Aronberg Goldgehn Wins $1 Million Trademark Dispute for the Chicago Rabbinical Council
06.10.20
Aronberg Goldgehn attorneys Chris Niro, Nate Lichtenstein and Kristy Diesner have secured a $1 million trademark dispute win for the Chicago Rabbinical Council in the U.S. District Court for the Northern District of Illinois.
In 2011, the Chicago Rabbinical Council entered into a contract with Abdul Rehman Group, which does business as Mounsef International Inc. and/or Al-Khyam Bakery and Grocery, which permitted it to use its "cRc" Mark. The cRc Mark is a certification trademark to indicate the food products or equipment used in connection with such food products are kosher.
In May 2019, Abdul Rehman breached the agreement by failing to pay for its kosher certifications and the CRC terminated the contract. Subsequently, Abdul Rehman applied a counterfeit cRc Mark on its packaging and labels, thereby using the cRc Mark without authorization or permission from CRC, constituting trademark infringement.
After Abdul Rehman failed to respond to cease and desist letters and other notices served in May, June and November 2019, Aronberg Goldgehn filed suit on behalf of the CRC in Chicago Rabbinical Council Inc. v. Abdul Rehman Group Inc.
On June 9, 2020, U.S. District Judge Elaine E. Bucklo found that Abdul Rehman infringed the cRc Mark, enjoined the store and its related companies from using the cRc Mark, and ordered it to pay statutory damages of $1 million in addition to costs and attorney’s fees.
In an interview for a Law360 article covering the case, Aronberg Goldgehn’s Chris Niro said he and the council are pleased with the judge's order and that he hopes it serves as a deterrent for other entities against using the cRc mark on uncertified goods. He said a large swathe of the public has come to recognize the mark as a legitimate indication of kosher goods, and he hopes the case shows that the CRC takes their certification seriously.
Today, Chris also added: “This is a good reminder to companies to register their trademarks and other IP rights because the availability of statutory damages made all the difference in this case.” Indeed, Chris said, for most companies actual damages for sales of goods may be de minimis or small enough that the possible recovery would not exceed the costs of litigation including attorney’s fees. In the case of use of certification marks or marks on goods, the trademark act allows for the recovery of statutory damages within the discretion of the Court based on the number of infringing items.
“Statutory damages, like those awarded here, are a significant deterrent for potential infringers who try to cut corners and not renew license agreements, thinking that no company would litigate a $3,000 contract,” said Chris. “Abdul Rehman took that risk; gambled and lost, significantly.”
CLICK HERE to read “Rabbinical Council Wins $1M Kosher Trademark Dispute,” published by Law360.
About the Aronberg Goldgehn Attorneys Who Represented CRC
Christopher W. Niro focuses his practice on intellectual property litigation, prosecution and other business affairs, including brand management and portfolio development. He represents individuals and entrepreneurs, as well as mid-size companies and multinational organizations. Chris advises his clients with regards to patents, trademarks, copyrights and trade secrets. In addition, he has extensive experience with all aspects of intellectual property litigation in both state and federal trial and appellate courts.
Nathan H. Lichtenstein is Co-Chair of the firm's Commercial Litigation Group. He focuses his practice on complex commercial litigation, including probate and trust matters, breach of contract claims, fraud and consumer fraud actions, trademark and copyright infringement cases, shareholder derivative suits, federal tax litigation, employment matters and unfair competition claims. He has extensive experience in banking, insurance, real estate, employment, viaticals and life settlements, as well as corporate matters, including ownership and management disputes - often described as "business divorce." In the course of his practice, Nate has represented a broad range of corporate and commercial clients.
Kristina D. Diesner focuses her practice on intellectual property law matters. She counsels individuals and companies in the protection and enforcement of their trademarks, copyrights and trade secrets. She also advises clients on trademark registrations. Kristy is regularly engaged in drafting trademark office action responses, complaints, cease and desist letters, motions for entry of default, motions for entry of default judgment and motions for summary judgment in lieu of complaint. She also files trademark applications, monitors numerous trademarks and performs trademark clearance searches for clients in order to recommend the strongest marks.
