Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc.
| Decision Date | 25 September 1997 |
| Docket Number | 95-8656 and 95-8767,Nos. 94-8700,s. 94-8700 |
| Citation | 122 F.3d 1379 |
| Parties | , 11 Fla. L. Weekly Fed. C 597 LONE STAR STEAKHOUSE & SALOON, INC., Plaintiff-Counterdefendant-Appellant, v. LONGHORN STEAKS, INC., Defendant-Appellee. LONE STAR STEAKS, INC., Plaintiff-Counterdefendant-Appellee, v. LONE STAR STEAKHOUSE & SALOON OF GEORGIA, INC., Lone Star Steakhouse & Saloon, Inc., Defendants-Counterclaimants-Appellants. LONE STAR STEAKHOUSE & SALOON, INC., Plaintiff-Counterdefendant-Appellant, Cross-Appellee, v. LONGHORN STEAKS, INC., Defendant-Appellee, Cross-Appellant. LONE STAR STEAKS, INC., Plaintiff-Counterdefendant-Appellee, Cross-Appellant, v. LONE STAR STEAKHOUSE & SALOON OF GEORGIA, INC., Lone Star Steakhouse & Saloon, Inc., Defendants-Counterclaimants-Appellants, Cross-Appellees. LONE STAR STEAKHOUSE & SALOON, INC., Plaintiff-Counterdefendant-Appellee, v. LONGHORN STEAKS, INC., Defendant-Counterclaimant-Appellant. LONE STAR STEAKS, INC., Plaintiff-Counterdefendant-Appellant, v. LONE STAR STEAKHOUSE & SALOON OF GEORGIA, INC., Lone Star Steakhouse & Saloon, Inc., Defendants-Counterclaimants-Appellees. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
J. Comer Yates, Nations, Yates & Freeman, Atlanta, GA, Jerome Gilson, Pro Hac Vice, Jeffrey A. Handelman, Pro Hac Vice, Colleen Connors Butler, Willian, Brinks, Hofer, Gilson & Lione, Chicago, IL, Michael Wiggins, William Brewster, Miles Alexander, Kilpatrick Stockton LLP, Atlanta, GA, for Plaintiff-Counterdefendant-Appellant.
Mark Stephen VanderBroek, Lesley G. Carroll, Troutman & Sanders, Atlanta, GA, Martin J. Elgison, David Maxwell, Alston & Bird, Atlanta, GA, for Defendant-Appellee.
Appeals from the United States District Court for the Northern District of Georgia.
Before COX and BLACK, Circuit Judges, and FAY, Senior Circuit Judge.
ON SUGGESTION OF REHEARING EN BANC.
In its suggestion of rehearing en banc, appellants and cross-appellees, Lone Star Steakhouse & Saloon, Inc. and Lone Star Steakhouse & Saloon of Georgia, Inc. (hereinafter, collectively referred to as "LSS & S"), essentially argue that the district court and our original panel opinion, published at 106 F.3d 355 (11th Cir.1997), did not address whether appellee and cross-appellant, Lone Star Steaks, 1 and its mark LONE STAR STEAKS was likely to cause consumer confusion with LSS & S's LONE STAR CAFE mark. 2 After reconsidering LSS & S's argument, we are now convinced that the district court procedurally overlooked LSS & S's position. Likewise, it appears that we neglected to fully address the issue. Upon further review, we supplement our prior opinion and remand the case to the district court for a de novo consideration of whether or not continued use of both the LONE STAR STEAKS mark and the LONE STAR CAFE mark will likely cause consumer confusion.
Initially, the trademark dispute in this case centered around the marks LONE STAR STEAKHOUSE & SALOON and LONE STAR STEAKS. Indeed, the district court's analysis and our prior opinion focused on whether LSS & S's federally registered LONE STAR CAFE mark could be extended to offer priority and protection to LSS & S's LONE STAR STEAKHOUSE & SALOON mark. The district court rejected LSS & S's contention and consequently enjoined them from using its LONE STAR STEAKHOUSE & SALOON mark. We affirmed this portion of the district court's ruling and LSS & S's suggestion of rehearing does not challenge this decision. However, because the district court found that LSS & S was not using its LONE STAR CAFE mark as a service mark, it was unnecessary to consider whether Lone Star Steaks and its LONE STAR STEAKS mark was causing customer confusion with LSS & S's LONE STAR CAFE mark.
Thereafter, LSS & S petitioned the district court for permission to use its alleged superior LONE STAR CAFE mark. The district court granted LSS & S's petition and LSS & S eventually began using the LONE STAR CAFE mark in Georgia instead of the LONE STAR STEAKHOUSE & SALOON mark. Lone Star Steaks then filed a motion for summary judgment seeking a permanent injunction against LSS & S. At this point, both the district court and our subsequent panel opinion failed to realize the legal significance of LSS & S's use of the LONE STAR CAFE mark as a service mark. Without resolving whether the LONE STAR STEAKS mark infringed upon LSS & S's recent use of its LONE STAR CAFE mark, the district court granted Lone Star Steaks a permanent injunction.
By complying with the district court's preliminary injunction order and the clarification order authorizing the use of the LONE STAR CAFE mark, the facts relevant at the preliminary injunction stage had changed by the time of Lone Star Steaks' motion for summary judgment. Furthermore, while the district court resolved the infringement claims present during the preliminary injunction (between LONE STAR STEAKHOUSE & SALOON and LONE STAR STEAKS), it failed to determine the related claim of infringement between LONE STAR CAFE and LONE STAR STEAKS. This omission was erroneous. This Court has previously found that the resolution of one trademark infringement claim without regard for related claims of infringement is improper. SunAmerica Corp. v. Sun Life Assur. Co., 77 F.3d 1325, 1342 (11th Cir.1996). Pursuant to SunAmerica, when Lone Star Steaks filed its motion for summary judgment and since by this time LSS & S was using its LONE STAR CAFE mark, the district court should have considered the infringement issue concerning LONE STAR CAFE and LONE STAR STEAKS. To the extent our prior opinion overlooked this issue, we modify our opinion to reflect the analysis of the issues as required in SunAmerica and now turn our attention to whether the LONE STAR STEAKS mark might be infringing upon the...
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