Leonard J. DeFrancisci [CC BY-SA 3.0 (https://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons
There’s no shortage of animosity between Chicago baseball fans and their St. Louis rivals, and now the same can be said of purveyors of food and drink, as Missouri-based Billy Goat Chip Company LLC has responded to a trademark lawsuit brought by Chicago’s Billy Goat Tavern with a countersuit of its own, alleging the iconic downtown Chicago establishment has no legal stake to ownership of the “Billy Goat” name.
In a March 9 filing in federal court in Chicago, Billy Goat Chip Company pointed out other businesses, including those in food service, reference billy goats in their trademarked names, including Billy Goat Coffee Café, Beer Like a Billy Goat and Billy Goat Hill Estate, a winery. St. Louis residents Rob Lyons and Brian Roth started selling Billy Goat Chip Company products on Feb. 15, 2009, and registered their trademark on March 30, 2010.
Lyons and Roth said the tavern’s assertions about their market footprint are accurate: Sales originally were limited to more than 100 locations in the St. Louis market, but the chips now are sold in three Chicago locations, including Eataly Chicago at 543 N. Wabash Ave., about a third of a mile from the primary Billy Goat Tavern. In Washington, D.C., the chips are sold about a half a mile from the Billy Goat establishment there.
Michael A. Parks | Thompson Coburn LLP
However, they also said they responded to a 2014 letter from the Tavern’s lawyers — then Niro, Haller & Niro — and in so doing explained their company is “named after its hometown roots in the Billy Goat Hill area of St. Louis,” noting the snack products’ labels emphasize the city and state. They say in July 2015 they offered to market and brand all chips sold in Illinois as originating in St. Louis for a three-year period, an offer they say never drew a response.
In addition to maintaining the initial complaint should be barred since “there is no likelihood of confusion” between the two trademarks, Billy Goat Chip Company accused the tavern of violating the Lanham Act through false advertising and of violating the Illinois Uniform Deceptive Trade Practices Act and Illinois Consumer Fraud and Deceptive Business Practices Act.
After detailing the history of the chips — which they said was originally a house-made side at the Billy Goat Restaurant & Bar, a gastro pub in St. Louis’ Billy Goat Hill neighborhood — the chip company said in April 2017 they started selling directly and through third-party licensing agreements packaged retail food and beverage goods like frozen hamburger products and beer. It does so using the registered trademark symbol, although its trademark registration “is limited to use in connection with ‘tavern and restaurant services.’ ”
In reality, according to the chip company, the Chicago tavern does not possess a federally registered trademark for retail food and beverages, further saying the marketing and sale of the products in question are an attempt to gain competitive advantages over businesses like Billy Goat Chip Company that do own such marks.
In addition to requesting a jury trial for its counterclaim, the chip company wants the court to dismiss the tavern’s initial complaint with prejudice and to force the tavern to stop using a registered trademark symbol for any of its grocery store packaged products.
Currently representing Billy Goat IP are attorneys Michael A. Parks and Justin P. Mulligan from Thompson Coburn LLP, of Chicago and St. Louis.
The chip company’s attorneys are Vladimir I. Arezina and Sara Barnowski, with Lathrop Gage LLP in Chicago.