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Burger King of Fla., Inc. v. Hoots

United States Court of Appeals for the Seventh Circuit

November 25, 1968

No. 16706


 [***707]   [*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 

 [**2]  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 [**3]  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.

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403 F.2d 904 *; 1968 U.S. App. LEXIS 4765 **; 159 U.S.P.Q. (BNA) 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


registration, trademark, plaintiffs', defendants', restaurant, district court, exclusive right, right to use, market area, prior use, registered, opened, interstate commerce, certificate

Business & Corporate Compliance, Trademark Cancellation & Establishment, Incontestability, Continuing Use Requirement, Trademark Law, Registration Procedures, Federal Registration, Federal Registration as Evidence, General Overview, Antitrust & Trade Law, Clayton Act, Defenses, Robinson-Patman Act, Infringement Actions, Defenses, Degree of Protection, Unfair Competition, State Unfair Competition Laws, Federal Preemption