Case: 1:21-cv-05312 Document #: 76 Filed: 05/25/22 Page 1 of 16 PagelD #:2643
`Case: 1:21-cv-05312 Document #: 76 Filed: 05/25/22 Page 1 of 16 PageID #:2643
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`IN THE UNITED STATES DISTRICT
`COURT FOR THE NORTHERN DISTRICT
`OF ILLINOIS EASTERN DIVISION
`
`
`GRUBHUBINC., and
`TAKEAWAY.COM CENTRAL CORE B.V.,
`
`
`Plaintiffs,
`
`
`
`
`THE KROGER CO. AND
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`RELISH LABS LLC,
`Defendants.
`
`
`V.
`
`CASE NO.: 1:21-cv-05312
`
`Judge Charles R. Norgle
`
`ORDER
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`Plaintiffs’ objections [72] to the Report and Recommendation of the Magistrate Judge are
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`sustained;
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`the Report and Recommendation [57]
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`is rejected; and Defendants’ motion for
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`preliminary injunction [17] is denied. Considering these rulings Plaintiffs’ motion for leave to file
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`reply [74] is denied becauseit is moot.
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`MEMORANDUM OPINION
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`Before this Court is Plaintiffs’, Grubhub Inc., and Takeaway.com Central Core B.V
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`(“JET”)
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`(collectively,
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`“Grubhub”), objections
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`to the Magistrate
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`Judge’s Report
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`and
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`Recommendation (Dkt. 57) (“the R&R”) to grant Defendants’, Relish Labs LLC and The Kroger
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`Co.’s (collectively “Home Chef’), motion for preliminary injunction. This matter was referred to
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`the Magistrate Judge who issued the R&R,specifically recommending this Court grant the motion
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`for preliminary injunction. Dkt. 57. In response, Grubhub issued written objections. Dkt. 72.
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`Having reviewed the R&R, Grubhub’s objections, and the extensive briefing on this motion, this
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`Court is unpersuaded that Home Chef metits burden in establishing the need for a preliminary
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`injunction, and therefore rejects the Magistrate Judge’s recommendation and denies the motion for
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`preliminary injunction.
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`I. MARKS IN QUESTION
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`The Court adopts and incorporates the factual findings of the R&R; however, the Court
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`refers to the marks in question as follows:
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`fit Wy. RHR
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`HOME
`
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`CHEF
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`“JET House Mark”
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`“HC Home Mark”
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`“Grubhub House Logo”
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`“Home Chef Home Logo”
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`Grubhub has also combined the JET House Mark with the Seamless brand name to create the
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`following logo:
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`iy seamless
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`Powered by GRUBHUB
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`“Seamless House Logo”
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`Dkt. 40 919. Use of the Seamless House Logo will discontinue. Dkt. 56 at 9:14-16.
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`II. DISCUSSION
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`a. Review of Grubhub’s Objections to The Report and Recommendation.
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`Pursuant to 28 U.S.C. § 636(b)(1), the Court must conduct a de novo determination ofthose
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`portions or recommendations of the R&R to which Grubhub objects. The Court mayaccept, reject,
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`or modify, in whole or in part, the findings or recommendations madeby the magistrate judge. Id.
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`Thus, the Court begins with addressing Grubhub’s objections.
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`Grubhub objects to the recommendation to grant Home Chefs motion for preliminary
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`injunction raising four specific objections. First, the R&R erroneously rejects Grubhub’s consumer
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`perception surveys. Second, the R&R improperly relies upon a non-final USPTO decision that
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`considered the JET House Mark and not the Grubhub House Logo. Third, the R&R fails to
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`recognize that
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`the use of the well-known GRUBHUB name in the Grubhub House Logo
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`distinguishes that mark from the Home Chef Home Logo and makes confusion unlikely. Fourth,
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`the R&R erroneously credits, as evidence of actual confusion, two anonymoussocial media posts
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`inquiring aboutsimilarities between the Grubhub House Logo and the Home Chef Home Logo.
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`The Court sustains each objection.
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`i.
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`Objection 1 —- Erroneous Disregard of ConsumerPerception Surveys.
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`Grubhub retained survey researcher Hal Poret to conduct surveys to assess whether
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`Grubhub’s use of the Grubhub House Logo causes consumer confusion between Grubhub and
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`HomeChefunderreverse and forward theories of confusion.' Dkt. 46-3. Both studies werein the
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`standard “Eveready” survey format, “in which respondents are shown the trademarksat issue and
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`questioned to determine if they make a mistaken mental connection to the other party’s mark.”
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`Dkt. 46-3 97; see 6 McCarthy on Trademarks and Unfair Competition § 32:173.50-174 (4" ed.
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`1999) (noting Eveready surveys are the “gold standard” in cases involving strong marks and are a
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`“widely accepted” format to prove the likelihood or non-likelihood of confusion.) Poret opines
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`that his survey results “powerfully demonstrate” that Grubhub’s use of the Grubhub House Logo
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`does not create a likelihood of confusion with Home Chefor its mark undereither the reverse or
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`forward confusion theory. Dkt. 46-3 9912, 14.
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`The R&R found that Poret’s surveys, though admissible, were entitled to little weight for
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`five reasons, concluding (1) the reverse confusion survey did not use the proper universe of
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`consumers; (2) the surveys failed to accurately reflect the actual marketplace conditions; (3) the
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`'! Trademark confusion is often discussed in terms of two different theories of confusion: “forward confusion” and
`“reverse confusion.” See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir, 1992)
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`methodology used to question the survey respondents amounted to a “memory test;” (4) the
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`surveys failed to use control groups; and (5) due to the limited time for which the parties’ logos
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`coexisted, the lack of actual confusion is “less salient” or even “irrelevant” when determining
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`whetherthere is a likelihood of confusion, Dkt. 57 at 41-45,
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`Grubhub has objected to that weighing of the survey evidence. Dkt. 72 at 2; 4-9. The Court
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`sustains that objection. The survey evidence produced by Grubhub (and, to a lesser extent, the
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`failure of Home Chef to produce survey evidenceto the contrary) is entitled to much more weight
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`than was afforded it. In both the forward confusion and reverse confusion surveys, none of the
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`hundreds of respondents were confused, demonstrating that confusion is unlikely. Dkt. 46 at 3
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`911, 13. Survey evidence showing confusion of less than 10% weighsstrongly against a finding
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`
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`of infringement. Henri’s Food Prod. Co., Inc. v. Kraft Inc., 717 F.2d 352, 358-59 (7th Cir. 1983).
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`The Court does not, as some courts have, draw the negative inference that Home Cheffailed to
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`offer survey evidence because such evidence would have been unfavorable to its claim.Seee.g.
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`Planet Hollywood (Region IV), Inc. vy. Hollywood Casino Corp., 80 F. Supp. 2d 815, 884 (N.D.
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`Ill. 1999), opinion clarified, No. 96 C 4660, 1999 WL 1186802 (N.D.IIl. Dec. 9, 1999). However,
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`Home Chef’s failure to offer any significant evidence of actual confusion (as discussed in more
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`detail below) — either directly or through surveys — demonstrates a lack of proof by Home Chefon
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`the important element of actual confusion. Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145,
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`1153 (7th Cir. 1994) (noting while failure to prove any actual consumer confusion militates against
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`a finding ofthe likelihood of such confusion,it is ultimately a question for the finder of fact.) The
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`absenceofsufficient proof of any actual confusion when coupled with marksthat are not dead-on
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`similar is a blow to Home Chef’s infringement claim.
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`The R&R unduly criticized the universe of survey respondents in the reverse confusion
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`survey. Respondents for a reverse confusion study should be drawn from a universe consisting of
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`
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`the customer base of Home Chef.See,e.g., Citizens Fin. Grp., Inc. v. Citizens Nat. Bank of Evans
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`City, 383 F.3d 110, 120-21 (3d Cir. 2004). Here, the universe of respondents questioned was a
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`subset of the entire Home Chef customer base universe. The survey didn’t question any
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`respondents outside Home Chef’s customer base universe; the set of Home Chef customers “who
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`used, or plannedto use, an online or in-app service for delivery of home mealpreparation kits or
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`ready-to-eat meals” may also include Home Chef customers “who makein-store purchases or who
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`purchase heat-and-eat meals would;” and Home Chef customers “who makein-store purchases or
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`whopurchase heat-and-eat meals” may not be any more(or less) susceptible to confusion. In other
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`words, nothing suggests the survey asked the wrong people, that the survey did not ask the people
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`who the R&Rsaid it should have, or that the results would be any different if it did. While the
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`survey is not perfect, it captured a sufficiently broad swath of Home Chef’s customers, and
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`therefore is a probative measure of the effect of the Grubhub House Logo on consumerbehavior.
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`Am,Nat’ Ins. Co. v. Am. Nat’] Inv. Advisors, LLC, No. 11-cv-4016, 2014 WL 6613342,at *16
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`(N.D.Ill. Nov. 21, 2014) (survey evidence “need not be perfect” to be admissible and considered).
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`The R&R’s criticism of the surveys’ simulation of marketplace conditions is not erroneous
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`becauseit is correct that the surveys did not account for how consumersreactto: (1) Home Chef's
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`use of the HC Home Mark without the Home Chef brand name; (2) Home Chefs sales ofits
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`products in Kroger grocery stores; and (3) Grubhub’s use of the Seamless House Logo. However,
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`“the closer the survey methods mirrorthe situation in which the ordinary person would encounter
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`the trademark, the greater the evidentiary weight of the survey results.” Bobak Sausage Co. v. A
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`& J Seven Bridges, Inc., No. 07 C 4718, 2010 WL 1687883, at *5 (N.D. Ill. Apr. 26, 2010).
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`Marketplace realities are such that consumers will rarely encounter the HC Home Mark without
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`the Home Cheftrade name appearing in some form, whetherat the point ofsale or otherwise. Also,
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`any confusion in the context of grocery stores is unlikely because Grubhub doesnotsell any
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`products, in grocery stores or otherwise; it provides delivery services. Finally, the Seamless brand
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`and logo are being phased out, and so consumers will not encounter the Seamless House Logo.
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`Dkt. 1 §20; Dkt. 56 at 9:14-16. Thus, while the surveys did not accountfor these three conditions,
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`the survey methods nevertheless closely mirror the situation in which the ordinary person would
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`encounter the trademark and are due a proportionate evidentiary weight.
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`It is a mischaracterization to call the surveys a “memory test” because the surveys tested
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`more than the “memory” of survey respondents;
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`the surveys questioned whether and why
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`respondents associated marks with companies not shown. R&R at 43-44. Discounting the survey
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`evidence for being a “memory test” is unwarranted. Furthermore, the absenceof a “control group”
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`in the surveys has no significant impact on the results because the purpose of a control groupis
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`“to eliminate general background noise from the results” and there is no such “noise” data here.
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`Chattanoga Mfg., Inc. v. Nike, Inc., 140 F. Supp. 2d 917, 928-29 (N.D.IIL. 2001). The lack (or
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`existence) of a control group makes the survey results no less (or more) reliable in this instance
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`because there is no need for a control grouphere.
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`The Court disagrees with the R&R’s conclusion that, because the parties’ logos have only
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`coexisted for several months, the lack of actual confusion is “less salient” or even “irrelevant”
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`when determining whetherthere is a likelihood of confusion. Dkt. 57 at 45. To the contrary, while
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`the logos themselves only coexisted for a short period of time, the brands and their products have
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`existed for years - Home Chefsince 2013 and Grubhubsince 2004. See Borinquen Biscuit Corp.
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`v. M.V. Trading Corp., 443 F.3d 112, 121 (1* Cir. 2006) (attaching substantial weight to a
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`trademark holder’s failure to prove actual confusion only in instances in which the relevant
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`products have coexisted on the market for a long period of time) (emphasis added); Aktiebolaget
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`Electrolux v. Armatron Int’l, Inc., 999 F.2d 1, 4 (1% Cir. 1993) (finding lack of evidenceof actual
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`confusion significant because products had coexisted in the same market for roughly six years).
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`Home Chef’s products and Grubhub’s services have coexisted for going-on-nine years and the
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`competing logos have coexisted for nearly a year, yet there is no substantial evidence ofactual
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`confusion. Dkt. #46-4 at 916. For these reasons, the Court sustains Grubhub’s first objection and
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`affords the survey evidence its due weight in assessing the likelihood of confusion.
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`ii.
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`Objection 2 —Improper Reliance on a Non-Final USPTO Decision.
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`Home Chef asserts the marks in question are “virtually identical,” both comprised of a
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`single fork and a single knife in the same positioning and orientation within a house design. Dkt.
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`18 at 12. The R&R concludes that the parties’ respective marks share common elements and that
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`the minorstylistic differences are of far less significance and do not defeat the similarity created
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`by the marks’ commonelements. Dkt. 57 at 22. In coming to this conclusion, Home Chefand the
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`R&Rrely, at least in part, on the USPTO’s findings that the marks are confusingly similar. Dkt.
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`18-8, Ex. 11. Forits part, Grubhub objects to the R&R’s reliance upon a non-final USPTO decision
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`that considered the JET House Mark (not the Grubhub House Logo), on an evidentiary record
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`different from the record before this Court. Dkt. 72 at 2, 9-11. Home Chef and the USPTO’s
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`“Nonfinal Office Action” both compare the JET House Mark absent any accompanying context or
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`brand name with the HC Home Mark and the Home Chef Home Logo. But Grubhub doesnot use
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`the JET House Mark independently. Thus, any findings by the USPTO examiner are devoid of
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`appropriate marketplace context and consider different evidence than what is before this Court,
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`including the survey evidence, and therefore are entitled to little, if any, deference under these
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`circumstances, See Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc., 856 F.3d 416,
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`426-27, 433 (6th Cir. 2017). That is not to say, of course, that a district court cannot look to the
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`USPTOopinion to inform its conclusions on trademark analysis, but rather thatit is inappropriate
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`here. Id. The Court sustains Grubhub’s objection and agrees that reliance on the USPTO’s initial
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`refusal of Grubhub’s application to register the JET House Mark to assess the likelihood of
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`confusion is erroneous. R&R at 22-24, 46-47,
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`iii,
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`Objection 3 — Erroneous Disregard of Inclusion of Brand Names,
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`Grubhub asserts that the JET House Logo is always accompanied by the brand name
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`“Grubhub.” Dkt. 72 at 1. Home Chefclaimsthis is untrue. Dkt. 73 at 3. There is no evidence before
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`the Court that Grubhub has used the JET House Mark absent the brand names “Grubhub”or
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`“Seamless” within the United States. Also, the Seamless brand and logo are being phased out, and
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`so consumers will not encounter the Seamless House Logo. Dkt. 1 420; Dkt. 56 at 9:14-16. Thus,
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`the Grubhub House Logo, not the JET House Mark,is the true “accused mark.”
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`Grubhubasserts that any confusion that might be created by the similarity between the HC
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`Home Markand the JET House Markis neutralized because only the Grubhub House Logois used
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`and the use of the well-known “Grubhub”brand name distinguishes the Grubhub House Logo
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`from the Home Chef Home Logo. Dkt. 72 at 12. The R&R disagrees, concluding “Grubhub’s use
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`of its brand name with the JET House [Mark] does not neutralize — and may actually aggravate —
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`any confusion,” reasoning that brand names help avoid confusion only in cases where forward
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`confusion is alleged. R&R at 24-25. Grubhub’s objection regarding this conclusion is sustained;
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`nothing suggests inclusion of the distinctive “Grubhub” name aggravates confusion. It is well
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`established that prominent display of different brand names with marks reducesthe likelihood of
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`confusion, “even where .
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`.
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`. the marks are otherwise similar.” Ziebart Int’| Corp. v. After Mkt.
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`Assocs., 802 F.2d 220, 227 (7th Cir. 1986). Use of brand marksis “more likely to mitigate” reverse
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`confusion than exacerbate confusion where, as here, both parties have well-established, highly-
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`recognizable brand marks. Allstate Ins. Co. v. Kia Motors Am., Inc., CV 16-6108, 2017 WL
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`6550669, at *11 (C.D. Cal. Dec. 22, 2017), aff'd, 784 Fed. Appx. 507 (9th Cir. 2019), No evidence
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`suggests that
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`inclusion of the name “Grubhub” aggravates, rather than alleviates, potential
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`confusion. The R&R’s conclusion to the contrary is unfounded.
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`iv.
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`Objection 4— Erroneous Reliance on Evidence of Actual Confusion.
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`HomeChefoffers two instances which it claims are evidence of actual confusion. First,
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`on September 8, 2021, a Home Chef customer sent Home Chef’s Facebook account a message
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`which read: “Did you and Grub Hub mergeor come to somesort of mutual deal, because I had to
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`take a double take today when my Grub hub app updated”(sic). Dkt. 57 at 36. Second, a Twitter
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`user posted on August 25, 2021, “so uh why did grubhub maketheir app icon look like a stylized
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`orange version of homechef...? Even the utensils look exactly the same”(sic). Dkt. 57 at 37.
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`Home Chefis not required to present proof of actual confusion to meet its burden or to
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`otherwise prove that a likelihood of confusion exists. CAE, Inc. v. Clean Air Engineering, Inc.,
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`267 F.3d 660, 685-86 (7th Cir. 2001). While situations where consumers raise questions about
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`whether a senior user and a junior user are affiliated after viewing their respective marks are
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`
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`afforded some weight in assessing actual confusion, that weight is minimal. CAE, Inc., 267 F.3d
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`at 686 (noting that the “one instance of actual confusion in the record” occurred when one of the
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`plaintiffs suppliers asked whether there was a connection between the defendant andthe plaintiffs
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`subsidiary, but that instance was “not entitled to great weight’); Unity Health Plans Ins. Co. v.
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`Iowa Health Sys., 995 F. Supp. 2d 874, 894 (W.D. Wis. 2014) (finding that a call where consumer
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`asked “whether Unity Health and UnityPointare affiliated in some way” constituted “somewhat
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`more persuasive” evidence of actual confusion than calls which “the court discount[ed] entirely.”)
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`The instances which Home Chefcites as evidence of actual confusionare,at best, situations
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`where consumers raise questions about whethera senior user and a junioruserare affiliated. On
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`their face, however, the consumers in these instances show they recognize a distinction between
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`Grubhub and Home Chef. Comparison is not confusion, and these posts only compare the marks.
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`That these are the only two incidents alleged of actual confusion after nearly a year of coexistence
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`and millions of customers being exposed to both companies’ logos weighs against a finding of a
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`likelihood of confusion. This is compoundedbythe fact that Home Chefoffers no survey evidence
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`of actual confusion. Courts have recognized that, in the absence of proof of actual instances of
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`confusion,
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`it can be difficult to prove likelihood of confusion without survey evidence. See,
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`e.g., Hubbard Feeds,Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 603 (8th Cir. 1999) (the
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`plaintiffs “failure to present evidence of consumer confusion owingto [the defendant’s] allegedly
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`infringing conductis telling.”) For these reasons, the Court sustains Grubhub’s objection that the
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`R&Rerroneously credits as evidence of actual confusion the two anonymoussocial media posts.
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`The social media posts offer minimal evidence of actual confusion and are only “somewhat more
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`persuasive” than no evidenceat all. The absence of any other evidence of confusion, as well as
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`survey evidenceto the contrary, further diminishes the posts’ probative value.
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`b. Preliminary Injunction.
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`Having sustained Grubhub’s objections, the Court now considers whether a preliminary
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`injunction is warranted. A preliminary injunctionis a drastic remedy whichis “never to be indulged
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`in except in a case clearly demandingit.” Barbecue Marx,Inc. v. 551 Ogden,Inc., 235 F.3d 1041,
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`1044 (7th Cir. 2000) (cleaned up). To decide whethera preliminary injunction is warranted, courts
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`engage in a two-step inquiry involving a threshold phase and a balancing phase. See, e.g. Vendavo
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`Inc. v. Long, 397 F. Supp. 3d 1115, 1128 (N.D.Il. 2019). First, Home Chef mustsatisfy its burden
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`first at the “threshold phase”by establishing: (1) it is likely to succeed on the merits; (2) traditional
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`legal remedies would be inadequate; and (3) it will suffer irreparable harm absent a preliminary
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`injunction. Life Spine, Inc. v. Aegis Spine, Inc., 8 F.4th 531, 539 (7th Cir. 2021). Then, if Home
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`Chef makes this showing, the court balances the harm of denying an injunction to the plaintiff
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`against the harm to the defendant of granting one. Id. The ultimate decision in weighing and
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`balancing these factors requires a high degree of discretion on the part of the district judge. Storck
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`USA, L.P. v. Farley Candy Co., 14 F.3d 311, 314 (7th Cir.1994). The Court has expressed that
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`“Ta] preliminary injunction is an extraordinary remedy and should only be granted in a case where
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`the movanthasclearly carried his burden of persuasionas to all the prerequisites.” Heinz v. Frank
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`Lloyd Wright Found., 762 F. Supp. 804, 806 (N.D.I1I.1991) (Norgle, J.). Here, Home Chef has
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`not carried its burden of persuasion as to the prerequisite that it is likely to succeed on the merits,
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`and so the Court exercisesits discretion to deny the extraordinary relief of a preliminary injunction.
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`Regardingthe likelihood of success on the merits, the moving party “need not show by a
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`preponderanceofthe evidencethat [it] will win [its] suit.” Protect Our Parks, Inc. v. Buttigieg, 10
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`F.4th 758, 763 (7th Cir. 2021). Nonetheless, “the mere possibility of success is not enough” and
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`the movant must instead make a “strong” showing on the merits. Id. To establish trademark
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`infringement under the Lanham Act, Home Chef must establish that: (1) it owns a valid,
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`protectable trademark; and (2) there is a likelihood of confusion as to the origin of the defendant’s
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`product. Ty, Inc. v. Jones Grp. Inc., 237 F.3d 891, 897 (7th Cir. 2001). Here, there is no dispute
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`that Home Chef ownsa valid, protectable trademark. “The linchpin of both common law and
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`federal statutory trademark infringement claims is whether consumers in the relevant market
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`confuse the alleged infringer’s mark with the complainant’s mark.” AHP Subsidiary Holding Co.
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`vy. Staurt Hale Co., 1 F.3d 611, 615 (7th Cir.1993). Thus, the inquiry is whether consumersin the
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`relevant market confuse the Grubhub House Logowith either the HC Home Markor the Home
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`Chef Home Logo;the answeris that it does not appear so.
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`The Seventh Circuit looks to seven factors when evaluating the potential for consumer
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`confusion:
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`(1) the similarity between the marks in appearance and suggestion;
`(2) the similarity of the products;
`(3) the area and mannerof concurrent use;
`(4) the degree andcare likely to be exercised by consumers;
`(5) the strength of the plaintiff's mark;
`(6) any actual confusion; and
`(7) the intent of the defendant to “palm off’ his product as that of another.
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`Autozone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008). While no single factoris dispositive,
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`the three most important factors are “the similarity of the marks, the intent of the defendant, and
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`evidence of actual confusion.” Eli Lilly & Co. v. Nat. Answers,Inc., 233 F.3d 456, 462 (7th Cir.
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`2000). Here, these most important factors — similarity, intent, and actual confusion — all favor
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`Grubhub, and therefore, Home Chef has not met its burden of making a strong showing of a
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`likelihood of success on the merits.”
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`i. The Similarity Between the Marks in Appearance and Suggestion.
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`In an infringement action, a comparison of the marksat issue should be made “in light of
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`what happens in the marketplace, and not merely by looking at the two marks side-by-side.”
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`AutoZone, 543 F.3d at 931. The test is not whether the public would confuse the marks, but
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`whether the viewer of an accused mark would belikely to associate the product or service with
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`2 The Court does not presently consider the remaining factors because Grubhub did not specifically object to the
`R&R’s analysis of those factors, and it does not appear that the R&R’s analysis of those factors is clear error.
`Moreover, that analysis would not change the Court’s conclusion that Home Chef has not met its burden of showing
`a strong likelihood of success on the merits.
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`which it is connected with the source of products or services with which an earlier mark is
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`connected, ie. whether a viewer of the Grubhub House Logo would belikely to associate
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`Grubhub’s services with Home Chef's products, Id.
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`The Court relies not on the USPTO’s determination, but on its own examination of the
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`marksin question. Similarities between the marks are limited to a single fork and a single knife in
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`the same positioning and orientation within a house or homedesign. Differences include the shape
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`of the design — in the HC Home Mark,the design is a pentagon more resemblant of a baseball
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`homeplate than a house with eaves and a chimney,as is the case in the JET House Mark.Also,
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`the HC Home Mark utilizes straight lines with pointed edges where the JET House Mark has
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`rounded, cartoon-like edges. Finally, the knife and fork are recessed in the JET House Mark where
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`they are integrated with the edges in the HC HomeMark. Thesedifferences are significant enough
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`to differentiate the JET House Mark from the HC Home Mark. The Seventh Circuit adheresto the
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`rule that “if one word or feature of a composite trademarkis the salient portion of the mark, it may
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`be given greater weight than the surrounding elements.” Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891,
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`898 (7th Cir. 2001). When the JET House Mark is combined with the brand names “Grubhub”or
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`“Seamless,” the brand names become the moresalient portion of the logo,further differentiating
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`the Grubhub House Logo from the HC Home Mark and the Home Chef Home Logo.
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`Grubhub maintainsthat its brand names always accompany the JET House Mark. Grubhub
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`objects to the R&R’s discounting of the significance of this layout of the Grubhub House Logo.
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`As noted above, the Court sustains that objection. The JET House Mark is but one portion of the
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`Grubhub House Logo, whichis the true “accused mark.” Thus, while the HC Home Mark mayat
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`times stand alone, there is nothing to indicate that whenit does, it will be associated with Grubhub,
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`since the JET House Mark never stands alone. While the JET House Mark shares similar features
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`with the HC Home Mark,it is the less salient and obvious portion of the Grubhub House Logo.
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`Thus, there is no indication that a viewer of the Grubhub House Logo would belikely to associate
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`Grubhub’s services with Home Chefor its products. The prominent display of different brand
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`names on products otherwise containing similar marks reduces the likelihood of confusion. Ziebart
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`Int’l Corp. v. After Mkt. Assocs., 802 F.2d 220, 227 (7th Cir. 1986); See also Ye Old Tavern
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`Cheese Products, Inc. v. Planters Peanuts Division, 261 F.Supp. 200, 206 (N.D. Ill. 1966) (in some
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`circumstances, “where the brand nameis prominently stressed in the label, there is not likely to be
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`any confusion as to the source, which is the essence of trademark infringement”), aff'd mem., 394
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`F.2d 833 (7" Cir. 1967) (per curiam). This factor weighs in Grubhub’s favorgiven that Grubhub’s
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`use of its brand names with the JET House Mark minimizes any similarity between, and any
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`potential confusion of, the competing marks.
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`ii, The Intent of Grubhub to “Palm Off” Its Product as That of Another.
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`Grubhubasserts that it adopted the Grubhub House Logoin goodfaith to align its branding
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`with the branding of its new parent company, which began using the JET House Logo overseasin
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`2014, and thatit had no intent to pass off its services as originating from Home Chef. (Dkt. 46 at
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`23). Home Chef does not dispute this. Instead, Home Chefasserts that Grubhub ignoredits rights
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`by using the JET House Logoafter the USPTO rejected JET’s attemptto register the mark.
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`When evaluating whether a defendant acted in good or bad faith when adopting a mark,
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`courts consider whetherthe alleged infringeris trying to steal “sales from a competitor by making
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`consumers think they are dealing with that competitor, when actually they are buying from the
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`passer off.” Uncommonv. Spigen,Inc., 305 F. Supp. 3d 825, 863 (N.D. Ill. 2018). Since passing
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`off is a type of fraud, the movant must show someevidence of the defendant’s bad faith, as “the
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`mere similarity of names”or “copying”are insufficient to satisfy bad intent. Id. (internal citations
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`omitted). A defendant’s use of its brand name to promote thatit is the source ofits services or a
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`“clearly stated designation of origin” weigh against a finding of an intent to palm off. Id. In a
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`forward confusion case, the junior user’s intent is relevant to the issue of likelihood of confusion
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`if the junior user intended to palm off its products as those of the senior user. Sands, 978 F.2d at
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`961. In a reverse confusion case, where the junior user typically has no desire to capitalize on the
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`senior user’s good will, courts consider whether “the more well-known junior user ignored the
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`senior user’s rights” or otherwise “culpably disregarded the risk of reverse confusion.” Imperial
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`Toy Corp. v. Ty, Inc., No. 97 C 8895, 1998 WL 601875, at *6 (N.D. Il. Sept. 9, 1998).
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`There is no evidence Grubhubintended to capitalize on Home Chef’s good will or to palm-
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`off its products as Home Chef’s. In fact, JET began using the JET House Markas early as June
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`2014, at or around the same time HomeChefpublicized the HC Home Mark. Dkt. #46-5 96; Dkt.
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`#18-1 919. Thus, beyond the USPTO report (whichis entitled to little, if any, weight because it
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`only compared the JET House Mark with the HC Home Mark),there is little evidence Grubhub
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`ignored Home Chef's rights by utilizing the Grubhub House Logo, especially where JET began
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`using that mark internationally at or around the time Home Chef began its use of the HC Home
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`Mark. No evidence suggests Grubhub culpably disregarded the risk of reverse confusion. As such,
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`this factor weighs in Grubhub’s favor whether under a forward or reverse confusion theory.
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`iii. Evidence of Any Actual Confusion.
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`The Court has examinedthis factor in its discussion of Grubhub’s objections. Toreiterate,
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`the social media posts which Home Chef offers as evidence of actual confusion are oflittle
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`probative value in establishing whether there is confusion between the Grubhub House Logo and
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`the HC Home Mark or the Home Chef HomeLogo. Fur