I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.
Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?
Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.
First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).
The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).
An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).
Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.
Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.
I’ll go factor by factor.
(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.
There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.
The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.