Petition for Writ of Certiorari — Relish Labs LLC, et al., Petitioners v. Grubhub Inc., et al.

Supreme Court briefJan 9, 2024

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No. 23In the

Supreme Court of the United States

RELISH LABS LLC AND THE KROGER CO.,

Petitioners,

GRUBHUB, INC. AND TAKEAWAY.COM

CENTRAL CORE B.V.,

Respondents.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Seventh Circuit

PETITION FOR A WRIT OF CERTIORARI

William P. Atkins

Counsel of Record

Pillsbury Winthrop Shaw

Pittman LLP

1650 Tysons Boulevard,

14th Floor

McLean, VA 22102

(703) 770-7900

william.atkins@

pillsburylaw.com

Attorneys for Petitioners

326184

QUESTIONS PRESENTED

In trademark infringement, multiple factors are

weighed and balanced against the entire record to

determine whether there is a likelihood of confusion. In

B & B Hardware, Inc. v. Hargis Industries, Inc., 575

U.S. 138, 154 (2015), this Court held that the application

of those factors must apply the same statutory legal

standard for a likelihood of confusion across all circuits.

Some circuit courts review each factor’s analysis for clear

error, as well as the final balancing. Other circuits review

the final determination de novo. In this case, the district

court analyzed only three of the Seventh Circuit’s seven

factors. The circuit court found errors in that analysis,

added a de novo analysis of a fourth factor, and conducted

a de novo balancing, all while finding no clear error in the

district court’s determination.

The questions presented are:

Whether the determination of a likelihood of confusion

for trademark infringement is a factual finding,

reviewable for clear error, or a legal conclusion,

reviewable de novo, or a combination?

Whether a court should disclose its analysis of all

the factors in a multifactor likelihood of confusion

balancing determination for trademark infringement?

CORPORATE DISCLOSURE STATEMENT

Petitioner The Kroger Co. has no parent corporation

and The Vanguard Group, Inc. is the only publicly held

company owning ten percent or more of this Petitioner’s

stock. Petitioner Relish Labs LLC is wholly owned by

The Kroger Co.

iii

STATEMENT OF RELATED PROCEEDINGS

• Grubhub Inc. and Takeaway.com Central Core B.V. v.

Relish Labs LLC and The Kroger Co., No. 1:21-cv05312, U.S. District Court for the Northern District of

Illinois. Report and Recommendation entered April 8,

2022. Order denying motion for preliminary injunction

entered May 25, 2022.

• Grubhub Inc. and Takeaway.com Central Core B.V. v.

Relish Labs LLC and The Kroger Co., No. 22-1950, U.S.

Court of Appeals for the Seventh Circuit. Judgment

entered Sept. 12, 2023. Denial of request for rehearing

and rehearing en banc entered Oct. 11, 2023.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED . . . . . . . . . . . . . . . . . . . . . . . i

CORPORATE DISCLOSURE STATEMENT . . . . . . . ii

STATEMENT OF RELATED PROCEEDINGS . . . . iii

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . iv

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . . vi

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . vii

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

STATEMENT OF JURISDICTION . . . . . . . . . . . . . . . 1

STATUTORY PROVISIONS INVOLVED . . . . . . . . . . 1

INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . . 3

The Statutory Language . . . . . . . . . . . . . . . . . . . 4

II. Factual Background . . . . . . . . . . . . . . . . . . . . . . . 4

III. Procedural Background . . . . . . . . . . . . . . . . . . . . 6

REASONS TO GRANT THE PETITION . . . . . . . . . . . 9

Table of Contents

Page

The Multifactor “Likelihood of Confusion”

Balancing Test . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

A. Multifactor Tests Apply the Same Legal

Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

B. The Factors and Their Analyses Are

Interrelated . . . . . . . . . . . . . . . . . . . . . . . . 11

C. Courts Have Been Selecting Subsets of

Factors to Analyze . . . . . . . . . . . . . . . . . . . . 15

II. Not Consider i ng Releva nt Fa c t or s

and Ig nor ing Ev idence Is Legal

Error . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

III. The Circuit Split of Likelihood of Confusion

Findings: Clear Error or De Novo . . . . . . . . . . 22

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

TABLE OF APPENDICES

Page

APPENDIX A — OPINION OF THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT, FILED

SEPTEMBER 12, 2023 . . . . . . . . . . . . . . . . . . . . . . . 1a

APPENDIX B — ORDER AND

MEMORANDUM OPINION OF

THE UNITED STATES DISTRICT

COURT FOR THE NORTHERN

DISTRICT OF ILLINOIS, EASTERN

DIVISION, FILED MAY 25, 2022 . . . . . . . . . . . . . 39a

APPENDIX C — REPORT AND

RECOMMENDATION OF THE

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT

OF ILLINOIS, EASTERN DIVISION,

FILED APRIL 8, 2022 . . . . . . . . . . . . . . . . . . . . . . . 60a

APPENDIX D — ORDER OF THE UNITED

STATES COURT OF APPEALS FOR

THE SEVENTH CIRCUIT, FILED

OCTOBER 11, 2023 . . . . . . . . . . . . . . . . . . . . . . . . . 135a

APPENDIX E — 15 U.S.C. § 1114 . . . . . . . . . . . . . . 137a

vii

TABLE OF CITED AUTHORITIES

Page

Cases

A & H Sportswear, Inc. v.

Victoria’s Secret Stores, Inc.,

237 F.3d 198 (3d Cir. 2000) . . . . . . . . . . . . . . . 20, 22, 24

Arrow Fastener Co., Inc. v. Stanley Works,

59 F.3d 384 (2d Cir. 1995) . . . . . . . . . . . . . . . . . . . . . . 15

Astra Pharmaceutical Products, Inc. v.

Beckman Instruments, Inc.,

718 F.2d 1201 (1st Cir. 1983) . . . . . . . . . . . . . . . . . . . 12

B & B Hardware, Inc. v. Hargis Industries, Inc.,

575 U.S. 138 (2015) . . . . . . . . . . . . . . . . . . . . . . 2, 11, 16

Barbeque Marx, Inc. v. 551 Ogden, Inc.

235 F.3d (7th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . 6

Beer Nuts, Inc. v. Clover Club Foods Co.,

805 F.2d 920 (10th Cir. 1986) . . . . . . . . . . . . . . . . . . . 13

Boston Athletic Ass’n v. Sullivan,

867 F.2d 22 (1st Cir. 1989) . . . . . . . . . . . . . . . . . . . . . 12

Boston Duck Tours, LP v.

Super Duck Tours, LLC,

531 F.3d 1 (1st Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . 24

viii

Cited Authorities

Page

Brookfield Commc’ns, Inc. v.

W. Coast Entm’t Corp.,

174 F.3d 1036 (9th Cir. 1999) . . . . . . . . . . . . . . . . . . . 17

CAE, Inc. v. Clean Air Engineering, Inc.,

267 F.3d 660 (7th Cir. 2001) . . . . . . . . . . . . . . . . . . . . 19

Car-Freshner Corporation v.

American Covers, LLC,

980 F.3d 314 (2d Cir. 2020) . . . . . . . . . . . . . . . . . . . . . 23

Carl Zeiss Stiftung v. VEB Carl Zeiss Jena,

433 F.2d 686 (2d Cir. 1970), cert. denied,

403 U.S. 905 (1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Champions Golf Club, Inc. v.

The Champions Golf Club, Inc.,

78 F.3d 1111 (6th Cir. 1996) . . . . . . . . . . . . . . . . . . . . 23

Checkpoint Sys. v. Check Point Software Tech,

269 F.3d 270 (3d Cir. 2001) . . . . . . . . . . . . . . . . . . . . . 25

Dieter v. B & H Industries of Southwest Florida,

880 F.2d 322 (11th Cir. 1989) . . . . . . . . . . . . . . . . . . . 12

Elby’s Big Boy v. Frisch’s Restaurants,

459 U.S. 916 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Eli Lilly & Co. v. Nat. Answers, Inc.,

233 F.3d 456 (7th Cir. 2000) . . . . . . . . . . . . . . . . . . . . 19

Cited Authorities

Page

Enco Mfg. Co. v. Clamp Mfg. Co.,

493 U.S. 872 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Euroquilt, Inc. v. Scandia Down Corp.,

475 U.S. 1147 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Fisons Horticulture, Inc. v. Vigro Indus., Inc.,

30 F.3d 466 (3d Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . 13

Fortune Dynamic, Inc. v. Victoria’s Secret

Stores Brand Mgmt., Inc.,

618 F.3d 1025 (9th Cir. 2010) . . . . . . . . . . . . . . . . . . . 17

Frehling Enterprises v. Int’l Select Group,

192 F.3d 1330 (11th Cir. 1995) . . . . . . . . . . . . . . . . . . 20

G. Heileman Brewing Co. v.

Anheuser-Busch, Inc.,

873 F.2d 985 (7th Cir. 1989) . . . . . . . . . . . . . . . . . 18, 19

General Motors Corp. v. Lanard Toys, Inc.,

468 F.3d 405 (6th Cir. 2006) . . . . . . . . . . . . . . . . . . . . 17

General Motors Corp. v. Urban Gorilla, LLC,

500 F.3d 1222 (10th Cir. 2007) . . . . . . . . . . . . . . . . . . 24

GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . 19

Gray v. Meijer, Inc.,

295 F.3d 641 (6th Cir. 2002) . . . . . . . . . . . . . . . . . . . . 19

Cited Authorities

Page

Hamling v. United States,

418 U.S. 87 (1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .26

Hana Financial, Inc. v. Hana Bank,

574 U.S. 418 (2015) . . . . . . . . . . . . . . . . . . . . . . . . 23, 25

Harold F. Ritchie v. Chesebrough-Pond’s, Inc.,

281 F.2d 755 (2d Cir. 1960) . . . . . . . . . . . . . . . . . . . . . 24

Helene Curtis Industries v.

Church & Dwight Co.,

560 F.2d 1325 (7th Cir. 1977) . . . . . . . . . . . . 6, 7, 17, 18

Henri’s Food Products Co., Inc. v. Kraft, Inc.,

717 F.2d 352 (7th Cir. 1983) . . . . . . . . . . . . . . . . . . . . 18

Int’l Kennel Club of Chicago, Inc. v.

Mighty Star, Inc.,

846 F.2d 1079 (7th Cir. 1988) . . . . . . . . . . . . . . . . . . . 18

Inwood Laboratories v. Ives Laboratories,

456 U.S. 844 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

J. B. Williams Company, Inc. v.

LeConte Cosmetics, Inc.,

523 F.2d 187 (9th Cir. 1975) . . . . . . . . . . . . . . . . . . . . 24

Jordache Enters. v. Hogg Wyld, Ltd.,

828 F.2d 1482 (10th Cir. 1987) . . . . . . . . . . . . . . . . . . 12

Cited Authorities

Page

King of the Mountain Sports v. Chrysler Corp.,

185 F.3d 1084 (10th Cir. 1999) . . . . . . . . . . . . . . . . . . 20

Kos Pharmaceuticals v. Andrx Corp.,

369 F.3d 700 (3d Cir. 2004) . . . . . . . . . . . . . . . . . . . . . 21

L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993), cert. denied, 510

U.S. 908 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Levi Strauss Co. v. Blue Bell, Inc.,

778 F.2d 1352 (9th Cir. 1985) . . . . . . . . . . . . . . . . . . . 23

Lone Star Steakhouse & Saloon v.

Alpha of Virginia,

43 F.3d 922 (4th Cir. 1995) . . . . . . . . . . . . . . . . . . . . . 12

Maker’s Mark Distillery v.

Diageo North America,

679 F.3d 410 (6th Cir. 2012) . . . . . . . . . . . . . . . . . . . . 19

Mathews v. Weber,

423 U.S. 261, 96 S.Ct. 549, 46 L.Ed.2d 483 (1976) . 15

Mobil Oil Corp. v. Pegasus Petroleum Corp.,

818 F.2d 254 (2d Cir. 1987) . . . . . . . . . . . . . . . . . . . . . 13

National Business Forms & Printing, Inc. v.

Ford Motor Co.,

671 F.3d 526 (5th Cir. 2012) . . . . . . . . . . . . . . . . . . . . 24

xii

Cited Authorities

Page

Network Automation, Inc. v. Advanced Systems

Concepts, Inc.,

638 F.3d 1137 (9th Cir. 2011) . . . . . . . . . . . . . . . . . . . 17

Pignons S.A. de Mecanique de Precision v.

Polaroid Corp.,

657 F.2d 482 (1st Cir. 1981) . . . . . . . . . . . . . . . . . . . . 12

Piper Aircraft Corp. v. Wag-Aero, Inc.,

741 F.2d 925 (7th Cir. 1984) . . . . . . . . . . . . . . . . . . . . 13

PlayNation Play Systems, Inc. v. Velex Corp.,

924 F.3d 1159 (11th Cir. 2019) . . . . . . . . . . . . . . . . . . 16

Plus Products v. Plus Discount Foods, Inc.,

722 F.2d 999 (2d Cir. 1983) . . . . . . . . . . . . . . . . . . . . . 12

Polaroid Corp. v. Polarad Elecs. Corp.,

287 F.2d 492 (2d Cir. 1961) . . . . . . . . . . . . . . . . . . 10, 11

Railroad Co. v. Stout,

17 Wall. 657 (1873) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Reinsurance Co. v. Administratia Asigurarilor,

902 F.2d 1275 (7th Cir. 1990) . . . . . . . . . . . . . . . . . . . . 9

Sabinsa Corp. v. Creative Compounds, LLC,

609 F.3d 175 (3rd Cir. 2010), cert. denied, 131

S. Ct. 960 (2011) . . . . . . . . . . . . . . . . . . . . . . . . 21, 22, 24

xiii

Cited Authorities

Page

Scandia Down Corp. v. Euroquilt, Inc.,

772 F.2d 1423 (7th Cir. 1985) . . . . . . . . . . . . . . . . . . . 23

Schwinn Bicycle Co. v. Ross Bicycles, Inc.,

870 F.2d 1176 (7th Cir. 1989) . . . . . . . . . . . . . . . . . . . 14

Select Comfort Corp. v. Baxter,

996 F.3d 925 (8th Cir. 2021) . . . . . . . . . . . . . . . . . . . . 24

Smith v. Bayer Corp,

564 U.S. 299 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Smith Fiberglass Prod., Inc. v. Ameron, Inc.,

7 F.3d 1327 (7th Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . 7

SquirtCo v. Seven-Up Co.,

628 F.2d 1086 (8th Cir. 1980) . . . . . . . . . . . . . . . . 12, 13

Stratus Networks, Inc. v. UBTA-UBET

Communications Inc.,

955 F.3d 994 (Fed. Cir. 2020) . . . . . . . . . . . . . . . . . . . 23

Sun Banks of Fla., Inc. v.

Sun Fed. Sav. & Loan Ass’n,

651 F.2d 311 (5th Cir. 1981) . . . . . . . . . . . . . . . . . 13, 24

Swatch AG v. Beehive Wholesale, LLC,

739 F.3d 150 (4th Cir. 2014) . . . . . . . . . . . . . . . . . . . . 23

xiv

Cited Authorities

Page

Teva Pharma. USA, Inc. v. Sandoz, Inc.,

574 U.S. 318 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Thane Int’l, Inc. v. Trek Bicycle Corp.,

305 F.3d 894 (9th Cir. 2002) . . . . . . . . . . . . . . . . . . . . 17

United States v. Gaudin,

515 U.S. 506 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Top Tobacco, L.P. v.

North Atlantic Operating Co., Inc.,

509 F.3d 380 (7th Cir. 2007) . . . . . . . . . . . . . . . . . . . . 17

TSC Industries, Inc. v. Northway, Inc.,

426 U.S. 438 (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Ty, Inc. v. Jones Group, Inc.,

237 F.3d 891 (7th Cir. 2001) . . . . . . . . . . . . . . . . . 18, 19

Uncommon, LLC v. Spigen, Inc.,

926 F.3d 409 (7th Cir. 2019) . . . . . . . . . . . . . . . . . . . . 18

Union Carbide Corp. v. Ever-Ready Inc.,

531 F.2d 366 (7th Cir. 1976) . . . . . . . . . . . . . . . . . . . . 24

United States v. Raddatz,

447 U.S. 667, 681-82, 100 S.Ct. 2406, 2415, 65

L.Ed.2d 424, rehearing denied, 448 U.S. 916,

101 S.Ct. 36, 65 L.Ed.2d 1179 (1980) . . . . . . . . . . . . . 14

Cited Authorities

Page

Watkins Products, Inc. v.

Sunway Fruits Products, Inc.,

311 F.2d 496 (7th. Cir. 1963) . . . . . . . . . . . . . . . . . . . . 23

Zheng Cai v. Diamond Hong, Inc.,

901 F.3d 1367 (Fed. Cir. 2018) . . . . . . . . . . . . . . . . . . 13

Ziebart Int’l Corp. v.

After Market Associates, Inc.,

802 F.2d 220 (7th Cir. 1986) . . . . . . . . . . . . . . . . . . . . 18

Statutes and Codes

United States Code,

Title 15, Section 1114 . . . . . . . . . . . . . . . . . . . . . . . . 1, 4

Title 28, Section 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . 1

Rules and Regulations

Federal Rules of Civil Procedure,

Rule 52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14, 21, 22, 26

Other Authorities

4 McCarthy on Trademarks and Unfair Competition

§ 23:19 (5th ed.) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11, 13

4 McCarthy on Trademarks and Unfair Competition

§ 24:30 (5th ed.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9, 11

xvi

Cited Authorities

Page

4 McCarthy on Trademarks and Unfair Competition

§ 24:57 (5th ed.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

American Law Institute, Restatement of Torts,

§ 729 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

American Law Institute, Restatement of Torts,

§ 730 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

American Law Institute, Restatement of Torts,

§ 731 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

Jerre B. Swann, Confusion Factor Analysis-A

Cognitive Update, 101 Trademark Rep.

1223 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

Prof. Barton Beebe, An Empirical Study of the

Multifactor Tests for Trademark Infringement,

94 Cal. Law Rev. 1581 (2006) . . . . . . . . . . . . . . . . . . . 16

Restatement (First) of Torts § 729 (1938) . . . . . . . . . . . . 9

9 Wright Miller, Federal Practice & Procedure

§ 2574 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Petitioners Relish Labs LLC and The Kroger Co.

respectfully petition for a writ of certiorari to review the

judgment of the United States Court of Appeals for the

Seventh Circuit in this case.

OPINIONS BELOW

The Report and Recommendation is not reported. 2022

WL 1644233. Petitioner’s Appendix (App.) at 60a-134a.

The Order of the district court is not reported. 2022 WL

2774986. App. 39a-59a. The opinion of the United States

Court of Appeals for the Seventh Circuit is reported at

80 F.4th 835 (App. 1a-38a) and the denial of rehearing is

not reported. 2023 WL 6626148. App. 135a-136a.

STATEMENT OF JURISDICTION

The Court of Appeals denied Petitioners’ motion

for preliminary injunction for trademark infringement.

App. 1a. A request for rehearing and rehearing en banc

was denied on Oct. 11, 2023. App. 135a. This Court has

jurisdiction under 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

Section 32 of the Lanham Act, 15 U.S.C. § 1114,

provides in pertinent part:

Any person who shall … use in commerce any

reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection

with the sale, offering for sale, distribution, or

advertising of any goods or services on or in

connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive …

shall be liable… .

The entire statue can be found at App. 137a-141a.

INTRODUCTION

Trademark infringement requires determining

a “likelihood of confusion” by analyzing interrelated

factors with relevant evidence and then balancing them.

The circuit courts use similar factors to meet the same

statutory legal standard, as required by this Court’s

decision in B & B Hardware, Inc. v. Hargis Industries,

Inc., 575 U.S. 138, 154 (2015). There is a circuit split,

however, as to how this is accomplished and whether such

a determination is a legal conclusion, subject to de novo

review, or a factual finding, reviewed for clear error, or a

combination of both.

This case presents an important, recurring, and

outcome determinative question of federal statutory

trademark law that this Court is uniquely and solely suited

to address and resolve because courts are determining

the likelihood of consumer confusion in starkly different,

subjective ways. The analysis must analyze all relevant

factors against the entire record and then weigh and

balance them to determine if the statutory legal standard

is met. Some circuit courts review each factor’s analysis for

clear error, as well as the ultimate determination. Other

circuits review the ultimate determination of likelihood

of confusion de novo. Even when required to give great

deference, courts provide incomplete, unbalanced, and

unpredictable trademark infringement decisions. Such

analyses and ensuing decisions avoid disclosure and,

therefore, render a subjective opinion for review. They

also prevent courts and trademark owners from having

a predictable body of case law - one which must meet

the statutory legal standard. Certiorari is respectfully

requested to resolve this long-standing problem, as

evidenced by this case.

STATEMENT OF THE CASE

Petitioners moved for preliminary injunction based

on trademark infringement. A magistrate judge analyzed

all seven of the Seventh Circuit’s likelihood of confusion

factors, concluding that there was a likelihood of reverse

confusion, and recommended granting Petitioners’

preliminary injunction motion. The district court adopted

all of the factual findings but denied the motion, choosing

instead to analyze only three of the seven factors. The

circuit court applied a clearly erroneous standard of

review, forgiving both legal and factual errors in that

which the district court had chosen to consider. The

Seventh Circuit then, however, conducted a de novo

analysis of one of the four factors which the district court

had ignored, and therefore the parties had not briefed.

With the sua sponte inclusion of a de novo analysis

of an additional factor, the circuit court conducted an

incomplete de novo balancing of four factors to determine

the likelihood of confusion. These analyses, in a circuit

with precedent requiring a clearly erroneous standard

of review, evidence the timeworn challenges faced by

trademark owners and, more importantly for this Court,

an ongoing need to ensure a consistent process while

reconciling a split between the circuits. A court cannot

balance that which it does not weigh.

The Statutory Language

The Lanham Act statutorily protects trademark

owners from a mark which is “likely to cause confusion, or

to cause mistake, or to deceive ….” 15 U.S.C. § 1114 (Pub.

L. No. 79-489, § 43, 60 Stat. 427, 437 (1946)) (generally

referred to as the “likelihood of confusion”).

II. Factual Background

The following is taken from the R&R’s “Findings of

Fact”. App. 63a-82a. The District Court’s Order “adopts

and incorporates the factual findings of the R&R”. App.

40a-41a.

Petitioner Relish Labs LLC (“Home

Chef”) has been using the “HC Home

Mark” (pictured right) since 2014 and

owns three U.S. trademark registrations

for this mark by itself. App. 66a-67a. As

the R&R found:

Currently, Home Chef offers hundreds of

products, including meal kits, heat-and-eat

meals, and ready-to-eat options. …Home

Chef’s products can be purchased through

Home Chef’s website and mobile application,

Kroger’s website and mobile application, and

in 2,000 Kroger family stores, either for pick

up or delivery. (Id. at ¶16). Since 2021, Home

Chef has also partnered with meal delivery

service DoorDash – a Grubhub competitor – to

“promote and sell Home Chef’s meal kits and

prepared meals for pickup and home delivery

throughout select Kroger family stores.” …

Customers can also order Home Chef’s meal

kits, heat-and-eat, and ready-to-eat meals for

pick up and home delivery from Kroger through

Instacart, another grocery and meal delivery

service. … In addition, select customers can

order Home Chef vouchers directly through

the Grubhub mobile app for redemption on the

Home Chef website.

App. 65a-66a.

“In 2020, Grubhub provided nearly $9 billion in gross

food sales to local restaurants, and it processed more

than 745,000 restaurant orders per day.” App. 69a. “In

addition to working with restaurants, Grubhub provides

meal delivery services through other channels, including

grocery stores.” Id.

Respondent Takeaway.com Central

Core B.V. (“JET”) is a “leading global

online food ordering and delivery

marketplace” which used its “JET

House Mark” (pictured left) with its

various subsidiaries. App. 72a-73a.

On June 10, 2020, JET “reached a deal to acquire

Grubhub and ‘create the world’s largest online food

delivery company outside of China.” App. 74a. “Just a

few weeks later, on July 1, 2020, JET filed a trademark

application with the USPTO for the JET House Logo

alone, with no accompanying word mark.” App. 74a. The

USPTO refused JET’s trademark application “because of

a likelihood of confusion with [Home Chef’s] marks.” Id.

(square brackets in original). On Aug. 9, 2021, JET filed

a renunciation of its trademark application; the USPTO

would declare it abandoned. App. 76a. Fifteen days

later, on Aug. 24, 2021, Grubhub issued a press release

advertising its new branding and logo (shown below) and

explaining how the Grubhub and Seamless phone apps

were updated overnight. App. 78a.

Petitioners Home Chef and Kroger sent a cease-anddesist letter. App. 78a. JET and Grubhub responded by

filing a declaratory judgment action, to which Petitioners

responded, including with a motion for preliminary

injunction. App. 79a.

III. Procedural Background

The Seventh Circuit uses the following seven Helene

Curtis factors to analyze the likelihood of confusion

between marks:

Similarity of the marks in appearance and

suggestion;

Similarity of the products for which the mark is

used;

The area and manner of concurrent use;

The degree of care likely to be exercised by

consumers;

The strength of the complainant’s mark;

Existence of actual confusion; and

The intent of the defendant to palm off its product

as that of another.

Helene Curtis Industries v. Church & Dwight Co., 560

F.2d 1325, 1330 (7th Cir. 1977) (citing Carl Zeiss Stiftung

v. VEB Carl Zeiss Jena, 433 F.2d 686, 705 (2d Cir. 1970),

cert. denied, 403 U.S. 905 (1971)).

The R&R (App. 60a-134a) recognized that a court

must:

“[W]eigh the evidence pertaining to each

likelihood of confusion factor and balance the

seven factors against each other.” Barbeque

Marx, Inc. v. 551 Ogden, Inc. 235 F.3d at 1044

[7th Cir. 2000]. No single factor is dispositive,

“and the weight accorded to each factor will

vary from case to case.” Smith Fiberglass

Prod., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329–

30 (7th Cir. 1993).

App. 86a. The R&R recommended granting Petitioners’

preliminary injunction motion for reverse confusion,

concluding, “[t]o recap, all seven factors … weigh in favor

of [Petitioners] with respect to its reverse confusion

theory.” App. 120a.

The district court’s Order (App. 39a-59a) adopted the

R&R’s factual findings, but rejected its recommendation

and denied Petitioners’ preliminary injunction motion,

based solely on three factors, similarity of the marks,

intent, and actual confusion, while relegating its failure

to analyze the Seventh Circuit’s four other important

factors to a footnote:

The Court does not presently consider the

remaining factors because Grubhub did not

specifically object to the R&R’s analysis of

those factors, and it does not appear that the

R&R’s analysis of those factors is clear error.

Moreover, that analysis would not change the

Court’s conclusion that [Petitioner] has not met

its burden of showing a strong likelihood of

success on the merits.

App. 54a n. 2 (emphasis added).

With the district court not completing its analysis,

Petitioners appealed. The Seventh Circuit Decision (App.

1a-38a) found that the district court erred in its analysis

and then took it upon itself to de novo analyze the strength

of mark because “the strength-of-the-mark factor is so

intricately connected to the similarity-of-marks factor.”

App. 22a. As to the remaining three factors, with no

analysis or findings from either of the lower courts, the

decision inaccurately states that all of the factors had

been considered, but cites to only the single footnote in

the district court’s Order. App. 37a.

The R&R provides a thorough, reasoned analysis,

dutifully weighing and balancing the evidence using

each of the factors. The district court applied a different

legal standard by choosing to analyze only three of the

seven factors, one of which the circuit court recognized as

erroneous. To bolster its incomplete conclusion, the circuit

court applies and analyzes the strength of mark factor – a

factor which the district court did not consider and “[t]he

parties do not separately brief” at the Seventh Circuit.

App. 21a. The circuit court applied yet another legal

standard. As Judge Easterbrook once wrote about another

multifactor test – three different recipes for the same meal.

Reinsurance Co. v. Administratia Asigurarilor, 902 F.2d

1275, 1283 (7th Cir. 1990) (Easterbrook, J. concurring, “I

would be most reluctant to accept an approach that calls on

the district judge to throw a heap of factors on a table and

then slice and dice to taste. Although it is easy to identify

many relevant considerations, as the ALI’s Restatement

does, a court’s job is to reach judgments on the basis of

rules of law rather than to use a different recipe for each

meal.”).

This petition followed.

REASONS TO GRANT THE PETITION

The Multifactor “Likelihood of Confusion”

Balancing Test

Since the Lanham Act was enacted, each of the

thirteen circuits adopted a multifactor balancing test

to determine a likelihood of confusion for trademark

infringement. 4 McCarthy on Trademarks and Unfair

Competition § 24:30 (5th ed.). The factors originated

from the Restatement (First) of Torts § 729 (1938) and

were first used in a 1961 Second Circuit case applying

“eight foundational factors to be considered and weighed

before the decision-maker comes to a conclusion about the

presence or absence of a likelihood of confusion.” Jerre B.

Swann, Confusion Factor Analysis--A Cognitive Update,

101 Trademark Rep. 1223 (2011) (referring to the seminal

factors of Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d

492, 495 (2d Cir. 1961)). As Polaroid articulated:

Where the products are different, the prior

owner’s chance of success is a function of

many variables: the strength of his mark, the

degree of similarity between the two marks,

the proximity of the products, the likelihood

that the prior owner will bridge the gap, actual

confusion, and the reciprocal of defendant’s

good faith in adopting its own mark, the quality

of defendant’s product, and the sophistication of

the buyers. Even this extensive catalogue does

not exhaust the possibilities—the court may

have to take still other variables into account.

American Law Institute, Restatement of Torts,

§§ 729, 730, 731.

287 F.2d at 495.

Multifactor Tests Apply the Same Legal

Standard

Following Polaroid, all other circuits adopted similar

multifactor balancing tests to analyze a likelihood of

confusion under the same statutory legal standard. See 4

McCarthy on Trademarks and Unfair Competition § 24:57

(5th ed.) (“Eventually all of the 13 federal circuit courts

adopted a similar multi-factor analysis strongly influenced

by the Second Circuit’s Polaroid test.”). As this Court

found in B & B Hardware, Inc. v. Hargis Industries, Inc.,

575 U.S. 138, 154 (2015), the multifactor tests adopted by

each circuit and the Trademark Trial and Appeal Board

(“TTAB”) at the U.S. Patent and Trademark Office apply

the same legal standard for determining a likelihood of

confusion:

Neither does it matter that the TTAB and the

Eighth Circuit use different factors to assess

likelihood of confusion. For one thing, the

factors are not fundamentally different, and

“[m]inor variations in the application of what is

in essence the same legal standard do not defeat

preclusion.” [quoting Smith v. Bayer Corp, 564

U.S. 299, 312 n. 9 (2011)].

The multifactor likelihood of confusion tests used

nationwide must apply the same legal and statutory

standard.

B. T he Fa c t or s a nd T hei r A n a ly s e s A r e

Interrelated

The likelihood of confusion factors are interrelated

because the analysis of one can affect another factor’s

analysis and weight, which is why a multifactored

balancing test was originally deployed. Polaroid Corp.,

287 F.2d at 495 (“a function of many variables”); see also

4 McCarthy on Trademarks and Unfair Competition

§ 23:19 (5th ed.) (“All of these factors are to be considered

in reaching a decision on the issue of likelihood of

confusion.”); id. at § 24:30 (“Each of the circuits has

emphasized in one way or another that no one of the

foundational factors is determinative, but rather that all

are to be weighed and balanced one against the other.

The strength of plaintiff’s case on each of these criteria

is ‘rated’ and then the total rating is considered in total

to make at least a ‘rough judgment’ as to liability.”). Due

to the factors being interrelated and each bearing on

the ultimate question, courts have admonished that each

factor should be considered, that all of the factors should

be balanced in totality, and that no one factor is dispositive.

Jordache Enters. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484

(10th Cir. 1987) (“All of the factors are interrelated, and

no one factor is dispositive.”); Boston Athletic Ass’n v.

Sullivan, 867 F.2d 22, 29 (1st Cir. 1989) (“No one factor is

necessarily determinative, but each must be considered.”)

(citing Astra Pharmaceutical Products, Inc. v. Beckman

Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983) (same

quote) and Pignons S.A. de Mecanique de Precision v.

Polaroid Corp., 657 F.2d 482, 487-492 (1st Cir. 1981));

Plus Products v. Plus Discount Foods, Inc., 722 F.2d

999, 1004 (2d Cir. 1983) (“[E]ach must be considered in

the context of all of the other factors, and from a balance

of these determinations, one is able to reach the ultimate

conclusion, whether there is likelihood of confusion …”);

SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.

1980) (“[R]esolution of this issue does not hinge on a single

factor but requires a consideration of numerous factors

to determine whether under all the circumstances there

is a likelihood of confusion.”); Lone Star Steakhouse &

Saloon v. Alpha of Virginia, 43 F.3d 922, 933 (4th Cir.

1995) (“In order to guide courts in determining whether

a likelihood of confusion exists, this Court has delineated

seven factors a court must consider …”); Dieter v. B &

H Industries of Southwest Florida, 880 F.2d 322, 326

(11th Cir. 1989) (“Determination of likelihood of confusion

requires analysis of the following seven factors …”);

Fisons Horticulture, Inc. v. Vigro Indus., Inc., 30 F.3d

466, 473 (3d Cir. 1994) (“Where the goods or services are

not competing, the similarity of the marks is only one of

a number of factors the court must examine to determine

likelihood of confusion.”); Piper Aircraft Corp. v. WagAero, Inc., 741 F.2d 925, (7th Cir. 1984) (Cautioning that:

“None of these factors is determinative. In fact, we have

reversed lower court decisions that have placed excessive

reliance on certain factors.”).

For example, the analysis of the factor regarding

similarity of the marks impacts the factor regarding

similarity of the goods or services at issue. The more

similar the marks at issue are, the less similarity of

goods is required to support finding a likelihood of

confusion, and vice versa. SquirtCo, 628 F.2d at 1091

(“Where the products are closely related, less similarity

in the trademarks is necessary to support a finding of

infringement.”); Mobil Oil Corp. v. Pegasus Petroleum

Corp., 818 F.2d 254 (2d Cir. 1987) (citing SquirtCo, 628

F.2d at 1091); Sun Banks of Fla., Inc. v. Sun Fed. Sav. &

Loan Ass’n, 651 F.2d 311, 318, (5th Cir. 1981) (“With this

similarity of service …, the less similarity in the marks

is needed for a finding of likelihood of confusion.”); Beer

Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 925

(10th Cir. 1986) (“[A] small degree of similarity between

two marks may lead to a finding that confusion is likely

when the products are identical, inexpensive items…”);

Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372

(Fed. Cir. 2018); 4 McCarthy at § 23:20.50 (“The degree of

similarity of the marks needed to prove likely confusion

will vary with the difference in the goods and services of

the parties.”) (collecting cases).

A party’s evidentiary support for one or more factors

can certainly be determined to be weak to non-existent,

rightfully leading a court to minimize or eliminate the

weight and impact of the applicable factor in the overall

analysis and balancing. That is not the issue here. In the

present case, the lower courts did not consider, much

less analyze, and therefore did not weigh or balance four

(and then three) of the seven interrelated factors, all of

which had relevant evidence in the record and influence

consumer perception. This lack of analysis prevents a

reviewing court from determining if legal and/or factual

errors were committed.

One may argue that the district court weighed and

balanced all of the seven relevant factors, having adopted

the magistrate judge’s factual findings, analyzed three of

the factors, and noted that the magistrate judge’s analysis

of the other four was not clear error, despite admittedly

not considering or providing any analysis of the other

four. As the Seventh Circuit advised in Schwinn Bicycle

Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1180 at n.9 (7th

Cir. 1989), however:

It is the district court’s memorandum opinion,

not the magistrate’s proposed findings and

recommendation, that serves as the findings of

fact and conclusions of law in this case pursuant

to Rule 52(a), Fed.R.Civ.P. In United States v.

Raddatz, 447 U.S. 667, 681-82, 100 S.Ct. 2406,

2415, 65 L.Ed.2d 424, rehearing denied, 448

U.S. 916, 101 S.Ct. 36, 65 L.Ed.2d 1179 (1980),

the Supreme Court explained § 636 stating:

“[t]he authority — and the responsibility —

to make an informed final determination ...

remains with the judge.” Id. (editing in original)

(quoting Mathews v. Weber, 423 U.S. 261, 271,

96 S.Ct. 549, 554, 46 L.Ed.2d 483 (1976)).

A reviewing court is unable to adequately, reliably,

or fairly give deferential review to a district court’s

incomplete likelihood of confusion analysis that does

not explain its factual findings and legal analysis of all

relevant factors. It is a subjective, unpredictable, and

untenable process. Each factor must be considered and

weighed against its corresponding evidence, all of the

factors must be balanced in totality on the entire record,

and the court must explain how the factors were weighed

and balanced against each other, allowing all to see, use,

dispute, support, or opine on a complete and disclosed

analysis. Rule 52(a) expects and requires this.

Courts Have Been Selecting Subsets of Factors

to Analyze

In Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d

384, 400 (2d Cir. 1995), the Second Circuit opined:

[I]t is incumbent upon the district judge to

engage in a deliberate review of each factor, and,

if a factor is inapplicable to a case, to explain

why.... The steady application of Polaroid is

critical to the proper development of trademark

law, for it is only when the Polaroid factors are

applied consistently and clearly over time that

the relevant distinctions between different

factual configurations can emerge. Litigants

are entitled to the illumination and guidance

this common-law process affords, and appellate

courts depend on it for the performance of their

assigned task of review .... The efficacy of the

multi-factor approach that Judge Friendly

wisely set out to address this difficult situation

depends on thorough, careful, and consistent

application of the doctrine by district courts.

Over time, the analyzing, weighing, and balancing of

each factor has diminished despite the single standard

recognized by this Court in B & B Hardware, Inc. 575

U.S. at 154. An empirical analysis of 331 trademark

decisions (287 dispositive) in 2006 concluded “that

judges employ fast and frugal heuristics to short circuit

the multifactor test. Perhaps as an expression of their

cognitive limitations, but more likely as an expression of

their cognitive ingenuity, judges rely upon a few factors

or combinations of factors to make their decisions.” Prof.

Barton Beebe, An Empirical Study of the Multifactor

Tests for Trademark Infringement, 94 Cal. Law Rev. 1581

(2006). The lack of analysis of all of the factors was so

prevalent that the author measured and named it – “judges

tended to stampede the factor outcomes to favor the test

outcome.” Id. at 1614. That was 18 years ago. To meet the

statutory legal standard, underlying analyses should be

consistent. Judges assessing consumer confusion from

the bench should not stampede over factors which are not

even considered.

Circuit courts generally state that all of their

respective factors should be considered and balanced,

but decisions increasingly state that not all factors must

be considered. See, e.g., PlayNation Play Systems,

Inc. v. Velex Corp., 924 F.3d 1159, 1169 (11th Cir. 2019)

(“These factors are not exclusive. Courts do not have to

consider every factor in every case.”); Top Tobacco, L.P.

v. North Atlantic Operating Co., Inc., 509 F.3d 380, 383

(7th Cir. 2007) (“If we know for sure that consumers are

not confused about a product’s origin, there is no need to

consult even a single proxy.”); General Motors Corp. v.

Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (affirming

finding of likelihood of confusion on summary judgment

despite the lower court failing to adequately discuss the

Frisch factors); Thane Int’l, Inc. v. Trek Bicycle Corp.,

305 F.3d 894, 901 (9th Cir. 2002) (defending the analysis

of only a “subset” of factors in the non-internet context);

Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174

F.3d 1036, 1054 (9th Cir. 1999) (endorsing a ”subset“ of the

three “most important” factors in the internet context).

In Network Automation, Inc. v. Advanced Systems

Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011), the

Ninth Circuit stated:

[F]actors are intended as an adaptable proxy

for consumer confusion, not a rote checklist.

See, e.g., Fortune Dynamic, Inc. v. Victoria’s

Secret Stores Brand Mgmt., Inc., 618 F.3d 1025,

1030 (9th Cir. 2010) (“This eight-factor analysis

is ‘pliant,’ illustrative rather than exhaustive,

and best understood as simply providing helpful

guideposts.”) … .

The gradual derogation of the equitable, interrelated,

multifactor balancing test is acutely demonstrated by the

Seventh Circuit. The Seventh Circuit originally adopted

its multifactor balancing test in Helene Curtis Industries

v. Church & Dwight Co., stating “[i]n determining

‘likelihood of confusion’ several factors are important…”

560 F.2d 1325, 1330 (7th Cir. 1977) (listing the seven

factors of what would become referred to as the Seventh

Circuit’s “Helene Curtis” test, adopted from the Second

Circuit). The Seventh Circuit has also repeatedly said that

no single factor is dispositive and that “different factors

will weigh more heavily from case to case depending on the

particular facts and circumstances involved.” Int’l Kennel

Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079,

1087 (7th Cir. 1988).

Following Helene Curtis, in Henri’s Food Products

Co., Inc. v. Kraft, Inc., the court, without any statutory,

case law, or other support, referred to “more important

factors” as the “similarity of the marks, evidence of

confusion, and intent of the alleged infringer…” 717 F.2d

352, 354-55 (7th Cir. 1983) (finding the parties differed

on those three factors, while the other four were not in

dispute). Three years later, however, in Ziebart Int’l Corp.

v. After Market Associates, Inc., the court, relying on

Henri’s Food Products, analyzed only those same “three

‘more important’ factors in determining likelihood of

confusion …” 802 F.2d 220, 228 (7th Cir. 1986) (noting

“[i]t is not necessary for us to review the findings of

the district court as to the other factors affecting the

issue of likelihood of confusion.”). Three years later, the

Seventh Circuit made the blanket assertion that “the most

important factors include the similarity of the marks, the

intent of the claimed infringers and the evidence of actual

confusion.” G. Heileman Brewing Co. v. Anheuser-Busch,

Inc., 873 F.2d 985, 999 (7th Cir. 1989) (citing Ziebart Int’l

Corp., 802 F.2d at 226). Since then, courts in the Seventh

Circuit reiterate and often note those three factors as

being the “most important.” See, e.g., Uncommon, LLC

v. Spigen, Inc., 926 F.3d 409, 425 (7th Cir. 2019) (“most

important”); Ty, Inc. v. Jones Group, Inc., 237 F.3d 891,

898 (7th Cir. 2001) (“most important factors”) (citing G.

Heileman Brewing, 873 F.2d at 999); Eli Lilly & Co. v.

Nat. Answers, Inc., 233 F.3d 456, 462 (7th Cir. 2000) (“the

most important considerations”) (citing G. Heileman

Brewing, 873 F.2d at 999).

That gradual progression from all seven factors being

important, to three factors being “more important” in a

particular case, to those three factors being construed

as the “most important” in every case, led the district

court in this case to choose to analyze only those three

factors and footnote that it did not consider the Seventh

Circuit’s other four factors. In doing so, however, the

district court ignored other Seventh Circuit precedent

holding that “there is ‘no hard and fast requirement” that

all three of these factors must weigh in the plaintiff’s favor

in order to find that a likelihood of confusion exists,” and

that “the district court must give appropriate weight to

the factors that are particularly important based on the

facts of each case.” CAE, Inc. v. Clean Air Engineering,

Inc., 267 F.3d 660, 686-87 (7th Cir. 2001) (citing Ty, Inc.,

237 F.3d at 901-02).

Further questioning a court’s reliability on considering

only a subset of factors is the fact that other circuits have

stated that different sets of factors are most important,

despite all circuits supposedly applying the same legal

standard. See, e.g., Maker’s Mark Distillery v. Diageo

North America, 679 F.3d 410, 424 (6th Cir. 2012) (declaring

“the ‘most important Frisch factors’ are similarity and

strength of the mark”) (citing Gray v. Meijer, Inc., 295

F.3d 641, 646 (6th Cir. 2002); GoTo.com, Inc. v. Walt

Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000) (declaring

the “three most important” factors in the Internet context

as the similarity of the mark, the relatedness of the goods

and services, and the marketing channel used); Frehling

Enterprises v. Int’l Select Group, 192 F.3d 1330, 1335

(11th Cir. 1995) (declaring “the type of mark and the

evidence of actual confusion are the most important”);

A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 216 (3d Cir. 2000) (declaring “[t]he single

most important factor” as mark similarity); King of the

Mountain Sports v. Chrysler Corp., 185 F.3d 1084, 1091

(10th Cir. 1999) (declaring “the first and most important

factor” as similarity of the marks). As a result, despite

having to apply the same federal legal standard, courts

have increasingly and mechanically placed more weight

on different subsets of factors in each circuit, to the point

that some courts, like the lower courts here, consider only

that subset of factors and ignore the remainder.

By choosing not to consider four factors, the district

court also chose to ignore their corresponding evidence,

weighing, and ensuing balancing. Even if a court

considered those factors internally, without having any

explanation of its factual findings or application of the

law to those factors, there is no way to determine if legal

and/or factual errors were committed in choosing not to

analyze them.

These decisions permitting consideration of only a

subset of factors are simply wrong, as were the lower

courts in this case. Considering and analyzing all of the

relevant factors provides for a more consistent adherence

to the statutory standard, ensures more objective findings,

and avoids arbitrary and capricious conclusions. Allowing

a court to ignore relevant factors and related evidence

encourages incomplete legal analyses, enables subjective

decision-making, ensures differing and unpredictable

results, strips appellate courts of their ability to review,

and wastes judicial and party resources. It also weakens

trademarks and the benefits afforded by the registration

system.

II. Not Considering Relevant Factors and Ignoring

Evidence Is Legal Error

Rule 52 requires a trial court to make clear factual

findings to support its conclusions. Fed.R.Civ.P. 52; see

also 9 Wright Miller, Federal Practice & Procedure

§ 2574, at 690. While some circuits hold that the likelihood

of confusion finding is a factual question, regardless of

whether it is a question of fact or law, “legal principles

govern what evidence may, or must, be considered by the

District Court in reaching that conclusion, and also what

standards apply to its determination.” Sabinsa Corp. v.

Creative Compounds, LLC, 609 F.3d 175, 182 (3rd Cir.

2010) (quoting A & H Sportswear, Inc., 237 F.3d at 210).

Rule 52 cannot be satisfied by a statement of the ultimate

fact without the underlying factual foundations and legal

conclusions. And if they were not part of the process by

which the likelihood of confusion determination was made,

then the determination lacks foundation and violates Rule

52.

The Third Circuit reviewed a district court’s likelihood

of confusion determination de novo, and reversed,

because the court failed to explain how it weighed and

balanced all of the circuit’s relevant factors, as was said

to be required by Rule 52. Sabinsa Corp., 609 F.3d at

183 (citing Kos Pharmaceuticals v. Andrx Corp., 369

F.3d 700, 711-12 (3d Cir. 2004) (reversing district court’s

likelihood of confusion finding where it “had erred in its

analysis of mark similarity, overemphasized customer

sophistication, applied the wrong standards regarding

intent, and ignored several other relevant Lapp factors.”).

In Sabinsa, the Third Circuit noted that “while it is true

that a district court may find that ‘certain of the Lapp

factors are inapplicable or unhelpful in a particular case,’

the court must still ‘explain its choice not to employ those

factors.’” 609 F.3d at 183 (“[T]he District Court engaged in

detailed analysis of only three of the relevant Lapp factors

and failed to discuss much of the evidence presented by

Sabinsa… [T]he District Court failed to explain whether

it viewed these remaining factors as neutral or irrelevant

or how it weighed and balanced the combined factors.

Further, its reasoning concerning the three factors it

chose to analyze is flawed.”) (quoting A & H Sportswear,

Inc., 237 F.3d at 210). Where there is relevant evidence in

the record for a factor, failing to state any factual findings

or provide any explanation of how the law was applied to

that factor, even if given little weight, is an error of law

in breach of Rule 52.

III. The Circuit Split of Likelihood of Confusion

Findings: Clear Error or De Novo

There is a split among the circuit courts as to whether

a likelihood of confusion analysis is reviewed under the

“clearly erroneous” standard, as a question of fact, or de

novo, as a legal conclusion, or a combination. Trademark

owners need a predictable process to provide consistent

results, one which meets the single legal standard already

recognized by this Court.

On the one hand, the Second and Federal Circuits

review each factor’s analysis and the ultimate finding of a

likelihood of confusion de novo. Car-Freshner Corporation

v. American Covers, LLC, 980 F.3d 314, 327-328 (2d Cir.

2020) (knowingly applying de novo review after this

Court’s decision of Hana Financial); Stratus Networks,

Inc. v. UBTA-UBET Communications Inc., 955 F.3d 994,

998 (Fed. Cir. 2020) (reviewing de novo).

The Sixth Circuit reviews each factor’s analysis under

the clearly erroneous standard, but the ultimate finding of

a likelihood of confusion de novo. Champions Golf Club,

Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1116

(6th Cir. 1996) (reviewing de novo).

Conversely, the Fourth, Seventh, and Ninth Circuits

hold that the analysis of each factor and the ultimate

finding are questions of fact applying a clearly erroneous

standard of review. Swatch AG v. Beehive Wholesale, LLC,

739 F.3d 150, 154 (4th Cir. 2014); Scandia Down Corp. v.

Euroquilt, Inc., 772 F.2d 1423 (7th Cir. 1985) (applying

clearly erroneous rule “across the board” due to Rule

52(a) amendment in 1985); Levi Strauss Co. v. Blue Bell,

Inc., 778 F.2d 1352 (9th Cir. 1985) (en banc).

In the past, the Seventh Circuit has taken liberties

with the level of review as have others:

This court has held that likelihood of confusion

is a question of fact subject to the clearly

erroneous rule. Watkins Products, Inc. v.

Sunway Fruits Products, Inc., supra, 311

F.2d at 499. Nevertheless, to the extent the

determination is predicated upon the similarity

of the marks themselves, it is a mixed question

of law and fact with this court being in as good

a position as the trial judge to determine the

probability of confusion. Harold F. Ritchie v.

Chesebrough-Pond’s, Inc., 281 F.2d 755 (2d

Cir. 1960). See J. B. Williams Company, Inc.

v. LeConte Cosmetics, Inc., 523 F.2d 187 (9th

Cir. 1975).

Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366,

383 (7th Cir. 1976).

Meanwhile, the First, Third, Fifth, Eighth, Tenth,

and Eleventh Circuits follow the clearly erroneous

standard, but analyze the underlying legal principles

de novo. Boston Duck Tours, LP v. Super Duck Tours,

LLC, 531 F.3d 1, 15 (1st Cir. 2008) (findings on each factor

and ultimate conclusion are factual but underlying legal

error is reviewed de novo); Sabinsa Corp. v. Creative

Compounds, LLC, 609 F.3d 175 (3d Cir. 2010), cert.

denied, 131 S. Ct. 960 (2011); National Business Forms

& Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532

(5th Cir. 2012) (same); Sun Banks of Florida, Inc. v. Sun

Federal Savings & Loan Ass’n, 651 F.2d 311, 314-315 (5th

Cir. 1981) (applying “clearly erroneous” standard); Select

Comfort Corp. v. Baxter, 996 F.3d 925, 934 (8th Cir. 2021)

(same); General Motors Corp. v. Urban Gorilla, LLC, 500

F.3d 1222 (10th Cir. 2007) (affirmed denial of preliminary

injunction under the clearly erroneous standard).

The Third Circuit is similar to the foregoing, but

remands if the relevant factors are not “weighed and

balanced one against the other.” Compare A & H

Sportswear, Inc., 237 F.3d at 210 (“We review the District

Court’s factual determinations for clear error, but we give

plenary review to its legal conclusions.”) with Sabinsa

Corp. v. Creative Compounds, LLC, 609 F.3d 175, 182-83

(3d Cir. 2010) (“None of these factors is determinative in

the likelihood of confusion analysis and each factor must

be weighed and balanced one against the other.”) (quoting

and citing Checkpoint Sys. v. Check Point Software Tech,

269 F.3d 270, 280 (3d Cir. 2001)).

This Court has stated that a “Court of Appeals was

bound by the ‘clearly erroneous standard of Rule 52(a)”

in a trademark analysis, but noted that “a mistaken

impression of applicable legal principals” does not bind

a reviewing court to the clearly erroneous standard.

Inwood Laboratories v. Ives Laboratories, 456 U.S. 844,

855 (1982).

However, this Court has previously declined to resolve

the split of authority as to whether the likelihood of

confusion finding is a question of fact or a legal conclusion.

See, e.g., Elby’s Big Boy v. Frisch’s Restaurants, 459 U.S.

916, 916-17 (1982) (White, J., dissenting, citing examples

of conflicting circuit court decisions and noting he wanted

the conflict resolved); Euroquilt, Inc. v. Scandia Down

Corp., 475 U.S. 1147 (1986) (same); Enco Mfg. Co. v. Clamp

Mfg. Co., 493 U.S. 872 (1989) (same); L.A. Gear, Inc. v.

Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), cert.

denied, 510 U.S. 908 (1993).

In Hana Financial, Inc. v. Hana Bank, this Court did

not confront the issue directly, but indicated that consumer

perception is a factual issue.

Application of a test that relies upon an ordinary

consumer’s understanding of the impression

that a mark conveys falls comfortably within

the ken of a jury… See, e.g., United States v.

Gaudin, 515 U.S. 506, 512 [] (1995) (recognizing

that “‘delicate assessments of the inferences

a “reasonable [decisionmaker]” would draw

... [are] peculiarly one[s] for the trier of fact’”

(quoting TSC Industries, Inc. v. Northway,

Inc., 426 U.S. 438, 450 [] (1976); first alteration

in original)); id., at 450, n. 12 [] (observing that

the jury has a “unique competence in applying

the ‘reasonable man’ standard”); Hamling v.

United States, 418 U.S. 87, 104–105 [] (1974)

(emphasizing “the ability of the juror to

ascertain the sense of the ‘average person’ ”

by drawing upon “his own knowledge of the

views of the average person in the community

or vicinage from which he comes” and his

“knowledge of the propensities of a ‘reasonable’

person”); Railroad Co. v. Stout, 17 Wall. 657,

664 [] (1874) (“It is assumed that twelve men

know more of the common affairs of life than

does one man, [and] that they can draw wiser

and safer conclusions from admitted facts thus

occurring than can a single judge”).

574 U.S. 418, 422-23 (2015).

Separating factual from legal questions is difficult but

required by Rule 52(a). There is a split as to whether the

factor analyses and the ultimate finding of a likelihood of

confusion is a factual finding or legal conclusion. See also,

cf. Teva Pharma. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,

326 (2015) (“A conclusion that an issue is for the judge

does not indicate that Rule 52(a) is inapplicable.”). This

Court is uniquely and solely able to address and resolve

this, and thereby provide courts, practitioners, and, most

importantly, trademark owners a predictable process to

provide consistent results, one which meets the single

federal legal standard.

CONCLUSION

In this trademark case, three sequential decisions

analyzed differing combinations of factors and evidence,

applying different legal standards. Three different

applications of the law to the facts resulted in three

different likelihood of confusion analyses. Courts cannot

meet the same statutory legal standard if they can choose

which factors support their opinion, many knowing that

their factor analyses and ultimate finding of a likelihood

of confusion will be given great deference and reviewed

only for clear error – errors which can include no analysis.

As evidenced by the inconsistent analyses in this case,

the problem has worsened since this Court was asked

to reconcile this long ago. Trademark decisions should

explain each factor’s analysis (or why a factor requires

no analysis) and the balancing of those factors. That

way, reviewing courts and practitioners can understand

the reasoning. This is the only court which can correct

these timeworn inconsistencies. For these reasons, it is

respectfully requested that certiorari be granted.

Respectfully submitted,

William P. Atkins

Counsel of Record

Pillsbury Winthrop Shaw

Pittman LLP

1650 Tysons Boulevard, 14th Floor

McLean, VA 22102

(703) 770-7900

william.atkins@pillsburylaw.com

Attorneys for Petitioners

APPENDIX

TABLE OF APPENDICES

Page

APPENDIX A — OPINION OF THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT, FILED

SEPTEMBER 12, 2023 . . . . . . . . . . . . . . . . . . . . . . . 1a

APPENDIX B — ORDER AND

MEMORANDUM OPINION OF

THE UNITED STATES DISTRICT

COURT FOR THE NORTHERN

DISTRICT OF ILLINOIS, EASTERN

DIVISION, FILED MAY 25, 2022 . . . . . . . . . . . . . 39a

APPENDIX C — REPORT AND

RECOMMENDATION OF THE

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT

OF ILLINOIS, EASTERN DIVISION,

FILED APRIL 8, 2022 . . . . . . . . . . . . . . . . . . . . . . . 60a

APPENDIX D — ORDER OF THE UNITED

STATES COURT OF APPEALS FOR

THE SEVENTH CIRCUIT, FILED

OCTOBER 11, 2023 . . . . . . . . . . . . . . . . . . . . . . . . . 135a

APPENDIX E — 15 U.S.C. § 1114 . . . . . . . . . . . . . . 137a

APPENDIX Appendix

A — OPINION

OF THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT,

FILED SEPTEMBER 12, 2023

IN THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

No. 22-1950

GRUBHUB INC. and TAKEAWAY.COM

CENTRAL CORE B.V.,

Plaintiffs-Appellees,

RELISH LABS LLC and THE KROGER CO.,

Defendants-Appellants.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 1:21-cv-5312 — Charles R. Norgle, Judge.

Argued November 30, 2022 – Decided September 12, 2023

Before Wood, Jackson-A kiwumi, and Lee, Circuit

Judges.

Lee, Circuit Judge. Grubhub Inc. and Takeaway.com

Central Core B.V. (collectively, “Grubhub”) brought this

suit seeking a declaratory judgment that their logo does

not infringe the trademarks of Relish Labs LLC and The

Appendix A

Kroger Company (collectively, “Home Chef”). Roughly one

month later, Home Chef sought a preliminary injunction to

enjoin Grubhub from using the logo. A magistrate judge

recommended granting the injunction, but, upon review

of Grubhub’s objections, the district court rejected that

recommendation and denied the injunction. Because we

cannot say on this record that the district court clearly

erred in concluding that Home Chef failed to show that

consumers are likely to confuse its marks with Grubhub’s

logo when purchasing Home Chef’s products, we affirm.

I. BACKGROUND

A. Home Chef

Since its inception in the basement of a Chicago

apartment in 2013, Home Chef has curated meals and

food products for its customers. According to its owner,

Home Chef’s business has been “creating and delivering

meal kits for customers, including fresh, pre-portioned

ingredients and easy-to-follow recipes, to help customers

prepare and enjoy meals anyone can cook.” In 2018,

Home Chef merged with The Kroger Co. (“Kroger”).

Kroger operates over 2,700 supermarkets under at least

two dozen store names throughout the United States.

The merger with Kroger allowed Home Chef to expand

the availability of its meal kits and products nationwide.

It delivers them directly to customers and offers them

for sale in Kroger stores, through Kroger’s website and

mobile app, as well as through food delivery services such

as DoorDash and Instacart. Today, Home Chef offers more

than 500 products across a variety of categories including

Appendix A

meal kits, heat-and-eat meals, ready-to-eat products, and

seasonal meals.

In 2014, Home Chef began using its “HC Home Mark,”

which is protected by five federal trademark registrations:

three for the HC Home Mark, alone, and two for the HC

Home Mark accompanied with the “HOME CHEF” trade

name (the “Home Chef Home Logo”). None of Home Chef’s

marks are limited as to color.

Home Chef has spent more than $450 million on

marketing and advertising using its marks to promote its

products as convenient, low-cost alternatives to restaurant

takeout. In October 2021, Home Chef reached $1 billion

in annual sales.

B. Grubhub

Grubhub is a leading online food-ordering and delivery

marketplace. Founded in 2004, Grubhub has connected

more than 32 million diners with food from over 300,000

restaurants across the United States. In 2020 alone,

Grubhub provided nearly $9 billion in gross food sales to

these restaurants, processing more than 745,000 daily

Appendix A

orders through its website and mobile app. Its services

include, for example, on-demand order management and

dispatching, procurement and development of restaurantdedicated products, and onboarding delivery couriers.

Grubhub owns numerous trademark registrations

covering the GRUBHUB name and stylized variations.

On June 15, 2 021, Gr ubhub was acqui red by

Netherlands-based Just Eat Takeaway.com (“JET”).

JET owns many food-delivery brands worldwide and

combines its “JET House Mark” with local brand names

when conducting business in various countries. JET has

used the JET House Mark in connection with its business

since 2014.

In July 2020, roughly one year prior to finalizing

its acquisition of Grubhub, JET filed an international

trademark application for the JET House Mark,

designating the United States as a country where it

sought protection. In early 2021, the USPTO trademark

examiner preliminarily rejected JET’s application in a

non-final office action, finding, among other things, that

the JET House Mark is “highly similar” and “confusingly

similar” to the HC Home Mark and Home Chef Home

Logo. JET did not respond to the merits of the non-final

office action, and in August 2021, affirmatively withdrew

Appendix A

its U.S. trademark application. The application was

deemed abandoned.

As part of its acquisition of Grubhub, JET adopted

the “Grubhub House Logo,” which combines the wellknown GRUBHUB word mark with the JET House

Mark. Grubhub also began using the “Seamless House

Logo,” which combines the JET House Mark with the

SEAMLESS and GRUBHUB word marks.1

Like Home Chef, Grubhub has made significant

investments in its branding. Grubhub first introduced

the Grubhub House Logo at Chicago’s Lollapalooza music

festival in July 2021, with a broader rollout one month later.

Grubhub has invested millions of dollars in rebranding its

print and electronic materials across its entire business

platform, and tens of thousands of its restaurant partners

use the Grubhub House Logo. In the time between the

July 2021 launch of the logo and Home Chef’s motion for

preliminary injunction, Grubhub processed over 72 million

orders under its new logo.

1. Seamless is a subsidiary of Grubhub. According to Grubhub,

the Seamless brand is being phased out, but as of today, it still exists.

Appendix A

C. District Court Proceedings

After receiving a cease-and-desist letter from Home

Chef demanding that Grubhub stop using any form of the

JET House Mark, Grubhub brought suit for a declaratory

judgment that the Grubhub House Logo did not infringe

any of Home Chef’s marks. Roughly one month later, in

early November 2021, Home Chef responded with a motion

for a preliminary injunction. The case was referred to a

magistrate judge who held a telephonic hearing on Home

Chef’s motion. Although no live testimony was taken, the

judge questioned the parties and heard arguments for

nearly three hours. The magistrate judge subsequently

issued his Report and Recommendation (the “R&R”),

recommending that the district court grant Home Chef

preliminary injunctive relief.

Grubhub timely filed its objections to the R&R. After

reviewing the contested portions of the R&R de novo, see

28 U.S.C. § 636(b)(1), the district court sustained each

of Grubhub’s objections, rejected the magistrate judge’s

recommendation, and denied Home Chef’s preliminary

injunction motion. Home Chef appeals.

II. LEGAL STANDARD

A preliminary injunction may be granted where a

movant shows that it is likely to succeed on the merits

of its claims and that traditional legal remedies would

be inadequate, such that it would suffer irreparable

harm without injunctive relief. Life Spine, Inc. v. Aegis

Spine, Inc., 8 F.4th 531, 539 (7th Cir. 2021). A likelihood

Appendix A

of success on the merits must exceed “a mere possibility

of success.” Id. at 540 (quoting Ill. Republican Party v.

Pritzker, 973 F.3d 760, 762 (7th Cir. 2020)). As we made

clear in Pritzker, “an applicant for preliminary relief bears

a significant burden, even though the Court recognizes

that, at such a preliminary stage, the applicant need not

show that it definitely will win the case.” 973 F.3d at 763.

Thus, while a movant need not prove its claims at this stage

by a preponderance of the evidence, it must demonstrate

at a minimum how it proposes to prove the key elements

of its case. Id. In the context of trademark law, once the

movant establishes a likelihood of success on the merits,

it is statutorily entitled to a rebuttable presumption of

irreparable harm. 15 U.S.C. § 1116(a).

Upon a showing of these threshold issues, the court

weighs the harm of denying an injunction to the movant

against the harm of granting an injunction to the

nonmovant. This is done using a sliding scale—the greater

the movant’s likelihood of success on the merits, the less

the harms need be in its favor. Life Spine, 8 F.4th at 539.

The court also considers the public interest. Id.

On appeal, we review a district court’s decision

to grant or deny a preliminary injunction for abuse of

discretion. Id. Its legal conclusions are reviewed de novo,

and its factual findings for clear error. Id. Absent any

such errors, the district court’s decision is afforded “great

deference.” Id. (quoting Speech First, Inc. v. Killeen, 968

F.3d 628, 638 (7th Cir. 2020)).

Appendix A

III. DISCUSSION

A. Trademark Infringement Generally

The purpose of trademark law is twofold. Most

fundamentally, it protects consumers, ensuring they can

be confident in making purchasing decisions based on

marks they know and trust. See Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 782 n.15, 112 S. Ct. 2753, 120 L.

Ed. 2d 615 (1992) (Stevens, J., concurring). But trademark

law also protects trademark owners who have spent the

time, energy, and resources in presenting a product or

service, ensuring that those investments are protected

from misappropriation by “pirates and cheats.” Id.; see

Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960,

964 (6th Cir. 1987).

The ultimate question underly ing trademark

infringement is whether consumers are likely to be

confused about the origin of products or services based

on the promotion of those products or services using a

particular mark. See Hesmer Foods, Inc. v. Campbell

Soup Co., 346 F.2d 356, 359 (7th Cir. 1965); see also

New W. Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1201

(9th Cir. 1979). Accordingly, to succeed on a trademark

infringement claim, the claimant must show that it owns a

valid, protectable trademark and that there is a likelihood

of confusion caused by the alleged infringer’s use of the

disputed mark. SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d

589, 595 (7th Cir. 2019); see 15 U.S.C. § 1114(1).

We recognize two theories of confusion: forward

confusion and reverse confusion. Forward confusion—

Appendix A

long recog nized in trademark law— occurs when

consumers mistakenly believe that a junior (or newer)

user’s products or services are from the same source or

somehow connected to a senior (or prior) user’s products

or services. Sands, Taylor & Wood Co. v. Quaker Oats

Co., 978 F.2d 947, 957 (7th Cir. 1992) (“Quaker Oats”).

A classic example of forward confusion lies where a

consumer mistakenly believes that a counterfeit purse she

buys is from her favorite Parisian fashion house because

the fabric or buckle of the purse features the well-known

mark of that fashion house. In such a scenario, the senior

user (the Parisian fashion house) is injured because the

junior user (the counterfeiter) capitalizes on the good will

and established reputation of the fashion house to palm

off a cheap and inauthentic product.

Reverse confusion is a newer theory that we first

recognized in Quaker Oats. 978 F.2d at 957-58; contra

Westward Coach Mfg. Co. v. Ford Motor Co., 388 F.2d

627, 634-35 (7th Cir. 1968) (holding reverse confusion

not actionable under Indiana law). Under this theory,

confusion occurs when “a large junior user saturates the

market with a trademark similar or identical to that of

a smaller, senior user,” thereby overwhelming the senior

user. Quaker Oats, 978 F.2d at 957. As a result, consumers

mistakenly believe that the products or services of the

senior user are actually those of the junior user. Id. Going

back to our earlier hypothetical, consider the following: a

local fashion boutique sells purses and other accessories,

featuring the initials of the store owner, Lewis Vaughn.

The boutique sells the bags for many years, and the local

clientele understands the mark to be associated with

the boutique. But then, a dominant, well-known Parisian

10a

Appendix A

fashion house adopts a confusingly similar logo using the

same initials and begins advertising and selling bags

under this mark, inundating the local market. Even though

the Parisian fashion house is not intentionally capitalizing

on the good will and established reputation of the local

boutique, the boutique is nevertheless harmed because

its customers now mistakenly believe it has somehow

become connected to or affiliated with the fashion house.

As a result, the boutique (the senior user) “loses the value

of its trademark—its product identity, corporate identity,

control over its goodwill and reputation, and ability to

move into new markets.” Id. (quoting Ameritech, Inc.,

811 F.2d at 964).

Home Chef argues that there is a likelihood of

confusion between its marks and Grubhub’s logo under

both theories. The magistrate judge recommended

granting the injunction based on reverse confusion,

acknowledging that the results were mixed with respect

to Home Chef’s forward confusion theory. But the district

court determined that there was an insufficient showing

of a likelihood of confusion under both theories and denied

the injunction.

Whether consumers are likely to be confused about

the origin of an alleged infringer’s products or services

is a question of fact. Rust Env’t & Infrastructure, Inc. v.

Teunissen, 131 F.3d 1210, 1216 (7th Cir. 1997). Accordingly,

our review is deferential, evaluating the district court’s

conclusions for clear error. Id.; see Ty, Inc. v. Jones Grp.,

Inc., 237 F.3d 891, 898 (7th Cir. 2001). A finding of fact

is clearly erroneous only if, based on the evidence as a

11a

Appendix A

whole, we are “left with the definite and firm conviction

that a mistake has been committed.” Rust, 131 F.3d at

1216 (quotation marks and citation omitted). If the district

court’s “account of the evidence is plausible in light of the

record viewed in its entirety, the court of appeals may not

reverse it even though convinced that had it been sitting

as the trier of fact, it would have weighed the evidence

differently.” Id. (quotation marks and citation omitted).

With this framework in mind, we move to the merits.

B. Accused Mark

There is no dispute that Home Chef owns valid,

protectable trademarks in the HC Home Mark and

Home Chef Home Logo—the first element of a claim for

trademark infringement. Accordingly, the likelihood of

success of Home Chef’s infringement claims depends

entirely on whether there is a likelihood of confusion

between its marks and the accused mark.

But before we can reach the likelihood of confusion

analysis, we must resolve a fundamental dispute between

the parties: which of Grubhub’s marks is the accused mark.

Home Chef purports to accuse the JET House Mark. But

Grubhub submits that, because its use of the JET House

Mark is always in combination with the GRUBHUB brand

name, the accused mark is the Grubhub House Logo.

The district court agreed with Grubhub, and it did

not commit clear error in doing so. Although Home Chef

focuses its analysis on the JET House Mark, Grubhub has

12a

Appendix A

not used this mark absent the GRUBHUB brand name

within the United States. 2 Home Chef’s arguments to

the contrary are unconvincing. For example, Home Chef

points to tailored screenshots of Grubhub’s website and

mobile app where the JET House Mark appears to be

used alone. But Home Chef fails to acknowledge that, even

if the mark does not appear with the GRUBHUB brand

name in these instances, GRUBHUB is nevertheless

prominently displayed elsewhere on the website and

mobile app’s landing page. Trademark law does not protect

“those buyers who do not buy on the basis of marks and

who choose to buy the goods or services at issue on the

basis of some other criteria.” 4 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition §

23:94 (5th ed. 2023) (“McCarthy”). 3 Accordingly, in the

instances Home Chef cites, where a consumer has sought

out Grubhub’s services by visiting www.grubhub.com or

2. We acknowledge a single instance in the record where

Grubhub used the JET House Mark without connection to the

GRUBHUB brand name: a November 1, 2021, screenshot of the

Seamless mobile app icon, which combined the JET House Mark

with only the SEAMLESS brand name (i.e., it did not include the

“Powered by GRUBHUB” tag as used in the Seamless House

Logo). But there is insufficient evidence in the record to support

a likelihood of confusion finding for this use. And Home Chef does

not meaningfully engage with this use other than bringing it to the

Court’s attention. Accordingly, as the party charging infringement,

Home Chef did not meet its burden as to this mark. See KP

Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.

111, 117-18, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004).

3. Because McCarthy uses consecutive section numbering

across volumes, subsequent citations to McCarthy herein are

designated by section number only.

13a

Appendix A

by tapping the mobile app icon marked as “GRUBHUB,”

it is difficult to see how, in this context, she could be

confused into thinking that she was purchasing Home

Chef-affiliated products solely based on the appearance of

the JET House Mark on the platform. That consumer is

not choosing Grubhub’s services based on its mark, rather

her decision to use Grubhub was already made before

visiting the website or app. Thus, we are not convinced

that this evidence supports a finding that the accused

mark is the JET House Mark and agree with the district

court’s determination that the accused mark at issue is

the Grubhub House Logo.4 And so, we are left with:

C. Likelihood of Confusion

Proceeding to the likelihood of confusion analysis, “we

ask whether consumers who might use either product [or

service] would likely attribute them to a single source.”

4. The Seamless House Logo is subject to the same likelihood of

confu-sion analysis because that mark also includes the GRUBHUB

brand name.

14a

Appendix A

Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 425 (7th

Cir. 2019). To answer this question, we consider seven

factors, none of which is dispositive:

(1) similarity of the marks in appearance and

suggestion;

(2) similarity of the products;

(3) the area and manner of concurrent use;

(4) the degree of care likely to be exercised by

consumers;

(5) the strength of the senior user’s mark;

(6) existence of actual confusion; and

(7) the intent of the defendant to “palm off” its

product as that of another.

See id. “Courts may assign varying weight to each of the

factors depending on the facts presented, though usually

the similarity of the marks, the defendant’s intent, and

actual confusion are particularly important.” AutoZone,

Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008). Home Chef

disputes the district court’s determination as to these

three “particularly important” factors, each of which

the district court found to weigh against a finding of a

likelihood of confusion. See id.

Although Home Chef has advanced both forward and

reverse theories of confusion, we focus our attention on

15a

Appendix A

the latter. Not only is reverse confusion the dominant

theory the parties present to us, but we agree with the

district court that Home Chef did not make a particularly

strong showing that its forward confusion theory would

prevail. Based on the current record, we do not see how a

consumer interacting with the Grubhub House Logo could

reasonably believe that she was engaging with Home Chef,

particularly where the accused mark prominently features

Grubhub’s own brand name. 5 Sullivan v. CBS Corp., 385

F.3d 772, 778 (7th Cir. 2004) (“Although the marks are

similar, the prominent display of different names on the

marks reduces any likelihood of confusion.”); Packman

v. Chi. Trib. Co., 267 F.3d 628, 645 (7th Cir. 2001) (“All

of [accused infringer’s] products ... prominently display

the well-known [mark], providing a strong indication

that there is no likelihood of confusion.”); Ziebart

International Corp. v. After Market Associates, Inc. Inc.,

802 F.2d 220, 227 (7th Cir. 1986) (collecting cases holding

that the “[p]rominent display of different names on the

marks ... reduce[s] the likelihood of confusion”); Pignons

S.A. de Mecanique de Precision v. Polaroid Corp., 657

F.2d 482, 487 (1st Cir. 1981) (same).

Similarity of the Marks

Focusing then on Home Chef’s claim of reverse

confusion, the first factor in the likelihood of confusion

5. We emphasize that this conclusion is based on the record

before us at this preliminary stage. We do not intend to suggest

that Home Chef’s forward confusion theory is necessarily futile to

the extent that it can be supported with sufficient evidence if and

when the case proceeds.

16a

Appendix A

analysis looks at the similarity between the marks. When

evaluating a mark, we must keep in mind that “[t]he

commercial impression of a trade-mark is derived from it

as a whole, not from its elements separated and considered

in detail.” Estate of P.D. Beckwith, Inc. v. Comm’r of

Patents, 252 U.S. 538, 545-46, 40 S. Ct. 414, 64 L. Ed.

705, 1920 Dec. Comm’r Pat. 471 (1920). Accordingly, to

determine whether two marks are similar in appearance

and suggestion, we “compare the marks in light of what

happens in the marketplace and not merely by looking at

the two marks side-by-side.” AutoZone, 543 F.3d at 930

(quotation marks and citations omitted); see Meridian

Mut. Ins. Co. v. Meridian Ins. Grp., Inc., 128 F.3d 1111,

1115 (7th Cir. 1997) (“it is inappropriate to focus on minor

stylistic differences to determine if confusion is likely”

when the marks are not usually encountered together). To

that end, “the test is not whether the public would confuse

the marks, but whether the viewer of [a] mark would be

likely to associate the product or service with which it is

connected with the source of products or services with

which [another] mark is connected.” James Burrough Ltd.

v. Sign of the Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.

1976) (emphasis added).

The district court gave little weight to the USPTO’s

determination and found that the marks were not

sufficiently similar, concluding that this factor did not

support a likelihood of confusion finding. Home Chef

argues that the district court only reached this conclusion

after “painstakingly dissect[ing] the marks” in a side-byside comparison, which is contrary to the applicable law.

This argument, however, suffers from several flaws.

17a

Appendix A

First, Home Chef is correct that a court must do more

than merely compare the competing marks side-by-side;

rather, it must consider how a potential consumer would

view them in the marketplace. See Ty, 237 F.3d at 898.

But the district court did this. In addition to comparing

the various attributes of the two marks, the court also

examined how consumers would consider them as a whole,

finding that because the Grubhub House Logo combined

the house design with the strong GRUBHUB word mark,

the word mark became the more salient portion of the

logo, thereby differentiating the accused mark from Home

Chef’s marks. See Ty, Inc., 237 F.3d at 898 (“[I]f one word

or feature of a composite trademark is the salient portion

of the mark, it may be given greater weight than the

surrounding elements.”) (citation omitted). In other words,

it found Grubhub’s use of its brand name in the Grubhub

House Logo more likely to mitigate reverse confusion

than to aggravate it, particularly where both parties have

well-established, highly recognizable brands.

Nevertheless, Home Chef contends that the district

court, when assessing its reverse confusion theory, placed

too much weight on the presence of the GRUBHUB word

mark in the Grubhub House Logo. Generally, the analysis

of the similarity factor is no different under reverse or

forward confusion; under either theory a court may assess

the similarity of the sound, sight, or meaning of the marks.

See Henri’s Food Prods. Co., Inc. v. Kraft, Inc., 717 F.2d

352, 356 (7th Cir. 1983); see generally McCarthy § 23:10.

But, as the Third Circuit has recognized, “in the reverse

confusion context, the presence of [brand names] must

obviously be treated differently than in the [forward]

18a

Appendix A

confusion context.” A & H Sportswear, 237 F.3d at 229-30.

This makes sense. Home Chef’s reverse confusion theory

is that, when consumers come across products or services

bearing its HC Home Mark (which, as you may recall,

does not include the Home Chef brand name), they will

mistakenly believe that the products or services belong

to Grubhub due to the strength of the GRUBHUB word

mark. Thus, while the presence of the Grubhub name

might alleviate forward confusion (that is, believing a

Grubhub product is one made by Home Chef), it plays a

lesser role in reverse confusion when the consumer would

not see Grubhub’s name when encountering a Home Chef

product.

This is not the first time that we have encountered an

argument by a trademark claimant that the appearance

of an accused infringer’s well-known brand name does

not allay the confusion caused by otherwise similar

marks. But, in those cases, the junior user’s accused

marks and products were “virtually identical” to those

of the senior user. Quaker Oats, 978 F.2d at 959. For

example, in Quaker Oats, the large, junior user began

selling an isotonic beverage with the tagline “Gatorade

is Thirst Aid.” Id. at 949-51. The senior user—a small,

Vermont-based company—had three federal trademark

registrations for “THIRST-AID,” which it had also

used to market an isotonic beverage. Id. Under those

circumstances, we concluded that it was “precisely the

strong association between Gatorade and ‘Thirst Aid’

created by Quaker’s [Gatorade] ads that [was] likely to

create confusion.” Id. at 960.

19a

Appendix A

Similarly, in International Kennel Club of Chicago

v. Mighty Star, Inc., 846 F.2d 1079 (7th Cir. 1988), we

held that the accused infringer’s use of its brand name,

“24K Polar Puff,” along with the phrase “International

Kennel Club” was a “smoke screen” because the phrase

was indistinguishable from the senior user’s name,

“International Kennel Club of Chicago.” Id. at 1088. And,

in A.J. Canfield Co. v. Vess Beverages, Inc., we affirmed the

district court’s entry of a preliminary injunction against

an accused infringer that used its brand name “VESS”

in conjunction with “Chocolate Fudge” to sell carbonated

diet chocolate sodas. 612 F. Supp. 1081, 1091 (N.D. Ill.

1985), aff’d, 796 F.2d 903 (7th Cir. 1986). There, the senior

user had trademark protection for the use of “Chocolate

Fudge,” which it too used to market chocolate-flavored soft

drinks. Id. at 1083. The district court determined that the

infringer’s use of its brand name was not a defense because

“the use of another’s trademark constitutes infringement

with or without the use of the infringer’s housemark.” Id.

at 1091.

On the other end of the spectrum sits Ziebart, where

we determined that there was no likelihood of confusion

between the marks of two competitors who both sold

vehicular rustproofing compounds under marks each

featuring a depiction of a knight’s helmet. 802 F.2d at

224. In reaching this conclusion, we observed that the

marks used different colors, but focused principally on

the “[p]rominent display” of each party’s brand name on

its respective mark. Id., 802 F.2d at 226-27.

20a

Appendix A

This case falls somewhere in the middle. On the one

hand, unlike Quaker Oats, Mighty Star, and A.J. Canfield,

this case involves more than mere word marks, and the

house design in the Grubhub House Logo is neither

“virtually identical” to the Home Chef house design

nor used to promote “virtually identical” products and

services. That is, Grubhub did not take the exact HC Home

Mark and simply add “GRUBHUB” underneath it, and it

does not use its mark to sell meal kits, heat-and-eat meals,

ready-to-eat products, and seasonal meals, like Home

Chef. But this case is not directly analogous to Ziebart

either, because the two marks—though not identical—are

conceptually similar, and Home Chef does not always use

the Home Chef brand name with its mark. The magistrate

judge found this case to be closer to Quaker Oats, while

the district court found it to be closer to Ziebart. Short of

attorney argument, evidence in the record that Grubhub

has or will so overwhelm the market such that consumers

will begin associating the HC Home Mark with Grubhub

is sparse, at best. Because the available facts are in rough

equipoise, we cannot say that the district court clearly

erred in determining that Home Chef failed to show that

the similarity of the marks favored a finding of a likelihood

of confusion.

Second, Home Chef also faults the district court for not

giving substantial weight to the USPTO’s determination.

But the district court did not clearly err in according it little

weight. The non-final office action was only a preliminary

determination as to the registrability of the JET House

Mark. It says little about the similarity of the Grubhub

House Logo and Home Chef’s marks. Moreover, there

was no conclusive determination as to the registrability

21a

Appendix A

of the mark. JET chose to abandon its application shortly

after the USPTO issued its office action. Home Chef

points to no case law, and we are aware of none, that

imposes an adverse inference or presumption of similarity

where a party voluntarily abandons its trademark

application following an unfavorable preliminary USPTO

determination. And, as several of our sister circuits have

noted, USPTO determinations are often of limited value

in the infringement analysis when they lack the benefit

of the fuller record developed before the district court,

such as evidence about the way marks are actually used in

the marketplace. See Progressive Distrib. Servs., Inc. v.

United Parcel Serv., Inc., 856 F.3d 416, 427 (6th Cir. 2017);

A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 220-21 (3d Cir. 2000); Carter-Wallace, Inc.

v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970).

This is not to say that USPTO preliminary determinations

are never useful, but the district court’s decision to accord

it little weight in this case was not clearly erroneous.

Strength of Grubhub’s Mark

The parties do not separately brief the strength of

Grubhub’s mark on appeal because Grubhub did not object

to the magistrate judge’s conclusion that the strengthof-the-mark factor supported a likelihood of reverse

confusion. As a general rule, in such a case, we typically

would not review that conclusion on appeal. See Johnson

v. Zema Sys. Corp., 170 F.3d 734, 739 (7th Cir. 1999) (“If

a party objects [to an R&R] in the district court on some

issues and not others, he waives appellate review of the

issues to which he has not objected.”). But because Home

Chef has discussed the strength of the GRUBHUB word

22a

Appendix A

mark at all levels of review—albeit not expressly in

connection with this particular factor—we conclude that

addressing the issue “cause[s] no one ... any harm of which

the law ought to take note.” Allen v. City of Chicago, 865

F.3d 936, 944 (7th Cir. 2017) (citation omitted). This is

especially true given that the strength-of-the-mark factor

is so intricately connected to the similarity-of-marks

factor, as noted above.

This factor requires consideration of both the

commercial and conceptual strength of the mark. See

McCarthy § 11:80. 6 In Quaker Oats, we stated that,

in a reverse confusion case, “it may make more sense

to consider the strength of the mark in terms of its

association with the junior user’s goods.” 978 F.2d at

959. Put another way, we do not consider the strength

of the junior user’s mark in isolation, but in its ability

to overpower the senior user’s mark. See McCarthy §

23:10. Indeed, implicit in Home Chef’s arguments is that

the Grubhub House Logo—which uses the GRUBHUB

word mark—is stronger than its marks; that Grubhub’s

saturation of (or ability to saturate) the market with its

logo is likely to lead consumers to believe the HC Home

Mark connotes a Grubhub service.

Because a consumer who first encounters a particular

mark used in connection with a set of goods is likely to

continue associating that mark with those goods, see A &

6. Because the parties focused on the economic and marketing

strength of the marks—i.e., the commercial strength—when briefing

this factor in the district court, so will we. See AutoZone, 543 F.3d

at 933 (7th Cir. 2008) (“The strength of a mark usually corresponds

to its economic and marketing strength.”) (citation omitted).

23a

Appendix A

H Sportswear, 237 F.3d at 230, the relative prevalence of

those marks in the marketplace typically will determine

whether the confusion a consumer experiences is forward

or reverse. Id. As the Third Circuit aptly explained:

[I]f one manufacturer—junior or senior—

expends tremendous sums in advertising while

the other does not, consumers will be more

likely to encounter the heavily advertised mark

first. Where the greater advertising originates

from the senior user, we are more likely to

see a case of direct confusion; if the greater

advertising originates from the junior user,

reverse confusion is more likely.

Id. In a prototypical reverse confusion case, a senior user

with a commercially weaker mark is pitted against a junior

user with a far stronger mark. Accordingly, instead of

considering the commercial strength of the junior’s mark

in isolation, we look to its relative strength as compared to

that of the senior, “because it is the strength of the larger,

junior user’s mark which results in reverse confusion.” Id.

at 231 (quoting Com. Nat’l Ins. Servs., Inc. v. Com. Ins.

Agency, Inc., 214 F.3d 432, 444 (3d Cir. 2000)).

This is not such a prototypical case. Home Chef has

spent over $450 million on advertising and has sold billions

of dollars of products under its marks, which it has used

to market products to millions of customers nationwide

since 2014. It has received significant press coverage and

accolades for its top customer service, and in 2021, Home

Chef reached $1 billion in annual sales. It is hard to see

how the HC Home Mark (let alone the HC Home Logo

24a

Appendix A

which prominently features the HOME CHEF brand

name) is at risk of being so overwhelmed by Grubhub’s

use of the Grubhub House Logo that consumers are likely

to begin associating Home Chef’s products with Grubhub.

Home Chef’s own arguments as to the notable strength

of its marks to support its forward confusion theory only

underscore this point.

To be sure, Grubhub is not a weak junior user.

Grubhub too has invested millions of dollars in its Grubhub

House Logo and reached $1.8 billion in sales revenue in

2020. As such, Grubhub is in a position where it could

overwhelm a senior user’s mark. But it is not our role

to weigh the evidence anew. Based on this record, we

are not convinced that the district court clearly erred

when finding that Home Chef failed to present sufficient

evidence that consumers do or will believe that products

sold using a mark in which Home Chef has invested

hundreds of millions of advertising dollars are associated

with Grubhub. See, e.g., Procter & Gamble Co. v. ColgatePalmolive Co., No. 96 Civ. 9123 (RPP), 1998 U.S. Dist.

LEXIS 17773, 1998 WL 788802, at *65 (S.D.N.Y. Nov. 9,

1998), aff’d, 199 F.3d 74 (2d Cir. 1999) (“Given the size,

financial strength and presence of P & G in the region,

the relative spending levels for CREST and COLGATE

advertising in China, the high consumer awareness

of the CREST brand and of P & G generally, and the

minimal evidence of direct confusion between CREST

and COLGATE, reverse confusion also is not found.”).7

7. Home Chef argues that this conclusion will encourage

large junior users to expropriate small senior users’ lesser known

trademarks. While this is a reasonable point, evaluation of such an

25a

Appendix A

Actual Confusion

Evidence of actual confusion, which can be presented

as either direct or survey evidence, is not essential to a

finding of a likelihood of confusion, but where present it

“is entitled to substantial weight.” CAE, Inc. v. Clean Air

Eng’g, Inc., 267 F.3d 660, 685 (7th Cir. 2001). That said,

depending on the factual circumstances, isolated incidents

of actual confusion may be disregarded as de minimis.

Packman, 267 F.3d at 645 (7th Cir. 2001) (collecting cases).

As the factfinder at the preliminary injunction stage, it is

within the district court’s purview to weigh the evidence

submitted by the parties on this issue. We may not reverse

so long as “the district court’s account of the evidence

is plausible in light of the record viewed in its entirety.”

Rust, 131 F.3d at 1216.

Home Chef relies on two instances of actual confusion.

First, it points to an anonymous tweet featuring a sideby-side screenshot of the parties’ mobile app icons that

reads: “So uh why did grubhub make their app icon look

like a stylized orange version of home chef..? Even the

utensils are almost exactly the same..” We agree with

the district court that this evidence carries little, if any,

weight. As an initial matter, Home Chef does not allege

that the author was a Home Chef or Grubhub customer.

argument is more appropriately addressed when considering the

intent factor in the likelihood of confusion analysis. And, as we will

see below, there is little evidence that Grubhub sought to divert any

business from Home Chef or otherwise overwhelm Home Chef’s

position in the marketplace through its adoption of the Grubhub

House Logo.

26a

Appendix A

See Packman, 267 F.3d at 645 (instances of confusion that

are not attributable to the applicable consumer group are

entitled to less weight); CAE, Inc., 267 F.3d at 686 (same).

But more fundamentally, as the district court observed,

the author of the tweet was not actually confused by the

marks. Recognizing that the corporations were distinct,

the author merely noted the bare similarities between

the two marks. This does little to demonstrate actual

confusion.

Home Chef also cites to a Facebook message it

received from one of its customers. The customer asked:

“Did you and Grub Hub merge or come to some sort of

mutual deal, because I had to take a double take today

when my Grub Hub app updated,” sharing a screenshot

of the Grubhub and Home Chef mobile apps:

This message certainly warrants more scrutiny than

the previous tweet. But the district court’s decision not to

give it significant weight was not unreasonable.

First, as the district court noted, the Facebook

message represented just one of millions of customers

who would have been exposed to Grubhub’s new logo

27a

Appendix A

following its expansive rebranding in 2021. Second, a

customer inquiry is markedly different from evidence that

a customer had ordered a meal from Home Chef thinking

it was Grubhub and, on its own, falls short of proving

actual confusion. See McCarthy § 23:16 (“[W]hile enquiry

evidence is admissible and relevant, standing alone with no

other evidence it is insufficient proof of actual confusion.”);

see also Restatement (Third) of Unfair Competition § 23

(1995) (“Evidence of inquiries by customers as to whether

the plaintiff and the defendant are associated ... may not

establish the existence of actual confusion if the nature

of the inquiries indicates that consumers perceive a

difference between the designations and are skeptical of

the existence of a connection between the users.”).

On the other side of the ledger, the district court

had Grubhub’s two consumer surveys. Employing the

Eveready format, 8 one survey evaluated the risk of

forward confusion, and the other of reverse confusion.

Relevant for our purposes, the reverse confusion survey

exposed 300 actual or prospective consumers of homedelivered meal kits or ready-to-eat meals to Home Chef’s

marks as they appeared on its mobile app or its website

8. Named after the survey used in Union Carbide Corp. v.

Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), the survey format

tests the association consumers have with the trademarks in question

without showing them the trademarks side-by-side. “In cases

involving strong marks, the Eveready test should be considered the

gold standard for fundamental cognitive and marketing reasons.”

McCarthy § 32:174 (quoting J.B. Swann, Likelihood of Confusion

Studies and the Straightened Scope of Squirt, 98 Trademark Rep.

739, 746 (2008)).

28a

Appendix A

for a minimum of ten and thirty seconds, respectively.

Respondents viewing either platform were exposed to

both the Home Chef Home Logo and the HC Home Mark,

although the latter was in close proximity to the “Home

Chef” word mark, as shown in the example images below.

29a

Appendix A

None of the images used in the survey exhibited the

Home Chef Home Logo or the HC Home Mark in isolation

without the context of the other content on the platform.

See McCarthy § 32:163 (“The closer the survey methods

mirror the situation in which the ordinary person would

encounter the trademark, the greater the evidentiary

weight of the survey results.”).

Following exposure to the images, the respondents

were asked an open-ended question: “What company do

you think offers the app/service we just showed you, if you

have an opinion?” Of the 300 respondents, 204 (or 68%)

responded, “Home Chef.” Zero respondents answered

with “Grubhub.” 9 Respondents then were asked the

open-ended question: “Do you think the app/service we

showed you is affiliated with, or sponsored or approved

by, any other company?” Of the 300 respondents, 53 (or

18%) answered in the affirmative, but zero identified

Grubhub as the affiliated company.10 Based on these

data, Grubhub’s expert concluded that “[t]he fact that no

respondents out of 300 identified Grubhub in response to

any question powerfully demonstrates that Grubhub’s use

of the allegedly infringing logo does not create a likelihood

of reverse confusion.” The district court agreed, finding

9. The remaining 96 respondents answered with variations

of the term “Home Chef” (e.g., “Green Chef,” “Home Fresh,” other

“Chef,” etc.), with other meal delivery companies (e.g., Hello Fresh,

Blue Apron, etc.), or stated that they did not know.

10. The companies the respondents identified included, for

example, Amazon, Blue Apron, “Green Chef,” Hello Fresh, Apple,

Google, Kroger, Meijer, etc. Of those 53 respondents, 27 stated that

they did not know.

30a

Appendix A

that Home Chef had failed to meet its burden to show

actual confusion.

Home Chef argues that this finding was clearly

erroneous for three reasons. First, according to Home

Chef, the district court mistook the time period during

which the two marks coexisted in the marketplace, which

tainted the weight the court assigned to its evidence.

Second, Home Chef challenges the substance of the

survey, characterizing it as a memory test, nothing more.

And third, Home Chef believes that the district court

improperly applied an adverse inference against Home

Chef because it did not produce its own survey evidence.11

None are sufficient to show clear error.

First, we acknowledge that the district court

misunderstood the amount of time both marks were in

the marketplace by the time Home Chef had filed its

preliminary injunction motion. The district court believed

it was a year, when in actuality it was only a few months.

But the period of mutual market presence in an actual

confusion analysis generally serves as a proxy for the

relative number of consumers who were exposed to the

marks; the assumption is that the longer two marks coexist

in the market, the more consumers encounter them. Such

11. Home Chef also argues that the surveys (1) did not use the

proper universe of consumers; (2) failed to accurately reflect the

marketplace conditions; and (3) failed to use a control group. Despite

raising these purported methodological flaws, Home Chef does not

meaningfully engage with them and asks us merely to adopt the

findings of the magistrate judge. Given the sparsity of its argument,

we decline to do so.

31a

Appendix A

an inference, however, has limited utility here, where both

parties are national, billion-dollar corporations that have

each expended millions (if not hundreds of millions) of

dollars advertising under their respective marks to the

public. Under these circumstances, we cannot conclude

that the district court’s decision to attribute little weight

to Home Chef’s isolated examples of actual confusion was

clearly erroneous.

Next, Home Chef complains that the survey amounted

to nothing more than a memory test that failed to account

for the potential risk of confusion between the HC Home

Mark and the Grubhub House Logo. For example, Home

Chef points out that it is difficult to see how a respondent,

who looks at Home Chef’s website or mobile app, could

answer the first question (i.e., what company offers the app/

service shown in the photos?) with an answer other than

“Home Chef.” But remember that the relevant audience

for the survey is Home Chef’s current or prospective

customers—not just any person selected at random. See

McCarthy § 32:174; see also Sterling Drug, Inc. v. Bayer

AG, 14 F.3d 733, 741 (2d Cir. 1994) (“Where, as here, the

relevant issue is whether consumers mistakenly believe

that the senior user’s products actually originate with the

junior user, it is appropriate to survey the senior user’s

customers.”). And Grubhub’s reverse confusion survey

was properly limited to that audience.

Moreover, contrary to Home Chef’s contention, the

district court did acknowledge the survey’s failure to

assess whether consumers would be confused based on use

of the HC Home Mark alone, noting that the magistrate

32a

Appendix A

judge’s criticism of the survey on this basis was “not

erroneous.” Grubhub Inc. v. Kroger Co., 2022 U.S. Dist.

LEXIS 130009, 2022 WL 2774986, at *3. But the district

court was not convinced that this error warranted

discounting the survey in toto, given that a consumer

will rarely encounter the HC Home Mark without also

encountering the “Home Chef” brand name in some form,

be it on the mobile app, the website, or in a grocery store.

Id. And, while Home Chef has submitted instances of its

use of the HC Home Mark alone, it has not presented any

evidence of actual confusion based on those instances.

Thus, we cannot conclude the district court clearly erred

in its assessment of the survey results at this nascent

stage of the case.

We easily dispatch Home Chef’s final argument that

the district court drew an adverse inference against it

because it did not present its own survey evidence. Of

course, Home Chef is correct that it need not perform a

survey to prevail on its claim at this, or any other, stage

of litigation.12 See Sullivan, 385 F.3d at 779 (noting, on

appeal from summary judgment, that the senior user

“was not required to conduct his own survey”). But it

12. We note, however, that the cases on which Home Chef relies

for this proposition, e.g., Meridian, 128 F.3d at 1119; Int’l Kennel

Club, 846 F.2d at 1086; and A.J. Canfield, 796 F.2d at 908, were

decided under our since-abrogated preliminary injunction standard

wherein a party seeking the injunction need only show a “better than

negligible chance” of succeeding on the merits. It is undisputed that,

after Pritzker, an applicant for preliminary relief bears a “significant

burden” and must establish more than a mere possibility of success.

973 F.3d at 762-63.

33a

Appendix A

still must provide enough evidence from which a district

court can find that it is likely to succeed on its claim. Here,

the district court did not impose an adverse inference

against Home Chef, but only weighed what evidence it

had presented against the evidence produced by Grubhub.

While Grubhub’s survey is not without its weaknesses, the

district court’s weighing of the competing evidence was

plausible. In sum, the district court did not clearly err in

finding that the actual confusion factor does not support

a likelihood of confusion finding.

Grubhub’s Intent

Turning to the final factor, intent. We have stated

previously that, in a reverse confusion case, intent is

“largely irrelevant” because the alleged infringer is not

palming off or otherwise attempting to create confusion as

to the source of its products or services. SportFuel, Inc.,

932 F.3d at 602; Quaker Oats, 978 F.2d at 961 (intent is

“essentially irrelevant in a reverse confusion case”). While

this is correct, we use this opportunity to further explain

the role of intent in reverse confusion cases.

At the outset, we note that “[a] finding of fraudulent

intent or bad faith is not essential to prove infringement

where likelihood of confusion already exists.” Henri’s

Food Prods., 717 F.2d at 359. This is true in both forward

and reverse confusion contexts. That said, a junior user’s

intent may support a finding of likelihood of confusion

where there is evidence that it adopted its mark to confuse

consumers into thinking its own products were those of the

senior user. Therefore, in a typical forward confusion case,

34a

Appendix A

we evaluate whether there is any evidence from which

a factfinder could reasonably infer that the junior user

purposefully adopted its mark to “palm off” its products

or services as those of the senior. See, e.g., AutoZone, 543

F.3d at 934. Where such evidence exists, this factor favors

the senior user because it tends to show that a consumer

would be likely to confuse the source of the goods. See

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family

Music Ctr., 109 F.3d 275, 286 (6th Cir. 1997) (“Intent is

relevant because purposeful copying indicates that the

alleged infringer, who has at least as much knowledge

as the trier of fact regarding the likelihood of confusion,

believes that his copying may divert some business from

the senior user.”).13

But in a reverse confusion case, by definition, the

junior user is not attempting to capitalize on the senior

user’s good will and reputation; thus, it makes less sense

to inquire whether the junior user adopted its mark with

the intent to “palm off” its product as that of another.

See Quaker Oats, 978 F.2d at 961. In this regard, we

have remarked that the junior user’s intent (to palm off)

in a reverse confusion case is “essentially irrelevant.”

13. By contrast, while a junior user’s intent to infringe can

support a likelihood of confusion finding, the reverse is not true.

A junior user’s innocent adoption of a mark does little to further

its defense, because innocent infringement is still infringement.

See Thomas L. Casagrande, A Verdict for Your Thoughts? Why an

Accused Trademark Infringer’s Intent Has No Place in Likelihood

of Confusion Analysis, 101 Trademark Rep. 1447, 1460 n.58 (2011)

(collecting cases); id. at 1470 (“intent provides a one-way ratchet that

helps trademark plaintiffs only.”).

35a

Appendix A

Id. That said, where it can be shown that the junior user

culpably disregarded the known rights of the senior user

when adopting its own mark, such evidence can support

an inference of consumer confusion. See Ironhawk Techs.,

Inc. v. Dropbox, Inc., 2 F.4th 1150, 1168 (9th Cir. 2021)

(“Intent can be shown ... by evidence that, for example, the

junior knew of the mark, should have known of the mark,

intended to copy the senior, failed to conduct a reasonably

adequate trademark search, or otherwise culpably

disregarded the risk of reverse confusion.”) (cleaned up).

And of course, where there is evidence that the junior user

“deliberate[ly] inten[ded] to push the senior user out of the

market,” that too would support a finding of a likelihood

of confusion. Freedom Card, Inc. v. JPMorgan Chase &

Co., 432 F.3d 463, 479 (3d Cir. 2005) (citation omitted); see

also Humanly Possible, Inc. v. Manpower, Inc., No. 11

C 4977, 2013 U.S. Dist. LEXIS 23249, 2013 WL 633332,

at *7 (N.D. Ill. Feb. 19, 2013) (inquiring whether there

was evidence that the junior user “acted intentionally to

overwhelm [the senior user]’s mark”).

Here, we see no evidence that Grubhub adopted the

Grubhub House Logo with any culpable or deliberate

disregard for Home Chef’s marks. Grubhub created the

Grubhub House Logo—combining its long-recognized

GRUBHUB word mark with the JET House Mark—as

part of its acquisition by JET. And JET had been using

its JET House Mark internationally since approximately

June 2014. Admittedly, the USPTO non-final office action

put Grubhub on notice of Home Chef’s rights in the HC

Home Mark and the Home Chef Home Logo. But Grubhub

did not disregard those rights. Instead, it agreed to

36a

Appendix A

only use the JET House Mark in connection with the

GRUBHUB brand name in an attempt to strike a balance

between the two parties’ commercial interests.

Because this factor can only bolster a likelihood of

confusion finding or be neutral, we agree with Home Chef

that the district court erred in determining that this factor

weighed against a likelihood of confusion. However, even

so, this factor is at best neutral and, therefore, of minimal

value in the likelihood of confusion analysis.

Weighing the Likelihood of Confusion Factors

Taking stock, we conclude that the district court did

not clearly err in determining that neither the similarityof-the-mark factor nor the actual-confusion factor

supports a likelihood of confusion. Furthermore, based

on this preliminary record, the strength of Grubhub’s

mark does not pose a significant threat of overwhelming

the undisputed strength of Home Chef’s marks. Finally,

the intent factor is, at best, neutral and provides little

value in the analysis. As for the remaining three factors—

the similarity of the products, the area and manner

of concurrent use, and the degree of care likely to be

exercised by consumers—the parties do not dispute that

they weigh in favor of a finding of a likelihood of confusion.

Given this, we turn to the district court’s determination

that Home Chef failed to make a strong showing of a

likelihood of success on the merits.

Home Chef argues that, because all seven factors

are “interconnected,” the district court clearly erred by

focusing only on the factors in dispute without addressing

37a

Appendix A

the undisputed factors. To the contrary, the district court

did address the undisputed factors, concluding that the

magistrate judge’s determinations as to these factors

were not clearly erroneous. Grubhub, 2022 U.S. Dist.

LEXIS 130009, 2022 WL 2774986, at *6 n.2. This was a

correct application of law. Johnson, 170 F.3d at 739 (“If no

objection or only partial objection [to an R&R] is made, the

district court judge reviews those unobjected portions for

clear error.”). Furthermore, the district court held that,

even if there had been any error, the weight assigned to

those factors would not have affected its conclusion that

Home Chef failed to meet its burden of showing a strong

likelihood of success on the merits.

Home Chef ’s a rg u ment boi ls dow n t o mere

disagreement with the district court’s weighing of the

factors. As Home Chef correctly recognized, there is “no

hard and fast requirement” that any particular factor or

factors be decisive of a likelihood of confusion analysis.

See Ty, Inc., 237 F.3d at 902. Here, the district court,

faced with competing evidence, reviewed the record and

used its discretion to give weight to the factors it found

most salient and significant. See id. at 901-02. And given

our own analysis of these factors, we cannot say on this

record that the district court’s determination that Home

Chef did not satisfy its burden to establish a likelihood of

success on the merits was clearly erroneous.14

14. None of our conclusions should be interpreted to apply to

the JET House Mark alone. Because we understand that Grubhub

only uses the JET House Mark locked up with or in close proximity

to the GRUBHUB brand name, our conclusions are limited to such

uses. Any use of the JET House Mark alone is a separate inquiry

not presently before us.

38a

Appendix A

IV. CONCLUSION

Because the district court did not clearly err in

finding that Home Chef failed to meet its burden to show

a likelihood of success on the merits of its trademark

infringement claim, it did not abuse its discretion in

denying Home Chef’s motion for a preliminary injunction.

We therefore AFFIRM the district court’s decision.

39a

Appendix

B MEMORANDUM

APPENDIX B — ORDER

AND

OPINION OF THE UNITED STATES DISTRICT

COURT FOR THE NORTHERN DISTRICT

OF ILLINOIS, EASTERN DIVISION,

FILED MAY 25, 2022

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT

OF ILLINOIS EASTERN DIVISION

CASE NO.: 1:21-cv-05312

Judge Charles R. Norgle

GRUBHUB INC., and TAKEAWAY.COM

CENTRAL CORE B.V.,

Plaintiffs,

THE KROGER CO. AND RELISH LABS LLC,

Defendants.

ORDER

Plainti ffs’ objections [72] to the Repor t and

Recommendation of the Magistrate Judge are sustained;

the Report and Recommendation [57] is rejected; and

Defendants’ motion for preliminary injunction [17] is

denied. Considering these rulings Plaintiffs’ motion for

leave to file reply [74] is denied because it is moot.

40a

Appendix B

MEMORANDUM OPINION

Before this Court is Plaintiffs’, Grubhub Inc., and

Takeaway.com Central Core B.V (“JET”) (collectively,

“Grubhub”), objections to the Magistrate Judge’s Report

and Recommendation (Dkt. 57) (“the R&R”) to grant

Defendants’, Relish Labs LLC and The Kroger Co.’s

(collectively “Home Chef”), motion for preliminary

injunction. This matter was referred to the Magistrate

Judge who issued the R&R, specifically recommending

this Court grant the motion for preliminary injunction.

Dkt. 57. In response, Grubhub issued written objections.

Dkt. 72. Having reviewed the R&R, Grubhub’s objections,

and the extensive briefing on this motion, this Court

is unpersuaded that Home Chef met its burden in

establishing the need for a preliminary injunction, and

therefore rejects the Magistrate Judge’s recommendation

and denies the motion for preliminary injunction.

MARKS IN QUESTION

The Court adopts and incorporates the factual

findings of the R&R; however, the Court refers to the

marks in question as follows:

41a

Appendix B

Grubhub has also combined the JET House Mark with

the Seamless brand name to create the following logo:

Dkt. 40 ¶19. Use of the Seamless House Logo will

discontinue. Dkt. 56 at 9:14-16.

II. DISCUSSION

Review of Grubhub’s Objections to The Report

and Recommendation.

Pursuant to 28 U.S.C. § 636(b)(1), the Court must

conduct a de novo determination of those portions or

recommendations of the R&R to which Grubhub objects.

The Court may accept, reject, or modify, in whole or

in part, the findings or recommendations made by the

magistrate judge. Id. Thus, the Court begins with

addressing Grubhub’s objections.

Grubhub objects to the recommendation to grant

Home Chef’s motion for preliminary injunction raising

four specific objections. First, the R&R erroneously

rejects Grubhub’s consumer perception surveys. Second,

the R&R improperly relies upon a non-final USPTO

decision that considered the JET House Mark and not the

Grubhub House Logo. Third, the R&R fails to recognize

that the use of the well-known GRUBHUB name in the

Grubhub House Logo distinguishes that mark from the

42a

Appendix B

Home Chef Home Logo and makes confusion unlikely.

Fourth, the R&R erroneously credits, as evidence of actual

confusion, two anonymous social media posts inquiring

about similarities between the Grubhub House Logo and

the Home Chef Home Logo. The Court sustains each

objection.

Objection 1 — Erroneous Disregard of

Consumer Perception Surveys.

Grubhub retained survey researcher Hal Poret to

conduct surveys to assess whether Grubhub’s use of

the Grubhub House Logo causes consumer confusion

between Grubhub and Home Chef under reverse and

forward theories of confusion.1 Dkt. 46-3. Both studies

were in the standard “Eveready” survey format, “in

which respondents are shown the trademarks at issue and

questioned to determine if they make a mistaken mental

connection to the other party’s mark.” Dkt. 46-3 ¶7; see

6 McCarthy on Trademarks and Unfair Competition

§ 32:173.50-174 (4th ed. 1999) (noting Eveready surveys are

the “gold standard” in cases involving strong marks and

are a “widely accepted” format to prove the likelihood or

non-likelihood of confusion.) Poret opines that his survey

results “powerfully demonstrate” that Grubhub’s use of

the Grubhub House Logo does not create a likelihood of

confusion with Home Chef or its mark under either the

reverse or forward confusion theory. Dkt. 46-3 ¶¶12, 14.

1. Trademark confusion is often discussed in terms of two

different theories of confusion: “forward confusion” and “reverse

confusion.” See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978

F.2d 947 (7th Cir. 1992)

43a

Appendix B

The R&R found that Poret’s sur veys, though

admissible, were entitled to little weight for five reasons,

concluding (1) the reverse confusion survey did not use

the proper universe of consumers; (2) the surveys failed

to accurately reflect the actual marketplace conditions; (3)

the methodology used to question the survey respondents

amounted to a “memory test;” (4) the surveys failed to use

control groups; and (5) due to the limited time for which

the parties’ logos coexisted, the lack of actual confusion

is “less salient” or even “irrelevant” when determining

whether there is a likelihood of confusion. Dkt. 57 at 41-45.

Grubhub has objected to that weighing of the survey

evidence. Dkt. 72 at 2; 4-9. The Court sustains that

objection. The survey evidence produced by Grubhub (and,

to a lesser extent, the failure of Home Chef to produce

survey evidence to the contrary) is entitled to much more

weight than was afforded it. In both the forward confusion

and reverse confusion surveys, none of the hundreds of

respondents were confused, demonstrating that confusion

is unlikely. Dkt. 46 at 3 ¶¶11, 13. Survey evidence showing

confusion of less than 10% weighs strongly against a

finding of infringement. Henri’s Food Prod. Co., Inc. v.

Kraft Inc., 717 F.2d 352, 358-59 (7th Cir. 1983). The Court

does not, as some courts have, draw the negative inference

that Home Chef failed to offer survey evidence because

such evidence would have been unfavorable to its claim.

See e.g. Planet Hollywood (Region IV), Inc. v. Hollywood

Casino Corp., 80 F. Supp. 2d 815, 884 (N.D. Ill. 1999),

opinion clarified, No. 96 C 4660, 1999 U.S. Dist. LEXIS

19185, 1999 WL 1186802 (N.D. Ill. Dec. 9, 1999). However,

Home Chef’s failure to offer any significant evidence of

44a

Appendix B

actual confusion (as discussed in more detail below) —

either directly or through surveys — demonstrates a

lack of proof by Home Chef on the important element of

actual confusion. Badger Meter, Inc. v. Grinnell Corp.,

13 F.3d 1145, 1153 (7th Cir. 1994) (noting while failure to

prove any actual consumer confusion militates against a

finding of the likelihood of such confusion, it is ultimately

a question for the finder of fact.) The absence of sufficient

proof of any actual confusion when coupled with marks

that are not dead-on similar is a blow to Home Chef’s

infringement claim.

The R&R unduly criticized the universe of survey

respondents in the reverse confusion survey. Respondents

for a reverse confusion study should be drawn from a

universe consisting of the customer base of Home Chef.

See, e.g., Citizens Fin. Grp., Inc. v. Citizens Nat. Bank of

Evans City, 383 F.3d 110, 120-21 (3d Cir. 2004). Here, the

universe of respondents questioned was a subset of the

entire Home Chef customer base universe. The survey

didn’t question any respondents outside Home Chef’s

customer base universe; the set of Home Chef customers

“who used, or planned to use, an online or in-app service

for delivery of home meal preparation kits or ready-toeat meals” may also include Home Chef customers “who

make in-store purchases or who purchase heat-and-eat

meals would;” and Home Chef customers “who make

in-store purchases or who purchase heat-and-eat meals”

may not be any more (or less) susceptible to confusion.

In other words, nothing suggests the survey asked the

wrong people, that the survey did not ask the people who

the R&R said it should have, or that the results would be

45a

Appendix B

any different if it did. While the survey is not perfect,

it captured a sufficiently broad swath of Home Chef’s

customers, and therefore is a probative measure of the

effect of the Grubhub House Logo on consumer behavior.

Am. Nat’l Ins. Co. v. Am. Nat’l Inv. Advisors, LLC, No.

11-cv-4016, 2014 U.S. Dist. LEXIS 163294, 2014 WL

6613342, at *16 (N.D. Ill. Nov. 21, 2014) (survey evidence

“need not be perfect” to be admissible and considered).

The R&R’s criticism of the surveys’ simulation of

marketplace conditions is not erroneous because it is

correct that the surveys did not account for how consumers

react to: (1) Home Chef’s use of the HC Home Mark

without the Home Chef brand name; (2) Home Chef’s

sales of its products in Kroger grocery stores; and (3)

Grubhub’s use of the Seamless House Logo. However, “the

closer the survey methods mirror the situation in which

the ordinary person would encounter the trademark, the

greater the evidentiary weight of the survey results.”

Bobak Sausage Co. v. A & J Seven Bridges, Inc., No. 07

C 4718, 2010 U.S. Dist. LEXIS 40737, 2010 WL 1687883,

at *5 (N.D. Ill. Apr. 26, 2010). Marketplace realities are

such that consumers will rarely encounter the HC Home

Mark without the Home Chef trade name appearing in

some form, whether at the point of sale or otherwise. Also,

any confusion in the context of grocery stores is unlikely

because Grubhub does not sell any products, in grocery

stores or otherwise; it provides delivery services. Finally,

the Seamless brand and logo are being phased out, and so

consumers will not encounter the Seamless House Logo.

Dkt. 1 ¶20; Dkt. 56 at 9:14-16. Thus, while the surveys did

not account for these three conditions, the survey methods

46a

Appendix B

nevertheless closely mirror the situation in which the

ordinary person would encounter the trademark and are

due a proportionate evidentiary weight.

It is a mischaracterization to call the surveys a

“memory test” because the surveys tested more than the

“memory” of survey respondents; the surveys questioned

whether and why respondents associated marks with

companies not shown. R&R at 43-44. Discounting the

survey evidence for being a “memory test” is unwarranted.

Furthermore, the absence of a “control group” in the

surveys has no significant impact on the results because

the purpose of a control group is “to eliminate general

background noise from the results” and there is no such

“noise” data here. Chattanoga Mfg., Inc. v. Nike, Inc.,

140 F. Supp. 2d 917, 928-29 (N.D. Ill. 2001). The lack (or

existence) of a control group makes the survey results no

less (or more) reliable in this instance because there is no

need for a control group here.

The Court disagrees with the R&R’s conclusion that,

because the parties’ logos have only coexisted for several

months, the lack of actual confusion is “less salient” or

even “irrelevant” when determining whether there is a

likelihood of confusion. Dkt. 57 at 45. To the contrary,

while the logos themselves only coexisted for a short

period of time, the brands and their products have existed

for years — Home Chef since 2013 and Grubhub since

2004. See Borinquen Biscuit Corp. v. M.V. Trading Corp.,

443 F.3d 112, 121 (1st Cir. 2006) (attaching substantial

weight to a trademark holder’s failure to prove actual

confusion only in instances in which the relevant products

47a

Appendix B

have coexisted on the market for a long period of time)

(emphasis added); Aktiebolaget Electrolux v. Armatron

Int’l, Inc., 999 F.2d 1, 4 (1st Cir. 1993) (finding lack of

evidence of actual confusion significant because products

had coexisted in the same market for roughly six years).

Home Chef’s products and Grubhub’s services have

coexisted for going-on-nine years and the competing logos

have coexisted for nearly a year, yet there is no substantial

evidence of actual confusion. Dkt. #46-4 at ¶16. For these

reasons, the Court sustains Grubhub’s first objection and

affords the survey evidence its due weight in assessing the

likelihood of confusion.

ii.

Objection 2 — Improper Reliance on a

Non-Final USPTO Decision.

Home Chef asserts the marks in question are

“virtually identical,” both comprised of a single fork and

a single knife in the same positioning and orientation

within a house design. Dkt. 18 at 12. The R&R concludes

that the parties’ respective marks share common elements

and that the minor stylistic differences are of far less

significance and do not defeat the similarity created by the

marks’ common elements. Dkt. 57 at 22. In coming to this

conclusion, Home Chef and the R&R rely, at least in part,

on the USPTO’s findings that the marks are confusingly

similar. Dkt. 18-8, Ex. 11. For its part, Grubhub objects

to the R&R’s reliance upon a non-final USPTO decision

that considered the JET House Mark (not the Grubhub

House Logo), on an evidentiary record different from the

record before this Court. Dkt. 72 at 2, 9-11. Home Chef

and the USPTO’s “Nonfinal Office Action” both compare

48a

Appendix B

the JET House Mark absent any accompanying context

or brand name with the HC Home Mark and the Home

Chef Home Logo. But Grubhub does not use the JET

House Mark independently. Thus, any findings by the

USPTO examiner are devoid of appropriate marketplace

context and consider different evidence than what is

before this Court, including the survey evidence, and

therefore are entitled to little, if any, deference under

these circumstances. See Progressive Distribution Servs.,

Inc. v. United Parcel Serv., Inc., 856 F.3d 416, 426-27,

433 (6th Cir. 2017). That is not to say, of course, that a

district court cannot look to the USPTO opinion to inform

its conclusions on trademark analysis, but rather that it

is inappropriate here. Id. The Court sustains Grubhub’s

objection and agrees that reliance on the USPTO’s initial

refusal of Grubhub’s application to register the JET House

Mark to assess the likelihood of confusion is erroneous.

R&R at 22-24, 46-47.

iii. Objection 3 — Erroneous Disregard of

Inclusion of Brand Names.

Grubhub asserts that the JET House Logo is always

accompanied by the brand name “Grubhub.” Dkt. 72 at 1.

Home Chef claims this is untrue. Dkt. 73 at 3. There is

no evidence before the Court that Grubhub has used the

JET House Mark absent the brand names “Grubhub” or

“Seamless” within the United States. Also, the Seamless

brand and logo are being phased out, and so consumers

will not encounter the Seamless House Logo. Dkt. 1 ¶20;

Dkt. 56 at 9:14-16. Thus, the Grubhub House Logo, not the

JET House Mark, is the true “accused mark.”

49a

Appendix B

Grubhub asserts that any confusion that might be

created by the similarity between the HC Home Mark

and the JET House Mark is neutralized because only the

Grubhub House Logo is used and the use of the well-known

“Grubhub” brand name distinguishes the Grubhub House

Logo from the Home Chef Home Logo. Dkt. 72 at 12. The

R&R disagrees, concluding “Grubhub’s use of its brand

name with the JET House [Mark] does not neutralize —

and may actually aggravate — any confusion,” reasoning

that brand names help avoid confusion only in cases where

forward confusion is alleged. R&R at 24-25. Grubhub’s

objection regarding this conclusion is sustained; nothing

suggests inclusion of the distinctive “Grubhub” name

aggravates confusion. It is well established that prominent

display of different brand names with marks reduces

the likelihood of confusion, “even where . . . the marks

are otherwise similar.” Ziebart Int’l Corp. v. After Mkt.

Assocs., 802 F.2d 220, 227 (7th Cir. 1986). Use of brand

marks is “more likely to mitigate” reverse confusion

than exacerbate confusion where, as here, both parties

have well-established, highly-recognizable brand marks.

Allstate Ins. Co. v. Kia Motors Am., Inc., CV 16-6108,

2017 U.S. Dist. LEXIS 211399, 2017 WL 6550669, at

*11 (C.D. Cal. Dec. 22, 2017), aff’d, 784 Fed. Appx. 507

(9th Cir. 2019). No evidence suggests that inclusion of

the name “Grubhub” aggravates, rather than alleviates,

potential confusion. The R&R’s conclusion to the contrary

is unfounded.

50a

Appendix B

iv.

Objection 4 — Erroneous Reliance on

Evidence of Actual Confusion.

Home Chef offers two instances which it claims are

evidence of actual confusion. First, on September 8, 2021, a

Home Chef customer sent Home Chef’s Facebook account

a message which read: “Did you and Grub Hub merge or

come to some sort of mutual deal, because I had to take a

double take today when my Grub hub app updated” (sic).

Dkt. 57 at 36. Second, a Twitter user posted on August

25, 2021, “so uh why did grubhub make their app icon look

like a stylized orange version of home chef...? Even the

utensils look exactly the same” (sic). Dkt. 57 at 37.

Home Chef is not required to present proof of actual

confusion to meet its burden or to otherwise prove that

a likelihood of confusion exists. CAE, Inc. v. Clean Air

Engineering, Inc., 267 F.3d 660, 685-86 (7th Cir. 2001).

While situations where consumers raise questions about

whether a senior user and a junior user are affiliated after

viewing their respective marks are afforded some weight

in assessing actual confusion, that weight is minimal.

CAE, Inc., 267 F.3d at 686 (noting that the “one instance

of actual confusion in the record” occurred when one of the

plaintiff’s suppliers asked whether there was a connection

between the defendant and the plaintiff’s subsidiary, but

that instance was “not entitled to great weight”); Unity

Health Plans Ins. Co. v. Iowa Health Sys., 995 F. Supp.

2d 874, 894 (W.D.Wis. 2014) (finding that a call where

consumer asked “whether Unity Health and UnityPoint

are affiliated in some way” constituted “somewhat more

persuasive” evidence of actual confusion than calls which

“the court discount[ed] entirely.”)

51a

Appendix B

The instances which Home Chef cites as evidence of

actual confusion are, at best, situations where consumers

raise questions about whether a senior user and a junior

user are affiliated. On their face, however, the consumers

in these instances show they recognize a distinction

between Grubhub and Home Chef Comparison is not

confusion, and these posts only compare the marks.

That these are the only two incidents alleged of actual

confusion after nearly a year of coexistence and millions

of customers being exposed to both companies’ logos

weighs against a finding of a likelihood of confusion. This

is compounded by the fact that Home Chef offers no survey

evidence of actual confusion. Courts have recognized that,

in the absence of proof of actual instances of confusion,

it can be difficult to prove likelihood of confusion without

survey evidence. See, e.g., Hubbard Feeds, Inc. v. Animal

Feed Supplement, Inc., 182 F.3d 598, 603 (8th Cir. 1999)

(the plaintiff’s “failure to present evidence of consumer

confusion owing to [the defendant’s] allegedly infringing

conduct is telling.”) For these reasons, the Court sustains

Grubhub’s objection that the R&R erroneously credits

as evidence of actual confusion the two anonymous

social media posts. The social media posts offer minimal

evidence of actual confusion and are only “somewhat more

persuasive” than no evidence at all. The absence of any

other evidence of confusion, as well as survey evidence

to the contrary, further diminishes the posts’ probative

value.

Preliminary Injunction.

Having sustained Grubhub’s objections, the Court

now considers whether a preliminary injunction is

52a

Appendix B

warranted. A preliminary injunction is a drastic remedy

which is “never to be indulged in except in a case clearly

demanding it.” Barbecue Marx, Inc. v. 551 Ogden, Inc.,

235 F.3d 1041, 1044 (7th Cir. 2000) (cleaned up). To decide

whether a preliminary injunction is warranted, courts

engage in a two-step inquiry involving a threshold phase

and a balancing phase. See, e.g. Vendavo, Inc. v. Long,

397 F. Supp. 3d 1115, 1128 (N.D. Ill. 2019). First, Home

Chef must satisfy its burden first at the “threshold phase”

by establishing: (1) it is likely to succeed on the merits;

(2) traditional legal remedies would be inadequate; and

(3) it will suffer irreparable harm absent a preliminary

injunction. Life Spine, Inc. v. Aegis Spine, Inc., 8 F.4th

531, 539 (7th Cir. 2021). Then, if Home Chef makes

this showing, the court balances the harm of denying

an injunction to the plaintiff against the harm to the

defendant of granting one. Id. The ultimate decision in

weighing and balancing these factors requires a high

degree of discretion on the part of the district judge.

Storck USA, L.P. v. Farley Candy Co., 14 F.3d 311, 314 (7th

Cir.1994). The Court has expressed that “[a] preliminary

injunction is an extraordinary remedy and should only be

granted in a case where the movant has clearly carried

his burden of persuasion as to all the prerequisites.”

Heinz v. Frank Lloyd Wright Found., 762 F. Supp. 804,

806 (N.D. Ill.1991) (Norgle, J.). Here, Home Chef has not

carried its burden of persuasion as to the prerequisite

that it is likely to succeed on the merits, and so the Court

exercises its discretion to deny the extraordinary relief

of a preliminary injunction.

Regarding the likelihood of success on the merits,

the moving party “need not show by a preponderance

53a

Appendix B

of the evidence that [it] will win [its] suit.” Protect Our

Parks, Inc. v. Buttigieg, 10 F.4th 758, 763 (7th Cir. 2021).

Nonetheless, “the mere possibility of success is not

enough” and the movant must instead make a “strong”

showing on the merits. Id. To establish trademark

infringement under the Lanham Act, Home Chef must

establish that: (1) it owns a valid, protectable trademark;

and (2) there is a likelihood of confusion as to the origin

of the defendant’s product. Ty, Inc. v. Jones Grp. Inc.,

237 F.3d 891, 897 (7th Cir. 2001). Here, there is no dispute

that Home Chef owns a valid, protectable trademark.

“The linchpin of both common law and federal statutory

trademark infringement claims is whether consumers in

the relevant market confuse the alleged infringer’s mark

with the complainant’s mark.” AHP Subsidiary Holding

Co. v. Staurt Hale Co., 1 F.3d 611, 615 (7th Cir.1993). Thus,

the inquiry is whether consumers in the relevant market

confuse the Grubhub House Logo with either the HC

Home Mark or the Home Chef Home Logo; the answer

is that it does not appear so.

The Seventh Circuit looks to seven factors when

evaluating the potential for consumer confusion:

(1) the similar ity between the marks in

appearance and suggestion;

(2) the similarity of the products;

(3) the area and manner of concurrent use;

(4) the degree and care likely to be exercised

by consumers;

54a

Appendix B

(5) the strength of the plaintiff’s mark;

(6) any actual confusion; and

(7) the intent of the defendant to “palm off” his

product as that of another.

Autozone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir.

2008). While no single factor is dispositive, the three

most important factors are “the similarity of the marks,

the intent of the defendant, and evidence of actual

confusion.” Eli Lilly & Co. v. Nat. Answers, Inc., 233

F.3d 456, 462 (7th Cir. 2000). Here, these most important

factors — similarity, intent, and actual confusion — all

favor Grubhub, and therefore, Home Chef has not met

its burden of making a strong showing of a likelihood of

success on the merits. 2

The Similarity Between the Marks in

Appearance and Suggestion.

In an infringement action, a comparison of the marks

at issue should be made “in light of what happens in the

marketplace, and not merely by looking at the two marks

side-by-side.” AutoZone, 543 F.3d at 931. The test is not

whether the public would confuse the marks, but whether

2. The Court does not presently consider the remaining factors

because Grubhub did not specifically object to the R&R’s analysis of

those factors, and it does not appear that the R&R’s analysis of those

factors is clear error. Moreover, that analysis would not change the

Court’s conclusion that Home Chef has not met its burden of showing

a strong likelihood of success on the merits.

55a

Appendix B

the viewer of an accused mark would be likely to associate

the product or service with which it is connected with the

source of products or services with which an earlier mark

is connected, i.e. whether a viewer of the Grubhub House

Logo would be likely to associate Grubhub’s services with

Home Chef’s products. Id.

The Court relies not on the USPTO’s determination,

but on its own examination of the marks in question.

Similarities between the marks are limited to a single fork

and a single knife in the same positioning and orientation

within a house or home design. Differences include the

shape of the design — in the HC Home Mark, the design

is a pentagon more resemblant of a baseball home plate

than a house with eaves and a chimney, as is the case in

the JET House Mark. Also, the HC Home Mark utilizes

straight lines with pointed edges where the JET House

Mark has rounded, cartoon-like edges. Finally, the knife

and fork are recessed in the JET House Mark where they

are integrated with the edges in the HC Home Mark.

These differences are significant enough to differentiate

the JET House Mark from the HC Home Mark. The

Seventh Circuit adheres to the rule that “if one word or

feature of a composite trademark is the salient portion

of the mark, it may be given greater weight than the

surrounding elements.” Ty, Inc. v. Jones Grp., Inc., 237

F.3d 891, 898 (7th Cir. 2001). When the JET House Mark is

combined with the brand names “Grubhub” or “Seamless,”

the brand names become the more salient portion of the

logo, further differentiating the Grubhub House Logo

from the HC Home Mark and the Home Chef Home Logo.

56a

Appendix B

Grubhub maintains that its brand names always

accompany the JET House Mark. Grubhub objects to

the R&R’s discounting of the significance of this layout

of the Grubhub House Logo. As noted above, the Court

sustains that objection. The JET House Mark is but one

portion of the Grubhub House Logo, which is the true

“accused mark.” Thus, while the HC Home Mark may at

times stand alone, there is nothing to indicate that when

it does, it will be associated with Grubhub, since the JET

House Mark never stands alone. While the JET House

Mark shares similar features with the HC Home Mark,

it is the less salient and obvious portion of the Grubhub

House Logo. Thus, there is no indication that a viewer

of the Grubhub House Logo would be likely to associate

Grubhub’s services with Home Chef or its products. The

prominent display of different brand names on products

otherwise containing similar marks reduces the likelihood

of confusion. Ziebart Int’l Corp. v. After Mkt. Assocs.,

802 F.2d 220, 227 (7th Cir. 1986); See also Ye Old Tavern

Cheese Products, Inc. v. Planters Peanuts Division, 261

F.Supp. 200, 206 (N.D. Ill. 1966) (in some circumstances,

“where the brand name is prominently stressed in the

label, there is not likely to be any confusion as to the

source, which is the essence of trademark infringement”),

aff’d mem., 394 F.2d 833 (7th Cir. 1967) (per curiam). This

factor weighs in Grubhub’s favor given that Grubhub’s use

of its brand names with the JET House Mark minimizes

any similarity between, and any potential confusion of,

the competing marks.

57a

Appendix B

ii.

The Intent of Grubhub to “Palm Off” Its

Product as That of Another.

Grubhub asserts that it adopted the Grubhub House

Logo in good faith to align its branding with the branding

of its new parent company, which began using the JET

House Logo overseas in 2014, and that it had no intent to

pass off its services as originating from Home Chef. (Dkt.

46 at 23). Home Chef does not dispute this. Instead, Home

Chef asserts that Grubhub ignored its rights by using the

JET House Logo after the USPTO rejected JET’s attempt

to register the mark.

When evaluating whether a defendant acted in good

or bad faith when adopting a mark, courts consider

whether the alleged infringer is trying to steal “sales

from a competitor by making consumers think they are

dealing with that competitor, when actually they are

buying from the passer off.” Uncommon v. Spigen, Inc.,

305 F. Supp. 3d 825, 863 (N.D. Ill. 2018). Since passing off

is a type of fraud, the movant must show some evidence

of the defendant’s bad faith, as “the mere similarity of

names” or “copying” are insufficient to satisfy bad intent.

Id. (internal citations omitted). A defendant’s use of its

brand name to promote that it is the source of its services

or a “clearly stated designation of origin” weigh against a

finding of an intent to palm off. Id. In a forward confusion

case, the junior user’s intent is relevant to the issue of

likelihood of confusion if the junior user intended to palm

off its products as those of the senior user. Sands, 978 F.2d

at 961. In a reverse confusion case, where the junior user

typically has no desire to capitalize on the senior user’s

58a

Appendix B

good will, courts consider whether “the more well-known

junior user ignored the senior user’s rights” or otherwise

“culpably disregarded the risk of reverse confusion.”

Imperial Toy Corp. v. Ty, Inc., No. 97 C 8895, 1998 U.S.

Dist. LEXIS 14418, 1998 WL 601875, at *6 (N.D. Ill. Sept.

9, 1998).

There is no evidence Grubhub intended to capitalize

on Home Chef’s good will or to palm-off its products as

Home Chef’s. In fact, JET began using the JET House

Mark as early as June 2014, at or around the same time

Home Chef publicized the HC Home Mark. Dkt. #46-5 ¶6;

Dkt. #18-1 ¶19. Thus, beyond the USPTO report (which is

entitled to little, if any, weight because it only compared

the JET House Mark with the HC Home Mark), there

is little evidence Grubhub ignored Home Chef’s rights

by utilizing the Grubhub House Logo, especially where

JET began using that mark internationally at or around

the time Home Chef began its use of the HC Home Mark.

No evidence suggests Grubhub culpably disregarded the

risk of reverse confusion. As such, this factor weighs

in Grubhub’s favor whether under a forward or reverse

confusion theory.

iii. Evidence of Any Actual Confusion.

The Court has examined this factor in its discussion of

Grubhub’s objections. To reiterate, the social media posts

which Home Chef offers as evidence of actual confusion

are of little probative value in establishing whether there

is confusion between the Grubhub House Logo and the HC

Home Mark or the Home Chef Home Logo. Furthermore,

59a

Appendix B

there is sufficiently strong survey evidence which suggests

there is zero confusion between the competing marks. As

such this factor also weighs in Grubhub’s favor.

III. CONCLUSION

In light of the sustained objections, the most important

factors in the likelihood of confusion analysis — similarity,

intent, and actual confusion — all favor Grubhub. Home

Chef has not made a sufficiently strong showing of a

likelihood of success on the merits. This is not a case

clearly demanding of the extraordinary remedy of a

preliminary injunction. The Court rejects the R&R and

denies Home Chef’s motion for preliminary injunction.

IT IS SO ORDERED:

ENTER:

/s/ Charles Ronald Norgle

CHARLES RONALD NORGLE, Judge

United States District Court

DATE: May 25, 2022

60a

Appendix

APPENDIX

C — REPORT

AND

RECOMMENDATION OF THE UNITED STATES

DISTRICT COURT FOR THE NORTHERN

DISTRICT OF ILLINOIS, EASTERN DIVISION,

FILED APRIL 8, 2022

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

No. 21 CV 5312

GRUBHUB INC. AND TAKEAWAY.COM

CENTRAL CORE B.V.,

Plaintiffs,

THE KROGER CO. AND RELISH LABS LLC,

Defendants.

April 8, 2022, Decided

April 8, 2022, Filed

Jeffrey I. Cummings, United States Magistrate Judge.

To: The Honorable Charles R. Norgle, Sr. United States

District Judge

61a

Appendix C

REPORT AND RECOMMENDATION

On July 29, 2021, plaintiff Grubhub Inc. unveiled its

new branding mark at a concert in Chicago. Grubhub’s

new mark consists of a house symbol with a fork and a

knife inside combined as follows:

. Defendant Relish

Labs LLC d/b/a Home Chef (“Home Chef”) first learned

of Grubhub’s new mark on August 25, 2021, the day after

Grubhub issued a press release announcing its changed

branding to its customers and the general public. Home

Chef concluded that Grubhub’s new mark impermissibly

infringes on its own marks, which were previously

registered with the United States Patent and Trademark

Office and appear as follows:

Home Chef sent Grubhub a cease-and-desist letter on

September 7, 2021. The parties thereafter attempted,

albeit unsuccessfully, to resolve their dispute regarding

the competing marks.

On October 7, 2021, Grubhub and co-plaintiff

Takeaway.com Central Core (collectively “Grubhub”

unless otherwise specified) initiated this declaratory

judgment action pursuant to 28 U.S.C. §2201 against

Home Chef and its co-defendant The K roger Co.

(collectively “Home Chef” unless otherwise specified).

Grubhub seeks a declaration that its continued use of its

new branding mark neither infringes nor dilutes any of

Home Chef’s rights under the Lanham Act, 15 U.S.C.

62a

Appendix C

§1051 et. seq., nor constitutes unfair competition and/or

a false designation of origin under the Lanham Act and

state common law. (Dckt. #40). In response, Home Chef

filed an answer and asserted counterclaims alleging that

Grubhub unlawfully infringed and diluted its trademarks

in violation of the Lanham Act and Illinois statutory and

common law, and that Grubhub’s actions constituted unfair

competition and deceptive trade practices in violation of

Illinois law. (Dckt. #16).

On November 3, 2021, Home Chef also filed a motion

for a preliminary injunction, which was subsequently

referred to this Court by the District Court. (Dckt. #17,

34). In its motion, Home Chef seeks an order enjoining

Grubhub from using the following mark:

and any

similar variation thereof, in any and all advertising,

promotions, and marketing. The parties briefed the motion

and submitted evidence in the way of affidavits and

documents, after which the Court held a hearing and

heard argument from counsel. (See Dckt. #56 - 1/6/22

Hr’g Transcript). The following represents this Court’s

recommended proposed findings of fact and conclusions

of law pursuant to Federal Rule of Civil Procedure

72(b)(1). For the reasons discussed in detail below, this

Court respectfully recommends that the District Court

grant Home Chef’s motion for preliminary injunction.

FINDINGS OF FACT

The facts pertinent to the resolution of this motion

are largely undisputed. The Court relies on the parties’

63a

Appendix C

submissions, their pleadings,1 and any other source from

which it is appropriate to take judicial notice.

The Parties

Home Chef

History, Scope of Operations, and

Current Product Offerings

Home Chef was founded in 2013 by current CEO

Patrick Vihtelic. It currently offers its customers more

than 500 products including meal kits, heat-and-eat meals,

ready-to-eat products, and seasonal meals. (Dckt. #18-1

at ¶¶1-2, 15 - Decl. of CEO Patrick Vihtelic). Vihtelic, who

started Home Chef in his Chicago apartment with his

personal savings, set out “to provide everything needed to

bring more delicious, healthy and varied meals” to families

throughout the United States, “as a convenient and lowcost alternative to grocery shopping.” (Dckt. #18-1 at ¶2).

To do so, Vihtelic partnered with a local executive chef to

design recipes for at-home meal preparation. (Id. at ¶4).

Home Chef first launched its meal kit delivery service

— which provided the delivery of “fresh, pre-portioned

ingredients and easy-to-follow recipes” – in 2014. (Id. at

¶5). It opened its first distribution center in Chicago in

October 2015 and by June 2015, Home Chef was delivering

10,000 boxes of meal kits per month. (Id. at ¶¶5-6).

1. See, e.g., Prudential Insurance, Co. v. Newman, No. 17 C

8732, 2019 U.S. Dist. LEXIS 169104, 2019 WL 4750014, at *9 n.13

(N.D.Ill. Sept. 30, 2019) (citing cases and noting that a court has

the right to take notice of pleadings within its own files).

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Appendix C

Home Chef’s meal kit business continued to grow

significantly over the next few years. By February 2017,

Home Chef had opened two additional distribution centers,

was delivering 2.5 million meals per month to over 97%

of the country, and employed more than 800 employees.

(Dckt. #18-1 at ¶8; Dckt. #18-2 at p. 32). 2 Home Chef

grew 150% in 2017, bringing in $250 million in revenue.

(Dckt. #18-1 at ¶10; Dckt. #18-2 at p. 35). Since at least

2018, Home Chef has enjoyed the highest rate of customer

satisfaction amongst companies who sell meal kits. (Dckt.

#18-1 at ¶30).

In June 2018, Home Chef finalized a merger with

grocery retailer the Kroger Co. (“Kroger”), which has

2,800 retail food stores nationwide under a variety of

banner names, including Mariano’s in Illinois. (Dckt.

#18-1 at ¶¶10, 16; Dckt. #18-2 at pp. 35-36, 43). Home

Chef decided to pursue the merger to “further expand the

company’s availability and trade channels by making its

products available through Kroger family retail grocery

stores nationwide.” (Dckt. #18-1 at ¶10; Dckt. #18-2 at p.

35). Home Chef also decided to expand its range of product

offerings beyond meal kits. Specifically, in October 2018,

Home Chef started providing a new line of in-store “Home

Chef Express” products “featuring quick-cook meal kits

ready to eat in 15 minutes,” to “address a major customer

need — faster meals.” (Dckt. #18-1 at ¶11; Dckt. #18-2

at p. 44). By 2019, Home Chef was offering its “Readyto-Cook” and “Ready-to-Eat” meal options in more than

2. Throughout this Report and Recommendation, citations

to specific page numbers refer to the CM/ECF page numbers

indicated at the top of each page.

65a

Appendix C

2,100 Kroger family stores nationwide with double digit

growth in the fresh meal category. (Dckt. #18-1 at ¶12;

Dckt. #18-2 at p. 64).

Currently, Home Chef offers hundreds of products,

including meal kits, heat-and-eat meals, and ready-to-eat

options. (Dckt. #18-1 at ¶15). Representative samples of

the heat-and-eat and ready-to-eat meals include Home

Chef’s heat-and-eat soups (listed for $5.99 and under),

heat-and-eat pasta dishes (listed for $7.99), and varieties

of Home Chef’s ready-to-eat rotisserie and fried chicken,

available “hot” (listed for $7.99 and under). (Dckt. #187 at pp. 162-65 – Printout from Kroger’s website dated

10/29/21; Dckt. #18-8 at pp. 134-36 – Printout from

Instacart’s website dated 11/1/21).

Home Chef’s products can be purchased through

Home Chef’s website and mobile application, Kroger’s

website and mobile application, and in 2,000 Kroger family

stores, either for pick up or delivery. (Id. at ¶16). Since

2021, Home Chef has also partnered with meal delivery

service DoorDash — a Grubhub competitor — to “promote

and sell Home Chef’s meal kits and prepared meals for

pickup and home delivery throughout select Kroger family

stores.” (Dckt. #18-3 at ¶34 – Decl. of Senior Director

of Brand Marketing Shira Schwarz; Dckt. #18-5 at p.

140 (advertisement promoting delivery of Home Chef’s

prepared chicken by Door Dash)). Customers can also

order Home Chef’s meal kits, heat-and-eat, and readyto-eat meals for pick up and home delivery from Kroger

through Instacart, another grocery and meal delivery

service. (Id. at ¶35; Dckt. #18-8 at pp. 134-36). In addition,

select customers can order Home Chef vouchers directly

66a

Appendix C

through the Grubhub mobile app for redemption on the

Home Chef website. (Dckt. #18-8 at pp. 173, 183-86, 190

(Auburn University articles advising students how to

order Home Chef vouchers through the Grubhub app);3

Dckt. #39 at ¶¶72-73 (Grubhub’s answer to Home Chef’s

counterclaims)).

Home Chef’s annual sales, which were $250 million

at the time of its merger with Kroger in 2018, have now

reached $1 billion as of October 25, 2021. (Dckt. #18-1 at

¶¶10, 13; Dckt. #18-2 at pp. 35-36, 121).

Home Chef’s Branding

To strengthen Home Chef’s brand identity and to

distinguish it from its competitors, Vihtelic commissioned

a design company to develop a design suggestive of and

consistent with the HOME CHEF name and word mark.

(Dckt. #18-1 at ¶19). In 2014, Home Chef selected the

following design (hereinafter, the “HC House Mark”):

3. One college student reported that she first learned of Home

Chef from the Grubhub app. (Dckt. #18-8 at p. 184); see Mechling v.

Operator of Website Muaythaifactory.com, No. 21-CV-01538, 2021

U.S. Dist. LEXIS 165876, 2021 WL 3910752, at *1 (N.D.Ill. Sept. 1,

2021) (noting that courts can consider hearsay at the preliminary

injunction stage).

67a

Appendix C

(Dckt. #18-1 at ¶¶19-20). Home Chef owns federal

reg istrations w ith the United States Patent and

Trademark Office (“USPTO”) for the HOME CHEF word

mark (Registration Nos. 5609384, 5811449, and 5362224),

the HC House Mark alone (Registration Nos. 5241586,

5294674, and 5786784), and the HC House Mark with the

HOME CHEF word mark (Registration Nos. 5609448

and 5598365). (Dckt. #18-1 at ¶¶18, 22; Dckt. #18-2 at

pp. 137-152).

Home Chef publicized the HC House Mark in 2014

and thereafter used the mark — both with and without

its registered HOME CHEF word mark — on its website,

on its various social media pages, and to advertise its

products and services — including its meal kits, heat-andeat meals, and ready-to-eat products — through a wide

array of marketing channels. (Dckt. #18-1 at ¶¶20-21, 23;

Dckt. #18-3 at ¶¶2-3). The HC House Mark combined with

the HOME CHEF word mark appears as follows:

(Dckt. #18-1 at ¶¶23, 30). Though often used in green (as

shown above), Home Chef uses the HC House Mark in

a wide variety of colors, including orange. (Dckt. #18-1

at ¶21; Dckt. #18-3 at ¶¶15-16; Dckt. #18-4 and #18-5

(including hundreds of examples of Home Chef’s use of

the HC House Mark, both alone and with the word mark,

in many different colors)).

68a

Appendix C

Home Chef also uses its HC House Mark in numerous

partnerships and co-branding efforts with celebrity

chefs (e.g., Gina Homolka and her brand Skinny Taste),

popular inf luencers (e.g., Olympic gymnast Shawn

Johnson), charities (e.g., Feeding America), businesses

(e.g., Heinz, Impossible Burger), and other well-known

brands. (Dckt. #18-3 at ¶¶17-29; Dckt. #18-4 and #185 (showing extensive use of the HC House Mark in

partnership advertisements)). Moreover, according to

Home Chef’s Senior Director of Marketing, “Home Chef

often promotes its products and services as a convenient,

low-cost alternative to restaurant takeout, including by

comparing its services with restaurant delivery.” (Dckt.

#18-3 at ¶33; Dckt. #18-5 at pp. 132-38).

Since its launch in 2014, Home Chef has spent

more than $450 million on marketing and advertising

to promote its products and services. (Dckt. #18-3

at ¶4). Home Chef’s advertising reaches a nationwide

audience of many millions of customers each day and it

regularly airs commercials through television and cable

broadcasting networks (including ABC, NBC, FOX, A&E,

AMC, BBC America, Bravo, Cooking, Discovery, E!, and

Food Network, amongst others) and various online video

streaming platforms. (Dckt. #18-3 at ¶¶5, 12-13). Home

Chef has accumulated hundreds of thousands of followers

on social media sites, including Facebook (more than a half

million followers), Instagram (218,000 followers), Pinterest

(23,000 followers), and Twitter (12,000 followers). (Dckt.

#18-3 at ¶¶7-9, 11). In addition, Home Chef’s YouTube

channel has had more than 84 million views since July 7,

2014. (Dckt. #18-3 at ¶10).

69a

Appendix C

Grubhub

History and Scope of Operations

Founded in 2004, Grubhub — which proclaims itself

to be one of the “most well-known brands in the United

States” – is a “leading online food-ordering and delivery

marketplace” dedicated to providing its customers with

food from local restaurants. (Dckt. #40 at ¶7; Dckt. #464 at ¶¶ 3-4 – Decl. of Grubhub’s Senior VP of Growth

Ariella Kurshan). Grubhub’s marketplace includes more

than 300,000 restaurant partners in over 4,000 U.S. cities

and provides food to Grubhub’s 32 million active diners.4

(Dckt. #46-4 at ¶¶5-6). In 2020, Grubhub provided nearly

$9 billion in gross food sales to local restaurants, and it

processed more than 745,000 restaurant orders per day.

(Dckt. #46-4 at ¶ 6). Grubhub also provides tools and

services to restaurants aimed at growing their digital

presence and increasing their business. (Dckt. #46-4 at

¶ 7). In addition to working with restaurants, Grubhub

provides meal delivery services through other channels,

including grocery stores. (Dckt. #39 at ¶ 58; Dckt. #46-4

at pp. 95-98).

Since its inception, Grubhub has expanded by

acquiring a number of different food delivery brands, many

of which operate under Grubhub’s “portfolio of brands.”

(Dckt. #18-9 at p. 115 and at pp. 76-106 (press releases

4. “Active diners” are those diners who have used the

Grubhub platform within the past twelve months. See Azar v.

Grubhub, Inc., No. 1:19-cv-07665, 2020 U.S. Dist. LEXIS 258187,

2021 WL 4077327, at *2 n.4 (N.D.Ill. Sept. 7, 2021).

70a

Appendix C

describing Grubhub’s various acquisitions)). One of those

brands is Grubhub’s “well-known” Seamless brand, which

is primarily focused in the greater New York City area

but serves a number of other major U.S. cit

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