A three judge panel’s opinion, penned by Judge Richard Posner, ruled late last week to uphold a preliminary injunction in favor of Kraft Foods Group, while Cracker Barrel Old Country Store and Kraft Foods continue their courtroom fight over the Cracker Barrel mark.
Kraft Foods, seller of Cracker Barrel cheddar since 1954, filed suit in January of 2013, shortly after the Cracker Barrel Old Country Store, a restaurant chain, announced its plans to pair with Smithfield Foods and sell a line of Cracker Barrel-branded lunchmeats, hams, bacons and jerkys in grocery stores. The restaurant chain, comprised of over 600 restaurants, was founded in 1969, and selected its name to evoke a Southern country feel. Citing similar inspiration, Kraft Foods named its line of Cracker Barrel cheeses after the same iconic country store fixture around which people would gather to socialize. The question before the U.S. Circuit Court of Appeals was whether the restaurant chain should be prohibited from marketing and selling their meat line under its name because it could be confused with Kraft’s Cracker Barrel cheese.
Kraft Foods argued that the respective parties’ logos would be confusingly similar to customers and that the similar wordmarks had already confused even those who worked for the Cracker Barrel Old Country Store. Even more confusing, as Judge Posner pointed out in his opinion, was that “[i]n the brief period before the … injunction was issued, in which (Cracker Barrel Old Country Store) hams were sold in grocery stores, an online ad for Cracker Barrel Sliced Spiral Ham by a coupons firm provided a link to a coupon for Kraft’s Cracker Barrel cheese.”
At least for now, Posner’s decisive injunction will prevent the restaurant’s plans to sell its Cracker Barrel-branded meats in grocery stores, but it does not stop the restaurant from selling those products online or at its restaurant chains while the suit is pending.
This battle raises an interesting issue for successful brands looking to expand use of its existing marks into additional classes. Because trademark rights are typically limited to particular classes of goods or services, companies in operating different types of businesses may often use the same trademark simultaneously. Perhaps this is how, up until now, Kraft Foods and Cracker Barrel Old Country Store managed to co-exist without issue; since Kraft Foods focused on the retail food sector (specifically, selling its product in grocery stores), and the restaurant chain focused on restaurant services, the products were relatively unrelated such that customers would not be confused as to the source of origin of the products. That said, with food as a significant common denominator between the two, it’s not completely unforeseeable for such an issue to arise. How the court will ultimately come out, though, is unclear.
For the time being, the docket indicates that this trial’s next round will be heard on November 25 before U.S. District Judge Robert W. Gettleman. Stay tuned.