TWTB, Inc. et al v. Rampick

Filing 40

ORDER granting in part and denying in part 17 Motion for Preliminary Injunction. Signed by Judge Nannette Jolivette Brown. (jrc)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
TWTB, INC., et al.

CIVIL ACTION

VERSUS

NO. 15-3399

BRUCE J. RAMPICK

SECTION: “G”(2)

ORDER
In this litigation, Plaintiffs TWTB, Inc. (“TWTB”) and Frank Eugene Raper (“Raper”)
(collectively “Plaintiffs”) allege that Defendant Bruce Rampick (“Rampick”) violated his fiduciary
duties as a director, officer, and shareholder of TWTB.1 LRSBR, LLC (“LRSBR”), which was
formed by Rampick, has filed a third party complaint against TWTB for trademark infringement.2
TWTB has filed a cross-claim against LRSBR alleging that LRSBR breached its trademark License
Agreement.3 Pending before the Court is LRSBR’s “Motion for Preliminary Injunction,”4 in which
LRSBR requests that the Court enjoin TWTB from using its registered and unregistered trademarks
and seeks attorneys’ fees. Having reviewed the motion, the memoranda in support, the memorandum
in opposition, the evidence, and the applicable law, the Court will grant the motion in part and deny
it in part.

1

Rec. Doc. 1.

2

Rec. Doc. 10.

3

Rec. Doc. 18.

4

Rec. Doc. 17.

I. Background
A.

Factual Background
In their complaint, Plaintiffs allege that TWTB was lawfully created on or about September

17, 1992.5 TWTB is 50.5% owned by Rampick, 24.75% owned by Raper, and 24.75% owned by the
Joseph E. and Janice V. Anthony Trust (“Anthony).”6 The primary business purpose of the creation
of TWTB was to create an ongoing restaurant and bar establishment known as “Lucy’s Retired
Surfer’s Bar & Restaurant,” located at 701 Tchoupitoulas Street in New Orleans, Louisiana.7 In or
about June 2012, TWTB adopted its current by-laws and the Shareholders’ Agreement.8 At that time,
Rampick was the president of TWTB, as well as a director and shareholder.9 TWTB also entered
into a trademark License Agreement in June 2012 with LRSBR, pursuant to which LRSBR licensed
TWTB to use trademarks owned by LRSBR, including “the federally registered trademarks ‘Retired
Surfers Bar and Restaurant’ and ‘Salt Water Wash Only’ and all other tradenames, trademarks,
service marks, marks or terms . . . owned by Licensor its successors and assigns.”10
Plaintiffs allege that Raper was notified in or about October or November 2014 of alleged
violations of Rampick’s fiduciary duties to TWTB and that an investigation was undertaken.11
Plaintiffs allege that on January 11, 2015, based upon the findings of the investigation, it was

5

Rec. Doc. 1 at p. 2.

6

Rec. Doc. 10 at p. 11; LRSBR Ex. 14.

7

Rec. Doc. 1 at p. 3.

8

Id. at p. 2.

9

Id.

10

Rec. Doc. 10 at p. 7.

11

Rec. Doc. 1 at pp. 3–4.

2

determined by the Board of Directors that Rampick had violated his fiduciary duties to TWTB and
that those determinations gave rise to “Just Cause,” as defined in the by-laws, to remove Rampick
from his office as President and remove him from the Board of Directors.12
On May 26, 2015, LRSBR allegedly notified TWTB, by letter, of at least four material
breaches of the License Agreement, pursuant to which TWTB had 30 days to cure the alleged
breaches.13 On June 11, 2015, counsel for TWTB replied to the letter.14 LRSBR alleges that on
August 24, 2015, LRSBR terminated the License Agreement “due to TWTB’s failure to cure the
material breaches of the Agreement identified in the May 26 letter.”15 LRSBR contends that despite
the termination of the License Agreement, TWTB continues to use the trademarks owned by
LRSBR.16
B.

Procedural Background
On August 11, 2015, TWTB and Raper filed a complaint against Rampick, alleging, inter

alia, that Rampick stole money and other assets from TWTB.17 On September 25, 2015, LRSBR
moved for leave to intervene, which was granted on October 2, 2015.18 LRSBR filed its third party
complaint alleging trademark infringement against TWTB on October 2, 2015.19 On November 6,

12

Id. at pp. 4–5.

13

Rec. Doc. 10 at p. 7.

14

Id.

15

Id. at p. 8.

16

Id. at p. 10.

17

Rec. Doc. 1.

18

Rec. Doc. 8; Rec. Doc. 9.

19

Rec. Doc. 10.

3

2015, TWTB filed an answer and cross-claim against LRSBR for breach of contract, alleging that
LRSBR had committed a breach of the trademark License Agreement.20
LRSBR filed the instant motion on October 16, 2015.21 TWTB filed an opposition on
November 17, 2015.22 With leave of court, LRSBR filed a reply on November 23, 2015.23 The Court
held an evidentiary hearing on December 8, 2015.24
II. Parties’ Arguments
A.

LRSBR’s Arguments in Support of Preliminary Injunctive Relief and Attorneys’ Fees
LRSBR moves for (1) a preliminary injunction enjoining TWTB “from further infringement

of the Lucy’s trademarks” and (2) reasonable attorneys’ fees and costs incurred in the preparation
and filing of their motion.25 LRSBR contends that it meets all four elements required for a
preliminary injunction.26
First, LRSBR contends that there is a substantial likelihood that it will succeed on its
trademark infringement claims against TWTB concerning: (1) infringement of its registered
trademarks; and (2) infringement of the unregistered “Lucy’s” mark and TWTB’s unregistered surfer
bar trade dress.27 LRSBR essentially argues that: (1) TWTB’s use of the word “Lucy’s” constitutes

20

Rec. Doc. 18 at p. 34.

21

Rec. Doc. 17.

22

Rec. Doc. 22.

23

Rec. Doc. 30.

24

Rec. Doc. 27.

25

Rec. Doc. 17.

26

Rec. Doc. 17-2 at p. 6.

27

Id. at p. 14.

4

trademark infringement of LRSBR’s registered trademarks; (2) TWTB’s use of the word “Lucy’s”
constitutes trademark infringement because LRSBR has a valid unregistered trademark in the word
“Lucy’s”; and (3) TWTB’s use of the surfer bar trade dress constitutes trade dress infringement.
Second, LRSBR asserts that TWTB is causing injuries that cannot be fully redressed by
money damages because TWTB is damaging the goodwill in the Lucy’s marks and preventing
LRSBR from making use of the marks.28 Third, LRSBR contends that the balance of harms is
overwhelmingly in its favor because “an injunction will only force TWTB to do what both
trademark law and the License Agreement require.”29 Fourth, LRSBR avers that TWTB is confusing
consumers and an injunction that stops such confusion is in the public interest.30
LRSBR also moves for attorneys’ fees and costs, asserting that under the Federal Trademark
Act, a court may award reasonable attorneys’ fees in exceptional cases.31 LRSBR contends that
TWTB is willfully infringing the Lucy’s marks and has effectively stolen the Lucy’s brand, and
therefore LRSBR is entitled to an award of attorney’s fees and costs.32
B.

TWTB’s Arguments in Opposition to Preliminary Injunctive Relief and Attorneys’ Fees
TWTB agrees that in order to succeed on its motion for a preliminary injunction, LRSBR

must prove the four elements addressed by LRSBR.33 Citing the Fifth Circuit in Lake Charles

28

Id.

29

Id.

30

Id.

31

Id. at p. 26.

32

Id.

33

Rec. Doc. 22 at p. 7 (citing Speaks v. Kruse, 445 F.3d 396, 399–400 (5th Cir. 2006)).

5

Diesel, Inc. v. General Motors Corp.,34 TWTB contends that a “preliminary injunction is an
extraordinary remedy which should not be granted unless the party seeking it has ‘clearly carried
the burden of persuasion’ on all four requirements.”35
First, TWTB contends that LRSBR cannot show that it has a substantial likelihood of success
on the merits.36 TWTB asserts that although LRSBR owns its registered trademarks, it does not own
any trade dress, nor does it own the word “Lucy’s.”37 Furthermore, TWTB asserts that LRSBR
cannot show that there is a likelihood of confusion between LRSBR’s marks and the phrases and
images utilized by TWTB, in part, because “[t]here is no evidence that LRSBR and TWTB are
actually in competition.”38
Second, in opposition to LRSBR’s claim that there is a substantial threat of irreparable
injury, TWTB asserts that “[a]n injunction is a harsh, dramatic, and extraordinary remedy, and
should only issue where the party seeking it is threatened with irreparable lo[s]s of injury without
adequate remedy at law.”39 TWTB contends that LRSBR has offered no evidence to support its
sweeping statements that LRSBR is damaging the goodwill associated with LRSBR’s trademarks.40

34

328 F.3d 192, 195–96 (5th Cir. 2003).

35

Rec. Doc. 22 at p. 7.

36

Id.

37

Id. at p. 8.

38

Id. at pp. 16–20.

39

Id. at p. 21 (quoting New Orleans City v. BellSouth Telecomms., Inc., 728 F. Supp. 2d 834, 838 (E.D. La.
July 26, 2010) (Fallon, J.)).
40

Id.

6

Third, turning to the weighing of the harms, TWTB asserts that the damage that it would
suffer if the Court were to grant LRSBR’s request would be “truly catastrophic.”41 TWTB avers that
its lease requires it to operate a restaurant and bar using the name “Lucy’s” and if it could no longer
use that name, the landlord could allege that it is in default of its obligations under the lease.42
Fourth, TWTB asserts that an injunction will disserve the public interest as it will “restrict free trade
in Louisiana and will essentially eliminate TWTB’s ability to do business, despite the fact that
TWTB has undertaken in good faith a tremendous effort and cost to ensure that it in no way violates
any of LRSBR’s trademarks.”43
TWTB also contends that in the event that the Court finds that LRSBR is entitled to
injunctive relief, LRSBR’s motion for attorneys’ fees and costs should be denied because the
evidence shows that TWTB has made “every effort not to infringe on LRSBR’s trademarks” and
therefore the case cannot be said to be exceptional.44
C.

Evidentiary Hearing Testimony
In support of its motion for a preliminary injunction, LRSBR called as witnesses: (1) Gary

Wollerman (“Wollerman”), an individual with over 40 years of experience in the New Orleans
restaurant business; (2) Defendant Bruce Rampick; (3) Sarah Campbell (“Campbell”), former events
manager and general manager of the Lucy’s Retired Surfer’s Bar & Restaurant in New Orleans; (4)
Dave Dillen (“Dillen”), another former general manager of the Lucy’s Retired Surfer’s Bar &

41

Id.

42

Id. at pp. 22–23.

43

Id. at pp. 23–24.

44

Id. at p. 24.

7

Restaurant in New Orleans; and (5) Virginia Saussy (“Saussy”), a marketing consultant who was
previously retained by Rampick to work with the Lucy’s Retired Surfer’s Bar & Restaurant
business.45
In opposition, TWTB called as witnesses: (1) Plaintiff Frank Eugene Raper; and (2) Deborah
Schumacher (“Schumacher”), the general manager at Lucy’s who was responsible for removing any
LRSBR-owned federally registered trademarks from the business.46
III. Preliminary Injunction
A.

Standard for Preliminary Injunction
A preliminary injunction is an “extraordinary remedy which should not be granted unless

the party seeking it has ‘clearly carried the burden of persuasion’” on all required elements.47 Four
elements must be proven before a court will issue a preliminary injunction: (1) a substantial
likelihood of success on the merits; (2) a substantial threat of irreparable harm if the injunction is
denied; (3) the threatened injury to the movant outweighs the injury to the nonmovant; and (4)
granting the injunction will not disserve the public interest.48 If the movant fails to meet its burden
regarding any one of the necessary elements, a court need not address the other elements necessary
for granting a preliminary injunction.49 At all times, the burden of persuasion remains on the movant
45

Tr. at p. 2.

46

Id.

47

Lake Charles Diesel, Inc. v. Gen. Motors Corp., 328 F.3d 192, 196 (5th Cir. 2003) (quoting Miss. Power
& Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th Cir. 1985)); see also Sugar Busters LLC v. Brennan,
177 F.3d 258, 265 (5th Cir. 1999).
48

Lake Charles Diesel, 328 F.3d at 195–96 (citing Canal Auth. v. Callaway, 489 F.2d 567, 572 (5th Cir.

1974)).
49

See Roho, Inc. v. Marquis, 902 F.2d 356, 361 (5th Cir. 1990) (declining to address the remaining elements
necessary to obtain a preliminary injunction after finding that plaintiff failed to show a substantial likelihood of success
on the merits); see also Barton v. Huerta, 613 F. App’x 426, 427 (5th Cir. 2015) (“[F]ailure to succeed one any on of

8

as to each of these four elements.50 Whether to grant or to deny a preliminary injunction is within
the discretion of the trial court,51 but “[t]he decision to grant a preliminary injunction is to be treated
as the exception rather than the rule.”52
B.

Objections to Testimony
As an initial matter, the Court notes that during the evidentiary hearing, TWTB moved to

strike the testimony of Gary Wollerman and objected to the testimony of Virginia Saussy, on the
grounds that LRSBR had not complied with the requirements of Federal Rule of Civil Procedure 26
and therefore neither of the witnesses could be offered as experts.53 In opposition, LRSBR asserted
that TWTB had notice that Wollerman and Saussy would be offered as experts because both
witnesses were referred to as experts in LRSBR’s briefs.54
1.

Applicable Law

Federal Rule of Civil Procedure 26 requires parties to disclose the identity of any witness
that it may use at trial to present expert opinion evidence under Federal Rule of Evidence 702, 703,
or 705. Rule 26 requires that “[u]nless otherwise stipulated or ordered by the court, this disclosure
must be accompanied by a written report–prepared and signed by the witness–if the witness is one
retained or specially employed to provide expert testimony in the case or one whose duties as the

the elements results in a denial of injunctive relief.”).
50

Callaway, 489 F.2d at 573 (vacating an injunction where the district court improperly placed the burden of
persuasion on the defendants to prove the injunction should not be granted, rather than requiring plaintiffs to carry their
burden).
51

Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386 (5th Cir. 1984).

52

Miss. Power & Light, 760 F.2d at 621.

53

Tr. at pp. 28, 38, 140–41.

54

Id. at pp. 30–31.

9

party’s employee regularly involve giving expert testimony.”55 If the witness is not required to
provide a written report, the disclosure must state the subject matter on which the witness is
expected to present evidence as well as provide a summary of the facts and opinions to which the
witness is expected to testify.56 Rule 26 states that “[a]bsent a stipulation or a court order,” expert
testimony disclosures must be made “at least 90 days before the date set for trial or for the case to
be ready for trial.”57
2.

Analysis

During the evidentiary hearing, the Court limited Wollerman’s testimony to his own personal
views and experience because LRSBR had not made any expert disclosures.58 The extent of
Wollerman’s testimony was that extensive work and effort went into the creation of the brand for
Wollerman’s own restaurant, and that Wollerman had visited “Lucy’s” in the past week and it
looked exactly the same as he had remembered it from previous visits.59 Wollerman was not
permitted to testify as an expert and offered no expert opinion testimony. Accordingly, because
TWTB sought to exclude expert testimony and no such testimony was proffered, the Court denies
TWTB’s motion to strike Wollerman’s testimony. TWTB also objected to Wollerman’s testimony
regarding his own restaurant’s brand development as irrelevant.60 The Court allowed Wollerman to

55

Fed. R. Civ. P. 26(2)(B).

56

Fed. R. Civ. P. 26(2)(C).

57

Fed. R. Civ. P. 26(2)(D).

58

Tr. at p. 33.

59

Id. at pp. 37–38.

60

Id. at pp. 36–37.

10

testify on the subject and asserted that it would assess the relevance at the conclusion.61 Having
considered the testimony, the Court finds that it need not rule on this matter as the Court does not
rely upon this testimony in ruling on the instant motion.
TWTB also objected to Virginia Saussy testifying as an expert witness on the grounds that
LRSBR had not complied with the requirements of Federal Rule of Civil Procedure 26 .62 The Court
ruled during the evidentiary hearing that Saussy would not be permitted to testify as an expert, but
stated that the Court would allow Saussy to testify as a lay witness and would decide later how much
of her testimony to admit.63 Upon reviewing the testimony of Virginia Saussy, the Court finds that
the vast majority of her testimony was based upon her personal knowledge and experience working
with the Lucy’s Retired Surfer’s Bar & Restaurant brand. The Court sustained an objection to a
question regarding what a customer would think looking at a review on Yelp.64 Although Saussy
testified at one point that a Facebook user was confused about whether “Lucy’s” is the same
restaurant as “Lucy’s Retired Surfer’s Bar & Restaurant,” the Court gives this testimony no weight.
Therefore, with the exception of Saussy’s answer to the question about the Facebook user, the Court
will consider Saussy’s testimony. The Court now turns to whether LRSBR has demonstrated a
substantial likelihood of success on the merits of its trademark infringement claims.

61

Id. at p. 37.

62

Id. at p. 140–41.

63

Id.

64

Id. at pp. 156–57.

11

C.

Substantial Likelihood of Success on the Merits
LRSBR essentially argues that: (1) TWTB’s use of the word “Lucy’s” constitutes trademark

infringement of LRSBR’s registered trademarks; (2) TWTB’s use of the word “Lucy’s” constitutes
trademark infringement because LRSBR has a valid unregistered trademark in the word “Lucy’s”;
and (3) TWTB’s use of the surfer bar trade dress constitutes trade dress infringement. The Court will
address each of these arguments in turn.
1.

Trademark Infringement Claim Regarding the Registered Trademarks

Trademark infringement claims are governed by the Lanham Act, 15 U.S.C. § 1501 et seq.
The Lanham Act defines “trademark,” in relevant part, as:
any word, name, symbol, or device, or any combination thereof . . . used by a person
. . . to identify and distinguish his or her goods, including a unique product, from
those manufactured or sold by others and to indicate the source of the goods, even
if that source is unknown.65
In order to succeed on a trademark infringement claim, a plaintiff must show: (1) that it possesses
valid trademarks; and (2) that another party’s use of the marks “creates a likelihood of confusion as
to [the] source, affiliation, or sponsorship.”66
Registration of a trademark with the United States Patent and Trademark Office constitutes
“prima facie evidence of the validity of the registered mark and of the registration of the mark, of
the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in the certificate . . . .”67 TWTB

65

15 U.S.C. § 1127.

66

Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015).

67

15 U.S.C. § 1057.

12

does not dispute the validity of LRSBR’s registered trademarks.68 These federally registered
trademarks are: “LUCY’S RETIRED SURFER’S BAR & RESTAURANT,” “SALT WATER
WASH ONLY,” “RETIRED SURFERS BAR & RESTAURANT,” a design consisting of the word
“Lucy’s” in script above a silhouette of a surfboard and the words “RETIRED SURFERS BAR &
RESTAURANT,” as well as a “sailfish” logo.69 Therefore, in order for LRSBR to succeed on its
trademark infringement claim regarding its registered trademarks, it need only prove the second
prong, that TWTB’s use of the marks “creates a likelihood of confusion as to [the] source,
affiliation, or sponsorship” of the restaurant’s goods or services.70 “A former licensee cannot mislead
the public into believing that its affiliation continues once the licensing arrangement has ceased.”71
The Fifth Circuit has enumerated eight “digits of confusion” to be considered in determining
whether the use of a mark creates a likelihood of confusion: “(1) the type of trademark allegedly
infringed[;] (2) the similarity between the two marks[;] (3) the similarity of the products or
services[;] (4) the identity of the retail outlets and purchasers [;] (5) the identity of the advertising
media utilized[;] (6) the defendant’s intent[;] [] (7) any evidence of actual confusion[;] . . . [and] (8)
the degree of care exercised by potential purchasers.”72 No single factor is dispositive and proof of

68

Rec. Doc. 22 at p. 9.

69

LRSBR Exs. 9–13.

70

Nola Spice Designs, L.L.C., 783 F.3d at 536.

71

Prof’l Golfers Ass’n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 670 (5th Cir. 1975).

72

Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012) (citations omitted).
TWTB’s reliance upon the Eastern District of Louisiana case from 1996, Acme Refrigeration Supplies, Inc. v. Acme
Refrigeration of Baton Rouge, is misplaced. 961 F. Supp. 936, 938 (E.D. La. 1996) (Fallon, J.)). More recent case law
from the Fifth Circuit instructs that there are more than four factors to be considered and not all four factors are necessary
in order to find a likelihood of confusion. Nat’l Bus. Forms & Printing, Inc., 671 F.3d at 532.

13

actual confusion is not necessary.73 A court need not even find that a majority of the factors are met
in order to find that there is a likelihood of confusion.74
LRSBR does not specifically argue how these factors support its trademark infringement
claim regarding its federally registered trademarks. Instead, LRSBR performs a general analysis of
these factors, arguing that all of TWTB’s uses of LRSBR’s marks, both registered and unregistered,
create a likelihood of confusion.75 In support of its argument that there is a likelihood of confusion
with LRSBR’s registered trademarks, LRSBR also analogizes to cases from other circuits where
courts found a likelihood of confusion following the termination of franchise agreements.76 LRSBR
asserts that in those cases, the fact that the parties were former licensees made confusion more
likely.77 LRSBR also contends that the fact that TWTB is trying to trade on the goodwill of the
Lucy’s mark, alone, is enough to make confusion likely.78 Upon reviewing the evidence presented
during the hearing and the arguments put forth in the briefs, the Court is able to discern whether
evidence has been presented to support these factors for LRSBR’s trademark infringement claim
regarding its registered trademarks. As LRSBR does not make any argument that there is a
likelihood of confusion between TWTB’s surfer bar trade dress and its federally registered
trademarks, the Court focuses on TWTB’s use of the word “Lucy’s” as the potential trademark

73

Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1122 n.9 (5th Cir. 1991).

74

Armco, Inc. v. Armco Burglar Alarm Co., Inc., 693 F.2d 1155, 1159 (5th Cir. 1982).

75

Rec. Doc. 17-2 at pp. 17–20.

76

Rec. Doc. 33 at pp. 3–4

77

Id. (citing Howard Johnson Co. v. Khimani, 892 F.2d 1512, 1517 (11th Cir. 1990); Century 21 Real Estate
Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988)).
78
Id. at p. 5 (citing Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d
465, 481 (5th Cir. 2008)).

14

infringement of LRSBR’s registered trademarks. The Court now turns to the evidence presented at
the evidentiary hearing regarding the factors of confusion.
a.

Type of Trademark

The first factor, the type of mark, “refers to the strength of the mark.”79 In evaluating this
factor, courts look to the distinctiveness of a mark and third-party use of that mark.80 In order to
assess the distinctiveness of a word mark, the Fifth Circuit looks to whether the mark is: (1) generic;
(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.81 In evaluating third-party use, “the trier
of fact looks at all third party use, not just use in the same industry, to determine whether a mark is
a ‘weak’ or a ‘strong’ mark.”82
LRSBR simply asserts that “[t]he Lucy’s marks are inherently distinctive and well-known
in the New Orleans market.”83 LRSBR does not attempt to categorize any of its federally registered
trademarks in terms of their distinctiveness. Here, the mark that is most similar to TWTB’s use of
the word “Lucy’s” is LRSBR’s federally registered trademark “Lucy’s Retired Surfer’s Bar &
Restaurant.”84 The Fifth Circuit has explained that a suggestive mark is one that “subtly connotes
something about the service or product.”85 In Soweco, Inc. v. Shell Oil Co., the Fifth Circuit gave

79

Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 201 (5th Cir. 1998).

80

Sun Banks of Fla., Inc. v . Sun Fed. Sav. and Loan Ass’n, 651 F.2d 311, 315–16 (5th Cir. 1981).

81

Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 537 (5th Cir. 2015).

82

Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 848 n.24
(5th Cir. 1990).
83

Rec. Doc. 17-2 at pp. 18–19 (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th
Cir. 1983); Quantum Fitness Corp. v. Quantum Lifestyle Ctrs. L.L.C., 83 F. Supp. 2d 810, 818 (S.D. Tex. 1999)).
84

LRSBR Ex. 11.

85

Sun Banks of Fla., Inc., 651 F.2d at 315.

15

the example that the term “Penguin” would be suggestive if used as a trademark for refrigerators.86
The Court finds that this mark, “Lucy’s Retired Surfer’s Bar & Restaurant” relays information to
the consumer both that it is a bar and restaurant and that the consumer might expect a “laid-back
easy-going surf bar by the decor[] [and] by the attitude.”87 Accordingly, the Court finds that
LRSBR’s federally registered trademark “Lucy’s Retired Surfer’s Bar & Restaurant” is a suggestive
mark which places it in the middle of the spectrum of distinctiveness.88
In evaluating the strength of a mark, however, courts also evaluate third-party use of the
mark.89 Neither party presented any evidence of any third-party use of any of LRSBR’s registered
trademarks aside from the alleged uses by TWTB. Furthermore, at the evidentiary hearing, Rampick
testified that he had founded Lucy’s Retired Surfer’s Bar & Restaurant in New York City in 1984
and the name “Lucy’s Retired Surfer’s Bar & Restaurant” had been in use ever since.90 Rampick
further testified that the name had been used at the business’ New York City locations, New Orleans
locations, Austin, Texas location, Costa Rica location, as well as at other locations throughout
Louisiana over the years.91 Therefore, the Court finds that “Lucy’s Retired Surfer’s Bar &
Restaurant” is a moderately strong mark.

86

617 F.2d 1178, 1184 (5th Cir. 1980).

87

Tr. at p. 133.

88

See Sun Banks of Fla., Inc., 651 F.2d at 315 (“A strong mark is usually fictitious, arbitrary or fanciful and
is generally inherently distinctive.”).
89

Id. at 315–16.

90

Tr. at p. 47.

91

Id. at pp. 71–76.

16

b.

Similarity Between the Two Marks

LRSBR’s federally registered trademark “Lucy’s Retired Surfer’s Bar & Restaurant”
contains “standard characters without claim to any particular font, style, size, or color.”92 Another
federally registered trademark owned by LRSBR is an image of the word “‘Lucy’s’ in script above
a silhouette of a surfboard and the words ‘Retired Surfers Bar & Restaurant’ below the surfboard.”93
It is undisputed that TWTB is now using the word “Lucy’s” alone as the name of its business.
Evidence was presented through numerous witnesses at the evidentiary hearing that the word
“Lucy’s” was the dominant term in the registered trademark and was commonly used by itself. Sarah
Campbell, former events manager and former acting general manager of Lucy’s Retired Surfer’s Bar
& Restaurant, testified that customers identified the restaurant as “Lucy’s” or “that surfer bar over
on Tchoupitoulas.”94 David Dillen, who has been involved in the business’ New Orleans, Austin,
Texas, Costa Rica, and Mandeville, Louisiana locations, testified that the customers called the
business “Lucy’s.”95 Rampick testified that customers at all of the businesses he had opened with
the name “Lucy’s Retired Surfer’s Bar & Restaurant” had called the business “Lucy’s.”96 Saussy
testified that in March 2014, Lucy’s Retired Surfer’s Bar & Restaurant started using the hashtag
“lucysnola” in its posts on social media, but that customers had been using this hashtag on their own

92

LRSBR Ex. 11.

93

LRSBR Ex. 9.

94

Tr. at p. 119.

95

Id. at pp. 133–34.

96

Id. at pp. 73–74.

17

before the restaurant made it an official promotion.97 Even Raper testified that, when he became
involved in the business in 1994 or 1995, the name of the business was “Lucy’s.”98
The fact that the name “Lucy’s” was used on its own prior to the termination of the License
Agreement is further evidenced by photographs of the building demonstrating that the word
“Lucy’s” alone is painted on two sides of the building in large, red block letters.99 Saussy testified
that the building has had the word “Lucy’s” painted on the outside of the building for “many
years.”100 Evidence was also presented that inside the restaurant, the word “Lucy’s” alone appeared
on chalkboards and on a mural in the courtyard of the restaurant that had been there for more than
fifteen years.101 Accordingly, considering the evidence before it, the Court finds that there is a strong
similarity between TWTB’s use of the word “Lucy’s” and LRSBR’s registered trademark, “Lucy’s
Retired Surfer’s Bar & Restaurant,” and therefore this factor weighs in favor of a finding that there
is a likelihood of confusion.
c.

Similarity of the Products or Services

TWTB argues that there can be no likelihood of confusion because LRSBR is a licensing
company while TWTB runs a restaurant and therefore there is no evidence that TWTB and LRSBR
are actually in competition.102 The Court does not find this argument persuasive. In Conan

97

Id. at p. 166. A hashtag is “a word or phrase preceded by the symbol # that classifies or categorizes the
accompanying text (such as a tweet).” Hashtag, Merriam-Webster Dictionary,
http://www.merriam-webster.com/dictionary/hashtag.
98

Id. at p. 223.

99

LRSBR Ex. 29.

100

Tr. at p. 149.

101

Id. at pp. 57, 61.

102

Rec. Doc. 22 at p. 20.

18

Properties, Inc. v. Conans Pizza, Inc., the Fifth Circuit addressed an argument by Conans Pizza that
no reasonable person could have believed that its restaurants were related to Conan Properties, Inc.’s
CONAN THE BARBARIAN since the products and services each provided were different.103 The
Fifth Circuit found that “[a]lthough CPI never licensed any entity to use its mark in connection with
restaurant services, ordinary consumers may well believe that Conans was in fact licensed by
CPI.”104 Therefore, the Court finds that the relevant analysis is not necessarily whether the products
and services of the company that owns the mark and the company that uses the marks are the same,
but whether ordinary consumers who patronize the restaurant are “likely to believe that the
restaurant[] [is] in some way licensed by or affiliated with” LRSBR.105 In this case, TWTB had a
license to operate a restaurant and bar using LRSBR’s trademarks; however, that license was
terminated. Now, TWTB continues to operate a restaurant and bar with the name “Lucy’s.”
Therefore, the relevant analysis is whether ordinary consumers believe that the restaurant and bar
is still licensed by or affiliated with LRSBR.
During the duration of the License Agreement, the trademark “Lucy’s Retired Surfer’s Bar
& Restaurant” was being used to advertise a restaurant and bar with a surfer theme. Now, TWTB
is using the word “Lucy’s” to advertise a restaurant and bar with a surfer theme. Accordingly, the
Court finds that this factor weighs strongly in favor of a finding that there is a likelihood of
confusion.

103

752 F.2d 145, 150 (5th Cir. 1985).

104

Id.

105

Id.

19

d.

Identity of the Retail Outlets and Purchasers

It is undisputed that TWTB’s business operates out of the same physical location as it did
when it was licensed to use LRSBR’s trademarks. Therefore, the Court finds that this factor also
weighs strongly in favor of a finding that there is a likelihood of confusion.
e.

Identity of Advertising Media Utilized

“The use of a mark in advertising is highly probative of whether the mark creates a
likelihood of confusion in relation to another mark.”106 LRSBR presented evidence that TWTB
continues to use the same social media accounts, including the same Facebook account, Instagram
account, Yelp web page, and TripAdvisor web page as it did when it was licensed by LRSBR to use
the trademarks.107 Accordingly, the Court finds that this factor also weighs strongly in favor of a
finding that there is a likelihood of confusion.
f.

Defendant’s Intent

LRSBR also presented evidence that TWTB is intending to trade on the goodwill of the
“Lucy’s” mark. Saussy testified regarding an Instagram post that was posted following the
termination of the License Agreement.108 The post shows the new logo used by TWTB, the word
“Lucy’s” in red block letters with a blue outline and a blue wave underneath the word. Underneath
the photo are the words “Lucy’s #neworleans has a new look . . . whatcha think? #lucysnola.”109 The
Instagram post indicates that the business is simply striving for a “new look,” not that it is no longer

106

Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 197 (5th Cir. 1998).

107

Tr. at pp. 149, 151, 158–59, 161.

108

Id. at p. 149.

109

LRSBR Ex. 60.

20

a licensed “Lucy’s Retired Surfer’s Bar & Restaurant.” Saussy also testified that during the time that
she was retained by Rampick, the business had begun using the hashtag “lucysnola,” a practice that
is clearly being continued by TWTB.110 Saussy additionally testified that the social media accounts
that she had managed for the business are the same accounts that are currently being used by TWTB
and contain reviews from before the License Agreement was terminated, although the name being
advertised is no longer “Lucy’s Retired Surfer’s Bar & Restaurant” but has been changed to
“Lucy’s.”111
The Court therefore finds that TWTB does intend to trade on the goodwill of the marks in
its use of the word “Lucy’s.” Although TWTB presented testimony of the efforts it has taken to
design a new logo and replace objects which contained the LRSBR federally registered trademarks,
the Court finds that, through its social media accounts, “Lucy’s” is clearly holding itself out to be
the same business as the licensed “Lucy’s Retired Surfer’s Bar & Restaurant.” Therefore, the Court
finds that this factor weighs in favor of a finding that there is a likelihood of confusion.
g.

Actual Confusion

LRSBR also presented evidence of actual confusion. LRSBR submitted as evidence posts
on social media sites where customers identified that they were at “Lucy’s” and tagged the official
fan page for “Lucy’s Retired Surfer’s Bar & Restaurant.”112 LRSBR also submitted as evidence an
instance where the official fan page for Lucy’s Retired Surfer’s Bar & Restaurant was tagged in a
post describing how the current “Lucy’s” restaurant had provided food for an event but the post

110

Tr. at p. 163.

111

Id. at 149, 151, 158–59, 161–62.

112

Id. at p. 170; LRSBR Ex. 46.

21

thanked “Lucy’s Retired Surfers Bar.”113 Accordingly, the Court finds that this factor weighs in
favor of a finding that there is a likelihood of confusion.
h.

Degree of Care Exercised by Potential Purchasers

Although there was evidence in the record that customers do use websites such as
TripAdvisor and Yelp in deciding whether to patronize a particular restaurant, neither party briefed
or made arguments during the evidentiary hearing regarding the degree of care exercised by
potential customers in deciding whether to patronize the restaurant. Therefore, the Court finds that
this factor is neutral.
i.

Conclusion

Following the termination of the License Agreement, TWTB has changed the name of the
business from “Lucy’s Retired Surfer’s Bar & Restaurant” to “Lucy’s;” however, it is operating out
of the same location and providing the same restaurant and bar services as it did prior to the
termination of the License Agreement. The new restaurant advertises in the same places, through
social media and print media, and there was evidence presented that the business operating as
“Lucy’s” uses the same social media accounts as it did when it was using the name “Lucy’s Retired
Surfer’s Bar & Restaurant,” having simply changed the name to “Lucy’s.” The Court finds that
TWTB’s use of the name “Lucy’s” is highly likely to create confusion in the mind of the ordinary
consumer as to the “source, affiliation, or sponsorship” of its products and services. Accordingly,
the Court finds that LRSBR has clearly carried its burden of persuasion on its trademark
infringement claim by demonstrating that TWTB’s use of the word “Lucy’s” creates a likelihood
of confusion.

113

Tr. at p. 170; LRSBR Ex. 45.

22

Although the majority of LRSBR’s arguments regarding its trademark infringement claim
for its registered trademarks were focused upon TWTB’s use of the word “Lucy’s,” LRSBR also
argued in its briefs that TWTB was continuing to use some registered trademarks of LRSBR.114
LRSBR asserted that people trying to access the old, authorized “Lucy’s Retired Surfer’s Bar &
Restaurant” website were being redirected to the new website for “Lucy’s.”115 TWTB presented the
testimony of Deborah Schumacher, the general manager of “Lucy’s,” who testified that the website
“lucysretiredsurfers.com” was no longer in operation.116 However, LRSBR presented evidence that
up until the day prior to the hearing, the website “lucysnola.com” was directing users to
“lucysretiredsurfers.com”117
Schumacher also testified that she was unaware of any instance in which the registered
trademarks of LRSBR are currently displayed.118 To the extent that any such instances of TWTB’s
use of LRSBR’s registered trademarks remain, the Court finds that, for the same reasons discussed
above, their use also creates a likelihood of confusion.
2.

Trademark Infringement Claims Regarding the Unregistered Marks

LRSBR’s second argument is that it has a substantial likelihood of success on its trademark
infringement claim regarding its unregistered trademarks.119 As with LRSBR’s trademark
infringement claim for its registered trademarks, in order to succeed on its trademark infringement

114

Rec. Doc. 33 at p. 8.

115

Id.

116

Tr. at p. 243.

117

Id. at p. 192.

118

Id. at p. 235.

119

Id. at p. 8.

23

claim for its unregistered marks, LRSBR must show: (1) that it possesses valid trademarks; and (2)
that another party’s use of the marks “creates a likelihood of confusion as to [the] source, affiliation,
or sponsorship.”120 LRSBR asserts two trademark infringement claims for its unregistered marks,
one for the unregistered mark “Lucy’s,” and the second for its unregistered “surfer bar trade
dress.”121
The Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., observed that “the general
principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part
applicable in determining whether an unregistered mark is entitled to protection under § 43(a).”122
The Supreme Court found that to have a protectable property right under the Lanham Act, “a mark
must be capable of distinguishing the applicant’s goods from those of others.”123 In order to be
legally protectable, a mark must be either inherently distinctive, where “its intrinsic nature serves
to identify a particular source,” or it must have developed a secondary meaning “which occurs when,
in the minds of the public, the primary significance of a mark is to identify the source of the product
rather than the product itself.”124 The Fifth Circuit has found that trade dress, in particular, is
protectable if it is inherently distinctive or has achieved secondary meaning in the public’s mind,
and is not functional.125 If LRSBR can show that it has a protectable property right in its marks, in

120

Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015).

121

Tr. at p. 8.

122

505 U.S. 763, 768 (1992).

123

Id. at 768.

124

Nola Spice Designs, L.L.C., 783 F.3d at 537 (quoting Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205,
210–11 (2000)).
125
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir. 1998), abrogated on other grounds by
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001).

24

order to succeed on its trademark infringement claim, it must then show that TWTB’s use of the
marks “creates a likelihood of confusion as to the source, affiliation, or sponsorship.”126
First, LRSBR contends that TWTB is estopped from challenging LRSBR’s ownership of the
Lucy’s marks because it is a former licensee of the Lucy’s marks.127 LRSBR asserts that the term
“Lucy’s Marks” was defined in the License Agreement to include the federally registered Lucy’s
trademarks “and all other tradenames, trademarks, service marks, marks or terms” owned by
LRSBR.128 Furthermore, it contends that the “Lucy’s System,” which LRSBR also granted TWTB
the license to use in the License Agreement, was defined to include “a casual ‘surfer bar’ style
restaurant and bar.”129 In support, LRSBR cites Professional Golfers Association of America v.
Bankers Life and Casualty Co,130 in which the Fifth Circuit found that a former licensee is estopped
from challenging the licensor’s ownership of trademarks during the course of the licensing
agreement, but may challenge ownership based upon facts that arise after the contract has expired.131
LRSBR submitted as evidence the License Agreement entered into by LRSBR and TWTB.132
A contract has the effect of law for the parties and the words of a contract must be given their
generally prevailing meaning.133 “When the words of a contract are clear and explicit and lead to no

126

Nola Spice Designs, L.L.C., 783 F.3d at 536.

127

Rec. Doc. 17-2 at p. 16.

128

Id.

129

Id. at pp. 16–17.

130

514 F.2d 665 (5th Cir. 1975).

131

Id. at 671.

132

LRSBR Ex. 14.

133

La. Civ. Code arts. 1983, 2047.

25

absurd consequences, no further interpretation may be made in search of the parties’ intent.”134
Where a contract is unambiguous, the interpretation of the contract becomes a matter of law.135 “A
contract is considered ambiguous on the issue of intent when either it lacks a provision bearing on
that issue, the terms of a written contract are susceptible to more than one interpretation, there is
uncertainty or ambiguity as to its provisions, or the intent of the parties cannot be ascertained from
the language employed.”136 When a contract is ambiguous, parol or extrinsic evidence may be
admissible to prove the intent of the parties.137
In the License Agreement, the word “Marks” is defined as:
the trade name “Lucy’s Retired Surfer’s Bar and Restaurant” including, without
limitation, the federally registered trademarks “Retired Surfers Bar and Restaurant”
and “Salt Water Wash Only” and all other tradenames, trademarks, service marks,
marks or terms (whether, in the case of any ol [sic] said tradenames trademarks,
service marks, or terms: a word, combination of words or parts of words, letter or
combination of letters, acronym, phrase, slogan, jingle, sound, image, animation,
video clip, color, color combination, trade dress whether product packaging, product
configuration or otherwise), web address, symbol, logo, design or otherwise) owned
by Licensor its successors and assigns.138
In the License Agreement, the term “Lucy’s System” is defined as:
the system owned by Licensor . . . and used by Licensor . . . at any time . . . for: (a)
developing, marketing, advertising and operating all or any part of a casual ‘surfer
bar’ style restaurant and bar or other food outlet in association with the Marks; or (b)
making, selling, promoting, delivering and distributing goods (including, without

134

La. Civ. Code art. 2046.

135

Strachan Shipping Co. v. Dresser Indus., Inc., 701 F.2d 483, 486 (5th Cir.1983).

136

Campbell v. Melton, No. 2001-2578 (La. 5/14/02); 817 So. 2d 69, 75.

137

Id.

138

LRSBR Ex. 14 at p. 2.

26

limitation, prepackaged food items) and merchandise in association with the
Marks.139
The contract does not address whether the parties intended for the word “Lucy’s” or the surfer bar
trade dress to be included within these definitions. The Court therefore finds that the provision
regarding what marks were covered under the License Agreement is ambiguous. Accordingly, the
Court will look to extrinsic evidence to determine the intent of the parties regarding the scope of this
provision.
a.

The Word “Lucy’s”

In the Shareholders’ Agreement, which was executed concurrently with the License
Agreement, “Lucy’s Trademarks” are defined to include four federally registered trademarks, as
well as “the mark LUCY’S, LUCY’S RETIRED SURFERS BAR AND RESTAURANT, and other
variations on these marks as used in connection with bar and restaurant services and related goods
and services.”140 The Shareholders’ Agreement also specifically states that “[t]he Shareholders agree
and acknowledge that TWTB, Inc. does not own the Lucy’s Trademarks. The Shareholders further
agree not to challenge or contest the ownership of the Lucy’s Trademarks by Rampick or LRSBR,
LLC.”141 This is strong evidence that the word “Lucy’s” falls within the catch-all category in the
License Agreement of “all other tradenames, trademarks, service marks, marks or terms . . . owned
by Licensor its successors and assigns.”

139

Id. at p. 3.

140

LRSBR Ex. 15 at p. 2.

141

Id. at p. 3.

27

In addition, during the evidentiary hearing, Rampick testified that, at the time, he understood
the License Agreement to include the word “Lucy’s.”142 Furthermore, when Raper was asked about
his interpretation of the Shareholders’ Agreement, his response was the “Lucy’s Trademarks”
section of the Shareholders’ Agreement listed “the mark LUCY’S, LUCY’S RETIRED SURFERS
BAR AND RESTAURANT,” which he may have interpreted as being one mark, rather than two
marks.143 However, when Raper was asked, “In all the time you’ve worked at the business, have you
ever seen the business use the trademark ‘Lucy’s, Lucy’s Retired Surfers Bar & Restaurant?’” he
responded “No, I have not.”144 This is further evidence that when the parties signed the
Shareholders’ Agreement, they intended “Lucy’s Trademarks” to include both the word “Lucy’s”
alone, as well as the full name “Lucy’s Retired Surfers Bar and Restaurant.” The Court finds that
there is substantial evidence in the record to demonstrate that the parties intended the License
Agreement to include the word “Lucy’s.”
The Fifth Circuit has found that a licensee, by virtue of the agreement, has recognized the
holder’s ownership and is therefore estopped from contesting the validity of the licensor’s title
during the course of the licensing arrangement.145 The Fifth Circuit has also held that “after
expiration of the license, a former trademark licensee may challenge the licensor’s title on facts
which arose after the contract has expired.”146 TWTB’s argument regarding LRSBR’s ownership of
the word “Lucy’s,” however, is that the word “Lucy’s” is not inherently distinctive, not that
142

Tr. at p. 77.

143

Id. at p. 212.

144

Id.

145

Prof’l Golfers Ass’n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 671 (5th Cir. 1975).

146

Id.

28

circumstances have changed since the termination of the License Agreement that undermine the
validity of the mark.147 Because this argument is not based on facts that arose after the License
Agreement was terminated, it does not fall within the exception to estoppel by a former licensee.
Accordingly, the Court finds that LRSBR has presented substantial evidence that TWTB is estopped
from contesting LRSBR’s ownership of the word “Lucy’s,” and therefore has demonstrated that it
possesses a valid trademark in the name “Lucy’s,” meeting the first prong of its trademark
infringement claim.
The Court now turns to the second prong of a trademark infringement claim: whether there
is a likelihood of confusion.148 As discussed above, the Fifth Circuit has enumerated eight “digits
of confusion” to be considered in determining the likelihood of confusion.149 Although LRSBR does
not specifically argue how these factors support its trademark infringement claim regarding its
unregistered trademarks, LRSBR performs a general analysis of these factors.150 Upon reviewing
the evidence presented during the hearing and the arguments put forth in the briefs, the Court is able
to discern whether evidence has been presented to support these factors for LRSBR’s trademark
infringement claim for its unregistered “Lucy’s” mark.

147

Rec. Doc. 22 at pp. 14–16.

148

Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015).

149

Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012) (citations omitted).

150

Rec. Doc. 17-2 at pp. 17–20.

29

i.

Type of Mark

The first factor, the type of mark, “refers to the strength of the mark.”151 In evaluating this
factor, courts look to the distinctiveness of a mark and third-party use of that mark.152 In order to
assess the distinctiveness of a word mark, the Fifth Circuit looks to whether the mark is: (1) generic;
(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.153 In evaluating third-party use, “the trier
of fact looks at all third party use, not just use in the same industry, to determine whether a mark is
a ‘weak’ or a ‘strong’ mark.”154
The Fifth Circuit in Amazing Spaces, Inc. v. Metro Mini Storage found that a word is
arbitrary if it “bears no relationship to the products or services to which [it is] applied.”155 LRSBR
asserts that the “Lucy’s” mark is inherently distinctive because the word has no descriptive or
generic meaning in connection with restaurant and bar services.156 However, “Lucy’s” is a personal
name. Personal names are generally regarded as descriptive terms that require proof of secondary
meaning.157

151

Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 201 (5th Cir. 1998).

152

Sun Banks of Fla., Inc. v . Sun Fed. Sav. and Loan Ass’n, 651 F.2d 311, 315–16 (5th Cir. 1981).

153

Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015).

154

Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 848 n.24
(5th Cir. 1990).
155

608 F.3d 225, 241 (quoting Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790–91 (5th Cir.

156

Rec. Doc. 17-2 at p. 15.

1983)).

157

2 McCarthy on Trademarks & Unfair Competition § 13.2 (4th ed.) (“Personal names are placed by the
common law into that category of noninherently distinctive terms which require proof of secondary meaning for
protection.”). See also Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 155 (5th Cir. 1985) (“‘Conan’ is a
surname and can be regarded as a descriptive term rather than an inherently distinctive mark.”).

30

The Fifth Circuit uses a seven-factor test to determine whether a mark has acquired
secondary meaning in the minds of ordinary consumers.158 The Fifth Circuit in Conan Properties,
Inc. v. Conans Pizza, Inc. noted that one commentator has stated that this test requires a plaintiff to
demonstrate that “the public has come to recognize the personal name as a symbol which identifies
and distinguishes the goods or services of only one seller.”159 LRSBR never explicitly argues that
the word “Lucy’s” has acquired a secondary meaning in the minds of ordinary consumers. LRSBR
only argues that the word “Lucy’s” was inherently distinctive.160
In addition to evaluating the distinctiveness of the mark, courts also look to third-party use
of that mark.161 During the evidentiary hearing, TWTB presented documents from the United States
Patent and Trademark Office and Louisiana Secretary of State’s business filings to show that
numerous other businesses in Louisiana and the United States use the word “Lucy’s” in connection
with their businesses. Accordingly, based upon the evidence presented, the Court finds that the word
“Lucy’s” is a weak mark.
ii.

Similarity Between the Two Marks

LRSBR presented evidence that the name “Lucy’s” had been used in lieu of the longer
formal name of the business, “Lucy’s Retired Surfer’s Bar & Restaurant,” for decades. Dave Dillen,
who has held numerous positions at several Lucy’s Retired Surfer’s Bar & Restaurant locations,

158

Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs. Inc., 799 F.3d 437, 445 (5th Cir. 2015). These
factors are: (1) length and manner of use of the mark or trade dress; (2) volume of sales; (3) amount and manner of
advertising; (4) nature of use of the mark or trade dress in newspapers and magazines; (5) consumer-survey evidence;
(6) direct consumer testimony; and (7) the defendant’s intent in copying the mark. Id.
159

Conan Props., Inc., 752 F.2d at 155 (quoting 2 McCarthy on Trademarks & Unfair Competition § 13.2 (4th

160

Rec. Doc. 17-2 at p. 15.

161

Sun Banks of Fla., Inc. v . Sun Fed. Sav. and Loan Ass’n, 651 F.2d 311, 315–16 (5th Cir. 1981).

ed.)).

31

including in New Orleans, Austin, Texas, Costa Rica, and Mandeville, Louisiana, testified that the
customers referred to the business as “Lucy’s.”162 Rampick also testified that the businesses he
formed in New York City, Louisiana, Costa Rica, and Austin, Texas, were all identified by
customers as “Lucy’s.”163
It is undisputed that TWTB is now using the word “Lucy’s” as the name of its business.
Although there has been some change in the design, with TWTB using the word “Lucy’s” in red
block letters with a blue border rather than the previous red script, the name “Lucy’s” and the red
color are the same. Furthermore, LRSBR presented evidence that the word “Lucy’s” has been in
place on the two faces of the building in large, red block letters for many years.164 LRSBR also
presented evidence that some use of the previous design, with the word “Lucy’s” in red script,
remains in the restaurant, including on a mural in the courtyard of the restaurant.165 Therefore, the
Court finds that this factor weighs strongly in favor of a finding that there is a likelihood of
confusion.
iii.

Similarity of the Products or Services

The word “Lucy’s” was being used to advertise a surf-theme restaurant and bar during the
time the License Agreement was in effect. Now, after the termination of the License Agreement,
TWTB continues to operate a surf-theme restaurant and bar called “Lucy’s.” Therefore, the Court
finds that this factor weighs strongly in favor of a finding that there is a likelihood of confusion.

162

Tr. at pp. 133–34.

163

Id. at pp. 71–75.

164

Id. at p. 149.

165

Id. at pp. 57, 61.

32

iv.

Identity of the Retail Outlets and Purchasers

It is undisputed that TWTB’s business operates out of the same physical location as it did
when it was licensed to use LRSBR’s trademarks. Therefore, this factor also weighs strongly in
favor of a finding that there is a likelihood of confusion.
v.

Identity of Advertising Media Utilized

“The use of a mark in advertising is highly probative of whether the mark creates a
likelihood of confusion in relation to another mark.”166 LRSBR presented evidence that TWTB
continues to use the same Facebook account, Instagram account, Yelp web page, and TripAdvisor
web page as it did when it was licensed by LRSBR to use the trademarks.167 Accordingly, the Court
finds that this favor also weighs strongly in favor of a finding that there is a likelihood of confusion.
vi.

Defendant’s Intent

As discussed above, although TWTB presented testimony of the efforts it has taken to design
a new logo and replace objects which contained the LRSBR federally registered trademarks, LRSBR
presented evidence that TWTB is holding “Lucy’s” out to be the same business as the licensed
“Lucy’s Retired Surfer’s Bar & Restaurant.” The Court therefore finds that TWTB does intend to
trade on the goodwill of the marks in its use of the word “Lucy’s.” Accordingly, the Court finds that
this factor weighs in favor of a finding that there is a likelihood of confusion.
vii.

Actual Confusion

As discussed above, LRSBR also presented evidence of actual confusion. LRSBR submitted
as evidence posts on social media where customers identified that they were at “Lucy’s” and tagged

166

Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 197 (5th Cir. 1998).

167

Tr. at pp. 149, 151, 158–59, 161.

33

the official fan page for “Lucy’s Retired Surfer’s Bar & Restaurant.”168 LRSBR also submitted as
evidence an instance where the official fan page for Lucy’s Retired Surfer’s Bar & Restaurant was
tagged in a post describing how the current “Lucy’s” restaurant had provided food for an event but
the post thanked “Lucy’s Retired Surfers Bar.”169 Accordingly, the Court finds that this factor
weighs in favor of a finding that there is a likelihood of confusion.
viii.

Degree of Care Exercised by Potential Purchasers

As discussed above, neither party briefed or made arguments during the evidentiary hearing
regarding the degree of care exercised by potential customers in deciding whether to patronize the
restaurant. Therefore, the Court finds that this factor is neutral.
ix.

Conclusion

Accordingly, the Court finds that LRSBR has clearly carried its burden of persuasion on its
trademark infringement claim by demonstrating both that TWTB is estopped from challenging
LRSBR’s ownership of the mark “Lucy’s” and that TWTB’s use of the word “Lucy’s” creates a
likelihood of confusion.
b.

Surfer Bar Trade Dress

LRSBR also seeks to enjoin TWTB from using surfboards, explicitly surfer-related
decorative items, and menu items that contain references to surfing.170 LRSBR contends that there
is a substantial likelihood of success on its trademark infringement claim regarding its unregistered
surfer bar trade dress. Trade dress infringement is established by showing that: (1) the trade dress

168

Id. at p. 170; LRSBR Ex. 46.

169

Id.; LRSBR Ex. 45.

170

Rec. Doc. 33 at p. 7.

34

qualifies for protection; and (2) that the trade dress has been infringed, which requires considering
the likelihood of confusion.171
i.

Whether the Trade Dress Qualifies for Protection

In its original motion, LRSBR broadly contended that TWTB was “estopped from
challenging LRSBR’s ownership of the Lucy’s marks.”172 However, LRSBR has not demonstrated
that the surfer bar trade dress was either included within the License Agreement or that the parties
intended it to be included within the License Agreement. Therefore, the Court finds that LRSBR has
not demonstrated that TWTB is estopped by its status as a former licensee from challenging
LRSBR’s rights to the trade dress.
LRSBR also asserts that TWTB is estopped from challenging its unregistered marks as a
result of the dismissal with prejudice of TWTB’s opposition to LRSBR’s trademark registration
applications.173 Attached to LRSBR’s motion is the “Notice of Opposition” filed by Raper and the
Joseph E. and Janice V. Anthony Trust.174 The opposition states that the trademarks LRSBR was
trying to register were the designation “LUCY’S RETIRED SURFER’S BAR & RESTAURANT”
and the designation and design “LUCY’S RETIRED SURFER’S BAR & RESTAURANT.”175 The
surfer bar trade dress was not at issue in those proceedings.176 Therefore, the Court finds that LRSBR
has not demonstrated that TWTB is estopped from challenging LSRBR’s ownership of trade dress

171

Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1117–18 (5th Cir. 1991).

172

Rec. Doc. 17-2 at p. 16.

173

Id. at p. 17 (citing B & B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1299 (2015)).

174

Rec. Doc. 17-3.

175

Id.

176

Id.

35

as a result of the dismissal with prejudice of any opposition before the United States Patent and
Trademark Office.
Therefore, the Court now turns to whether LRSBR has shown that it has a protectable right
to its use of the surfer bar trade dress. The Fifth Circuit has found that trade dress is protectable if
it is inherently distinctive or has achieved secondary meaning in the public’s mind, and is not
functional.177 Since LRSBR filed its motion for a preliminary injunction, LRSBR has proposed a
more limited restriction for the purposes of the preliminary injunction than it did in its original
motion, requesting that the Court order “TWTB [] remove all surfboards, all explicitly surfer-related
decorative items, and all menu items that contain references to surfing.”178 LRSBR asserts that the
surfer bar trade dress is inherently distinctive because it is not common or descriptive for a
restaurant and bar in New Orleans.179 LRSBR submits the affidavit of Rampick in which he asserts
that “many customers comment about our surfer bar theme” and “lots of customers notice the surfer
bar theme and comment about how unique it is.”180 In opposition, TWTB contends that the use of
surf boards and surf-related imagery does not allow customers to identify LRSBR as the source of
the product that LRSBR is selling.181 TWTB also offers evidence that there are five other restaurants
and/or bars within New Orleans which utilize a beach and/or surf theme.182

177

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir. 1998), abrogated on other grounds by
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001).
178

Rec. Doc. 33 at p. 7.

179

Rec. Doc. 17-2 at p. 16.

180

Rec. Doc. 17-4 at p. 7.

181

Rec. Doc. 22 at p. 11.

182

Id. at p. 12 (citing Rec. Doc. 22-5).

36

In Taco Cabana International, Inc. v. Two Pesos, Inc., the Fifth Circuit quoted approvingly
the district court’s jury instructions describing trade dress distinctiveness: “[d]istinctiveness is a term
used to indicate that a trade dress serves as a symbol of origin. If it is shown, by a preponderance
of the evidence, that Taco Cabana’s trade dress distinguishes its products and services from those
of other restaurants and is not descriptive and not functional, then you should find that Taco
Cabana’s trade dress is inherently distinctive.”183 LRSBR presented evidence during the hearing
from Sarah Campbell, who served as both the events manager and general manager of the business,
that customers often refer to the business as “Lucy’s” or “that surfer bar over on Tchoupitoulas.”184
Dillen testified that customers identified the business “[a]s a surfer bar, as a laid-back easy-going
surf bar by the decor, by the attitude, by the - - you walked in - - the surfboards.”185 Rampick also
testified regarding the central role that the surfboards play in the restaurant’s decor. On crossexamination, when asked about another bar located in New Orleans, Rampick testified that the surf
theme associated with his business is unique as the surfboards are real and the artwork depicting the
surf theme is quality artwork.186 The Court finds that LRSBR has presented sufficient evidence to
demonstrate that the trade dress involving surf imagery is inherently distinctive to identify the
business as “Lucy’s Retired Surfer’s Bar & Restaurant.”

183

932 F.2d 1113, 1120 (5th Cir. 1991).

184

Tr. at p. 119.

185

Id. at p. 133.

186

Id. at p. 92.

37

The Court next turns to whether the trade dress is functional. Even if trade dress is inherently
distinctive, it does not merit protection if it is functional.187 In Two Pesos, Inc. v. Taco Cabana, Inc.,
the Supreme Court, discussing the law in the Fifth Circuit, found that “a design is legally functional,
and thus unprotectible, if it is one of a limited number of equally efficient options available to
competitors and free competition would be unduly hindered by according the design trademark
protection.”188 TWTB does not contend that the surfer bar trade dress, as limited by LRSBR in its
reply memorandum of “surfboards, all explicitly surfer-related decorative items, and all menu items
that contain references to surfing,” is functional.189 Nor does the Court find that LRSBR’s design
is only one of a limited number of equally efficient options available to competitors. Accordingly,
the Court finds that LRSBR has presented sufficient evidence to show that it has a protectable right
to its use of the surfer bar trade dress.
ii.

Likelihood of Confusion

Next, the Court turns to whether there is a likelihood of confusion between the LRSBR trade
dress and the TWTB trade dress. LRSBR does not analyze whether there is a likelihood of confusion
using the factors identified by the Fifth Circuit, asserting only that the “‘new’ Lucy’s looks just like
the old.”190 However, LRSBR does perform some analysis of these factors in its argument that all
of TWTB’s uses of LRSBR’s marks, both registered and unregistered, create a likelihood of

187

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir. 1998), abrogated on other grounds by
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001).
188

505 U.S. 763, 775 (1992).

189

Rec. Doc. 33 at p. 7.

190

Id.

38

confusion.191 Furthermore, LRSBR presented extensive evidence regarding these factors. Therefore,
upon reviewing the evidence presented during the hearing and the arguments put forth in the briefs,
the Court is able to discern whether evidence has been presented to support these factors for
LRSBR’s infringement claim for its surfer bar trade dress.
a.

Type of Trade Dress

As discussed above, the Court finds that the trade dress at issue in this case is inherently
distinctive.
b.

Similarity of the Trade Dresses

During the evidentiary hearing, Rampick compared pictures of the interior of the restaurant
before the License Agreement was terminated and pictures of the current interior of the restaurant.192
In comparing the photographs, Rampick testified that the decor of the bar “is exactly the same” as
it was back when it was originally built except for a remodel done a couple of years ago.193 Rampick
testified that the pictures on the wall behind the televisions were pictures that he had personally put
up, there were two surfboards above the bar that were his personal surfboards, the lighting and fans
were the same, the neon clock on the wall is the same clock that he had brought from New York
City, chalkboards behind the bar are the same, and the shelving and furniture were all the same.194
The only elements that Rampick identified that had been changed were that personal photographs
of himself and his family had been removed, a large chair had been placed in the courtyard, a

191

Rec. Doc. 17-2 at pp. 17–20.

192

LRSBR Exs. 30–36.

193

Tr. at p. 57.

194

Id.

39

surfboard that had the registered trademark of the sailfish had been removed, and the exterior sign
had been changed.195
The Court has also reviewed the photographs showing the interior and exterior of the
restaurant before and after the termination of the License Agreement and also finds that the two are
almost indistinguishable. Looking specifically to the items that LRSBR contends constitute its trade
dress, the surfboards and surfer-related decorative items, the vast majority of these items have
remained following the termination of the License Agreement. Therefore, the Court finds that the
similarity of the trade dress weighs strongly in favor of a likelihood of confusion.
c.

Similarity of Products or Services Provided

During the time the License Agreement was in place, the trade dress was used to decorate
a restaurant and bar. After the termination of the License Agreement, the trade dress continues to
be used to decorate a restaurant and bar. Therefore, the Court finds that this factor also weighs
strongly in favor of a likelihood of confusion.
d.

Similarity of Customers

LRSBR does not currently license the trademarks to any restaurant in the New Orleans area.
However, if it were to do so while “Lucy’s” remained open, in light of the evidence that “Lucy’s”
has retained substantially the same decor, food, and drinks, and operates at the same location where
“Lucy’s Retired Surfer’s Bar & Restaurant” was located, the Court finds that the businesses would
be in competition for the same customers.

195

Id. at pp. 56–66.

40

e.

Similarity of Advertising Media

As discussed above, LRSBR presented evidence that TWTB continues to use the same
Facebook account, Instagram account, Yelp web page, and TripAdvisor web page as it did when it
was licensed by LRSBR to use the trademarks.196 Accordingly, the Court finds that this factor also
weighs strongly in favor of a finding that there is a likelihood of confusion.
f.

Defendant’s Intent in its Adoption of its Restaurant Trade
Dress

Following the termination of the License Agreement, TWTB has not altered the decor other
than making small changes, including removing images of the federally registered LRSBR
trademarks. The trade dress was already in existence at the location at the time of the termination
of the License Agreement and TWTB has simply failed to change its decor since the termination of
the License Agreement. However, this factor calls for the Court to analyze TWTB’s intent in its
“adoption” of its restaurant trade dress. Because the trade dress was already in existence at the
location at the time of the termination of the License Agreement, the Court finds that this factor
does not weigh in favor of a likelihood of confusion.
g.

Actual Confusion

As discussed above, LRSBR has presented evidence of actual confusion. LRSBR submitted
as evidence posts on social media where customers identified that they were at “Lucy’s” and tagged
the official fan page for “Lucy’s Retired Surfer’s Bar & Restaurant.”197 LRSBR also submitted as
evidence an instance where the official fan page for Lucy’s Retired Surfer’s Bar & Restaurant was
tagged in a post describing how the current “Lucy’s” restaurant had provided food for an event but
196

Tr. at pp. 149, 151, 158–59, 161.

197

Id. at p. 170.

41

the post thanked “Lucy’s Retired Surfers Bar.”198 Accordingly, the Court finds that this factor
weighs in favor of a finding that there is a likelihood of confusion.
h.

Conclusion

The Court finds that LRSBR has presented sufficient evidence to demonstrate a likelihood
of confusion. Accordingly, the Court finds that LRSBR has clearly carried its burden of persuasion
to show a substantial likelihood of success on its trade dress infringement claim. The Court notes,
however, that for the purposes of the preliminary injunction, the Court adopts LRSBR’s limited
trade dress definition of “all surfboards, all explicitly surfer-related decorative items, and all menu
items that contain references to surfing.”199
C.

Substantial Threat of Irreparable Harm If the Injunction is Denied
In order to obtain a preliminary injunction, LRSBR must also clearly carry the burden of

persuasion that there is a substantial threat of irreparable harm if the injunction is denied.200 LRSBR
asserts that TWTB is estopped from arguing that continued use of the Lucy’s marks will cause
irreparable injury because, in the License Agreement, TWTB acknowledged that failure to comply
with the provision requiring TWTB to refrain from further use of the Lucy’s marks upon termination
of the License Agreement would result in “immediate and irreparable harm affording injunctive and
any and all other appropriate relief to Licensor.”201 In opposition, TWTB contends that LRSBR has
not offered any evidence that TWTB is damaging the goodwill associated with LRSBR’s

198

Id.

199

Rec. Doc. 33 at p. 7.

200

Lake Charles Diesel, Inc. v. Gen. Motors Corp., 328 F.3d 192, 195–96 (citing Canal Auth. v. Callaway, 489
F.2d 567, 572 (5th Cir. 1974)).
201

Rec. Doc. 17-2 at p. 24 (citing Rec. Doc. 17-6).

42

trademarks.202 TWTB also reiterates that “[a]n injunction is a harsh, dramatic, and extraordinary
remedy, and should only issue where the party seeking it is threatened with irreparable lo[s]s of
injury without adequate remedy at law.”203
Rampick also testified at the evidentiary hearing that LRSBR has found a prospective
licensee.204 When Rampick was asked whether the prospective licensee “would enter into a license
agreement for the operation of a business using LRSBR, LLC’s system for any location other than
701 Tchoupitoulas,” he responded “I would say no.”205 Rampick also testified that he currently has
no control over the trademarks or the “Lucy’s concept” and his federally registered trademarks are
dormant.206 Rampick testified that the new menu, sign, and new logo do not illustrate what he spent
thirty years developing.207 Furthermore, Rampick testified that harm is being done to the trademarks
because TWTB has instituted a policy adding a surcharge for the use of credit cards. Rampick
testified that the practice was unprofessional and sends the wrong message to customers.208
In Abraham v. Alpha Chi Omega, the Fifth Circuit reviewed a district court’s order of
injunctive relief in a trademark infringement case.209 In assessing whether the party seeking the
injunction had suffered an irreparable injury and whether remedies available at law are inadequate
202

Rec. Doc. 22 at p. 21.

203

Id. (quoting Lafreniere Park Found. v. Friends of Lafreniere Park, No. 97-CA-152 (La. App. 5 Cir.
7/29/97); 698 So. 2d 449, 452).
204

Tr. at p. 111.

205

Id.

206

Id. at pp. 77–78.

207

Id. at p. 78.

208

Id. at pp. 78–79.

209

708 F.3d 614, 625–28 (5th Cir. 2013).

43

to compensate the injury, the court quoted a leading treatise on trademarks: “All that must be proven
to establish liability and the need for an injunction against infringement is the likelihood of
confusion—injury is presumed.”210 The Fifth Circuit also quoted the treatise stating “[T]here seems
little doubt that money damages are ‘inadequate’ to compensate [owner] for continuing acts of
[infringer].”211 Here, the Court finds that LRSBR has clearly carried its burden of persuasion in
showing that it will suffer irreparable harm if the injunction is denied as it has demonstrated
likelihood of confusion and presented evidence that it will be unable to license its trademarks
without the injunction.
D.

Threatened Injury to the Movant Outweighs the Injury to the Nonmovant
LRSBR asserts that the balance of harms strongly favors LRSBR because “[i]f a preliminary

injunction is not granted, TWTB will continue to exploit, misuse, and abuse the Lucy’s marks.”212
In opposition, TWTB contends that the threatened injury to LRSBR does not outweigh any damage
the injunction might cause TWTB because the damage to TWTB would be “truly catastrophic.”213
In support, TWTB presented the testimony of Raper, the President, Managing Partner, and
shareholder of TWTB. Raper testified that pursuant to TWTB’s lease, TWTB must operate a bar and
restaurant called “Lucy’s.”214 He testified that if the Court were to enjoin TWTB from using the
name “Lucy’s,” it is “highly probable” that its lease will be terminated.215 Raper further testified that

210

Id. at 627 (quoting 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2001)).

211

Id. (quoting 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2001)).

212

Rec. Doc. 17-2 at p. 24.

213

Rec. Doc. 22 at p. 22.

214

Tr. at p. 209.

215

Id.

44

it would cost hundreds of thousands of dollars to relocate the restaurant and TWTB currently does
not have sufficient capital to do so.216
On cross-examination, however, Raper testified that TWTB’s lease will end in October 2017
and that the lease will not be renewed.217 Therefore, regardless of the outcome of the motion for a
preliminary injunction, Raper’s testimony demonstrates that TWTB will have to leave the building
located at 701 Tchoupitoulas Street in October 2017, and, as Raper testified, TWTB does not
currently have the capital to relocate its business. Raper also testified on cross-examination that John
Kirkendoll, LRSBR’s prospective licensee, will take over the lease beginning in October 2017.218
LRSBR has presented evidence that there may be a licensed “Lucy’s Retired Surfer’s Bar
& Restaurant” operating at 701 Tchoupitoulas Street in October 2017, as well as evidence regarding
a potential loss of goodwill from customers through TWTB’s new practices, including the surcharge
on credit cards, and the changes to LRSBR’s trademarks. Accordingly, the Court finds that LRSBR
has clearly carried its burden of persuasion to prove that the threatened injury to it, through the
potential harm to its trademarks and the potential loss of the prospective licensee, outweighs the
injury to TWTB who, it appears, will no longer have a lease to operate a business at 701
Tchoupitoulas Street in October 2017, regardless of the outcome of this motion.

216

Id. at pp. 210, 225.

217

Id. at p. 228 (“A. The gentleman that approached me [regarding an offer to purchase TWTB] has reportedly
signed a lease starting the day after the end of our lease forward. Q. So at the end of your lease term in October of 2017,
you have to leave this location anyway? A. That’s correct.”).
218

Id.

45

E.

Public Interest
In support of their assertion that an injunction will serve the public interest, LRSBR cites the

Fifth Circuit in Sunbeam Products, Inc. v. West Bend Co., where the court found that “the public
interest calculus is subsumed within the merits of the trade dress infringement claim: Because the
product configuration of the American Classic Mixmaster® is entitled to trade dress protection, it
necessarily follows that the preliminary injunction serves the public interest. Indeed, trade dress
protection of the American Classic Mixmaster® will not frustrate competition, but will foster it.”219
In opposition, TWTB asserts that Louisiana has a strong public policy against “restrictions on the
spirit of free labor” and in favor of “competition which is both fair and unfettered” and will
essentially eliminate TWTB’s ability to do business despite its good faith effort to ensure it does not
violate any of LRSBR’s trademarks.220
The Court, having found that there is a substantial likelihood of success on LRSBR’s
trademark infringement claims, finds, as the Fifth Circuit did in Sunbeam Products, Inc., that a
preliminary injunction will serve the public interest as LRSBR has demonstrated that its marks are
entitled to protection and an injunction will reduce confusion and foster competition.221
IV. Attorneys’ Fees and Costs
LRSBR also asserts that it is entitled to recover attorneys’ fees and costs under the Federal
Trademark Act because this case is “exceptional.”222 In support, LRSBR contends that the Supreme
219

Rec. Doc. 17-2 at p. 25 (citing Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 260 (5th Cir. 1997),
abrogated on other grounds by TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001)).
220

Rec. Doc. 22 at pp. 23–24 (citing NCH Corp. v. Broyles, 563 F. Supp. 142, 145 (E.D. La. Apr. 26, 1983)

(Beer, J.)).
221

Sunbeam Prods., Inc., 123 F.3d at 260.

222

Rec. Doc. 17-2 at p. 26.

46

Court has held that a case is exceptional when it “stands out from others with respect to the
substantive strength of a party’s litigation position (considering both the governing law and the facts
of the case) or the unreasonable manner in which the case was litigated.”223 LRSBR contends that
TWTB is willfully infringing its marks and has “effectively stolen the Lucy’s brand” in the New
Orleans market.224 According to LRSBR, if TWTB had complied with the terms of the License
Agreement, this action would not have been necessary.225 In opposition, TWTB contends that the
evidence “clearly shows that TWTB has made every effort not to infringe on LRSBR’s trademarks,”
and has spent a “tremendous amount of time, effort, and money to ensure that it is not infringing on
LRSBR’s marks.”226 Therefore, TWTB asserts, this case falls far short of the type of exceptional
case required to warrant an award of attorneys’ fees and costs.227
Pursuant to the Lanham Act, 15 U.S.C. § 1117(a), a court may award reasonable attorneys’
fees to a prevailing party in “exceptional cases.” The Fifth Circuit has instructed that an exceptional
case is one where the trademark infringement can be characterized as “malicious, fraudulent,
deliberate, or willful”228 and requires the prevailing party to show the exceptional nature of the case
by clear and convincing evidence.229 Furthermore, the Fifth Circuit has found that “[a] district court

223

Id. (quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014)).

224

Id.

225

Id.

226

Rec. Doc. 22 at p. 24.

227

Id.

228

Seatrax, Inc. v. Sonbeck Int’l, Inc., 200 F.3d 358, 373 (5th Cir. 2000).

229

CJC Holdings, Inc. v. Wright & Lato, Inc., 979 F.2d 60, 65 (5th Cir. 1992).

47

normally should not find a case exceptional where the party presents what it in good faith believes
may be a legitimate defense.”230
During the evidentiary hearing, Raper testified that TWTB had spent approximately $40,000
on new menus, a new sign, and designs for a new logo.231 He testified that upon his learning that the
License Agreement had been terminated, he immediately contacted Deborah Schumacher, the
General Manager, to have her begin the process of rebranding.232 Deborah Schumacher testified that
she began removing any of the registered trademarks from the restaurant and from social media and
replacing them with TWTB’s new logo.233 She testified that she is unaware of any current use by
TWTB of LRSBR’s federally registered trademarks.234 She further testified that TWTB replaced its
t-shirts, menus, pictures, business cards, signage, and floor mats and that she had engaged a graphic
design company to create a new logo.235 Schumacher also testified that she contacted the host for
the restaurant’s website in an attempt to change the domain name and contacted Yelp to change the
name of the restaurant.236 She asserted that in some instances, there was a delay because she did not
have immediate access to some of the social media accounts.237

230

Id.

231

Tr. at p. 205.

232

Id. at p. 204.

233

Id. at p. 234.

234

Id. at p. 235.

235

Id. at pp. 235, 237.

236

Id. at p. 242, 245–46.

237

Id. at p. 245.

48

TWTB presented extensive testimony regarding its efforts to remove any use of LRSBR’s
federally registered trademarks. Despite these changes, however, the decor of the restaurant has
remained almost identical and the name of the restaurant has simply been shortened to “Lucy’s.” In
its defense, TWTB asserted that it did not believe that LRSBR has ownership rights to either the
word “Lucy’s” or its surfer bar trade dress. The Court finds that although these arguments were
ultimately unpersuasive, they were not made in bad faith. The Court finds that LRSBR has failed
to demonstrate by clear and convincing evidence that this case is exceptional and therefore merits
the award of attorneys’ fees and costs. Accordingly, the Court denies LRSBR’s request for
attorneys’ fees and costs.
V. Conclusion
Considering the foregoing, the Court finds that LRSBR has demonstrated that it is entitled
to a preliminary injunction. The Court finds that LRSBR has clearly carried its burden of
demonstrating a substantial likelihood of success on both its trademark infringement claim regarding
its registered trademarks and its trademark infringement claims regarding its unregistered trademark
of the word “Lucy’s” and its surfer bar trade dress. Additionally, the Court finds that LRSBR has
clearly carried its burden of demonstrating that there is a substantial threat of irreparable harm if the
injunction is not issued, that the threatened injury if the injunction is denied outweighs the
threatened harm that will result if the injunction is granted, and that the grant of an injunction will
not disserve the public interest. However, the Court also finds that LRSBR has failed to demonstrate,
by clear and convincing evidence, that this case is exceptional as to merit an award of attorney’s fees
and costs.

49

Accordingly,
IT IS HEREBY ORDERED that LRSBR’s “Motion for Preliminary Injunction”238 is
GRANTED IN PART AND DENIED IN PART.
IT IS FURTHER ORDERED that TWTB is enjoined from using the word “Lucy’s” or any
of LRSBR’s registered trademarks in connection with its restaurant.
IT IS FURTHER ORDERED that TWTB is enjoined from using surfboards, explicitly
surfer-related decorative items, and all menu items that contain references to surfing.
IT IS FURTHER ORDERED that LRSBR’s request for an award of attorneys’ fees and
costs is DENIED.
NEW ORLEANS, LOUISIANA, this20th day of January, 2016.
___

_________________________________
NANNETTE JOLIVETTE BROWN
UNITED STATES DISTRICT JUDGE

238

Rec. Doc. 17.

50