On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint.

As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted that no emergency injunction would issue before the closing of the 2014 Minnesota State Fair next Monday. It appears our prediction will hold, given that today is the last opportunity to obtain an emergency order from the court to impact use this season.

Although the complaint was filed last Friday, along with a Motion for Temporary Restraining Order, as Ramsey County District Judge Robert A. Awsumb — who was assigned the case on Monday — noted in his Order on Tuesday, no emergency hearing will be scheduled until Lulu’s Market & Deli files with the court, proof of service of the complaint and motion on Lulu’s Public House.

Let’s count the number of ways, according to the actions of Lulu’s Market & Deli, that this is so not an emergency that would require immediate court intervention.

First, despite District Judge Awsumb’s warning on Tuesday, still no evidence of serving notice on Lulu’s Public House has been filed with the court.

Second, the owner of Lulu’s Market & Deli, submitted his Affidavit, last Friday to explain the need for the emergency injunction, but in doing so, admitted: “On or about June 26, 2014, I read a story in the St. Paul Pioneer Press about new food vendors entering the Minnesota State Fair, which is taking place this August 21 through September 1. Among the new vendors who were reported to be entering the State Fair was an operation called ‘Lulu’s Public House,’ . . . . The newspaper story ran in the ‘Eats’ section of the Pioneer Press. Since June 26, 2014, I have also seen several other internet news and information sites publicize the entry of ‘Lulu’s Public House’ at the State Fair.”

So to be clear, Lulu’s Market & Deli waited to file suit and request emergency court action until after the State Fair opened and more than eight weeks after admitted knowledge of Lulu’s Public House coming to the State Fair — and, the June 25 Pioneer Press article specifically referenced the “Breakfast Juicy LuLu” menu item that Lulu’s Market & Deli is complaining about.

Third, the Affidavit of the owner of Lulu’s Market & Deli also admitted: “Since the June 26, 2014 Pioneer Press story ran, I have been contacted by between five and ten people each week who mistakenly believed that ‘Lulu’s Public House’ was affiliated, associated, or connected in some way with Lulu’s Market & Deli.”

So, by the third full week of July, Lulu’s Market & Deli had heard from twenty to forty “confused” people, but waited more than another four weeks to take formal action (the papers are also silent about and beg the question of when Lulu’s Market & Deli first contacted Lulu’s Public House), tellingly after the opening of the State Fair.

By Tuesday of next week, when the court reopens after Labor Day, the claimed need for emergency relief will be moot.

To be serious about seeking an emergency temporary restraining order, Lulu’s Market & Deli needed to move quickly upon learning what it learned in June, it needed to communicate through its actions that immediate attention and court action was required to avoid irreparable harm. Yet, the complaint, motion for temporary restraining order, and supporting affidavits, all beg the question of why Lulu’s Market & Deli waited so long, seriously undermining the request for immediate and emergency court intervention.

Of course, actions speak louder than words.

Just curious, why does the operation of Lulu’s Public House at the Minnesota State Fair create a twelve day emergency for Lulu’s Market & Deli, when another’s food truck — operating under the name “Lulu’s Street Food” — has been circling the streets in the Twin Cities for more than a year?

As predicted, it appears this dispute will be sorted out after the 2014 Minnesota State Fair ends.

If so, that will provide Lulu’s Public House plenty of time to redeem itself and probe the claims and motives of Lulu’s Market & Deli, if it is inclined to defend itself.

There appears to be plenty to probe, based on a cursory review of the complaint, motion, and affidavits filed by Lulu’s Market & Deli.

First, Lulu’s Market & Deli does not appear to own a registered trademark, so it actually will have the burden of proving the existence of common law rights and the scope of those rights.

Second, although Lulu’s Market & Deli’s motion for a temporary restraining order contends that Lulu’s is an “arbitrary term” that “deserves the highest protection” and “no proof of secondary meaning” is required — the owner’s Affidavit admits that the “Lulu’s Market & Deli” name “is derived from the original owner’s last name. . . .”

Surnames are considered descriptive, and as such, they don’t enjoy exclusive rights upon first use, but they require a showing of secondary meaning or acquired distinctiveness. Here, the current owner’s Affidavit admits to only “spending $15,000 on advertising and marketing using the business’s name” since he became the owner in 2010.

Secondary meaning is not assured to Lulu’s Market & Deli. And, it will be interesting to see how Lulu’s Market & Deli plans to prove that Lulu’s enjoys a special significance or secondary meaning while another’s food truck — also using the Lulu’s name — has been roaming the Twin Cities for more than a year.

It is unclear whether Lulu’s Market & Deli will be able to rely on the claimed 13 years of use of Lulu’s by the prior owner with the last name Lulu — no chain of title has been made of record yet, and the current owner seems to lack personal knowledge of any prior use (“[t]o the best of my knowledge, since it first went into business, it has always operated under the name Lulu’s Market & Deli”), calling into question whether a proper assignment was made when he took over the business on the corner of Selby & Fry in St. Paul, Minnesota.

Indeed, the plaintiff’s assumed name filing for “Lulu’s Market & Deli” is dated September 14, 2010.

Nevertheless, assuming for the moment that prior common law rights can be proven, Lulu’s Market & Deli also will have to establish more than de minimis and otherwise manageable confusion in the marketplace.

Keeping that in mind, all of the customer, employee, and friend generated Affidavits purporting to prove “actual confusion” appear tainted by a leading questionnaire admittedly provided to each of them by the owner of Lulu’s Market & Deli, specifically asking: “When you heard or read about Lulu’s Public House entering the Minnesota State Fair, did you believe that it was affiliated or associated with Lulu’s Market & Deli?”

Ouch, that burns a lot like molten cheese dripping from a juicy lucy. This kind of evidence is not persuasive and it isn’t going to cut it, if the case is pursued beyond the closing of the State Fair in 2014.

The complaint and other papers filed by Lulu’s Market & Deli also question the good faith of Lulu’s Public House in adopting and using its name. Those filings call out the actions of the owner of Lulu’s Public House as “wrongful,” “cavalier,” “willful, deliberate, and/or intentional,” “infringing,” and “unlawful.”

We had the distinct pleasure of meeting Lulu — the owner of Lulu’s Public House — and snapping the photo (above and to the right) two nights ago.

The Lulu we met is anything but the way described, she is charming, and seems to be a real and authentic sweetheart who wears the American flag quite well, by the way.

Oh, and did I mention, her name is Lulu? I’m thinking that quiets at least the motive behind selecting the name Lulu’s Public House.

So, we’ll be following this case closely, stay tuned dear readers.