80 F.4th 835
7th Cir.2023Background
- Home Chef (merged with Kroger) uses an HC house-shaped mark and a Home Chef house logo (federally registered); has sold widely and spent >$450M on marketing.
- JET (parent of Grubhub after a 2021 acquisition) owns a JET house-design mark; Grubhub began using a Grubhub House Logo that combines the JET house design with the prominent GRUBHUB word mark.
- JET filed a U.S. trademark application for the house mark; the USPTO issued a non-final office action finding likely confusion with Home Chef’s marks; JET later abandoned the application.
- Grubhub sued for a declaratory judgment that its logo does not infringe; Home Chef moved for a preliminary injunction; a magistrate recommended granting the injunction but the district court, after de novo review of objections, denied it.
- The district court concluded the accused mark is the Grubhub House Logo (house design always used with GRUBHUB in the U.S.) and found Home Chef failed to show a likelihood of consumer confusion sufficient to obtain a preliminary injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Which mark is accused? | Home Chef treats the standalone JET house mark as the accused mark. | Grubhub: in the U.S. the house mark is always used with the GRUBHUB word mark, so the accused mark is the Grubhub House Logo. | Court: Accused mark is the Grubhub House Logo; district court did not clearly err. |
| Likelihood of confusion (reverse confusion theory) | Home Chef: Grubhub’s national use and the visual similarity of the house designs will cause consumers to associate Home Chef’s HC mark with Grubhub (reverse confusion). | Grubhub: prominent GRUBHUB word mark in the combined logo reduces confusion; marketplace use and strong Home Chef branding weigh against reverse confusion. | Court: On this record, district court reasonably found insufficient evidence of likelihood of confusion; review for clear error yields affirmance. |
| Weight of USPTO non‑final office action | Home Chef: the USPTO examiner found the marks highly/confusingly similar—this supports likelihood of confusion. | Grubhub: the office action was a preliminary, non‑final determination and JET abandoned the application, so it carries limited weight. | Court: District court properly gave little weight to the non‑final PTO action; that preliminary finding is not dispositive here. |
| Evidence of actual confusion / surveys | Home Chef: social‑media posts and a customer message show confusion; absence of a Home Chef survey should not be held against it. | Grubhub: two Eveready‑style surveys of Home Chef customers showed no identification of Grubhub and rebut actual confusion. | Court: District court plausibly credited Grubhub’s surveys and treated the isolated social‑media/customer messages as minimal; no clear error. |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992) (describing trademark law’s purposes: protecting consumers and trademark owners)
- Quaker Oats Co. v. General Mills, 978 F.2d 947 (7th Cir. 1992) (articulating reverse‑confusion theory and its application)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (outlining the key likelihood‑of‑confusion factors and their relative importance)
- Rust Env’t & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210 (7th Cir. 1997) (standard of review for factual findings: clear error)
- Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891 (7th Cir. 2001) (discussing mark comparison and the salience of prominent elements)
- Ziebart Int’l Corp. v. After Mkt. Assocs., Inc., 802 F.2d 220 (7th Cir. 1986) (prominent display of different housemarks reduces likelihood of confusion)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir. 2001) (actual confusion evidence is entitled to substantial weight but isolated instances may be de minimis)
- Union Carbide Corp. v. Ever‑Ready Inc., 531 F.2d 366 (7th Cir. 1976) (survey methodology context; Eveready survey referenced for measuring consumer association)