Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Lettuce Entertain You Enters., Inc. v. Leila Sophie AR, LLC, No. 09 CV 2582, Slip. Op. (N.D. Ill. Feb. 26, 2010), (Lefkow, J.). 

Judge Lefkow granted plaintiff Lettuce Entertain You ("LEYE") a preliminary injunction against defendants' use of the name "Lettuce Mix" in their salad bar restaurant in Lincoln Park. LEYE argued that the defendants' "Lettuce Mix" name would infringe its family of "Lettuce" marks for use in restaurant services.

Likelihood of Success

LEYE's Lettuce marks were not generic as used for restaurant services. While some of LEYE's meals included lettuce, LEYE was not in the business of lettuce sales. And defendant's intent to use its Lettuce Mix name was sufficient for use in commerce.

The Court held there was a likelihood of confusion. Both parties marks focus upon "lettuce" and use it as a pun for "let us." This is true even though LEYE's logo, which includes a waiter opening a covered a dish was different from defendant's logo. Additionally the parties' services in the restaurant industry were similar.

Both parties used the marks in the same area and manner. They directly compete for restaurant customers, and at least one of LEYE'S 70 restaurants is within one mile of Lettuce Mix. To the extent both parties cater to patrons seeking inexpensive, casual meals, the patrons are assumed to use a lesser degree of care, even though some of LEYE's restaurants are more expensive.

LEYE's family of Lettuce markers was strong, and defendants' argument to the contrary was their genericness argument that the Court previously denied.

LEYE, however, did not provide evidence of actual confusion, although actual confusion is not required. And there was no evidence that defendants intended to pass themselves off as affiliated with LEYE. Finally, defendants' was not a fair use because lettuce was not descriptive of their service.

Irreparable Harm

Trademark infringements are presumed to result in irreparable harm. LEYE would, therefore, have been irreparably harmed by any trademark infringement from defendants.

Balancing Harm

Defendants would not suffer significant harm from the injunction given that they had already stopped using the allegedly infringing name. And any loss of defendants' goodwill would be attributable to their own actions.

Public Interest

The public interest would not be harmed by the preliminary injunction. Enforcement of trademarks serves the public good, and LEYE had shown a "substantial" likelihood of confusion.

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Seattle Trademark Lawyer Michael Atkins did a superb job hosting this week's Blawg Review -- click here to read it.  Atkins takes a stroll through Seattle's famous Pike's Place Market looking at Seattle-based blogs -- Washington State Patent Law Blog, LexBlog and the China Law Blog, among others -- as well as a number of trademark blogs.  I was fortunate to be featured on Atkins's tour with last week's post about the Lettuce trademark dispute -- click here to read my post.  Thanks Mike, for a great Blawg Review and for including the Blog.

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Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).

Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises' ("LEYE") motion for a temporary restraining order against defendants' use of a banner reading "Let us be!" flanked by images of lettuce heads (the "Banner") on a building in which defendants plan to open a salad bar restaurant to be named "Lettuce mix."  LEYE filed this suit seeking the removal of a "Lettuce mix" sign (the "Sign") defendants placed on the same building.  As an effort at resolving the dispute, defendants replaced the Sign with the Banner.  After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE's LETTUCE trademarks used in connection with LEYE's operation of more than seventy restaurants throughout the Chicago area and nationwide.  The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE's likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted. 

The Court held that defendants' Banner was a fair use of LEYE's trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims.  Defendants were not using the Banner's combination of the phrase "Let us be!" (which the parties agreed sounded like "Lettuce") and the lettuce images as a service mark.  "Lettuce mix" may have been a service mark, but "Let us be!" and the lettuce images were used to draw attention to this case and were meant to say "Hey, Lettuce Entertain You, leave us alone!"  And the use of the "let us"/lettuce pun was intended to parody LEYE's use of "lettuce" in place of "let us" throughout LEYE's website and other materials.  The Court explained that the Banner was not used to identify defendants' services, but to make a statement of protest:

The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, "Leave us alone!"  Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.

The Court also noted that this decision had no bearing upon the question of whether defendants' Lettuce mix restaurant name infringed LEYE's LETTUCE marks.

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