Frederick Gash, Inc. v. Mayo Clinic

BosensteiN, Judge,

dissenting

with whom Bich, J., joins.

I disagree with the reasoning and conclusion of the majority, and respectfully record my dissent.

In their notice of opposition, opposers Mayo Clinic and Mayo Foundation allege, inter alia, that the name “Mayo” has become well known to the general public as a result of their respective activities and services in the health field, and that “Mayo” is synonymous with opposers and their services; that the goods of appellant are directed to those interested in reducing or on a diet, and are related to the services of Mayo Clinic inasmuch as its doctors often prescribe diets tailored to needs of patients; that appellant’s mark “consists of or comprises * * * matter which may disparage or falsely suggest a connection with persons, living or dead, institutions * * *” 1 — in this case, with the persons Doctors William J. Mayo and Charles H. Mayo, now deceased and widely known as the “Mayo Brothers,” and with the institutions, Mayo Clinic and Mayo Foundation; and that appellant’s mark “mayo 7” so resembles “Mayo”, “Mayo Brothers”, “Mayo Clinic” and “Mayo Foundation” as to be likely, when applied to appellant’s low calorie mayonnnaise, to cause confusion or mistake on the part of the purchasing public with the result that said purchasers would likely assume that appellant’s goods are manufactured by opposers or under their, supervision, or have received opposer’s endorsement or approval, or are associated in some manner with opposers, all fraught with damage and detriment to opposers and the public.

In its opinion, the board made extensive findings of fact based, apparently, on testimony and exhibits introduced into evidence in the proceedings below. I say “apparently” because the record before us includes none of such testimony or exhibits, although appellees’ *1076 brief refers to a few individual exhibits. Thus, of necessity, I take the liberty of adopting the board’s findings, none of which appears seriously challenged:

Opposer, Mayo Clinic, is a voluntary association of individuals engaged in the group practice of medicine in Rochester, Minnesota. Mayo Clinic had its inception in the early medical practice of Dr. William Worrall Mayo who came to Rochester, Minnesota in 1S63 as an examining surgeon, for the CiVil War Induction Board. His sons, Dr. William James Mayo and Dr. Charles Horace Mayo, later joined their father in medical practice. Their reputation grew and their practice flourished. Patients came from an ever increasing area and other physicians associated themselves with the doctors Mayo. Since 1903, the group medical practice of the well known Mayo brothers has been designated as “Mayo Clinic”. Presently, the professional staff of Mayo Clinic numbers approximately 500. The paramedical staff comprises approximately 2500 persons. The professional staff of Mayo Clinic is organized into various medical sections with approximately 60 different medical specialties being recognized.

Mayo Foundation, organized in 1915, owns all of the physical assets of Mayo Clinic and pays all of the staff of Mayo Clinic annual compensation. All profits from the operation of Mayo Clinic go to the Foundation as rent for the use of the physical assets. With the profits, the Foundation carries out the medical research and medical education programs of the Mayo organization. This includes the Mayo Graduate School of Medicine, the faculty of which is composed entirely of Mayo Clinic staff physicians, the School of Physical Therapy and the School for Nurse Anesthetists. The educational programs also include,sponsorships of lectures, seminars, discussions and conferences conducted, for groups of doctors.

The Clinic conducts an extensive dietetic program directed to the care of patients with a variety of conditions requiring special management.. Special and appropriate diets are established for such patients. This program has resulted in the publication and distribution of a large number of diet publications.

In 1967, Mayo Clinic handled nearly 200,000 patients who came from, all of the states of the United States and many foreign countries.

The story of the Mayo Clinic has received wide promotion and publicity. Articles about the Clinic have appeared in Saturday Evening Post, Business Week, Medical News, Look, Time, Newsweek, Realities and the Chicago Tribune Sunday Magazine. In addition there have been television programs regarding Mayo Clinic. . , t ■

For some reason, a spurious diet referred to by many publications and by many people as the “Mayo Clinic Diet” has received wide circulation. As. a result thereof, the Mayo Clinic has received a large volume of correspondence regarding this diet notwithstanding that the Clinic has gone to considerable effort in an attempt to dispel any association of that diet with the Clinic. The notoriety of the spurious “Mayo Clinic Diet” is indicated by the fact that Mayo Clinic has' received as many as 770 inquiries in a single month concerning that diet'.-; ■■

In sustaining the opposition, the board stated:-

Considering the fame of the name “Mayo Clinic” and that the public does associate that name with diet menus and programs arid considering that appli *1077 cant’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. Since such is not the case, opposers will necessarily be damaged by the issuance of the registration sought by applicant.

It appears to me that the board has done a careful job. with a record which adequately supports its conclusions, and I would not lightly overturn its decision on the force of appellant’s arguments here. Foremost-McKesson, Inc. v. Foremost Sales Promotions, Inc., 58 CCPA 1308, 443 F. 2d 1191 , 170 USPQ 208 (1971); Witco Chemical Co. v. Whitfield Chemical Co., 57 CCPA 804, 418 F. 2d 1403 , 164 USPQ 43 (1969). Appellant prefaces its remarks by acknowledging that the board’s decision “might make sense” if appellant were engaged in selling “low calorie cookies or ice cream or soft drinks or any product other than mayonnaise.” In view of that, it is apparent that even appellant does not have the temerity to agree with much of what the majority says.in its first paragraph under the heading “OPINION”. It goes on to contend, however, as does the majority, that the hoard failed to recognize that the “mayo” portion of its mark is a well-known, widely used slang term meaning “mayonnaise.” It refers here, as it did below, to the “Dictionary of American Slang” 2 which carries the following definition “mayo — n. mayonnaise. Common lunch counter use since about 1930.” In.light of that definition, appellant maintains:

It should be clear from this fact alone that anyone seeing the term “mayo” on a jar of mayonnaise will immediately associate mayo with mayonnaise. On the other hand, it seems rather far-fetched to conclude that a supermarket purchaser seeing Appellant’s trademark “mayo 7” on a jar of mayonnaise will think of the Mayo Clinic, even if the mayonnaise'is of the low calorie variety and the Mayo Clinic does prescribe diets. ■ • . '

■ I think the fallacy in appellant’s argument (which the majority apparently adopts) lies in its fierce embrace of — but rather myopic preoccupation with — the view that all or even most purchasers are aware of the slangish expression “mayo” as meaning “mayonnaise,” and that they would', as a matter of course, necessarily associate “mayo” only with máyonnnaise -when seeing it appear on a label attached to a mayonnaise container. Certainly, one definition of a slang expression appearing in a dictionary of American slang is not conclusive or.even probative evidence of the etymological ,or linguistic knowledge, or the language habits and usage,'of the'entire population, as. appellant and the .majority opinion would-have us believe. Nor is it conclusive or probative evidence that, even a majority, much less everyone, has heard .or-is otherwise aware of “mayo” as meaning mayonnaise, or that the *1078 term is used in most or all lunch counters in the country. 3 Merely because a word appears in a dictionary does not necessarily prove that the average person is familiar with its meaning, Tiffany & Co. v. National Gypsum Co., 59 CCPA 1063, 459 F. 2d 527, 173 , USPQ 793 (decided May 25, 1972). The words “nobble”, “res ipsa loquitur” and “tiffany” appear in the dictionary also, but how many people use them in the dictionary sense ,or know their meaning? At best I can infer from the dictionary definition of concern here that some of the populace will immediately recognize “mayo” as a synonym for “mayonnaise.” Perhaps others will draw that association even without prior knowledge of that meaning of “mayo.”

I am convinced, however, that still others who are equally unfamiliar with the particular vulgarism or slang expression which “mayo” is intended to represent are not so likely to draw the connection appellant has planned. In this day and age, many members of the consuming public consider that proper food is as essential to well-being and health 'as proper medicine. “Mayo” is one of the best known — indeed, famous— names in the medical health field, and the “Mayo Diet” or “Mayo Clinic Diet,” though perchance spurious, is equally well known. Rightly or wrongly, the public has already demonstrated a proclivity to associate diet programs and menus with the Mayo Clinic, 'as the board pointed out. I think that the natural inclination of many health and diet conscious purchasers of appellant’s low calorie mayonnaise— cognizant of the prestige 'and esteem which has attached to the name Mayo and Mayo Clinic in the health service field over the past 50 years and also of the various real and spurious diet programs and menus attributed to the Mayo Clinic, but unaware of any policy that opposers may have of not endorsing any health and diet food product — would be to think that the “mayo 7” dietetic product, so labelled, is associated or connected in some manner with .opposers. I am of the view the foregoing comments are true whether the prospective purchasers of appellant’s product frequent their grocery in Rochester, Minnesota, 4 or in New York City. 5

In short, considering the mark in its entirety, I think “mayo 7” on low calorie mayonnaise may suggest a connection with the Mayo *1079 Olinio and Mayo Foundation to substantial segments of the purchasing public, particularly those in the midwestem states. Since that suggestion is false, and confusion or mistake is likely, opposers would be damaged by the registration sought. At the very least, doubt should be resolved on that issue against the newcomer in accordance with well-established precedent.

I would affirm.

Lanham Act, § 2(a) (15 USC 1052(a)).

Published by Thomas X. Crowell Co. (1967).

Interestingly enough, the American Thesaurus of Slang, 2nd edition (1962) lists “may” as a restaurant slang expression for “mayonnaise” at page 816, but carries no listing or definition whatsoever for “mayo.”

Compare Mayo Clinic v. Mayo’s Drug and Cosmetic, Inc., 262 Minn. 101 , 113 N.W. 2nd 852 , 132 USPQ 691 (1962).

In seeking registration rights of potentially national scope, appellant has not restricted its application to any particular marketing area of the country, and the record before us is devoid of evidence of appellant’s present or proposed marketing areas. See Hunt Foods and Industries, Inc. v. Gerson Stewart Corp., 54 CCPA 751, 367 F.2d 431 , 151 USPQ 350 (1966).