Home Chef and Grubhub are battling over their logos, with Home Chef trying to show Grubhub’s trademark application for and use of its new logo should be toast. Home Chef won the first round, obtaining a preliminary injunction against Grubhub, but Grubhub won the second round. Last week Grubhub was handed another savory victory.
Home Chef has the house mark alone registered with the USPTO (Registration Nos. 5241586, 5294674, and 5786784). Use of those marks in commerce began in 2014. Color is not a feature of the marks as registered.
Takeaway.com Central Core B.V. (aka Just Eat and Takeaways.com, “JET”) has been using the orange house with fork and knife logo outside the US since June 2014. When it purchased Grubhub in 2020, Grubhub adopted the JET logo. JET filed a trademark application (Serial No. 79299249) for that logo with the USPTO in July 2020. Color was not a feature in the application, which was abandoned on August 9, 2021.
The USPTO rejected that application based on a likelihood of confusion with the Home Chef marks. The examiner found both marks are the silhouette of a house with silhouettes of a fork and knife within the house, with the fork on the left, the knife on the right, and the fork and knife facing in the same direction. Goods and services for both included meal delivery.
A magistrate court found these logos similar enough that Home Chef would likely win in litigation regarding likelihood of confusion and granted Home Chef a preliminary injunction against Grubhub (Grubhub Inc. v. Kroger Co., 21 CV 5312, 2022 WL 1644233 (N.D. Ill. Apr. 8, 2022)).
The district court disagreed, finding some evidence was not improperly regarded and some given too much weight (Grubhub Inc. v. Kroger Co., 1:21-CV-05312, 2022 WL 2774986 (N.D. Ill. May 25, 2022)). Finding Home Chef hadn’t met the burden of a strong showing of a likelihood of success on the merits, the district court denied the preliminary injunction.
The 7th Circuit Court of Appeals just ruled the district court made no clear errors in their decision and affirmed the court’s decision not to grant the preliminary injunction (Grubhub Inc. v. Relish Labs LLC, 22-1950, 2023 WL 5919301 (7th Cir. Sept. 12, 2023).This is a good example of how subjective trademark law can be. Confusion is often in the eye of the beholder, and decent arguments can be made for either position. Evidence can be generated to support both sides. Given the money invested in these brands, it’s likely this case will continue, and the likelihood of confusion will ultimately be decided on the merits.
I’m not so sure the average food delivery customer won’t be confused by the similarity of the marks if used without the words. The nuances of the chimney, eaves, etc. aren’t what catches the eye – it’s the overall idea of a silhouette of a house with a fork and knife (which look very similar) inside. Given the regular mergers and takeovers in the world of food, and given how both businesses have broadened their services beyond their original lanes, it isn’t hard to imagine people could think one of the businesses became a part of the other while keeping the names separate.
While it might seem a reasonable solution to require Grubhub to always use the brand name with the logo to help avoid confusion, will that really happen when marketing services get involved, and how does that work with social media profile images, favicons, etc.? Not great. Take a look at Grubhub’s Twitter/X and Instagram profiles to see how bad that looks – the mark and words are largely illegible. In a mobile world, that’s no small issue. Especially given how these services are used mostly by people on their phones or tablets, the impression the marks give when small like that shouldn’t be discounted.
How do you think the matter should be decided? Is the average food delivery customer likely to confuse the brands based on these marks? What if the marks are used without the brand names? Care to join me in some delivery while we chew it over?
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