Which Trademark Came First, BUTTERBALL Turkey Or BUTTERBALL Ham?

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Foley Hoag LLP - Trademark, Copyright & Unfair Competition

We used to have a Thanksgiving turkey tradition at the Trademark and Copyright Law Blog. Just before every fourth Thursday of November, we’d type in our LEXIS NEXIS password and find a judicial opinion from a turkey trademark case.  We covered the 2007 genericide of the TURKEY STICK, explained the 1976 GOBBLE GOBBLE  dispute, and even discussed the 1981 fight over BAKED TAM. Great tradition, and as New Englanders we felt a certain obligation to continue it. But there are only so many turkey trademark cases out there. Like the best side dish at your Thanksgiving dinner, at some point, you run out.

BUTTERBALL to the rescue! The venerable BUTTERBALL turkey’s recent trademark fight with newcomer BUTTERBALL HAM resolved just in time for us to write about it this year. Not interested?  What if I told you that BUTTERBALL HAM may not have been the newcomer after all … and also that the origin of the BUTTERBALL turkey mark is a bit shrouded in mystery?

The Butterball Turkey Story

Here’s the story of the BUTTERBALL turkey trademark, as told collectively by Wikipedia, Butterball, LLC’s official website, and a helpful blogger (if you are a trademark lawyer, please bear with me because not all of this makes perfect sense): The first application to register the BUTTERBALL trademark (for “Live and Dressed” poultry, as well as “Sandwiches, Eggs and Fresh Vegetables”) was made by Ada Walker of Wyoming, Ohio. Walker claimed to have been using the mark since 1938, and her application was filed on September 5, 1939, just days after Hitler invaded Poland. You can see her registration certificate here.

Who was Ada Walker? Was she a farmer or a deli owner (given the location, the former seems more likely, but then why register the mark for sandwiches)? Was she, like her contemporary Horace Longacre, taking up poultry farming in order to secure a military deferment for a male relative? Did she make up the term “Butterball” herself or did it come from some older tradition? We just don’t know.

Anyway, in 1951, Leo Peters purchased the trademark from Walker for $10.  Having collected the interesting mark, Peters didn’t know what to use it for at first (like I said, some of this story doesn’t really pass muster), so while he was deciding, he licensed it to a Chicago meat processing company, Swift & Co., famous for having retained its status as a major food company even after serving as a poster child and punching bag for Teddy’ Roosevelt’s trust-busting crusade a few decades earlier.

The first BUTTERBALL brand turkey reportedly was sold by Swift in 1954. Based on trademark assignment records, the product must have been a hit because Leo Peters permanently and formally licensed or assigned the registration to Swift in 1956.  Peters apparently retained non-poultry related rights in the BUTTERBALL mark and, in the late 1950’s or early 1960’s, founded Butterball Farms, Inc., a butter company in Grand Rapids, Michigan, that is still in business but has nothing to do with turkey.

Swift and the BUTTERBALL turkey mark went through a ton of mergers and spin-offs over the years. Swift found itself at various times sharing corporate forms with Beatrice Foods, Globe Life Insurance, Playtex, ConAgra and many other brands that may or may not conjure up warm Thanksgiving feelings. In 2006, the BUTTERBALL mark and poultry business were chipped off and merged with the Carolina Turkeys Company. The new company now does business in North Carolina as Butterball, LLC. With 1 billion pounds shipped annually, Butterball, LLC is the largest distributor of turkey products in the United States.

By the time Butterball, LLC was formed, Ada Walker’s original registration had been allowed to expire (in 2001), but that registration had been replaced with a ton of others, including what we have come to recognize as the famous BUTTERBALL logo for turkey, which was registered in the 1980’s, and claims a first use date of 1962.

The Curious (Re)Emergence of Butterball Ham

Ok, now let’s talk about Butterball Ham. In 2014, the Joseph Sanders Meat company of Custer, Michigan (“Sanders”), applied to the United States Trademark and Patent Office (“USPTO”) to register BUTTERBALL HAM for ham products.  Around the same time, Sanders also started snapping up domain names with the BUTTERBALL name in them, and even applied to the Michigan Secretary of State to change its d/b/a to the “Butterball Ham Company.”  The USPTO put a wrench in these plans by rejecting the trademark application on the grounds of likelihood of confusion with Butterball, LLC’s preexisting turkey registrations, which by that time also included ham and other meats. So Sanders abandoned its trademark application.

End of story, right?  No, the story continues for two reasons.  First, Sanders (now firmly on the radar of Butterball, LLC) kept selling BUTTERBALL HAM. Second, the date of first use claimed on Sanders’ applications was 1960, two years before anything claimed on Butterball, LLC’s live registrations, which seemed to indicate that there was much more to the backstory. So what gives? Was Sanders somehow related to Leo Peters’ Butterball Farms (also in Michigan)?  Was Joseph Sanders some long-lost licensee or relative of Ada Walker?

Turkey v. Ham

In 2014, Butterball, LLC tried to negotiate a resolution with Sanders, but to no avail.  After settlement talks broke down, in 2015 Butterball, LLC filed a trademark infringement action against Sanders in the Eastern District of North Carolina.

Sanders moved to dismiss for lack of subject matter jurisdiction. Sanders’ current owner, Derek Sanders, submitted an affidavit stating that Sanders was simply a family-run business with just one location, four delivery trucks and a commercial footprint that barely reaches outside Michigan, let alone all the way to North Carolina. The Court denied the motion on the ground that Sanders maintained an interactive website that advertised the ability to ship meats all over the place, and Sanders did not deny that this included North Carolina.

All in all, not a very interesting motion, except that Derek Sanders’ affidavit also sort of implied without explanation that Sanders might have been selling BUTTERBALL branded products since 1925, not 1960 as claimed on the trademark applications! Sure enough, consistent with this earlier date, Sanders’ pre-litigation website stated that Sanders has sold its “time-tested … truly authentic old-fashioned Butterball ham,” since the 1920’s.

After the motion to dismiss was denied, Sanders answered and counterclaimed, alleging that Sanders’ ham, not Butterball’s turkey, was the first product to use the BUTTERBALL mark. Through this pleading, we finally got a bit more of Sanders’ story. Sanders Meats was founded in 1925 by Joseph Sanders, who delivered meats in a single Model T Ford, and allegedly began selling BUTTERBALL HAM in the 1930’s (in case you were keeping score, this is the third priority date offered by Sanders). Although Butterball, LLC implied in its complaint that it discovered Sanders’ use of the BUTTERBALL mark only in 2014, Sanders alleged that the plaintiff’s predecessor in interest, Swift, knew that Sanders was the senior user of the mark since 1969, when the parties entered into an (apparently unwritten) co-existence arrangement.

Unanswered Questions

With all these conflicting historical claims, this promised to be a very hot lawsuit. But in 2017, before the oven could get turned up to 350, the parties reached a settlement. We are glad they are not fighting any more, but the settlement sadly leaves so many questions unanswered:

First, when did Sanders really start using the BUTTERBALL mark? Was it 1925, the date on its pre-litigation website; or in the 1930’s as alleged in the counterclaims; or in 1960 as represented to the USPTO?  Lest you think this inconsistency indicates that Sanders just made the whole thing up, it can at least prove the 1960 date, because attached to the counterclaims were old mimeographed letters between Joseph Sanders and the company that was making his “Butterball Ham” labels. I guess one benefit of being a fourth-generation family business is that, when it’s time to gather evidence, you just need to get a flashlight and go down to the basement!

Second, where did the “Butterball” name originally come from? My money is on the Bufflehead duck, sometimes nicknamed “Butter-ball” by hunters, which presumably reflects either the bulked up shape of its head in winter or what it looks like after a half an hour in the oven. In making this guess, I realize that I am picking an ornithological fight with The Atlantic, which a few years ago concluded (in a non-committal fashion) that the term “Butterball” derived from the Ruddy duck, also nicknamed “Butter-ball.” In my opinion, the Bufflehead is the better candidate because (if I’m reading my Audubon maps right), only the Bufflehead would have been hanging out in Ohio in 1938 or in Michigan in 1925, when either Ada Walker and/or Joseph Sanders started applying the name to non-duck meat products. To find a Ruddy duck, you have to go further west. And yes, all of that is a pedantic way of saying we just don’t know.

Finally, as the paragraph above hints, we also don’t really know who was the senior user as between Butterball, LLC’s predecessors and Sanders. The final settlement might tell us who the parties thought used the name first, but alas the terms are confidential. One thing is certain: after the settlement, Sanders took the word “Butterball” completely off its website.  Was that because Butterball, LLC (relying on Ada Walker’s priority date of 1938) had the better claim, or because Sanders traded his 1925 priority date for a big fat check? We don’t know, but if you are curious and happen to find yourself in Custer, Michigan this Thanksgiving, ask around whether Derek Sanders has recently bought a new car.

The author acknowledges that every time he says “we don’t know,” what he’s really saying is “the internet won’t tell us.” If you know the answer to any of these mysteries, please fill us in. And hey GOOGLE, you can have Thanksgiving off but after that get back to work!

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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