Barbecue Max, Incorp. v. 551 Ogden, Incorp.

Decision Date22 December 2000
Docket NumberNo. 00-3110,00-3110
Citation235 F.3d 1041
Parties(7th Cir. 2000) Barbecue Marx, Incorporated, Plaintiff-Appellee, v. 551 Ogden, Incorporated, Defendant-Appellant
CourtU.S. Court of Appeals — Seventh Circuit

Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 00 C 3433--Elaine E. Bucklo, Judge.

Before Bauer, Coffey, and Easterbrook, Circuit Judges.

Bauer, Circuit Judge.

Barbecue Marx, Inc. ("Barbecue Marx"), owner of the barbecue restaurant SMOKE DADDY, sued for trademark infringement to prevent 551 Ogden, Inc. ("Ogden") from using the name "BONE DADDY" for its forthcoming barbecue restaurant. Barbecue Marx petitioned the district court for a preliminary injunction to prevent Ogden from using BONE DADDY while the underlying case was pending. The district court granted the preliminary injunction and Ogden now appeals. We reverse and remand.

I. Background

Max Brumbach, a former musician, created the restaurant SMOKE DADDY and its parent corporation, Barbecue Marx. SMOKE DADDY, founded in 1994, is located on the Near West side of Chicago and features live music, mostly blues. The diner style, 1500 square foot restaurant seats 42 people. SMOKE DADDY's logo features the words "SMOKE DADDY" sitting atop a pair of wings and smoke. Its slogans are "Wow," and "Wow, that sauce!" By all accounts, SMOKE DADDY is a successful restaurant. Not only does it make a tidy profit, but food critics have recognized it as one of the best barbecue restaurants in Chicago. While a substantial number of SMOKE DADDY's customers come from the neighborhood in which it is located, it attracts some customers from other areas of the city and country. SMOKE DADDY initially advertised, but it now relies on word of mouth and restaurant reviews to attract new customers.

Clifford and Mitchell Einhorn, the principles of Ogden, own the critically acclaimed restaurant the Twisted Spoke. The Twisted Spoke features an "irreverent" style; the restaurant has a biker theme and shows X-rated videos. In 1996, the Einhorns decided to open a barbecue restaurant. When they began to develop the restaurant's concept, they fell back upon a name that Mitchell Einhorn initially hit upon in 1993: BONE DADDY. Einhorn was inspired by the movie The Nightmare Before Christmas, in which one character asks a drum-playing skeleton, "What's up, bone-daddy?" By the time the Einhorns decided to use the name for their new restaurant, however, they were aware of SMOKE DADDY and had eaten there several times.

The Einhorns chose to locate BONE DADDY a few blocks from the Twisted Spoke, and 1.4 miles away from SMOKE DADDY. They consulted a trademark attorney, not regarding the appropriateness of the name, but to register it as a trademark. BONE DADDY hired consultants to create an image and logo for the restaurant as well as contractors to prepare the restaurant space. The BONE DADDY logo features a pig dressed like a gangster, smoking a cigar and the words "BONE DADDY." Its slogans are sexually charged: "Ribbed for your Pleasure" and "Man, I boned a lot of pigs." The 5000 square foot restaurant features a bar and two dining rooms, decorated in a modern style. BONE DADDY plans to feature live entertainment, including bluegrass, acoustic, and adult oriented musicians, but does not plan to have blues performers. BONE DADDY has not yet opened,1 but it planned to begin doing business in September or October of this year. In anticipation of BONE DADDY's opening, the Einhorns publicized the restaurant on the summer menus at the Twisted Spoke.

II. Discussion

Of the five elements necessary to obtain a preliminary injunction, see Rust Env't & Infrastructure Inc. v. Teunissen, 131 F.3d 1210, 1213 (7th Cir. 1997) (listing the elements of proof for a preliminary injunction), we focus on the threshold issue of whether Barbecue Marx has proven a reasonable likelihood of success on the merits. In a trademark infringement suit, the plaintiff must show that its mark is protected under the Lanham Act and that the challenged mark is likely to cause confusion among consumers. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464(7th Cir.2000) (citations omitted); Platinum Home Mortg. Corp. v. Platinum Fin. Group Inc., 149 F.3d 722, 726 (7th Cir. 1998) (citation omitted). In this case, Ogden accepts that SMOKE DADDY is a protectable mark. However, it argues that the preliminary injunction was granted in error because Barbecue Marx did not meet its burden of proof with regard to the likelihood of confusion.

To justify a preliminary injunction against a junior trademark, Barbecue Marx must show a greater than negligible chance of prevailing on the merits of the underlying infringement claim. See Platinum Home Mortg. Corp., 149 F.3d at 726 (citing Curtis v. Thompson, 840 F.2d 1291, 1296 (7th Cir. 1988)). Seven factors comprise the likelihood of confusion test: "(1) similarity between the marks in appearance and suggestion; (2) similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and, (7) intent of defendant to 'palm off his product as that of another.'" Rust Env't & Infrastructure Inc., 131 F.3d at 1216 (7th Cir. 1997) (citations omitted); see Smith Fiberglass Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993) (citations omitted); Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1185 (7th Cir. 1989) (citations omitted). Likelihood of confusion is a factual determination, and we will defer to the district court unless we find clear error. See Platinum Home Mortg. Corp., 149 F.3d at 726; August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir. 1995). Clear error exists if, based on the whole record, we are left with a firm conviction that the district court has made a mistake. See Rust Env't & Infrastructure Inc., 131 F.3d at 1216 (citation omitted).

The likelihood of confusion test is an equitable balancing test. While no single factor is dispositive, see Schwinn Bicycle Co., 870 F.2d at 1187, and courts may assign varying weights to each of the factors in different cases, see Smith Fiberglass Prods. Inc., 7 F.3d at 1329 (citation omitted), three of the factors are particularly important: the similarity of the marks, the defendant's intent, and actual confusion, Eli Lilly & Co., 233 F.3d 456, 461.

In determining whether to grant a preliminary injunction, the district court must weigh the evidence pertaining to each likelihood of confusion factor and balance the seven factors against each other. A preliminary injunction is a very serious remedy, "'never to be indulged in except in a case clearly demanding it.'" Schwinn Bicycle Co., 870 F.2d at 1184 (quoting Roland Mach. Co. v. Dresser Indus., 749 F.2d 380, 389 (7th Cir. 1984) (italics omitted)). When a district court evaluates the likelihood of confusion, "the actual and reasoned weighing of the evidence is imperative and is inherent in a meaningful exercise of discretion[,]" Schwinn Bicycle, 870 F.2d at 1184, as is the explicit balancing of the test's factors. The district court's opinion, however, does not explain how the evidence was weighed or how the factors were balanced. As a consequence, we do not have the district court's rationale before us, making our review for clear error significantly more difficult. We now turn to the likelihood of confusion test.

A. Similarity in Appearance and Suggestion

The trial court focused most heavily on the first factor, finding that the BONE DADDY and SMOKE DADDY marks were confusingly similar in appearance and suggestion. The district court based its finding on the tonal similarities of the words "bone" and "smoke." Both words have a long "o" and are only one syllable long. Further, the district court found that both marks evoke images of "slow cooked, smoked barbecue, usually ribs on the bone." We agree that the words sound alike and evoke similar imagery. However, the district court did not discuss the impact of the written form of the marks.

SMOKE DADDY's rectangular mark depicts the words "SMOKE DADDY" on top of a pair of wings and smoke. In contrast, BONE DADDY's mark prominently displays a pig clad like a gangster and the words "BONE DADDY." The marks are visually distinct. Because the public will encounter the marks in written as well as spoken form, we believe it is essential to consider the marks' visual characteristics. The visual appearance significantly undercuts the strength of Barbecue Marx's argument that the marks are similar in appearance and suggestion. However, because of the aural similarity between the marks, we find no clear error with regard to this factor.

B. Similarity of Products

The second factor is the similarity of the products. The district court addressed the second factor by noting that both SMOKE DADDY and BONE DADDY serve, or plan to serve, the same product: barbecue. This is true. However, the record contains evidence of differences in the restaurants' ambiances and themes. SMOKE DADDY, a small restaurant, seating only 42, and decorated in a 1950s style, focuses heavily on blues music. In contrast, BONE DADDY styles itself as an "irreverent" restaurant, using such sexually charged slogans as "ribbed for your pleasure" and "man, I boned a lot of pigs." This style closely mirrors that of the Twisted Spoke. BONE DADDY's interior has a very different feel, and its stronger emphasis on food differentiates its style from that of SMOKE DADDY. Although the district court did not consider this evidence, we cannot conclude that the...

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