Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc. , 106 F.3d 355 ( 1997 )


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  •                  United States Court of Appeals,
    Eleventh Circuit.
    Nos. 94-8700, 95-8656 and 95-8767.
    LONE STAR STEAKHOUSE & SALOON, INC., Plaintiff-Counterdefendant-
    Appellant,
    v.
    LONGHORN STEAKS, INC., Defendant-Appellee.
    LONE STAR STEAKS, INC., Plaintiff-Counterdefendant-Appellee,
    v.
    LONE STAR STEAKHOUSE & SALOON OF GEORGIA, INC., Lone Star
    Steakhouse & Saloon, Inc., Defendants-Counterclaimants-Appellants.
    Feb. 24, 1997.
    Appeals from the United States District Court for the Northern
    District of Georgia. (Nos. 1:93-CV-2936, 2938-ODE), Orinda D.
    Evans, Judge.
    Before COX and BLACK, Circuit Judges, and FAY, Senior Circuit
    Judge.
    FAY, Senior Circuit Judge:
    In these consolidated appeals and cross-appeals, we are asked
    to review various orders entered by the district court in a
    trademark infringement case.1 Appellants and Cross-Appellees, Lone
    Star Steakhouse & Saloon, Inc. and Lone Star Steakhouse & Saloon of
    Georgia, Inc. ("Plaintiff"),2 and Appellees and Cross-Appellants,
    1
    The parties in this appeal each filed separate but related
    complaints in the United States District Court for the Northern
    District of Georgia: Case No. 93-CV-2963 and Case No. 93-CV-
    2938. The two cases were consolidated pursuant to Rule 42(a) of
    the Federal Rules of Civil Procedure.
    2
    Although Lone Star Steakhouse & Saloon of Georgia, Inc. is
    listed as a separate defendant in Case No. 93-CV-2938, it is a
    wholly-owned subsidiary of Lone Star Steakhouse & Saloon, Inc.
    To simplify our discussion, we treat the two corporations as a
    single entity, and we consequently refer to only one "Plaintiff."
    Lone Star Steaks, Inc. and Longhorn Steaks, Inc. ("Defendant"),3
    are involved in the restaurant business. The parties' main dispute
    surrounds         which   party's   trade     name   for    restaurant    services,
    Plaintiff's LONE STAR STEAKHOUSE & SALOON and LONE STAR CAFE or
    Defendant's LONE STAR STEAKS, has prior and superior rights.                       The
    United States District Court for the Northern District of Georgia,
    concluded that Defendant's rights were superior in Georgia, and
    thus granted Defendant's motion for a preliminary injunction.
    Subsequently, the district court (1) entered a clarification order
    discussing the scope of the preliminary injunction, (2) entered a
    permanent injunction against Plaintiff, enjoining it from using the
    LONE       STAR   STEAKHOUSE   &    SALOON    mark     in   Georgia,   (3)   awarded
    Defendant damages, attorneys' fees, costs, and final judgment on
    its pendent state law claims, and (4) entered two separate orders
    further       explaining     the    relief.      The    issues   raised      in   this
    consolidated appeal arise from these various orders.                         For the
    reasons discussed below, we affirm the district court in all of its
    rulings, except that part of the district court's order which
    grants Defendant attorneys' fees under Georgia law.                    However, in
    vacating the award of attorneys' fees under Georgia law, we remand
    the matter to the district court to determine if Defendant is
    entitled to attorneys' fees under the Lanham Act.
    Plaintiff operates over one hundred and seventy "Lone Star
    Steakhouse & Saloon" restaurants throughout the United States. The
    first such restaurant was opened in October 1989 in Winston Salem,
    3
    Again, for simplicity's sake, we treat these separate
    entities as if they were one.
    North    Carolina,   and    since     then   the   business   has   expanded
    considerably.      In connection with these restaurants, Plaintiff
    holds a federal trademark registration for the mark LONE STAR
    STEAKHOUSE & SALOON.        This registration covers various clothing
    items, but does not cover restaurant services.4               Additionally,
    Plaintiff holds a federal trademark registration for the mark LONE
    STAR CAFE.    The LONE STAR CAFE mark covers both clothing items and
    restaurant services.        The mark covering restaurant services was
    registered    in   1981    by   a   New   York   City   nightclub   operator.
    Plaintiff's predecessor corporation purchased the LONE STAR CAFE
    mark from the nightclub in 1992;          the mark was later transferred to
    Plaintiff.5
    4
    Plaintiff has an application for the mark LONE STAR
    STEAKHOUSE & SALOON, which does cover restaurant services, now
    pending before the United States Patent and Trademark Office.
    5
    More specifically, Plaintiff describes its trademarks as
    follows:
    A. United States Service Mark Registration No.
    1,555,907, issued on May 26, 1981 for the mark LONE
    STAR CAFE, which registration is now incontestable
    under 15 U.S.C. § 1065. This registration covers
    restaurant services and nightclub services featuring
    musical entertainment.
    B. United States Trademark Registration No.
    1,318,227, issued on February 5, 1985 for the mark LONE
    STAR CAFE, which registration is now incontestable
    under 15 U.S.C. § 1065. This registration covers adult
    clothing for everyday wear—namely, men's and women's
    jackets, sweatshirts, T-shirts, hats, ball caps, vests,
    boots, shoes, socks, shirts, jeans, and trousers, and
    tie tacks, and belt buckles.
    C. United States Trademark Registration No.
    1,731,247, issued on November 10, 1992 for the mark
    LONE STAR STEAKHOUSE & SALOON. This registration
    covers clothing: namely, men's and women's sport
    shirts, sweatshirts, polo shirts, and caps.
    Defendant operates two "Lone Star Steaks" restaurants in
    Atlanta, Georgia.6     The first Lone Star Steaks was opened in 1984,
    and in that same year, the LONE STAR STEAKS mark was registered as
    a trade name in several of Georgia's metropolitan counties.       In
    March of 1992, the mark was registered as a service mark with the
    Georgia Secretary of State.
    In August 1992, Plaintiff's general counsel sent a letter to
    Defendant stating that Plaintiff was planning to expand into
    Georgia;      Plaintiff demanded that Defendant stop its use of the
    mark LONE STAR STEAKS.       Defendant's counsel responded with the
    assertion that Defendant had prior and superior rights in its mark.
    In August 1993, Plaintiff opened a Lone Star Steakhouse & Saloon
    restaurant in Augusta, Georgia.     By letter dated October 22, 1993,
    Defendant demanded that Plaintiff cease and desist its use of the
    LONE STAR STEAKHOUSE & SALOON mark.       After Plaintiff refused to
    comply, Defendant filed suit.      Plaintiff filed suit on the same
    day.       Both complaints alleged violations of the Lanham Act, 15
    U.S.C. §§ 1051-1127 (1994), as well as other pendent state law
    claims.       More specifically, both sides alleged violations of
    Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which creates
    a federal cause of action for unfair competition by prohibiting the
    D. United States Service Mark Application No. 74-
    248,299, for the mark LONE STAR STEAKHOUSE & SALOON,
    which application is presently pending in the United
    States Patent and Trademark Office. This application
    covers restaurant services.
    R1-1-3.
    6
    As a result of Longhorn Steaks' acquisition of Lone Star
    Steaks, a Lone Star Steaks' restaurant has been converted to a
    Longhorn Steaks' restaurant.
    use in interstate commerce of any "false designation of origin, or
    any false description or representation, including words or other
    symbols tending falsely to describe or represent the same...."              15
    U.S.C. § 1125(a).    In order to prevail on this claim, each party
    had the burden of showing (1) that it had trademark rights in the
    mark or name at issue and (2) that the other party had adopted a
    mark or name that was the same, or confusingly similar to its mark,
    such that consumers were likely to confuse the two.           Conagra, Inc.
    v. Singleton, 
    743 F.2d 1508
    , 1512 (11th Cir.1984);                see also
    Investacorp, Inc. v. Arabian Inv. Banking Corp., 
    931 F.2d 1519
    ,
    1521-22 (11th Cir.), cert. denied, 
    502 U.S. 1005
    , 
    112 S. Ct. 639
    ,
    
    116 L. Ed. 2d 657
    (1991).
    Plaintiff and Defendant agreed that the use of Plaintiff's
    LONE STAR STEAKHOUSE & SALOON mark together with the use of
    Defendant's LONE STAR STEAKS mark created and would continue to
    create consumer confusion.      The district court was thus faced with
    the sole task of determining which party had prior and superior
    rights to its mark.        Not surprisingly, each party believed its
    rights   were   superior   to   the   other's,   and   each   moved   for   a
    preliminary injunction to enjoin the other's use.
    Defendant's first used the LONE STAR STEAKS mark in January of
    1984, while Plaintiff's first used the LONE STAR STEAKHOUSE &
    SALOON mark in October of 1989.        Based on these dates, Defendant
    argued that its mark had prior and superior rights over Plaintiff's
    mark.    Plaintiff, in turn, argued that its LONE STAR STEAKHOUSE &
    SALOON mark had priority because of the 1981 federal registration
    of the LONE STAR CAFE mark.     In support of this argument, Plaintiff
    pointed to the fact that it used both marks in the sale and
    advertising of its restaurant services.   Plaintiff also pointed to
    the fact that the words "Lone Star" were the dominant, identifying
    features of both parties' marks.   Accordingly, Plaintiff contended
    that in determining infringement and priority, the court should
    consider which party first developed rights in the words "Lone
    Star," without regard to the accompanying generic words.       The
    district court rejected Plaintiff's arguments, denied Plaintiff's
    motion for a preliminary injunction,7 and by granting Defendant's
    motion for a preliminary injunction, prohibited Plaintiff from
    using the LONE STAR STEAKHOUSE & SALOON mark in the state of
    Georgia.8
    7
    Plaintiff filed an appeal challenging the district court's
    denial of its motion for a preliminary injunction. That appeal
    has been carried with the other appeals pertaining to this case
    and is presently before this Court.
    8
    More specifically, the order granting Defendant's
    preliminary injunction stated:
    Plaintiff is hereby enjoined, together with its
    agents, subsidiaries, affiliates, franchisees and
    assigns (including Lone Star Steakhouse & Saloon of
    Georgia, Inc.), from (a) using the LONE STAR STEAKHOUSE
    & SALOON [mark], the trade name Lone Star Steakhouse &
    Saloon, or any other colorable or similar imitation of
    either the LONE STAR STEAKS mark or the LONE STAR
    STEAKHOUSE & SALOON [mark], in connection with the
    operation of any restaurant in Georgia or in connection
    with the sale, offering for sale, promotion, marketing,
    or advertising of their restaurants, goods or services
    in Georgia and (b) otherwise infringing upon Lone Star
    Steaks' service marks and registrations therefore in
    the State of Georgia. Plaintiff is further ORDERED to
    take prompt, affirmative action to change the name of
    their restaurant in Augusta, Georgia and to withdraw
    from the public any advertisements or promotional
    materials which contain or use the LONE STAR STEAKHOUSE
    & SALOON mark in relation to its restaurant in Augusta,
    Georgia.
    Plaintiff subsequently filed a motion seeking clarification
    and modification of the preliminary injunction order.    Plaintiff
    sought an order from the court that would allow it to use the
    federally registered LONE STAR CAFE mark in Georgia.     The court
    granted the motion partly because it was not convinced the LONE
    STAR STEAKS mark and the LONE STAR CAFE mark were similar enough to
    cause confusion.9
    Defendant thereafter moved for summary judgment, and requested
    the court (1) to enter a permanent injunction against Plaintiff,
    (2) to cancel Plaintiff's LONE STAR STEAKHOUSE & SALOON clothing
    registration, and (3) to enter final judgment on Defendant's claims
    for monetary damages, attorneys' fees, and costs.     The district
    court granted in part Defendant's motion for summary judgment and
    made the following rulings:   (i) granted Defendant's motion for a
    permanent injunction;   (ii) denied Defendant's motion to cancel
    Plaintiff's nationwide registration of its mark for clothing;
    (iii) granted final judgment on Defendant's claims under (a) the
    Georgia Uniform Deceptive Practices Act, O.C.G.A. §§ 10-1-371 to -
    375, (b) the Georgia Fair Business Practices Act of 1975, O.C.G.A.
    §§ 10-1-390 to -407, (c) as well as on its claim for infringement
    of a registered mark under O.C.G.A. § 10-1-450, (iv) denied without
    prejudice Defendant's request for the profits Plaintiff made from
    its Augusta restaurant during the period of infringement;        (v)
    granted Defendant's motion for summary judgment under O.C.G.A. 10-
    R3-43-27-28.
    9
    Defendant appealed the clarification order in appeal no.
    94-8734. On January 17, 1996, this Court granted the parties'
    joint motion to dismiss that appeal as moot.
    1-450 for liquidated damages in the amount of $10,000.00;       (vi)
    denied Defendant's request for attorney fees under the Lanham Act;
    (vii) granted Defendant's attorneys' fees pursuant to Georgia's
    Fair Business Practices Act, O.C.G.A. § 10-1-399(d);    and finally,
    (viii) granted Defendant's request for costs under both the Lanham
    Act and Georgia statutes.
    At the conclusion of the order granting in part Defendant's
    motion for summary judgment, the district court directed the
    parties to file briefs concerning whether Defendant was entitled to
    profits from the operation of Plaintiff's Augusta restaurant during
    the time of infringement, the amount of attorneys' fees and costs
    Defendant could collect, and a proposed order containing language
    for the permanent injunction.    The district court conducted an
    evidentiary hearing on these and other issues.         Following the
    evidentiary hearing, the district court entered an order that (i)
    permanently enjoined Plaintiff from using either the LONE STAR
    STEAKHOUSE & SALOON mark or LONE STAR STEAKS mark in connection
    with the operation of any restaurant(s) in Georgia, (ii) canceled
    Plaintiff's clothing registration within the state of Georgia and
    directed the United States Patent and Trademark office to issue
    Defendant a clothing registration within Georgia for its LONE STAR
    STEAKS mark, (iii) awarded Defendant $50,000.00 of the profits from
    Plaintiff's Augusta restaurant pursuant to 15 U.S.C. § 1117(a),
    (iv) awarded Defendant attorneys' fees in the amount of $99,868.50,
    and (v) awarded Defendant costs in the amount of $13,754.17.
    Thereafter, Plaintiff again sought a clarification of the permanent
    injunction's language;   again the court ruled that the permanent
    injunction did not enjoin Plaintiff's use of the LONE STAR CAFE
    mark within the state of Georgia. In this clarification order, the
    court also awarded Defendant additional attorneys' fees and costs
    in the respective amounts of $12,073.99 and $743.70.
    On appeal, the parties contest the various orders entered by
    the district court.      Plaintiff argues that the district court
    erred:   (1) in denying its motion for preliminary injunction, (2)
    in granting in part Defendant's motion for summary judgment with
    regard to its request for a permanent injunction, and (3) in
    awarding   Defendant's   profits,   attorneys'   fees   and   liquidated
    damages.
    In its appeal, Defendant argues:    (4) that Plaintiff's appeal
    of the district court's denial of its motion for preliminary
    injunction is moot or in the alternative that the motion was
    properly denied;    (5) that the district court erred in its order
    clarifying the scope of the permanent injunction to allow Lone Star
    Steakhouse & Saloon to use the LONE STAR CAFE mark to identify its
    restaurant in Georgia;      and (6) the district court erred in
    refusing to completely cancel Plaintiff's clothing registration
    mark, "or at least in failing to hold further proceedings on the
    issue of whether Lone Star Steakhouse & Saloon [was] entitled to
    concurrent registration of this mark."
    Because we believe our ruling on Plaintiff's appeal of the
    permanent injunction (issue # 2), will effectively resolve both
    Plaintiff's appeal of the preliminary injunction order (issue # 1)
    and   Defendant's   suggestion   that    Plaintiff's    appeal   of   the
    preliminary injunction is moot (issue # 4), we will first address
    Plaintiff's appeal of the permanent injunction.10
    As stated earlier, to prevail under 15 U.S.C. § 1125(a), a
    party must show (1) that it had prior rights to its mark or name
    and (2) that the other party had adopted a mark or name that was
    the same, or confusingly similar to its mark, such that consumers
    were likely to confuse the two.        See Conagra Inc. v. Singleton, 
    743 F.2d 1508
    , 1512 (11th Cir.1984).                It is undisputed that the
    parties' respective marks created confusion among the restaurants'
    consumers.     Thus, the dispute centered around which party had the
    prior and superior rights to its mark.             In granting Defendant's
    motion for preliminary injunction, the district court concluded
    that Defendant's mark was the superior mark. Thereafter, Defendant
    filed a motion for summary judgment seeking in part a permanent
    injunction on its claims of trademark infringement.             The district
    court again found that Defendant's mark was the superior mark and
    granted Defendant's request for a permanent injunction.
    On appeal, Plaintiff argues that the district court erred in
    concluding that Defendant's mark is superior and consequently in
    granting Defendant's request for a permanent injunction.             Instead,
    Plaintiff believes its acquired LONE STAR CAFE mark is the superior
    mark    and   that   it   is    entitled   to   prevail   on   the   trademark
    infringement claims.           In support of this contention, Plaintiff
    advances the following arguments: First, Plaintiff argues that its
    10
    Our discussion of the district court's order granting
    Defendant a permanent injunction applies equally to Plaintiff's
    appeal of the preliminary injunction. For the same reasons we
    believe the district court was correct in granting a permanent
    injunction, we believe the district court was correct in denying
    Plaintiff's motion for a preliminary injunction.
    prior federally registered LONE STAR CAFE mark is superior to
    Defendant's state registered LONE STAR STEAKS mark.            Second,
    Plaintiff asserts that the words "Lone Star" were the dominant,
    identifying   features   of   both    parties'   marks.   Accordingly,
    Plaintiff contends that in determining infringement and priority,
    the court should consider which party first developed rights in the
    words "Lone Star," without regard to the accompanying generic
    words.   Since Plaintiff's purchased rights in the LONE STAR CAFE
    mark date back to 1981, it argues that it was first in developing
    rights in the words "Lone Star." Next, Plaintiff attempts to argue
    that it was adequately using the LONE STAR CAFE mark to identify
    its restaurant services. Finally, Plaintiff contends that since it
    complied with the district court's preliminary injunction order by
    using the LONE STAR CAFE mark to identify its restaurant, the
    district court erred in granting Defendant a permanent injunction.
    All of Plaintiff's arguments listed above were considered and
    rejected by the district court.      Moreover, Plaintiff concedes that
    there are no genuine issues of material fact.        Plaintiff further
    agrees that the questions presented on appeal are purely legal.
    Thus, to the extent that Plaintiff argues the district court erred
    in granting Defendant's motion for a permanent injunction, the
    error must be that the district court failed to apply the correct
    law or misapplied the law.           Accordingly, we will review the
    district court's legal conclusions de novo.        Great Lakes Dredge &
    Dock v. Tanker Robert Watt Miller, 
    92 F.3d 1102
    , 1106 (11th
    Cir.1996).    In sum, our review of the relevant law and the cases
    cited by the parties lead us to conclude that the district court
    properly applied the law and was correct in granting Defendant's
    motion for summary judgment as it pertains to Defendant's request
    for a permanent injunction.
    For     instance,   Plaintiff   cites   John   R.   Thompson   Co.    v.
    Holloway, 
    366 F.2d 108
    (5th Cir.1966) and Dawn Donut Co. v. Hart's
    Food Stores, Inc., 
    267 F.2d 358
    (2d Cir.1959) for the proposition
    that the senior owner of a federal registration has nationwide
    priority over all junior users.       In support of this proposition,
    Plaintiff attempts to argue that Defendant's first use of its mark
    in 1984 is inferior to Plaintiff's 1992 acquisition of the LONE
    STAR CAFE mark which was federally registered in 1981.                    The
    district court concluded otherwise.
    The parties agree that factually the LONE STAR CAFE mark was
    used on a sign displayed on an interior wall of Plaintiff's Augusta
    Restaurant.     The district court found as a matter of law that this
    did not constitute a valid service mark use because it was not
    being used to identify or distinguish the services being offered.
    We agree.11
    11
    15 U.S.C. § 1127 states:
    The term "service mark" means any word, name, symbol,
    or device, or any combination thereof—
    (1) used by a person, or
    (2) which a person has a bona fide intention to use in
    commerce and applies to register on the principal register
    established by this chapter, to identify and distinguish the
    services of one person, including a unique service, from the
    services of others and to indicate the source of the
    services, even if that source is unknown. Titles, character
    names, and other distinctive features of radio or television
    programs may be registered as service marks notwithstanding
    that they, or the programs, may advertise the goods of the
    sponsor.
    The Plaintiff then argues that it has prior rights in the
    words "Lone Star" through its acquisition of the LONE STAR CAFE
    mark.    Plaintiff relies upon its prevailing in
    Lone Star Steakhouse
    & Saloon, Inc. v. Alpha of Virginia, Inc., 
    43 F.3d 922
    (4th
    Cir.1995).     In Alpha of Virginia, plaintiff Lone Star Steakhouse &
    Saloon, Inc., filed suit against defendant Alpha of Virginia, Inc.,
    alleging defendant violated the Lanham Act and other state laws by
    operating a restaurant under the name "Lone Star Grill."                    The
    defendant there began operating the "Lone Star Grill" in 1991,
    after plaintiff's 1981 federal registration of the LONE STAR CAFE
    mark.     The district court agreed with plaintiff that defendant
    violated    the   Lanham    Act   and   entered    a   permanent    injunction
    enjoining defendant from using any mark containing the words "Lone
    Star." Defendant appealed. On appeal, the Fourth Circuit rejected
    defendant's argument that the federal registration of LONE STAR
    CAFE did not extend to the words "Lone Star," stating:
    The original federal registration of "Lone Star Cafe"
    effectively gave Max Shayne the exclusive right to use the
    term "Lone Star" because the registration explicitly
    disclaimed the word "Cafe" apart from the complete mark "Lone
    Star Cafe," see Registration number 1,155,907; and this right
    to use the mark "Lone Star" was subsequently assigned to Lone
    Star Steakhouse.   Furthermore, the mark "Lone Star," apart
    from "Cafe," is important to this case because this Court has
    held that courts should concentrate on the words not
    disclaimed in assessing the likelihood of confusion necessary
    for trademark infringement. See Pizzeria Uno Corp. v. Temple,
    
    747 F.2d 1522
    , 1529-30 (4th Cir.1984).
    Alpha of 
    Virginia, 43 F.3d at 926
    n. 1.           In the case before us, the
    district court reached a contrary conclusion on somewhat similar
    facts.     The district court found that Plaintiff's "1981 federal
    registration applies to the LONE STAR CAFE mark as a composite
    whole    and   does   not   establish    priority      to   the   general   ...
    descriptive term "Lone Star' by itself."     R3-43-24.     The district
    court added that:
    Plaintiff has no federal registration for the words "Lone
    Star" by themselves. In determining whether a composite mark
    such as LONE STAR CAFE is entitled to protection, courts do
    not assess the individual parts of the name. McCarthy at §
    14.06; California Cooler, Inc. v. Loretto Winery, Ltd., 
    774 F.2d 1451
    , 1455 (9th Cir.1985). Instead, the validity of a
    composite mark is determined by looking at the mark as a
    whole. McCarthy at § 14.06; California 
    Cooler, 774 F.2d at 1455
    .
    R3-43-23-24.     In   addition,   the   district   court   specifically
    considered and rejected Plaintiff's argument that it has exclusive
    right to the words "Lone Star" because it disclaimed the word
    "Cafe" from its LONE STAR CAFE registration covering restaurant
    services.   The district court, quoting from a leading commentator
    on trademark and unfair competition law stated:
    The disclaimer does not have the effect of removing from the
    registered mark the matter disclaimed. It disclaims only a
    claim that the federal registration gives an exclusive right
    in those disclaimed words or symbols per se. That is, the
    applicant is merely stating that he is claiming only the whole
    composite mark as his property, and makes no claim to those
    particular portions disclaimed.
    R3-43-24 (quoting McCarthy on Trademarks and Unfair Competition,
    (3d ed. 1992) at § 19.20[1] (emphasis added)).      With great respect
    for the Fourth Circuit, we believe the district court correctly
    applied the controlling principles of law.
    The district court properly concluded that the validity of
    Plaintiff's LONE STAR CAFE mark is to be determined by viewing the
    trademark as a whole and not just the words "Lone Star."      Estate of
    P.D. Beckwith, Inc. v. Commissioner of Patents, 
    252 U.S. 538
    , 545-
    46, 
    40 S. Ct. 414
    , 416-17, 
    64 L. Ed. 705
    (1920) ("The commercial
    impression of a trade-mark is derived from it as a whole, not from
    its elements separated and considered in detail.");                 see also
    California Cooler v. Loretto Winery, Ltd., 
    774 F.2d 1451
    , 1455 (9th
    Cir.1985) ("[T]he validity of a trademark is to be determined by
    viewing the trademark as a whole.")       (citing Union Carbide Corp. v.
    Ever-Ready Inc., 
    531 F.2d 366
    , 379 (7th Cir.), cert. denied, 
    429 U.S. 830
    , 
    97 S. Ct. 91
    , 
    50 L. Ed. 2d 94
    (1976)).              In addition, the
    district court appropriately found that Plaintiff's disclaimer of
    the word "Cafe" from its registration of the LONE STAR CAFE mark
    does not establish priority to the words "Lone Star."           See Country
    Floors, Inc. v. Partnership Composed of Gepner and Ford, 
    930 F.2d 1056
    , 1065 (3d Cir.1991) ("The descriptive portions of a mark can
    be disclaimed, although the entire composite mark, including the
    descriptive terms, is considered for purposes of infringement.");
    Giant Food, Inc. v. Nation's Foodservice, Inc., 
    710 F.2d 1565
    , 1570
    (Fed.Cir.1983) ("[I]t is well settled that the disclaimed material
    still forms a part of the mark and cannot be ignored in determining
    likelihood of confusion.");        Schwarzkopf v. John H. Breck, Inc.,
    
    340 F.2d 978
    , 980 (C.C.P.A.1965) (court agreeing with statement "It
    is of course well established that disclaimed material forming part
    of a trademark cannot be ignored in determining whether the marks
    are   confusingly    similar.").     Accordingly,     we   agree    with   the
    district court's that Plaintiff is not entitled to priority over
    the descriptive words "Lone Star."
    As   to   Plaintiff's   remaining   arguments   that    its   mark    is
    superior, for the reasons discussed in the district court's orders,
    we summarily agree with the district court's application of the law
    and affirm the district court's ruling granting Defendant's motion
    for summary judgment as it pertains to the permanent injunction.
    Plaintiff also appeals from the portions of the district
    court's orders that awarded Defendant:            (1) profits pursuant to 15
    U.S.C. § 1117(a), (2) attorneys' fees under the Georgia Fair
    Business Practices Act, O.C.G.A. §§ 10-1-390 to -407, and (3)
    liquidated damages under O.C.G.A. § 10-1-450.
    I. Profits
    Under the Lanham Act, a successful party "subject to the
    principles of equity" may recover:            "defendant's [the infringer's]
    profits;     (2) any damages sustained by the plaintiff, and (3) the
    costs   of     the    action."   15 U.S.C. § 1117(a);                See   Babbit
    Electronics, Inc. v. Dynascan Corp.,              
    38 F.3d 1161
    , 1182 (11th
    Cir.1994). After hearing uncontradicted evidence on the issue, the
    district court determined that the principles of equity weighed in
    Defendant's favor and awarded Defendant $50,000.00 of the profits
    from Plaintiff's Augusta, Georgia restaurant. The district court's
    findings of profits are questions of fact subject to the clearly
    erroneous standard of review.          St. Charles Mfg. Co. v. Mercer, 
    737 F.2d 891
    , 893 (11th Cir.1983) (citing Boston Professional Hockey
    Ass'n Inc. v. Dallas Cap & Emblem Mfg., Inc., 
    597 F.2d 71
    , 76 (5th
    Cir.1979)).      We do not believe the district court was clearly
    erroneous in awarding Defendant these profits.                 Accordingly, we
    affirm the award.
    II. Attorneys' Fees
    Defendant sought recovery of its attorneys' fees under both
    the   Lanham    Act    and   Georgia   law.     The   Lanham   Act    authorizes
    reasonable attorneys' fees "in exceptional cases."                   15 U.S.C. §
    1117(a). "[E]xceptional cases are those where the infringing party
    acts in a "malicious,' "fraudulent,' "deliberate,' or "willful'
    manner."     Burger King Corp. v. Pilgrim's Pride Corp., 
    15 F.3d 166
    ,
    168 (11th Cir.1994).         The district court, unsure if the present
    case constituted an "exceptional case," circumvented the question
    of attorneys' fees under the Lanham Act.               However, the district
    court granted Defendant's attorneys' fees under the Georgia Fair
    Business Practices Act ("FBPA").              O.C.G.A. § 10-1-399(d).      In
    awarding     these   fees,   the   district    court   rejected   Plaintiff's
    arguments that only consumers may bring actions under the FBPA and
    that the Lanham Act preempts the FBPA's attorney's fees statute.
    On appeal, Plaintiff again argues that the FBPA only provides
    relief for consumers and not competitors.          Thus, the argument goes
    that Defendant a non-consumer is not entitled to FBPA coverage and
    an   award   of   attorneys'   fees.     In    support   of   this   argument,
    Plaintiff cites a case not available to the district court at the
    time of its decision.        In Friedlander v. PDK Labs, Inc., 
    266 Ga. 180
    , 
    465 S.E.2d 670
    (1996), the Georgia Supreme Court in response
    to a question certified by this Court in Friedlander v. PDK Labs,
    Inc., 
    59 F.3d 1131
    (11th Cir.1995), recently held that:
    A person who suffers injury or damages, or whose business or
    property has been injured or damaged, as a result of consumer
    acts   or  practices   may   bring   an  action   under   FBPA
    "individually, but not in a representative capacity...." OCGA
    § 10-1-399(a). A suit predicated upon an alleged violation of
    the FBPA must be brought in the plaintiff's "capacity as an
    individual member of the consuming public...."       Zeeman v.
    Black, 156 Ga.App. 82, 84, 
    273 S.E.2d 910
    (1980). See also
    Gross v. Ideal Pool Corp., 181 Ga.App. 483, 484(1), 
    352 S.E.2d 806
    (1987).    A suit is not brought in the capacity of an
    individual member of the consuming public when the plaintiff's
    only allegation of an injurious consumer act or practice
    relates to representations made by his competitor in the
    marketing of competing products to the general consuming
    public. Of course, if a business, as a consumer, sustains
    damage, it may bring suit under OCGA § 10-1-399(a). OCGA §§
    10-1-391(a); 10-1-392(a)(7). However, we are not empowered
    to expand the coverage of the FBPA to provide a cause of
    action to non-consumers against their competitors. See State
    of Ga. v. Meredith Chevrolet 
    Inc., supra
    [145 Ga.App. 8,] 13-
    14(2), 
    244 S.E.2d 15
    [ (1978) ].
    
    Friedlander, 465 S.E.2d at 671
    . Defendant relying on the following
    language "if a business, as a consumer, sustains damage, it may
    bring suit under [the FBPA]," argues it is entitled to bring suit
    under the FBPA and recover attorneys' fees.               Yet, Defendant fails
    to   explain   how   it   is   a     consumer   who     has   sustained   damage.
    Moreover, it seems Defendant is a non-consumer attempting "to
    expand the coverage of the FBPA to provide a cause of action ...
    against their competitors [Plaintiff]," which the Georgia Supreme
    Court refused to do.           
    Id. Accordingly, based
    on this recent
    development in FBPA law, we vacate the award of attorneys' fees
    under the FBPA.      However, we remand the case to allow the district
    court to determine if the case is an exceptional one entitling
    Defendant to an award of attorneys' fees under the Lanham Act.
    III. Liquidated Damages
    Finally, Plaintiff appeals from the district court's award of
    liquidated damages under O.C.G.A. § 10-1-450.                   As the district
    court stated, "Under § 10-1-450, a prevailing party is entitled to
    $10,000.00 in liquidated damages for an act of infringement "if
    such act has been committed with knowledge that the trademark or
    service mark has been registered under this part and such act has
    been committed without previously obtaining the consent of the
    owner thereof.' "         There is no dispute that Plaintiff knew of
    Defendant's    Georgia      registration        prior    to    the   opening   of
    Plaintiff's Georgia's restaurant.                 Thus, liquidated damages are
    proper under Georgia law.
    We now turn our attention to Defendant's two appeals:                     First,
    Defendant appeals from the clarification order allowing Plaintiff
    to use the LONE STAR CAFE mark to identify its restaurant.                    Second,
    Defendant     appeals    from       the   district   court's       order    that   only
    partially canceled Plaintiff's clothing registration within the
    state of Georgia.
    For the same reasons discussed in the district court's
    clarification of the preliminary injunction, the district court in
    its   modification      of    the    permanent     injunction       order   permitted
    Plaintiff to use the LONE STAR CAFE mark in Georgia.                        Defendant
    argues that since Plaintiff has been found guilty of trademark
    infringement,        well-established           trademark     law     requires     the
    injunction to be broad enough to keep Plaintiff "a safe distance
    away from the dividing line between violation of, and compliance
    with, the injunction."          Howard Johnson Co. v. Khimani, 
    892 F.2d 1512
    , 1517 (11th Cir.1990) (quoting Eskay Drugs v. Smith, Kline &
    French Laboratories, 
    188 F.2d 430
    , 432 (5th Cir.1951)).                            The
    district     court   considered        and     dismissed    this    argument.      The
    district court found that Defendant is unlikely to prevail on the
    merits that its LONE STAR STEAKS mark has priority over Plaintiff's
    LONE STAR CAFE mark.
    We   review     for   abuse       of   discretion    a     district   court's
    modification of a permanent injunction.               See Beefy King Int'l Inc.
    v. Veigle, 
    464 F.2d 1102
    , 1104 (5th Cir.1972).                   The district court
    provided several reasons why it thought Plaintiff was entitled to
    use the LONE STAR CAFE mark and why it modified the scope of the
    permanent injunction.     Any of the reasons provided by the district
    court could justify the modification of the permanent injunction.
    We find no abuse of discretion.
    As to Defendant's second issue on appeal, Defendant contends
    that the district court erred as a matter of law in failing to
    completely cancel the clothing registration for Plaintiff's LONE
    STAR STEAKHOUSE & SALOON mark.            In the alternative, Defendant
    argues that in canceling Plaintiff's registration in Georgia, the
    district   court   has   effectively      given    Plaintiff   a   concurrent
    registration without determining whether Plaintiff is entitled to
    a concurrent registration.          Because Defendant argues that the
    district court misapplied the law in only partially canceling
    Plaintiff's mark or erred in not holding a hearing to determine if
    Plaintiff is entitled to concurrent registration, we will review
    the district court's application of the law de novo.                 E. Remy
    Martin & Co. v. Shaw Ross Intern. Imports, 
    756 F.2d 1525
    , 1529
    (11th Cir.1985).
    The district court entered an order directing the United
    States Patent and Trademark Office to issue Defendant a clothing
    registration mark for its LONE STAR STEAKS mark within Georgia, and
    to cancel Plaintiff's LONE STAR STEAKHOUSE & SALOON clothing mark
    within the state of Georgia. Interpreted differently, the district
    court's order could be construed as a concurrent registration
    allowing Defendant to use its mark in Georgia while simultaneously
    allowing   Plaintiff     to   use   its   mark    everywhere   but   Georgia.
    Although Defendant sought nationwide cancellation of Plaintiff's
    clothing registration, the district court found "that cancellation
    of this scope was not warranted, since during a previous hearing
    Lone Star Steaks' counsel had conceded that the potential area of
    trademark confusion was confined to Georgia."           R5-81-3.
    Initially,       we     find   that   in   territorially    restricting
    Plaintiff's and Defendant's marks, the district court must have
    issued     a    concurrent    registration.      See   Snuffer   &   Watkins
    Management, Inc. v. Snuffy's, Inc., 17 U.S.P.Q.2d 1815, 1816 (TTAB
    1990) ("geographic limitations will be considered and determined
    only in the context of a concurrent use proceeding."); Hollowform,
    Inc. v. Aeh,      
    515 F.2d 1174
    , 1176 (C.C.P.A.1975) (court agreeing
    with statement "no authority is found for issuing a restricted
    registration to an applicant which has established its superior
    [prior] rights in a mark.").           Because we find that the district
    court issued a concurrent registration, our analysis will center on
    concurrent use and not cancellation.
    In a concurrent registration proceeding we turn to Section
    2(d) of the Lanham Act, 15 U.S.C. § 1052(d).12         The statute permits
    12
    The statute states in pertinent part:
    No trademark by which the goods of the applicant may be
    distinguished from the goods of others shall be refused
    registration on the principal register on account of
    the nature unless it—
    (d) Consists of or comprises a mark which so resembles
    a mark registered in the Patent and Trademark Office,
    or a mark or trade name previously used in the United
    States by another and not abandoned, as to be likely,
    when used on or in connection with the goods of the
    applicant, to cause confusion, or to cause mistake, or
    to deceive: Provided, That if the Commissioner
    determines that confusion, mistake, or deception is not
    likely to result from the continued use by more than
    one person of the same or similar marks under
    registration of a mark for concurrent use to an applicant (1) who
    has become entitled to use the mark as a result of his concurrent
    lawful use of the mark in commerce and (2) where there is no
    likelihood of confusion for the same or similar marks of two or
    more parties as a result of the territorial distinctions of the
    place of use of the goods or services.                  BellSouth Corp. v.
    DataNational Corp., 
    60 F.3d 1565
    , 1569 (Fed.Cir.1995).
    Here,    the   district     court   granted   concurrent    use    of    the
    parties' marks based upon the territorial boundaries of actual use
    and   the     conclusion   that    such   would     eliminate    the    risk   of
    confusion.13    We agree with the district court's application of the
    law and affirm its order granting concurrent use to the parties
    with the restrictions imposed.
    conditions and limitations as to the mode or place of
    use of the marks or the goods on or in connection with
    which such marks are used, concurrent registrations may
    be issued to such persons when they have become
    entitled to use such marks as a result of their
    concurrent lawful use in commerce prior.... In issuing
    concurrent registrations, the Commissioner shall
    prescribe conditions and limitations as to the mode or
    place of use of the mark or the goods on or in
    connection with which such mark is registered to the
    respective persons.
    15 U.S.C. § 1052(d).
    13
    We note that there is a circuit split regarding who has
    the authority to define the territories for concurrent
    registration, the courts or the Patent and Trademark Office.
    Compare Safeway Stores, Inc. v. Safeway Quality Foods, Inc., 
    433 F.2d 99
    , 103 (7th Cir.1970) ("Commissioner should be the one to
    determine the place or places of use of the mark by defendants.")
    with Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co.,
    
    477 F.2d 150
    , 156 (6th Cir.1973) (court may place restrictions).
    This circuit has not addressed the issue. However, because the
    parties did not raise the issue before the district court or on
    appeal, we need not resolve this question. Narey v. Dean, 
    32 F.3d 1521
    , 1526-27 (11th Cir.1994).
    In   conclusion,   all    of   the   district   court's   rulings    are
    affirmed, except the portion which granted Defendant attorneys'
    fees under Georgia law.      We vacate this ruling and remand the issue
    to the district court for consideration de novo.
    AFFIRMED   IN   PART;      REVERSED     IN   PART;    REMANDED      WITH
    INSTRUCTIONS.
    

Document Info

Docket Number: 94-8700, 95-8656 and 95-8767

Citation Numbers: 106 F.3d 355

Judges: Cox, Black, Fay

Filed Date: 2/24/1997

Precedential Status: Precedential

Modified Date: 10/19/2024

Authorities (30)

investacorp-inc-v-arabian-investment-banking-corporation-investcorp , 931 F.2d 1519 ( 1991 )

Conagra, Inc., a Corporation v. Robert C. Singleton, an ... , 743 F.2d 1508 ( 1984 )

Estate of P. D. Beckwith, Inc. v. Commissioner of Patents , 40 S. Ct. 414 ( 1920 )

james-h-narey-v-darrell-dean-individually-and-in-his-official-capacity , 32 F.3d 1521 ( 1994 )

Eskay Drugs, Inc. v. Smith, Kline & French Laboratories , 188 F.2d 430 ( 1951 )

safeway-stores-incorporated-a-corporation , 433 F.2d 99 ( 1970 )

bellsouth-corporation-v-datanational-corporation-association-of-north , 60 F.3d 1565 ( 1995 )

Dawn Donut Company, Inc. v. Hart's Food Stores, Inc. And ... , 267 F.2d 358 ( 1959 )

John R. Thompson Co., Doing Business as and Through Its ... , 366 F.2d 108 ( 1966 )

Great Lakes Dredge & Dock Co. v. Tanker Robert Watt Miller , 92 F.3d 1102 ( 1996 )

Union Carbide Corporation v. Ever-Ready Incorporated, a ... , 531 F.2d 366 ( 1976 )

babbit-electronics-inc-sol-steinmetz-and-robert-steinmetz , 38 F.3d 1161 ( 1994 )

Lone Star Steakhouse & Saloon, Incorporated Max Shayne, ... , 43 F.3d 922 ( 1995 )

Zeeman v. Black , 156 Ga. App. 82 ( 1980 )

howard-johnson-company-inc-howard-johnson-franchise-systems-inc , 892 F.2d 1512 ( 1990 )

Country Floors, Inc. v. A Partnership Composed of Charley ... , 930 F.2d 1056 ( 1991 )

Burger King Corporation v. Pilgrim's Pride Corporation, ... , 15 F.3d 166 ( 1994 )

Beefy King International, Inc. And Iea Corporation v. ... , 464 F.2d 1102 ( 1972 )

Boston Professional Hockey Association, Inc., Cross-... , 597 F.2d 71 ( 1979 )

Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co. ... , 477 F.2d 150 ( 1973 )

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