Thursday, March 17, 2016

A generic post about trademark overclaiming

Miller’s Ale House, Inc. v. DCCM Restaurant Group, LLC, 2016 WL 1040005, No: 6:15-cv-1109-Orl-22TBS (M.D. Fla. Mar. 16, 2016)
Miller sued DCCM for false designation of origin/unfair competition under state and federal law. Miller’s operates approximately seventy sports bar restaurants throughout Florida and the United States, using a similar, but not always identical, sign on each. “Sometimes the sign appears with the name Miller’s in italics preceding a geographical prefix and followed by the phrase ‘ale house;’ and other times the sign omits “Miller’s” and contains only a geographical prefix and ‘ale house.’” Thus: “Miller’s ORLANDO ALE HOUSE,” or “ORLANDO ALE HOUSE,” generally but not always in red letters and not always in italics.
Brandon Ale House (from Miller)

Miller's Orlando Ale House

Miller's Atlanta Ale House

Orlando Ale House (from Miller)
DCCM’s sports bar restaurant, located in Davenport, Florida, is called Davenport’s Ale House, with a sign comprised of Davenport’s in italics preceding the phrase “ale house.”
Davenport's Ale House

Miller’s argued that the relevant public, central Florida, associated an italicized word followed by ALE HOUSE with Miller’s restaurants, regardless of the nature of the italicized word.
In  Ale House Mgmt, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137 (4th Cir. 2000), the Fourth Circuit concluded that Miller’s predecessor had no protectable interest in the phrase “ale house” because they are generic words. In Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359 (S.D. Fla. 2010), the court found that issue preclusion barred Miller’s claim based on “[geographic prefix] ALE HOUSE” because the Fourth Circuit had already determined that “ale house” is generic, and Miller’s had failed to present evidence showing that it had “recaptured” the generic term “ale house.” The Eleventh Circuit affirmed, emphasizing that “Miller’s still has no protectable interest in the words ‘ale house,’ ” nor any protectable trade dress in red letters on an outside sign.  Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th Cir. 2012).
Here, Miller argued that it wasn’t relitigating its trademark claims, but rather seeking protection against misuse of a generic term under the head of unfair competition.  (Now-Justice Ginsburg said this kind of claim was ok in Blinded American Veterans, but the judge here pointed out that Eleventh Circuit precedent controls.)  DCCM pointed out that this looked a lot like the prior litigation, and noted that Miller’s does not use italics consistently on its buildings, nor do any of its signs italicize the geographical prefix.
Font style wasn’t raised in previous litigation and wasn’t directly precluded, but summary judgment was warranted because of a lack of a genuine issue of material fact. The magistrate judge reasoned that Miller’s evidence, at most, could show confusion among consumers in central Florida, but didn’t show that the general public, outside of just central Florida, associated the font and style of the sign with Miller’s.
Adopting the magistrate’s recommendation, the district judge reasoned that courts in the Eleventh Circuit treat trademark infringement and false designation of origin identically, other than the presumptions afforded by registration.  Knights Armament Co. v. Optical Sys. Tech. Inc., 654 F.3d 1179 (11th Cir. 2011) (declining to consider claims for unfair competition and false designation of origin under §43(a)(1)(A) because the defendant did not have enforceable rights in a mark). Miller failed to distinguish its claims from trademark infringement claims; the only difference here from the previous Miller case was DCCM’s use of italics, but Miller conceded that it only occasionally used italics in its signage and didn’t do so for the geographical prefix. Thus, the false designation of origin claim was premised on nearly identical allegations as the trademark infringement claim, and Miller’s didn’t have enforceable rights in the relevant symbol.
Miller objected to the magistrate’s recommendation, arguing that the appropriate geographical area for the likelihood of consumer confusion element was central Florida, not nationwide. But without a mark in which there were rights, that issue was irrelevant.  The state law claims suffered the same fate.
Comment: I hope the court awards defendant its fees.  “Ale house” was born generic and there’s no good reason to allow claims over it to persist, even if there is some policy reason for holding out hope for formerly non-generic terms like SINGER for sewing machines.  Right now, Miller seems to believe that it’s worth harassing competing ale houses in the hope that it can deter enough of them to make a better case for having claimed the term.  The next suit will presumably be over the size and shape of the outside sign, also not previously litigated.  Miller would be better served by focusing on building up a brand in MILLER’S ALE HOUSE, if it can.

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