Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Joshua P. Kolar, Passing Off, Philip P. Simon, Trademark Dilution, Violation of the Indiana Uniform Deceptive Trade Practices Act
The plaintiff in Indiana’s latest trademark lawsuit owns three restaurants called Buttermilk Café in the Chicago metropolitan area, along with a federal trademark registration for BUTTERMILK CAFE (Reg. No. 5,888,702) claiming “restaurant services, in International Class 43,” with a date of first use in 2011. Notably, it is a concurrent use registration with another restaurant called Buttermilk Kitchen, based in Atlanta, Georgia.
Since at least 2019, the defendant has operated a restaurant called Buttermilk Pancake House in Munster, Indiana.
The Complaint (below) doesn’t mention any actual instances of consumer confusion. You might think if Buttermilk Café and Buttermilk Kitchen can co-exist, then surely there’s room in the marketplace for a Buttermilk Pancake House, particularly in a crowded field like restaurants, with over 1,000,000 operating restaurant locations in the U.S. However, Munster, Indiana is about 30 miles from Chicago, so proximity may be the plaintiff’s greatest concern in this situation. That’s close enough that both parties’ restaurants would inevitably show up in a map search for either restaurant. It’s close enough that consumers might think the “Pancake House” is an offshoot of the nearby “Café.” The Munster restaurant utilizes a different color and font for “Buttermilk” and “Pancake House” on their exterior signage, a marketing practice often used with a “family mark” and a new descriptive product/service name. This could arguably lead consumers to believing that there is a connection between the parties. However, other than use of a similar name, there’s no other evidence in the Complaint (e.g. similar logo, menu, interior design, color scheme, etc.) that the Munster restaurant is intentionally misrepresenting itself to be connected with the plaintiff’s restaurant.
Stay tuned for updates.
Sak Group, Inc. v. Blue Hill Hospitality, Inc.
Court Case Number: 2:23-cv-00142-PPS-JPK
File Date: April 25, 2023
Plaintiff: Sak Group, Inc.
Plaintiff Counsel: Michael E. Tolbert, Shelice R. Tolbert, Candace C. Williams of Tolbert & Tolbert, LLC
Defendant: Blue Hill Hospitality, Inc.
Cause: Federal Trademark Infringement, False Designation of Origin, Passing Off, Federal Unfair Competition, Trademark Dilution, Violation of the Indiana Uniform Deceptive Trade Practices Act, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Joshua P. Kolar