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.

Filed Under: billy goat, trademark
Companies: billy goat chip co., billy goat tavern

Famous Billy Goat Tavern Initiates Risky Trademark Dispute With Billy Goat Chip Co.

from the here-comes-the-blowback dept

Missing from far too many of the stories we post on trademark bullies is anything amounting to blowback. While it happens on occasion, the reason that trademark bullying works is due to the costs for any sort of defense, nevermind the cost that would be required to actually go on the offense against a bully. Still, that isn't to say that when a trademark bully picks a fight that it cannot sometimes lead to a backfire.

That appears to be the risk Chicago's famous Billy Goat Tavern now faces after it sued Billy Goat Chip Co., given the countersuit and factual response made by the chip company. Billy Goat Tavern filed suit in 2017, alleging that the St. Louis potato chip maker was infringing on its trademark with its name and logo, which uses the silhouette of a rearing billy goat. For what it's worth, the tavern's logo is completely different and features a fully detailed cartoon head of a goat, not a black outline like the chip company.

But based on the information in the countersuit, it seems there is much more factual information the tavern ought to have considered before filing its initial lawsuit.

Attorneys representing the Billy Goat Chip Co. filed a counterclaim this month arguing the chip maker was actually the first to use the “Billy Goat” mark in connection with packaged retail food and beverage products.

The suit stated Billy Goat Tavern’s trademark was limited to only “tavern and restaurant services” and was later applied to packaged retail food and beverage products when the tavern started selling items such as frozen burger patties and canned beer through third-party vendors in 2017.

Oops. While the Billy Goat is indeed famous, it is famous for being a tavern. It did not even sell any retail packaged foodstuffs until the past year or so and never had a trademark for those market designations until the same time frame. Billy Goat Chip Co., on the other hand, has been selling its goods for a decade and has the trademark registration to match. In its countersuit, the chip company blasts Billy Goat Tavern for being the trademark bully it is.

To compensate for its tardiness in entering the retail food/beverage products market, Billy Goat IP has undertaken a campaign of deceptive trade practices, false advertising, misusing trademarks, misusing registration symbols, and misusing the Billy Goat Tavern Marks … in an effort to improperly injure and damage Billy Goat Chip Co..

The upshot being that Billy Goat Chips Co. is asking not only for the trademark lawsuit to be dismissed, but is also asking for damages for the tavern's false advertising and deceptive trade practices. Oh, and it is also asking the court to order the tavern to cease using the Billy Goat name for any packaged foods, the exact request the tavern initially sued over.

If the chip company wins, it would represent as clean a backfire from trademark bullying as I can remember. It would also be a helpful warning shot to other trademark bullies about what can happen.

Filed Under: billy goat, likelihood of confusion, trademark
Companies: billy goat chip company, billy goat tavern