Viacom Int'l, Inc. v. IJR Capital Invs., L.L.C. - 891 F.3d 178 (5th Cir. 2018)

Rule:

A trademark infringement action under Texas common law is analyzed in the same manner as a Lanham Act claim. For a plaintiff on prevail on its claims, it must show (1) that it owns a legally protectable mark and (2) that the defendant's use of the mark creates a likelihood of confusion as to source, affiliation, or sponsorship.

Facts:

Viacom International, Inc. ("Viacom") sued IJR Capital Investments, L.L.C. ("IJR") for infringing on its common law trademark of The Krusty Krab—a fictional restaurant in the popular "SpongeBob SquarePants" animated television series—after IJR took steps to open seafood restaurants using the same name. The District Court granted summary judgment to Viacom on its trademark infringement and unfair competition claims. IJR appealed, asserting that Viacom does not have a valid trademark for The Krusty Krab and that its seafood restaurants would not create a likelihood of confusion between the two marks. 

Issue:

Did IJR’s use of the mark infringe on Viacom’s trademark?

Answer:

Yes

Conclusion:

The Court concluded that Viacom’s mark had acquired distinctiveness through secondary meaning as a matter of law. The Court further concluded that Viacom met its burden of proving that IJR’s use of The Krusty Krab created a likelihood of confusion as to source, affiliation, or sponsorship. The digits of confusion - particularly the strength of Viacom’s mark, the identical spelling and pronunciation of the marks, both marks' identification of restaurants, and evidence of actual confusion - dictated that IJR’s use of the mark infringed on Viacom’s trademark.