Chicago Court: Yeah, Billy Goat Tavern Is Probably Going To Lose Trademark Case, But It Can Go Forward Anyway

from the baaaaaaaaad dept

Earlier this year, we discussed a trademark lawsuit brought by the famous Billy Goat Tavern in Chicago against a chip company in Missouri called the Billy Goat Chip Co. At issue was the tavern's claim that the chip company's name and logos infringed on its trademarks. Interestingly, Billy Goat Chip Co. countersued with seemingly important information, including that it had been operating for a decade, had trademarks for its business for a decade, and that its branding differences were such that the potential for public confusion didn't exist. The Billy Goat Tavern, on the other hand, only had trademarks for its name for the tavern industry and didn't begin selling packaged food until 2017, at which time the tavern applied for marks in that industry as well.

Honestly, the whole thing seems fairly cut and dry. Different markets, different products, and the very real potential that the chip company could get the tavern's trademarks cancelled based on its own first use. Yet, despite the Chicago judge presiding over the case essentially agreeing when ruling on Billy Goat Chip's motion to dismiss, the court is allowing all of this to go trial.

The main argument was that the tavern’s Lanham Act claims should be dismissed because owners should’ve known about the chips in 2010, and expressly knew the chips were on the market in Chicago in 2014, yet didn’t initiate a lawsuit until 2017.

“In this case, there are too many unknown and disputed facts that preclude judgment,” Dow wrote, explaining that the Lanham Act itself has no statutory limitations, but courts in the same circuit routinely apply the three-year limits enumerated in the Illinois Consumer Fraud Act. He said the proceedings thus far give the appearance the chip company is correct about the tavern’s constructive notice in 2010 and actual notice in 2014, but he “cannot determine from the pleadings and exhibits whether Plaintiff’s delay in filing suit was inexcusable or whether Defendant would be prejudiced by allowing plaintiff to bring its claims now.”

It's always important to remember for motions to dismiss that the court is generally supposed to interpret the facts of the case in the most favorable light of the plaintiffs. That appears to be the whole story here, with Dow essentially saying that, yeah, the chip company is probably right, but procedurally the judge is just going to let this be decided at trial. I understand why courts tend towards this leniency, but I also understand the judges make a habit of hinting to plaintiffs what the proper course of action is regardless of its ruling.

In this case, Dow appears to be sending Billy Goat Tavern a fairly clear message: you probably don't actually want to bring this trial to its conclusion. While that message is made on the legal merits, it sure seems to make all kinds of general business sense for the tavern to pack this up and go home, as well. There is no real competition or confusion in any of this. And, if Billy Goat Tavern wants to keep the trademarks it has, a ruling in this trial could present a threat to lose them entirely.


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  • identicon
    Anonymous Coward, 13 Aug 2018 @ 8:20pm

    I've given my younger brother a similar warning

    My younger brother never seemed to understand that actual skill at grappling determines the winner in 99/100 instances yet would continually attack with a scream and leap. I honestly think he may be a bit Kzin. Maybe the Billy Goat Tavern should take a hint and withdraw their lawsuit posthaste. If they choose not too, they too will be the laughing stock of the trademark industry.

    reply to this | link to this | view in chronology ]

  • icon
    wshuff (profile), 14 Aug 2018 @ 5:24am

    Billy Goat Chips will get another shot with a motion for summary judgment after discovery. The standard is a bit different so the judge may look more favorably on the arguments at that point.

    reply to this | link to this | view in chronology ]

  • identicon
    Jim, 14 Aug 2018 @ 5:40am

    Erm?

    I wonder if Billy goat industries would be interested in some other Billy goat taking their name? Nah.

    reply to this | link to this | view in chronology ]

  • And the real moral of the story is if you are starting an establishment that serves food and is considering a name for it, ALWAYS makes sure to check if you can trademark it not just for the restaurant services, but also for the most important food items you plan to serve. This could save you from a situation that Billy Goat Tavern has just found themselves in. The last thing you want is to rely on your legal team being able to prove the relatedness of goods and services between your restaurant and someone else's off-the-shelf food. Much better if your trademark covers both explicitly.

    Andrei Mincov

    Founder and CEO of Trademark Factory® / https://trademarkfactory.com, the only firm in the world that offers trademarking services with a predictable, guaranteed result, for a predictable, guaranteed budget. We can help you register your trademarks with a free comprehensive trademark search, for a single all-inclusive flat fee, with a 100% money-back guarantee.

    reply to this | link to this | view in chronology ]


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