WAVERLY D. CRENSHAW, JR., Chief District Judge.
Pending before the Court in this trademark infringement action is Rooke, LLC's ("Rooke") Motion for Summary Judgment (Doc. No. 39), to which The Row, Inc. ("The Row") has responded in opposition (Doc. No. 46), and Rooke has replied (Doc. No. 53). For the reasons that follow, the Motion will be granted and judgment will entered in favor of Rooke.
The Statement of Undisputed Material Facts, Additional Statement of Facts, and Responses thereto (Doc. Nos. 41, 48 & 54) reveal the following facts:
Rooke owns and operates a chain of restaurants called "Dierks Bentley's Whiskey Row" ("Whiskey Row"). Prior to the date on which the first "Whiskey Row" restaurant opened for formal business, Rooke advertised and promoted the restaurant name in commerce in connection with the offering of bar and restaurant services. (Doc. No. 41 at 1).
Rooke filed its application for federal trademark registration of the word mark "Whiskey Row" on September 21, 2011, and submitted to the United States Patent and Trademark Office ("USPTO") a specimen identifying Rooke's use of the mark in commerce through advertisement and promotion of Rooke's restaurant and bar services. Subsequently, the USPTO issued a certificate of registration. (
On November 29, 2012, The Row filed an application on an "intent-to-use" basis for a design mark consisting of the words "Genuine Food and Drink The Row Kitchen and Pub." The USPTO granted Plaintiff's trademark application and registered its mark on the principal register. That registration is for a colored design logo. The Row was not awarded a trademark registration for the singular word "row." (
Up until the last paragraph, The Row agrees with Rooke's recitation of the facts. It adds, however, that while Rooke represented to the USPTO that its Whiskey Row mark was first used in commerce on September 15, 2011, the first Whiskey Row restaurant did not open until July 4, 2013 in Scottsdale, Arizona. (Doc. No. 48 at 5). In fact, in a December 19, 2011 response to an Office Action by the USPTO, Rooke submitted a specimen described as a "website image of mark for services" and verified that "[t]he Applicant is using the mark in commerce, . . . in connection with the identified . . . services" and that the specimen "was . . . in use in commerce at least as early as the filing date of the application." (
As for its own mark, The Row contends that "[t]he literal element of the mark The Row applied to register consisted of `Genuine Food and Drink The Row Kitchen & Pub' and the word THE in stylized cursive red letters with gold borders and the word ROW in capital block red letters with gold borders and red shading, bordered on the top with the words GENUINE FOOD AND DRINK in dark red block capital letters with gold borders and on the bottom with the words KITCHEN & PUB in red block capital letters with gold borders with gold borders." (
(
The Row opened its restaurant under the named Genuine Food and Drink — The Row — SKitchen and Pub on Lyle Avenue in Nashville, Tennessee on March 9, 2013. Since then, The Row, Inc. has earned more than $16,000,000 from the sale of over 850,000 meals. In addition to locals and tourists, customers have come from all 50 states and 15 foreign countries. (
In addition to its restaurant and catering business, The Row sells a wide range of merchandise containing its mark, ranging from t-shirts to koozies to beer glass to wristbands. That merchandise is sold both at the restaurant and online through The Row's website.
The Row's mark has also been used in magazine advertisements and dining guides, as well as on gift cards, concierge cards, and the like. The mark has also been used in marketing directed at local and regional residents, as well as tourists. It has also been used in advertisements and promotions on cable television and radio stations.
Although The Row presently has only the restaurant in Nashville, it claims to be "studying plans to advertise, promote, market, display, distribute, offer for sale and sell its services in Huntsville, Alabama; Atlanta, Georgia; Austin, Texas and Gatlinburg, Tennessee." (
The standards governing summary judgment have been set forth in countless opinions and should be well understood. For present purposes, it suffices to note: (1) summary judgment is only appropriate where there is no genuine issue as to any material fact and the movant is entitled to judgment as a matter of law, Fed. R. Civ. P. 56(a); (2) the facts and inferences must be construed in favor of the nonmoving party,
The Row alleges that Rooke infringed on its trademark in violation of the Lanham Act, 15 U.S.C. § 1114(b). It also requests that the Whiskey Row mark be cancelled as provided for in 15 U.S.C. § 1119. Prior to reaching the substance of those claims, the Court addresses a preliminary matter raised by the parties.
The parties dispute which among them holds the senior mark and is therefore entitled to a presumption of validity. Under the Lanham Act, "[a] certificate of registration of a mark upon the principal register . . . shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate." 15 U.S.C. § 1057(b). Although a certificate is not dispositive and validity must be shown, "federal registration . . . entitles the [holder] to a `strong presumption' that the mark is a protectable mark."
The Row argues that the presumption based on registration should not apply in this case and that it should be deemed the senior user. This is because The Row opened its restaurant first, and Rooke misrepresented in both its verified application and in responses to an Office Action from the USPTO that the mark was being used in commerce in September 2011 when, in fact, the first Whiskey Row restaurant did not open until some 21 months after the application was filed. Rooke insists it is the senior user because Whiskey Row was registered first, and argues "that it defies citation to authority" for the "so basic principle" that "a junior trademark user and applicant cannot sue a senior user for infringement based on the senior user's own trademark." (Doc. No. 53 at 2).
"Traditionally, ownership of a trademark accrues when goods bearing the mark are sold, displayed for sale or otherwise publicly distributed."
Rooke is correct that the Sixth Circuit in
Here, The Row has agreed to Rooke's Statement of Fact that "[p]rior to the date on which the first `Whiskey Row' restaurant opened for formal business, Rooke advertised and promoted the restaurant name in commerce in connection with the offering of bar and restaurant services." (Doc. No. 47 at 1-2). This admission, however, hardly establishes that the advertising was "open and notorious" as Rooke claims, let alone the extent of the advertisement and promotion, or when that advertising and promotion began for purposes of determining whether Whiskey Row was "in use."
Ultimately, resolution of this issue does not matter because even if The Row is deemed the senior user, it has not established trademark infringement. And, because The Row cannot show trademark infringement, it lacks standing to seek cancellation of the Whiskey Row mark.
"To state a claim for trademark infringement under the Lanham Act, a plaintiff must allege facts establishing that: (1) it owns the registered trademark; (2) the defendant used the mark in commerce; and (3) the use was likely to cause confusion."
At first blush, one might readily conclude that there is no likelihood of confusion as to The Row's and Rooke's marks, which, respectively, are as follows:
However, "[i]n assessing the likelihood of confusion, a court's concern is `the performance of the marks in the commercial context'" and "[t]he appearance of the litigated marks side by side in the courtroom does not accurately portray actual market conditions."
Instead, the Sixth Circuit has "articulated eight factors for evaluating the "likelihood of confusion."
"The strength of a mark is a determination of the mark's distinctiveness and degree of recognition in the marketplace."
The Row claims its mark is arbitrary or fanciful, making it entitled to the most protection. An arbitrary mark "has a significance recognized in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached, such as CAMEL cigarettes or APPLE computers."
In arguing that its mark is arbitrary or fanciful, The Row points out that the Merriam-Webster Dictionary defines the noun "row" as "a number of objects in an unusually straight line — a row of bottles; also the line along which such object are arranged — planted the corn in parallel rows or a street or area or dominated by a specific kind of enterprise or occupancy — doctors' row." (Doc. No. 50 at 7). Such definitions, The Row argues, have "no recognized connection to the restaurant and catering services offered by The Row." (
No doubt, the phrase "The Row" is a prominent feature of the mark, given its central location and size. However, "[t]he unit of analysis in considering the strength of the mark is the entire mark, not just a portion of the mark."
Furthermore, The Row's suggestion that its mark is arbitrary or fanciful is undercut by the location of the restaurant. Nashville is home to country music and a beacon for aspiring country music artists, singer/songwriters, and fans. If, as it is sometimes said, the Ryman Auditorium is the Mother Church of Country Music, then Music Row lies within its parish, sitting as it does just southwest of downtown and serving as the home to many country music recording studios, publishers, record labels, and music rights licensing and management businesses. While APPLE suggests computers and EXXON suggests a gas station, in Nashville The Row seems as likely to conjure up images of Music Row as much as it does a restaurant.
The Row also argues that its mark is strong because a search of USTPO's registration database for restaurant services reveals only two registrations for marks including "The Row." (Doc. No. 50 at 10). Maybe so, but the challenge here is to the "Whiskey Row" mark, which does not contain the word "The." According to Rooke, when the database is searched for marks containing just "Row," there are 525 registrations and pending applications in goods and services, and 33 such uses or intended uses for restaurant and bar services. (Doc. No. 53 at 6)
Finally on the issue of strength, The Row claims that, since March 2013 it has had $16 million in sales, sold more than 850,000 meals, and been reviewed by more that 2,000 customers. Not being a restauranteur, these figures in the abstract are not particularly helpful to the Court. Although the numbers seem large, the Court has no way of knowing how much the mark was responsible for drawing patrons, as opposed to any of a number of variables, including location.
Based upon the record presented, the Court finds that, although "The Row" mark is entitled to protection because it is duly registered, it is not otherwise particularly strong.
The goods are virtually the same, if not identical. Both The Row and Whiskey Row are restaurants that also serve alcoholic beverages.
That said, "the issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source."
Even in Nashville there is unlikely to be great deal of confusion as to source. Not only is Whiskey Row located (or to be located) on Lower Broadway, miles away and in a different part of town, The Row concedes that "Rooke typically displays the mark and advertises the name as `Dierks Bentley's Whiskey Row.'" (Doc. No. 47 ¶5).
Nevertheless, and because the goods are virtually identical, the Court finds this factor marginally favors The Row.
"The similarity of the marks `is a factor of considerable weight[.]'" CFE Racing Prod.,
Apart from the fact that both marks contain the word "Row" and are used for restaurants, it is unlikely that any customer would confuse the two. One driving down the street or strolling along the sidewalk and seeing "Whiskey Row" is hardly apt to think, "hey, look, `The Row," or vice versa. One mark is multi-colored, the other monochrome. One mark is all in block letters, the other is in stylized font and includes cursive. One mark is a single straight line containing but two words, while the other contains writing, both above and below its most prominent feature.
In asserting similarity, The Row focuses on the fact that both marks contain the word "Row." However, The Row has pointed to no authority which suggest that it can co-opt the word "Row," anymore than Rooke can co-opt that word or "Whiskey."
Regardless, "a detailed analysis of specific features of a trademark is not appropriate; rather, `courts must view marks in their entirety and focus on their overall impressions, not individual features.'"
The Court finds that the marks at issue in this case are not similar and this factor weighs heavily against The Row.
The Row has presented no evidence of actual confusion, and argues that such evidence is unnecessary. As support, it quotes the statement in
The lack of evidence of actual confusion is not fatal, but its presence is certainly helpful. This factor does not help The Row.
This factor requires the Court to consider "whether the marketing approaches employed by each party resemble each other."
In its response brief, The Row argues:
(Doc. No. 50 at 14).
In advancing it argument, The Row wholly fails to address Rooke's argument that — as The Row concedes — Rooke typically uses "Dierks Bentley" on signage and promotional materials. Nor does The Row address Rooke's argument that, even in the Nashville market, it is "highly unlikely that a consumer intending to visit a bar or restaurant would not recognize the stark differences between the two businesses and their respective locations." (Doc. No. 40 at 16). Even if the likely degree of purchaser care presents a factual question, this does not mean that summary judgment is inappropriate. As already noted, "the plaintiff's burden is to identify a disputed factor or set of factors whose resolution would necessarily be dispositive on the likelihood of confusion issue."
The Row argues that there is "significant evidence that Rooke intends to use the Whiskey Row mark in a way calculated to divert customers from The Row to Whiskey Row when it opens on Broadway in Nashville," and "[t]his is evident in the progression of changes Rooke has made to the use of the Whiskey Row Mark" by "increasing the size and prominence of the word `row.'" (Doc. No. 50 at 14). The Row further argues that "`if a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity.'" (
The problem with The Row's argument is that it has not presented a shred of evidence to suggest that Rooke selected its mark in an effort to cause confusion. The evidence is undisputed that Rooke (whether it was forthright with the USPTO, or not) sought and received registration for the Whiskey Row mark more than a year before the Row received its mark, making it extremely unlikely if not impossible for Rooke to have intended to trade off of the goodwill of The Row's non-existent mark.
Rooke argues this factor is irrelevant because "expansion of product lines means just that — different products, not additional locations." (Doc. No. 53 at 11). Rooke goes on to argue that it "it has not expanded its goods or service line to compete with Plaintiff; it has offered the exact same services as indicated in its trademark application and registration." (
The Sixth Circuit has stated:
Recognizing that the likelihood of confusion is not measured by simply counting the factors for and against such a finding, and that the ultimate question is whether customer and potential customers are likely to be genuinely confused between "The Row" and "Whiskey Row," the Court finds that The Row has failed to present a triable issue of fact "whose resolution would necessarily be dispositive on the likelihood of confusion issue."
On summary judgment, "the focus on the `ultimate question'" of likelihood of confusion "is critical," and "a genuine dispute of material fact on any one of the eight factors does not demonstrate that a grant of summary judgment [i]s improper when there is not enough total evidence for a jury to conclude that the . . . mark is likely to confuse consumers."
Section 37 of the Lanham Act provides:
15 U.S.C. § 1119. This provision "arms the court with the power to update the federal trademark register to account for a mark's actual legal status (or lack thereof) after it has been adjudicated, thereby reducing the potential for future uncertainty over the rights in a particular mark."
"Courts have held that the permissive language of § 1119, providing that the court `may' determine the right to registration, order cancellation of registrations, and the like, endows the district court with discretionary authority."
Even though The Row has submitted a Declaration in which Kelly Black states that he "believe[s] the Row is likely to be damaged and is being damaged" by the Whiskey Row mark (Doc. No. 48 at 1), his belief, assuming it is competent evidence, is premised upon the idea that the Whiskey Row mark is infringing. Because the Court has found that The Row has failed to submit a triable issue of fact on its trademark infringement claim and that Rooke is entitled to judgment, Mr. Black's beliefs are insufficient to confer standing.
Simply put, section 37 is remedial,
On the basis of the foregoing, Rooke's Motion for Summary Judgment (Doc. No. 39) will be granted, and The Row's claim for trademark infringement and request for cancellation will be dismissed.
An appropriate Order will enter.
