The pizza business has deep roots in Chicago.  While pizza is originally Italian (Neopolitan), Italian-Americans, blessed with greater availability of meats and cheese than they had in Italy, took pizza to new heights.  One unique style of pizza was created in Chicago: the deep dish pizza.  Full disclosure, I love deep dish pizza but my wife, who is half Italian and speaks Italian, had decided it is not pizza but rather that is a casserole.  While that discussion is off-topic to the legal issues of this article, I wanted to throw that out there for discussion purposes.

Anyways, it turns out that Giordano's pizzeria, a local famous pizza chain with great deep dish pizza, was faced with a dilemma common to businesses throughout the world: a rival business wants to confuse your customers into thinking they are somehow affiliated or are your business.  They ride on the coattails of excellence and often ruin great reputations with less than stellar offerings.  Lets face it, stealing someone's name is a free way to get the benefits of a great trademark (consumer trust and confidence in the good/service).  This is called trademark dilution.  It is also trademark infringement.

As the Chicago Tribune reports, Giordano's sued its rival, Giordano Fresh & Crispy Pizza Co. after sending a cease and desist letter.  A cease and desist letter is often sent prior to instituting suit because it is cheaper to do this than sue but also to establish intentional infringement, which allows for trebling of damages under federal trademark law.

In their lawsuit, Giordano's notes there was actual customer confusion when customers ordered from the rival pizzeria thinking they'd be getting authentic Giordano's pies but instead were delivered substandard fare.  Their logos, according to the customer, were similar enough that he was confused.

A business can obtain a trademark in several ways.  A common law trademark is created the moment a business or person uses a mark in commerce locally.  Common law marks are less useful for enforcement because unlike federal marks, damages are not presumed, the Mark is restricted to areas where it is commercially being used, and seniority strongly governs.  

Federal marks require registration.  The Lanham Act, Section 43 of forbids any false designation of origin and states:
[a]ny person who, on or in connection with any goods or services… uses in commerce any word, term, [or] name… or any false designation of origin… which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or in commercial advertising… shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1).

To succeed on the merits of its trademark infringement claims, Giordano's must show: (1) that its Marks are valid trademarks they owned; and (2) Defendant’s use of the Infringing Mark creates a likelihood of confusion. Ty, Inc. v. Jones Group, Inc., 237 F. 3d 891, 897 (7th Cir. 2001).  “The ‘keystone’ of trademark infringement is ‘likelihood of confusion’ as to source, affiliation, connection or sponsorship of goods or services among the relevant class of customers and potential customers.” Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992).

The Seventh Circuit has applied a multi-factor test in order to evaluate whether a likelihood of confusion exists between two marks: (1) the similarity of the marks in appearance and suggestion; (2) the similarity of the products (do I need to find services here?); (3) the area and manner of concurrent use; (4) the degree of care likely to be used by consumers; (5) the strength of the plaintiff’s mark; (6) whether any actual confusion exists; and (7) the defendant’s intent to palm off its goods as those of the plaintiffs.” off its goods as those of the plaintiffs.” Ty, Inc., 237 F.3d at 897-898. 

None of these factors by itself is dispositive of a likelihood of confusion, and different factors will weigh more heavily depending on the facts and circumstances of each individual case. Id. Even though no one factor is decisive, the similarity of the marks, the intent of the defendant, and evidence of actual confusion are the “most important factors” in a likelihood of confusion case. Id.

In this case, Giordano's, from the limited information in this article, seems to be making its case for trademark infringement and dilution. The names of the pizzeria's are similar but a name alone cannot be used to exclude without more.  As indicated above, each factor is weighed, and none of them alone are dispositive.  The fact customers are confused, that Giordano's mark is so much stronger and more famous, the relative advertising budgets, the similarity of their product offers, and the fact that Defendant seems to be palming off substandard pizza's using Giordano's name all seem to neatly fit within the Du Pont factors outlined by the 7th Circuit above.  As such, this is a fascinating case of a very public trademark action by a well known local chain.

If you own or operate a business that seeks to enforce or obtain trademarks, do not hesitate to contact a trademark attorney like those at Nair Law LLC.

The Chicago Tribune reports that two brewery business partners, Isaac Showaki and Andres Araya, are engaged in litigation over a widespread dispute.  Having met 7 years ago while working for Bain Capital and consulting in Latin America for a brewer, the business partners set up a brewery in Chicago a bit less than two years.

Despite commercial success, including distribution deals with several local Chipotle franchises as well as other accolades, the business partners have a deeply personal dispute that has boiled over into the courtrooms.

Stepping in the shoes of their injured insured, Great Northern Insurance Co. filed suit against Cellar Advisors, a wine moving company hired to move a portion of a wealthy family's wine collection from Illinois to Florida in climate controlled containers.  The Chicago Tribune notes that:

The CTA approved a $5.45 million settlement for the estate of a woman who was run over by a 152 Addison bus when she was trying to remove her bicycle from the front of the bus.  The CTA approved the settlement because its bus driver was negligent when he failed to look in front of the bus for anyone, especially a passenger that had just alighted.

A Cook County jury awarded an iron worker, who fell at a jobsite and was left paralyzed and in need of 24 hour care for the rest of his life, $64 million in total damages.  The company responsible is planning an appeal but the case is a lesson to both workers and construction companies in compliance with workplace safety procedures and policies.  OSHA compliance is critical for the long term survival of both workers and companies.

No loving parent can stand by without acting when their child is harmed.  No parent should have to tolerate that.  When parents hire caregivers for their children, parents, or themselves, that caregiver is entrusted with a near sacred duty to preserve the health, dignity, and vitality of a loved one.  When that duty is breached, the harm can be tremendous in both physical pain, but also emotional turmoil.

The Chicago Tribune reports that a Colorado resident has won a $7.2 million judgment against a Central Illinois microwavable popcorn manufacturer and distributors of the product.  This product liability action resembles the litigation over mesothelioma due to asbestos from the 1960s and on.  In this case, the chemical in the fake butter in microwavable popcorn has led to a serious lung issue in one user who consumed massive quantities of the product.

Business owners need to understand how the law can protect them against competitors and insulate them from customer lawsuits.  To reinforce this lesson, consider Beef Products, Inc., a closely held South Dakota company that faced severe consequences from negative reports regarding their processed beef product.  When businesses are losing money stemming from interference with existing or future business relationships, business should contact a business attorney who can look at all of their options to remedy this threat and mitigate harm, including through litigation.

The Wall Street Journal, among others, is reporting that Beef Products Inc., , has sued ABC for defamation, tortious interference with contract (business relationship), and a state anti-food disparagement statute, among other claims.  The beef company also named Diana Sawyer, who reported on the story for ABC and microbiologist Gerald Zirnstein, who as a USDA food inspector investigating a food bacteria outbreak in 2002 toured a BPI plant and coined the term "pink slime" to describe their product.  BPI is suing these defendants for $1.20 billion, representing lost profits stemming from the alleged defamatory reporting and characterization of their product.

The Chicago Tribune is reporting that the City of Chicago has finally come to terms with the legal flaws in their school speed zone camera plan.  Illinois, thanks to a nearly 40 year legal opinion authored by the then-Illinois Attorney General will only cite a driver from exceeding a posted school speed zone if there are children present. This is a necessary element that the State must prove beyond a reasonable doubt to enforce the ticket. 

The precedent exists unbroken to this day and requires the arresting officer to testify about the presence of children during a hearing.  This is why signs throughout Illinois in school zones have smaller lettering saying "When children are present."  In other words, the school zone speed only exists when children are present and otherwise it is the default speed for that road (prior posted speed limit).

A jury awarded a University of Michigan student $4.5 million based on the actions of a former Michigan assistant attorney general who wrote negatively about the student on his personal blog.

You know the old saying, an attorney who represents himself has a fool for a client.  Well, the foolish former assistant attorney general represented himself and stubbornly went down with his own ship.  Relying entirely on a First Amendment defense, he refused to accept a settlement offer to apologize and retract his comments that the student used alcohol to entire minors to have sex with him.