Deli Enjoined From Falsely Applying Trademark Certification

On June 9, Judge Elaine E. Bucklo of the Northern District of Illinois granted an order in favor of the Chicago Rabbinical Council (Council) that determined that the Al Khyam Bakery & Grocery (Khyam), a now-closed Chicago-based deli and café centered around halal meats, Middle-Eastern spices, and pita bread products, used the Council’s “cRc in a triangle” trademark on in-house products when Khyam “was not authorized nor given permission to use the cRc Mark on its products, packages, and labels.” The judge provided the Council with court costs, attorney’s fees and statutory damages but failed to award punitive damages.

The Council registered the cRc mark as a “certification trademark to indicate…food products or equipment used in connection with [said] food products [was] kosher.” The cRc mark successfully registered with the United States Patent and Trademark Office on February 11, 1986 and the misuse by Khyam began on May 29, 2019. The Council notified Khyam of the unauthorized use of the mark in May, June, and November 2019. Despite these notices, misuse failed to cease leading the court to hold that Khyam’s “wrongful infringements [were] intentional and willful misappropriations of the cRc Mark…[that] have caused and will continue to cause irreparable harm to [Council] unless permanently enjoined.”

In the injunction against Khyam, the court held that the defendant must: (1) stop using the cRc Mark in “connection with the manufacturing, distribution, transportation, sale, offer for sale, or distribution of food products, that is not a genuine [Council] kosher certification”; (2) refrain from “passing-off, inducing, or enabling others to sell or pass off any products, which are not approved by [Council] as having been approved by [Council]”; (3) discontinue “making any false or misleading statements regarding [Council] or its services, or the relationship between [Council] and [Khyam]”; and (4) ceasing “any other acts calculated to cause purchasers to believe that [Khyam’s] products are approved by [Council].”

In addition to injunctive relief, the court, via 15 U.S.C Sec. 1117 (the Lanham Act), awarded the Council statutory damages of $1 million, court costs, and attorney’s fees. The plaintiffs were represented by Aronberg Goldgehn Davis & Garmisa.