Helpful Hound, L.L.C. v. New Orleans Building Corp., et al.

Filing 58

ORDER AND REASONS granting 18 Motion for Preliminary Injunction as stated herein. Signed by Judge Sarah S. Vance on 8/7/2018. (Reference: All cases)(cg)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
HELPFUL HOUND, L.L.C.
VERSUS
NEW ORLEANS BUILDING
CORPORATION AND CITY OF NEW
ORLEANS

CIVIL ACTION
NO. 18-3500
c/w 18-3594
SECTION “R” (2)

PRELIMINARY INJUNCTION ORDER AND REASONS
New Orleans Building Corporation and the City of New Orleans move
to preliminarily enjoin Helpful Hound, L.L.C. and related parties from using
the mark “St. Roch Market” at locations other than the food halls of the same
name in New Orleans and Miami. 1

The Court issues the preliminary

injunction contained in this Order for the reasons discussed below.

I.

BACKGROUND
This case arises out of a dispute over use of the name “St. Roch

Market.” The original St. Roch Market is located at 2381 St. Claude Avenue,
on the neutral ground of St. Roch Avenue. It is one of the few remnants of
the once-extensive network of public markets in New Orleans.2 According to

1
2

R. Doc. 18.
R. Doc. 18-6 at 1.

defendants, St. Roch Market dates back to 1838, when an open-air market
was built at the site.3 It was originally known as Washington Market, just as
St. Roch Avenue used to be known as Washington Avenue.4 The present
structure was designed and built in 1875.5 According to the City, the market
was enclosed in 1914, and rebuilt in 1937 by the Works Progress
Administration. 6 By 1964, the market had acquired its distinctive signage: 7

Figure 1: St. Roch Market, January 28, 1964
R. Doc. 21 at 2.
Id.
5
See Jeffrey Chusid et al., St. Roch Market: Historic Structure Report
and Rehabilitation Study 8 (July 19, 2006), http://projectneworleans.org/urbananalysis/strochmarketbook.pdf.
6
Case No. 18-3594, R. Doc. 1 at 7-8 ¶¶ 21-22.
7
Case No. 18-3594, R. Doc. 1-3.
2
3

4

The City leased stalls in St. Roch Market to various food vendors until
1945.8 From 1945 until the 1990s, the City leased the market to the Lama
family, who first operated a seafood market and po-boy restaurant at the site
before converting the space to a supermarket in 1954. 9 The City then leased
the space to a different tenant, which operated a seafood market, po-boy
restaurant, and Chinese food restaurant until the space was damaged by
Hurricane Katrina in 2005.10
The City renovated St. Roch Market between 2012 and 2014. 11 The
renovation cost $3,258,873.77, of which the City contributed $555,459.34. 12
The City then sought a master tenant to operate the property. 13 On May 10,
2014, defendant Will Donaldson submitted a proposal on behalf of a
company called Launch Pad. 14

Launch Pad proposed to “replicate the

original St. Roch Market through the installation of 15 independent, local
food vendors, each selling fresh and prepared foods seven days a week.” 15

R. Doc. 18-6 at 1.
Id. at 1-2.
10
Id. at 2.
11
R. Doc. 18-8 at 1-2.
12
Id. at 1. The rest of the money came from FEMA ($1,169,046.17) and
the Department of Housing and Urban Development’s Community
Development Block Grant program ($1,534,368.26). Id.
13
See R. Doc. 57 at 7.
14
R. Doc. 18-11.
15
Id. at 1.
3
8
9

On September 29, 2014, New Orleans Building Corporation (NOBC)
leased the building to Bayou Secret, LLC, which was allegedly established by
Donaldson and his business partners.16

The lease places a number of

restrictions on Bayou Secret’s use of the building. For example, the lease
requires Bayou Secret to operate “a full service neighborhood restaurant”
and “fresh foods market using multiple vendors in a ‘stalls’ concept.”17
According to the lease, “[i]t is important to [NOBC] that the fresh and
prepared foods market concept remain intact.” 18 Exhibit D to the lease
provides that Bayou Secret “may utilize existing typeface logo for the St. Roch
Market as is presently posted on the building and replicate this logo in
additional locations of the building.”19
According to Bayou Secret, it “has successfully operated St. Roch
Market as a southern food hall featuring a diverse lineup of food and
beverage purveyors.”20

Bayou Secret’s responsibilities allegedly include

identifying, securing, and managing the market’s vendors, cleaning and

16
17
18
19
20

R. Doc. 18-9 at 1; R. Doc. 21-1.
R. Doc. 21-1 at 5.
Id.
Id. at 42.
R. Doc. 1 at 3 ¶ 19.
4

maintaining the premises, and performing administrative functions for the
market.21
Bayou Secret opened a second food hall in New Orleans, called
“Auction House Market,” in 2018. 22 Bayou Secret allegedly displayed a
marketing banner using the “St. Roch Market” mark at this location in
December 2017. 23 After NOBC CEO Cynthia Connick raised this issue with
Bayou Secret, the banner was removed. 24
Bayou Secret and related entities also opened a food hall called “St.
Roch Market” in Miami in 2018. 25 Various newspaper articles and Bayou
Secret’s website report that Bayou Secret has plans to open additional food
halls called “St. Roch Market” in other locations, including Chicago and
Nashville, Tennessee. 26 The City and NOBC have not consented to the
opening of additional of food halls under the name “St. Roch Market.” 27
Helpful Hound, L.L.C. (allegedly a member of Bayou Secret) applied
for registration of “St. Roch Market” on April 6, 2017.28 The U.S. Patent and

21
22
23
24
25
26
27
28

Id. ¶ 18.
R. Doc. 18-9 at 2.
Id.
Id.
Id.
Id.; see also R. Docs. 18-2, 18-3, 18-4.
R. Doc. 18-9 at 2.
Case No. 18-3594, R. Doc. 1-5 at 51.
5

Trademark Office (PTO) refused registration on the Principal Register on the
ground that the mark was primarily geographically descriptive.29 The PTO
allowed registration on the Supplemental Register on September 19, 2017. 30
In April 2018, the City and Helpful Hound filed competing applications for
registration of “St. Roch Market” on the Principal Register. 31

Both

applications remain pending. The PTO initially refused registration of the
City’s mark, again on the ground that it is primarily geographically
descriptive.32

On July 5, 2018, the PTO approved the City’s mark for

publication on the Principal Register, 33 but then withdrew it on August 1. 34
On August 3, the PTO refused registration to the City because of a likelihood
of confusion with Helpful Hound’s Supplemental Register mark. 35 See 15
U.S.C. § 1052(d) (providing that a trademark application may be refused if it
“comprises a mark which so resembles a mark registered in the [PTO], or a

R. Doc. 21-2 at 2.
Case No. 18-3594, R. Doc. 1-5 at 1.
31
R. Doc. 18-7; R. Doc. 18-13.
32
R. Doc. 49-5 at 2.
33
R. Doc. 57 at 9.
34
See PTO, Trademark Status & Document Retrieval, Serial No.
87890988,
http://tsdr.uspto.gov/#caseNumber=87890988&caseSearchType=US_AP
PLICATION&caseType=DEFAULT&searchType=statusSearch.
35
PTO Office Action, Serial No. 87890988 (Aug. 3, 2018),
http://tsdr.uspto.gov/documentviewer?caseId=sn87890988&docId=OOA
20180803110207#docIndex=0&page=1.
6
29

30

mark or trade name previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection with the goods of
the applicant, to cause confusion”). Also on August 3, the PTO refused
Helpful Hound’s application on the ground that the mark is primarily
geographically descriptive.36 The City and Helpful Hound have not yet
responded to these August 3 office actions. The PTO’s actions in these
proceedings do not directly affect whether the City is entitled to preliminary
injunctive relief in this case. See Viacom Int’l v. IJR Capital Invs., L.L.C.,
891 F.3d 178, 185 (5th Cir. 2018) (noting that federal law protects valid
though unregistered trademarks); Union Nat’l Bank of Tex., Laredo v. Union
Nat’l Bank of Tex., Austin, 909 F.2d 839, 842 (5th Cir. 1990) (“Ownership of
trademarks is established by use, not by registration.”).
On April 3, 2018, Helpful Hound brought a declaratory judgment
action against the City and NOBC.37 Helpful Hound’s complaint seeks a
declaration of noninfringement and a declaration that the registration of its
service mark was proper.38 The City and NOBC (collectively, plaintiffs) filed
suit the next day against Bayou Secret, St. Roch F&B, LLC, Helpful Hound,

PTO Office Action, Serial No. 87860766 (Aug. 3, 2018),
http://tsdr.uspto.gov/documentviewer?caseId=sn87860766&docId=OOA2
0180802135650#docIndex=0&page=1.
37
R. Doc. 1.
38
Id. at 6 ¶¶ 37-38.
7
36

St. Roch Design District, LLC, Will Donaldson, Barre Tanguis, and David
Donaldson (collectively, defendants).39
number

of

claims,

including

Plaintiffs’ complaint asserts a

trademark

cancellation,

trademark

infringement, trademark dilution, unfair competition, breach of trademark
license or implied trademark license, breach of contract, and unauthorized
use of assumed name of a governmental entity. On May 4, 2018, plaintiffs
moved for a preliminary injunction to enjoin defendants “from using the
designation ‘St. Roch Market’ or any other confusingly similar designation in
connection with any business” at any location other than 2831 St. Claude
Avenue in New Orleans and defendants’ Miami location.40

Case No. 18-3594, R. Doc. 1. According to plaintiffs’ complaint, Bayou
Secret changed its name to St. Roch F&B in June 2016. Id. at 4 ¶ 5. St. Roch
Design District operates “St. Roch Market” in Miami; Will Donaldson is a
manager of Helpful Hound and St. Roch Design District; Barre Tanguis is a
member of Helpful Hound and a manager of St. Roch Design District; and
David Donaldson is a member of Helpful Hound. Id. at 4-5 ¶¶ 8-11.
40
R. Doc. 18; R. Doc. 18-15 (proposed order). Ultimately, plaintiffs also
seek to enjoin the use of the mark at the Miami location. Indeed, NOBC sent
a cease-and-desist letter to Bayou Secret and Helpful Hound regarding the
Miami location in January 2018. R. Doc. 18-9 at 2. Plaintiffs state that they
nevertheless chose not to seek a preliminary injunction against the Miami
location because “an injunction at that already-open location presents
difficult irreparable harm and balance of the harm issues.” R. Doc. 18-1 at 2.
At oral argument, counsel for plaintiffs further explained that the
preliminary injunction would merely preserve the status quo.
8
39

II.

LEGAL STANDARD
A party may obtain a preliminary injunction only if: (1) there is a

substantial likelihood that the movant will prevail on the merits; (2) there is
a substantial threat that the movant will suffer irreparable harm if the
injunction is not granted; (3) the threatened injury to the movant outweighs
the potential injury to the nonmovant; and (4) the preliminary injunction
will not disserve the public interest.

Guy Carpenter & Co., Inc. v.

Provenzale, 334 F.3d 459, 464 (5th Cir. 2003). When evaluating whether
the movant has satisfied these requirements, the Court must remember that
“[a] preliminary injunction is an extraordinary remedy which courts grant
only if the movant has clearly carried the burden as to all four elements.” Id.
Granting a preliminary injunction is “the exception rather than the rule.”
Miss. Power & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th
Cir. 1985).

III. DISCUSSION
A.

Trademark Infringement

Plaintiffs first seek a preliminary injunction based on trademark
infringement under the Lanham Act. See 15 U.S.C. §§ 1051, et seq. The
Lanham Act provides a cause of action for trademark infringement against a
9

person who “uses (1) any reproduction, counterfeit, copy[,] or colorable
imitation of a mark; (2) without the registrant’s consent; (3) in commerce;
(4) in connection with the sale, offering for sale, distribution[,] or advertising
of any goods; (5) where such use is likely to cause confusion, or to cause
mistake or to deceive.” Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d
321, 329 (5th Cir. 2008) (quoting Boston Prof’l Hockey Ass’n v. Dall. Cap &
Emblem Mfg., 510 F.2d 1004, 1009-10 (5th Cir. 1975)). The Fifth Circuit has
spoken directly to what a party must show in order to obtain a preliminary
injunction for trademark infringement:
First, he must prove that the name he seeks to protect is eligible
for protection. He must then prove he is the senior user. Having
proven these elements he must then show a likelihood of
confusion between his mark and that of the defendant. Finally,
because he is asking for the equitable remedy of an injunction,
he must show that the likelihood of confusion will actually cause
him irreparable injury for which there is no adequate legal
remedy.
Union Nat’l Bank, 909 F.2d at 844; see also Paulsson Geophysical Servs.,
Inc. v. Sigmar, 529 F.3d 303, 309 (5th Cir. 2008).
1.

Protectability

The Lanham Act defines a service mark (i.e., a trademark used for
services rather than goods) as “any word, name, symbol, or device, or any
combination thereof . . . used by a person . . . to identify and distinguish the
services of one person . . . from the services of others and to indicate the
10

source of the services, even if that source is unknown.” 15 U.S.C. § 1127; see
also Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 236 (5th
Cir. 2010). A mark must be distinctive to be protectable. Amazing Spaces,
608 F.3d at 237. Certain marks, including words “that are ‘arbitrary’ (‘Camel’
cigarettes), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)
are held to be inherently distinctive.” Wal-Mart Stores, Inc. v. Samara
Bros., 529 U.S. 205, 210-11 (2000). Marks that are not inherently distinctive
must acquire “secondary meaning” to be protectable. Id. at 211.
The parties agree that the mark is protectable; each side seeks to
protect it against the other’s use. The Court nevertheless addresses this
element because the Patent and Trademark Office (PTO) refused registration
on the Principal Register. 41

“[R]egistration of a mark with the PTO

constitutes prima facie evidence that the mark is valid and that the registrant
has the exclusive right to use the registered mark in commerce with respect
to the specified goods or services.” Amazing Spaces, 608 F.3d at 237. As
noted earlier, lack of registration is not fatal to a trademark infringement
claim because “the Lanham Act ‘protects qualifying unregistered marks.’”
Viacom Int’l, 891 F.3d at 185 (quoting Sugar Busters LLC v. Brennan, 177
F.3d 258, 267 (5th Cir. 1999)). The PTO found that “St. Roch Market” was

41

R. Doc. 21-2 at 2.
11

not registrable because it was merely descriptive. Specifically, the mark was
“geographically descriptive of the origin of the applicant’s services.”42 See 15
U.S.C. § 1052(e). The PTO added the mark to the Supplemental Register, 43
which means that the PTO regarded “St. Roch Market” as “capable of”
distinctiveness. 15 U.S.C. § 1091(a); see also T-Mobile US, Inc. v. AIO
Wireless LLC, 991 F. Supp. 2d 888, 909 (S.D. Tex. 2014) (“While
supplemental registration does not create a statutory presumption of
validity, the mark may still become distinctive and legally protectable
through its use in commerce.”).
“A mark is geographically descriptive if it describes to consumers the
geographic origin of the goods or services rather than the source of the goods
or services.” Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1538
(S.D. Tex. 1996) (citing Burke-Parsons-Bowlby Corp. v. Appalachian Log
Homes, Inc., 871 F.2d 590, 594 (6th Cir. 1989)). A mark is not descriptive
merely because it contains a geographic term, especially if “the geographic
meaning is minor, obscure, remote, or unconnected with the goods.” World
Carpets, Inc. v. Dick Littrell’s New World Carpets, 438 F.2d 482, 486 (5th
Cir. 1971); see also id. (“Additionally, it has been noted that a mark is not

42
43

Id.
Case No. 18-3594, R. Doc. 1-5 at 1.
12

primarily geographically descriptive if (1) it does not identify the place or the
region from which the goods come, or (2) it does not suggest that the goods
come from the place or region named by the mark.”).

But a mark is

geographically descriptive if “a logical connection can be made between the
product and the geographical term.” Burke-Parsons-Bowlby, 871 F.2d at
595.
As an initial matter, the Court distinguishes between use of the mark
in New Orleans and prospective use of the mark in other cities. See Sarco
Creek Ranch v. Greeson, 36 F. Supp. 3d 726, 733 (S.D. Tex. 2014) (“[T]he
services-place association is evaluated ‘from the perspective of the relevant
public for those services.’” (quoting In Re MCO Props. Inc., 38 U.S.P.Q.2d
1154 (T.T.A.B. Nov. 27, 1995)). Like the PTO, the Court finds that use of the
mark in New Orleans is geographically descriptive. St. Roch is the name of
the avenue on which the market is located, and is one name for the
neighborhood in which it is situated. The geographic element of the mark is
clearly connected to the services provided by St. Roch Market in New
Orleans. Thus, the mark identifies the place where the services are provided.
This association between place and services makes St. Roch Market
geographically descriptive for consumers in the New Orleans area.

13

Potential consumers in Chicago, Nashville, and other cities far afield
likely would not make the same association. St. Roch—unlike, say, the
French Quarter—is not a place name that is generally recognizable by the
American public. Cf. In re The Newbridge Cutlery Co., 776 F.3d 854, 862
(Fed. Cir. 2015) (substantial evidence did not support “[t]he conclusion that
Newbridge, Ireland, a town of less than twenty thousand people, is a place
known generally to the relevant American public”). Nor is there any reason
to believe that the neighborhood of St. Roch would be any less obscure to
potential customers at defendants’ prospective food halls. Thus, the use of
the mark outside the New Orleans area is inherently distinctive rather than
geographically descriptive.
Because plaintiffs have used the mark only in New Orleans, they must
show secondary meaning in order to establish the protectability of the mark.
Secondary meaning “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.’” Wal-Mart, 529 U.S. at 211 (quoting Inwood Labs., Inc.
v. Ives Labs., Inc., 456 U.S. 844, 851, n.11 (1982)); see also Restatement
(Third) of Unfair Competition § 13 cmt. e (1995) (“Secondary meaning exists
only if a significant number of prospective purchasers understand the term,
when used in connection with a particular kind of good, service, or business,
14

not merely in its lexicographic sense, but also as an indication of association
with a particular, even if anonymous, entity.”). “Secondary meaning ‘in
connection with geographically descriptive marks means that the mark no
longer causes the public to associate the goods with the geographical
location, but to associate the goods with a particular product or source of the
product.’” Sarco Creek Ranch, 36 F. Supp. 3d at 732 (citation omitted).
A party’s burden of demonstrating secondary meaning “is substantial
and requires a high degree of proof.” Nola Spice Designs, L.L.C. v. Haydel
Enters., Inc., 783 F.3d 527, 544 (5th Cir. 2015) (quoting Test Masters Educ.
Servs. v. Singh, 428 F.3d 559, 567 (5th Cir. 2005)). In evaluating whether a
mark has acquired secondary meaning, courts consider the following factors:
(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.
Viacom, 891 F.3d at 190 (quoting Test Masters Educ. Servs. v. Robin Singh
Educ. Servs., Inc., 799 F.3d 437, 445 (5th Cir. 2015)). The inquiry is
primarily empirical. Nola Spice, 783 F.3d at 544. Survey evidence is “the
most direct and persuasive way of establishing secondary meaning,” but it is
not necessary. Id. (quoting Amazing Spaces, 608 F.3d at 248).

15

Because the protectability of the mark is uncontested, the parties
provide little evidence of secondary meaning. Nevertheless, it is clear that
St. Roch Market has long been used as the name of a specific food market in
New Orleans. Both parties state that St. Roch Market has been known as
such since the late 1800s.44 Attached to plaintiffs’ complaint is a photograph
dated January 28, 1964, portraying St. Roch Market with its distinctive
sign. 45 The photograph shows an additional sign, which reads “Lama’s Meat
Market.” The Lama family later relocated their business—now a restaurant
called “Lama’s St. Roch”—to Mandeville, Louisiana. 46

Their website

emphasizes the restaurant’s connection to St. Roch Market.47 The Lama
family’s continued use of the name “St. Roch” outside of the St. Roch
neighborhood indicates an association between the name and the provision
of food that transcends geographic boundaries. This undisputed evidence,
though limited, suggests a lengthy use of the mark in connection with the

See R. Doc. 18-1 at 3; R. Doc. 21 at 2.
Case No. 18-3594, R. Doc. 1-3.
46
See R. Doc. 21 at 14; see also Lama’s St. Roch,
https://www.strochmandeville.com (last visited June 18, 2018).
47
See Lama’s St. Roch, https://www.strochmandeville.com/about (last
visited June 18, 2018) (“By 1947 the family stepped into the New Orleans St.
Roch Market and quickly became the area’s favorite place for seafood of all
kinds, St. Roch Seafood became a staple business in the community and
continued to serve the New Orleans area as the sole occupant of the Market
for over 50 years.”).
16
44
45

provision of food. Cf. Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148
F.3d 417, 421 (4th Cir. 1998) (agreeing with district court’s finding of
secondary meaning because “the undisputed evidence showed that
PINEHURST had been used in connection with [plaintiff’s] golf courses since
the turn of the century”). Thus, the secondary meaning of St. Roch Market
is that of a specific food market in New Orleans.
Defendants, like the Lama family, seek to capitalize on this secondary
meaning. For example, a screenshot of defendants’ website for its Miami
location states that “St. Roch Market is a contemporary, multi-vendor food
hall brand, hailing from New Orleans,” and that “[t]his popular New Orleans
food hall has made its way down to Miami.”48 Another screenshot from the
website gives a brief history of St. Roch Market in New Orleans.49 These
deliberate associations suggest that defendants themselves believe the mark
has “secondary meaning that could influence consumers, which further
supports the conclusion that there is secondary meaning here.”50 Bd. of

R. Doc. 18-12 at 3.
Id. at 6.
50
Of course, the meaning of “St. Roch Market” created by defendants in
Miami and other cities is not technically “secondary” because the mark is
inherently distinctive there. Moreover, defendants’ use of the mark outside
New Orleans is not necessarily indicative of the mark’s meaning in the New
Orleans area. But this use in other cities suggests a nascent association
between the mark and the provision of food services in the minds of the
American public, millions of whom visit New Orleans each year. See Jennifer
17
48
49

Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,
550 F.3d 465, 477 (5th Cir. 2008). In light of this evidence, it is substantially
likely that plaintiffs will be able to establish secondary meaning of the mark
in the New Orleans area. Thus, it is substantially likely that the mark is
protectable both in New Orleans (where it is has secondary meaning) and in
cities far afield (where the mark is inherently distinctive).
2.

Use

The parties chiefly dispute whose use of the mark is senior. “The first
one to use a mark is generally held to be the ‘senior’ user and is entitled to
enjoin other junior users from using the mark, or one that is deceptively
similar to it, subject to limits imposed by the senior user’s market and natural
area of expansion.” Union Nat’l Bank, 909 F.2d at 842-43. The senior user’s
use must be continuous up until the present, 2 McCarthy on Trademarks
and Unfair Competition § 16:9 (5th ed. 2018), although some evolution in
use is tolerated, id. § 17:24; see also 4 Callmann on Unfair Competition,
Trademarks and Monopolies § 20:4 (4th ed. 2018) (“The product or service
on which priority of use is predicated need not be the same as the product or

Larino, How Many Tourists Visited New Orleans in 2017? The Answer
Depends on Who You Ask, NOLA.com | Times-Picayune (May 14, 2018),
https://www.nola.com/business/index.ssf/2018/05/tourist_count_new_o
rleans_cvb.html; see also R. Doc. 18-3 at 1 (Chicago Eater article referring to
St. Roch Market as “a New Orleans staple”).
18

service for which the mark rights are later asserted; a relation between them
may suffice.”). For a mark that is distinctive only because it has acquired
secondary meaning, the senior user is the party that first developed
secondary meaning.

See 2 McCarthy on Trademarks and Unfair

Competition § 16:34.
Generally, a senior user’s common law rights are geographically
limited. 51 Two Supreme Court cases, Hanover Star Milling Co. v. Metcalf,
240 U.S. 403 (1916) (Tea Rose), and United Drug Co. v. Theodore Rectanus
Co., 248 U.S. 90 (1918), “have given rise to the general proposition that ‘a
senior user has exclusive rights to a distinctive mark anywhere it was known
prior to the adoption of the junior user.’” C.P. Interests, Inc. v. Cal. Pools,
Inc., 238 F.3d 690, 700 (5th Cir. 2001) (quoting A.J. Canfield Co. v.
Honickman, 808 F.2d 291, 295 n.4 (3d Cir. 1986)). In other words, “the
national senior user of a mark cannot oust a geographically remote goodfaith user who has used the mark first in a remote trade area.” 2 McCarthy
on Trademarks and Unfair Competition § 26.4. “A ‘remote’ territory is one
where, at the critical date of the junior user’s first use, the senior user’s mark
was not known by customers in that territory, such that no one would have

These geographical limitations do not apply if the mark is properly
registered on the Principal Register. See 15 U.S.C. § 1057.
19
51

been confused as to source.” Id. (footnote omitted). Under Fifth Circuit
precedent, the good faith inquiry takes into consideration both the junior
user’s knowledge of the plaintiff’s use and the junior user’s “intent to benefit
from the reputation or good will of the plaintiff.” El Chico, Inc. v. El Chico
Cafe, 214 F.2d 721, 726 (5th Cir. 1954); see also C.P. Interests, 238 F.3d at
700.
It is undisputed that the City has leased St. Roch Market to tenants who
provide food services since the nineteenth century. The City leased stalls in
to various food vendors until 1945. 52 The Lama family was the sole tenant
from 1945 until the 1990s, and first operated a seafood market and po-boy
restaurant at the site before converting the space to a supermarket in 1954. 53
Every lease to a member of the Lama family required that the lessee use the
space for some sort of food market.54 From the 1990s until 2005, the City
leased the space to a different tenant who operated a seafood market, po-boy
restaurant, and Chinese food restaurant under the name St. Roch Market.55

R. Doc. 18-6 at 1.
Id. at 1-2.
54
See generally R. Doc. 49-4.
55
R. Doc. 18-6 at 2. This lease does not appear in the record, although
there is a sublease between St. Roch Market, Inc. (run by the Lama family)
and Nhu Thi-Nguyen Le dated July 17, 1996. See R. Doc. 49-4 at 31. The
sublease requires the sublessee to operate a seafood market on the premises
under the name St. Roch Seafood Market. Id. at 32. The City sent a letter to
A.J. Lama on February 20, 1997, indicating that the City did not consent to
20
52
53

The market was damaged by Hurricane Katrina and sat vacant until the City
completed renovations in 2014.56 NOBC then leased the space to Bayou
Secret, which has since operated a food hall in the building pursuant to the
terms of the lease. Although the use of St. Roch Market has evolved over
time, each prior use is substantially identical to its present use as a food hall.
See Big Blue Prods. Inc. v. IBM Corp., 19 U.S.P.Q.2d 1072 (T.T.A.B. 1991)
(holding that for purposes of registration, a prior use may be tacked onto a
subsequent “substantially identical” use); see also C.P. Interests, 238 F.3d at
700-01 (citing Big Blue v. IBM); Ludden v. Metro Weekly, 8 F. Supp. 2d 7,
15 (D.D.C. 1998) (holding that an advice column and a stage show inspired
by that column were sufficiently related for a jury to find that use of a mark
in connection with one established priority of use of the mark in connection
with the other). The various uses of St. Roch Market over time are essentially
different iterations of a public food market.
The critical question in this case is whether the landlord (as owner of
the food hall) has seniority over the tenant (as operator of the food hall).
According to a leading treatise, “[o]wnership of a mark identifying a business

the sublease and would terminate the lease on February 28, 1997. Id. at 20.
It is unclear whether the City ever signed a formal lease for St. Roch Market
with Nhu Thi-Nguyen Le, or anyone else, until the Bayou Secret lease was
signed in 2014.
56
R. Doc. 18-6 at 2.
21

carried on at rented premises will depend on an informed balancing of the
policies of customer perception and contractual provisions (express or
implied) between landlord and tenant.” See 2 McCarthy on Trademarks
and Unfair Competition § 16:38. Of course, if the tenant creates the mark
and owns the business with which the mark is associated, the tenant owns
the mark. See id. “But the rule is otherwise where the business has become
inseparably identified with a particular building.” 4 Callmann on Unfair
Competition, Trademarks and Monopolies § 20:40. A number of courts
have held that the name of a public building used in commerce belongs to
the owner of that building. See, e.g., City of New York v. Tavern on the
Green, L.P., 427 B.R. 233 (S.D.N.Y. 2010); Norden Rest. Corp. v. Sons of the
Revolution in the State of N.Y., 415 N.E.2d 956 (N.Y. Ct. App. 1980); see also
Shubert v. Columbia Pictures Corp., 72 N.Y.S.2d 851, 855 (Sup. Ct. 1947)
(“[T]he good will of a public building, such as a theatre or hotel, runs with
the building . . . .”).
In Norden Restaurant, the defendant owned a building in lower
Manhattan that had been called Fraunces Tavern since the eighteenth
century. The plaintiff leased the space and operated a restaurant there called
Fraunces Tavern Restaurant.

Although the plaintiff-tenant registered

“Fraunces Tavern” as a service mark, the court held that the defendant22

landlord’s common law rights were superior. Norden Rest., 415 N.E.2d at
957. The court focused on provisions of the lease that required the tenant to
conduct business only under the name “Fraunces Tavern Restaurant,” and
limited the tenant’s right to use the name to the building itself. Id. According
to the court, the tenant thereby “accepted the licensed use of the name upon
the terms dictated by the defendant,” and could not “assert ownership” of the
name against the defendant. Id.
In another New York case, City of New York v. Tavern on the Green,
the city owned a building in Central Park called Tavern on the Green. The
building was built in 1934 and then leased to various companies that
operated a restaurant under the name “Tavern on the Green.”

The

defendants, who had leased the building and operated the restaurant since
1973, registered the name of the restaurant as a service mark in 1981. The
court nevertheless found that the city had a superior common law right.
Tavern on the Green, 427 B.R. at 241.

The court noted that the city

established the restaurant over thirty-five years before the defendants began
to operate it, named the restaurant, selected its tenants, and “made
significant investments to ensure” its success. Id. The court also noted that
the 1973 lease required the tenant to operate Tavern on the Green as a
restaurant and gave the city some managerial power. For example, the lease
23

required the manager to be “satisfactory to the City,” required “a sufficient
number of trained attendants,” and required that the attendants “wear a
City-approved uniform.” Id. at 238. “Because the undisputed facts show[ed]
that the City established and continuously maintained a restaurant under the
name ‘Tavern on the Green’ at the same location in New York’s Central Park
since 1934,” the court held that “the City ha[d] a protectible interest in that
name under” state law. Id. at 242.
The Ninth Circuit came to the opposite conclusion, ruling in favor of a
tenant, in Department of Parks and Recreation for the State of California v.
Bazaar del Mundo, 448 F.3d 1118 (9th Cir. 2006). There, the state had
owned two historic buildings in Old Town San Diego, Casa de Pico and Casa
de Bandini, since 1968. The buildings housed shops in 1968 and 1969, and
Casa de Bandini served as the headquarters for San Diego’s bicentennial
celebration.

The state granted the defendant a concession to operate

restaurants in the two buildings, and the defendant began using the
buildings’ names in commerce in 1971 (Casa de Pico) and 1980 (Casa de
Bandini). To show ownership of the marks, the state pointed to a brochure
advertising the bicentennial celebration and a brochure describing the
history of Old Town San Diego. Although each brochure mentioned the two
buildings, neither “was designed to attract the attention of the viewer to the
24

marks themselves.” Id. at 1127. The brochures therefore “fail[ed] to create
any association between the marks and the tourism and recreation services
provided by the Department of Parks.” Id. Even if the state had used the
marks in commerce, the court noted, such use was “merely transitory,” and
did not establish secondary meaning. Id.
The Court finds that this case more closely resembles the New York
cases than Bazaar del Mundo. Like Tavern on the Green, St. Roch Market
has long been associated with food services. The City’s use of the mark has
not been transitory and it achieved secondary meaning well before
defendants acquired the lease in 2014. The City also designed and built the
market, chose its lessees, and made significant investments to restore it after
Hurricane Katrina. Defendants argue that this conduct does not suffice to
establish use because there is no evidence that the City ever actually operated
a market—or any other type of food service—in the building.57

But

defendants cite no authority for the proposition, implicitly rejected by
Norden Restaurant and Tavern on the Green, that a landlord must operate
a specific business in its building in order to acquire ownership over the
building’s name. 58 The Court therefore finds that plaintiffs used “St. Roch

R. Doc. 21 at 9.
Defendants also argue that the Louisiana Constitution prohibits the
City from using the mark in commerce. R. Doc. 21 at 11-12. No such
25
57

58

Market” in commerce, and achieved secondary meaning in the mark, before
defendants began to use the mark in 2014.
Moreover, the 2014 lease—like the leases in the New York cases—
includes several limitations on Bayou Secret’s use of the premises. Section
5.1 of the lease requires Bayou Secret to operate “a full service neighborhood
restaurant” and “fresh foods market using multiple vendors in a ‘stalls’
concept.” 59 The lease also prohibits Bayou Secret from using the building
“for any other business or purpose” or “in any way that will injure the
reputation of the NOBC or the Building.”60 Bayou Secret must obtain
NOBC’s consent to assign the lease, and NOBC may reject an assignment if
the proposed transferee’s use of the premises “would not be in strict
conformity with” Section 5.1. 61 If Bayou Secret desires to change the use of
the building, the lease requires Bayou Secret to provide NOBC “with detailed
information on the proposed new or additional uses,” and subjects any such

prohibition appears in the Louisiana Constitution of 1974, however, and the
one case cited by defendants, Public Housing Administration v. Housing
Authority of the City of Bogalusa, 129 So. 2d 871 (La. App. 1 Cir. 1961), was
decided before the current version of the constitution came into effect.
59
R. Doc. 21-1 at 5.
60
Id. at 5-6.
61
Id. at 18.
26

change to NOBC’s approval. 62 The lease also provides for certain business
hours, though it gives Bayou Secret some discretion to vary the hours. 63
Additionally, the lease permits Bayou Secret to “utilize existing
typeface logo for the St. Roch Market as is presently posted on the building
and replicate this logo in additional locations of the building.”64 But the lease
requires the City’s consent to change or add exterior signage, and gives the
City “the right to disapprove and require the removal of any sign, graphics,
lettering, or advertising readily visible from outside” the market.65 The lease
also prohibits the use of “any signs or displays illuminated electrically or
otherwise.”66
These terms do not give plaintiffs as much managerial authority as the
Tavern on the Green lease gave the City of New York, nor does it restrict the
tenant’s use of the building name as explicitly as the Fraunces Tavern lease
did. Nevertheless, the lease’s restrictions on Bayou Secret’s use of St. Roch
Market further buttresses the Court’s finding that plaintiffs own the mark.
Defendants also argue that even if plaintiffs owned the mark, their
common law rights do not extend to the locations where defendants plan to

62
63
64
65
66

Id. at 10.
Id.
Id. at 45.
Id. at 6-7.
Id. at 10.
27

open additional food halls called “St. Roch Market.” Chicago and Nashville
may very well be remote locations. But, as noted earlier, the evidence
suggests that defendants intend to capitalize on the goodwill and reputation
developed by plaintiffs. Screenshots from defendants’ website for its Miami
location include a number of references to New Orleans:
• “St. Roch Market is a contemporary, multi-vendor food hall
brand, hailing from New Orleans.”
•

“This popular New Orleans food hall has made its way down to
Miami.”

• “[A]t St. Roch, a New Orleans-based concept, chefs can try out
their ideas on a small scale before launching stand-alone
restaurants.”
• “In 1875, the original St. Roch Market in New Orleans was named
in honor of the Patron Saint of miraculous cures. For months
prior, the neighborhood held vigil to Saint Roch, praying for an
end to a devastating yellow fever epidemic. Once the fever broke,
the grateful community enclosed the Market and gave it its
official name.
“In its lifetime, the New Orleans Market has gone from an
outdoor selling space on the neutral ground, to the fish market
that was shut down by Katrina, to the food hall we know and love
today. But it’s always been a gathering place, a place where
neighbors become friends and break bread together. Each day,
we strive to keep the spirit of community and the resilience
inherent to the St. Roch Market name alive.”67

67

R. Doc. 18-12 at 3-6.
28

This evidence indicates that defendants seek to use the mark in bad faith.
See C.P. Interests, 238 F.3d at 700; El Chico, 214 F.2d at 726. Thus,
plaintiffs’ trademark rights are not limited geographically.
3.

Likelihood of confusion

The most important question in a trademark infringement action “is
whether one mark is likely to cause confusion with another.” Xtreme Lashes,
LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). The Fifth
Circuit relies on a nonexhaustive list of “digits of confusion” to determine
whether a likelihood of confusion exists: “(1) the type of trademark; (2) mark
similarity; (3) product similarity; (4) outlet and purchaser identity;
(5) advertising media identity; (6) defendant’s intent; (7) actual confusion;
and (8) care exercised by potential purchasers.” Id. at 227. Generally, no
single “digit” is treated as dispositive of the existence of a likelihood of
confusion. Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th
Cir. 1985).
As an initial matter, the Court notes that the parties are not necessarily
in direct competition with each other because plaintiffs do not intend to
establish additional food halls called “St. Roch Market” outside New Orleans.
But “[d]irect competition between the parties’ services or products is not
required in order to find a likelihood of confusion.” Elvis Presley Enters.,
29

Inc. v. Capece, 141 F.3d 188, 202 (5th Cir. 1998). “When products or services
are noncompeting, the confusion at issue is one of sponsorship, affiliation,
or connection.” Id.
Mark similarity weighs heavily in favor of finding a likelihood of
confusion. “‘The relevant inquiry is whether, under the circumstances of the
use,’ the marks are sufficiently similar that prospective purchasers are likely
to believe that the two users are somehow associated.” Capece, 141 F.3d at
201 (quoting Restatement (Third) of Unfair Competition § 21 cmt. c). “Mark
similarity ‘is determined by comparing the marks’ appearance, sound, and
meaning.’” Xtreme Lashes, 576 F.3d at 228 (quoting Capece, 141 F.3d at
201). “Similarity of appearance is determined on the basis of the total effect
of the designation, rather than on a comparison of individual features.” Id.
(quoting Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir.
1980)). Here, plaintiffs’ and defendants’ marks are identical. Indeed, both
sides assert ownership over the same mark. Defendants’ Miami food hall
even uses the same typeface as the signage on St. Roch Market in New
Orleans. Mark similarity therefore weighs heavily in favor of a likelihood of
confusion. See, e.g., Paulsson, 529 F.3d at 310-11 (affirming preliminary
injunction in trademark infringement case even though district court relied
solely on mark similarity); see also Champions Golf Club, Inc. v. The
30

Champions Golf Club, Inc., 78 F.3d 1111, 1119 (6th Cir. 1996) (noting that
mark similarity “is a factor entitled to considerable weight”).
Service similarity also suggests a likelihood of confusion. Defendants
intend to use the mark in connection with a food hall—the same services
currently provided at St. Roch Market in New Orleans.

Plaintiffs and

defendants are responsible for slightly different aspects of running a food
hall: plaintiffs own the space and lease it to defendants, while defendants
operate the food hall and lease stalls to different vendors. But the Fifth
Circuit has not regarded such minor differences as material. See, e.g.,
Viacom, 891 F.3d at 193-94 (noting that services similarity indicated a
likelihood of confusion because both marks were associated with a
restaurant, even though the plaintiff produced a television show featuring a
restaurant and the defendant sought to operate an actual restaurant); Exxon
Corp. v. Tex. Motor Exch. of Houston, Inc., 628 F.2d 500, 505 (5th Cir. 1980)
(noting “a strong similarity between the[] wares and services” of Exxon and
car repair shop). In light of mark similarity and associations with the New
Orleans St. Roch Market on news and advertising media,68 the services are
similar enough to cause confusion as to whether the New Orleans St. Roch

See, e.g., R. Doc. 18-3 (Chicago Eater article); R. Doc. 18-4 (Crain’s
Chicago Business article); R. Doc. 18-5 (New Orleans Eater article); R. Doc.
18-12 (screenshots from defendants’ website).
31

68

Market and defendants’ other prospective food halls called “St. Roch Market”
are affiliated.
Defendants’ intent also weighs in favor of finding a likelihood of
confusion. This “inquiry focuses on whether the defendant intended to
derive benefits from the reputation of the plaintiff.” Streamline Prod. Sys.,
Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 455 (5th Cir. 2017). The Fifth
Circuit has noted that “the intent of defendants in adopting their mark is a
critical factor, since if the mark was adopted with the intent of deriving
benefit from the reputation of the plaintiff, that fact alone may be sufficient
to justify the inference that there is confusing similarity.” Am. Rice, 518 F.3d
at 332 (quoting Chevron Chem. Co. v. Voluntary Purchasing Grps., Inc., 659
F.2d 695, 703-04 (5th Cir. 1981)) (parentheses omitted). As explained
earlier, defendants have deliberately created associations between St. Roch
Market in New Orleans and their Miami food hall. 69 There is no reason to
believe that defendants will not also create such associations with regard to
their prospective food halls in other cities.

Thus, it is apparent that

defendants seek to “appropriate the good will and good name” developed by

See, e.g., R. Doc. 18-12 at 3 (“This popular New Orleans food hall has
made its way down to Miami.”).
32
69

plaintiffs. Nat’l Ass’n of Blue Shield Plans v. United Bankers Life Ins. Co.,
362 F.2d 374, 377 (5th Cir. 1966).
On the other hand, the physical distances between New Orleans and
the cities where defendants plan to open additional food halls called “St.
Roch Market” weigh against finding a likelihood of confusion. Because of
these distances, the overlap in potential customers of St. Roch Market in New
Orleans and defendants’ future locations is likely small. The strength of the
mark, which is descriptive rather than inherently distinctive, also weighs
against finding a likelihood of confusion. 70 There is little evidence pertaining
to the remaining factors, so these factors do not weigh strongly either way.
In weighing the factors, the Court finds that mark similarity, services
similarity, and defendants’ deliberate attempts to associate their food halls
outside New Orleans with St. Roch Market in New Orleans outweigh the

Defendants further argue that use of the name “St. Roch” by third
parties tends to reduce the likelihood of confusion. R. Doc. 21 at 14. But
there is no evidence that third parties are using the name “St. Roch Market,”
which is the term plaintiffs seek to enjoin defendants from using. Cf. Sun
Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 317 (5th Cir.
1981) (weakness of the mark weighed against finding a likelihood of
confusion because the only similarity in the marks was the use of the word
“sun,” and “[t]he evidence abundantly established existing third-party use of
the name ‘Sun,’ both within and without the financial community”). That the
marks of a few third parties also incorporate “St. Roch” merely reflects the
geographic descriptiveness and secondary meaning of that term, issues that
the Court has already addressed.
33
70

small overlap in potential customers and the weakness of the mark. The Fifth
Circuit has emphasized that finding a likelihood of confusion is particularly
appropriate when a defendant’s use of the plaintiff’s mark “is designed to
create the illusion of affiliation” with the plaintiff. Smack Apparel, 550 F.3d
at 483. “This creation of a link in the consumer’s mind . . . and the intent to
directly profit therefrom results in ‘an unmistakable aura of deception’
and likelihood of confusion.”

Id. at 484 (quoting Bos. Athletic Ass’n v.

Sullivan, 867 F.2d 22, 35 (1st Cir. 1989)). Plaintiffs have therefore shown a
substantial likelihood of success on the merits of their trademark
infringement claim.
B.

Breach of Trademark License

Plaintiffs also seek a preliminary injunction based on breach of
trademark license. This claim essentially asserts breach of contract under
Louisiana law. See Brennan’s Inc. v. Dickie Brennan & Co. Inc., 376 F.3d
356, 366 (5th Cir. 2004) (treating breach of trademark license claim as
breach of contract claim); see also 3 McCarthy on Trademarks and Unfair
Competition § 18:43 (“Trademark license contract disputes are governed by
the general rules of contract interpretation.”). To prevail on a breach of
contract claim under Louisiana law, an obligee must establish that (1) the
obligor undertook an obligation to perform, (2) “the obligor failed to perform
34

the obligation,” and (3) “the failure to perform resulted in damages to the
obligee.” Favrot v. Favrot, 68 So. 3d 1099, 1108-09 (La. App. 4 Cir. 2011).
Plaintiffs argue that defendants’ use of the mark outside St. Roch
Market in New Orleans violates the 2014 lease. 71 The lease does not explicitly
prohibit such use of the mark; Exhibit D to the lease merely permits Bayou
Secret to “utilize existing typeface logo for the St. Roch Market as is presently
posted on the building and replicate this logo in additional locations of the
building.”72 This language clearly grants Bayou Secret a license to use the
mark inside St. Roch Market in New Orleans. According to the Fifth Circuit,
“the prevailing view is that one who exceeds the scope of [such a] license”
may be liable for both breach of contract and trademark infringement.
Brennan’s, 376 F.3d at 364; see also Nat’l Bus. Forms & Printing, Inc. v.
Ford Motor Co., 671 F.3d 526, 535 (5th Cir. 2012) (agreeing with the
proposition “that the terms of the trademark license circumscribe a
trademark licensee’s right to use a protected mark”); Digital Equip. Corp. v.
AltaVista Tech., Inc., 960 F. Supp. 456, 473-75 (D. Mass. 1997) (analyzing
breach of trademark license claim). But “a party cannot enforce a license it

71
72

R. Doc. 18-1 at 19-20.
R. Doc. 21-1 at 45.
35

does not control.” J & J Sports Prods., Inc. v. Morales, 226 F. Supp. 3d 730,
733 (W.D. Tex. 2016) (citing Brennan’s, 376 F.3d at 364).
These cases suggest that if a party owns a mark, then a license to use
that mark implies an obligation not to use the mark outside the scope of the
license. For example, in Digital Equipment, the plaintiff licensed the mark
“AltaVista” to the defendant. 960 F. Supp. at 473. The license read: “Digital
hereby grants to ATI a nonexclusive, nontransferable license to use the
trademark . . . as part of the corporate name ‘Altavista Technologies, Inc.’
and as part of the url ‘http://www.altavista.com,’ and in accordance with and
subject to the terms and conditions of this Agreement . . . .” Id. at 473-74.
The district court applied the maxim expressio unius est exclusio alterius in
concluding that the license’s “express grant of permitted uses precludes
other uses.” Id. at 473. The court held that any other use of the mark would
likely breach the license agreement, and enjoined any such use. Id. at 474,
478.
Here, the Court has already found a substantial likelihood that
plaintiffs will succeed in establishing their ownership of a protectable mark.
Defendants’ use of the mark in connection with food halls in other cities
obviously exceeds the scope of the license in Exhibit D to the 2014 lease.

36

Thus, the Court finds a substantial likelihood that plaintiffs will succeed on
the merits of their breach of trademark license claim.
C.

Substantial Threat of Irreparable Harm

The central prerequisite for injunctive relief “is a demonstration that if
it is not granted the applicant is likely to suffer irreparable harm before a
decision on the merits can be rendered.” 11A Wright & Miller, Federal
Practice and Procedure § 2948.1 (3d ed. 2018). “In general, a harm is
irreparable where there is no adequate remedy at law, such as monetary
damages.” Janvey v. Alguire, 647 F.3d 585, 600 (5th Cir. 2011). This risk of
harm must be “more than mere speculation,” id. at 601; “[a] presently
existing actual threat must be shown,” 11A Wright & Miller, Federal Practice
and Procedure § 2948.1.
In trademark infringement cases, courts have historically presumed
irreparable harm once a plaintiff establishes likelihood of success on the
merits. See Paulsson, 529 F.3d at 312 (collecting cases); ADT, LLC v. Capital
Connect, Inc., 145 F. Supp. 3d 671, 695 (N.D. Tex. 2015); see also
Restatement (Third) of Unfair Competition § 35 cmt. h (“Absent special
circumstances, courts will ordinarily grant a preliminary injunction in a
trademark infringement action if there is strong evidence of a likelihood of
confusion.”). But the Fifth Circuit “has avoided ‘expressly adopting this
37

presumption of irreparable injury.’” Paulsson, 529 F.3d at 312 (quoting S.
Monorail Co. v. Robbins & Myers, Inc., 666 F.2d 185, 188 (5th Cir. Unit B
1982)). Moreover, recent Supreme Court cases have called into question
whether this presumption is appropriate. See eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388 (2006); see also 5 McCarthy on Trademarks and Unfair
Competition § 30.47.30 (“Some courts have either hinted, indicated or
outright held that the U.S. Supreme Court’s 2006 decision in eBay
eliminates the traditional presumption of irreparable injury triggered if a
likelihood of success on the merits of trademark infringement is proven.”).
In any event, the record supports a showing of irreparable harm.
Defendants have appropriated a mark that the City has maintained for a
century. Now, plaintiffs have “lost control” of the quality of the services
associated with their mark. 73 Paulsson, 529 F.3d at 313; see also 5 McCarthy
on Trademarks and Unfair Competition § 30.47.50 (“[I]n many situations,
irreparable harm can be demonstrated by pointing to the fact that the
trademark owner’s business goodwill and reputation are in peril.”). The
potential harm to plaintiffs’ reputation and goodwill cannot be quantified,
and rises to the level of irreparable harm. 74 Paulsson, 529 F.3d at 313; see

73
74

R. Doc. 18-1 at 23.
Id.
38

also Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 205
(3d Cir. 2014); ADT, 145 F. Supp. 3d at 696 (“[I]f one trademark user cannot
control the quality of the unauthorized user’s goods and services, he can
suffer irreparable harm.” (quoting Mary Kay, Inc. v. Weber, 661 F. Supp. 2d
632, 640 (N.D. Tex. 2009)); TGI Friday’s Inc. v. Great Nw. Rests., Inc., 652
F. Supp. 2d 763, 771 (N.D. Tex. 2009) (“[D]efendants are promoting
consumer confusion by holding out their restaurants as TGI Friday’s
locations even though TGIF does not sponsor or control defendants’
restaurants. This consumer confusion means that TGIF no longer possesses
control over its valuable trademarks or its reputation. This loss of control
constitutes a substantial threat of irreparable injury.”). Plaintiffs therefore
face a substantial threat of irreparable harm absent an injunction.
D.

Balance of Hardships

Without an injunction, plaintiffs stand to lose control over the services
associated with St. Roch Market, and potentially face damage to their
reputation and goodwill. If an injunction is granted, defendants will also
experience hardship. Specifically, defendants will be unable to use their
preferred name for the food halls defendants seek to open in other cities.
This restriction means that defendants will be unable to capitalize on the
reputation and goodwill associated with St. Roch Market.
39

Defendants’

counsel also noted in oral argument that defendants have spent hundreds of
thousands of dollars promoting the “St. Roch Market” brand. But any harm
defendants may suffer is self-inflicted because defendants did not have the
right to use the mark in the first place. Cf. ADT, 145 F. Supp. 3d at 699-700.
Moreover, an injunction would not prevent defendants from opening food
halls in other cities, so long as the food halls are not named “St. Roch
Market.” Nor would the injunction prevent defendants from continuing to
operate St. Roch Market and Auction House Market in New Orleans. The
Court finds that the balance of hardships weighs in favor of granting the
injunction.
E.

Public Interest

Finally, a preliminary injunction would not disserve the public interest.
Here, where plaintiffs have established a substantial likelihood of success on
the merits, an injunction would serve the public interest by preventing unfair
competition and protecting intellectual property. These values promoted by
trademark law outweigh the public’s interest in competition and free
exchange of ideas. See Allied Mktg. Grp., Inc. v. CDL Mktg., Inc., 878 F.2d
806, 810 n.1 (5th Cir. 1989) (district court’s finding that injunction served
public interest “reflect[ed] the policy judgment implicit in copyright and
unfair competition laws that the public’s interest in competition may be
40

outweighed by the public’s interest in preserving rights in intellectual
property”).
The Court further notes that St. Roch Market is a public institution
with a rich history. It is one of only a few remnants of the once-extensive
network of public markets in New Orleans. The City and other governmental
bodies have invested substantial sums of money in the market over the years.
The reputation of St. Roch Market and the goodwill associated with that
name therefore belong to the public.

In fact, Louisiana law explicitly

recognizes the City’s right to use, and exclude others from using, the name of
a public facility owned by the City. See La. R.S. § 51:281.2(A) (“[N]o person
shall transact any business under an assumed name which contains the name
of any . . . public facility without the written consent of the governing
authority of the governmental entity which owns or operates the . . . public
facility.”). For these reasons, the public interest would be served by enjoining
defendants’ infringing use of St. Roch Market.
The Court notes that the preliminary injunction will not affect
defendants’ Miami location. The Court need not, and does not, decide the
proper scope of a permanent injunction at this time.

41

IV.

PRELIMINARY INJUNCTION
The Court has found that plaintiffs have satisfied the requirements for

preliminary injunctive relief. Accordingly, the Court preliminarily enjoins
and restrains defendants, Bayou Secret, LLC, St. Roch Design District, LLC,
Helpful Hound, L.L.C., St. Roch F&B, LLC, William Donaldson, Barre
Tanguis, and David Donaldson, as well as their officers, agents, servants,
employees, attorneys, successors, and assigns, and all others in active
concert or participation with them, from using the designation “St. Roch
Market” in connection with any food hall, or any other type of public food
market, at any location other than 2381 St. Claude Avenue, New Orleans,
Louisiana and 140 NE 39th Street, Suite 241, Miami, Florida.

This

preliminary injunction shall remain in effect until a trial is conducted on the
merits, or until it is otherwise modified by the Court.

7th
New Orleans, Louisiana, this _____ day of August, 2018.

_____________________
SARAH S. VANCE
UNITED STATES DISTRICT JUDGE

42