DuetsBlog Collaborations in Creativity & the Law

Lettuce Pray (for a fair use defense)

Posted in Fair Use, Food, Infringement, Law Suits, Marketing, Trademarks

  

The Easter Bunny eats lettuce, right? OK, not a very substantive tie-in for today’s Easter Day post . . . .

Anyway, about five weeks ago the United States District Court for the Northern District of Illinois rendered a trademark decision in Lettuce Entertain You Enterprises,Inc. v. Leila Sophia AR, LLC, d/b/a Lettuce Mix, granting plaintiff Lettuce Entertain You a temporary restraining order and preliminary injunction against defendant’s use of Lettuce Mix in connection with restaurant services, offering, among other items, lettuce salads.

The likelihood of confusion analysis was let us say, garden variety, so I thought I’d nibble instead, at least a bit, on the classic a/k/a descriptive fair use defense, asserted in the defendant’s prayer for relief, which was correctly denied.

Defendants argue that their use of “Lettuce mix” is fair. To prevail on their fair use defense, defendants must show that (1) they are not using Lettuce mix as a service mark; (2) they are using the mark in good faith merely to describe their services, and (3) the mark is in fact descriptive of their services.

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[D]efendants in this case are not using “lettuce” solely in the ordinary sense. Rather, defendants are using it as a pun to indicate that it is a restaurant that mixes salads to-order for its patrons, not that it sells their main ingredient, lettuce. Because defendants cannot meet the first element of its fair use defense, their fair use defense must fail.

Let us say, this decision serves as a good reminder that one cannot succeed on a classic or descriptive fair use defense when the words at issue are being used by the accused infringer in a service mark manner. Use on signage above the entrance to a restaurant typically will fall into this category of no fair use. The fact that defendant also made a commercial use of the words Lettuce Mix in a pun sense, not solely in their ordinary sense, caused this use to be considered an attention-getting service mark use, outside the reach of a successful fair use defense. Accordingly, the defendant’s prayer for relief was correctly denied.

Bloggers are, of course, free to make liberal use of puns in their posts, without those puns being labeled service mark uses, even if they heppen to attract some attention.