Hunt Masters Inc v. Landry's Seafood ( 2001 )

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
HUNT MASTERS, INCORPORATED, d/b/a 
Charleston Crab House,
Plaintiff-Appellant,
v.
 No. 00-1235
LANDRY’S SEAFOOD RESTAURANT,
INCORPORATED, a Delaware
corporation,
Defendant-Appellee.

Appeal from the United States District Court
for the District of South Carolina, at Charleston.
Leonard D. Wexler, Senior District Judge, sitting by designation.
(CA-00-229)
Argued: November 1, 2000
Decided: February 15, 2001
Before WILKINSON, Chief Judge, WILLIAMS, Circuit Judge,
and Frank J. MAGILL, Senior Circuit Judge of the
United States Court of Appeals for the Eighth Circuit,
sitting by designation.
Affirmed by published opinion. Senior Judge Magill wrote the opin-
ion, in which Chief Judge Wilkinson and Judge Williams joined.
COUNSEL
ARGUED: Morris Dawes Cooke, Jr., BARNWELL, WHALEY,
PATTERSON & HELMS, L.L.C., Charleston, South Carolina, for
2 HUNT MASTERS v. LANDRY’S SEAFOOD RESTAURANT
Appellant. William Fitts Ryan, Jr., WHITEFORD, TAYLOR &
PRESTON, L.L.P., Baltimore, Maryland, for Appellee. ON BRIEF:
Wendy Raina Johnson Keefer, B. Craig Killough, BARNWELL,
WHALEY, PATTERSON & HELMS, L.L.C., Charleston, South Car-
olina, for Appellant. Steven E. Tiller, WHITEFORD, TAYLOR &
PRESTON, L.L.P., Baltimore, Maryland; W. Jefferson Leath, Jr.,
LEATH, BOUCH & CRAWFORD, L.L.P., Charleston, South Caro-
lina, for Appellee.
OPINION
MAGILL, Senior Circuit Judge:
Hunt Masters, Inc. ("Hunt"), the operator of the Charleston Crab
House restaurant, seeks to enjoin Landry’s Seafood Restaurant, Inc.
from operating a similar establishment in Charleston under the name
"The Crab House." Hunt asserts that Landry’s use of the term "crab
house" infringes its common law service marks. The district court
rejected Hunt’s claims and denied its motion for preliminary injunc-
tion. We affirm.
I.
Hunt opened the Charleston Crab House in 1991. In 1996, Lan-
dry’s acquired The Crab House restaurant chain, which had been in
operation under that name since 1976. Both Landry’s and Hunt own
federal design registrations for graphic logos that incorporate the term
"crab house," but each registration disclaims protection for the term
itself. At the time of the suit, Hunt owned three Charleston Crab
Houses in the greater Charleston area, while Landry’s operated four-
teen The Crab House restaurants in Florida, Georgia, South Carolina,
Tennessee, and Virginia. In addition to The Crab House chain, Lan-
dry’s operates several other restaurant chains, including Landry’s
Seafood House, Joe’s Crab Shack, and Willie G’s Seafood and Steak
House. In 1997, Landry’s opened a Landry’s Seafood House at Ripley
Point on the Ashley River in Charleston, South Carolina. This loca-
tion was within a few miles of Charleston Crab House’s Wappoo
Creek location on James Island. The Landry’s Seafood House was
HUNT MASTERS v. LANDRY’S SEAFOOD RESTAURANT 3
unsuccessful, and Landry’s decided to replace it with another The
Crab House restaurant. The transition took almost a year and required
significant redesign and renovation, costing Landry’s nearly
$600,000.
In preparation for its opening, Landry’s posted a sign outside its
restaurant reading "The Crab House," and began using its trademark,
incorporating the words "The Crab House," in advertising. Upon
learning of Landry’s intention to open a restaurant called The Crab
House at the Ripley Point location, Hunt commenced this suit, seek-
ing declaratory and injunctive relief, costs and attorney fees for ser-
vice mark infringement, unfair trade practices, and violation of the
Lanham Act (15 U.S.C. § 1125). The district court denied Hunt’s
motion for preliminary injunction. This appeal followed.
II.
Hunt acknowledges that though both parties own federal registra-
tions for logos containing the term "crab house," both registrations
disclaim protection for the term "crab house" alone. Accordingly,
Hunt alleges that Landry’s use of the term "crab house" infringes
upon Hunt’s common law service marks, presenting a likelihood of
consumer confusion and irreparable harm. Before considering
whether Landry’s use of "The Crab House" creates a likelihood of
confusion or irreparable harm, we first must address whether Hunt
had a protected proprietary interest in the term "crab house."
To determine whether a mark is protected, we must ascertain
whether it is (1) generic, (2) descriptive, (3) suggestive, or (4) arbi-
trary or fanciful. Ashley Furniture Indus., Inc. v. SanGiacomo N.A.
Ltd., 187 F.3d 363, 369 (4th Cir. 1999) (providing "Pet Store" as an
example of a generic mark). A generic mark refers to the genus or
class of which a particular product is a member, and thus can never
be protected. Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205
F.3d 137, 140 (4th Cir. 2000). A descriptive mark describes a charac-
teristic of a product and can be protected if it has acquired a second-
ary meaning. Ashley Furniture, 187 F.3d at 369. A suggestive mark
suggests a characteristic of a product, permitting a consumer to infer
something about the product from the mark. Id. Both arbitrary and
fanciful marks are totally unrelated to the product. Id. "The latter
4 HUNT MASTERS v. LANDRY’S SEAFOOD RESTAURANT
three categories of marks, because their intrinsic nature serves to
identify a particular source of a product, are deemed inherently dis-
tinctive and are entitled to protection." Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992). Whether a given mark is
generic and therefore ineligible for trademark protection is dependent
on the particular facts of the case. Ashley Furniture, 187 F.3d at 369.
Landry’s argues that "crab house" is a generic term referring to a
class of restaurants that serve crabs. We agree. This court recently
confronted a nearly identical factual scenario. See Ale House, 205
F.3d 137. In that case, a corporation operating numerous "Ale House"
restaurants brought suit seeking to enjoin another corporation from
opening a facility named the "Raleigh Ale House." Id. at 140. This
court concluded that the plaintiff had no protectable interest in the
term "ale house" because the term is generic. Id. at 141. In concluding
that "ale house" is generic, the court rejected the argument that "ale
house" might be generic in some applications, such as English pubs,
but non-generic when applied to facilities serving both food and beer.
Id.; see also Maine Ave. Seafood v. The Crab House, Inc., Civil
Action No. DKC 97-640 (D. Md. Mar. 30, 1998) (holding that "crab
house" is generic and use of "The Crab House" did not infringe upon
the rights of the nearby "Bethesda Crab House").
Application of the Ale House analysis here compels the conclusion
that "crab house" is generic as well. In determining whether a mark
is generic, courts should not parse terms to determine that they are
made up of generic components. Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1530 (4th Cir. 1984). However, the principle that a mark
must be considered as a whole to determine its validity does not pre-
clude courts from considering the meaning of individual words in
determining the meaning of the entire mark. Liquid Controls Corp. v.
Liquid Control Corp., 802 F.2d 934, 938 (7th Cir. 1986). Here, the
meaning of the individual words is fairly clear. A crab is "any of
numerous chiefly marine broadly built crustaceans," while "restau-
rant" is one of the many definitions of the word "house." Webster’s
New International Dictionary 1096 (3d ed. 1961). Other common
words that are often used as synonyms for "restaurant" include bar,
parlor, and shop. When preceded by a type of food, these words
describe various classes of restaurants, such as ale houses, tapas bars,
ice cream parlors, and coffee shops. Each term denotes a class of res-
HUNT MASTERS v. LANDRY’S SEAFOOD RESTAURANT 5
taurant serving a particular type of food, just as "crab house" denotes
a class of restaurant that serves crabs.1
In support of its argument that "crab house" is not generic, Hunt
offers a survey conducted of consumers in the Charleston area. Hunt
asserts that the district court erred in failing to consider its survey evi-
dence in assessing genericness. See Burger King Corp. v. Pilgrim’s
Pride Corp., 705 F. Supp. 1522, 1525 (S.D. Fla. 1988). However,
Hunt fails to recognize that there are two distinct ways in which terms
may be classified as generic: (1) where the term began life as a
"coined term"; and (2) where the term was commonly used prior to
its association with the products at issue. Id. The notion that whether
a word is generic depends upon consumers’ understanding of the
word is based upon a scenario involving a coined word for a commer-
cial product (such as "aspirin," "teflon," or "thermos") that is alleged
to have become generic through common usage. Miller Brewing Co.
v. Jos. Schlitz Brewing Co., 605 F.2d 990, 995 (7th Cir. 1979). Hunt
does not claim to have first coined the term "crab house." Therefore,
it is not necessary to determine whether the term has become generic
through common use, rendering Hunt’s customer survey irrelevant.
Hunt also suggests that while there may be a type of restaurant
referred to as a "crab house" in certain parts of the country, there is
no such genus of restaurants in the Charleston area.2 Hunt goes on to
assert that even if such a genus exists, neither Charleston Crab House
nor The Crab House falls into the "crab house" genus of restaurants.
The argument that other restaurants called crab houses have more lim-
1
An Internet search revealed a multitude of "crab houses" across
America, thereby demonstrating that Hunt’s use of the term is neither
original nor unique. See, e.g., Cap’n Zach’s Crab House, McKinleyville,
CA; Del Mar Crab House, Denver, CO; Old Mill Crab House, Delmar,
DE; Rustic Inn Crabhouse, Ft. Lauderdale, FL; Fulton’s Crab House,
Orlando, FL; Shaw’s Crab House, Chicago, IL; Dirty Dick’s Crab
House, Avon, NC; Rooney’s Ocean Crab House, Long Branch, NJ;
Eddie’s Crab House, Philadelphia, PA; Hastings Crab House, Richmond,
VA.
2
Hunt’s argument that the "crab house" genus of restaurants is
restricted to certain areas of the country is weakened by the number of
"crab houses" scattered around the country. See note 1, supra.
6 HUNT MASTERS v. LANDRY’S SEAFOOD RESTAURANT
ited menus or more casual atmospheres "does not refute the proposi-
tion that ‘[crab] house’ refers to a ‘genus or class’ of facilities that
serve [crabs]." Ale House, 205 F.3d at 141.
III.
We conclude that "crab house" is a generic term for a restaurant
serving crabs.3 Accordingly, Hunt has no protectable interest in the
term "crab house" and the district court properly denied its motion for
preliminary injunction preventing Landry’s from using "The Crab
House" at its Charleston location. The decision of the district court is
hereby
AFFIRMED.
3
In light of this conclusion, we need not address Hunt’s argument that
there is a likelihood of confusion between Landry’s mark and its own.