Great American Restaurant Co. v. Domino's Pizza LLC ( 2009 )


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  •            IN THE UNITED STATES COURT OF APPEALS
    FOR THE FIFTH CIRCUIT  United States Court of Appeals
    Fifth Circuit
    FILED
    September 30, 2009
    No. 08-40654                    Charles R. Fulbruge III
    Clerk
    THE GREAT AMERICAN RESTAURANT COMPANY
    Plaintiff - Appellant
    v.
    DOMINO’s PIZZA LLC; DOMINO’S INC; DOMINO’S PIZZA INC
    Defendants - Appellees
    Appeal from the United States District Court
    for the Eastern District of Texas
    USDC No. 4:07-CV-52
    Before JOLLY, DeMOSS, and PRADO, Circuit Judges.
    PER CURIAM:*
    The Great American Restaurant Company (“Great American”) owns and
    operates a chain of restaurants in the Dallas, Texas, area called “Brooklyn’s Old
    Neighborhood Style Pizzeria” (“Brooklyn’s”).               Brooklyn’s has a registered
    trademark in the name of the pizzeria and one in the phrase “A taste of the old
    neighborhood.” Appellees Domino’s Pizza LLC, et al. (“Domino’s”) introduced a
    style of pizza they called “Brooklyn Style Pizza” (“BSP”), and initially used the
    *
    Pursuant to 5TH CIR . R. 47.5, the court has determined that this opinion should not
    be published and is not precedent except under the limited circumstances set forth in 5TH CIR .
    R. 47.5.4.
    No. 08-40654
    phrase “A taste of the old neighborhood” to advertize the pizza. Great American
    filed claims against Domino’s under both the Lanham Act and the common law
    alleging trademark infringement of both of its trademarks.
    We review a district court’s grant of summary judgment de novo. Bd. of
    Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 
    550 F.3d 465
    , 474 (5th Cir. 2008). Summary judgment is appropriate only “if the
    pleadings, the discovery and disclosure materials on file, and any affidavits show
    that there is no genuine issue as to any material fact and that the movant is
    entitled to judgment as a matter of law.” F ED. R. C IV. P. 56(c). When evaluating
    a summary judgment motion, we resolve all reasonable inferences in favor of the
    nonmoving party and do not weigh the strength of the evidence. Reeves v.
    Sanderson Plumbing Prods., Inc., 
    530 U.S. 133
    , 150 (2000).
    Two central factual issues were contested at trial and on appeal. First, the
    parties dispute whether “BSP” is generic or descriptive. If it is simply generic,
    it cannot legally infringe on any mark. Small Bus. Assistance Corp. v. Clear
    Channel Broad., Inc., 
    210 F.3d 278
    , 279 (5th Cir. 2000) (“A trademark cannot be
    infringed by the generic term for the product it designates.”).       If “BSP” is
    descriptive, on the other hand, it has the potential to infringe absent a showing
    of the affirmative defense of fair use, which Domino’s did not raise. Second,
    Domino’s contended that there was no likelihood of confusion as to source
    between Domino’s “BSP” and Brooklyn’s pizzerias. Summary judgment was
    improper if there was a genuine issue of material fact with respect to whether
    Domino’s use of the phrase created a likelihood of confusion, if there was also a
    genuine issue of material fact with respect to whether the phrase “Brooklyn
    Style Pizza” is merely generic. Here, there were material factual issues on both
    of these questions.
    There was evidence from multiple sources indicating that there is no such
    thing as a “Brooklyn style pizza,” meaning that the phrase could not be generic
    2
    No. 08-40654
    or even descriptive. There was also a factual dispute as to what the term would
    describe (that is, whether it was another term for a New York style pizza or
    described a different type of pizza altogether), casting further doubt on the
    phrase’s characterization as generic or descriptive.
    Furthermore, Great American presented evidence indicating a likelihood
    of confusion caused by Domino’s use of “BSP.” This court assesses the likelihood
    of confusion using a list of several nonexclusive factors, or “digits,” including,
    among others, the similarity of the marks, the similarity of the products, and
    actual confusion. Scott Fetzer Co. v. House of Vacuums, Inc. 
    381 F.3d 477
    , 484-
    85 (5th Cir. 2004). In addition, although this court has never analyzed a case of
    reverse confusion in the infringement context (which arises when, as here, a
    larger and more well known company uses the mark of a smaller senior user),
    other courts have addressed the “commercial strength” of the junior user’s mark
    when assessing reverse confusion. A&H Sportswear, Inc., v. Victoria’s Secret
    Stores, Inc., 
    237 F.3d 198
    , 230 (3d Cir. 2000).
    Great American presented direct evidence relating to actual confusion in
    the form of testimony from Brooklyn’s managers who received calls from
    customers attempting to use Domino’s coupons. Evidence of the likelihood of
    confusion also arose from the fact that the Domino’s phrase was so similar to
    Brooklyn’s trademark. Domino’s use of the exact words of Brooklyn’s
    trademarked slogan “A taste of the old neighborhood” for ten months can lead
    to an additional inference of likely confusion, notwithstanding Domino’s eventual
    discontinuation of the slogan.    Although Domino’s presented evidence that
    Brooklyn’s pizzerias and Domino’s pizzas were different products, a factual issue
    as to their similarity remained based on the fact that both companies are in the
    pizza-delivery business. Finally, there was evidence indicating that “BSP” had
    acquired secondary meaning associating it with Domino’s due to Domino’s
    3
    No. 08-40654
    extensive advertising campaign; such evidence of the “commercial strength” of
    the defendants’ mark is probative in cases of reverse confusion.
    We do not comment on the strength of this evidence. We do find, however,
    that Great American has presented enough evidence to create a genuine issue
    of material fact, such that the case, on this record, cannot be decided on
    summary judgment.1
    For the reasons stated above, the summary judgment is VACATED and
    the case is REMANDED for further proceedings.
    VACATED and REMANDED.
    1
    Inasmuch as we find that the evidence leaves disputed issues of material fact to be
    decided with respect to liability, we do not reach the issues relating to experts and damages.
    4