On November 2, 2021, a federal trial court in New York issued an opinion that combined breakfast restaurants, social media, trademarks, and COVID. The judge ultimately ruled against the registered trademark owner’s request for a default judgment, in part based upon the defendant’s lack of social media advertising. BYC, Inc. v. Broken Yolk, civ. no. 21-CV-6203-FPG (W.D.N.Y. Nov. 2, 2021) (2021 WL 5074720).
According to the plaintiff’s complaint, the defendant began operating a restaurant in Rochester, New York, which specialized in American breakfasts, under the name “Broken Yolk.” The plaintiff franchises breakfast and lunch restaurants under the federally registered trademark the “Broken Yolk Cafe” in 33 locations throughout California, Arizona, Texas, Illinois, Florida, Nevada, and Idaho. In 2019, plaintiff sent a cease-and-desist demand, and the defendant, through an attorney, agreed to stop using the name.
The plaintiff’s complaint claimed that the defendant did not make the change, and sent another cease-and-desist demand on February 2, 2021. The defendant did not respond, so the plaintiff brought an action in federal court, alleging federal law claims for trademark infringement, trademark dilution, false designation of origin, and violation of the California and New York unfair competition laws. The defendant did not appear, and the plaintiff sought a default judgment.
But what happened during 2020? “Plaintiff advised that due to the impact of COVID-19 on their business, Plaintiff did not pursue litigation against Defendants a year earlier, in February 2020, when Plaintiff initially attempted to contact Defendants by email, without response.”
The court used an eight-factor test to determine whether there was a likelihood of customer confusion:
(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.
Social media factored into the second element. The plaintiff claimed that, although defendant had changed the restaurant’s name, “the social media pages, websites, and other online material still reference ‘Broken Yolk.’” The court reviewed internet searches and found that the defendant appeared on only one social media platform—and that page had not been updated since April of 2020. “Thus, the Court acknowledges that Defendants do not appear to be actively promoting themselves as ‘Broken Yolk.’” In other words, the defendant’s lack of social media promotion led the court to find, with respect to the second factor, “this factor does not weigh heavily in Plaintiff’s favor given the name change and lack of other similarities.”
The court found that plaintiff did not provide evidence for many of the other elements, and ultimately denied the plaintiff’s motion for a default judgment and dismissed the complaint without prejudice.
Because social media pages change frequently, it you intend to bring a claim for a defendant’s actions on social media, be sure to obtain verifiable copies of the pages and include them with the complaint.