Reverse Confusion: A Lesser Known Approach to Analyzing Likelihood of Confusion

Home Chef continues to lose the battle to stop Grubhub from using, what they assert, is a confusingly similar logo for food-related services.

Home Chef began using its HC Home Mark and Home Chef Home Logo (collectively, the “HC Marks”) in 2014 in connection with meal preparation kits. Grubhub, a popular food-ordering and delivery service, merged with Netherlands-based Just Eat Takeaway.com (“JET”) in 2021 and incorporated the JET House Mark with the GRUBHUB name:

Home Chef sent a cease and desist letter to Grubhub, demanding that it immediately cease use of the JET House Mark as it is confusingly similar to the HC Marks. Grubhub responded by filing a motion for declaratory judgment in the Northern District of Illinois, Eastern Division, seeking a finding of noninfringement. Home Chef responded with a motion for a preliminary injunction. After hearing arguments, the district court denied Home Chef’s request for injunction. Home Chef appealed to the Seventh Circuit, arguing that the district court clearly erred in its rejection of the injunction.

The Seventh Circuit reviewed the district court’s decision and did not find any indication of clear error. One of the main issues that the district court and Seventh Circuit discussed was that of forward confusion versus reverse confusion with regard to trademark infringement. Forward confusion “occurs when consumers believe that a junior (or newer) user’s products or services are from the same source or somehow connected to a senior (of prior) user’s products of services.” Case cite, p 8, (internal citations omitted). This is the most commonly advanced infringement theory.  Reverse confusion, first recognized in 1968, “occurs when ‘a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user,’ thereby overwhelming the senior user.” Id.

In its review of the likelihood of confusion factors, the Seventh Circuit addressed a number of issues. Because Grubhub always uses the JET House Mark with the GRUBHUB name, the likelihood of consumer confusion is lessened. The Court specifically noted that “’in the reverse confusion context, the presence of [brand names] must obviously be treated differently that in the [forward] confusion context’” and that “while the presence of the Grubhub name might alleviate forward confusion (that is, believing a Grubhub product is one made by Home Chef), it plays a lesser role in reverse confusion when the consumer would not see Grubhub’s name when encountering a Home Chef product.”  The Court also noted that Grubhub provides a service quite distinct from Home Chef’s – food delivery versus meal kits.

Finally, the Seventh Circuit discussed Grubhub’s intent in adopting the mark as a junior user, specifically noting that intent is largely irrelevant in reverse confusion cases because the junior user is not attempting to trade of the good will of the senior user. In the case at hand, the Seventh Circuit agreed with the district court that Grubhub’s adoption of the mark was simply a result of its merger with JET and a combination of the two marks.  The Seventh Circuit went so far as to note that Home Chef’s arguments were a “mere disagreement with the district court’s weighing of the factors.” Thus, the district court did not clearly err in determining that Home Chef’s arguments did not support a likelihood of confusion.