## Facts

- A national restaurant business began using the name “Burger King” in 1953 and later obtained a federal trademark registration for the mark under the Lanham Act.
- Local restaurateurs in Mattoon, Illinois began operating a “Burger King” restaurant in 1957 after previously operating an ice-cream business.
- In July 1959, the local restaurateurs registered “Burger King” under Illinois trademark law without notice of the national business’s prior use.
- The national business opened its first Illinois restaurant in Skokie in July 1961 with notice of the Illinois registration.
- The federal registration for “Burger King” issued on October 3, 1961.
- In September 1962, the local restaurateurs opened a second “Burger King” in Charleston, Illinois after the federal registration issued.
- The parties exchanged infringement accusations in Illinois, and the national business sued in federal court; the local restaurateurs asserted rights based on their Illinois registration and local priority.

## Issues

1. Whether a federal trademark registrant under the Lanham Act has superior rights to use the mark throughout Illinois despite an earlier state registration and local use by another party.
2. Whether, and to what geographic extent, a prior good-faith local user may continue using the mark against a later federal registrant.

## Decision

- The Seventh Circuit affirmed the district court.
- The federal registrant was entitled to use “Burger King” throughout Illinois except within the local users’ established Mattoon market area.
- The local users, as prior good-faith users, retained exclusive rights within a defined Mattoon market area set as a 20-mile radius around Mattoon.
- The local users were enjoined from using “Burger King” elsewhere in Illinois, and the federal registrant was enjoined from using the mark within the Mattoon market area.

## Legal Principles

- Federal trademark registration provides a strong, statewide and nationwide right to use a mark, subject to statutory and equitable defenses.
- State trademark registration cannot confer statewide priority that defeats a valid federal registrant’s rights outside the state registrant’s proven area of continuous use.
- A prior, innocent, continuous local user may assert a defense against infringement, but only within the geographic area where that local use is established.
- Courts may allocate exclusive territories between a federal registrant and a prior local user to reduce consumer confusion and reflect the limits of each party’s proven rights.

## Conclusion

The court enforced the supremacy of federal registration while preserving a narrow concurrent-use exception: the federal registrant obtained exclusive rights across Illinois except for a limited Mattoon-area zone where the prior good-faith local user retained exclusive rights based on continuous local use.


Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968)