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Court Grants Preliminary Injunction in Trademark Infringement Case

By Stephanie Robinson

In Lettuce Entertain You Enterprises, Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 CV 2582, Slip Op. (N. D. Ill. 2010), Lettuce Entertain You Enterprises, Inc. (?LEYE?) obtained a preliminary injunction against Leila Sophia AR, LLC d/b/a Lettuce Mix (?Sophia?). LEYE owns a group of federally registered marks for restaurant services utilizing the word ?lettuce.? Sophia opened a restaurant named ?Lettuce Mix? several blocks away from one of LEYE?s restaurants. In March, 2009, LEYE sent a cease and desist letter to Sophia requesting that Sophia remove the sign. Sophia, through counsel, refused to remove the sign and defended its use of the name. In April, 2009, LEYE filed a complaint alleging, among other things, federal and common law infringement of LEYE?s marks. Sophia thereafter covered its ?Lettuce mix? sign with a banner that read ?Let us be? with ?Name pending?? below in a smaller font. Images of lettuce heads appeared on the banner. A preliminary injunction is an exercise of potentially very far-reaching power. To obtain a preliminary injunction, a plaintiff typically must demonstrate (1) that its case has some likelihood of success on the merits; (2) that no adequate remedy at law exists; and (3) that it will suffer irreparable harm if the injunction is not granted. The movant must show that it has a ?better than negligible? chance of success on the merits. The court will adopt a sliding scale approach and take into consideration the irreparable harm an injunction would cause the nonmoving party and any consequences to the public from denying or granting the injunction. The court determined the word ?lettuce,? as used by LEYE, was not generic because it refers to the types of services LEYE provides and that LEYE would have a better than negligible chance of showing that its group of marks is protectable. Sophia?s use of the word ?lettuce? in ?Lettuce mix? is substantially similar to LEYE?s use of ?lettuce? in its marks because both are being used in connection with providing restaurant services and because ?Lettuce mix? appropriates the salient feature of LEYE?s family of marks: the use of ?lettuce? as a pun for ?let us.? The court therefore found that the two marks are substantially similar. Further analyzing the factors, the court found that LEYE established a likelihood of success on the merits. Sophia raised a fair use defense that the court struck down. To prevail on its fair use defense, Sophia had to show (1) that it is not using Lettuce mix? as a service mark; (2) that it is using the mark in good faith merely to describe their services, and (3) that the mark is in fact descriptive of its services. The court did not find that Sophia?s use of the mark qualified as a fair use. Concluding its analysis, the court determined that LEYE had no adequate remedy at law, that the balance of the harms weighed in favor of LEYE, and that the public interest was served by enjoining Sophia?s use of the mark to prevent a likelihood of confusion among consumers. If you think someone is improperly using your brand or trademark, you should contact counsel experienced with protection of intellectual property.

Full post as published by Business and Technology Law on April 20, 2010 (boomark / email).