Hickory Farms v. Snackmasters

Citation: Hickory Farms, Inc. v. Snackmasters, 2007 WL 1576124 (N.D. Ill. May 29, 2007).

Factual Background
Plaintiff, Hickory Farms, sold BEEF STICK and TURKEY STICK food products. Defendant Snackmasters was a competitor who also sold products using those same terms.

Trial Court Proceedings
Hickory Farms sued Snackmasters for trademark infringement, unfair competition, and dilution. Snackmasters counterclaimed, seeking a declaratory judgment that both terms were generic and cancellation of Hickory Farms' registration for the BEEF STICK trademark.

The court granted Snackmasters' motion for summary judgment and declared that both terms were generic and cancelled the BEEF STICK registration. Hickory Farms then moved to alter or amend the judgment under Rule 59(e). It claimed that it should have been permitted to conduct a consumer survey before responding to Snackmasters' motion, and that the court failed to consider part of its evidence and improperly considered part of Snackmasters' evidence.

The court rejected Hickory Farms' motion and refused to reconsider its prior decision. First, the court found that it was not required to allow Hickory Farms to conduct a consumer survey before granting summary judgment to Snackmasters and that Hickory Farms nonetheless had an opportunity to conduct one before that decision and failed to do so.

Second, the court ruled that it had not misconstrued Hickory Farms' evidence. It reiterated that in the Seventh Circuit, evidence of extensive marketing efforts and sales "cannot make a generic term less generic," and that Hickory Farms had not succeeded here either. Further, evidence of other generic synonyms in the marketplace "does not make a generic term any more capable of trademark protection."

Third, the court decided that it properly considered Snackmasters' printouts of competitors' websites as evidence of third-party use of the terms BEEF STICK and TURKEY STICK in a generic manner for dried meat products sold in stick form. Although some of these competitors stopped using the names upon receiving cease-and-desist letters from Hickory Farms, the court noted that such decisions may have been made merely to avoid litigation, and that Hickory Farms had a "checkered history in enforcing its rights."

In addition, the court distinguished this type of website evidence from cases where Internet evidence was dismissed. The court noted that what those cases really stood for is not that Internet evidence is worthless, "but that it must be scrutinized carefully." Here, because the website evidence was used primarily to show the commonality of the use of the identical terms in question in the identical context, and it was offered to show merely what was displayed on the Internet, it was admissible to reliably show what was displayed on the Internet.

The court then held that Snackmasters' evidence accurately reflected the third-party use of the contested marks to describe their "product consisting of meat that is pre-cooked and stuffed into an elongated collagen casing, to create a product in the form of a stick." It also noted that it would have "reached the same conclusion . . . without consideration of the website uses."

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