The opinion of the court was delivered by: Robert D. Morgan, Chief Judge.
By its complaint herein, plaintiff seeks to enjoin
defendants' further use of the name "Beef & Brew" in their
operation of a restaurant located in Rock Island, Illinois.
Count I of the complaint is based upon the provisions of
Section 43(a) of the Lanham Trademark Act. 15 U.S.C. § 1125(a).
Count II is grounded upon the Illinois Trademark Statute.
Ill.Rev.Stat. 1973, ch. 140, § 8 et seq. Count III is grounded
upon the common law of trademark infringement and unfair
Jurisdiction of Count I of the complaint is conferred by the
provisions of Title 15, United States Code, § 1121. Dependent
jurisdiction of Counts II and III attaches by virtue of the
provisions of Title 28, United States Code, § 1338(b), the same
being joined with a controversy arising under the trademark
laws of the United States.
The cause was tried by the court without a jury. It is now
before the court upon the evidence adduced and upon the
briefs, proposed findings of fact and conclusions of law
submitted by the respective parties.
The essence of plaintiff's complaint is its position that it
possesses the exclusive right to use the word "Brew," in
conjunction with the generic name of an entree item, in
restaurant operations. The factual background of the
litigation, within the framework of which the legal issues
must be decided, is largely not disputed.
Plaintiff is a Delaware corporation, with its principal
place of business in New York City, New York. Defendant, Beef
& Brew Restaurant, Inc., is an Iowa corporation, with its
principal place of business in Rock Island, Illinois.
Defendant, Wesley Ling, is a resident of Rock Island. He and
his wife are the sole owners, and the only officers and
directors, of the defendant corporation.
In 1969, Longchamps, Inc., plaintiff's predecessor in
interest, began the promotion, development and operation of a
chain of restaurants under the name "Steak & Brew." Each of
those restaurants embodied the concept of a limited-menu
steakhouse, set in the atmosphere of an English public house.
The forte of the Steak & Brew marketing concept was, and is,
a moderately priced meal,
consisting of a steak, unlimited salad, and all of the beer
that the customer wants.
At about the same time, another chain of restaurants was
begun by plaintiff*fn1 under the name "Roast Beef & Brew."
The format and atmosphere of operation were, in all respects,
parallel to that of Steak & Brew, except that roast beef, not
steak, was the featured menu item.*fn2
Neither "Steak & Brew" nor "Roast Beef & Brew" has been
registered by plaintiff under the federal trademark statutes.
Registration of the mark "Steak & Brew" has been obtained by
plaintiff in several states, including Illinois.
In July, 1970, a Steak & Brew restaurant began operation in
Peoria, Illinois, under a franchise granted to Steak and
Shake, Inc., a corporation then controlled by Longchamps. That
operation continued until in the fall of 1971, at which time
Longchamps disposed of its interest in Steak and Shake and the
franchise was revoked.
In 1971, defendant Ling obtained the incorporation of the
defendant, Beef & Brew Restaurant, Inc. That corporation
commenced the operation of a restaurant in Rock Island,
Illinois, under the name "Beef & Brew" in April 1971. The
format of Beef & Brew is also quite clearly based on an
English pub theme. The restaurant features a limited menu of
steak and beef entrees and a salad bar. No alcoholic beverage
is included in the price fixed for meals. Beer and other
alcoholic beverages are supplied at the customer's request and
at his added expense.
The geographic area in which the single Beef & Brew
restaurant operates is commonly known as the Quad-Cities area.
That area encompasses Rock Island County, Illinois, and its
principal cities of Rock Island, Moline and East Moline, and
Scott County, Iowa, with its principal cities of Davenport and
Bettendorf. The city of Rock Island is approximately one
hundred miles distant from the city of Peoria, Illinois.
Continuously since 1969, plaintiff has invested substantial
sums of money in promotion and advertising to make its "Brew"
chains of restaurants a financial success. With the exception
that it did, in 1969, place one advertisement in a national
magazine soliciting franchises, plaintiff's advertising has
been limited to the areas in which its restaurants were
Beginning in about July 1970, the Peoria Steak & Brew
restaurant was advertised rather extensively in the only
Peoria daily newspaper and on one Peoria television station
and one Peoria radio station. Ads were also placed in a Shrine
Circus program and in a promotional publication made available
to visitors in the city of Peoria.