In Libman Co. v. Vining Industries Inc., a trademark infringement action, the Court of Appeals for the Seventh Circuit reversed a judgment in favor of the plaintiff, primarily basing its holding on the conclusion that confusion was unlikely in the absence of any evidence of actual confusion.

The plaintiff owned a federal registration for its mark, which consisted of a color scheme on a broom, in which one vertical band of bristles was in a contrasting color from the remaining bristles. The registration did not make a claim as to any particular color. The defendant began marketing its own brooms with contrasting color bands, albeit with different colors than those used by the plaintiff. The plaintiff sued for infringement and prevailed before the trial court.

The Seventh Circuit reversed, finding that confusion was not likely. The court concluded that consumers were not likely to be confused because the brand names differed and because the brooms were packaged differently, such that the contrasting color bands in the defendant's brooms were mostly hidden. The court also discounted the plaintiff's argument of post-sale confusion. Specifically, the plaintiff argued that when purchasers of its brooms wanted to replace their brooms with plaintiff's brooms they might mistakenly purchase the defendant's brooms, because stores tend to carry only one brand of broom and, thus, purchasers would be unable to compare closely the plaintiff's and defendant's brooms. In rejecting the plaintiff's theory, the court stressed that, without evidence of actual confusion or survey evidence, the plaintiff's theory was too speculative.

Significantly, the court acknowledged that color marks are protectible, citing the Supreme Court's recent case, Qualitex Co. v. Jacobson Products Co. (see our April 1995 Newsletter (N.S. 185)), and elaborated that it was not holding the plaintiff's contrasting color mark insufficiently distinctive to be registrable. Nevertheless, the court clearly gave less weight to the plaintiff's arguments of likely confusion on the basis that "the trademark is a thin one, since adding a colored stripe is hardly a distinctive way of marking a product". Thus, acknowledging the protectibility of colors, the court plainly limited the trademark owner's ability to enforce those rights.

The dissenting judge would have upheld the judgment of the lower court, which had found infringement. According to the dissent, the lower court properly balanced the various factors for finding likelihood of confusion, and the circuit court improperly required evidence of actual confusion.