What’s in a Name? A Potential Lawsuit
October 29, 2018 – Alec Blalock
There were, at one time, two different Burger Kings in Illinois. The one we all know today started in Florida in 1953. The first one in Illinois opened in Skokie just north of Chicago in 1961. Likewise, in 1957 in a little town called Mattoon, IL, located in south-central Illinois, a small ice cream shop opened up a different Burger King. Neither were affiliated with one another and neither had any actual knowledge about each other. The two wouldn’t come to blows until 1962 when the big Burger King opened a restaurant in Champaign and the little Burger King opened a restaurant in Charleston. The small Burger King then sued the big Burger King under Illinois state law to restrain the big Burger King from using the name in Illinois.
The little Burger King had claim to the mark under state law and were registered under the State trademark registry in 1959. The big Burger King had a federal trademark that was issued in 1961. Looking at the world today and seeing Burger Kings everywhere, clearly you already know the big Burger King won this battle. But why? After all, the little Burger King filed for a trademark first, and existed in Illinois first, why didn’t the courts kick out the big Burger King? Well, it’s because the big Burger King had filed for their trademark federally. The courts found that a federal registration is prima facie evidence (evidence that’s accepted as the truth) of ownership over a trademark. Likewise, the courts held that the federal mark is superior to the state mark. Therefore, except in Mattoon, the big Burger King had exclusive rights to the name nation-wide including Illinois. Thus, by suing the big Burger King, the little Burger King ended up losing the second store in Charleston, forever stuck in Mattoon.
What could have the little Burger King done? First and foremost, the courts said they didn’t use their mark throughout the state. The little Burger King never tried to open a second store until after the big Burger King filed their federal trademark. Had the little Burger King opened some more stores earlier, the big Burger King may not have been able to receive a federally protected trademark or would have been forced out of the state. Secondly, the little Burger King probably should have filed a federal trademark rather than state as the state trademark does not offer much protection as you can clearly see. But really, they should’ve sought an attorney to help guide them through this kind of stuff. Business lawyers know what pitfalls to look for when you’re starting a new business or expanding it and can help prevent you from being stuck in your own Mattoon. If you have questions about your business the smartest thing you can do is seek an attorney today.