc. v. Hampshire

Paper Corp., 192 F.3d 633 (7th Cir. 1999). 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
No. 07-1244 7

A true Copy:

Teste: 

 ________________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit 

USCA-02-C-0072—12-4-07