403 F.2d 904 (7th Cir. 1968), 16706, Burger King of Fla., Inc. v. Hoots

CourtUnited States Court of Appeals (7th Circuit)
Citation159 U.S.P.Q. 706,403 F.2d 904
PartiesBURGER KING OF FLORIDA, INC., and Burger King Restaurants, Inc., Plaintiffs-Appellees, v. Gene HOOTS and Betty Hoots, d/b/a Burger King, Defendants-Appellants.
Docket Number16706.

Page 904

403 F.2d 904 (7th Cir. 1968)

159 U.S.P.Q. 706

BURGER KING OF FLORIDA, INC., and Burger King Restaurants, Inc., Plaintiffs-Appellees,

v.

Gene HOOTS and Betty Hoots, d/b/a Burger King, Defendants-Appellants.

No. 16706.

United States Court of Appeals, Seventh Circuit.

November 25, 1968

Page 905

Louis B. Tishler, Jr., Chicago, Ill., Clyde Meachum, Danville, Ill., Theodore R. Scott, James P. Ryther, Chicago, Ill., for appellees.

Before KILEY, CUMMINGS and KERNER, Circuit Judges.

Page 906

KILEY, Circuit Judge.

Defendants' appeal presents a conflict between plaintiffs' right to use the trade mark 'Burger King,' which plaintiffs have registered under the Federal Trade Mark Act, 1 and defendants' right to use the same trade mark which defendants have registered under the Illinois Trade Mark Act. 2 The district court resolved the conflict in favor of plaintiffs in this case of first impression in this Circuit. We affirm the judgment restraining the defendants from using the name 'Burger King' in any part of Illinois except in their Mattoon, Illinois, market, and restraining plaintiffs from using their trade mark in the market area of Mattoon, Illinois. 3

Defendants do not challenge the district court's findings of fact and have not included testimony of witnesses at the trial in the record on appeal.

Plaintiff Burger King of Florida, Inc. opened the first 'Burger King' restaurant in Jacksonville, Florida, in 1953. By 1955, fifteen of these restaurants were in operation in Florida, Georgia and Tennessee; in 1956 the number operating in Alabama, Kentucky and Virginia was twenty-nine; by 1957, in these states, thirty-eight restaurants were in operation.

In July, 1961, plaintiffs opened their first Illinois 'Burger King' restaurant in Skokie, and at that time had notice of the defendants' prior registration of the same mark under the Illinois Trade Mark Act. Thereafter, on October 3, 1961, plaintiffs' certificate of federal registration of the mark was issued. Subsequently, plaintiffs opened a restaurant in Champaign, Illinois, and at the time of the trial in November, 1967, were operating more than fifty 'Burger King' restaurants in the state of Illinois.

In 1957 the defendants, who had been operating an ice cream business in Mattoon, Illinois, opened a 'Burger King' restaurant there. In July, 1959, they registered that name under Illinois law as their trade mark, without notice of plaintiffs' prior use of the same mark. On September 26, 1962, the defendants, with constructive knowledge of plaintiffs' federal trade mark, opened a second similar restaurant, in Charleston, Illinois.

Both parties have used the trade mark prominently, and in 1962 they exchanged charges of infringement in Illinois. After plaintiffs opened a restaurant in Champaign, Illinois, defendants sued in the state court to restrain plaintiffs' use of the mark in Illinois. Plaintiffs then brought the federal suit, now before us, and the defendants counter-claimed for an injunction, charging plaintiffs with infringement of their Illinois trade mark.

The district court concluded, from the unchallenged findings, that plaintiffs' federal registration is prima facie evidence of the validity of the registration and ownership of the mark; that plaintiffs have both a common-law and a federal right in the mark superior to defendants' in the area of natural expansion of plaintiffs' enterprise which 'logically included' all of Illinois, except where defendants had actually adopted and used the mark, innocently, i.e., without notice and in good faith; and that the defendants had adopted and continuously used the mark in the Mattoon area innocently and were entitled to protection in that market.

We hold that the district court properly decided that plaintiffs' federal registration of the trade mark 'Burger King' gave them the exclusive right to use the mark in Illinois except in the Mattoon market area in Illinois where the defendants, without knowledge of plaintiffs' prior use, actually used the mark before plaintiffs' federal registration.

Page 907

The defendants did not acquire the exclusive right they would have acquired by their Illinois registration had they actually used the mark throughout Illinois prior to the plaintiffs' federal registration.

We think our holding is clear from the terms of the Federal Trade Mark Act. Under 15 U.S.C. § 1065 of the Act, plaintiffs, owners of the federally registered trade mark 'Burger King,' have the 'incontestable' right to use the mark in commerce, except to the extent that such use infringes what valid right the defendants have acquired by their continuous use of the same mark prior to plaintiffs' federal registration.

Under 15 U.S.C. § 1115(b), the federal certificate of registration is 'conclusive evidence' of plaintiffs' 'exclusive right' to use the mark. This Section, however, also provides a defense to an exclusive right to use a trade mark: If a trade mark was adopted without knowledge of the federal registrant's prior use, and has been continuously used, then such use 'shall' constitute a defense to infringement, provided that this defense applies only for the...

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66 practice notes
  • S.C. Johnson & Son, Inc. v. Nutraceutical Corporation, 082914 WIEDC, 11-C-861
    • United States
    • Federal Cases United States District Courts 7th Circuit United States District Court of Eastern District of Wisconsin
    • August 29, 2014
    ...the defendant, but not the plaintiff, was using the mark prior to plaintiffs federal registration); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 907 (7th Cir. 1968) (stating that defendants who adopted a mark without knowledge of the plaintiffs prior use and who had continuously used t......
  • 493 F.2d 275 (8th Cir. 1974), 73-1338, Flavor Corp. of America v. Kemin Industries, Inc.
    • United States
    • United States Court of Appeals (8th Circuit)
    • March 11, 1974
    ...Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150 (6th Cir. 1973) and Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968) with Tillamook County Creamery Assoc. v. Tillamook Cheese and Dairy Assoc., 345 F.2d 158 (9th Cir. 1965) and John Morrell &......
  • 531 F.2d 366 (7th Cir. 1976), 75--1371, Union Carbide Corp. v. Ever-Ready Inc.
    • United States
    • United States Court of Appeals (7th Circuit)
    • January 30, 1976
    ...at 605. The most recent expression of this court on the effect of incontestability appears in Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). The case involved cross suits for infringement for use of the name Burger King. Plaintiff's mark was incontestable. This court h......
  • 457 F.Supp. 1090 (S.D.N.Y. 1978), 77 Civ. 345, Cuban Cigar Brands N. V. v. Upmann Intern., Inc.
    • United States
    • United States District Courts. 2nd Circuit
    • July 20, 1978
    ...period of time that the balance of the equities would favor the knowing infringer." [42] See Burger King of Florida, Inc. v. Hoots, 403 F.2d 904, 907 (7th Cir. [43] Perhaps the leading case construing this portion of 15 U.S.C. s 1065 is Casual Corner Assoc. v. Casual Stores of Nevada, ......
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56 cases
  • S.C. Johnson & Son, Inc. v. Nutraceutical Corporation, 082914 WIEDC, 11-C-861
    • United States
    • Federal Cases United States District Courts 7th Circuit United States District Court of Eastern District of Wisconsin
    • August 29, 2014
    ...the defendant, but not the plaintiff, was using the mark prior to plaintiffs federal registration); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 907 (7th Cir. 1968) (stating that defendants who adopted a mark without knowledge of the plaintiffs prior use and who had continuously used t......
  • 493 F.2d 275 (8th Cir. 1974), 73-1338, Flavor Corp. of America v. Kemin Industries, Inc.
    • United States
    • United States Court of Appeals (8th Circuit)
    • March 11, 1974
    ...Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150 (6th Cir. 1973) and Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968) with Tillamook County Creamery Assoc. v. Tillamook Cheese and Dairy Assoc., 345 F.2d 158 (9th Cir. 1965) and John Morrell &......
  • 531 F.2d 366 (7th Cir. 1976), 75--1371, Union Carbide Corp. v. Ever-Ready Inc.
    • United States
    • United States Court of Appeals (7th Circuit)
    • January 30, 1976
    ...at 605. The most recent expression of this court on the effect of incontestability appears in Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). The case involved cross suits for infringement for use of the name Burger King. Plaintiff's mark was incontestable. This court h......
  • 457 F.Supp. 1090 (S.D.N.Y. 1978), 77 Civ. 345, Cuban Cigar Brands N. V. v. Upmann Intern., Inc.
    • United States
    • United States District Courts. 2nd Circuit
    • July 20, 1978
    ...period of time that the balance of the equities would favor the knowing infringer." [42] See Burger King of Florida, Inc. v. Hoots, 403 F.2d 904, 907 (7th Cir. [43] Perhaps the leading case construing this portion of 15 U.S.C. s 1065 is Casual Corner Assoc. v. Casual Stores of Nevada, ......
  • Request a trial to view additional results
3 firm's commentaries
  • Intellectual Property Basics (Updated)
    • United States
    • JD Supra United States
    • November 24, 2014
    ...An innocent junior user’s federal registration can preempt a senior user’s state registration. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1963); Davidoff Extension S.A. v. Davidoff Comerico E. Industria, 747 F.Supp. 122 (P.R. 1990). 13 International trademark protection i......
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • January 2, 2018
    ...An innocent junior user’s federal registration preempts a senior user’s senior state registration. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1963); Davidoff Extension S.A. v. Davidoff Comerico E. Industria, 747 F. Supp. 122 (P.R. 1990). Use-based and ITU applications cre......
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • November 11, 2011
    ...innocent junior user’s federal registration can also preempt the senior user’s state registration. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1963); Davidoff Extension S.A. v. Davidoff Comerico E. Industria, 747 F.Supp. 122 (P.R. 1990) (senior user’s prior state registrat......
7 books & journal articles
  • Trademarks and Cyberspace
    • United States
    • The Journal of World Intellectual Property Nbr. 9-5, September 2006
    • September 1, 2006
    ...hasimitated the mark in order to trade on the senior user’s goodwill’’ (Long, 1993; Carter,1990).114 Burger King of Florida, Inc. v Hoots 403 F.2d 904, 908 (7th Cir. 1968); Thrifty Rent-A-Car System, Inc. v Thrifty Cars, Inc. 831 F.2d 1177 (2d Cir. 1987); All Video, Inc. vHollywood Entertai......
  • Trademark Law Fundamentals and Related Franchising Issues
    • United States
    • Fundamentals of Franchising, Fourth Edition -
    • January 1, 2015
    ...Enters., Inc. v. Cutco Indus., Inc., 736 P.2d 1251, 2 U.S.P.Q.2d (BNA) 1950 (Colo. Ct. App. 1986). 98. Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 159 U.S.P.Q. (BNA) 706 (7th Cir. 1968). 99. ChiChi’s, Inc. v. Chi-Mex, Inc., 568 F. Supp. 731, 221 U.S.P.Q. (BNA) 906 (W.D. Pa. 26 Fundame......
  • Battle Galactica: recent advances and retreats in the struggle for the preservation of trademark rights on the Internet.
    • United States
    • The Journal of High Technology Law Vol. 12 Nbr. 1, January 2012
    • January 1, 2012
    ...114 (5th Cir. 1966) (expounding on the principles of trademark confusion and infringement). (47) See Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 908-09 (7th Cir. 1968) (concluding that the concurrent use of the same mark is not always fatal). (48) See Robbie DiMesio, Jury Gives Adidas......
  • Trademark/Trade Dress Prosecution
    • United States
    • New practitioner’s guide to intellectual property Trademarks, Trade Dress, Unfair Competition, and Trade Secrets
    • May 16, 2012
    ...market area of the Mattoon Burger King—a 20-mile radius around the restaurant in Mattoon, Illinois. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th 204 Section 3, Part 2 prevent applicants from running into a situation like that of the Hootses4in which a later user of the same or a......
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