Beef/Eater Restaurants, Inc. v. James Burrough Limited

• Decision Date: 31 July 1968
• Docket Number: No. 25204.,25204.
• Citation: 398 F.2d 637
• Parties: BEEF/EATER RESTAURANTS, INC., d/b/a Beefeaters and Beefeater Restaurants, Appellant, v. JAMES BURROUGH LIMITED et al., Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

398 F.2d 637 (1968)

BEEF/EATER RESTAURANTS, INC., d/b/a Beefeaters and Beefeater Restaurants, Appellant, v. JAMES BURROUGH LIMITED et al., Appellees.

No. 25204.

United States Court of Appeals Fifth Circuit.

July 31, 1968.

Alvin N. Siegel, Samuel N. Frankel, Atlanta, Ga., for appellant.

Kirk M. McAlpin, Atlanta, Ga., Henry W. Lauterstein, New York City, for appellees.

Before BROWN, Chief Judge, BELL, Circuit Judge, and HOOPER, District Judge.

HOOPER, District Judge.

The sole question in this case is whether or not the trial judge erred in granting to appellees (plaintiffs in the court below) a summary judgment, based on affidavits, depositions, pleadings and documentary evidence.

Appellees (James Burrough Limited and Kobrand Corporation) brought an action seeking injunction in the District Court against Beef/Eater Restaurants, Inc., doing business as Beefeaters and Beefeater Restaurants (appellant) alleging unfair competition by the latter consisting of trademark infringement and dilution of plaintiffs' trademark.

The district judge found that there was no substantial issue of fact and granted a summary judgment in favor of appellees (272 F.Supp. 489 — Northern District of Georgia, 1967). His opinion contains exhaustive findings of fact. Motion to reconsider filed by the defendant was denied.

A repetition here of the complete findings of fact by the trial judge is not necessary. The only findings to which appellant takes exception are those relating to the likelihood of confusion, and the alleged secondary meaning of the words and the symbol used by appellee.

(1) Point One in appellant's brief is the following: "Disputes between parties as to trademark infringement, and unfair competition cases, can rarely be determined satisfactorily on a motion for summary judgment." Whether or not the granting of such motions is rarely upheld is not the question; each case must be decided upon its particular facts and in many instances the granting of such judgments have been upheld. See Community of Roquefort v. William Faehndrich, Inc., 303 F. 2d 494 (2nd Cir. 1962), National Association of Blue Shield Plans v. United Bankers Life Insurance Company, 362 F.2d 374 (5th Cir. 1966), and cases therein cited.

(2) The provisions of the amendment to Rule 56, Federal Rules of Civil Procedure effective July 1, 1963 are quite significant here, a portion of the same reading as follows:

"When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him."

Appellant (defendant in the court below) now makes various contentions concerning the facts in the record which were not made by affidavits or offer of proof in the trial court.¹

The background and purposes of the Amendment to Rule 56 are given in the case of Robin Construction Company v. United States, 345 F.2d 610 (3rd Cir. 1965), and concludes with these words: "This amendment must be made fully effective."

The issues as to likelihood of confusion between the trademarks and the issue of secondary meaning must therefore be considered in the light of the above.

(3) Upon the question as to likelihood of confusion the trial judge ruled that the following was a necessary inference from the undisputed fact in the Record, the trial judge stating (272 F.Supp. 493):

"The public has been, or is likely to be, confused, misled, and deceived by defendants\' conduct into the belief that the defendant through its use of the name `Beefeater\', as aforesaid, has been or is in some way associated, connected with, or sponsored by or approved by the plaintiffs."

Appellant in contending that no witness testified as to the likelihood of confusion overlooks the principle of law that the trial judge, by inspection of the trademarks, may himself determine, and must determine, the likelihood of confusion. See National Association of Blue Shield Plans v. United Bankers Life Insurance Company, 362 F.2d 374, at p. 378 (5th Cir. 1966).

But, actual confusion need not be proven and the undisputed facts in the Record demand an inference that confusion was likely. The trial judge stated as follows (272 F.Supp. 494):

"22. The use of the word Beef/Eater, Beefeaters, Beefeater and the Beefeater Guard Symbol by defendant in connection with its restaurants is so similar to plaintiffs\' trade name Beefeater and the Beefeater Guard Symbol that confusion is likely to result so as to cause the public erroneously to believe that the defendants\' restaurants are in some manner connected with the plaintiffs and, unless enjoined, the likelihood of confusion will increase."

One illustration of a clear cause of confusion is shown by a comparison of the menu in use by appellant, wherein "Beefeater" is referred to as "a corp of men to act as bodyguards" to King Henry VII of England in 1485. The same language appears from a label in use by appellees on its Beefeater gin, and more importantly, there is placed over the same a picture of one of the traditional "Beefeaters" identical as to form and color, with that shown on the label of the gin packaged by Kobrand Corporation.

It is true that appellant operates a restaurant and appellees on the other hand make and vend gin. Both are consumable and it is repeatedly held that the parties need not be in competition and that the goods or services need not be identical. See Continental Motors Corporation v. Continental Aviation Corporation, 375 F.2d 857, 861 (5th Cir. 1967); ...