Food delivery service sued for trademark infringement by restaurant. GREAT NH v. DOORDASH

A trademark is something that a producer of goods or services uses to distinguish their products in the marketplace. Anything that serves the purpose of telling consumers who produced a product can be eligible for trademark protection. Trademark law in the United States grants the user of a trademark the right to prevent other people from using a trademark in a way that may cause consumer confusion. If someone other than the owner of a trademark brands products with a trademark in a way that leads consumers to be confused about the identity of the company that produced the product, that can be considered trademark infringement. A trademark owner can file a lawsuit to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

The rights granted by trademark law are broad, however those rights comes with some limits. One of the limits to the rights enjoyed by trademark owner is the first sale doctrine. The first sale doctrine limits a trademark owner’s control over a particular product when that product enters the stream of commerce. Under the first sale doctrine, someone who resells a branded product, or advertises the availability of that product, can use the original producer’s trademark to accurately identify the product it is selling. The first sale doctrine applies even if the product itself is used or refurbished, as long as it is not materially changed and as long as it is not misrepresented as being something different than it is.

The internet presents new and unique questions on how trademark law applies to commerce. The speed at which the internet moves allows a reseller to place an order with the original producer of a product at the same moment a consumer places the order with the reseller. Fairly recently websites that specialize in the resale of food have appeared. These sites allow consumers to place orders at restaurants for takeout and have the food delivered even through the restaurant does not offer a delivery option. Sometimes the relationship between the reseller and the restaurant is consenting, other times the restaurant may be unaware the reseller is involved in the transaction. This can lead to headaches for the restaurant when the reseller’s delivery person does not meet the expectations of the consumer. Restaurants find themselves with complaints for food deliveries they did not know about and have no control over.

GREAT NEW HAMPSHIRE RESTAURANTS, INC., v. DOORDASH, INC., 20-cv-00283 (D.C.NH 2020) is an example of a case where restaurant whose food was being resold without consent claimed trademark infringement. The plaintiff in this case operates a number of popular restaurants in New Hampshire under various trademarks. The plaintiff allows consumer to place orders for takeout on its website.

The defendant operates a food delivery website. Consumers can place orders on the defendant’s website for food from a number of partner restaurants. The defendant’s website also allows consumers to order food from the plaintiff. Even though the plaintiff has no relationship with the defendant, the defendant’s website display’s the plaintiff’s trademarks and menu. When the defendant relays an order to the plaintiff the order does not indicate that the order is being placed by the defendant.

The plaintiff believes that the defendant’s use of its trademarks and menu creates confuses consumers into believing that the plaintiff is affiliated with the defendant. Several consumers have complained to the plaintiff about deliveries made by the defendant. Because of these complaints the plaintiff sued the defendant for trademark infringement, unfair competition and deceptive trade practices.

The defendant has not answered the complaint yet, but they will no doubt claim their activity is protected by the first sale doctrine. Whether or not that argument will persuade a jury will depend on whether the defendant is materially changing the product during the delivery process and whether the defendant’s website is misrepresenting that an order from the defendant is the same as an order from the plaintiff. The outcome of the case will depend heavily on what facts each side can present.

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