Aceto Agric. Chems. Corp. v. Bayer Aktiengesellschaft

Infringement was not found in part due to sophistication of producers of commercial products.

Opinion (Leval, Cabranes, and Straub): Aceto Agricultural Chemicals Corporation (“Aceto”) filed suit against Bayer Aktiengesellschaft and Bayer CropScience LP (jointly “Bayer”) seeking a declaratory judgment pursuant to 28 U.S.C. § 2201. Specifically, Aceto sought a judgment that its PROFINE 75 mark, associated with a herbicide product, does not infringe on Bayer’s trademark rights in their PROLINE mark, associated with a fungicide product. Bayer counterclaimed, alleging that Aceto’s use of the PROFINE 75 mark was trademark infringement in violation of 15 U.S.C. § 1114(1), unfair competition in violation of 15 U.S.C. § 1125(a), and unfair competition under New York common law. The District Court granted judgment in favor of Aceto.On appeal, Bayer claimed that the District Court erred in dismissing its claim of trademark infringement. A claim of trademark infringement is analyzed under a two-prong test: whether (1) the plaintiff’s mark is entitled to protection, and (2) whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods. The court conducted an independent and de novo review of the record, and found: (1) the two marks have coexisted without a single instance of product confusion reported; (2) there was “minimal evidence” presented at trial that the two marks are sold in the same markets; (3) the products associated with the two marks are “primarily applied to different crops”; (4) numerous pesticides made by companies other than Bayer used the prefix “PRO” in their product name; (5) Bayer’s PROLINE mark is not arbitrary or fanciful, but suggestive, and thus not in the highest category of trademark strength deriving from inherent distinctiveness; (6) the packaging of the two marks “differs in imagery, color, and format” and “clearly indicates the name of the respective manufacturer”; (7) the purchasers of the two products are “commercial farmers” who are “sophisticated,” are “invest[ing] significant amounts of money in crop protection products” important to "their livelihood,” and are “not likely to make a casual purchase or application decision such that these two products would be confused.” Accordingly, the appellate court AFFIRMED the judgment of the District Court.