Opposition Brief — Relish Labs LLC, et al., Petitioners v. Grubhub Inc., et al.
Supreme Court briefMay 3, 2024
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No. 23-757
In the
Supreme Court of the United States
Relish Labs LLC, et al.,
Petitioners,
v.
Grubhub Inc., et al.,
Respondents.
On Petition for a Writ of Certiorari to the United
States Court of A ppeals for the Seventh Circuit
BRIEF IN OPPOSITION
David H. Bernstein
Counsel of Record
Jared I. K agan
Samuel J. A llaman
Christopher W. Zheng
Debevoise & Plimpton LLP
66 Hudson Boulevard
New York, NY 10001
(212) 909-6696
dhbernstein@debevoise.com
Counsel for Respondents
328492
i
COUNTERSTATEMENT OF QUESTIONS
PRESENTED
In a case for trademark infringement under the
Lanham Act, the key question is whether a
likelihood of confusion exists between the senior
user’s trademark and the allegedly infringing mark.
Courts assess likelihood of confusion with a flexible
test that considers multiple, non-exclusive factors.
Select Comfort Corp. v. Baxter, 996 F.3d 925, 933–34
(8th Cir. 2021). The likelihood of confusion test “is
an equitable balancing test” where “no single factor
is dispositive.” Barbecue Marx, Inc. v. 551 Ogden,
Inc., 235 F.3d 1041, 1044 (7th Cir. 2000). Courts
“may assign varying weights to each of the factors in
different cases.” Id. A district court’s determination
on this “factbound inquiry” is entitled to the
deferential clear error standard on appellate review.
Peoples Fed. Sav. Bank v. People’s United Bank, 672
F.3d 1, 10 (1st Cir. 2012).
A district court’s denial of a motion for a
preliminary injunction in a trademark infringement
case is entitled to “great deference,” and is reviewed
for abuse of discretion. DM Trans, LLC v. Scott, 38
F.4th 608, 617 (7th Cir. 2022).
The appropriate questions in considering this
petition, therefore, should be:
1) Should a district court’s factual findings on the
question of likelihood of confusion on a motion
for preliminary injunction be disturbed in the
absence of clear error?
ii
2) Is a district court’s written decision denying a
motion for a preliminary injunction required to
include detailed findings and conclusions on
every factor in the multi-factor likelihood of
confusion balancing test?
iii
CORPORATE DISCLOSURE STATEMENT
Respondent Grubhub Inc. is a wholly owned
subsidiary of Just Eat Takeaway.com N.V.
Takeaway.com Group B.V. owns 100% of the shares
in Respondent Takeaway.com Central Core B.V.
iv
PARTIES TO THE PROCEEDINGS
Petitioners here, appellants below, are Relish
Labs LLC and The Kroger Co.
Respondents here, appellees below, are Grubhub,
Inc. and Takeaway.com Central Core B.V.
v
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. 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 affirming the District Court’s decision
entered Sept. 12, 2023.
Denial of request for
rehearing and rehearing en banc entered Oct. 11,
2023.
vi
TABLE OF CONTENTS
Page
COUNTERSTATEMENT OF QUESTIONS
PRESENTED .............................................................. i
CORPORATE DISCLOSURE STATEMENT .......... iii
PARTIES TO THE PROCEEDINGS ....................... iv
RELATED PROCEEDINGS ...................................... v
TABLE OF AUTHORITIES ................................... viii
INTRODUCTION ...................................................... 1
STATEMENT OF THE CASE ................................... 3
I.
Factual Background ........................................ 3
A.
B.
II.
Grubhub’s Business and Branding ...... 3
Home Chef’s Business and
Branding ............................................... 6
Procedural History .......................................... 7
A.
B.
The District Court Proceedings ............ 7
The Seventh Circuit Proceedings ......... 9
REASONS FOR DENYING CERTIORARI ............ 15
I.
There Are No Legal Issues That Warrant
This Court’s Review ...................................... 15
A.
B.
A District Court’s Fact Finding on
Likelihood of Confusion Is Entitled
to Great Deference .............................. 15
The District Court Conducted a
Proper Likelihood of Confusion
Analysis, and the Seventh Circuit
Appropriately Deferred to the
District Court’s Factual Findings ...... 21
vii
C.
II.
1.
The District Court Properly
Analyzed and Weighed All of
the Likelihood of Confusion
Factors ....................................... 21
2.
The Seventh Circuit Applied
the Correct Deferential
Standard of Appellate
Review........................................ 23
There Is No Circuit Split on the
Standard of Review for the
Likelihood of Confusion ...................... 25
This Case Is a Poor Vehicle for
Addressing the Questions Presented ............ 30
CONCLUSION ......................................................... 36
viii
TABLE OF AUTHORITIES
CASES
A & H Sportswear, Inc. v. Victoria’s Secret
Stores, Inc.,
237 F.3d 198 (3d Cir. 2000) .............................. 19
Adkins v. Mid-Am. Growers, Inc.,
141 F.R.D. 466 (N.D. Ill. 1992) ......................... 22
AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979)............................. 16
Anderson v. City of Bessemer City,
470 U.S. 564 (1985) ..................................... 19, 20
Autozone, Inc. v. Strick,
543 F.3d 923 (7th Cir. 2008)............................... 8
B & B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138 (2015) ........................................... 16
BellSouth Telecoms., Inc. v. MCIMetro Access
Transmission Servs., LLC,
425 F.3d 964 (11th Cir. 2005)........................... 33
Blue Bell Bio-Med. v. Cin-Bad, Inc.,
864 F.2d 1253 (5th Cir. 1989)........................... 32
Blue Cross & Blue Shield Mut. of Ohio v. Blue
Cross & Blue Shield Ass’n,
110 F.3d 318 (6th Cir. 1997)............................. 33
ix
Bos. Duck Tours, LP v. Super Duck Tours,
LLC,
531 F.3d 1 (1st Cir. 2008) ................................. 25
Brenntag Int’l Chem., Inc. v. Bank of India,
175 F.3d 245 (2d Cir. 1999) .............................. 32
Cadbury Beverages, Inc. v. Cott Corp.,
73 F.3d 474 (2d Cir. 1996) ................................ 28
Checkpoint Sys., Inc. v. Check Point Software
Techs., Inc.,
269 F.3d 270 (3d Cir. 2001) .............................. 17
ConAgra, Inc. v. George A. Hormel, & Co.,
990 F.2d 368 (8th Cir. 1993)............................. 26
Cumulus Media, Inc. v. Clear Channel
Commc’ns, Inc.,
304 F.3d 1167 (11th Cir. 2002)......................... 34
Demery v. Arpaio,
378 F.3d 1020 (9th Cir. 2004)........................... 34
Eclipse Assocs. Ltd. v. Data Gen. Corp.,
894 F.2d 1114 (9th Cir. 1990)........................... 18
Ekokotu v. Fed. Express Corp.,
408 Fed. Appx. 331 (11th Cir. 2011) ................ 22
Eli Lilly & Co. v. Nat. Answers, Inc.,
233 F.3d 456 (7th Cir. 2000)............................... 8
Fortune Dynamic, Inc. v. Victoria’s Secret
Stores Brand Mgmt., Inc.,
618 F.3d 1025 (9th Cir. 2010)..................... 16, 18
x
Frehling Enters., Inc. v. Int’l Select
Group, Inc.,
192 F.3d 1330 (11th Cir. 1999)......................... 16
Frisch’s Restaurants v. Elby’s Big Boy,
670 F.2d 642 (6th Cir. 1982)....................... 15, 31
Future Proof Brands, L.L.C. v. Molson Coors
Beverage Co.,
982 F.3d 280 (5th Cir. 2020)............................. 18
Gen. Motors Corp. v. Urban Gorilla, LLC,
500 F.3d 1222 (10th Cir. 2007)......................... 26
George & Co. LLC v. Imagination Ent. Ltd.,
575 F.3d 383 (4th Cir. 2009)............................. 17
Georgia-Pacific Consumer Prods. LP v. Myers
Supply, Inc.,
621 F.3d 771 (8th Cir. 2010)............................. 20
Goodman v. Ill. Dep’t of Fin. & Pro. Regul.,
430 F.3d 432 (7th Cir. 2005)............................. 31
Hamilton Int’l Ltd. v. Vortic LLC,
13 F.4th 264 (2d Cir. 2021)................... 17, 20, 28
Heideman v. S. Salt Lake City,
348 F.3d 1182 (10th Cir. 2003)......................... 33
Helene Curtis Indus., Inc. v. Church &
Dwight Co.,
560 F.2d 1325 (7th Cir. 1977)..................... 15, 16
I.P. Lund Trading ApS v. Kohler Co.,
163 F.3d 27 (1st Cir. 1998) ............................... 32
xi
Incredible Techs., Inc. v. Virtual Techs., Inc.,
400 F.3d 1007 (7th Cir. 2005)........................... 33
Interpace Corp. v. Lapp, Inc.,
721 F.2d 460 (3d Cir. 1983) .............................. 15
Inwood Labs, Inc. v. Ives Labs, Inc.,
456 U.S. 844 (1982) ........................................... 20
Johnson v. Zema Sys. Corp.,
170 F.3d 734 (7th Cir. 1999)............................. 21
King of the Mountain Sports, Inc. v.
Chrysler Corp.,
185 F.3d 1084 (10th Cir. 1999)......................... 16
Klayman v. Jud. Watch, Inc.,
6 F.4th 1301 (D.C. Cir. 2021) ........................... 27
La Quinta Worldwide LLC v. Q.R.T.M.,
S.A. de C.V.,
762 F.3d 867 (9th Cir. 2014)............................. 26
Leaders of a Beautiful Struggle v. Balt. Police
Dep’t,
2 F.4th 330 (4th Cir. 2021) ......................... 32, 34
Leelanau Wine Cellars, Ltd. v.
Black & Red, Inc.,
502 F.3d 504 (6th Cir. 2007)................. 18, 19, 26
Life Spine, Inc. v. Aegis Spine, Inc.,
8 F.4th 531 (7th Cir. 2021) ............................... 10
LoConte v. Dugger,
847 F.2d 745 (11th Cir. 1988)........................... 22
xii
Lois Sportswear, U.S.A., Inc. v.
Levi Strauss & Co.,
799 F.2d 867 (2d Cir. 1986) .............................. 28
Maxim’s Ltd. v. Badonsky,
772 F.2d 388 (7th Cir. 1985)............................. 33
Nat’l Bus. Forms & Printing, Inc. v.
Ford Motor Co.,
671 F.3d 526 (5th Cir. 2012)............................. 25
Nat’l Organics, Inc. v. Nutraceutical Corp.,
426 F.3d 576 (2d Cir. 2005) .............................. 28
Ortho Pharm. Corp. v. Amgen, Inc.,
882 F.2d 806 (3d Cir. 1989) .............................. 32
Pignons S.A. de Mecanique de Precision v.
Polaroid Corp.,
657 F.2d 482 (1st Cir. 1981) ............................. 15
Pizzeria Uno Corp. v. Temple,
747 F.2d 1522 (4th Cir. 1984)........................... 15
PlayNation Play Sys., Inc. v. Velex Corp.,
924 F.3d 1159 (11th Cir. 2019)................... 19, 26
Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961) .............................. 15
Preminger v. Principi,
422 F.3d 815 (9th Cir. 2005)............................. 33
Protect Our Parks, Inc. v. Buttigieg,
10 F.4th 758 (7th Cir. 2021) ............................... 9
xiii
Reno Air Racing Ass’n, Inc. v. McCord,
452 F.3d 1126 (9th Cir. 2006)........................... 20
Rust Env’t & Infrastructure, Inc. v.
Teunissen,
131 F.3d 1210 (7th Cir. 1997)....10, 19, 20, 23, 25
Sabinsa Corp. v. Creative Compounds, LLC,
609 F.3d 175 (3d Cir. 2010) .............................. 25
Scandia Down Corp. v. Euroquilt, Inc.,
772 F.2d 1423 (7th Cir. 1985)..................... 20, 31
Sly Mag., LLC v. Weider Publ’ns L.L.C.,
346 F. App’x 721 (2d Cir. 2009) ........................ 29
Speech First, Inc. v. Killeen,
968 F.3d 628 (7th Cir. 2020)............................. 10
SquirtCo. v. Seven-Up Co.,
628 F.2d 1086 (8th Cir. 1980)........................... 16
Starbucks Corp. v.
Wolfe’s Borough Coffee, Inc.,
588 F.3d 97 (2d Cir. 2009) ................................ 26
Storck USA, L.P. v. Farley Candy Co.,
14 F.3d 311 (7th Cir. 1994)................................. 8
Streamline Prod. Sys., Inc. v.
Streamline Mfg., Inc.,
851 F.3d 440 (5th Cir. 2017)............................. 15
Swatch AG v. Beehive Wholesale, LLC,
739 F.3d 150 (4th Cir. 2014)............................. 25
xiv
TCF Nat’l Bank v. Bernanke,
643 F.3d 1158 (8th Cir. 2011)........................... 33
Tully v. Okeson,
977 F.3d 608 (7th Cir. 2020)............................. 32
Water Pik, Inc. v. Med-Sys., Inc.,
726 F.3d 1136 (10th Cir. 2013)......................... 18
Wynn Oil Co. v. Am. Way Serv. Corp.,
943 F.2d 595 (6th Cir. 1991)............................. 29
Yellowfin Yachts, Inc. v. Barker Boatworks,
LLC, 898 F.3d 1279 (11th Cir. 2018) ............... 18
Zenith Radio Corp. v.
Hazeltine Rsch., Inc.,
395 U.S. 100 (1969) ........................................... 20
STATUTES
15 U.S.C. § 1071(a)(4) ............................................ 27
15 U.S.C. § 1114 ..................................................... 15
15 U.S.C. § 1125 ..................................................... 15
28 U.S.C. § 636(b)(1)(C) ......................................... 21
OTHER AUTHORITIES
3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition
§ 24:30 (5th ed. 2024)........................................ 15
xv
3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition
§ 23:73 (5th ed. 2024)........................................ 25
Fed. R. Civ. P. 72(b) ......................................... 21, 22
Restatement (Third) of Unfair Competition
§ 21 (Am. L. Inst. 1995) .................................... 17
1
INTRODUCTION
Grubhub filed a complaint for declaratory
judgment that its trademark does not infringe or
dilute Home Chef’s trademark rights, and does not
constitute unfair competition under federal and state
law.
Home Chef counterclaimed, asserting
trademark infringement and related claims against
Grubhub, and filed a routine motion for a
preliminary injunction. The District Court denied
the motion because it found—after considering the
Seventh Circuit’s standard likelihood of confusion
factors—that Home Chef failed to demonstrate that
it was likely to succeed on the merits of its claims.
On review, the Court of Appeals for the Seventh
Circuit affirmed, finding that the District Court did
not abuse its discretion in denying the extraordinary
remedy of a preliminary injunction. The case is set
to proceed to discovery and toward adjudication on
the merits, which will be based on a full evidentiary
record rather than the limited record available to the
District Court on the preliminary injunction motion.
There is nothing remarkable about the
proceedings below, and there is no issue that merits
this Court’s review.
Home Chef’s petition for
certiorari rests on factually and legally flawed
premises.
First, contrary to Home Chef’s argument, the
District Court and the Court of Appeals considered
all of the likelihood of confusion factors. As the
Seventh Circuit explained, Home Chef’s appeal
“boil[ed] down to mere disagreement with the
2
district court’s weighing of the [likelihood of
confusion] factors.” App. 37a. The District Court is
afforded broad discretion—both in its consideration
of the factual question of likelihood of confusion and
whether to award the drastic remedy of a
preliminary
injunction—and
Home
Chef’s
disagreement with the District Court’s assessment
provides no basis for relief. That is true even when a
district judge disagrees with a magistrate judge’s
report and recommendation. That the District Judge
here sustained objections to the Report and
Recommendation does not in any way change the
Circuit Court’s or this Court’s standard of review.
Second, there is no circuit split for this Court to
resolve. Absent clear error, appellate courts across
the country uniformly defer to a district court’s
factual findings on the question of likelihood of
confusion, and on the appropriateness of denying a
motion for a preliminary injunction.
That is
precisely what the Seventh Circuit did here when it
declined to disturb the District Court’s denial of
Home Chef’s motion for a preliminary injunction.
Even if there were an issue of trademark law for
this Court to address (and there is not), this case is
not an appropriate vehicle for doing so. There has
been no discovery in this case to date, and Home
Chef’s petition comes to the Court on a limited
preliminary injunction record. Any review of how
lower courts consider and weigh the likelihood of
confusion factors should be based on a full
evidentiary record following a trial on the merits.
3
Grubhub respectfully requests that the petition
for certiorari be denied.
STATEMENT OF THE CASE
I. Factual Background
A.
Grubhub’s Business and Branding
Founded in 2004, Grubhub is a leading online
food-ordering and delivery marketplace that
operates across the United States and connects
millions of diners with restaurants through its
website and mobile application.
App. 3a–4a.
Grubhub owns numerous United States trademark
registrations covering the GRUBHUB name and
stylized variations, which it has used since it
launched in 2004 (long before Home Chef was
founded in 2013). App. 2a; Br. of Plaintiffs-Appellees
at 2–3, Grubhub, Inc. et al. v. Relish Labs LLC et al.,
No. 22-1950 (7th Cir. Aug. 5, 2022), ECF No. 15.
On June 15, 2021, Grubhub was acquired by the
Netherlands-based
company,
Just
East
Takeaway.com (“JET”). App. 4a. JET owns many
food-ordering and delivery services worldwide. At
the time of the acquisition, JET was already using
its “Jet House Mark” (shown below), id., which it
first adopted in June 2014, around the same time
Home Chef publicized the Home Chef Home Mark.
See App. 58a.
4
To help underscore the relationship between JET’s
companies in different countries, some of which have
different brand names, JET combines the JET House
Mark with the brand names of its local subsidiaries
and affiliates.
Br. of Plaintiffs-Appellees at 5,
Grubhub, Inc. et al., No. 22-1950 (7th Cir. Aug. 5,
2022). Consistent with that business practice, after
the completion of its acquisition of Grubhub, JET
adopted trademarks that combined the well-known
GRUBHUB word mark (the “Grubhub House Logo”)
and SEAMLESS word mark (the “Seamless House
Logo”), which is a subsidiary of Grubhub, with the
JET House Mark to bring it in line with its global
branding (as shown below). App. 4a–5a; Br. of
Plaintiffs-Appellees at 4, Grubhub, Inc. et al., No.
22-1950 (7th Cir. Aug. 5, 2022).
5
Grubhub House Logo
Seamless House Logo
Grubhub unveiled the new Grubhub House Logo
in July 2021. App. 5a. Since then, Grubhub has
invested millions in rebranding its print and
electronic materials across all of its platforms and
with its tens of thousands of restaurant partners.
Id. Between the July 2021 unveiling of the Grubhub
6
House Logo and the filing of Home Chef’s motion for
a preliminary injunction, Grubhub processed over 72
million orders under the Grubhub House Logo. Id.
B.
Home Chef’s Business and Branding
Home Chef was founded in 2013 and delivers
meal kits with pre-portioned ingredients and recipes.
App. 2a. In 2018, Home Chef merged with Kroger,
which operates supermarkets under various
different brands. Home Chef’s products are now sold
in Kroger stores and through Kroger’s website and
mobile application. Id.
Starting in June 2014, Home Chef began using
its “Home Chef Home Mark.” Home Chef later
registered the logo in the United States, both alone
and with the words HOME CHEF. App. 3a. Home
Chef has spent more than $450 million on marketing
and advertising using the Home Chef Home Logo to
distinguish itself as an alternative to restaurant
takeout. Id.
7
II. Procedural History
A.
The District Court Proceedings
In September 2021, Home Chef sent a “cease and
desist” communication to Grubhub demanding
Grubhub stop using all forms of the JET House
Mark. App. 61a. Grubhub filed a lawsuit on October
7, 2021, seeking a declaratory judgment that the
Grubhub House Logo does not infringe the Home
Chef Home Logo or Home Chef Home Mark. Id.
Home Chef filed counterclaims for trademark
infringement. On November 3, 2021, Home Chef
filed a motion for a preliminary injunction. App.
62a. On April 8, 2022, the Magistrate Judge issued
a non-binding Report and Recommendation (“R&R”)
recommending a finding that the Grubhub House
Logo was likely to cause confusion with Home Chef’s
trademarks, and recommending that the District
Court grant Home Chef’s motion for a preliminary
injunction. App. 133a–134a. On May 6, 2022,
Grubhub filed Objections to the R&R. On May 25,
2022, the District Court sustained each of Grubhub’s
objections,
rejected
the
Magistrate
Judge’s
recommendations, and issued an order denying
Home Chef’s motion for preliminary injunction.
App. 39a–40a.
The District Court explained that it denied
Home Chef’s motion for preliminary injunction
because “Home Chef [had] not met its burden of
making a strong showing of a likelihood of success on
the merits” of its trademark infringement
counterclaim.
App. 54a.
The District Court
explained that “[a] preliminary injunction is a
8
drastic remedy which is ‘never to be indulged except
in a case clearly demanding it’” and that the
“ultimate decision in weighing and balancing [the
preliminary injunction factors] requires a high
degree of discretion on the part of the district judge.”
App. 52a (citing Barbecue Marx, 235 F.3d at 1044
and Storck USA, L.P. v. Farley Candy Co., 14 F.3d
311, 314 (7th Cir. 1994)). In its review of the R&R,
the District Court considered the Seventh Circuit’s
likelihood of confusion factors:
1. the similarity between
appearance and suggestion;
the
marks
in
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;
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.
App. 53a–54a (citing Autozone, Inc. v. Strick, 543
F.3d 923, 929 (7th Cir. 2008)). The District Court
explained that, under Seventh Circuit precedent,
“[w]hile 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.’” App. 54a (quoting Eli Lilly & Co. v. Nat.
Answers, Inc., 233 F.3d 456, 462 (7th Cir. 2000)).
9
Grubhub objected to the R&R’s analysis of each of
these three factors. The District Court sustained
Grubhub’s objections and found that “all [three
factors] favor Grubhub.” App. 54a.
The Magistrate Judge had found that the other
four factors favored Home Chef, and the District
Court adopted the R&R’s analysis of those four
factors—to which Grubhub did not object—because it
found that the Magistrate Judge had not clearly
erred in its analysis on those factors. The District
Court balanced all seven factors and concluded that
the four factors to which Grubhub did not object
“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” as is required for
a motion for preliminary injunction. App. 54a n.2;
see Protect Our Parks, Inc. v. Buttigieg, 10 F.4th
758, 763 (7th Cir. 2021). Accordingly, the District
Court rejected the R&R and denied Home Chef’s
motion for preliminary injunction. App. 59a.
B. The Seventh Circuit Proceedings
On September 12, 2023, the Court of Appeals for
the Seventh Circuit unanimously affirmed the
District Court’s decision, holding that the District
Court did not clearly err in concluding that Home
Chef failed to demonstrate a likelihood of success on
the merits. App. 1a–2a.
The Seventh Circuit reviewed the District
Court’s denial of Home Chef’s motion for a
preliminary injunction for abuse of discretion, under
which legal conclusions are reviewed de novo and
factual findings are reviewed for clear error. App. 7a
10
(citing Life Spine, Inc. v. Aegis Spine, Inc., 8 F.4th
531, 539 (7th Cir. 2021)). The Seventh Circuit noted
that, absent errors, a District Court’s decision
denying a motion for a preliminary injunction is
afforded “great deference.” App. 7a (quoting Speech
First, Inc. v. Killeen, 968 F.3d 628, 638 (7th Cir.
2020)).
Whether consumers are likely to be confused is a
question of fact, and thus, the Seventh Circuit
reviewed the District Court’s analysis of the
likelihood of confusion factors under the deferential,
clear error standard. App. 10a (citing Rust Env’t &
Infrastructure, Inc. v. Teunissen, 131 F.3d 1210,
1216 (7th Cir. 1997)). The Seventh Circuit noted
that a finding of fact is clearly erroneous only if the
reviewing court has a definite and firm conviction
that a mistake has been committed; if a district
court’s evaluation of the evidence is plausible, the
Court of Appeals may not reverse the decision, even
if it would have weighed the evidence differently.
App 11a (citing Rust Env’t & Infrastructure, 131
F.3d at 1216).
The Seventh Circuit first found that the District
Court did not clearly err in comparing the Grubhub
House Logo (rather than the JET House Mark) to
the Home Chef Home Logo for purposes of the
likelihood of confusion analysis. App. 11a. The
record evidence showed that consumers rarely, if
ever, interacted with the JET House Mark by itself.
Rather, the JET House Logo is almost always locked
up with the GRUBHUB word mark (to form the
Grubhub House Logo), or is otherwise encountered
in a context that leaves no doubt that the consumer
11
is interacting with Grubhub’s services (such as on
Grubhub’s website, with clear GRUBHUB branding).
App 12a–13a.
Turning next to the District Court’s analysis of
the seven likelihood of confusion factors, the Seventh
Circuit acknowledged that a district court “may
assign varying weight to each of the factors
depending on the facts presented,” and that Home
Chef disputed the District Court’s determinations on
the similarity of the marks, the defendant’s intent,
and actual confusion. App 14a. The Seventh Circuit
reviewed the District Court’s analyses of these
factors in turn, and also considered the strength of
the marks because Home Chef has discussed the
strength of the Grubhub word mark at all levels of
review, App. 21a–22a, and ultimately concluded that
the District Court did not clearly err, either in its
assessment of the individual likelihood of confusion
factors or in its weighing of the factors; the Seventh
Circuit similarly concluded that the District Court
did not abuse its discretion in denying the
preliminary injunction. App. 36a–37a.
First, the Seventh Circuit reviewed the
similarity of the marks and found that the Grubhub
House Logo is “neither ‘virtually identical’ to the
Home Chef house design nor used to promote
‘virtually identical’ products and services,” and that
the record “is sparse, at best” with evidence that
Grubhub will overwhelm the market and create an
association between Home Chef and Grubhub. App.
20a.
12
As part of its review of the similarity of the
marks, the Seventh Circuit also reviewed the
District Court’s decision not to give substantial
weight to a non-final determination from the United
States Patent and Trademark Office (“USPTO”) that
found that the JET House Mark (not the Grubhub
House Logo) was confusingly similar to the Home
Chef Home Mark. The Seventh Circuit agreed with
the District Court that the non-final office action was
a preliminary determination, that the USPTO did
not consider the marks at issue in this case, and, in
any event, there was no conclusive determination as
to the registrability of the JET House Mark. App.
20a. Thus, the Seventh Circuit found that the
District Court did not clearly err in finding that
Home Chef failed to show the similarity of the marks
favored a finding of likelihood of confusion. App.
20a–21a.
Second, the Seventh Circuit reviewed the
strength of Grubhub’s mark. App. 21a. Here, the
Seventh Circuit found that both Home Chef and
Grubhub have invested millions in advertising and
sold billions of dollars’ worth of goods or services.
App. 23a–24a. The Seventh Circuit found it “hard to
see how the [Home Chef] Home Mark (let alone the
[Home Chef] Home Logo, 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.” App. 23a–24a. The Seventh Circuit
acknowledged that it was not its role to weigh the
evidence anew, and it was not convinced that the
District Court clearly erred when it found Home
13
Chef failed to demonstrate that consumers would be
confused between Home Chef and Grubhub’s
products and services. App. 24a.
Third, the Seventh Circuit reviewed the actual
confusion factor, and considered two social media
comments that Home Chef alleged were evidence of
actual confusion, as well as Grubhub’s consumer
perception surveys showing no confusion. App. 25a–
26a.
After a thorough review of the survey’s
parameters, the District Court credited Grubhub’s
consumer perception survey evidence, which
demonstrated no confusion. App. 29a and 42a–47a.
Upon review, the Seventh Circuit found no clear
error in the District Court’s analysis of Grubhub’s
consumer perception survey and that there was no
clear error in crediting the survey. App. 32a. The
Seventh Circuit also agreed with the District Court’s
decision to afford Home Chef’s two social media
comments little weight because the authors were
“not actually confused by the marks” and recognized
that the “corporations were distinct.” App. 26a. The
Seventh Circuit found the District Court’s weighing
of Home Chef’s actual confusion evidence against
Grubhub’s expert survey evidence was plausible and
that the District Court did not clearly err in finding
that the actual confusion factor did not support a
likelihood of confusion. App. 33a.
Fourth, the Seventh Circuit evaluated Grubhub’s
intent, acknowledging that intent is “essentially
irrelevant” in the reverse confusion context where
the alleged infringer is not palming off or attempting
to create confusion. App. 34a. The Seventh Circuit
agreed that there was no evidence that Grubhub was
14
culpable or deliberately disregarded Home Chef’s
marks, App. 35a, but did find that the District Court
erred in concluding that the intent factor weighed
against a likelihood of confusion because intent can
only bolster a likelihood of confusion finding, or be
neutral. App. 36a. Accordingly, the Seventh Circuit
found this factor to be “at best neutral and,
therefore, of minimal value in the likelihood of
confusion analysis.” Id.
As to 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 Seventh Circuit recognized that
they were not disputed and that they weighed in
favor of a finding of likelihood of confusion. Id.
Having reviewed the District Court’s factual
determinations on each of the likelihood of confusion
factors, the Seventh Circuit next reviewed the
District Court’s weighing of the factors. The Seventh
Circuit found that the District Court addressed both
the disputed and undisputed likelihood of confusion
factors, and appropriately exercised its discretion to
give weight to the factors it found to be most salient
and significant. App. 37a. In the Seventh Circuit’s
view, Home Chef’s argument “boil[ed] down to mere
disagreement with the district court’s weighing of
the factors.” Id. The Seventh Circuit concluded that
the District Court’s finding that Home Chef failed to
establish a likelihood of success on the merits was
not clearly erroneous. Id.
On October 11, 2023, the Seventh Circuit denied
Home Chef’s motion for rehearing and rehearing en
15
banc. App. 136a. On January 9, 2024, Home Chef
filed a petition for a writ of certiorari.
REASONS FOR DENYING CERTIORARI
I. There Are No Legal Issues That Warrant This
Court’s Review
A. A District Court’s Fact Finding on
Likelihood of Confusion Is Entitled to
Great Deference
The Lanham Act provides a cause of action for
infringement to a trademark owner against another
that uses a mark that “is likely to cause confusion, or
to cause mistake, or to deceive.” 15 U.S.C. §§ 1114,
1125. Each federal circuit court has developed a set
of factors to help assess likelihood of confusion. See
3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 24:30 (5th ed. 2024);
Pignons S.A. de Mecanique de Precision v. Polaroid
Corp., 657 F.2d 482, 487 (1st Cir. 1981) (establishing
the eight Pignons factors for likelihood of confusion);
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492,
495 (2d Cir. 1961) (establishing the eight factor
Polaroid test for likelihood of confusion); Interpace
Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983)
(establishing the ten factor Lapp test for likelihood
of confusion); Pizzeria Uno Corp. v. Temple, 747 F.2d
1522, 1527 (4th Cir. 1984) (establishing the seven
factor Pizzeria Uno test for likelihood of confusion);
Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc.,
851 F.3d 440, 453 (5th Cir. 2017) (applying the eight
factor “digits of confusion” test for likelihood of
confusion); Frisch’s Restaurants v. Elby’s Big Boy,
16
670 F.2d 642, 648 (6th Cir. 1982) (establishing the
eight factor Frisch test for likelihood of confusion);
Helene Curtis Indus., Inc. v. Church & Dwight Co.,
560 F.2d 1325, 1330 (7th Cir. 1977) (establishing the
seven factor Helene Curtis test for likelihood of
confusion); SquirtCo. v. Seven-Up Co., 628 F.2d
1086, 1090 (8th Cir. 1980) (establishing the six
factor SquirtCo test for likelihood of confusion);
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49
(9th Cir. 1979) (establishing the eight factor
Sleekcraft test for likelihood of confusion); King of
the Mountain Sports, Inc. v. Chrysler Corp., 185
F.3d 1084, 1089–90 (10th Cir. 1999) (establishing
the six factor King of the Mountain test for
likelihood of confusion); Frehling Enters., Inc. v. Int’l
Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir.
1999) (establishing the seven factor Frehling test for
likelihood of confusion).
Although each federal circuit articulates the
factors in a slightly different way, this Court has
recognized that “the factors are not fundamentally
different” and any differences amount to “[m]inor
variations in the application of what is in essence
the same legal standard” (i.e., likelihood of
confusion). B & B Hardware, Inc. v. Hargis Indus.,
Inc., 575 U.S. 138, 139, 154 (2015).
Regardless of which specific factors courts
consider, assessing likelihood of confusion is not a
rigid formula to be applied in a singular manner.
Fortune Dynamic, Inc. v. Victoria’s Secret Stores
Brand Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir.
2010) (“The [likelihood of confusion] factors are not a
scorecard, a bean-counter, or a checklist.”). An
17
inflexible application of the multi-factor test would
defy its very purpose, because “[n]o mechanistic
formula or list can set forth in advance the variety of
factors that may contribute to the particular
marketing context of an actor’s use.” Restatement
(Third) of Unfair Competition § 21 (Am. L. Inst.
1995). Courts have recognized that “[t]his flexible,
context-specific, and relative-rather-than-mechanical
approach makes sense because the general function
of the likelihood-of-confusion factors is to guide the
finder of fact towards considerations generally
thought to be material to the consuming public’s
understanding of product source or affiliation.”
Select Comfort Corp., 996 F.3d at 934.
Indeed, courts across the country have
recognized that that the likelihood of confusion test
“is an equitable balancing test” where “no single
factor is dispositive . . . and courts may assign
varying weights to each of the factors in different
cases.” Barbecue Marx, 235 F.3d at 1044 (7th Cir.
2000); see also Peoples Fed. Sav. Bank, 672 F.3d at
10 (1st Cir. 2012) (“A proper analysis takes
cognizance of all eight factors but assigns no single
factor dispositive weight.”); Hamilton Int’l Ltd. v.
Vortic LLC, 13 F.4th 264, 272 (2d Cir. 2021) (“[T]he
District Court also correctly recognized that
application of these non-exhaustive factors is not a
mechanical process, and depending on the
complexity of the issues, the court may have to take
still other variables into account.” (internal
quotation marks omitted)); Checkpoint Sys., Inc. v.
Check Point Software Techs., Inc., 269 F.3d 270, 280
(3d Cir. 2001) (“None of these factors is
determinative in the likelihood of confusion analysis
18
and each factor must be weighed and balanced one
against the other.”); George & Co. LLC v.
Imagination Ent. Ltd., 575 F.3d 383, 393 (4th Cir.
2009) (“Not all of these factors are of equal
importance.”); Future Proof Brands, L.L.C. v. Molson
Coors Beverage Co., 982 F.3d 280, 298 (5th Cir.
2020) (“[A] finding of a likelihood of confusion ‘need
not be supported by a majority’ of the [factors].”);
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc.,
502 F.3d 504, 515 (6th Cir. 2007) (“In applying these
factors, the court has cautioned that they ‘imply no
mathematical precision, but are simply a guide to
help determine whether confusion is likely.’”); Select
Comfort Corp., 996 F.3d at 933 (8th Cir. 2021) (“We
have repeatedly emphasized that no one factor is
controlling and different factors will carry more
weight in different settings.”); Fortune Dynamic, 618
F.3d at 1030 (9th Cir. 2010) (“This eight-factor
analysis is ‘pliant,’ illustrative rather than
exhaustive, and best understood as simply providing
helpful guideposts.”); Water Pik, Inc. v. Med-Sys.,
Inc., 726 F.3d 1136, 1143 (10th Cir. 2013) (“The
importance of any particular factor in a specific case
can depend on a variety of circumstances, including
the force of another factor.”); Yellowfin Yachts, Inc.
v. Barker Boatworks, LLC, 898 F.3d 1279, 1289
(11th Cir. 2018) (“[W]e do not decide which party is
favored by each factor, tally up the score, and hold in
favor of the party with the most points. We apply the
factors holistically.”).
This highly fact-dependent analysis turns upon
the district courts’ weighing of unique factual
evidence, and is the reason that prior decisions
addressing likelihood of confusion often have
19
“limited precedential value.” Eclipse Assocs. Ltd. v.
Data Gen. Corp., 894 F.2d 1114, 1117 (9th Cir.
1990). Because the “factors are not exclusive,” every
factor is not probative or even relevant in every case,
and district courts have discretion to consider
probative evidence that does not neatly fit within the
factors. PlayNation Play Sys., Inc. v. Velex Corp.,
924 F.3d 1159, 1169 (11th Cir. 2019); Leelanau Wine
Cellars, 502 F.3d at 515 (6th Cir. 2007) (“Given the
fact-specific nature of trademark infringement
actions, not all of the eight factors will be relevant in
every case.”); A & H Sportswear, Inc. v. Victoria’s
Secret Stores, Inc., 237 F.3d 198, 215 (3d Cir. 2000)
(“[T]he Lapp test is a qualitative inquiry. Not all
factors will be relevant in all cases.”).
Additionally, this highly contextual, fact-driven
analysis of likelihood of confusion is reflected in the
deferential, clear error review standard that federal
circuits apply. Under the deferential standard of
review, “[i]f the district court’s account of the
[likelihood of confusion] 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.” Rust Env’t
& Infrastructure, 131 F.3d at 1216 (quoting
Anderson v. City of Bessemer City, 470 U.S. 564, 574
(1985)).
Thus, even “[w]here there are two
permissible views of the evidence, the factfinder’s
choice between them cannot be clearly erroneous.”
Anderson, 470 U.S. at 574.
The clear error standard of review reflects the
“belief that[,] because appellate courts never are in a
20
better position [to evaluate the factual record] than
the district court, and often are in a worse one,
‘[d]uplication of the trial judge’s efforts in the court
of appeals would very likely contribute only
negligibly to the accuracy of fact determination at a
huge cost in diversion of judicial resources.’” Rust
Env’t & Infrastructure, 131 F.3d at 1216 (7th Cir.
1997) (quoting Scandia Down Corp. v. Euroquilt,
Inc., 772 F.2d 1423, 1428 (7th Cir. 1985), certiorari
denied, 475 U.S. 1147 (1986)); Hamilton Int’l Ltd.,
13 F.4th at 277 (2d Cir. 2021) (“It is axiomatic, of
course, that ‘[c]lear error review mandates that we
defer to the District Court’s factual findings.”);
Georgia-Pacific Consumer Prods. LP v. Myers
Supply, Inc., 621 F.3d 771, 775 (8th Cir. 2010) (“If
there are two permissible views of the evidence, ‘the
fact-finder’s choice between them cannot be clearly
erroneous.’” (quoting Anderson, 470 U.S. at 574));
Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d
1126, 1135 (9th Cir. 2006) (“If the district court’s
account of the evidence is plausible in light of the
record viewed in its entirety, we may not reverse
even though . . . as the trier of fact, we would have
weighed the evidence differently.”); Inwood Labs,
Inc. v. Ives Labs, Inc., 456 U.S. 844, 857 (1982) (“An
appellate court cannot substitute its interpretation
of the evidence for that of the trial court simply
because the reviewing court ‘might give the facts
another construction.”). This view is consistent with
this Court’s statements that, when a reviewing court
applies the clearly erroneous standard to factual
findings, appellate courts must keep in mind their
function is not to decide factual issues anew. Zenith
Radio Corp. v. Hazeltine Rsch., Inc., 395 U.S. 100,
123 (1969).
21
The Seventh Circuit’s review of the District
Court’s likelihood of confusion analysis on Home
Chef’s motion for preliminary injunction is
consistent with these principles of appellate review,
and the District Court properly engaged in a factintensive review and balancing of the evidence in
analyzing likelihood of confusion.
B. The District Court Conducted a Proper
Likelihood of Confusion Analysis, and the
Seventh Circuit Appropriately Deferred to
the District Court’s Factual Findings
1. The District Court Properly Analyzed
and Weighed All of the Likelihood of
Confusion Factors
Contrary to Home Chef’s assertions, the District
Court below properly applied the flexible, factdependent likelihood of confusion test and found that
Home Chef failed to establish entitlement to a
preliminary injunction.
The District Court
conducted its likelihood of confusion analysis upon
review of Grubhub’s objections to the Magistrate
Judge’s R&R. When a party objects to a magistrate
judge’s report and recommendation, a district court
reviews all contested portions of the decision de
novo.
Fed. R. Civ. P. 72(b)(3); 28 U.S.C. §
636(b)(1)(C).1 On de novo review, “the magistrate
In contrast, where there is no objection filed to a magistrate
judge’s report and recommendation, a district court “need only
satisfy itself that there is no clear error on the face of the record in order to accept [those portions of the R&R].” Fed. R. Civ.
P. 72(b) advisory committee note; Johnson v. Zema Sys. Corp.,
170 F.3d 734, 739 (7th Cir. 1999) (“If no objection or only par1
22
judge’s report and recommendation carries no
presumptive weight, and the district court may
accept, reject, or modify the report, in whole or in
part.” 1 Practice Before Federal Magistrate Judges §
17.13 (2023); Fed. R. Civ. P. 72(b)(3). This de novo
review “implies[] the district court’s consideration of
the [disputed facts] must be independent and based
upon the [evidence] before the court.” Ekokotu v.
Fed. Express Corp., 408 Fed. Appx. 331, 336 n.3
(11th Cir. 2011) (quoting LoConte v. Dugger, 847
F.2d 745, 750 (11th Cir. 1988). Ultimately, it is the
district court judge, not the magistrate judge, who
“retains final authority over determination of the
dispositive motion[s].” Adkins v. Mid-Am. Growers,
Inc., 141 F.R.D. 466, 468 (N.D. Ill. 1992).
After Grubhub timely objected to the R&R, the
District Court reviewed the disputed portions of the
R&R de novo and sustained all of Grubhub’s
objections. App. 42a. The District Court also
reviewed the factual findings supporting the
uncontested portions of the R&R, and found that “it
does not appear that the R&R’s analysis of those
factors is clear error,” but, in any event, those factors
“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.” App. 54a n.2.
In other words, after reviewing the contested
portions de novo and sustaining Grubhub’s
objections, the District Court weighed all of the
likelihood of confusion factors (both contested and
uncontested) and concluded that “Home Chef has not
tial objection [to an R&R] is made, the district court judge reviews those unobjected portions for clear error.”).
23
made a sufficiently strong showing of a likelihood of
success on the merits.” App. 59a.
The record thus directly contradicts Home Chef’s
argument that the District Court impermissibly
evaluated only a subset of factors by “choosing not to
consider four factors . . . [and] ignor[ing] their
corresponding evidence, weighing, and ensuing
balancing.”
Pet. 20.
The Seventh Circuit
appropriately
rejected
that
argument,
and
acknowledged that “the district court did address the
undisputed factors.” App. 37a.
2. The Seventh Circuit Applied the
Correct
Deferential
Standard
of
Appellate Review
The Seventh Circuit’s role on appeal was to
review the District Court’s analysis and conclusions
concerning whether Home Chef was likely to succeed
on the merits of its trademark infringement claim.
The District Court’s analysis of the likelihood of
confusion factors “is a question of fact and is
reviewed under the clearly erroneous standard.”
Rust Env’t & Infrastructure, 131 F.3d at 1216.
The Seventh Circuit concluded that the District
Court appropriately “reviewed the record and used
its discretion to give weight to the factors it found
most salient and significant.”
App. 37a.
The
Seventh Circuit also stated, based on its own review
of the record and analysis of the likelihood of
confusion factors, that it could not conclude “on this
record that the district court’s determination that
24
Home Chef did not satisfy its burden to establish a
likelihood of success on the merits was clearly
erroneous.” Id.
The Seventh Circuit held that Home Chef’s
arguments on appeal amounted to nothing more
than a disagreement with the District Court’s
weighing of the likelihood of confusion factors, and
the District Court’s ultimate conclusion. Id. Home
Chef is now asking this Court to do the exact same
thing—to disturb well-grounded factual findings and
to second guess the trier of fact based on the
spurious argument that the District Court did not
analyze all of the likelihood of confusion factors.
Home Chef’s argument that this Court must step in
because “three sequential decisions analyzed
differing combinations of factors and evidence,
applying different legal standards” is simply wrong.
Pet. 27. Among other things, it ignores the relevant
standards of review (of both the District Court’s de
novo review of the R&R and the Seventh Circuit’s
abuse-of-discretion review of the District Court’s
decision). Although Home Chef may prefer the
Magistrate Judge’s R&R recommending the entry of
a preliminary injunction, the review process (both at
the District Court and Court of Appeals levels)
played out precisely as intended under the Federal
and Appellate Rules. The District Court’s findings
that Home Chef failed to demonstrate a likelihood of
success on the merits and its denial of Home Chef’s
motion for preliminary injunction was wellsupported, and the Seventh Circuit properly found
that those determinations were well within the
25
District Court’s discretion and were not clearly
erroneous.
C. There Is No Circuit Split on the Standard
of Review for the Likelihood of Confusion
The purported circuit split that Home Chef
describes in its brief is illusory.
Home Chef
categorizes the federal circuits’ standards of review
into three categories: clearly erroneous, de novo, or a
combination of the two. Pet. 22. Although different
circuits may attach different labels to the standard
of review of likelihood of confusion, all circuits
consider likelihood of confusion to be a fact-finding
exercise, and defer to a district court’s factual
findings absent clear error.
The First, Third, Fourth, Fifth, Seventh, Eighth,
Ninth, Tenth, and Eleventh Circuits all review the
likelihood of confusion factors and the resulting
balancing of the factors under the clearly erroneous
standard. See McCarthy, supra, §23:73; Bos. Duck
Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 15
(1st Cir. 2008) (“The determination as to whether a
likelihood of confusion exists is a question of fact,
which we review only for clear error.”); Sabinsa
Corp. v. Creative Compounds, LLC, 609 F.3d 175,
182 (3d Cir. 2010) (“Factual findings concerning the
likelihood of confusion are reviewed for clear error”);
Swatch AG v. Beehive Wholesale, LLC, 739 F.3d
150, 154 (4th Cir. 2014) (“Likelihood of confusion is
an ‘inherently factual issue,’ and we ‘review [ ]
district court determinations regarding [it] under a
clearly erroneous standard.”); Nat’l Bus. Forms &
Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532
26
(5th Cir. 2012) (“Likelihood of confusion is a question
of fact that we review for clear error.”); Rust Env’t &
Infrastructure, 131 F.3d at 1216 (7th Cir. 1997)
(“Likelihood of confusion is a question of fact and is
reviewed under the clearly erroneous standard.”);
ConAgra, Inc. v. George A. Hormel, & Co., 990 F.2d
368, 371 (8th Cir. 1993) (“[T]he likelihood of
confusion is a factual question that we review for
clear error.”); La Quinta Worldwide LLC v.
Q.R.T.M., S.A. de C.V., 762 F.3d 867, 874 n.2 (9th
Cir. 2014) (“We review for clear error the district
court's conclusion regarding the likelihood of
confusion as well as the district court’s application of
the likelihood confusion factors to the facts of the
case.”); Gen. Motors Corp. v. Urban Gorilla, LLC,
500 F.3d 1222, 1227 (10th Cir. 2007) (“In this circuit,
likelihood of confusion is a question of fact, . . . which
we review for clear error.”); PlayNation Play Sys.,
924 F.3d at 1165 (11th Cir. 2019) (“We review for
clear error both a district court's ultimate decision
on likelihood of confusion and its findings on each
factor.”). The Seventh Circuit’s decision in this case
appropriately adheres to this standard of review and
is consistent with the approach of its sister circuits.
The
Second
and
Sixth
Circuits
take
substantively similar, deferential approaches,
although the standards are characterized differently.
These circuits review the individual likelihood of
confusion factors for clear error, and the ultimate
determination of likelihood of confusion de novo.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588
F.3d 97, 105 (2d Cir. 2009) (“In the trademark
context,
we
review
the
district
court’s
determinations as to each separate factor in
27
Polaroid’s multifactor test . . . for clear error, while
the court’s ultimate balancing of those factors is a
matter of law subject to de novo review.”); Leelanau
Wine Cellars, 502 F.3d at 515 (6th Cir. 2007) (“In
reviewing the district court's decision on the issue of
a likelihood of confusion following a bench trial, we
examine any relevant factual findings for clear error
. . . . Whether a likelihood of confusion exists is a
mixed question of law and fact subject to de novo
review.”).2
Home Chef’s argument that the Second and
Sixth Circuits’ approach creates an “important,
recurring, and outcome determinative” circuit split is
wrong and unsupported. Pet. 2. All of the federal
circuits—including the Second and the Sixth—apply
a deferential standard of review to the question of
likelihood of confusion. Home Chef’s argument that
the Second and Sixth Circuits’ review of the ultimate
weighing of the factors de novo creates inconsistent
and unpredictable outcomes is unfounded. Both the
Second and Sixth Circuit, like all of the other
The DC Circuit has not formally adopted a likelihood of
confusion test, let alone a standard of appellate review of
likelihood of confusion. See Klayman v. Jud. Watch, Inc., 6
F.4th 1301, 1319 (D.C. Cir. 2021) (“This circuit ‘has yet to opine
on the precise factors courts should consider when assessing
likelihood of confusion,’ but we have referred approvingly to the
‘multi-factor tests’ of our sister circuits.”). The Federal Circuit
does not review claims of trademark infringement. Rather it is
the reviewing court of the Trademark Trial and Appeal Board’s
administrative determinations on the registration of
trademarks. See 15 U.S.C. § 1071(a)(4) (“The United States
Court of Appeals for the Federal Circuit shall review the
decision from which the appeal is taken on the record before
the United States Patent and Trademark Office.”).
2
28
circuits, give due deference to district courts’ fact
finding.
For instance, in Hamilton International Ltd. v.
Vortic LLC, the district court duly applied the
Second Circuit’s likelihood of confusion test, known
as the Polaroid test, and found no likelihood of
confusion between the plaintiff’s watches and the
defendant’s refurbished watches using plaintiff’s
watch parts. See 13 F.4th at 267. On appeal, the
Second Circuit reviewed the district court’s
determinations on each confusion factor for clear
error, noting that the defendant’s arguments on the
factors amounted to “disagreement with the District
Court’s credibility determinations” and that “[c]lear
error review mandates that [the reviewing court]
defer to the District Court’s factual findings.” Id. at
277.
The Second Circuit accordingly gave due
deference to the district court’s findings and affirmed
because it found no clear error. The Second Circuit
further held that the district court correctly applied
the law to conclude that there was no likelihood of
consumer confusion. Id. at 279.
Hamilton International reflects the Second
Circuit’s deferential treatment of district courts’
determinations on likelihood of consumer confusion.
See also Nat’l Organics, Inc. v. Nutraceutical Corp.,
426 F.3d 576, 578 (2d Cir. 2005) (“The district court's
finding on each factor is reviewed with considerable
deference.”); Cadbury Beverages, Inc. v. Cott Corp.,
73 F.3d 474, 478 (2d Cir. 1996) (“In trademark
infringement cases, the district court’s findings with
regard to each of the Polaroid factors ‘are entitled to
considerable deference,’ even on appeals from
29
summary judgment.”); Lois Sportswear, U.S.A., Inc.
v. Levi Strauss & Co., 799 F.2d 867, 873 (2d Cir.
1986) (“Turning to an application of the Polaroid
test, we must stress at the outset that the district
court’s detailed findings on each of the Polaroid
factors are entitled to considerable deference.”); Sly
Mag., LLC v. Weider Publ’ns L.L.C., 346 F. App’x
721, at *2 (2d Cir. 2009) (recognizing the need to give
“considerable deference to the district court’s . . .
predicate factual findings underlying the analysis of
each Polaroid factor,” and affirming the district
court’s finding of no likelihood of confusion between
the marks).
The Sixth Circuit similarly applies a deferential
standard of review of district courts’ fact finding.
See, e.g., Wynn Oil Co. v. Am. Way Serv. Corp., 943
F.2d 595, 603 (6th Cir. 1991) (“Although the
statement of Wynn’s counsel casts some doubt on the
district court’s finding, the deferential standard of
review tips the scales in favor of upholding the
finding.”).
Home Chef’s petition acknowledges that the
different likelihood of confusion tests across circuits
does not create a circuit split because all of the tests
“meet the same statutory legal standard.” Pet. 2.
Yet, Home Chef complains that different circuits
emphasize different factors of their various tests,
which purportedly yields different results and
wastes appellate resources. Pet. 21. But Home Chef
does not cite a single example of how the nominally
different standards of review create different
outcomes or inconsistent applications of the Lanham
Act across circuits, let alone how any nominal
30
differences in the standards of review are any
different from the federal circuits’ differing
likelihood of confusion factors, which all address the
same ultimate legal conclusion. Home Chef itself
recognizes that the question it now presents has
been repeatedly denied for certiorari since at least
1982 (because, in Grubhub’s view, there is no
substantive split requiring resolution) yet has not
explained what has changed over that 42-year period
to now require this Court’s review. Pet. 25.
II. This Case Is a Poor Vehicle for Addressing the
Questions Presented
Even if there were an issue appropriate for this
Court’s review (and there is not), this case would be
a poor vehicle to consider the questions presented.
First, the District Court’s and Seventh Circuit’s
review of the factual record and ultimate conclusions
adhered to the applicable standards of review. As
discussed above, the District Court properly
reviewed the contested portions of the R&R under
the de novo standard and the uncontested portions
for clear error. In turn, the Seventh Circuit properly
reviewed the District Court’s factual findings for
clear error. Home Chef fails to identify a legal
deficiency in either of these decisions that would
warrant this Court’s intervention.
Second, this case comes before this Court on an
appeal of the Seventh Circuit’s review of the District
Court’s rejection of a magistrate judge’s R&R on a
motion for preliminary injunction. There has been
no discovery in this case, and the factual record has
31
not yet been fully developed.
This Court’s
consideration of the appellate standard of review on
likelihood of confusion would be more appropriate on
a fully developed factual record, following a trial on
the merits.
Indeed, in the case below, the Seventh Circuit
emphasized that its “conclusion is based on the
record before [it] at the preliminary stage” and that
it did “not intend to suggest that Home Chef’s
[theory of confusion is] necessary futile to the extent
that it can be supported with sufficient evidence if
and when the case proceeds.” App. 15a n.5. Home
Chef will have the opportunity to develop the factual
record through discovery and to pursue its
trademark infringement claims (however meritless
they may be). This Court has previously declined to
grant certiorari to address questions about the
standard of review for the likelihood of confusion test
where the factual record had not yet been fully
developed. See Frisch’s Restaurants, Inc. v. Elby's
Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir.
1982), cert. denied, 459 U.S. 916, 916–17 (1982);
Scandia Down Corp., 772 F.2d 1423 (7th Cir. 1985),
cert. denied, 475 U.S. 1147 (1986). It should do the
same here.
Third, the procedural posture of this case makes
it a particularly poor vehicle to address the appellate
standard of review for the likelihood of confusion
test.
The likelihood of confusion analysis was
conducted in the context of a motion for a
preliminary injunction, which is an “extraordinary
and drastic remedy” where the movant must
32
demonstrate a strong showing of likelihood of
success on the merits. Goodman v. Ill. Dep’t of Fin.
& Pro. Regul., 430 F.3d 432, 437 (7th Cir. 2005); see
also Tully v. Okeson, 977 F.3d 608, 613 (7th Cir.
2020) (“A movant’s showing of likelihood of success
on the merits must be ‘strong.’”).
A district court’s denial of a motion for a
preliminary injunction is reviewed for abuse of
discretion and the district court’s ultimate decision is
entitled to “great deference.” See DM Trans, 38
F.4th at 617 (7th Cir. 2022); I.P. Lund Trading ApS
v. Kohler Co., 163 F.3d 27, 33 (1st Cir. 1998) (“On
appellate review of the grant or denial of a
preliminary injunction, the deferential standard of
‘abuse of discretion’ applies to judgment calls, by the
district court, such as those that involve the
weighing of competing considerations.”); Brenntag
Int’l Chem., Inc. v. Bank of India, 175 F.3d 245, 249
(2d Cir. 1999) (“We review appealable interim
orders, including the grant or denial of a motion for a
preliminary
injunction,
with
considerable
deference.”); Ortho Pharm. Corp. v. Amgen, Inc., 882
F.2d 806, 813 (3d Cir. 1989) (“When reviewing the
grant of a preliminary injunction, we accord
deference to the judgment of the district court
‘because of the infinite variety of situations which
may confront it.’”); Leaders of a Beautiful Struggle v.
Balt. Police Dep’t, 2 F.4th 330, 357 (4th Cir. 2021)
(holding that district court’s preliminary injunction
determination “is entitled to deference by the court
of appeals” and that the “deference should be even
greater when the district court denies a preliminary
injunction.”); Blue Bell Bio-Med. v. Cin-Bad, Inc.,
33
864 F.2d 1253, 1256 (5th Cir. 1989) (“The denial of a
preliminary injunction is left to the discretion of the
district court, and will be disturbed only upon an
abuse of that discretion.”); Blue Cross & Blue Shield
Mut. of Ohio v. Blue Cross & Blue Shield Ass’n, 110
F.3d 318, 322 (6th Cir. 1997) (“This court reviews a
challenge to the grant or denial of a preliminary
injunction under an abuse of discretion standard and
accords great deference to the decision of the district
court.”); TCF Nat’l Bank v. Bernanke, 643 F.3d 1158,
1162 (8th Cir. 2011) (“We review the district court's
grant of a preliminary injunction for abuse of
discretion, giving deference to the discretion of the
district court.”); Preminger v. Principi, 422 F.3d 815,
820 (9th Cir. 2005) (“Our review [in the preliminaryinjunction context] is limited, affording the district
court’s decision considerable deference.”); Heideman
v. S. Salt Lake City, 348 F.3d 1182, 1188 (10th Cir.
2003) (“We review the district court’s decision to
deny a preliminary injunction for abuse of
discretion” that “commands that we give due
deference to the district court’s evaluation of the
salience and credibility of testimony, affidavits, and
other evidence.”); BellSouth Telecoms., Inc. v.
MCIMetro Access Transmission Servs., LLC, 425
F.3d 964, 968 (11th Cir. 2005) (“We begin our review
by noting how deferential it is . . . . Appellate review
of such a [preliminary injunction] decision is very
narrow.” (internal quotation marks omitted)).
This deferential standard means that the
reviewing court cannot “substitute [its] judgment for
that of the district court.” Incredible Techs., Inc. v.
Virtual Techs., Inc., 400 F.3d 1007, 1011 (7th Cir.
34
2005); see also Maxim’s Ltd. v. Badonsky, 772 F.2d
388, 391 (7th Cir. 1985) (noting that the court of
appeals standard of review of a preliminary
injunction motion “is a deferential one” and the
reviewing court may not “replace the district court’s
judgment with [its] own.”); Leaders of a Beautiful
Struggle, 2 F.4th at 357 (4th Cir. 2021) (“This
deference . . . reflects a commitment by appellate
courts not to second-guess a district court's remedial
discretion absent special circumstances.”); Demery
v. Arpaio, 378 F.3d 1020, 1027 (9th Cir. 2004)
(noting that the circuit court “will not second guess
whether the [district] court correctly applied the law
to the facts of the case, which may be largely
undeveloped at the [preliminary-injunction] stages of
litigation”); Cumulus Media, Inc. v. Clear Channel
Commc’ns, Inc., 304 F.3d 1167, 1171 (11th Cir. 2002)
(noting that, because “[t]he expedited nature of
preliminary injunction proceedings often creates not
only limits on the evidence available but also
pressure to make difficult judgments without the
luxury of abundant time for reflection,” such
determinations “are the district court's to make and
we will not set them aside unless the district court
has abused its discretion in making them”).
The great deference afforded to district court
judges in their determinations on motions for
preliminary injunctions, combined with the
deference afforded to the district court’s factual
determinations in assessing likelihood of confusion,
create a double layer of deference that makes this
case a poor vehicle for this Court to address the
standard of review. Because, as noted above, Home
35
Chef will have an opportunity to press its claims,
there is no need for this Court to review the lower
courts’ likelihood of confusion analyses at this stage
to determine if the Seventh Circuit appropriately
deferred to the District Court’s conclusion that Home
Chef failed to make a strong showing of likelihood of
success on the merits of its claims.
36
CONCLUSION
For the reasons set forth above, the petition for a
writ of certiorari should be denied.
Respectfully submitted,
David H. Bernstein (counsel of record)
Jared I. Kagan
Samuel J. Allaman
Christopher W. Zheng
DEBEVOISE & PLIMPTON LLP
66 Hudson Boulevard
New York, NY 10001
(212) 909-6696 (telephone)
dhbernstein@debevoise.com
Attorneys for Appellees Grubhub
Inc. and Takeaway.com Central
Core B.V.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.