Bid to Dismiss Billy Goat Trademark Suit Strikes Out

A St. Louis-based potato chip company whiffed in an attempt to ground a trademark infringement lawsuit by Chicago’s iconic Billy Goat Tavern.

The U.S. District Court for the Northern District of Illinois ruled Aug. 7 that too many key facts remain in dispute to find the Billy Goat Tavern waited too long to file a lawsuit against the Billy Goat Chips Co. over the Billy Goat mark on chips sold since 2009.

The chip company wanted the December 2017 suit thrown out based on laches, a trademark-specific bar on waiting too long to defend a mark. Federal trademark law doesn’t provide a concrete definition of laches. That gives courts discretion to consider factors based on comparable state law and makes determining the boundaries of laches crucial to many cases.

The comparable Illinois law says a plaintiff’s trademark lawsuit must be “inexcusably delayed” for laches to apply, and that determination remains in dispute in the Billy Goat lawsuit, the court said. The tavern argued that encroachment by the chipmaker into its market was “gradual,” and that Billy Goat Tavern customers only recently began expressing confusion over the chips’ origin despite the fact that the chips have been sold in Chicago since at least 2011.

The tavern alleges the chip company operated in bad faith to trade on the mark’s goodwill, which also could bar laches, the district court said. The infringement, the tavern said, interfered with its efforts to license its name to chip companies. The chips company countered that the tavern only entered the packaged food retail market in 2017.

The chipmaker also wanted the federal court to dismiss state fraud and deceptive trade practice allegations subject to a three-year statute of limitations. But unlike trademark laches, ongoing violations of those laws reset that three-year clock, the court said. The tavern reached out to negotiate in August 2014, more than three years before the December 2017 suit, but negotiations broke down in 2015.

The original Billy Goat Tavern in Chicago opened in 1934 and gained notoriety when founder William Sianis and his pet goat were kicked out of Game 4 of the 1945 World Series at Wrigley Field. He allegedly said the Cubs “ain’t going to win no more” as he left in what became known as The Curse of the Billy Goat. The Cubs lost the 1945 World Series and didn’t reach another until winning it in 2016. The ruling noted the tavern was “immortalized in pop culture” during a 1978 Saturday Night Live sketch.

The Billy Goat Tavern now has five Chicago locations, and added one in Washington D.C. in 2005. The accused chips are sold within a half mile of the flagship Chicago location and the Washington location, the court noted.

Judge Robert M. Dow wrote the opinion.

Billy Goat Tavern is represented by Thompson Coburn LLP. Billy Goat Chip Company is represented by Lathrop Gage LLP.

The case is Billy Goat IP LLC v. Billy Goat Chip Co., 2018 BL 280966, N.D. Ill., No. 17-9154, 8/7/18

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com