IP Law Daily, TRADEMARK—N.D. Ill.: Jury must decide questions of validity and infringement of ‘Restaurantware’ mark, (Mar 31, 2023)

By Ursula Furi-Perry, J.D., MBA

However, infringement claims based on keyword advertising were dismissed.

In a case concerning trademark infringement between competitors in the restaurant services industry, the federal district court in Chicago held that there were enough material, factual disputes concerning the validity of the plaintiff’s registered “RESTAURANTWARE” marks to survive a summary judgment motion, as both parties provided substantial evidence in their respective arguments about whether the mark was descriptive with secondary meaning. The defendants were granted summary judgment on the plaintiff’s infringement claim to the extent it depended on liability arising from search engine keyword advertising. The court also granted summary judgment on the plaintiff’s Illinois state law claims because the allegedly infringing conduct arose from actions in Pennsylvania (RBG Plastic, LLC v. Webstaurant Store, March 29, 2023, Chang, E.).

Background. The plaintiff, RBG Plastic (“RBG”) provides a variety of goods and services to customers in the food and hospitality industry under the brand name “Restaurantware.” Webstaurant, a defendant, sells various products for the restaurant industry. Clark Associates, Inc. (“Clark”) is another defendant that sources products for Webstaurant but does not sell products to consumers or sell any products online, according to Webstaurant. RBG disputed that fact, claiming that “The Webstaurant Store” is a fictitious corporate name and is owned by Clark.

RBG has invested significant time and resources in expanding its online retail store, Restaurantware.com, including significant advertising. Dating back to 2017, RBG obtained three trademark registrations in connection with the mark RESTAURANTWARE as to cutlery goods, other food service items, and an online store. According to RBG, no other company in the food or hospitality industry uses the term “restaurantware” nor can the term be found in the dictionary. Webstaurant disputed that fact, providing evidence of a survey conducted by its expert that a majority of respondents recognized the term as a common word. Webstaurant also argued that RBG’s use of “restaurantware” “was not substantially exclusive between 2012 and 2017, and disputed that it was a direct competitor of the plaintiff.

RBG sent the defendants a cease-and-desist letter concerning “all use of RESTAURANTWARE in its online advertising campaigns and for disgorgement of all profits.” On the same day, it filed suit against the defendants, claiming trademark infringement, along with state claims under the Uniform Deceptive Trade Practices Act claim and the Illinois Consumer Fraud and Deceptive Trade Practices Act. RBG also alleged that there have been instances of actual confusion between customers of RBG and those of the defendants.

Before the court was both sides’ motions for summary judgment under Rule 56 of the Federal Rules of Civil Procedure.

Trademark infringement. First, the court denied RBG’s motion for summary judgment, in which the plaintiff asked the court to render judgment on the validity of its three trademarks. There were enough material, factual disputes concerning the validity of the “RESTAURANTWARE” mark when the evidence is viewed in the light most favorable to the non-moving party, the court held, noting that both parties provided substantial evidence in their arguments about whether the marks were descriptive with secondary meaning.

Regarding infringement, the court granted Webstaurant’s motion for summary judgment as to the keyword purchase of “RESTAURANTWARE” for advertising purposes, with that theory of liability dismissed from the case. The plaintiff’s other theory of liability, regarding the use of the mark on the face of Webstaurant’s advertisements, was not addressed in either party’s summary judgment motion, and the court held that the infringement claim was not dismissed but limited to the solely remaining theory of liability.

Moreover, the court noted that the issue of Clark’s liability could not be addressed on summary judgment. The defendants argued that Clark and Webstaurant are independent companies and that Clark never used the marks at issue in this case, but the court held that there was enough to infer that Clark had sufficient control over Webstaurant’s use of the RESTAURANTWARE trademark to be held liable for infringement.

The court denied the defendants’ motion for summary judgment on damages, holding that the parties’ conflicting arguments regarding actual notice of the infringement and disgorgement of profits needed to be addressed at trial.

State law claims. The court granted summary judgment for the defendant on the claims brought under the Uniform Deceptive Trade Practices Act claim and the Illinois Consumer Fraud and Deceptive Trade Practices Act. For those claims to succeed, RBG must show that the violative transactions took place “primarily and substantially in Illinois,” and Webstaurant successfully argued that alleged infringements arose from actions in Pennsylvania.

The Case is No. 1:18-cv-05192.

Attorneys: Charles Lincoln Philbrick (Hoke LLC) for RBG Plastic, LLC d/b/a Restaurantware. James Kenneth Borcia (Tressler LLP) for The Webstaurant Store d/b/a Webstaurant.com and Clark Associates, Inc.

Companies: RBG Plastic, LLC d/b/a Restaurantware; Webstaurant Store d/b/a Webstaurant.com; Clark Associates, Inc.

Cases: Trademark TechnologyInternet IllinoisNews