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 US Supreme Court has declined to hear an appeal of a 7th Circuit Appellate ruling that the Illinois Eavesdropping Statute violates the First Amendment where it prevents citizens from audio recording police officers when they make otherwise non-confidential or priviledged statements.  As the Chicago Tribune reports, The Seventh Circuit reversed the trial court's holding that prevents the ACLU from amending its complaint as well as directing the trial court to enter a preliminary injunction against the enforcement of the Eavesdropping Statute.  

Blessed with qualified immunity and tort immunity generally, the City and its employees often hide behind either a blue wall of silence, like the Chicago Police has thrown up regarding the off-duty cop body slamming a female bartender, but also the City's Corporation counsel as is the case where the Chicago Police arrested a mentally ill California woman in Midway Airport and detained and released her into a south side neighborhood where she was eventually raped and fell off a building, ending up horribly injured. The CPD failed to adhere to department protocol related to the treatment of mentally suspect offenders and ignored clear evidence and fellow colleague appraisals regarding the mental health of the plaintiff.

The ISBA reports today that a recent Seventh Circuit Decision in Bell v. Chicago Police Chief Keating, No. 11-2408 (September 10, 2012) has threatened a Chicago Municipal Code Ordinance, Section 8-4-010(d), which prohibits acts of disorderly conduct when individual knowingly fails to obey lawful police order under circumstances where three or more other persons are committing acts of disorderly conduct in immediate vicinity, and where said acts are likely to cause substantial harm or serious inconvenience, annoyance or alarm.  The plaintiffs alleged that the Ordinance violated their First and Fourteenth Amendment rights.  The District Court ruled that the plaintiff's lacked standing to bring a facial Constitutional challenge to the ordinance.  The Seventh Circuit reversed the Northern District of Illinois, Eastern Division and concluded that there was standing.