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.