Frederick Gash, Inc. v. Mayo Clinic

Lane, Judge. This appeal is from the decision of the Trademark Trial and Appeal Board, 162 TJSPQ 263 (1969), sustaining an opposition to the registration1 of “mayo 7,” stylized as shown below, for “imitation, low calorie mayonnaise.” Our review of the record and arguments in this case convinces us that the board committed reversible error, and we accordingly reverse its decision. The Mayo Clinic is a voluntary association of individuals engaged in the group practice of medicine at Rochester, Minnesota. Its fame admittedly extends world-wide. The Mayo Foundation is asserted to be an eleemosynary corporation of Minnesota which owns and holds legal title to all of the assets and properties used by the Mayo Clinic. The name “Mayo” derives from that of the Clinic’s founders, the Doctors William J. and Charles IT. Mayo. In their' notice of opposition, appellees alleged that the Mayo Foundation is the owner of the name “Mayo” and that the Mayo Clinic uses “Mayo” with the Foundation’s consent. The name “Mayo,” it was asserted, has come to be recognized by the public as synonymous with the services rendered by the Clinic. Among those services is the prescription of diets and the preparation of diet manuals for the Clinic’s patients. Because of the presence of 'the name “Mayo” and the fact that the food product to which “mayo 7” is applied is a dietetic product, the mark' sought to be registered is, appellants urge, likely to suggest a connection with the Mayo Clinic. Much of the board’s-opinion is devoted to the nature and reputation of the Mayo Clinic. The board also observed that “[f]or som^ reason, a, [1073] spurious diet referred to by many publications and by many people as the ‘Mayo Clinic Diet’ has received wide circulation.” The board noted that although the Mayo Clinic sought to “dispel any association of that diet with the Clinic,” many inquiries were nevertheless received. Against the factual background herein outlined, the board held: Considering the fame of the name “Mayo Clinic” and that the public does associate that name with diet menus and programs and considering that applicant’s low calorie imitation mayonnaise is a diet product which would be purchased by diet conscious persons, it is our opinion that the utilization of “MAYO” as part of applicant’s mark will result in confusion in the minds of such persons to the extent that such persons will readily conclude that opposer sponsors or recommends applicant’s product. Sincé such is not the case, -opposers will necessarily be damaged by the issuance of the registration sought by applicant. Appellant contended that the term “mayo” is a well-known slang expression for mayonnaise and quoted the Dictionary of American Slang which states: “mayo-n. Mayonnaise. Common lunch counter use since about 1930.” The board rejected the argument holding that: Applicant’s product, however, is one that comprises a grocery store product and there is no indication that the public, aside from lunch counter personnel, is aware of such meaning. The dictionaries available to us, Webster’s Unabridged, second and third editions, Funk & Wagnall’s New Standard Dictionary of the English Language, 1958; and the Complete Dictionary of Abbreviations, Kobert J. Schwartz, Thomas Y. Crowell Company, New York, 1955, do not include any reference to “mayo” as an indication for or abbreviation of the word “mayonnaise.” There is no evidence of any probative value to buttress applicant’s contention. The issue before us is expressed by appellees as: * * * whether in view of the widespread popularity of the name “MAYO” and the public’s association of that name with diet menus and programs, the Trademark Trial and Appeal Board erred in determining that Appellant’s proposed use of the mark “mayo 7” would result in confusion of the extent that diet conscious persons would readily conclude that Appellees sponsor or recommend Appellant’s product. ■ ■ Appellees’ opposition is therefore predicated mi § 2(a) of the Lan-ham'Act, 15 USC 1052(a), which reads as follows: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (á) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ***.•■•. The inquiry, under this provision of the statute is similar to that under § 2(d) ,15 U'SC Í052 (d), which is likelihood of confusion of the [1074] marks as applied to tbe respective goods and/or services. See Morehouse Manufacturing Corp. v. J. Strickland Co., 56 CCPA 946, 955, 407 F. 2d 881, 888, 160 USPQ 715, 721 (1969). Tbe tbrust of appellant’s position is that the board stressed tbe wrong facts. Tbe board, in appellant’s view, focused too heavily on tbe reputation of the Mayo Clinic and in so doing, failed to appreciate (1) tbe differences between “mayo 7,” stylized as it is with “mayo” in lower case letters, and “Mayo” and (2) tbe fact that “mayo” is so highly suggestive of mayonnaise. Appellees, on tbe other band, contend tbe board was correct in giving substantial weight to tbe popularity of tbe name “Mayo” hi connection with the Mayo Clinic and its diet programs and urge that as a whole tbe name “Mayo” and appellant’s mark are quite similar. Opinion We do not think that tbe Mayo Clinic would come to tbe mind of tbe average purchaser confronted with a packaged food product bearing tbe stylized mark “mayo 7.” As a practical matter, medical institutions are not thought of as goods producers, and it is not to be expected that a consumer would associate the Mayo Clinic as tbe source of the mayonnaise in this case. Moreover, we do not think it likely that one would consider that the Mayo Clinic has approved of this low calorie product. This is a food, not a diet. There is no evidence of record of which we are aware that tends to prove that the Mayo Clinic endorses as such any line of foods produced by any food manufacturer. It seems that were an endorsement intended, it would be more clearly expressed than by the mere use of “mayo” in lower case letters with nothing else but a “7” which lacks any particular inherent suggestion. In short, a role of the Mayo Clinic as a sponsor or endorser simply would not be suggested by the mark “mayo 7.” These conclusions are reinforced by the fact that “mayo” is a recognized slang expression for “mayonnaise.” The provision for this term in the Dictionary of American Slang2 is probative and persuasive evidence of the wide acceptance of “mayo” as a vernacular synonym of “mayonnaise.” Unlike the TTAB, we are not disturbed by the absence of “mayo” in other dictionaries of the English lan [1075] guage. The Dictionary of American Slang is a specialized and reputable authority on slang expressions, and the inclusion of “mayo” therein is strong evidence that the term is in common usage in America. Since we conclude that the average purchaser viewing “mayo 7” on a jar of low calorie imitation mayonnaise would not think of the Mayo Clinic, but would instead think of the food product, we do not find any likelihood of confusion of the mark here involved with either the Mayo Clinic, Mayo Foundation or the Mayo Brothers. The decision of the board is accordingly reversed. Footnotes [1] Appellant’s application Serial No: 254,270, filed September 12, 1966, and'alleging a date of first use in commerce May 20,1966. ... [2] Appellees assert that since the excerpt from the dictionary relied upon by appellant was not introduced In evidence, it is not In the record and therefore not before us. However, the board considered It and there Is no Indication that appellees objected.to it below. Certainly the board did not treat such an objection. We accordingly consider the dictionary definition reproduced in the board’s opinion to be properly before us, and appellant may rely upon it. ' •