Case: 1:09-cv-02582 Document #: 29 Filed: 06/08/09 Page 1 of 12 PageID #:182
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Case No. 09 C 2582
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`Judge Joan H. Lefkow
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`LETTUCE ENTERTAIN YOU
`ENTERPRISES, INC.,
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`Plaintiff,
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`vs.
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`LEILA SOPHIA AR, LLC d/b/a LETTUCE
`MIX, and SHAHRAM TEHRANI
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`Lettuce Entertain You Enterprises, Inc. (“LEYE”), is the owner of a family of LETTUCE
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`marks for restaurant and catering services. On April 28, 2009 LEYE filed a complaint for
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`trademark infringement seeking an order directing the defendants, Leila Sophia AR, LLC, and
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`Shahram Tehrani (collectively, “Tehrani”), to remove a “Lettuce mix” sign Tehrani has erected
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`above the entry of a restaurant he intends to open in the Lincoln Park neighborhood of Chicago.
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`In an effort to reach a stand still agreement, Tehrani covered the “Lettuce mix” sign with a
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`banner that reads prominently, “Let us be!” with the words “Name pending . . .” below and in a
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`smaller font. An image of a head of lettuce is depicted on either side of the text. LEYE
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`contends the temporary banner does not avoid infringement and seeks an order for its immediate
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`removal and replacement with a non-infringing sign. The parties have simultaneously submitted
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`briefs on the issue of whether the temporary sign infringes under Section 43(a) of the Lanham
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`Act, 15 U.S.C. § 1125(a). For the following reasons, LEYE’s oral motion for a temporary
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`restraining order is denied.
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`Case: 1:09-cv-02582 Document #: 29 Filed: 06/08/09 Page 2 of 12 PageID #:183
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`FACTS
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`The following facts appear substantially undisputed: LEYE is a restaurant and catering
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`corporation based in Chicago that owns more than seventy restaurants nationwide. LEYE owns
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`and operates several well-known restaurants in Chicago, including Big Bowl, Café Ba-Ba-
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`Reeba!, Everest, L20, Mon Ami Gabi, R.J. Grunts, Scoozi!, Shaw’s Crab House and Wildfire.1
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`LEYE owns a family of federally registered marks for restaurant and catering businesses
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`utilizing the word “lettuce,” including LETTUCE ENTERTAIN YOU ENTERPRISES
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`(registered May 21, 1978 for restaurant services), LETTUCE ENTERTAIN YOU (registered
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`June 16, 1990 for restaurant services), LETTUCE (registered January 14, 1992 for restaurant
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`services), LETTUCE PARTIES (registered March 3, 1993 for restaurant services) and
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`LETTUCE PLANET (registered September 2, 2008 for restaurant services, catering and special
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`event planning). LEYE has continuously and extensively used its LETTUCE family of marks in
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`connection with LEYE’s restaurant, event planning and consulting services. Steibler Decl. ¶10,
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`Ex. A to Pl.’s Mem [Dkt. No. 16]. For example, LEYE operates a unified telephone reservation
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`number for restaurants at 1-888-LETTUCE and a frequent diner club program using the
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`telephone number 1-773-LETTUCE, sells gift cards bearing the LETTUCE ENTERTAIN
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`YOU® mark, and maintains websites at the domains www.lettuceentertainyou.com,
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`www.leye.com, www.lettuceconsulting.com and www.lettuceprivatedining.com. Id. at ¶ 7.
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`LEYE’s website uses the LETTUCE mark as a pun for “let us” and as a shorthand for the
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`corporation itself. For example, at www.leye.com, the heading on the About Us page is “Lettuce
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`Tell You . . .” and “Lettuce Suggest a Restaurant” on the Restaurant Search page, while the Gift
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`1 None of LEYE’s restaurants uses the word “Lettuce” in its name nor does any operate
`solely as a salad bar establishment. At the May 21, 2009 hearing, however, LEYE’s counsel
`indicated that R.J. Grunts, one of LEYE’s first restaurants, is famous for its salad bar.
`2
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`Card page is entitled “Lettuce Gift Cards” and the news page is entitled “Lettuce in the News.”
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`The LETTUCE ENTERTAIN YOU mark appears on the upper left corner of each page in white
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`font. Above the mark is a logo of a waiter in a white jacket opening a serving dish with stars
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`wafting out. The serving waiter logo, or simply two wavy lines of stars similar to those wafting
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`out of the serving dish, appear on other advertising and marketing materials, including emails
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`and flyers.
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`Tehrani is the owner of Basil Leaf Café and Sage Food & Wine, restaurants also located
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`in the Lincoln Park neighborhood of Chicago. Tehrani formed Leila Sophia AR, LLC in late
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`2008 to open a salad bar at 2470 N. Clark, near his other restaurants, under the name “Lettuce
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`mix.” Tehrani erected a “Lettuce mix” sign at that location. The word “Lettuce” is prominently
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`featured in a distinctive green font, with a capital “L” and an orange “u.” The word “mix” is in
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`all lower case and is in a smaller, less distinctive font set off to the right of “Lettuce” in a white
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`box.
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`LEYE learned that Tehrani intended to open a restaurant under the name “Lettuce mix”
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`on March 22, 2009 when one of its employees noticed a temporary sign in the window at
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`2470 North Clark. On March 24, 2009, LEYE sent a cease and desist letter to Tehrani stating its
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`belief that his use of such a name was in bad faith and constituted trademark infringement.
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`Tehrani’s attorney responded on March 25, 2009 stating that Tehrani would not stop using the
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`name “Lettuce mix.” The response indicated that Tehrani believes the word “lettuce” is not
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`eligible for trademark protection and, furthermore, that there is no likelihood of confusion
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`because (1) LEYE operates no restaurants having a similar name or concept, (2) the “Lettuce
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`mix” sign is in a different color and font from LEYE’s marks, and (3) Tehrani has a pattern of
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`3
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`Case: 1:09-cv-02582 Document #: 29 Filed: 06/08/09 Page 4 of 12 PageID #:185
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`establishing unique restaurant ideas in the area where his new restaurant was to be located.2 The
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`penultimate paragraph of the letter states
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`Your letter further alleges that my client is attempting to take advantage of your
`client’s goodwill by using the name “Lettuce Mix.” My client has been operating
`neighborhood restaurants in Lincoln Park within a block of each other for over a
`decade. He has established his own reputation as a fine dining, high quality
`neighborhood restaurant and certainly doesn’t need the goodwill of a
`commercialized entity.
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`Attachment 2 to Lenz Decl., Ex. B. to Pl.’s Mem. On April 2, 2009, LEYE sent another letter to
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`Tehrani’s attorney stating that it views his position as untenable and outlining what it believes to
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`be the relevant legal authority. On April 20, 2009, in response to questions from LEYE’s
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`counsel, Tehrani’s attorney indicated that he was not authorized to accept service on Tehrani’s
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`behalf and stated that his client was “at least two months from opening” the restaurant.
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`Tehrani’s Affidavit, attached to his memorandum, indicates that “it remains unknown when the
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`restaurant concept will be open for business as it remains in the process of securing local and
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`city permits to operate a food service establishment within the City of Chicago.” Tehrani Aff.
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`¶ 5. As of the date of the parties’ latest submissions, the restaurant at 2470 N. Clark has not yet
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`opened.
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`LEYE’s complaint asserts claims for infringement and false designation of origin under
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`the Lanham Act, 15 U.S.C. §§ 1051 et seq. (Counts I and II), violations of the Illinois Deceptive
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`Trade Practices Act (Count III), common law service mark infringement (Count IV), and unfair
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`competition (Count V). As stated, however, this decision addresses only the temporary banner
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`and whether it infringes under federal trademark law. LEYE contends that Tehrani must replace
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`the “Let us be!” banner with a sign that does not depict images of lettuce or use the term
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`“lettuce” or its phonetic equivalent, or any term confusingly similar until the court rules on its
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`2 The court expresses no opinion as to the validity of Tehrani’s views.
`4
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`Case: 1:09-cv-02582 Document #: 29 Filed: 06/08/09 Page 5 of 12 PageID #:186
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`pending preliminary injunction motion. The lawsuit has received some press and the following
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`comment has been attributed to Tehrani:
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`They were saying they didn’t want me to use the name lettuce. It’s like owning
`the sun. What am I going to do pay them $2 every time I get a suntan? It’s
`absurd.
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`Lisa Donovan, Restaurant Owner Sued By Lettuce Entertain You Over Name, Chicago Sun
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`Times, May 21, 2001, http://www.suntimes.com/business/1584952,CST-NWS-
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`foodfight21_.article.
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`I.
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`Standard for Interlocutory Relief
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`ANALYSIS
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`“An equitable, interlocutory form of relief, a ‘preliminary injunction is an exercise of a
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`very far-reaching bar, never to be indulged in except in a case clearly demanding it.’” Girl
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`Scouts of Manitou Council, Inc. v. Girl Scouts of the United States of America, Inc., 549 F.3d
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`1079, 1085 (7th Cir. 2008) (citing Roland Mach. Co. v. Dresser Indus., Inc., 749 F.2d 380, 389
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`(7th Cir. 1984)). A party seeking a preliminary injunction or a temporary restraining order must
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`demonstrate (1) its case has some likelihood of success on the merits; (2) that no adequate
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`remedy at law exists; and (3) it will suffer irreparable harm if the injunction is not granted. Id.;
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`Recycled Paper Greetings, Inc. v. Davis, 533 F. Supp. 2d 798, 803 (N.D. Ill. 2008) (internal
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`citations omitted). If the court determines that the moving party has failed to demonstrate any
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`one of these three threshold requirements, it must deny the injunction. Id.
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`II.
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`Likelihood of Success On the Merits
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`The pending motion can be resolved on the single issue of likelihood of success on the
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`merits.
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`5
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`A.
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`LEYE’s Claim
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`The Lanham Act provides in relevant part that a plaintiff may bring a civil action against
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`[a]ny person who, on or in connection with any goods or services, or any
`container for goods, uses in commerce any word, term, name, symbol, or device,
`or any combination thereof, or any false designation of origin . . . which is likely
`to cause confusion, or to cause mistake, or to deceive as to the affiliation,
`connection, or association of such person with another person, or as to the origin,
`sponsorship, or approval of his or her goods, services, or commercial activities by
`another person.
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`15 U.S.C. § 1125(a). Where trademark infringement and false designation of origin are alleged,
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`“the movant shows a likelihood of success by establishing that (1) he has a protectable mark, and
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`(2) that a ‘likelihood of confusion’3 exists between the marks or products of the parties. Id.
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`LEYE contends that its ownership of the LETTUCE family of marks entitles it to protection
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`from Tehrani’s use of the temporary banner.
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`B.
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`Tehrani’s defense.
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`For purposes of the motion, Tehrani does not dispute that LEYE’s marks are protectable.
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`Nor does he undertake an extensive likelihood of confusion analysis. He argues principally that
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`(a) his banner is not a use in commerce and thus not within the ambit of the Lanham Act and
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`(b) the “fair use” defense applies.4 Because the court is persuaded by the second argument, it
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`will not address the first at this time. This means that the court must assume that Tehrani’s
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`banner is a use in commerce of LEYE’s marks but the defense exonerates him from liability for
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`3 In the Seventh Circuit, the following seven factors are used to evaluate whether a
`likelihood of confusion exists in trademark and service mark cases (1) similarity between the
`marks in appearance and suggestion; (2) similarity of the products or services; (3) area and
`manner of concurrent use; (4) degree of care likely to be exercised by consumers; (5) strength of
`complainant’s mark; (6) actual confusion; and (7) intent of defendant to “palm off his product as
`that of another. Id.
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`4 Tehrani also argues that the “Let us be!” banner is not trademark infringement because
`(1) it is free speech (specifically a means of communication, opinion and peaceful protest)
`protected by the First Amendment and (2) “let us” is a generic phrase not entitled to trademark
`protection.
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`6
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`it. See Bobbitt v. Victorian House, Inc., 532 F. Supp. 734, 736 (N.D. Ill. 1982) (citing 5 Wright
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`and Miller, FEDERAL PRACTICE AND PROCEDURE 2D § 1270 at 292) (A proper affirmative
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`defense is one which “generally admits the matters in a complaint but suggests some other
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`reason why there is no right of recovery.”)
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`The Lanham Act provides a defense to an otherwise incontestable mark where, inter alia,
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`. . . the use of the name, term, or device charged to be an infringement is a use,
`otherwise than as a mark, . . . of a term or device which is descriptive of and used
`fairly and in good faith only to describe the goods or services of such party, or
`their geographic origin ....
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`15 U.S.C. § 1115(b)(4). To prevail on the fair use defense, Tehrani must show that (1) he is not
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`using the content of the banner as a service mark; (2) he is using the phrase in good faith merely
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`to describe his services, and (3) the phrase is in fact descriptive of his services. M.B.H.
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`Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50, 53 (7th Cir. 1980); Packman v. Chicago Tribune
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`Co., 267 F.3d 628, 639 (7th Cir. 2001).
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`1.
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`Tehrani is not using LEYE’s mark as a service mark.
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`“A service mark is a symbol or combination of symbols used by a source of services to
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`identify itself to the public as the source of its services and to create in the public consciousness
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`an awareness of the uniqueness of the source of its services.” WOKY, 633 F.2d at 53-54.
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`Whether “Let us be!” and images of lettuce heads is being used as a service mark “depend[s] on
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`whether [the defendant] intends to use [the words] as a service mark and whether they in fact
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`[perform] the function of a service mark.” Id. at 53.
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`Plainly, Tehrani is not using his banner as a service mark. The combination of “Let us
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`be” and the images does not identify Tehrani as the source of services or the uniqueness of a
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`restaurant. Rather, Tehrani is using the banner to inform the observer that LEYE is trying to
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`7
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`Case: 1:09-cv-02582 Document #: 29 Filed: 06/08/09 Page 8 of 12 PageID #:189
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`stop him from using any form of “lettuce” to name his establishment. LEYE does not argue to
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`the contrary.5 Nevertheless, LEYE contends that Tehrani intends to profit indirectly from
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`drawing attention to the lawsuit by drumming up the public’s interest and excitement over the
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`opening of his restaurant. Even if true, this does not mean that he is using “Let us be!” as a
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`service mark.
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`WOKY is instructive here. In that case, the Seventh Circuit reasoned that it does not
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`necessarily follow from the defendant’s intent to commercially profit from the use of a plaintiff’s
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`mark that the defendant is using the mark as a service mark. Id. at 54. In WOKY, the Seventh
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`Circuit found that the defendant, a radio station that broadcasted plaintiff’s “I LOVE YOU”
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`mark over the radio did intend to derive a commercial advantage from its use of the mark.
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`Nevertheless, because the radio station used its call letters and frequency to identify itself when
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`broadcasting the mark, and “I LOVE YOU” was used “to describe to the public what it felt to be
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`real and valuable qualities of its radio service,” id., the court ruled that WOKY did not use the
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`phrase as a service mark. Id. at 55.
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`Similarly here, although Tehrani may hope to benefit from its use of LEYE’s marks, he is
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`not using them as service marks but as something quite different. Tehrani’s service mark, so far,
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`is “Lettuce mix.” Indeed, the parties agree that Tehrani is using “Let us be!” and the images to
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`5 LEYE states,
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`[T]he play of the words ‘let us be’ covering the infringing sign LETTUCE MIX
`is an intentional effort to draw attention to this controversy, and, therefore to
`invoke the LETTUCE family of marks. Potential customers seeing the LET US
`and Lettuce Design Sign, particularly neighborhood residents who previously
`viewed the LETTUCE MIX sign, will inevitably stop in to learn the story of the
`dispute . . . . The temporary sign is thus revealed as another effort by defendants
`to trade unlawfully upon the LETTUCE family of marks.
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`Pl.’s Supp. Mem. at 2-3.
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`8
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`draw attention to this lawsuit and, as evidenced by his comment in the CHICAGO SUN TIMES, to
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`what he views as LEYE’s unjust efforts to enforce of the LETTUCE marks. By “Let us be!”
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`Tehrani means, “Hey, Lettuce Entertain You, leave us alone!” Furthermore, by parodying
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`LEYE’s regular use of LETTUCE as a pun for “let us,” Tehrani also expresses his opinion that
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`LEYE’s enforcement of its mark is an unjustified attempt to appropriate a generic term. As a
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`restaurant proprietor and member of the community, Tehrani may use “Let us be!” and the
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`lettuce images so long as they are not used to identify the source of his services. Cf. Nike, Inc. v.
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`“Just Did It” Enter., 6 F.3d 1225, 1231-32 (7th Cir. 1993) (an intent by the defendant in a
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`trademark case to parody raises the inference that the user does not intend to cause confusion
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`regarding the source of goods); Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 625 F. Supp. 48,
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`55-56 (D.N.M. 1985) (trademark infringement does not exist where a junior user of a mark
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`intentionally undertakes to capitalize upon public awareness of a product or an idea created by
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`the advertising of a senior user where the junior user intends to parody the senior user, not to
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`cause confusion).
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`2.
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`Descriptiveness
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`The other elements of the fair use defense inquire into whether the use of plaintiff’s mark
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`is a good faith effort to describe the defendant’s services and whether it is in fact descriptive.
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`Tehrani’s good faith can be judged only by inquiry into his subjective purposes in using the
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`phrase “Let us be!” WOKY, 633 F.2d at 54. As already stated, the parties here agree on
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`Tehrani’s subjective purpose in putting up the “Let us be!” banner. It is not to describe his
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`restaurant but to express protest of LEYE’s aggressive action against Tehrani’s intended use of
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`the word “Lettuce” as a service mark.
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`9
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` Apart from Tehrani’s subjective intent, the combination of the images and the text on the
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`banner must be descriptive of restaurant services. “Descriptive terms ‘impart information
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`directly.’” Packman v. Chicago Tribune Co., 267 F.3d 628, 641 (7th Cir. 2001). See, e.g., RDK
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`Corp. v. Larsen Bakery, Inc., 2006 WL 2168797, 20 (E.D.Wis.) (citing TCPIP Holding Co.,
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`244 F.3d at 93; Mil-Mar Shoe Co., 75 F.3d at 1157 & n.21 (“A trademark that particularizes its
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`product or service, by identifying the ingredients, qualities, or characteristics of the product or
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`service, is ‘descriptive’”; a descriptive mark is “trademarkable” only if it has acquired secondary
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`meaning).
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`Since this analysis must assume that Tehrani’s banner uses LEYE’s marks, the task is to
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`identify the message conveyed through use of the marks and then determine whether the use
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`conveys a meaningful message other than that claimed by the plaintiff. If so, it is descriptive for
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`purposes of the fair use defense. In other words, a plaintiff cannot appropriate a commonly used
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`phrase and thereby prevent others from using the phrase in a descriptive sense. Id. – ????
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`For example, in Packman, the plaintiff had secured a registration in THE JOY OF SIX in
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`connection with football and basketball games. Id. at 633. THE CHICAGO TRIBUNE began using
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`“the joy of six” in anticipation and celebration of the Chicago Bulls’ sixth NBA championship.
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`After the Bulls won the championship, THE TRIBUNE reproduced its front page, the headline of
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`which read “the joy of six” on t-shirts, posters, plaques and other memorabilia. Id. at 634. THE
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`TRIBUNE argued that it had made fair use of the mark. In affirming the district court’s grant of
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`summary judgment, the Seventh Circuit found the newspaper’s use of the mark descriptive
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`because it “used ‘the joy of six’ as a headline to describe a newsworthy event and the happiness
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`associated with the Bulls’ sixth NBA championship.” Id. at 641. Similarly, in WOKY, the radio
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`station used I LOVE YOU MILWAUKEE to show that it “liked Milwaukee . . . . that Milwaukee
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`was a good place to live, a community composed of persons who enjoy, in general and in the
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`abstract, the affection and respect of those who provide the radio service denominated WOKY.”
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`WOKY, 633 F.2d at 55. In both cases, the court concluded that where the use of the plaintiff’s
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`mark conveyed a message unrelated to the defendant’s product or service, it met the descriptive
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`prong of the fair use defense.
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`Assuming the phrase “Let us” surrounded by the images of lettuce evokes in the mind of
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`the viewer the LETTUCE family of marks, the word which immediately follows – “be” – turns
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`the phrase into an imperative one. The banner thus conveys a message from its authors, the
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`proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying,
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`“Leave us alone!” Even if potential customers viewing the banner do not know or learn of the
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`dispute, it is clear at first glance that the banner is being used to communicate a message of
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`protest.
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`Because Tehrani is not using the banner as a service mark, because Tehrani’s intention in
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`hanging the banner was to convey a message of protest against LEYE rather than to pass his new
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`restaurant off as a LEYE restaurant, and because the banner is descriptive, the court is persuaded
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`that the banner is fair use of LEYE’s marks. As such, LEYE cannot succeed on the merits of its
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`position that the temporary sign must be enjoined. This, of course, does not address the question
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`presented by the complaint that the “Lettuce mix” sign infringes.
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`CONCLUSION
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`For the foregoing reasons, LEYE’s oral motion for a temporary restraining order is
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`denied.
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` Dated: June 8, 2009
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`Enter: ___________________________________
`JOAN HUMPHREY LEFKOW
`United States District Judge
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`12