Kuper Industries, LLC et al vs. Reid, et al.

Filing 12

MEMORANDUM AND ORDER granting 2 Plaintiffs' Motion for TRO.1. For the duration of this temporary order, defendants, their directors and officers, principals, agents, servants, employees, and all persons or entities under their control or in active concert or participation, are enjoined from:a. Operating under the name "The Pancake Guys;" orb. otherwise using such mark in commerce in connection with the sale, offering for sale, distribution, or advertising of an y goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; orc. using such mark in a manner likely to cause confusion as to the affiliation, connection, or association of defend ants with plaintiffs or "The Pancake Man," or as to the origin, sponsorship, or approval of defendants' goods, services, or commercial activities by plaintiffs.2. The parties shall promptly confer and contact the Court to decide upon a schedule for briefing any request by plaintiffs for ongoing preliminary injunctive relief. Ordered by Judge John M. Gerrard. (JAB)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
KUPER INDUSTRIES, LLC and
JAMES W. KUPER d/b/a THE
PANCAKE MAN,
Plaintiffs,

8:15-CV-42
MEMORANDUM AND ORDER

vs.
DANIEL REID; DANIEL REID d/b/a
THE PANCAKE GUYS; ALL THE
MARBLES, LLC d/b/a THE
PANCAKE GUYS,
Defendants.
This matter is before the Court on the Motion for a Temporary
Restraining Order filed by plaintiffs Kuper Industries, LLC and James W.
Kuper, d/b/a The Pancake Man. Filing 2. For the reasons discussed below, the
Court will grant plaintiffs' motion.
I. FACTUAL BACKGROUND
Since 1985, plaintiff James W. Kuper has done business in Nebraska,
Iowa, and other Midwestern states under the name "The Pancake Man,"
serving pancakes at school fundraisers, clubs, and for various businesses.
Filing 4-1 at ¶ 2. Kuper also operates his business through plaintiff Kuper
Industries, LLC. Filing 4-1 at ¶ 1. Kuper avers that in his nearly 30 years of
business, he has served "millions" of pancakes on thousands of occasions, and
that members of the public regularly recognize him as The Pancake Man.
Filing 4-1 at ¶¶ 5–7. Kuper has also received national recognition, with
articles appearing in the Wall Street Journal and an appearance on a Food
Network television show, as well as in local publications such as the Omaha
World-Herald. See, e.g., filing 4-1 at ¶¶ 8–16; filings 4-2, 4-3, 4-4, 4-5, and 4-6.
In September 2009, Kuper was issued a service mark for The Pancake
Man. Filing 1 at 8; filing 4-1 at ¶ 3. The mark is registered on the United
States Patent and Trademark Office's Principal Register and consists of
standard characters, without claim to any particular font, style, size, or color.
Filing 1 at 8.

Defendant Daniel Reid operates an Omaha pizza business known as
The Pizza Pie Guys. See filing 4-1 at ¶¶ 17–18; filing 4-7. Around 2011 or
2012, Reid became interested in expanding into the pancake business. At
that time, Reid contacted Kuper to see if he would be willing to sell his
business. Filing 4-1 at ¶ 17. Later, in the summer of 2013, Reid again
emailed Kuper to see if he was interested in selling his business. Filing 4-7.
Kuper avers that when he eventually told Reid he was not interested in
selling his business, Reid "became somewhat upset" with him. Filing 4-1 at ¶
19.
Since then, Kuper has learned that Reid, and Reid's business,
defendant All The Marbles, LLC, have begun operating a competing pancake
performance enterprise known as "The Pancake Guys." The businesses are
apparently competing for similar customers. Kuper avers that in February
2014, he learned that "The Pancake Guys" were soliciting Kuper's customers
to breach their contracts with him by offering to pay their cancellation fees.
Filing 1 at ¶ 4; filing 4-1 at ¶¶ 18–34; filing 4-13.1 Kuper's attorney contacted
Reid and urged him to stop, claiming that this amounted to tortious
interference with Kuper's business relationships. Reid apparently agreed to
remove the posting. Filing 4-1 at ¶ 22; filing 4-13.
In December 2014, Kuper learned that an elementary school in
Papillion, Nebraska, was advertising on its website that the Pancake Man
would be making an appearance at the school on December 4. This was
surprising, because although Kuper had worked there in the past, he was not
scheduled to make a new appearance. Kuper contacted the school and
learned that, in fact, the Pancake Guys were scheduled to perform. On
December 3, the school agreed to correct its website. Filing 4-1 at ¶¶ 27–31.
Since then, Kuper has also learned that Walt Disney Elementary
School, in Omaha, Nebraska, has advertised on its website that The Pancake
Man would be appearing at a school event set for January 30, 2015. Once
again, however, it was the Pancake Guys who were actually scheduled to
appear. Kuper avers that school only recently corrected its website. Filing 4-1
at ¶¶ 32–34. The present suit followed.
II. ANALYSIS
Plaintiffs claim that defendants' conduct constitutes (1) trademark
infringement and (2) unfair competition in violation of the Lanham Act, 15
U.S.C. §§ 1114(1) and 1125(a); (3) trademark dilution by blurring in violation
Kuper has submitted what he claims is a print-out of a post from The Pancake Guys'
Facebook page, making such an offer, but the exhibit has not been properly authenticated.
Filing 4-13 at 4.
1

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of the Lanham Act, 15 U.S.C. § 1125(c); and (4) a violation of Nebraska's
Deceptive Trade Practices Act, Neb. Rev. Stat. §§ 87-301 et seq. Filing 1 at 3–
5.
Plaintiffs ask the Court to enter a temporary restraining order,
enjoining defendants from, among other things, operating under the name
"The Pancake Guys." Filing 2. The pending motion focuses on plaintiffs'
claims under the Lanham Act. The Court finds that plaintiffs are entitled to
temporary injunctive relief under their claims for trademark infringement
and unfair competition. So, for the time being, the Court need not consider
plaintiffs' other claims, as they would not entitle plaintiffs to any additional
relief.2
Federal Rule of Civil Procedure 65(b) governs the issuance of
temporary restraining orders issued with or without notice to the opposing
parties:
(1) Issuing Without Notice. The court may issue a temporary
restraining order without written or oral notice to the adverse
party or its attorney only if:
(A) specific facts in an affidavit or a verified complaint
clearly show that immediate and irreparable injury, loss, or
damage will result to the movant before the adverse party
can be heard in opposition; and
(B) the movant's attorney certifies in writing any efforts
made to give notice and the reasons why it should not be
required.
The Deceptive Trade Practices Act prohibits a "broad panoply of deceptive trade
practices," including, among other things, confusing customers as to the origin of goods or
services. Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 909 (D. Neb. 1986); see Neb.
Rev. Stat. § 87-302(a)(2) and (3). In other words, the same analysis that applies to plaintiffs'
claims of federal trademark infringement and unfair competition will apply to at least a
portion of their claims under the Deceptive Trade Practices Act. See Novak, 648 F. Supp. at
909; see Prime Home Care, LLC v. Pathways to Compassion, LLC, 809 N.W.2d 751, 764
(Neb. 2012).
2

A claim of trademark dilution, on the other hand, calls for a separate analysis. See,
15 U.S.C. § 1125(c); Everest Capital Ltd. v. Everest Funds Mgmt., L.L.C., 393 F.3d 755, 762
(8th Cir. 2005). Plaintiffs have provided some briefing on this claim, but have not
significantly addressed the factors set forth in § 1125(c)(2)(A) to determine if a mark is
"famous" and in § 1125(c)(2)(B) to determine whether dilution by blurring is likely. The
Court will defer ruling on plaintiffs' dilution claim until the matter can be briefed more
fully.

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Fed. R. Civ. P. 65(b).
When deciding whether to issue a temporary restraining order, the
Court turns to the four Dataphase factors: (1) the probability that the movant
will succeed on the merits; (2) the threat of irreparable harm to the movant;
(3) the state of the balance between this harm and the injury that granting
the injunction will inflict on the nonmovant and other parties; and (4) the
public interest. Roudachevski v. All-American Care Centers, Inc., 648 F.3d
701, 705 (8th Cir. 2011) (citing Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d
109, 114 (8th Cir. 1981) (en banc)). A temporary restraining order is an
extraordinary remedy, and the movant bears the burden of establishing its
propriety. Id.
The Court finds that plaintiffs have satisfied the requirements of Fed.
R. Civ. P. 65(b) and are entitled to temporary injunctive relief under the
Dataphase factors. While defendants have not yet been served with a copy of
this motion, plaintiffs' counsel avers that she has spoken with defendants'
counsel and alerted him to plaintiffs' motion. See filing 4-14. Plaintiffs have
also shown a likelihood of success on the merits of their claims for federal
trademark infringement and unfair competition, and a threat of irreparable
harm in the absence of injunctive relief. The remaining Dataphase factors do
not weigh against plaintiffs, and they are entitled to temporary injunctive
relief.
A. Likelihood of Success on the Merits
To show a likelihood of success on the merits, the movant need not
show that it will ultimately win, or even that the movant is more likely than
not to prevail. Glenwood Bridge, Inc. v. City of Minneapolis, 940 F.2d 367,
371 (8th Cir. 1991). On the current record, the Court finds that plaintiffs
have demonstrated a likelihood of success on their first two claims.
Likelihood of confusion is the hallmark of any mark infringement
claim, and is necessary to prevail on claims for mark infringement under
§ 1114(1) and unfair competition under § 1125(a). Minn. Min. & Mfg. Co. v.
Rauh Rubber, Inc., 130 F.3d 1305, 1308 (8th Cir. 1997); see also A & H
Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 n.5 (3d
Cir. 2000).3 To prevail on a claim of mark infringement under 15 U.S.C. §

Although this case involves a service mark, the Court cites to trademark cases, as service
and trademarks are entitled to the same protection under federal law and the analysis for
both is the same. See Am. Int'l Grp., Inc. v. Am. Int'l Bank., 926 F.2d 829, 830 n.1. (9th Cir.
1991); see also Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc., 466 F.3d 630, 633
(8th Cir. 2006).
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1114(1), plaintiffs must establish that they own a valid, protectable mark and
that there is a likelihood of confusion between their mark and the defendants'
mark.4 B & B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th
Cir. 2009). Similarly, § 1125(a)(1), which offers protection to marks
regardless of federal registration, prohibits the use of a mark in connection
with goods or services in a manner that is likely to cause confusion as to the
source or sponsorship of the goods or services. 15 U.S.C. § 1125(a)(1); see also
Davis v. Walt Disney Co., 430 F.3d 901, 903 (8th Cir. 2005). In essence, on the
present facts, the elements for a claim of infringement and a claim for unfair
competition are identical. See, e.g., Donchez v. Coors Brewing Co., 392 F.3d
1211, 1219 (10th Cir. 2004); E. & J. Gallo Winery v. Gallo Cattle Co., 967
F.2d 1280, 1288 n.2. (9th Cir. 1992).
1. Ownership of a Valid and Protectable Mark
Plaintiffs can likely show that they own the service mark for "The
Pancake Man" and that it is valid and protectable—registration of the service
mark provides prima facie evidence of each of these elements. 15 U.S.C. §§
1115(a) and 1057. This "'has a burden-shifting effect, requiring the party
challenging a registered mark to produce sufficient evidence to establish that
the mark is generic by a preponderance of evidence.'" Cmty. of Christ
Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church,
634 F.3d 1005, 1011 (8th Cir. 2011) (quoting Retail Servs., Inc. v. Freebies
Publishing, 364 F.3d 535, 542 (4th Cir. 2004)). There being no contrary
evidence in the record, plaintiffs have shown a likelihood of success on the
first half of their trademark claims.
2. Likelihood of Confusion
For violations of the Lanham Act, the Eighth Circuit employs a sixfactor test to evaluate whether there is a likelihood of confusion, including, (i)
the strength of the owner's mark; (ii) the similarity between the owner's
mark and the alleged infringer's mark; (iii) the degree to which the products
compete with each other; (iv) the alleged infringer's intent to "pass off" its
goods as those of the trademark owner; (v) incidents of actual confusion; and,
(vi) the conditions of the purchase of the service and degree of care expected
of customers. Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d
754, 763 (8th Cir. 2010). No factor standing alone is dispositive. Id. Based on

The defendants use of the mark must be "in commerce." 25 U.S.C. § 1125(a). The Court
predicts no serious dispute of this element: defendants have used "The Pancake Guys" to
advertise their competing pancake performance service. See, 15 U.S.C. § 1127(2); Masters v.
UHS of Del., Inc., 631 F.3d 464, 470 (8th Cir. 2011).
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the limited evidence available at this time, the Court finds that plaintiffs
have demonstrated a likelihood of confusion.
i. The Strength of the Owner's Mark
A strong and distinctive trademark is entitled to greater protection
than a weak or commonplace one. Id. Marks may fall into one of four
categories: generic, descriptive, suggestive, or arbitrary or fanciful. Id. On
this spectrum, an arbitrary or fanciful mark is entitled to the highest level of
protection, while a generic mark is afforded no trademark protection. Id.
Which category a mark falls into is question of fact. WSM, Inc. v. Hilton, 724
F.2d 1320, 1326 (8th Cir. 1984); see also Xtreme Lashes, LLC v. Xtended
Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009).
The registration of plaintiffs' mark provides prima facie evidence that
its mark "is not generic in the eyes of the relevant public, see 15 U.S.C. §
1064(3), and that its mark is not 'merely' descriptive, but at a minimum is
descriptive and has obtained secondary meaning, see 15 U.S.C. § 1052(e)."
Am. Online, Inc. v. AT & T Corp., 243 F.3d 812, 816 (4th Cir. 2001). Plaintiffs
have not briefed this factor, and the Court will not conduct further analysis to
determine the precise classification of their mark. For now, this factor is
neutral; at the very least, it does not weigh significantly against a likelihood
of confusion.
ii. Similarity Between Marks
To assess the similarity of the parties' marks, the Court evaluates the
impression that each mark is likely to have on a purchaser exercising the
attention usually given by purchasers of such products. Sensient Techs., 613
F.3d at 764. The Court does not compare the component parts of each mark,
but the overall impression of each mark as a whole. Id. The fact that both
marks use identical, or even dominant words in common does not
automatically mean that the two marks are similar. Id.
The similarity between the marks is apparent: there is a difference of
only one word, and the different words ("Man" versus "Guys") are themselves
essentially synonymous. Where the services are closely related, less
similarity in the trademarks is necessary to support a finding of
infringement. SquirtCo. v. Seven–Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980).
And as the Court explains in reference to the third factor, the parties'
services are very similar.
The Court lacks the information to delve more deeply into the
similarity analysis. The registration for plaintiffs' mark states that it consists
of standard characters, without claim to any particular font, style, size, or
color. Filing 1 at 8. Defendants might be able to show, however, that there
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are visual differences between the two marks as they are used. Nonetheless,
at this stage, this factor weighs in favor of a finding of confusion.
iii. The Competitive Proximity of the Parties' Services
If parties' services are closely related, customers are more likely to be
confused. Sensient Techs., 613 F.3d at 766. This does not mean the services
must be in direct competition to cause confusion. CAE, Inc. v. Clean Air
Engineering, Inc., 267 F.3d 660, 679 (7th Cir. 2001). Rather, the question is
whether consumers are likely to believe the goods to be related, i.e., put out
by a single producer. Id.
The parties' marks are apparently competing in the same market. For
example, both seek to cater to schools in the Omaha area. And their products
are, as far as the Court can tell, similar: both parties provide pancakes and
entertainment for fundraisers and events. This factor weighs in favor of a
finding of confusion.
iv. Bad Intent
Proof of bad intent is not required for success in an infringement or
unfair competition claim, but the absence of such intent is a factor to be
considered. Sensient Techs., 613 F.3d at 766. Knowledge of another's product
and the intent to compete are not equivalent to an intent to mislead and
cause confusion. Id. Plaintiffs have not produced any significant evidence of
bad intent. While there is evidence that two schools advertised defendants'
appearance as "The Pancake Man," it is not clear that this was the result of
any manipulation by defendants. However, at this early stage, this does not
meaningfully detract from plaintiffs' case.
v. Incidents of Actual Confusion
Showing incidents of actual confusion is an effective means of proving a
likelihood of confusion, but plaintiffs are not required to bring forth such
incidents to succeed. Id. at 768. While the Court is not willing—without
something more—to infer defendants' bad intent from the elementary schools'
use of plaintiffs' mark, this evidence does suggest that plaintiffs will be able
to prove at least some incidents of actual confusion. For now, it tends to show
that the schools themselves may have been confused (regardless of any
intentional misconduct by defendants).
Plaintiffs have not, at this time, produced evidence of actual confusion
among public attendees.5 But if attendees are told that the Pancake Man is
These may not be the parties' "direct" customers, i.e., the schools or businesses that hire
them. But the likelihood of confusion made actionable by the Lanham Act includes
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going to make an appearance, only to have the Pancake Guys show up,
confusion is a likely outcome. While this is not evidence of actual incidents of
confusion, this supports the overall gist of plaintiffs' claim: that there is a
likelihood of confusion between the parties' marks or a misleading impression
that the defendants are somehow affiliated with plaintiffs.
vi. The Degree of Care Reasonably Expected of Potential Customers
To consider this factor, the Court stands in the shoes of the "ordinary
purchaser," buying under the normally prevalent conditions of the market
and giving the attention such purchasers usually give in buying this class of
services. Id. at 769. Plaintiffs have not discussed this factor. The parties'
direct clients might be expected to exercise some degree of care, since they
are planning public events that they hope will go well. The same might not be
true for attendees. But evaluation of this factor requires evidence, not
speculation by the Court. For now, this factor does not meaningfully affect
the Court's analysis.
vii. Weighing the Factors
The parties' marks are quite similar, especially given the similarity of
the parties' services and their competitive proximity. Plaintiffs have also
shown what are at least two potential incidents of actual confusion by
schools. And given their nature, these incidents present a distinct possibility
of causing confusion among attendees and the general public. None of the
remaining factors weigh significantly against a finding of confusion. So, the
Court finds that plaintiffs have shown a likelihood of confusion and hence a
likelihood of success on their claims for infringement and unfair competition.
B. Irreparable Harm
Since a service mark represents intangible assets such as reputation
and goodwill, irreparable harm can be presumed if the plaintiff has shown a
likelihood of consumer confusion. See, e.g., Devon Park, 634 F.3d at 1012;
General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 624 (8th Cir. 1987). So, the
Court finds that plaintiffs have, at this time, also demonstrated a sufficient
threat of irreparable harm. Plaintiffs have also demonstrated that this harm
is ongoing and immediate: the performance scheduled for the day this Order
is being entered.

confusion of nonpurchasers as well as direct purchasers. First Nat'l Bank in Sioux Falls v.
First Nat'l Bank S.D., 679 F.3d 763, 770 (8th Cir. 2012). In any event, such attendees likely
represent potential direct customers.

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C. Remaining Dataphase Factors -- Balance of Harms and Public
Policy
The Court next balances the harm plaintiffs will face if the injunction is
not granted with the harm defendants will face if the injunction is improperly
granted. See Scotts Co. v. United Indus. Corp., 315 F.3d 264, 284–85 (4th Cir.
2002). At this point, it is worth clarifying that the Court is not being asked to
cancel defendants' upcoming performance. No one should, as a result of this
order, be deprived of pancakes. Rather, plaintiffs simply ask that defendants
perform under some other, less confusingly similar name.6
Undoubtedly, this injunction will cause some interference with
defendants' business—they will have to change their name. But their
business does not have to stop. Without any specific evidence of harm from
defendants, the balance of harms supports plaintiffs' request for injunctive
relief.7 Finally, the Court finds that the public interest is served by the
enforcement of valid trademarks and prevention of consumer confusion.
D. Weighing the Dataphase Factors
Plaintiffs have shown both a likelihood of success on the merits and a
threat of irreparable harm. The remaining Dataphase factors do not alter the
balance, and the Court finds that plaintiffs are entitled to a temporary
injunction prohibiting defendants from operating under the name "The
Pancake Guys," or otherwise using the mark in commerce in a manner
prohibited by 15 U.S.C. §§ 1114(1) and 1125(a).
E. Other Relief Requested by Plaintiffs
Plaintiffs have also asked the Court to enjoin defendants from
"encouraging and / or allowing their customers to advertise that "The
Pancake Man" will be appearing at events at which Defendants have
contracted to appear;" and mentioning "The Pancake Man" in any social
media, including but not limited to, Defendants' website, Facebook, etc."
Filing 2. The Court will enjoin defendants from "encouraging" their
customers to advertise that "The Pancake Man" will be appearing at
Part of defendants' business is performance, and so they have to call themselves
something. The Court believes that the parties should be able to find a mutually acceptable
name for defendants to use in their upcoming events, at least for the immediate future.
6

In a related matter, the Court finds that it is not necessary, at this time, for plaintiffs to
post a bond. See Fed. R. Civ. P. 65(c). As it stands, the Court lacks the information to
determine the appropriate amount for a bond. If a bond is indeed necessary, then the
matter can be more effectively resolved once defendants have had an opportunity to
respond.
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defendants' events, as that falls within the scope of conduct prohibited above,
i.e., conduct likely to cause confusion in violation of the Lanham Act.
Plaintiffs are not entitled to the remainder of their requested injunctive
relief. The other forms of alleged conduct—allowing customers to make
certain statements and mentioning plaintiffs' mark on social media—do not
(without something more) constitute violations of plaintiffs' legally
protectable interests. As to the first, plaintiffs have not shown that
defendants have any ability to control their customers' speech. And as to
both, what plaintiffs are requesting would amount to a prior restraint of
speech. See United States v. Kaun, 827 F.2d 1144, 1150 (7th Cir. 1987). A
proponent of prior restraint carries a "heavy burden." Anheuser-Busch, Inc. v.
Balducci Publ'ns, 28 F.3d 769, 778 (8th Cir. 1994). And in the absence of
some showing that such speech would be actionable under the Lanham Act,
or is otherwise unlawful, plaintiffs are not entitled to this form of injunctive
relief. Compare Coca-Cola Co. v. Purdy, 382 F.3d 774, 790 (8th Cir. 2004).
III. CONCLUSION
Plaintiffs' motion for temporary injunctive relief will be granted in part
and denied in part, as discussed above. For the time being, the Court will
enjoin defendants from operating under the name "The Pancake Guys" or
otherwise engaging in conduct likely to cause consumer confusion between
the parties' marks or in a manner likely to cause confusion as to the source or
sponsorship of defendants' goods or services.
However, defendants are entitled to an opportunity to respond.
Therefore, the parties shall promptly confer and contact the Court to set forth
a schedule for briefing any request for ongoing preliminary injunctive relief.
This matter may also be set for a hearing, if the parties believe one is
necessary.
THEREFORE, IT IS ORDERED:
1.

For the duration of this temporary order, defendants, their
directors and officers, principals, agents, servants,
employees, and all persons or entities under their control or
in active concert or participation, are enjoined from:
a.

Operating under the name "The Pancake Guys;" or

b.

otherwise using such mark in commerce in
connection with the sale, offering for sale,
distribution, or advertising of any goods or services
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on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; or
c.

2.

using such mark in a manner likely to cause
confusion as to the affiliation, connection, or
association of defendants with plaintiffs or "The
Pancake Man," or as to the origin, sponsorship, or
approval of defendants' goods, services, or commercial
activities by plaintiffs.

The parties shall promptly confer and contact the Court to
decide upon a schedule for briefing any request by plaintiffs
for ongoing preliminary injunctive relief.

Dated this 30th day of January, 2015.
BY THE COURT:

John M. Gerrard
United States District Judge

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