Battle of the food logos: Likelihood of confusion and device marks

Choosing a ‘strong’ brand name for your business can be a challenging undertaking. Depending on your market and industry, there is a risk that your preferred name will have already been registered as a trademark by a third party. But what if you choose a similar logo? Yordi van Weelden examines the topic in the context of a recent trademark dispute between two food companies in the US.

It can be a challenge to find a unique brand name for your businesses, especially in crowded markets. In some cases, your chosen name won’t be distinctive enough to be eligible for trademark registration. In other cases, the name may have already been taken by a third party. But, what if you choose a logo that is similar to one that is already in use?

The recent US trademark dispute between food delivery company Grubhub (part of the Just Eat Takeaway Group) and meal kit brand Home Chef (part of supermarket chain Kroger) provides a useful illustration. While these food companies have different names, they both include graphic representations of a house with cutlery in their device marks (also known as figurative marks). 

Knives out in US trademark dispute between Home Chef and Grubhub

The Home Chef trademark (pictured left) is registered in the US for the services of transporting, packing and storing goods (class 39) and services for providing meal boxes (class 43). On that basis, Kroger (Home Chef) sought to prevent Just Eat (Grubhub) from using its orange trademark (pictured below, right) on the basis of trademark infringement. 

After having received several cease and desist letters from Kroger, Grubhub asked the Court of Illinois to grant a declaratory judgement confirming that the Grubhub trademark does not infringe the older Home Chef trademark. 

Device marks and likelihood of confusion

Under trademark law, the holder of an earlier trademark registration may (among other things) object to the use of a similar sign for similar products and/or services if this is likely to cause confusion among the public. In assessing whether there is a similarity, the courts in each jurisdiction will consider several factors. In the EU, for example, the visual, aural or conceptual similarity of the marks in question must be considered. This concerns the overall impression that the trademarks (or marks) have on the average consumer, whereby the distinctive and dominant features of the trademarks are taken into account. 

In comparison, the US Court of Illinois considered seven factors, including those of similarity, intent and actual confusion.  

The US court findings

In its ruling of 6 October 2021, the Court of Illinois found there to be no likelihood of confusion between the trademarks because Grubhub always and consistently uses its well-known and famous Grubhub brand name together with its orange house logo. Moreover, the Court found the style to be different, both in terms of colour (Grubhub is bright orange, while Home Chef) is green and illustration (Grubhub contains a unique, cartoon-like house with a chimney, rounded edges and an overhanging roofline, while Home Chef consists of a simple, austere pentagon). 

In the final verdict, issued on 25 May 2022, the Court concluded that the key factors in the analysis of likelihood of confusion (similarity, intent and actual confusion) fell in favour of Grubhub, as Home Chef had not made a sufficiently strong showing of a likelihood of confusion. This means that Grubhub will be able to continue to use its logo in the US.

How to avoid the risk of conflict in your trademark registrations

It takes time, resources and money to create and launch distinctive and effective brands. To ensure your chosen brand is really yours to use, it’s important to undertake an availability (or clearance) search before filing your application. Where you plan to use a device (or figurative) mark, you can also include your chosen logo in such searches too. 

For more advice on choosing a strong mark, please download our factsheet ‘7 steps to choosing a strong brand’, speak to your Novagraaf attorney or contact us below. 

Yordi van Weelden works in the Knowledge Management team at Novagraaf in the Netherlands.