## Facts

- In 1946, Jerome M. Lederer opened a restaurant in Lexington, Kentucky using the name “JERRY’S,” and later operated restaurants identified as “JERRY’S DRIVE-IN” and “JERRY’S RESTAURANT.”
- Jerrico, Inc. operated and franchised “Jerry’s” restaurants in multiple states (including Florida) and obtained federal service-mark registrations for “JERRY’S DRIVE-IN” and “JERRY’S RESTAURANT” for restaurant services.
- Jerrico’s federal registrations were in force and had achieved incontestable status under the Lanham Act.
- Jerry’s, Inc. was a Florida business that grew out of airline-catering operations started in the early 1940s by Gerard J. Pendergast, Sr., who used the name “JERRY’S CATERERS.”
- Defendant and its predecessor used “JERRY’S,” “JERRY’S RESTAURANT,” and “JERRY’S CATERERS” in connection with airline catering and with restaurants/food service operations at Florida airports that were open to the general public.
- Defendant also operated a restaurant and motel under “JERRY’S RESTAURANT” in Islamorada, Florida (1959–1969), and later conducted business through corporate subsidiaries in Florida.
- Defendant did not register the “JERRY’S”-formative marks.
- Jerrico sued in the Southern District of Florida for infringement of its federally registered service marks under 15 U.S.C. § 1114(1) and for unfair competition.
- Defendant denied infringement, raised defenses based on its earlier Florida use, and counterclaimed for a declaratory judgment defining its right to use “JERRY’S,” “JERRY’S RESTAURANT,” and “JERRY’S CATERERS.”

## Issues

1. Whether defendant’s use of “JERRY’S,” “JERRY’S RESTAURANT,” and “JERRY’S CATERERS” for restaurant services open to the public was likely to cause consumer confusion with plaintiff’s registered “JERRY’S RESTAURANT” (and related) service marks under 15 U.S.C. § 1114(1).
2. What effect plaintiff’s incontestable registrations had on validity and enforceability, and whether defendant could still assert a defense based on earlier, continuous local use in Florida.
3. If infringement was found, how the parties’ rights should be limited geographically to account for defendant’s prior use while preventing confusing overlap.

## Decision

- The court found that Jerrico owned valid federal service-mark registrations for “JERRY’S DRIVE-IN” and “JERRY’S RESTAURANT,” and that the registrations were incontestable.
- Applying a likelihood-of-confusion analysis, the court concluded that defendant’s use of “JERRY’S RESTAURANT” and “JERRY’S CATERERS” for public restaurant services created confusion as to source in relation to plaintiff’s registered mark and therefore infringed plaintiff’s rights.
- The court rejected the idea that defendant’s unregistered use could defeat plaintiff’s registered rights everywhere, but it recognized that defendant’s earlier, continuous good-faith use supported a limited territorial entitlement in the area where defendant had established use before plaintiff’s expansion.
- The court tailored relief to reduce confusion while accounting for defendant’s established local market, granting plaintiff protection against confusing uses outside defendant’s proven prior-use area and allowing defendant continued use within that limited locale.

## Legal Principles

- Trademark infringement under 15 U.S.C. § 1114(1) turns on whether the accused use is likely to cause confusion, mistake, or deception as to source.
- Likelihood of confusion is evaluated through multiple considerations, including similarity of the marks, distinctiveness/strength, similarity of the services, advertising and market presence, relevant consumers, and the parties’ adoption and use over time.
- An incontestable federal registration conclusively establishes the registrant’s right to use the mark for the registered services, subject to recognized defenses.
- A party with earlier, continuous good-faith use in a limited geographic area may retain rights in that established territory even against a federal registrant, but those rights do not extend beyond the proven market of prior use.
- Equitable relief in trademark cases may be limited geographically and functionally to prevent consumer confusion while respecting prior territorial rights.

## Conclusion

The court held that defendant’s “JERRY’S”-formative names for restaurants open to the public were likely to confuse consumers and infringed Jerrico’s incontestable “JERRY’S RESTAURANT” service mark, but it limited the remedy by recognizing defendant’s earlier, continuous local use in a defined Florida area and permitting continued use there while restricting conflicting uses elsewhere.


Jerrico, Inc. v. Jerry's, Inc., 376 F. Supp. 1079 (1974)