Helpful Hound, L.L.C. v. New Orleans Building Corp., et al.
Filing
75
ORDER AND REASONS denying 62 Motion to Clarify Judgment. Signed by Judge Sarah S. Vance on 12/03/2018. (Reference: All Cases)(am)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
HELPFUL HOUND, L.L.C.
VERSUS
CIVIL ACTION
NO. 18-3500
c/w 18-3594
NEW ORLEANS BUILDING
CORPORATION AND CITY OF NEW
ORLEANS
SECTION “R” (2)
ORDER AND REASONS
Before the Court is defendants Bayou Secret’s, St. Roch F&B’s, Helpful
Hound’s, St. Roch Design District’s, Will Donaldson’s, Barre Tanguis’s, and
David Donaldson’s motion to clarify the Court’s order granting plaintiff New
Orleans Building Corporation’s (NOBC) and the City of New Orleans’ motion
for a preliminary injunction. 1 The Court denies defendants’ motion because
it cannot evaluate whether hypothetical marks are likely to cause confusion
with the name “St. Roch Market.”
I.
BACKGROUND
This case arises out of a dispute over use of the name “St. Roch
Market.” 2 Defendants have been the lessors of the St. Roch Market located
R. Doc. 62.
For a more extensive discussion of the facts of this case, see the Court’s
Preliminary Injunction Order and Reasons. R. Doc. 58.
1
2
at 2381 St. Claude Avenue in New Orleans since February 25, 2014. 3 The
terms of their lease allow them 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.” 4 In February 2018, Bayou Secret and
related entities opened a food hall called “St. Roch Market” in Miami. 5 They
also plan to open St. Roch Markets in locations such as Chicago and
Nashville. 6
On April 3, 2018, Helpful Hound brought a declaratory judgment
action against the City and NOBC seeking a declaration of noninfringement
on the St. Roch Market logo. 7 On April 4, 2018, plaintiffs brought suit for,
inter alia, trademark infringement and breach of trademark license.8 The
Court consolidated these cases on April 12, 2018. 9 On August 9, 2018, the
Court granted a preliminary injunction enjoining defendants from using the
designation “St. Roch Market” in connection with any food hall or public food
market in any location other than 2381 St. Claude Avenue, New Orleans,
3
4
5
6
7
8
9
Case No. 18-3594, R. Doc. 1 at 12 ¶ 38.
R. Doc. 21-1 at 42.
Case No. 18-3594, R. Doc. 1 at 18 ¶ 70.
Id. at 20 ¶¶ 78-79.
R. Doc. 1.
Case No. 18-3594, R. Doc. 1.
Case No. 18-3594, R. Doc. 8; R. Doc. 4.
2
Louisiana, and 140 NE 39th Street, Suite 241, Miami, Florida.10 Defendants
now seek clarification as to whether the preliminary injunction includes
other confusingly similar designations. 11 In its motion, defendants indicate
that they are considering future use of designations such as “St. Roch,” “St.
Roch Hall,” and “St. Roch Food Hall.” 12 They want to know whether these
hypothetical names would violate the preliminary injunction. 13 Plaintiffs
argue, inter alia, that ruling on whether a potential designation that
defendants do not currently use is confusingly similar constitutes an
impermissible advisory opinion. 14
II.
DISCUSSION
In their motion for a preliminary injunction, plaintiffs requested that
the Court enjoin defendants from using the designation “St. Roch Market” or
any confusingly similar mark. 15 The Court granted plaintiffs’ motion, but
issued an injunction that prevents defendants “from using the designation
‘St. Roch Market’ in connection with any food hall, or any other type of public
10
11
12
13
14
15
R. Doc. 58.
R. Doc. 18.
R. Doc. 62-1 at 2.
Id. at 4.
R. Doc. 67 at 1-2.
R. Doc. 18 at 1.
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food market, at any location other than [the New Orleans and Miami
locations].”16 The Court did not rule on confusingly similar marks in that
order because the parties discussed only the mark “St. Roch Market.” No
confusingly similar marks were before the Court at that time.
The Court could not have issued an injunction against “confusingly
similar marks” in the abstract, because the likelihood of confusion is a factbased inquiry that can be decided only in individual cases. See 5 Gilson on
Trademarks § 5.01 (2018) (“The subjective nature of the ‘likelihood of
confusion’ test and the myriad . . . facts and factors typically involved have
led the courts to adopt a basic principle: Each case must be decided on its
own facts.”); Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227
(5th Cir. 2009) (holding that no factor is dispositive in the confusion analysis
because they “may weigh differently from case to case, depending on the
particular facts and circumstances involved” (internal quotation marks
omitted)). The term “confusingly similar” refers merely to a legal test. An
entity is entitled to trademark protection against marks identical to their
protected mark, and against marks that create a “likelihood of confusion
between [the protected] mark and that of the defendant.” Union Nat’l Bank
of Tex., Laredo v. Union Nat’l Bank of Tex., Austin, 909 F.2d 839, 844 (5th
16
R. Doc. 58 at 42.
4
Cir. 1990). The Court must apply the legal test to a certain mark to determine
whether that mark is confusingly similar. Because the only mark before the
Court was “St. Roch Market” when it ruled on the preliminary injunction, the
preliminary injunction covers only that mark.
But while the current injunction covers only “St. Roch Market,” the
Court’s analysis in its order granting the preliminary injunction makes clear
that if defendants were to use a confusingly similar mark, the Court would
grant another motion for a preliminary injunction against that mark.
Plaintiffs have already established that their mark is eligible for trademark
protection 17 and that they are the senior users. 18 Union Nat’l Bank, 909 F.2d
at 844. They have also established that there is a substantial threat that the
movant will suffer irreparable harm if an injunction is not granted; that the
threatened injury outweighs the potential injury; and that the preliminary
injunction will not disserve the public interest. 19 Guy Carpenter & Co., Inc.
v. Provenzale, 334 F.3d 459, 464 (5th Cir. 2003). Plaintiffs could therefore
move for a preliminary injunction against any new mark and prevail if the
Court determines that the mark creates a likelihood of confusion with “St.
Roch Market.” Union Nat’l Bank, 909 F.2d at 844.
17
18
19
R. Doc. 58 at 18.
Id. at 25.
Id. at 37-41.
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Defendants now offer several hypothetical marks that they may
attempt to use at future food markets. 20 They ask the Court to rule on
whether these marks are confusingly similar, and on whether they are
covered by the injunction. 21 But “[c]ontext is critical to a likelihood-ofconfusion analysis.” Viacom Int’l v. IJR Cap. Inv., LLC, 891 F.3d 178, 192
(5th Cir. 2018).
To determine whether a mark creates a likelihood of
confusion, courts use seven digits of confusion that form a “flexible and
nonexhaustive list.” Id. at 192 (quoting Scott Fetzer Co. v. House of Vacuums
Inc., 381 F.3d 477, 485 (5th Cir. 2004)). These digits are: “(1) the type of
mark 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 used, (6) the defendant’s
intent, and (7) any evidence of actual confusion.” Westchester Media v. PRL
USA Holdings, Inc., 214 F.3d 658, 664 (5th Cir. 2000). Courts “must
consider the application of each digit in light of the specific circumstances of
the case.” Viacom, 891 F.3d at 192.
For example, in Viacom, the Fifth Circuit hesitated to analyze the
likelihood of confusion for a restaurant name when the alleged infringer had
20
21
R. Doc. 62-1 at 2-3.
Id. at 4-5.
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not yet opened its restaurant, even though the defendant had taken concrete
steps to open the restaurant and had filed an intent-to-use trademark
application for the name. Id. at 193. In analyzing the likelihood of confusion,
the Fifth Circuit relied on information contained in a business plan to
compare the similarity of products at the two businesses, the overlap in
purchasers, and planned advertising. Id. at 193-95.
The defendants in this case have only considered the possibility of
using marks other than “St. Roch Market.”22 They have not taken the
necessary steps—such as to establish the exact locations at which a similar
mark would be used, or to create advertising and branding materials using
the similar mark—to provide context that would allow the Court to evaluate
whether these other marks create a likelihood of confusion. Without this
information, the Court cannot determine the likelihood of confusion with the
existing mark. See id. at 193-97; House of Vaccums, 381 F.3d at 485 (giving
examples of how advertisement design affects the way that “a customer
perceives [a mark] in the marketplace”); see also Windsurfing Intern. Inc. v.
AMF Inc., 828 F.2d 755, 758 (Fed. Cir. 1987) (holding that a mere desire to
use a mark does not create a justiciable controversy, and that the mark must
actually be in use before the Court can consider infringement). The Court
22
Id. at 2.
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therefore denies defendants’ request to evaluate their potential use of marks
other than “St. Roch Market.”
III. CONCLUSION
For the foregoing reasons, defendants’ motion to clarify the judgment
is DENIED.
3rd
New Orleans, Louisiana, this _____ day of December, 2018.
_____________________
SARAH S. VANCE
UNITED STATES DISTRICT JUDGE
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