incontestable LIZZIE BORDEN registration + actual confusion insufficient to overcome weight of history, 1st Circuit rules

US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, No. 23-2000 (1^st Cir. Nov. 15, 2024)

The Lizzie Borden House “bears a storied history that originates with the still-unsolved murders — in 1892 — of Lizzie Borden’s father and stepmother.” Ghost Adventures “provides ghost tours and related hospitality services across the United States.” It owns a bed and breakfast operated out of the Lizzie Borden House featuring a museum, “ghost tours,” and kindred activities. 

bed & breakfast sign

Its success “depends in large part on the Lizzie Borden name and lore.” Ghost Adventures owns incontestable trademark registrations for both the name “Lizzie Borden” for hotel and restaurant services and for a realistic hatchet logo displaying a notched blade (a reference to the implement that allegedly killed Borden’s parents).

Ghost Adventures' registered logo

Miss Lizzie’s Coffee LLC recently opened a coffee shop next door to the Lizzie Borden House. You will not be surprised to learn that it, too, markets itself by reference to the Lizzie Borden saga. One sign says “Miss Lizzie’s Coffee” between a cup of coffee and a stylized bloody hatchet. A second sign advertises Miss Lizzie’s as “The Most Haunted Coffee Shop in the World!” “The hatchets on both signs include handles and dramatic blood splatters.”

2 hatchets and blood splatters, "The Most Haunted Coffee Shop in the World!"

Miss Lizzie's Coffee in Sweeney Todd-like font and a bloody hatchet

Some visitors have incorrectly assumed that the Lizzie Borden House and Miss Lizzie’s are affiliated or asked about whether such a relationship existed. Some guests of the Lizzie Borden House were frustrated to learn that they could not bring Miss Lizzie’s coffee on their tours of the Lizzie Borden House, having bought the coffee under the erroneous impression that the coffee shop was affiliated with the historical site. A Fall River city official called Ghost Adventures to discuss its “new business in the building next door named Miss Lizzie’s.”

Ghost Adventures sought to enjoin Miss Lizzie’s from using either the “Lizzie Borden” trademark or the hatchet logo in the coffee shop’s trade names, trade dress, and marketing materials.

The core problem here was causation. Ghost Adventures needed to show that Miss Lizzie’s used its mark in commerce in a way that caused confusion, not the Lizzie Borden mythos. The district court found that the hatchet displayed on Miss Lizzie’s signage was “not at all the hatchet trademarked by Ghost Adventures” nor even “a colorable imitation of it.” It continued: “Miss Lizzie’s mark associates its business with the historical story of Lizzie Borden, not the mark ‘Lizzie Borden’” that Ghost Adventures owns. Although “Ghost Adventures has an ‘incontestable’ trademark in ‘Lizzie Borden’ and its hatchet, Miss Lizzie’s is using neither the mark ‘Lizzie Borden’ nor the Ghost Adventures hatchet.” “Ghost Adventures has not demonstrated that its mark bears the strength which might give it the ‘secondary meaning’ reach that, for example, ‘Sam Adams Beer’ might claim regarding the historical figure Sam Adams.”

The court found the consumer confusion “limited” and caused mainly by physical proximity, their common but independent reliance on the shared Lizzie Borden mythos, and the tendency to associate services related to a historical site with the site itself, not by the similarity of the businesses’ marks. After all, “the same issues would arise if Miss Lizzie’s called its cafe ‘Forty Whacks Coffee’ and used a different image as its logo.”

The district court also noted that the parties’ services were different: “on one hand, sophisticated buyers who come from afar with tickets or reservations to experience the Lizzie Borden House; and the other, buyers seeking food or coffee.”

The parties also rely on different forms of advertising, and a sign on Miss Lizzie’s storefront explicitly disclaimed any relationship with the neighboring Lizzie Borden House. Such a disclaimer can “tip the scales to a finding of no likelihood of confusion and no infringement” where, as here, “the multi-factor analysis points to a low likelihood of confusion.”

disclaimer of affiliation or association in window

The court of appeals affirmed, noting, for example, that “Miss Lizzie’s hatchet spews blood, whereas Ghost Adventures’ is spotless. Indeed, it appears that the only similarity between the hatchet logos is that they both depict hatchets. The court, then, did not clearly err in finding that the hatchet logos are facially dissimilar.” Also, “the district court supportably found that Miss Lizzie’s reference to ‘Lizzie’ was to the lore of Lizzie Borden — which Ghost Adventures does not own — rather than to the mark ‘Lizzie Borden.’ Thus, the meaning associated with the name ‘Miss Lizzie’s Coffee’ is only incidentally similar to that of the ‘Lizzie Borden House.’” Ghost Adventures didn’t persuade the court of appeals that consumers would associate “Lizzie Borden” with its services rather than with Lizzie Borden herself.

Likewise, the district court permissibly viewed the parties’ differences as more important than their joint presence in the broad hospitality industry. “Ghost Adventures’ registration of the mark ‘Lizzie Borden’ did not prohibit other businesses in the hospitality industry from setting up shop in the vicinity of the Lizzie Borden House. Nor did it prohibit such businesses from marketing themselves by the use of Lizzie Borden’s story.”

What about actual confusion?

The relevant consumer confusion in a trademark infringement action is confusion caused by an infringing mark. Consumer confusion due to non-trademarked similarities between businesses or products does not indicate infringement. For example, if two outdoor Saturday farmers’ markets opened on the same block, causing wandering shoppers to think that they were affiliated, their proximity and similar business models, without more, would not be suggestive of trademark infringement. This basic principle tracks a core purpose of trademark law: to prevent a copycat from appropriating the goodwill of a brand by wrongly copying the brand’s mark. Because the district court supportably found that the source of consumer confusion was not the similarity of their marks, but something else altogether, the evidence of confusion relied upon by Ghost Adventures is of no consequence. (emphasis added)

Of course, this means that we have to be very sure what you can and can’t own as a mark! The foundational proposition of the district court and court of appeals here is “Ghost Adventures can’t own the Lizzie Borden mythos, even if consumers think they do.” I agree! But apparently a beer company might own the Sam Adams mythos, at least for sufficiently beer-related activities? This is of course related to the difference between owning a mark for something and confusion about affiliation, which is a very different animal.

What about intent? Ghost Adventures argued that the coffee shop “opened a location in immediate proximity to [Ghost Adventures’] business” and “intentionally used the word ‘Lizzie’ and a hatchet in [its] name and signage.” The district court supportably found that Miss Lizzie’s sought to benefit from the Lizzie Borden story in its own right, “not from the manner in which Ghost Adventures used that story.” It was not clear error to decide, “given the historical significance of the location,” neither Miss Lizzie’s acts alone nor those acts “considered in light of the entire record” evinced an intent to appropriate Ghost Adventures’ trademark.

What about incontestability? It didn’t affect the marketplace strength of the mark, which was not strong enough to displace consumers’ association with the real Lizzie Borden. 

The district court also pointed to a sign taped to the physical storefront that conspicuously reads: “Miss Lizzie’s Coffee is NOT ASSOCIATED, NOR AFFILIATED in any way with the Lizzie Borden Museum or Bed and Breakfast next door, nor any other business.” The district court supportably found that this clarification “further distinguish[ed] the businesses,” noting that effective disclaimers can “tip the scales to a finding of no likelihood of confusion and no infringement.”