Legat v. Legat Architects, Inc., No. 20 C 6830, Slip Op. (N.D. Ill. Jun. 23, 2021) (Gettleman, J.).

Judge Gettleman granted defendant Legat Architects’ motion to stay plaintiff Legat’s Lanham Act claim pending appeal of Legat’s state law claims for breach of contract and unjust enrichment related to his LEGAT trademark for use with architectural services.

Legat alleges that he sold his architecture business to Legat Architects in 1997 and that Legat Architects have used the name without authorization since 2017. Illinois claim preclusion provides that a final judgment from a court of competent jurisdiction bars later claims between the parties or their privies on the same issues, or issues that could have been raised, to the extent that they arise from the same set of operative facts. The parties in the state court and federal court actions were identical. And the claims in both jurisdictions arise from the same set of operative facts — the use of the LEGAT trademark. “Rebranding” unjust enrichment as a Lanham Act claim cannot save Legat’s case.

Legat’s claim of an ongoing harm did not save his claims because Legat’s harm — the use of his alleged trademark — is the same. The fact that the harm allegedly continued does not avoid issue preclusion.

However, because Legat appealed the lower court’s judgment, the Court stayed the federal action pending a final determination in the state court action.