On Wednesday, the Northern District of Illinois issued an opinion and order sustaining the plaintiffs’ objections to the Report and Recommendation of the Magistrate Judge and denying the defendants’ motion for preliminary injunction in Grubhub Inc. v. The Kroger Co.
According to the plaintiffs’ amended complaint, the plaintiffs, Grubhub Inc. and Takeaway.com Central Core B.V., seek a declaration from the court stating that the well known Grubhub house trademark combined with a house/cutlery logo that its new parent company, Takeaway, has used consistently for more than seven years does not infringe upon the defendants’ trademark.
The complaint states that on June 15, 2021, Takeaway completed its acquisition of Grubhub Inc. and subsequently combined the unique but equally strong brand identities of Takeaway and Grubhub Inc. into a single trademark for use in the United States. The complaint states that the combination of the two brand identities into a single trademark maintains the overall look and feel of the prior Grubhub mark and is unlikely to cause consumer confusion with another business.
However, the complaint states that two months after Grubhub launched its new branding, the defendants, The Kroger Co. and Relish Labs LLC, came forward with threats of trademark infringement against their brand Home Chef. The complaint states that the plaintiffs attempted to find an amicable solution to no avail and therefore filed the present suit for declaratory relief.
The court’s opinion states that the case was later referred to the Magistrate Judge who issued a Report and Recommendation specifically recommending the court grant the defendants’ preliminary injunction motion preventing the plaintiffs’ use of their new trademark. In response to the Report and Recommendation, the plaintiffs filed objections.
In the court’s opinion, it states that after reviewing the Report and Recommendation and the plaintiffs’ objections, it is not persuaded that the defendants met its burden establishing a need for the preliminary injunction and therefore rejected the Report and Recommendation and denied the preliminary injunction. The court held that the Report and Recommendation erroneously disregarded consumer perception surveys and the inclusion of brand names in the marks and improperly relied on a non-final USPTO decision and unfounded evidence of actual confusion.
After sustaining the plaintiffs’ objections, the court reevaluated the need for a preliminary injunction and found that the burden establishing the need for a preliminary injunction was not met because the most important factors of its likelihood of confusion analysis, similarity, intent and actual confusion, weighed in favor of the plaintiffs. Therefore, the court found that a preliminary injunction was inappropriate and rejected the Report and Recommendation and denied the preliminary injunction.
The plaintiffs are represented by Quinn Emanuel Urquhart & Sullivan, LLP and Flaster Greenberg, and the defendants are represented by Pillsbury Winthrop Shaw Pittman and Jenner & Block.
