805 F. Supp. 2d 503
N.D. Ill.2011Background
- BSC and A&J dispute use of the Bobak name in Banquet/Conference Center operations; A&J used the name Bobak's Signature Events at Seven Bridges after written consent in 2005.
- BSC owns registered Bobak's marks and had historically operated sausage/food business, with limited store dining; A&J operates a separate banquet facility nearby using a similar-sounding mark.
- In 2005, BSC expressly consented to A&J using Bobak's Signature Events; later, BSC demanded a trademark license and conditioned action on consent, which A&J did not sign.
- BSC hired a survey and expert to support claims of confusion; the survey had flaws, and the court found it not fully decisive but noted limitations.
- The court held that BSC acquiesced in A&J’s use, that evidence on confusion was heavily one-sided in favor of Defendants, and thus the court granted summary judgment for Defendants on Counts I–III while dismissing the related state-law claims without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether acquiescence defeats infringement liability | BSC argues continued coexistence caused confusion and consent should not bar later claims | A&J contends BSC consent was explicit and thus precludes infringement claim | Acquiescence established; unlikely confusion not required to prevail on Counts I-II for Defendants |
| Whether likelihood of confusion supports infringement/false designation claims | Bobak's marks are strong and confusing similarity with Signature Events | Differences in marks, products, and markets negate likelihood of confusion | No genuine likelihood of confusion; court grants summary judgment for Defendants on Counts I and III |
| Whether BSC proved trademark dilution given fame of Bobak's mark | Bobak's mark became famous and was dilutable | Bobak's is not sufficiently famous nationwide to be dilutable | Summary judgment for Defendants on Count II (dilution) |
| Whether tailing state-law claims should be retained given federal ruling | State-law claims dismissed without prejudice; retain jurisdiction abated |
Key Cases Cited
- Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891 (7th Cir.2001) (likelihood of confusion framework for Lanham Act)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir.2008) (seven-factor confusion analysis; none dispositive; weigh factors)
- AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611 (7th Cir.1993) (confusion factors and caution on summary judgment in trademark)
- Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir.2000) (contextual factors and proximity of markets in confusion)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.2001) (one-sided evidence may still yield partial summary judgment on confusion)
- Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169 (7th Cir.1996) (summary judgment standards in bifurcated trademark disputes)
- S. Industries, Inc. v. Canteen Corp., 29 F.Supp.2d 892 (N.D.Ill.1999) (evidence weighting in confusion analysis)
- Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909 (7th Cir.1996) (contextual factors in likelihood of confusion)