A lawsuit between two Midwest companies over the “Billy Goat” mark was filed in the US District Court for the Northern District of Illinois right before Christmas. It’s an example of how two marks attempted to co-exist but eventually could not.
The plaintiff, Chicago-based Billy Goat IP, LLC owns the Billy Goat Tavern and Grill and has been around since 1934. The Billy Goat Chip Company, LLC is a Missouri-based company but the Complaint suggests that its expansion into Chicago is one of the reasons for the lawsuit.
In addition to the tavern, the Plaintiff expanded into frozen burgers and beer sold at convenience stores. It received its service mark on the Principal Register in June 1982 and it was assigned to the current owners in 2015.
The defendant’s core business is selling potato chips. The company started in St. Louis, Missouri according to the Complaint. A trademark was filed with the USPTO in 2010 for potato chips. It is primarily sold in the St. Louis market but it is expanding into the Chicago area. The Complaint lists, with specificity, the areas in Chicago where The Billy Goat Chip potato chips are sold.
Plaintiffs claim that the actual confusion has impacted the ability to license the mark to third-parties due to the fact that there is an affiliation with Defendant.
The lawsuit reminds mark holders the need to be vigilant about enforcing its rights. Although it would seem that the two marks would likely be confused from the outset, the Missouri company obtained the trademark. One would think that the USPTO would have prevented the junior mark holder from obtaining such a similar mark. But, one might not have contemplated the expansion of products and region. This is one of the reasons why mark holders attempt to garner a broad description of its mark and/or obtain “intent to use” marks with the anticipation of expansion in other areas.