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October 2019

Partner Richard Sybert Defeats Preliminary Injunction in Chicago Federal Court on Claims of Trademark Infringement against National Restaurant Client

Gordon Rees Scully Mansukhani Partner Richard Sybert achieved a complete victory for his clients The Kitchen Café, LLC and Kimball Musk in defending use of the trademark NEXT DOOR in their Next Door American Eatery restaurants against a claim of trademark infringement by the Next Door Bistro restaurant in Northbrook, Illinois, a northern suburb of Chicago.

Next Door American Eatery is an upscale chain of modern restaurants catering to millennials and spread across eight states, including the recently opened store in Vernon Hills, Illinois, also a northern suburb of Chicago and some 12 miles from the plaintiff’s restaurant.  Next Door American Eatery is headquartered in Boulder, Colorado and was founded by Elon Musk’s younger brother Kimbal Musk, a Board member of Tesla and Spacex, and who was also a named defendant and testified.

The plaintiff, an Italian-themed upscale restaurant in business for 27 years but which had been unknown to our client, sued for trademark infringement under the Lanham Act in federal district court in Chicago. The Court held a five-day hearing on the plaintiff’s motion for preliminary injunction with live witnesses and experts, which effectively was a trial. Gordon & Rees presented expert testimony from both restaurant and real estate experts that the effective market area for restaurants, particularly in densely populated urban areas such as Chicago, is no more than a few miles. This was buttressed by hard evidence tracking cell phone usage in and around the plaintiff’s restaurant indicative of where its customers lived and worked. Gordon & Rees also presented evidence that the décor, ambience, price points, and target audiences of the two restaurants were significantly different, which would militate against any likelihood of confusion (the key determinant in federal trademark infringement) between the two. We also mounted a successful attack on the plaintiff’s proffered “survey” evidence, consisting of random address cards, purportedly showing that its customers came from far and wide.

The Court’s 36-page written opinion sustained Gordon & Rees' arguments on virtually every point, at one point calling the plaintiff’s testimony “completely unbelievable.”  (The Court also noted, with some incredulity, the plaintiff’s attempt to characterize pasta as an American rather than Italian dish).

Sybert was assisted by Los Angeles Partner Reid Dammann in a number of pre-hearing depositions, and by Hartford Associate Patrick Mulkern in hearing preparation.

Reid E. Dammann
Patrick J. Mulkern
Richard P. Sybert