Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).

Judge Kennelly granted summary judgment for defendants on plaintiff’s trademark, unfair competition and dilution claims.  Plaintiffs, Top Tobacco and Republic Tobacco ( collectively "Top Tobacco ") own various trademarks associating the word "top" or a picture of a toy top with tobacco products.  Both Top Tobacco and defendant, North Atlantic Operating and National Tobacco Company ("National Tobacco"), are large players in the "make your own" and "roll your own" cigarette market.  Top Tobacco alleged that its Top marks were infringed and diluted by National Tobacco’s use of its "Fresh-Top Canister" mark.  The Court granted summary judgment of non-infringement because it ruled that no reasonable jury could find that consumers were confused between Top Tobacco’s TOP mark and National Tobacco’s "Fresh-Top Canister" mark.  The Court held that they were visually distinct and cited Top Tobacco’s remarks to the USPTO during prosecution of its marks that its TOP marks were visually distinct from marks relating to lids, as does the National Tobacco mark.  Additionally, the Court noted that Top Tobacco had chosen not to present a consumer survey to show actual confusion and did not explain why no survey was done.

The Court also granted summary judgment for National Tobacco on the dilution claim because it held that the TOP marks were not famous.  Top Tobacco argued that the marks were famous within the smoking market.  But the Court held that the relative weakness of the marks, the vast number of similar marks held by others and Top Tobacco’s admission during prosecution that the marks were weak collectively would not allow a finding that the TOP marks were famous.

But the most interesting part of the opinion was in a footnote.  The Court explained that the "Fresh-Top Canister" mark appears below a registered design of a Zouave and in a footnote explains:

A Zouave is a soldier in a particular French infantry unit that originated in Algeria in 1831.  According to legend, while fighting in the 1854-55 Siege of Sevastopol during the Crimean War, an unlucky Zouave had his clay pipe broken by a bullet.  Determined to smoke anyway, the Zouave rolled tobacco in a piece of paper torn from his bag of gunpowder.  The cigarette was born.  The French expression "faire le zouave" can be translated roughly as "to play the fool." . . . apt descriptor for the person who apparently first decided to smoke a cigarette.