Trivedi & Khan, P.C. successfully represented an auto company in a trademark lawsuit filed by a large automobile dealership. After four years of litigation, the Court recently granted Summary Judgment in favor of T&K’s client in 2023.
The lawsuit, initiated by Plaintiff in the District Court for the Northern District of Illinois, alleged that T&K’s client misused Plaintiff’s trademark rights by using a similarly sounding name. Plaintiff brought claims under the Lanham Act, the Illinois Uniform Deceptive Trade Practices Act, the Illinois Consumer Fraud and Deceptive Trade Practices Act, and Illinois Common Law. T&K filed for Summary Judgment on all four claims, and the Court dismissed all claims.
To bring a little background, Plaintiff registered the mark in 2019 while Defendant established his auto company in 2010. Mr. Zubair Khan, representing Defendant, argued that Plaintiff did not have a protectable interest because they did not actively use the name, and the name was merely descriptive with no secondary meaning. The Plaintiff primarily used a different name for their dealership and only referenced the mark in its websites after the lawsuit was filed. The Court agreed with Mr. Khan’s arguments, citing cases such as Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999), and Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 422 (7th Cir. 2019). It concluded that the Plaintiff’s use of the name was not continuous and that the name lacked secondary meaning, being used primarily in a geographical sense.
Trivedi & Khan has significant experience in commercial cases and federal court. The best outcome for a defendant is dismissal. T&K is thrilled to be able to achieve this result despite Plaintiff’s assertive posture throughout the case.