IP Law Daily Retailer can proceed with infringement claims over ‘Fashion for Food’
Thursday, May 5, 2016

Retailer can proceed with infringement claims over ‘Fashion for Food’

By Thomas Long, J.D.

An Illinois-based retailer of tableware, cutlery, and flatware could go forward with claims against a French seller of eco-friendly food packaging to food industry professionals, for allegedly infringing the retailer’s service mark, “Fashion for Food,” with respect to its retail services, the federal district court in Chicago has determined. The retailer failed, however, to establish use in commerce of the mark with respect to asserted marketing or promotional services and could not pursue infringement claims with respect to those services (RGB Plastic, LLC v. First Pack, LLC, May 4, 2016, Chang, E.).

Plaintiff RGB Plastic, LLC, d/b/a Restaurantware, asserted ownership of the service mark “Fashion for Food,” for its marketing and retailing services in connection with cutlery, tableware, and flatware manufactured by third parties. Restaurantware’s customers primarily were food industry professionals, such as restaurants and restaurant-supply companies. Restaurantware filed an application to federally register its service mark in February 2013, in connection with retail services and marketing and promotional services. After initial rejections for inadequate specimens of use, the registration was issued in July 2014.

In February 2012, defendant First Pack, LLC, adopted the tagline “Everyday Fashion for Food Packaging” to market tableware products at a trade show. First Pack also used the tagline on the cover of its 2012 product catalog. Since that time, First Pack had used the tagline on catalogs, its website, and in other promotional materials. First Pack filed an application to register the phrase in August 2014; that application was rejected on the ground of likely confusion with Restaurantware’s “Fashion for Food” mark.

Restaurantware filed suit against First Pack for service mark infringement and unfair competition under the Lanham Act and Illinois law. First Pack counterclaimed and moved for summary judgment for cancellation of the service mark registration, as well as against Restaurantware’s claims. First Pack also asserted that Restaurantware’s claims should be precluded on the basis of laches.

Counterclaim for Cancellation

First Pack sought cancellation of Restaurantware’s registration on two grounds: (1) Restaurantware’s failure to use the mark in commerce for the applied-for services before registering the mark; and (2) fraud on the USPTO, based on Restaurantware’s alleged misstatement that a specimen of use—a Fall/Winter 2014 catalog—had been used in commerce since February 23, 2013.

Use in commerce. The court found that Restaurantware provided enough evidence—although it was a close call—to support its assertion that it had continually used the “Fashion for Food” mark in commerce to identify its retail services. Restaurantware produced no evidence, however, that it had used the mark to identify any marketing or promotional services.

Restaurantware first used the phrase “These are truly fashion for food” to describe bamboo skewers. This initial use did not quality as service mark use, in the court’s opinion; it identified goods, not services. A sign used by Restaurantware at an August 2011 trade show did qualify as service mark use; trade show attendants looking at the sign could have associated the phrase “Fashion for Food” with Restaurantware’s retail services. The sign directed readers to Restaurantware’s website, which was a key way that Restaurantware delivered its services. The sign did not, however, contain any hint that Restaurantware offered marketing services, the court said. Moreover, there was no evidence that manufacturers—the prospective customers of Restaurantware’s marketing services—attended the trade show. For similar reasons, the court also determined that a business card and packaging materials could provide evidence of use in commerce with respect to retail services, but not marketing services.

Fraud on the USPTO. First Pack’s fraud claim focused on Restaurantware’s Fall/Winter 2014 product catalog, which it had represented to the USPTO has having been used in commerce before February 2013—the date of the service mark application—although it was not published until October 2014. The court agreed that Restaurantware had made a material misrepresentation, but it opined that a reasonable jury could find that Restaurantware did not act with fraudulent intent. Restaurantware had relied on the advice of counsel in making its submission of the specimen. Also, the fact that the catalog was conspicuously marked “Fall/Winter 2014” refuted the idea that Restaurantware intended to fool the USPTO, the court said. First Pack’s motion for summary judgment on the fraud claim was denied.

Infringement Claims

First Pack argued that it was entitled to summary judgment on Restaurantware’s infringement claim because (1) First Pack used its “Everyday Fashion for Food” tagline before Restaurantware used “Fashion for Food” and (2) no reasonable jury could find that Restaurantware had proved likelihood of confusion among its customers and potential customers.

Prior use. The court rejected First Pack’s contention that it had priority in its mark as a matter of law. The earliest possible date that Restaurantware could have used “Fashion for Food” as a service mark for its retail services was August 2011, when it used its sign at the trade show. This was prior to First Pack’s earliest possible first-use date, which was February 2012, when First Pack used the phrase “Everyday Fashion for Food Packaging” at a trade show. First Pack also began using the phrase on its catalog, letterhead, and website in 2012. These uses all were after Restaurantware’s potential first-use date. It was up to a jury to decide the exact priority date to which Restaurantware was entitled.

Likelihood of confusion. First Pack argued that no reasonable jury could find a likelihood of confusion. The court disagreed, pointing out that the marks were highly similar, the products sold by the parties overlapped, and prospective purchasers were unlikely to be sophisticated or exercise great care in making buying decisions.


First Pack argued that Restaurantware’s claims were barred by laches because Restaurantware knew of First Pack’s challenged mark as early as May 2012, but it waited 30 months to file suit, thereby causing prejudice to First Pack. According to the court, there was a factual dispute as to when Restaurantware first learned of First Pack’s tagline. In addition, a jury could find the delay excusable. To determine whether it was presumptively unreasonable, the delay period was measured against the analogous state-law statute of limitations, which, in this case, was the three-year limitations period for consumer fraud and deceptive business practices under Illinois law. Finally, the evidence did not show that First Pack was prejudiced. First Pack alleged that the delay harmed its ability to conduct discovery; however, the court stated that a jury need not find that any problems encountered during discovery were caused by the delay in filing suit. Therefore, the court declined to grant summary judgment on the laches defense.

The case is No. 1:14-cv-08744.

Attorneys: Charles Lincoln Philbrick (Rathje & Woodward, LLC) for RGB Plastic, LLC d/b/a Restaurantware. Steven L. Baron (Mandell Menkes LLC) for First Pack, LLC d/b/a Pack N Wood.

Companies: RGB Plastic, LLC d/b/a Restaurantware; First Pack, LLC d/b/a Pack N Wood

MainStory: TopStory Trademark IllinoisNews

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