Debevoise & Plimpton LLP won an important appeal on behalf of its client Grubhub (which connects consumers to restaurants for ready-to-eat takeout or home delivery of their favorite meals) on September 12 when the U.S. Court of Appeals for the Seventh Circuit unanimously affirmed the district court’s decision to deny Kroger’s motion for preliminary injunction. The longstanding trademark dispute between Grubhub and Kroger centers around alleged similarities between Grubhub’s logo, which features Grubhub’s name and a house with a fork and knife inside, and Kroger’s house and cutlery design logo.

Grubhub’s logo has been used globally by its parent company, Just Eat Takeaway (JET), as a house mark since 2014 (but with the relevant names of its local companies in each country attached to the logo). After JET acquired Grubhub in 2021, Grubhub rolled out the same logo in connection with its U.S. business.

Kroger, which delivers meal kits and refrigerated meals under the Home Chef brand, alleged that the Grubhub House logo infringed its trademark for a house, knife and fork design, and moved for a preliminary injunction. In April 2022, while Grubhub was represented by other counsel, the Magistrate Judge issued a recommendation to the U.S. District Court in Illinois to grant Kroger’s motion for preliminary injunction.

Following the Magistrate Judge’s report, Grubhub engaged Debevoise. Debevoise filed objections to the Magistrate Judge’s recommendations with the district court, arguing that the Grubhub logo is not likely to be confused with Kroger’s Home Chef logo, in part, because of the differences in the design and the prominent use of the parties’ names under the logos. Debevoise also argued that the Magistrate Judge improperly deferred to the U.S. Patent and Trademark Office’s earlier non-final office action refusing to register the JET House logo, gave undue weight to de minimus incidents of alleged confusion, and erroneously disregarded survey evidence that showed that confusion was unlikely.

In a sweeping reversal, the district court sustained each of Grubhub’s objections and denied Kroger’s motion for a preliminary injunction. Kroger appealed the district court’s decision to the Seventh Circuit. The case was argued to a hot bench on November 30, 2022. Nearly ten months later, on September 12, 2023, the Seventh Circuit upheld the District Court’s decision.

The Court of Appeals adopted many of Debevoise’s arguments. It specifically found that the District Court was well within its discretion to deny the preliminary injunction given the differences in the logos, the prominent use of the Grubhub name, and the absence of evidence of confusion. The court also affirmed the District Court’s decision to disregard the USPTO’s refusal (which was not based on a complete record and which addressed a different version of the trademark) and its decision to rely upon the survey evidence showing that confusion was not likely.

Now that the Court of Appeals has unanimously rejected Kroger’s appeal, Grubhub looks forward to putting this dispute behind it so it can focus on what it does best, which is delivering millions of delicious meals to its customers nationwide.

The Debevoise team was led by partner David H. Bernstein and counsel Jared Kagan, and included associate Samuel Allaman and former associate Matthew Petrozziello.