Burger King of Florida, Inc. v. Hoots, No. 16706.

CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)
Writing for the CourtKILEY, CUMMINGS and KERNER, Circuit
Citation403 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.
Decision Date25 November 1968
Docket NumberNo. 16706.

403 F.2d 904 (1968)

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.


403 F.2d 905

Harlan Heller, Laurence W. Grabb, Mattoon, Ill., for appellants.

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.

403 F.2d 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.

403 F.2d 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...

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58 practice notes
  • Mariniello v. Shell Oil Co., No. 74--1385
    • United States
    • U.S. Court of Appeals — Third Circuit
    • February 14, 1975
    ...22 See S.Rep.No.1333, 79th Cong., 2d Sess. (1946), 1946 U.S.Code Cong.Serv. 1274, 1275--1276. Burger Kinf of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. Even where collisions occur with federal trademark holders, the Act provides that earlier local use of identifying names may prevail ov......
  • Flavor Corporation of America v. Kemin Industries, Inc., No. 73-1338
    • United States
    • United States Courts of Appeals. 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 & Co. v.......
  • Critter Control, Inc. v. Young, NO. 3:13-0695
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Middle District of Tennessee
    • September 8, 2014
    ...a junior user who has used the mark prior to the senior user's application for federal registration"); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 908 (7th Cir. 1968) ("Congress intended the Lanham Act to afford nation-wide protection to federally-registered marks, and that once the c......
  • Golden Door, Inc. v. Odisho, No. C-76-0655-WWS.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • September 20, 1977
    ...141 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968); Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975). See generally, Callmann, Unfair Competition, supra, §§ 7......
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57 cases
  • Mariniello v. Shell Oil Co., No. 74--1385
    • United States
    • U.S. Court of Appeals — Third Circuit
    • February 14, 1975
    ...22 See S.Rep.No.1333, 79th Cong., 2d Sess. (1946), 1946 U.S.Code Cong.Serv. 1274, 1275--1276. Burger Kinf of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. Even where collisions occur with federal trademark holders, the Act provides that earlier local use of identifying names may prevail ov......
  • Flavor Corporation of America v. Kemin Industries, Inc., No. 73-1338
    • United States
    • United States Courts of Appeals. 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 & Co. v.......
  • Critter Control, Inc. v. Young, NO. 3:13-0695
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Middle District of Tennessee
    • September 8, 2014
    ...a junior user who has used the mark prior to the senior user's application for federal registration"); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 908 (7th Cir. 1968) ("Congress intended the Lanham Act to afford nation-wide protection to federally-registered marks, and that once the c......
  • Golden Door, Inc. v. Odisho, No. C-76-0655-WWS.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • September 20, 1977
    ...141 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968); Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975). See generally, Callmann, Unfair Competition, supra, §§ 7......
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1 books & journal articles
  • MORALITY AND TRADEMARKS: THE SOUTH AMERICAN APPROACH.
    • United States
    • Suffolk Transnational Law Review Vol. 40 Nbr. 2, June 2017
    • June 22, 2017
    ...Conflict and Convergence in Competition Law, 2011 Mich. St. L. Rev. 1413, 1422 (2011). (218.) Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 906 (1968). "Defendants did not acquire the exclusive right they would have acquired by their Illinois registration had they actually used the mark......

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