Tana v. Dantanna's - 611 F.3d 767 (11th Cir. 2010)

Rule:

To establish a prima facie case of trademark infringement under § 43(a) (15 U.S.C.S. § 1125(a)) of the Lanham Act, a plaintiff must show (1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.

Facts:

Plaintiff common law mark owner sued defendant registered mark owner and associated entities for trademark infringement (15 U.S.C.S. § 1125(a)); deceptive trade practices under Georgia's Uniform Deceptive Trade Practices Act; fraud (O.C.G.A. § 23-2-55); and unauthorized appropriation of likeness. The dispute concerned restaurants with nearly identical names; the common law mark was associated with a restaurant in California and the registered mark was associated with two restaurants in Georgia. The district court granted summary judgment to the defendant registered mark owner. The plaintiff common law mark owner appealed. 

Issue:

Did the district court err in granting summary judgment to the defendant registered mark owner? 

Answer:

No.

Conclusion:

Inter alia, the appellate court held that there was minimal evidence of a likelihood of confusion between the restaurants aside from the initial name similarity and the fact that they both provided restaurant services. There were stark differences between the restaurants' cuisine and ambiance and virtually no evidence of confusion in advertising channels. No reasonable jury could find that defendants intended to trade on plaintiff's mark, and there was negligible evidence of actual confusion. Moreover, given the vast geographical distance between the markets used, likelihood of confusion was highly unlikely. So it was not error to grant summary judgment to defendants on the federal and state trademark infringement claims and state fraud claims. The court also upheld the grant of summary judgment on the appropriation-of-likeness claim in the absence of any evidence of an intentional appropriation of plaintiff's likeness.