Michael Caruso & Co. v. Estefan Enterprises

• Citation: 994 F.Supp. 1454
• Decision Date: 12 February 1998
• Docket Number: No. 97-2993-CIV-KING.,97-2993-CIV-KING.
• Parties: MICHAEL CARUSO & CO, INC., Plaintiff, v. ESTEFAN ENTERPRISES, INC. and Bongos Cuban Cafe, Inc., Defendants.
• Court: U.S. District Court — Southern District of Florida

994 F.Supp. 1454

MICHAEL CARUSO & CO, INC., Plaintiff, v. ESTEFAN ENTERPRISES, INC. and Bongos Cuban Cafe, Inc., Defendants.

No. 97-2993-CIV-KING.

United States District Court, S.D. Florida.

February 12, 1998.

COPYRIGHT MATERIAL OMITTED

Wilfredo A. Rodriguez, Holland & Knight, Miami, FL, Leslie S. Spitalney, Holland & Knight, Washington, DC, Gary S. Phillips, Beverly Hills, CA, David K. Friedland, Coral Gables, FL.

ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION

JAMES LAWRENCE KING, District Judge.

THIS CAUSE comes before the Court upon Plaintiff's Motion for Preliminary Injunction filed October 1, 1997. Plaintiff filed a response on December 10, 1997, and the Court held a hearing on the motions on January 8, 9, and 12, 1998.

Factual Background

Plaintiff is an eighty-six person company that designs and manufactures retail clothing under the brand name "Bongo." Defendants own and operate a "theme" restaurant/bar, specializing in Cuban cuisine, named "Bongos Cuban Cafe."

Plaintiff received its first trademark for "Bongo" in 1985. The trademark applied to clothing, primarily jeans, skirts, pants, shirts, jackets, vests, jump suits, and blouses. Since then, Plaintiff has received several other trademarks for the display of "Bongo" on different kinds of retail apparel. Plaintiff's signature product is a classic American blue jean, which it offers in a variety of designs and colors. Plaintiff's clothing is sold throughout the United States, as well as in some foreign countries. The vast majority of Plaintiff's products are marketed and sold to young women (also known as "juniors"). Plaintiff sells its products through department stores such as Sears, J.C. Penney, and Macy's and through smaller retail clothing stores such as Denim Works, Denim World, and Jeans Warehouse. Plaintiff advertises primarily through print advertisements in women's and teen fashion magazines and some television advertisements on the MTV music television network. Plaintiff's products display the word "Bongo" in a variety of type faces, often accompanied by the words "Jeans" and "Authentic" and the slogans "Always American Made," "Fine American Jeans," "Authentic American," and "An American Classic." Since the company's inception, Plaintiff has sold a total of approximately $1.5 billion in retail sales.

Defendants' 500 seat Cuban-theme restaurant opened for business on September 14, 1997, in Downtown Disney, Orlando. Downtown Disney is an entertainment-oriented complex of the Walt Disney World Resort, consisting of various "theme" restaurants and bars, a multiplex movie theater, gift and specialty stores, and other entertainment establishments. There are no other "Bongos Cuban Cafes" in existence. Defendants market their restaurant as a uniquely Cuban entity. This Cuban theme is emphasized by the restaurant's design, including the display of bongo drums on the furniture and decor, and the restaurant's menu, which is comprised of exclusively Cuban cuisine. In addition to cuisine, Defendants sell souvenir merchandise, including clothing (i.e. T-shirts, sweatshirts, and hats), in a gift shop adjoining the main dining area. Defendants also sell an array of non-clothing souvenir merchandise like mugs, black beans, cigars, ash trays, and drinking glasses. As of November 30, 1997, Defendants experienced total sales of $2,462,849.24. Of that amount, $167,640.00 (6.8% of total sales) is attributable to the sale of souvenir clothing items. Defendants' merchandise products display the word "Bongos" in large type in connection with three logos: (1) a man dressed in Cuban-style clothing playing bongo drums, (2) a woman dressed in Cuban-style clothing dancing and playing maracas, and (3) the silhouette of hands superimposed over both "O"s in BONGOS to convey the impression of hands playing bongo drums. The words "Cuban Cafe" appear on all the merchandise in smaller type directly under "Bongos."

Plaintiff filed suit in this Court on September 17, 1997, alleging: (1) trademark infringement in violation of the United States Trademark Act of 1946 (also known as the Lanham Act), 15 U.S.C. §§ 1051-1127 ("Lanham Act"); (2) unfair competition in violation of section 1125(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark dilution in violation of both section § 1125(c) of the Lanham Act, 15 U.S.C. § 1125(c) ("Federal Dilution Act"), and Fla.Stat. § 495.151 ("Florida Dilution Act"); and (4) common law unfair competition. Plaintiff now seeks to enjoin Defendants from using in any manner the mark "Bongos Cuban Cafe."

Legal Standard

To prevail on a motion for preliminary injunction, the plaintiff must establish that: (1) there is a substantial likelihood of success on the merits of the claims; (2) he will suffer irreparable harm in the absence of injunctive relief; (3) the threatened injury to the plaintiff outweighs any potential harm to the defendant as a result of the injunction; and (4) granting the injunction would not be adverse to the public interest. See Haitian Refugee Center, Inc. v. Nelson, 872 F.2d 1555, 1561-62 (11th Cir.1989), aff'd sub nom. McNary v. Haitian Refugee Center, 498 U.S. 479, 111 S.Ct. 888, 112 L.Ed.2d 1005 (1991). Because a preliminary injunction is a "drastic remedy," the plaintiff bears the burden to "clearly establish" each of the four elements. Cafe 207 v. St. Johns County, 989 F.2d 1136, 1137 (11th Cir.1993); see also Anheuser-Busch, Inc. v. A-B Distribs., Inc., 910 F.Supp. 587, 589 (M.D.Fla.1995). As this Court has previously stated, a preliminary injunction "is an extraordinary remedy, not available unless the plaintiff carries his burden of persuasion as to all of the four prerequisites. The primary justification for granting a preliminary injunction is to preserve the court's ability to render a meaningful decision after a trial on the merits." Tefel v. Reno, 972 F.Supp. 623, 633 (S.D.Fla.1997) (King, J.).

Analysis

At the outset, the Court observes that Plaintiff has requested truly far-reaching relief: the prohibition of Defendants' use in any manner of the mark "Bongos Cuban Cafe." Even if the Court were to find that the use of the mark "Bongos Cuban Cafe" in connection with Defendants' souvenir clothing and even non-clothing merchandise infringes upon Plaintiff's trademark, such a finding would not justify the clearly over broad remedy of enjoining Defendants from using the mark in any context. See Lever Bros. Co. v. United States, 981 F.2d 1330 (D.C.Cir.1993) (vacating injunction on grounds of overbreadth). Nonetheless, the Court will determine whether preliminary injunction of any scope is warranted by applying the four-part preliminary injunction test to the facts of this case.

I. SUBSTANTIAL LIKELIHOOD OF SUCCESS ON THE MERITS

A. Trademark Infringement and Unfair Competition

In order to show substantial likelihood of success on the merits of its trademark infringement and unfair competition claims under the Lanham Act and common law, Plaintiff must present compelling evidence that there is a likelihood that consumers will be confused about the relationship or affiliation between Plaintiff's products and Defendants' restaurant and merchandise. "Likelihood of confusion" means probable confusion rather than mere possible confusion. Shatel Corp. v. Mao Ta Lumber & Yacht Corp., 697 F.2d 1352, 1356 n. 2 (11th Cir.1983). The Eleventh Circuit has developed a seven factor test to determine whether there is a likelihood of confusion between two trademarks. The reviewing court must evaluate: (1) the strength of the plaintiff's mark, (2) the similarity of the parties' marks; (3) the similarity of the products or services the marks identify; (4) the similarity of the parties' retail outlets and purchasers; (5) the similarity of advertising media used; (6) the existence of actual confusion; and (7) the defendant's intent. See Dieter v. B & H Indus. of Southwest Fla., Inc., 880 F.2d 322 (11th Cir.1989); Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176 (11th Cir.1987); Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833 (11th Cir.1983). The Court will consider each factor in turn.

1. Strength of Plaintiff's Mark

"The primary indicator of trademark strength measures the logical correlation between a name and a product. If a seller of a product or service would naturally use a particular name, it is weakly protected." Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1182 (11th Cir.1985). The Court first observes that Plaintiff's mark is a common English word. The word "bongo" most commonly means "one of a pair of connected tuned drums that are played by beating with the hands." The American Heritage Dictionary 158 (2d. College ed.1985). A mark incorporating a common English word is inherently weaker than a mark consisting of fanciful and fictitious terms. See Dieter, 880 F.2d at 327 ("Generic terms represent the weaker end of the [trademark] spectrum, and arbitrary terms represent the stronger."); Sun Banks of Fla. v. Sun Fed. Sav. & Loan, 651 F.2d 311, 316 (5th Cir.1981)¹ (common English term is a weak mark); Alpha Indus., Inc. v. Alpha Tube & Shapes, Inc., 616 F.2d 440, 445-46 (9th Cir.1980) ("A `weak' mark is a mark that is a meaningful word in common usage or is merely a suggestive or descriptive trademark. A strong mark is entitled to a greater degree of protection than is a weak one, because of its unique usage."). The rationale underlying this principle is that courts should not grant the holder of a mark that consists of a common English word a monopoly on that term outside the user's field. See Major League Baseball Props., Inc. v. Sed Non Olet Denarius, Ltd., 817 F.Supp. 1103, 1119 (S.D.N.Y.1993).

Defendants respond that the fact that the term "bongo" is arbitrarily applied to retail clothing makes the mark stronger. Courts in this Circuit have held, however, that even arbitrarily applied common terms are of weaker trademark significance. In Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 260...