Plaintiff Dan Tana’s is a 46 year old restaurant in Hollywood, California, known as a legendary hotspot where “where mustached waiters dressed in tuxedos serve classic Italian dishes off a menu embellished with Italian language … [where] [t]he ambiance is cozy, intimate, romantic, low-lit, and the restaurant caters to Hollywood’s elite and to celebrities seeking a safe haven from paparazzi.” Slip opn. 19. In the 1970’s Aaron Spelling asked to use the founder’s name, Dan Tana, for the lead character’s name in Spelling’s TV series “Vega$.” Notwithstanding this fame, the 11th Circuit Court of Appeals found insufficient evidence to enforce Plaintiff Dan Tana’s rights in Atlanta, Georgia. Dan Tana v. Dantanna’s and Great Concepts, LLC., Case No. 09-15123 (11th Cir. July 15, 2010)(see opinion here)
Newcomer Dantanna open its first restaurant in Atlanta in 2003, then opened a second Atlanta restaurant and applied for and obtained a Federal trademark registration for DANTANNA’s in March 2005, with a first use date of September 2003. Dantanna’s Atlanta is an “upscale sports restaurant, targeting sports enthusiasts and serving contemporary American cuisine in a modern setting decorated with flat-screen televisions.” Slip opn. 19.
In summary, Dan Tana’s Hollywood “failed to establish widespread secondary meaning of the name ‘Dan Tana’s’ sufficient to demonstrate that he holds a strong mark in restaurant services so as to cause a likelihood of confusion among consumers in Atlanta.” Slip opn. 18. Since the common law mark (Plaintiff had no federal registration) was a personal name (Dan Tana), “the relevant inquiry is whether Plaintiff’s mark is strong enough outside of Los Angeles to give rise to a likelihood of confusion among consumers of Dantanna’s restaurant services in Atlanta. … The record fails to establish such widespread secondary meaning” in Atlanta even though Plaintiff proved up a protectable mark, with secondary meaning, in Los Angeles. Slip opn. 16. In reaching this decision, the Court cited Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125 (2d Cir. 2004), wherein the 2nd Circuit stated: “[T]o achieve the status of a strong mark, plaintiff must demonstrate distinctiveness in the relevant market . . . . In this case, the relevant market is the pool of actual and potential customers of Terrance Brennan’s, for it is those patrons whose potential confusion is at issue.” Brennan’s, 360 F.3d at 132.
In Dan Tana, the 11th Circuit Court of Appeals appears to have added “geographic considerations” to a number of the likelihood-of-confusion factors. The classic seven factor test for likelihood of confusion (trademark infringement) evaluates:(1) strength of the mark alleged to have been infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods and services offered under the two marks; (4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of the alleged infringer to misappropriate the proprietor’s good will; and (7) the existence and extent of actual confusion in the consuming public. See slip opn. 12. The Court’s opinion carefully analyzes these factors finding that Plaintiff failed to prove up a likelihood of consumer confusion for almost every factor.
More importantly, the 11th Circuit supplemented the seven factor test finding that geographic considerations are relevant to several factors, without elevating the geography to a separate elemental test. Slip opn. 24. Geography should be considered in determining (a) the strength of the plaintiff’s mark, and, for descriptive marks, the secondary meaning acquired in the different geographic markets (here, the plaintiff’s mark was strong in Los Angels but weak in Atlanta); (b) the geographic remoteness of the plaintiff’s mark’s compared to the geographic scope of defendant’s market as being “relevant to the likelihood-of-confusion inquiry” (slip opn. 25); (c) the strength and scope of the plaintiff’s common law mark rights because “the scope of protection accorded his [common law] mark is coextensive only with the territory throughout which it is known and from which it has drawn its trade” (id.); and (d) the co-existence of each of the parties’ businesses in a geographic sense and over time (whether “the parties’ restaurants coexist in remote markets, geographically and otherwise”). Slip opn. 27. The Court’s discussion of the evidence reveals that geography applies to Factors 1, 4, 5, and 7. Geography was an element in the parties’ actual sales methods, the parties’ sales outlets, their respective customer base, the similarity of advertising methods and the existence and extent of actual confusion by the consuming public.
In this decision, the Court carefully described common law rights of an unregistered mark, the need to establish secondary meaning when considering descriptive marks and surnames and first names, and the importance of federal registration.
The owner of a registered mark, in contrast, enjoys the unlimited right to use the mark nationwide, and federal registration affords the registrant priority over all future users of confusingly similar marks. 15 U.S.C. § 1057(c); Therefore, a Lanham Act plaintiff asserting common-law trademark rights under § 43(a) against the owner of a registered mark, as here, bears the burden of establishing the right to use its mark by actual use in a given territory. And because registration constitutes constructive nationwide notice of the registrant’s priority of use of a mark, 15 U.S.C. § 1072, only actual use occurring prior to such registration gives rise to enforceable common-law trademark rights, 15 U.S.C. § 1065. Thus, federal registration has the practical effect of freezing a prior user’s enforceable trademark rights thereby terminating any right to future expansion beyond the user’s existing territory. …“In the case in which a junior user applies for registration, . . . the extent of the senior user/non-registrant’s territory is frozen as of the date of actual registration to the junior user.”
Slip opn. 26 (citing Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1564 (11th Cir. 1991); Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 269 (4th Cir. 2003) and quoting Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th Cir. 2001)).
I.P. practitioners are well advised to study this well written 11th Circuit decision adopting geographic relevance in several likelihood of confusion factors.
Please note that the opinions expressed in this blog entry do not necessarily reflect the opinions of the firm.