## Facts

- Top Tobacco, L.P. and Republic Tobacco, L.P. sold loose “roll-your-own/make-your-own” cigarette tobacco under the registered TOP® mark featuring the word “TOP” and a spinning-top image.
- North Atlantic Operating Company, Inc. and National Tobacco Company, L.P., associated with the ZIG-ZAG® brand, entered the loose-tobacco market and in a 2001 packaging redesign added the phrase “Fresh-Top™ Canister.”
- North Atlantic’s cans prominently displayed ZIG-ZAG branding and imagery; “Fresh-Top Canister” appeared as a relatively inconspicuous phrase describing a lid/canister feature intended to keep tobacco fresh.
- Top Tobacco sued under the Lanham Act, claiming infringement and dilution based on the asserted right to exclude competitors from using “top” on tobacco products.

## Issues

1. Whether use of “Fresh-Top Canister” on defendants’ tobacco packaging was likely to cause consumer confusion as to source with plaintiffs’ TOP® mark.
2. Whether trademark or dilution law allowed plaintiffs to bar defendants’ descriptive use of the common word “top” in this market.

## Decision

- The Seventh Circuit affirmed summary judgment for defendants.
- The court held that no reasonable jury could find a likelihood of confusion given the strikingly different overall packaging and the dominance of ZIG-ZAG branding on defendants’ cans.
- The court rejected plaintiffs’ attempt to obtain broad exclusivity over “top,” particularly where defendants used the term descriptively to refer to a container lid feature rather than as a source identifier.
- Plaintiffs’ dilution-based theory failed on this record because the challenged use did not justify extending trademark protection to control ordinary, descriptive vocabulary in context.

## Legal Principles

- Likelihood of confusion is assessed from the standpoint of ordinary consumers and turns on whether the challenged use is likely to mislead consumers about the source of the goods.
- Trade dress and overall presentation may be dispositive; side-by-side inspection can show that confusion is implausible where competing packaging clearly signals different sources.
- Trademark rights protect source identification, not ownership of words in all their meanings; common words with multiple senses are not subject to market-wide monopolization.
- Descriptive, non-source-identifying use of a term (e.g., describing a product or packaging feature) is not actionable absent a likelihood of confusion, and it weakens efforts to recast the claim as dilution.

## Conclusion

Because defendants’ packaging prominently identified ZIG-ZAG as the source and used “Fresh-Top Canister” only as a descriptive reference to a lid feature, the court found confusion effectively impossible and refused to extend trademark law to block ordinary descriptive uses of the word “top.”


Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380 (7th Cir. 2007)