Brennan's, Inc. v. Brennan's Restaurant, L.L.C.

• Decision Date: 26 February 2004
• Docket Number: Docket No. 03-7382.
• Citation: 360 F.3d 125
• Parties: BRENNAN'S, INC., Plaintiff-Appellant, v. BRENNAN'S RESTAURANT, L.L.C., 565 Lexington Avenue Co., LLC., Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

360 F.3d 125

BRENNAN'S, INC., Plaintiff-Appellant, v. BRENNAN'S RESTAURANT, L.L.C., 565 Lexington Avenue Co., LLC., Defendants-Appellees.

Docket No. 03-7382.

United States Court of Appeals, Second Circuit.

Argued October 2, 2003.

Decided February 26, 2004.

COPYRIGHT MATERIAL OMITTED

Edward T. Colbert, Washington, D.C. (William M. Merone, Kenyon & Kenyon, Washington, D.C.; Gregg A. Paradise, Kenyon & Kenyon, New York, New York, of counsel), for Plaintiff-Appellant.

Adam M. Cohen, New York, New York (Dana M. Susman, Kane Kessler, P.C., New York, New York, of counsel), for Defendants-Appellees.

Before: CARDAMONE, MINER, and CALABRESI, Circuit Judges.

CARDAMONE, Circuit Judge.

This is an appeal from the denial of a preliminary injunction in a trademark infringement suit. The suit involves a dispute between two restaurant owners over the use of the name "Brennan's." The owner of a widely-renowned New Orleans restaurant named "Brennan's" moved for a preliminary injunction against the owners of a New York City restaurant called "Terrance Brennan's Seafood & Chop House." Plaintiff's motion was denied by the United States District Court for the Southern District of New York (McKenna, J.) in a memorandum and order entered March 20, 2003.

This trademark infringement suit is focused on the protectibility as a mark of plaintiff's use of the family name Brennan. In trademark law names are important identifiers of the source of goods or services marketed to the public consumer. Names, of course, are not constant like the northern star, but are changeable, as some — like show-business people, some newly married women, and recent immigrants — shed their birth names like old coats and happily don new ones they prefer. But others, like plaintiff and defendant in this case, think their names are treasures to be safeguarded jealously. From the surname Brennan, plaintiff's predecessor coined a trademark he used for his restaurant. Defendant, also named Brennan, attached to that surname his first name of Terrance and used these names as a mark for his restaurant. Thus, the stage for the trademark litigation before us was set.

BACKGROUND

Plaintiff Brennan's, Inc. (Brennan's New Orleans, plaintiff, or appellant) owns and operates the restaurant "Brennan's," founded in 1946 in New Orleans, Louisiana. Plaintiff registered the name Brennan's pursuant to the Lanham Act, 15 U.S.C. §§ 1051 et seq., as a trademark for its restaurant services. The validity of that mark is not disputed. Plaintiff operates one other restaurant, "Owen Brennan's Restaurant," in Memphis, Tennessee, but owns no restaurants in the New York City area.

Terrance Brennan, so named at birth, is a New York City chef who, prior to this litigation, opened two restaurants in New York City, "Picholine" and "Artisanal." He is a well-known "name" chef whose reputation attracts customers. At the center of this controversy is his newest enterprise, "Terrance Brennan's Seafood & Chop House" (Terrance Brennan's), located in Manhattan. A corporation was formed called 565 Lexington Avenue Co., LLC to own and operate the restaurant. This corporation along with its sole managing member, Brennan's Restaurant, LLC, are the named defendants in this action. Defendants originally called the new restaurant "Brennan's Seafood & Chop House," but after receiving a cease-and-desist letter from plaintiff's lawyers, they added the first name "Terrance" to their mark.

Brennan's New Orleans sought a preliminary injunction on the grounds that the name Terrance Brennan's Seafood & Chop House infringed its rights in the name Brennan's and was likely to cause consumer confusion. After expedited limited discovery and a two-day hearing, Judge McKenna denied the motion for a preliminary injunction. See Brennan's, Inc. v. Brennan's Restaurant, LLC, No. 02-CV9858, 2003 WL 1338681 (S.D.N.Y. Mar.18, 2003). This appeal followed. We affirm.

DISCUSSION

I Preliminary Injunction Under the Lanham Act

The Lanham Act creates a cause of action against any person who, in connection with goods or services, uses in commerce

any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin ... which —

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the... connection ... of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services....

15 U.S.C. § 1125(a)(1). The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) ("The test for infringement is whether the actor's use of a designation as a trademark ... creates a likelihood of confusion ....").

A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party's favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Although appellant has properly invoked our jurisdiction on an interlocutory appeal pursuant to 28 U.S.C. § 1292(a)(1), we must observe that a decision on a motion for a preliminary injunction in a trademark dispute is closely tied to the merits, especially where, as here, the validity of the registered mark is uncontested and the key question is whether there is consumer confusion. By taking an appeal after the denial of a preliminary injunction appellant asks us — with only a limited factual record before us — in effect to decide the merits. Because we review a district court's denial of a preliminary injunction for an abuse of discretion, see Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 145-46 (2d Cir.2003), it is not surprising that appellant has a formidable hurdle to overcome.

Presumably Brennan's New Orleans seeks expedited review in hopes we will reverse the district court and grant the injunction. Yet, at this early stage, we have before us mostly conclusory allegations supported by facts that are generally contested. Infrequently will such prove to be a record on which an appellate court will find that a district court has abused its discretion by refusing to issue a preliminary injunction. The only result of an appeal in such circumstances is several months delay. It seems to us that if a party desires rapid resolution of the suit, after its motion for a preliminary injunction has been denied, better practice would be to seek an expedited trial on the merits. With the parties then able to create a more substantial record, the district court would have an opportunity to make more extensive and reliable findings of fact and we would be in a better position to engage in meaningful appellate review.

Plaintiff also brought dilution and state law unfair competition claims in the district court, but the only issue before us on appeal is the trademark infringement claim. On that issue, the district court ruled that plaintiff had not demonstrated a likelihood of success on the merits. In particular, it noted the minimal evidence of actual confusion, the use of Terrance Brennan's first name in his mark, the sophistication of the relevant consumer market, and the substantial geographic distance — more than 1,000 miles — separating the two Brennan restaurants. Although we are doubtful about certain aspects of the district court's findings, we are at the same time persuaded that Judge McKenna's ultimate determination that plaintiff was not entitled to a preliminary injunction did not constitute an abuse of his discretion.

II Trademark Infringement

Plaintiff's claim of trademark infringement is brought under the federal trademark laws, 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant's use of a similar mark is likely to cause consumer confusion. Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir.1993); see, e.g., Virgin, 335 F.3d at 146 (noting that the Gruner test applies to infringement claims brought under §§ 1114 and 1125(a)). The parties do not dispute that plaintiff has a valid, registered mark in the name Brennan's that has become incontestable by operation of law. See 15 U.S.C. § 1065. We turn therefore to consider the pivotal question: the likelihood of confusion.

To evaluate the likelihood of consumer confusion, we apply the multi-factor test set forth by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir.1987) (citing Polaroid, 287 F.2d at 495); Gruner, 991 F.2d at 1077. No single factor is dispositive, nor is a court limited to consideration of only these factors. Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir.1986).

In reviewing the district court's evaluation of the Polaroid factors, each...