And v. Lingo

• Decision Date: 19 May 2011
• Docket Number: Civ. No. 10–624–SLR.
• Citation: 785 F.Supp.2d 443,100 U.S.P.Q.2d 1698
• Parties: Archibald LINGO and, Archie's Market, Inc., Plaintiffs,v.Dinah LINGO, Jessica Lingo, Lingo Bros., LLC and The Original Lingo's Market, LLC, Defendants.
• Court: U.S. District Court — District of Delaware

785 F.Supp.2d 443

100 U.S.P.Q.2d 1698

Archibald LINGO and, Archie's Market, Inc., Plaintiffs,

v.Dinah LINGO, Jessica Lingo, Lingo Bros., LLC and The Original Lingo's Market, LLC, Defendants.

Civ. No. 10–624–SLR.

United States District Court, D. Delaware.

May 19, 2011.

Matt Neiderman, Esquire, and Katharine V. Jackson, Esquire, of Duane Morris, LLP, Wilmington, DE, Anthony L. Gallia, Esquire, of Duane Morris, LLP, Philadelphia, PA, for Plaintiffs.Richard A. Zappa, Esquire, Adam W. Poff, Esquire, and Monte T. Squire, Esquire, of Young Conaway Stargatt & Taylor, LLP, Wilmington, DE, for Defendants.

OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Archibald Lingo (“Archie”) and Archie's Market, Inc. (collectively “plaintiffs”) filed this action against Dinah Lingo (“Dinah”), Jessica Lingo (“Jessica”), Lingo Bros. LLC, and The Original Lingo's Market (collectively “defendants”) on July 2, 2010. (D.I. 1) In their amended complaint, plaintiffs allege that defendants improperly use their “Lingo's Market” trademark ¹ in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114, and Delaware state trademark law, 6 Del. C. § 3312–14 (2009). Plaintiffs also allege that said use of the mark falsely describes or designates the source of goods or services affecting commerce in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and the Delaware Deceptive Trade Practices Act (“DTPA”), 6 Del. C. § 2531 (2009). (D.I. 47) In addition to the § 43(a) claims, plaintiffs allege that use of their mark by defendants causes dilution in violation of § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). ( Id.) A bench trial was held October 18–October 20, 2010. The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1121. Having considered the documentary evidence and testimony, the court makes the following findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).

II. FINDINGS OF FACT AND CONCLUSIONS OF LAWA. The Parties

1. Archibald Lingo is a resident of Delaware and is the owner of Archie's Market, Inc. Archie's Market, Inc. is a Delaware corporation with its principal place of business in Lewes, Delaware.

2. Dinah Lingo is Archie's sister, and is the owner and operator of The Original Lingo's Market. Dinah, through her company Lingo Bros., LLC, owns the building where The Original Lingo's Market has operated. Dinah owns and operates The Original Lingo's Market through her company, The Original Lingo's Market, LLC. Jessica Lingo is Archie's daughter and has been the manager of The Original Lingo's Market.

B. The History of Lingo's Market

3. Lingo's Market has operated at the same address in Rehoboth Beach, Delaware for 112 consecutive years. (D.I. 60 at 2) Lingo's Market was run by Archie and Dinah's father, William Lingo (“William”), until his death in 1981. ( Id.) When William became ill, Archie took over the business and ran it continuously until 2009. (D.I. 59 at 3) William's wife Eleanor Lingo (“Eleanor”), who was the mother of Archie and Dinah, also worked at Lingo's Market after William's death. ( Id. at 5) Eleanor was a regular fixture at the market, who often worked long hours for no pay until she retired in 2005. (D.I. 60 at 3)

4. Until Eleanor's death in November of 2009, Archie made rent payments to her pursuant to a lease that he signed for use of the building where Lingo's Market operated. ( Id.) After Eleanor died, the building was put up for a partition sale wherein Dinah purchased the property outright. ( Id. at 17)

C. Ownership of the Mark and the Market

5. There is no clear evidence on record as to who owned Lingo's Market after William's death in 1981. Archie claims that his father gave it to him before he died, and that even Eleanor “thought that [Archie] should take over the business because if [he] did not it would—it would be over. There would be no more Lingo's Market.” (D.I. 59 at 3) When William died, neither his will nor his estate planning documents purported to transfer any interest in either Lingo's Market or the “Lingo's Market” trademark to anyone. (JTX 43; JTX 121) However, William's will did contain a residuary clause that created a trust for the benefit of Eleanor out of William's non-personal property. (JTX 121 at 1) Upon Eleanor's death, the trust terminated, and its corpus was distributed to Archie and Dinah per stirpes. ( Id. at 2)

6. Similarly, Eleanor's will and estate documents made no mention of devising Lingo's Market or the “Lingo's Market” trademark despite the fact that other specific properties were devised. (JTX 43; JTX 122) The only mention of Lingo's Market appears in the paragraph wherein Eleanor disinherits Archie, and provides context as to why she made the decision to do so:

FOURTH. I make no provisions in this will for my son Archie, except the same amount of love that he showed me after he started living with his French girlfriend, because he has been well provided for. This is because, Archie, you came to me and said “mother, let me show you how to save money by incorporating Lingo's Market.” You incorporated it as “Archie Lingo's Market.” I trusted you my son, but you used me for [your] own money grubbing ways. I thought your wife Bunny was a piece of work, after living in our house rent free for years with her demands. But your French girlfriend is a real sick person. I work over 100 days a year in the market, 12 hours a day without a break, and my son does not pay me or offer any help. My son makes me wait for the rent check until the end of the year so he can get the interest and only pays half the rent. You only care about your French girlfriend, you treat your mother, your sister and your daughter the same, without any care.

(JTX 122 at 2)

7. At one point, Archie indicated that Eleanor was the owner of Lingo's Market. During his divorce proceedings, Eleanor and Archie both testified that Eleanor was the true owner of Lingo's Market, and that Archie was a mere employee. (D.I. 60 at 11–12; D.I. 66 at 188:19–189:5) However, during trial, Archie argued that he had convinced his mother to lie about the ownership of Lingo's Market in order to prevent his wife from getting more alimony. (D.I. 66 at 189:14–21)

8. Consistent with Eleanor's recitation, Archie incorporated the business in June of 1998, naming himself the sole stockholder and officer under the business name “Archie's Market, Inc.” (JTX 75–76) Additionally, Archie filed an application for the trademark “Lingo's Market” with the United States Patent and Trademark Office (“USPTO”) on May 5, 2008, and was granted registration number 3,553,466 on December 30, 2008. (JTX 62)

9. Both parties submitted various documents including vendor invoices and building permits which the parties argue show ownership in either Archie or Eleanor (and, thus, Dinah by means of Eleanor's will). Archie's documents are far more numerous. (JTX 95–97 et. al.) Included in these documents are two leases for the building where Lingo's Market operates, one lease between Eleanor and Archie (JTX 123) and the other between Eleanor and Archie's Market, Inc. (JTX 124)D. The Contested Mark

10. The contested trademark consists of a the wordmark “Lingo's Market” whose primary exposure to the public is in the form of two large signs that are affixed to the wall of the building that Lingo's Market once occupied. In both their current and previous forms, the signs span the majority of the width of the wall to which they are affixed, and contain the words “Lingo's Market” in large gold lettering. In their current form, the words “The Original” appear in small font in the upper left hand corner of the sign, integrated into the gold trim. Similarly, the words “Dinah H. Lingo, Sole Proprietor” appear in the bottom right hand corner of the current signs. A picture of both signs is found below:

Image 1 (5.03" X .72") Available for Offline Print

“Lingo's Market” sign as it appeared when operated by Archie

Image 2 (5.03" X .45") Available for Offline Print

“The Original Lingo's Market” sign as it appears today

E. Trademark Infringement

1. Standard

11. “The law of trademark protects trademark owners in the exclusive use of their marks when use by another would be likely to cause confusion.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir.1994); Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 470 (3d Cir.2005).

12. A plaintiff proves trademark infringement by demonstrating that: (1) the mark is valid and legally protectable; (2) plaintiff owns the mark; and (3) the defendant's use of its mark to identify goods or services is likely to create confusion concerning the origin of the goods or services. Checkpoint Sys. v. Check Point Software Tech., 269 F.3d 270, 279 (3d Cir.2001); A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir.2000); Fisons, 30 F.3d at 472.

13. Likelihood of confusion exists when consumers viewing a mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark. Checkpoint, 269 F.3d at 280; Victoria's Secret, 237 F.3d at 211; Fisons, 30 F.3d at 472.

14. The Third Circuit has adopted a ten-factor test, known as the “ Lapp test,” to determine likelihood of confusion in the market. These factors are:

(1) the degree of similarity between the owner's mark and the alleged infringing mark;

(2) the strength of the owner's mark;

(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion; (7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties' sales efforts are...