Citation Edit

Yougottaeat, Inc. v. Checkers Drive-In Restaurants, Inc., No. 1:03-cv-00733-SJ-MDG (S.D.N.Y. May 7, 2003), aff’d, 2003 U.S. App. LEXIS 24251 (2d Cir. Dec. 2, 2003).

Factual Background Edit

Plaintiff provides discount coupons for restaurants through its “” website. Plaintiff filed a trademark application for the mark YOUGOTTAEAT in mid-2000 and a registration issued in June 2002. Due to financial problems, plaintiff shut down its website for most of 2001 and 2002, and did not resume the site until late 2002 or early 2003.

Defendant, one of the largest fast-food restaurant chains in the country, adopted the advertising slogan “You Gotta Eat” in June 2000 without knowledge of plaintiff’s website. Defendant’s outside counsel performed Internet searches before launching its campaign but received an error message for the “” site because it was not operational at the time. Defendant filed its own trademark application in November 2000, which was denied as being confusingly similar to plaintiff’s prior registration. Defendant filed an action in the PTO to cancel plaintiff’s registration on the ground of abandonment following unsuccessful attempts to contact plaintiff. Plaintiff then sued for trademark infringement and moved for a preliminary injunction.

Trial Court Proceedings Edit

The district court denied plaintiff’s motion, holding that plaintiff failed to establish a likelihood of success on the merits of its trademark infringement claim. But the district court did not provide any factual analysis for its conclusion.

Appellate Court Proceedings Edit

On appeal, the Second Circuit affirmed the district court’s denial of the preliminary injunction. Based on a review of the Polaroid likelihood-of-confusion factors, the court of appeals agreed with the district court because: (a) plaintiff possessed a weak mark, (b) although the marks were identical, they were presented in different ways, (c) the parties provided “considerably different” services, (d) there was little likelihood that plaintiff would open a restaurant in the near future, (e) the parties did not share the same customer base, and (f) defendant acted in good faith.

On this latter point, the Second Circuit stated that defendant “reasonably ignored [defendant’s] web address” because the site was not accessible at the time of its investigation. Moreover, “[defendant] enlisted an outside attorney to conduct a trademark search and then attempted to negotiate its claims with [plaintiff]. Only when that proved unsuccessful, and upon independently determining that its use did not infringe on [plaintiff’s] rights, did [defendant] begin using the [mark].”

Source Edit

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