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In Brief: Using the same elements in a trademark doesn’t automatically create a likelihood of confusion.

Here’s What Happened:

Relish Labs and the Kroger Company create and deliver meal kits under the brand “Home Chef”. They registered the mark and several versions including fork and knife appearing within the outline of a house.

Grubhub, the online food delivery company was acquired by Netherlands based Just Eat Takeaway. Just Eat rebranded Grubhub to include a fork and knife appearing in the drawing of an orange house with a chimney.

Home Chef sent a cease and desist letter to Just Eat. Just Eat responded by filing a declaratory judgment action seeking a determination that its Grubhub trademark does not infringe on Home Chef’s trademarks.

The magistrate assigned to the case recommended to the district court that a preliminary injunction be entered against Just Eat. The district court rejected the recommendation and denied the preliminary injunction finding that Home Chef did not prove it was likely to succeed on the merits of a trademark infringement case.

Home Chef appealed to the Seventh Circuit Court of Appeals. Basically, Home Chef argued that the Grubhub logo is causing reverse confusion. Reverse confusion happens when the “senior user,” i.e., the party that used and had the trademark first, suffers harm when the junior user causes the value of the senior users trademark to diminish as a source indicator. The Seventh Circuit used four factors to determine if reverse confusion had occurred:

• The similarity of the marks. In a reverse confusion case, the word portions of a mark aren’t always considered dominant. But in this case, because the services offered by Home Chef and Grubhub are different, the district court didn’t err in finding that Home Chef failed to show similarity of the marks.
• The strength of Grubhub’s mark. Both trademarks are not well known enough for Grubhub’s new logo design was going to overwhelm Home Chef’s mark.
• Actual confusion. To prove actual confusion, Home Chef submitted an anonymous tweet featuring screenshots of the parties’ mobile app icons and a Facebook message asking if Home Chef and Grubhub had merged. The Seventh Circuit agreed with the district court that this was insufficient proof of actual confusion.
• Grubhub’s intent. The Seventh Circuit disagreed with the district court and determined that in a reverse confusion case, intent is “largely irrelevant” because the alleged infringer is not palming off or otherwise attempting to create confusion as to the source of its products or services. Therefore, this factor should not have been considered by the district court.

The Seventh Circuit affirmed the denial of a preliminary injunction.

Why You Should Know This: Reverse confusion is in the eye of the consumer. Would the consumer thing that the junior mark is from the same source as the senior mark. In this case, the two marks look very similar. But the goods are not sufficiently related. In other words, would a consumer believe that its local Kroger store was a source for delivering a meal from a local fast food restaurant? Or would a consumer looking to order a prepackaged meal using fresh ingredients expect Grubhub to deliver it?