Great American Restaurant Co. v. Domino's Pizza LLC , 348 F. App'x 907 ( 2009 )

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 R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR .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
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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
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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