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Grubhub Inc. must face a proposed class action in Illinois federal court for allegedly using restaurants' trademarks without permission and listing them on its food delivery app without their consent. U.S. District Judge LaShonda A. Hunt of the Northern District of Illinois ruled Tuesday that trademark infringement and false association claims by MF Tasty LLC and Iowa City Coffee Co. could continue since they own the registered marks at issue.

Judge Hunt's Ruling on Trademark Claims

Judge Hunt dismissed without prejudice the false association claims brought by the seven other named plaintiffs in the proposed class action who have not registered their marks. These plaintiffs—Lynn Scott LLC, The Farmer's Wife LLC, Thuan Luu, Old Crown Inc., 132 Degrees LLC, MDR LLC, and Momobbq Co. LLC—can still pursue false association claims under Section 43(a) of the Lanham Act, despite not having registered their marks. They had already requested permission to amend their claims before Judge Hunt ruled on Grubhub's dismissal bid.

GrubHub Restaurants TM Infringement Suit : Core Issues of the Case

The primary issues in the false association and false advertising claims are whether Grubhub misled consumers about its relationship with the restaurants, misstated menu offerings, or listed inaccurate prices. Grubhub argued that the false association claims should be dismissed with prejudice for eight of the nine named plaintiffs because seven had not registered their marks and because MF Tasty registered the mark under MF Tasty Inc., not MF Tasty LLC. The restaurants claimed that MF Tasty's situation was due to a typo and argued that they do not need to prove a protectable trademark interest to pursue false association claims.

Judge Hunt's Clarifications

Judge Hunt clarified that while the restaurants did not need to prove their protectable interest at this stage, the claims brought by those who had not registered their marks were dismissed without prejudice for failing to allege such an interest in their first amended complaint. Alleging a plausible trademark interest does not require trademark registration, the opinion stated.

"To be clear, at the pleading stage, plaintiffs need only allege a plausible trademark interest, not prove it," the court said. "Contrary to Grubhub's contention, establishing that the mark is distinctive enough to warrant Lanham Act protection is not yet required."

GrubHub Restaurants TM Infringement Suit : Case Background

The dispute over Grubhub's alleged misappropriation of trademarks and confusion of restaurant customers has been ongoing since 2020. The case was paused while a similar case in Colorado neared a settlement, but the Illinois federal court lifted its stay after that deal appeared to stall.

Legal Representation

Grubhub is represented by Isaac J. Colunga, Sophie E. Honeyman, and Rachel Smoot of Taft Stettinius & Hollister LLP. The restaurants and the proposed class are represented by Elizabeth A. Fegan of Fegan Scott LLC and Rosemary M. Rivas, Wynne Tidwell, and Brian Johnson of Gibbs Law Group LLP.