Here is my lawyers response to PH’s lawyer.
Dear Atty Martin,
I have been retained by Great Scott’s Pizza to represent them and respond to your
correspondence dated March 26th, 2013 in regard to the PIZZA HUT® BOOK IT! Program. As you are
aware, the mention of a competitor’s tradename and/ or trademark is permissible within the confines of
Title 15, as well as under Wisconsin law, when used in a non-misleading and non-malicious manner.
15 USC §1125 sates in part,
“(3) Exclusions: The following shall not be actionable as dilution by blurring or dilution by
tarnishment under this subsection: (A) Any fair use, including a nominative or descriptive fair use, or
facilitation of such fair use, of a famous mark by another person other than as a designation of source
for the person’s own goods or services, including use in connection with— (i) advertising or promotion
that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or
commenting upon the famous mark owner or the goods or services of the famous mark owner…”
The use of the term “Bookit” in a statement which offers to honor a competitor’s coupon is a
fair use, and in no way infringes on your client’s rights. Any such statement is in no manner misleading
or malicious. Honoring a competitor’s coupons is a common and legal practice, which is protected under
the law. Any legal action brought by your client will be treated as frivolous and appropriate legal
remedies will be sought.
Though my client has no obligation to do so, in an act of goodwill between our clients, Mr.
Chapman has agreed to delete the Facebook post which uses the word “Bookit”. My client, however,
reserves the right to honor competitors coupons. (Which is notably a policy of many Pizza Hut®
Restaurants)
If you wish to discuss this matter further, please feel free to contact me.
Excelsior,
Nathaniel A. Johnson, Esq.
Attorney and Counselor at Law
