Restaurants and Jelly: A Trademark Dispute in Bend, Oregon

The Bulletin covered a story last week involving a trademark dispute between two Oregon businesses: a Bend restaurant and a Redmond jelly business.

Chris Justema—owner of Justema Enterprises, LLC—opened a restaurant in March of 2022 under the name JUSTY’S. Justema filed a trademark application with the USPTO for the word mark JUSTY’S. Mr. Justema’s nickname is apparently “Justy.” I have never heard of that nickname but it is interesting to see at least three trademark records with the USPTO for JUSTY’S marks owned by different Pacific Northwest-based businesses.

Within months, the owner of Justy’s Jelly contacted Justema and sued for trademark infringement. The complaint alleged that the parties’ trademarks are “similar in sight, sound, and meaning; identify similar types of goods; operate in overlapping marketing channels within the same geographic region; and have resulted in consumer confusion.” These allegations are common in trademark infringement suits, which require the claimant to show a likelihood of confusion.

If this dispute had progressed to a jury, it would not be a slam dunk for either side. Both marks appear in a cursive script but contain additional terms—“Jelly” versus “Bar. Grill. Sandbox.” Consumers might readily detect differences in light of the additional terms.

The services are related to the extent that they both concern food. Many restaurants provide jelly and the Bend restaurant might provide jelly, as well. To downplay similarity between these goods and services, the restaurant might argue that: (1) there are no, or few, examples of jelly businesses that expand their businesses to provide restaurant services; and (2) the jelly business’s twenty-years of existence without offering restaurant services is evidence that it would be unnatural for the jelly business to expand.

Evidence of actual confusion could greatly impact the overall analysis. If customers, friends, family, repeatedly contacted the owner of the jelly business to say, “I did not know that you opened a restaurant down in Bend” or “congratulations,” such evidence could be compelling. Similarly, the jelly business could hire a marketing expert to perform a survey to see if respondents are confused between the marks. By contrast, an absence of actual confusion might buttress the defense.

An additional factor that could be critical would be the strength of the jelly businesses’ brand. As I mentioned above, I have not heard the name “Justy.” If Justy is an uncommon name, evidence that the jelly business spends a lot of money on advertising and generates a lot of revenue could go a long way to show that customers recognize that brand, and customers would be more likely to believe that the jelly business was associated with the restaurant. On the other hand, evidence of dozen’s of “Justy’s” named businesses in the Bend/Redmond part of Oregon could hurt the plaintiff’s cause.

Finally, a jury was never confronted with these questions because the parties reached an early settlement. Cost-benefit analysis is key when deciding whether to fight back or to make a change. Mr. Justema acknowledged that he had used the JUSTY’S name for less than a year. At that point, he had not spent as much time building his brand as a company of five-plus years with multiple locations, etc. Regardless of merits, he probably decided that the cost of defending a trademark infringement lawsuit might be better spent building a different brand.

Of course, we do not have the benefit of knowing the evidence like the parties to this dispute. Additional evidence could certainly impact this assessment further.

If you or your business is considering a new name or whether to change, consult with a trademark attorney. An experienced trademark attorney can perform searches of existing marks and opine on strengths and weaknesses of your existing and/or proposed marks.