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Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc.

Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc.

United States Court of Appeals for the Sixth Circuit

December 1, 1981, Argued ; February 3, 1982, Decided

Nos. 81-3095, 81-3098

Opinion

 [***16]  [*644]   Marriott Corporation is the owner of the "Big Boy" trademark and service mark,  [***17]  which is used by a network of family restaurants around the country. The plaintiff, Frisch's Restaurants, Inc. (Frisch's), has the exclusive license from Marriott to use these marks in Ohio and currently operates eighty restaurants in Ohio under [**2]  the Big Boy trademark. One of the defendants, The Boury Corporation, operates the network of "Elby's Family Restaurants" in western Pennsylvania (five restaurants), northern West Virginia, referred to in the record as "the panhandle," (seven restaurants), and eastern Ohio (eight restaurants in six different cities). The Boury Corporation holds the exclusive right to use the Big Boy trademark in the panhandle of West Virginia and in most of western Pennsylvania. Prior to 1971, the Elby's Restaurants in eastern Ohio were authorized under a franchise agreement with Frisch's to use the Big Boy trademark, but that agreement was terminated at Elby's request in late 1971.

When the Ohio Elby's restaurants continued to use the Big Boy trademark after the franchise agreement was terminated, Frisch's sought and obtained a preliminary injunction from the West Virginia Supreme Court of Appeals in 1973, enjoining the Ohio Elby's organization from using the Big Boy trademark "in any manner whatsoever in connection with (Elby's) business operations within the State of Ohio." The Ohio Elby's restaurants have avoided using the Big Boy trademark in their restaurants and in Ohio advertising media since [**3]  that time. However, the present action by Frisch's challenges the spillover effects of Elby's  [*645]  West Virginia advertising utilizing the Big Boy trademark. This advertising reaches eastern Ohio consumers and allegedly creates the false impression that Big Boy products are available at the Ohio Elby's restaurants as well as Elby's West Virginia operations.

The Ohio and the West Virginia Elby's restaurants conduct joint advertising and promotional campaigns under the direction of the parent corporation. A major avenue of media advertisement is the Wheeling, West Virginia television station WTRF. Most of Elby's commercials on WTRF which advertise for the entire chain contain a pictorial representation of the Big Boy figure, 3 advertise "Big Boy" food items, or contain jingles which strongly identify all Elby's Family Restaurants with the Big Boy trademark. However, whenever a specific Ohio Elby's restaurant is advertised on WTRF or another West Virginia medium, no reference to the Big Boy trademark is made.

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670 F.2d 642 *; 1982 U.S. App. LEXIS 22123 **; 214 U.S.P.Q. (BNA) 15 ***

FRISCH'S RESTAURANTS, INC., Plaintiff-Appellee, Cross-Appellant, v. ELBY'S BIG BOY OF STEUBENVILLE, INC.; THE BOURY CORPORATION; ELBY'S FAMILY RESTAURANTS, INC.; ELBY'S COMMISSARY, INC.; GEORGE BOURY, ELLIS BOURY and DAVID CARR, Defendants-Appellants, Cross-Appellees

Prior History:  [**1]  ON APPEAL from the United States District Court for the Southern District of Ohio, Eastern Division.

Disposition:  The district court's order granting a preliminary injunction as to the television advertisements was affirmed. The court reversed on the issue of newspaper advertisements and remanded for entry of such preliminary injunction.

CORE TERMS

restaurants, advertising, trademark, likelihood of confusion, district court, consumers, preliminary injunction, products, Lanham Act, unfair competition, injunctive relief, factors, television, damaged, newspaper, licensing, commerce, chain, newspaper advertisement, false impression, media

Business & Corporate Compliance, Federal Unfair Competition Law, False Designation of Origin, Elements of False Designation of Origin, Trademark Law, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, General Overview, False Advertising, Lanham Act, Unfair Competition, Governments, Agriculture & Food, Distribution, Processing & Storage, Torts, Business Torts, Unfair Business Practices, International Trade Law, Remedies, Civil Procedure, Judgments, Relief From Judgments, Independent Actions, Likelihood of Confusion, Remedies, Equitable Relief, Similarity of Marks, Appearance, Meaning & Sound, Consumer Confusion, Circuit Court Factors, 6th Circuit Court, 9th Circuit Court, Factors for Determining Confusion, Intent of Defendant to Confuse, Surveys as Evidence of Confusion, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Particular Subject Matter, Names, Trademark Law, Conveyances, Licenses, Standing, Damages, Monetary Damages, Elements of False Advertising, Appeals, Standards of Review, Clearly Erroneous Review, De Novo Review, Injunctions, Preliminary & Temporary Injunctions, Preliminary Injunctions