[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 09-15123 FILED
________________________ U.S. COURT OF APPEALS
ELEVENTH CIRCUIT
JULY 15, 2010
D. C. Docket No. 08-00975-CV-TWT-1 JOHN LEY
CLERK
DAN TANA,
Plaintiff-Appellant,
versus
DANTANNA’S,
an unknown business entity,
GREAT CONCEPTS, L.L.C.,
a Georgia Limited Liability Company,
DANTANNA’S CNN CENTER, LLC,
a Georgia limited liability company,
Defendants-Appellees.
________________________
Appeal from the United States District Court
for the Northern District of Georgia
_________________________
(July 15, 2010)
Before EDMONDSON, CARNES and ANDERSON, Circuit Judges.
ANDERSON, Circuit Judge:
This trademark infringement action concerns two restaurants, situated on
opposite sides of the country, that share very similar names. Dan Tana, owner of
Dan Tana’s restaurant in Hollywood, California (“Plaintiff”), brought this action
against the two limited liability companies that own and operate the Dantanna’s
restaurants in Atlanta, Georgia—Great Concepts, L.L.C., and Dantanna’s CNN
Center, LLC (“Defendants”). Plaintiff’s complaint alleges that David Clapp,
founder of the Dantanna’s restaurants and managing member of the Defendants,
intentionally selected and registered as a federal trademark a name for his
restaurants that is confusingly similar to the name of Plaintiff’s restaurant in
Hollywood. The claims forming the basis of Plaintiff’s complaint are false
designation of origin, a theory of federal trademark infringement arising under §
43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count I); deceptive trade practices
under Georgia’s Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et
seq. (Count II); fraud pursuant to O.C.G.A. § 23-2-55 (Count III); and the
unauthorized appropriation of likeness, an invasion-of-privacy tort recognized
under Georgia law (Count IV).1
The district court granted summary judgment in favor of Defendants on all
1
Plaintiff’s complaint also included, and the district court also rejected, a state-law
claim for unjust enrichment (Count V), which Plaintiff chose not to appeal in this action.
2
counts. Plaintiff now appeals, arguing that triable issues of fact remain as to
whether there is a likelihood of confusion between the two restaurants and whether
Defendants intentionally appropriated the name of his restaurant. Because we
conclude that Plaintiff has not adduced sufficient evidence giving rise to a genuine
issue of material fact on the issue of likelihood of confusion or Defendants’
knowing appropriation of his likeness, we affirm the district court’s grant of
summary judgment in favor of Defendants.
I. FACTS AND PROCEDURAL HISTORY
Plaintiff Dan Tana is a self-described former Yugoslav soccer star,
prominent restaurateur, film producer, and actor. He opened his Italian-themed
restaurant, Dan Tana’s, in West Hollywood, California, in 1964. Since that time,
the restaurant has enjoyed a storied history, attracting Hollywood celebrities and
insiders to the restaurant’s intimate and romantic setting. Dan Tana’s serves
traditional Italian fare, and it resembles an old-world Italian trattoria with red-and-
white checkered table cloths and straw-colored wine flasks hanging from the
ceiling. Plaintiff, who has been the sole owner of the restaurant since its inception,
figures prominently into its ambiance, personally greeting and welcoming his
patrons. The Press has referred to Dan Tana’s as a “legendary Hollywood hotspot”
and the ultimate “LA hangout,” and the restaurant has been featured in numerous
3
newspapers, magazines, and books. The name “Dan Tanna” received significant
publicity in the 1970s when producer Aaron Spelling asked Plaintiff for the use of
his name for the lead character in his television series “Vega$.”
Despite the notoriety of Plaintiff’s restaurant, Plaintiff did not attempt to
register the name “Dan Tana’s” with the Patent and Trademark Office (“PTO”)
until June 2005, forty-one years after his restaurant’s opening. The PTO denied his
application in December 2005 on the basis of the existing registration of the
trademark “Dantanna’s” in the same category of restaurant services sought by
Plaintiff. Defendants had opened the first of two Dantanna’s locations in Atlanta in
2003, applied for a federal registration in June 2003, and obtained federal
registration of the name “Dantanna’s” in March 2005, claiming a date of first use of
September 30, 2003.2
The Dantanna’s restaurants are upscale sports restaurants serving
contemporary American cuisine with a “surf and turf” theme. The restaurants’
large open floor plans boast big screen televisions tuned to sports channels on
surrounding walls. According to its website, Dantanna’s specializes in providing a
sophisticated and elegant venue for the viewing of sporting events and strives to
2
At the time Plaintiff filed this lawsuit, Defendants operated only one location of
Dantanna’s in Atlanta’s Buckhead neighborhood. They have since expanded to a second location
in downtown Atlanta.
4
emulate the feeling of sitting in a “private box at your favorite game.”
In June 2006, Plaintiff filed a Petition for Cancellation of Defendants’ mark
with the PTO’s Trademark Trial and Appeal Board, alleging that Defendants
sought to mislead the public into believing their restaurant was associated with Dan
Tana’s Hollywood. Subsequently, Plaintiff filed a federal trademark infringement
suit in United States District Court for the Central District of California, which was
ultimately dismissed for lack of personal jurisdiction over one of the Defendants.
After Plaintiff filed his federal lawsuit, he moved to suspend the trademark
cancellation proceeding pending before the PTO. The PTO stayed the proceeding
in September 2007.
Plaintiff then filed this lawsuit in the Northern District of Georgia in March
2008, pleading the federal and Georgia trademark infringement, fraud, and tort
claims at issue in this appeal. Plaintiff’s complaint seeks a permanent injunction
enjoining Defendants from all future use of the “Dantanna’s” mark and the
cancellation of Defendants’ federal trademark registration, among other relief.
Defendants moved for summary judgment arguing that, as a matter of law, Plaintiff
could not establish the likelihood of confusion necessary to subject them to liability
under § 43(a) of the Lanham Act, Georgia’s Uniform Deceptive Trade Practices
Act, or fraud under Georgia law, nor could Plaintiff establish the intentional
5
appropriation of likeness required to impose liability under Georgia tort law. The
district court agreed, granting summary judgment in favor of Defendants as to all
counts. This appeal ensued.
II. DISCUSSION
We review the grant of summary judgment de novo, applying the same legal
standards as the district court. Harrison v. Benchmark Elecs. Huntsville, Inc., 593
F.3d 1206, 1211 (11th Cir. 2010). In so doing, we view all evidence and draw all
reasonable inferences in favor of the non-moving party. Id. Summary judgment is
proper where “the pleadings, the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any material fact and that the
movant is entitled to summary judgment as a matter of law.” Fed. R. Civ. P. 56(c).
Plaintiff appeals the district court’s disposition of four counts of his federal
complaint: (1) false designation of origin under § 43(a) of the Lanham Act, (2)
deceptive trade practices under Georgia’s Uniform Deceptive Trade Practices Act,
(3) fraud under O.C.G.A. § 23-2-55, and (4) appropriation of likeness under
Georgia tort law. However, we need not separately address whether Defendants
were entitled to summary judgment on Plaintiff’s deceptive trade practices or fraud
claims. The district court held that the Georgia Uniform Deceptive Trade Practices
Act and § 23-2-55 require a plaintiff to prove the same elements as a claim for
6
federal trademark infringement under the Lanham Act. Because this is a question
of state law that the parties do not challenge on appeal, we treat the district court’s
holding as correct and merely determine whether the district court properly decided
the Lanham Act count. See Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d
833, 839 (11th Cir. 1983). “If we determine that the district court decided the
Lanham Act count properly, we will also affirm its decision on the Georgia
deceptive trade practices [and fraud] counts.” Id. Thus, we first address Plaintiff’s
Lanham Act claim and then consider his Georgia appropriation-of-likeness claim.
A. Trademark Infringement under § 43(a) of the Lanham Act
Trademarks are “any word, name, symbol, or device, or any combination
thereof [used] to identify and distinguish [one’s] goods . . . from those
manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C.
§ 1127.3 Section 43(a) of the Lanham Act creates a federal cause of action for
3
The parties consistently refer to this case as involving registered and common law
“trademarks” throughout their appellate briefs, but, because both parties use their marks in
association with services in addition to goods bearing the restaurants’ names, their marks are also
properly characterized as “service marks.” 15 U.S.C. § 1127 (Service marks are “any word,
name, symbol, or device, or any combination thereof [used] . . . to identify and distinguish the
services of one person . . . from the services of others and to indicate the source of the services . .
. .”). The analysis is the same for service mark and trademark infringement. Frehling Enters.,
Inc. v. Int’l Select Group, Inc., 192 F.3d 1330, 1334 n.1 (11th Cir. 1999) (“The infringement
analysis is the same under both standards and courts thus treat the two terms as interchangeable
in adjudicating infringement claims.”). For simplicity and consistency, however, we will
continue to refer to this action as one for trademark, as opposed to service mark and trademark,
infringement.
7
unfair competition by prohibiting the use in interstate commerce of any “word,
term, name, symbol or device, . . . or any false designation of origin . . . which is
likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person.” 15 U.S.C. § 1125(a).4
To establish a prima facie case of trademark infringement under § 43(a), a plaintiff
must show “(1) that it had trademark rights in the mark or name at issue and (2)
that the other party had adopted a mark or name that was the same, or confusingly
similar to its mark, such that consumers were likely to confuse the two.” Lone Star
Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir.
1997).5 Plaintiff’s allegation under the Lanham Act is that “Dan Tana’s” is a trade
4
Section 43(a) of the Lanham Act provides:
(1) Any person who, on or in connection with any goods or services,
or any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false designation
of origin, false or misleading description of fact, or false or misleading
representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person,
or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or
her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or
she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a).
5
In its summary judgment order, the district court erroneously stated that Plaintiff
brought this action under § 32(a) of the Lanham Act, 15 U.S.C. § 1114(1), rather than § 43(a), 15
8
name in which he has common-law trademark rights and that Defendants are
unlawfully infringing on those rights by using and registering the name
“Dantanna’s” in connection with the operation of their Atlanta restaurants.
To satisfy the first element of § 43(a)—proof of a valid trademark—a
plaintiff need not have a registered mark. We have recognized that “the use of
another’s unregistered, i.e., common law, trademark can constitute a violation of §
43(a) where the alleged unregistered trademarks used by the plaintiff are so
associated with its goods that the use of the same or similar marks by another
company constitutes a false representation that its goods came from the same
source.” Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512–13 (11th Cir. 1984)
(internal quotations and citations omitted). However, only those marks that are
capable of distinguishing the owner’s goods from those of others, i.e., that are
sufficiently “distinctive,” are eligible for federal registration or protection as
U.S.C. § 1125(a). Section 32(a) creates a cause of action for the infringement of a registered
mark, whereas § 43(a) protects qualifying unregistered trademarks. Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 2757 (1992). This error is irrelevant, however,
because the district court based its grant of summary judgment on the likelihood-of-confusion
prong of § 32(a), which requires the consideration of the same seven factors as § 43(a)’s
likelihood-of-confusion test, and therefore applied the correct legal analysis to Plaintiff’s
infringement claim. See Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1503–04 (11th
Cir. 1985) (“The factors relevant to establishing [a likelihood of confusion with respect to false
designation of origin under 15 U.S.C. § 1125(a)] are identical to the factors relevant to
establishing a likelihood of confusion with respect to trademark infringement under 15 U.S.C. §
1114.” (citation omitted)).
9
common law marks under the Lanham Act. 15 U.S.C. § 1052(e), (f); Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 2757 (1992); Coach
House Rest., Inc. v. Coach & Six Rests., Inc. 934 F.2d 1551, 1559 (11th Cir. 1991).
Our circuit recognizes four categories of distinctiveness, listed in ascending
order of strength: “(1) generic—marks that suggest the basic nature of the product
or service; (2) descriptive—marks that identify the characteristic or quality of a
product or service; (3) suggestive—marks that suggest characteristics of the
product or service and require an effort of the imagination by the consumer in order
to be understood as descriptive; and (4) arbitrary or fanciful—marks that bear no
relationship to the product or service, and the strongest category of trademarks.”
Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797–98 (11th Cir. 2003).
Suggestive and arbitrary or fanciful marks are deemed “inherently distinctive”
because “their intrinsic nature serves to identify a particular source of a product”
and are generally entitled to trademark protection. Two Pesos, 505 U.S. at 768,
112 S. Ct. at 2757. Generic marks, on the other hand, are generally incapable of
receiving trademark protection and may never be registered as trademarks under
the Lanham Act. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir.
2007); Coach House Rest., 934 F.2d at 1560. Descriptive marks, though not
inherently distinctive, may become sufficiently distinctive to enjoy trademark
10
protection by acquiring “secondary meaning.” 15 U.S.C. § 1052(f); Coach House
Rest., 934 F.2d at 1560. “A name has acquired secondary meaning when the
primary significance of the term in the minds of the consuming public is not the
product but the producer.” Welding Servs., 509 F.3d at 1358 (internal quotation
and citation omitted).
“Names—both surnames and first names—are regarded as descriptive terms
and therefore one who claims federal trademark rights in a name must prove that
the name has acquired a secondary meaning.” Perini Corp. v. Perini Constr., Inc.,
915 F.2d 121, 125 (4th Cir. 1990); 815 Tonawanda St. Corp. v. Fay’s Drug Co.,
Inc., 842 F.2d 643, 648 (2d Cir. 1988) (same); see also 15 U.S.C. § 1052(e)
(providing that if a mark is “primarily merely a surname” the PTO may deny it
federal registration); Conagra, 743 F.2d at 1513 (requiring a showing of secondary
meaning for a surname to give rise to enforceable trademark rights). However,
Defendants presumed the validity of Plaintiff’s mark in their summary judgment
motion below and only contested the second element of Plaintiff’s trademark
infringement claim—the likelihood of confusion between the two marks. The
district court disposed of Plaintiff’s suit solely on this ground, never reaching the
issue of trademark validity. Therefore, we also proceed on the assumption that
Plaintiff holds valid common-law trademark rights in the name “Dan Tana’s” and
11
turn to the second element of Plaintiff’s Lanham Act claim, the likelihood of
confusion.6
i. Likelihood of Confusion
In evaluating whether there is a likelihood of confusion between two marks,
our court applies a multifactor test, evaluating the following seven factors: (1)
strength of the mark alleged to have been infringed; (2) similarity of the infringed
and infringing marks; (3) similarity between the goods and services offered under
the two marks; (4) similarity of the actual sales methods used by the holders of the
marks, such as their sales outlets and customer base; (5) similarity of advertising
methods; (6) intent of the alleged infringer to misappropriate the proprietor’s good
will; and (7) the existence and extent of actual confusion in the consuming public.
Welding Servs., 509 F.3d at 1360. On appeal, Plaintiff argues that there is a
material issue of fact on the likelihood of confusion between his and Defendants’
mark, precluding summary judgment, and that the district court erred in considering
the geographical proximity of the parties’ use of their marks as an additional
6
Nonetheless, we revisit the issue of secondary meaning in evaluating the first
factor in our circuit’s likelihood-of-confusion test because secondary meaning is relevant to both
elements of a Lanham Act claim. Whether a mark is generic, descriptive, suggestive, or arbitrary
also plays into its strength, which is the first factor of our likelihood-of-confusion inquiry. See
Welding Servs., 509 F.3d at 1360; J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 11:82 (4th ed. 2010) (explaining that secondary meaning is an issue of validity for
noninherently distinctive marks and also an issue of strength/distinctiveness in the likelihood-of-
confusion analysis for any kind of mark).
12
relevant factor in its likelihood-of-confusion analysis. Plaintiff cannot prevail on
either argument.7
We agree with the district court that the only factors that could plausibly
support a finding of a likelihood of confusion are the similarity of the marks (factor
two) and the undisputed similarity of the parties’ sales methods (factor four).
Plaintiff’s and Defendants’ marks share an identical spelling but for a single letter
and the use of a space, an identical use of the possessive, and an identical
7
We also summarily dismiss Plaintiff’s argument that the district court misapplied
Rule 56(c)’s summary judgment standard by improperly weighing the evidence, as evidenced by
the court’s statements that certain likelihood-of-confusion factors “weighed” in favor of Plaintiff
or “weighed” in favor of Defendants. See Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1237
(11th Cir. 2010) (In reviewing motions for summary judgment, “[n]either we nor the district
court are to undertake credibility determinations or weigh the evidence.”). Although likelihood
of confusion is a question of fact, it may be decided as a matter of law. Welding Servs., 509 F.3d
at 1361; Alliance Metals, Inc. v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000). And
our circuit has routinely “weighed” the likelihood-of-confusion factors on summary judgment.
See, e.g., Welding Servs., 509 F.3d at 1361 (explaining that “[o]verwhelming visual dissimilarity
can defeat an infringement claim, even where the other six factors all weigh in favor of the
plaintiff” and concluding that “[t]he next three factors weigh in favor of Welding Services”
(emphasis added)); Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1208 & n.12
(11th Cir. 2004) (holding that no reasonable jury could find that the two logos are confusingly
similar because although “the second factor weighs in favor of FBD,” “the remaining six factors
all weigh in favor of DDI,” and “the lack of visual similarity between the two designs is
overwhelming” (emphasis added)).
Plaintiff points to no instance in which the district court improperly weighed conflicting
evidence in assessing the likelihood of confusion between the parties’ marks. Rather, it appears
that Plaintiff is arguing that if any one factor suggests that there could be a likelihood of
confusion, summary judgment is improper. This is not the law. The likelihood-of-confusion
multifactor test presupposes that various factors will point in opposing directions. The role of
the court in reviewing a motion for summary judgment is to determine the ultimate question of
whether, in light of the evidence as a whole, there is sufficient proof of a likelihood of confusion
to warrant a trial of the issue. See Welding Servs., 509 F.3d at 1361.
13
pronunciation, and both parties sell food prepared and served in retail restaurant
establishments.8 However, both of these factors merely suggest a threshold
potential for confusion and are thus entitled to little weight. An analysis of the
remaining factors demonstrates no real likelihood of confusion in the consuming
public.
With respect to the strength of Plaintiff’s mark (factor one), we conclude that
“Dan Tana’s” is a relatively weak mark for restaurant services outside of the Los
Angeles area. The weaker the mark, the less likelihood of confusion. Welding
Servs., 509 F.3d at 1361. As discussed above, determining the strength of a mark
requires a consideration of the mark’s inherent distinctiveness. If the mark is
merely descriptive, such as a personal or surname, its strength depends on whether
it has acquired secondary meaning. See Perini Corp., 915 F.2d at 125; 815
Tonawanda St. Corp., 842 F.2d at 648; Conagra, 743 F.2d at 1513. A descriptive
mark with secondary meaning is a relatively strong mark. Dieter v. B & H Indus.
of Sw. Fla., Inc., 880 F.2d 322, 329 (11th Cir. 1989).
As a preliminary matter, we do not find persuasive Plaintiff’s argument that
8
Despite Defendants’ concession of the similarity of the parties’ marks before the
district court, they now contest this factor on appeal, arguing that “there are differences in
spelling, syllabus, and pronunciation.” This position is inconsistent with that taken by
Defendants below, and we decline to entertain it. In any event, any such differences are
negligible.
14
because his mark is derived from his full name, as opposed to his personal or
surname, it is an inherently distinctive and, therefore, strong mark. The policy
reasons for requiring secondary meaning for the use of a personal or surname as a
mark extend equally to the use of full names. See Peaceable Planet, Inc. v. Ty, Inc.,
362 F.3d 986, 989–90 (7th Cir. 2004) (identifying the particular reasons for
considering names merely descriptive marks: (1) “a reluctance to forbid a person to
use his own name in his own business”; (2) a recognition that “some names are so
common . . . that consumers will not assume that two products having the same
name therefore have the same source”; and (3) the concern that “preventing a
person from using his name to denote his business may deprive consumers of
useful information”). Although some full names are indeed unique, the majority
are shared by numerous individuals across diverse communities and markets. We
decline to create a blanket rule distinguishing full names from personal and
surnames with respect to the secondary-meaning requirement.
Thus, “Dan Tana’s” is merely a descriptive mark, the strength of which is
dependent upon the showing of secondary meaning. We consider four factors in
assessing secondary meaning: (1) “the length and nature of the name’s use,” (2)
“the nature and extent of advertising and promotion of the name,” (3) “the efforts
of the proprietor to promote a conscious connection between the name and the
15
business,” and (4) “the degree of actual recognition by the public that the name
designates the proprietor’s product or service.” Welding Servs., 509 F.3d at 1358.
In light of Plaintiff’s continuous use of his mark in the same West Hollywood
neighborhood for over four decades, as well as the record evidence of the
significant press coverage he receives in Los Angeles publications, it is likely that
Dan Tana’s has obtained secondary meaning in Los Angeles. However, Dan Tana
alleges a likelihood of confusion between his restaurant and an establishment
thousands of miles away. Therefore, the relevant inquiry is whether Plaintiff’s
mark is strong enough outside of Los Angeles to give rise to a likelihood of
confusion among consumers of Dantanna’s restaurant services in Atlanta. See
Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 132 (2d Cir. 2004) (“[T]o
achieve the status of a strong mark, plaintiff must demonstrate distinctiveness in
the relevant market . . . . In this case, the relevant market is the pool of actual and
potential customers of Terrance Brennan’s, for it is those patrons whose potential
confusion is at issue.”). The record fails to establish such widespread secondary
meaning.
Plaintiff does not advertise nationally or in the Atlanta area specifically,
though he has enjoyed free advertising from articles in national publications such
as the New York Times, Forbes Traveler, and USA Today. Although these articles
16
suggest some notoriety among food critics and travel writers of nationwide
publications, they do not constitute record evidence of any effort by Plaintiff to
“create a conscious connection” in the nationwide public’s mind between the name
Dan Tana’s and his restaurant. See Welding Servs., 509 F.3d at 1358; see also
Brennan’s, 360 F.3d at 132 (Articles and reviews discussing Brennan’s New
Orleans in the context of the City of New Orleans or a trip to New Orleans “in no
way demonstrate that potential diners in New York City who find the word
Brennan’s on a restaurant awning will have any reason to think the restaurant is
connected with Brennan’s New Orleans, or even will have heard of Brennan’s New
Orleans.”). Even the use of the name “Dan Tanna” in the television series
“Vega$,” which aired for a few years in the late 1970s and early 1980s, suggests
nothing more than that the name “Dan Tana’s” may have a familiar ring to a
discrete group of television enthusiasts who viewed the program twenty to thirty
years ago, not that present-day patrons of Dantanna’s Atlanta would specifically
associate the name with Plaintiff’s restaurant.
Moreover, the two affidavits submitted by Plaintiff as evidence of the
national notoriety of his restaurant—one authored by Plaintiff himself and the other
authored by his attorney—make only generalized self-serving statements as to
Plaintiff’s reputation and add no material evidence to the record that is relevant to
17
the secondary-meaning inquiry. Cf. Conagra, 743 F.2d at 1513–14 (holding
plaintiff had established secondary meaning in its mark because it had
“prominently displayed the Singleton name on virtually all of its seafood products
for over 25 years,” distributed promotional films widely, expended over $400,000
annually in worldwide markets on its promotion, and included market surveys in
the record strongly identifying the company name with its products). In sum,
Plaintiff has failed to establish widespread secondary meaning of the name “Dan
Tana’s” sufficient to demonstrate that he holds a strong mark in restaurant services
so as to cause a likelihood of confusion among consumers in Atlanta.9 In light of
the weakness of Plaintiff’s mark in the context of this infringement suit (factor
one), the conceded similarity between the two marks (factor two) adds little weight
to Plaintiff’s effort to show likelihood of confusion.
9
We also dismiss Plaintiff’s attempt to circumvent the relevance of secondary
meaning by arguing that his complaint alleges both trademark infringement and false
endorsement, and that no secondary meaning is required to establish trademark rights in false
endorsement cases. In support of this argument, Plaintiff relies on a Ninth Circuit case, Downing
v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001), which sets forth a distinct set of factors
for evaluating “celebrity cases” of false endorsement in that circuit. Not only has our circuit
never endorsed the Ninth Circuit’s Downing factors, but we have also never recognized a
separate claim of false endorsement, distinct from trademark infringement under § 43(a) and
exempt from our secondary-meaning inquiry. Moreover, a reading of Downing reveals that
secondary meaning is indeed relevant to the Ninth Circuit’s likelihood-of-confusion inquiry in
celebrity cases. See id. at 1007 (listing as the first likelihood-of-confusion factor “the level of
recognition that the plaintiff has among the segment of the society for whom the defendant’s
product is intended”). In any event, in light of Plaintiff’s complaint, which alleges only one
Lanham Act count—a classic claim of false designation of origin under § 43(a)—this argument
has no basis in the pleadings.
18
A comparison of the goods and services offered under the parties’ marks
(factor three) reveals overwhelming evidence that consumers would be unlikely to
confuse the two restaurants. The goods and services provided in the parties’
restaurants are strikingly dissimilar, and the record belies Plaintiff’s assertion that
Dantanna’s in Atlanta provides “nearly identical” cuisine and ambiance to his
Hollywood restaurant. In fact, the only apparent commonality between the two
restaurants is that they are both fine-dining establishments serving meat and fish.
Dan Tana’s is an old-world-style Italian restaurant where mustached waiters
dressed in tuxedos serve classic Italian dishes off a menu embellished with Italian
language. The ambiance is cozy, intimate, romantic, low-lit, and the restaurant
caters to Hollywood’s elite and to celebrities seeking a safe haven from paparazzi.
In stark contrast, Dantanna’s in Atlanta is an upscale sports restaurant, targeting
sports enthusiasts and serving contemporary American cuisine in a modern setting
decorated with flat-screen televisions. Cf. Coach House Rest., 934 F.2d at 1562
(finding that “the registrant’s restaurant was modeled to emulate the same
ambiance and provide the same cuisine” as plaintiff’s restaurant, which contributed
to the court’s finding of a material issue of fact on the likelihood of confusion
between the two marks).
The stark differences between the parties’ restaurants, described in the
19
preceding paragraph, also demonstrate that their customers are dissimilar, which is
an aspect of the similarity of the parties’ actual sales methods (factor four). The
district court accepted Defendants’ concession that the two parties have identical
sales outlets (the other consideration in evaluating the similarity of sales methods),
in that they both serve food in retail restaurant establishments, but did not compare
the restaurants’ customer base. Thus, viewing factor four in its entirety, it adds
little weight to the possibility of a likelihood of confusion.
Additionally, Plaintiff and Defendants do not engage in similar methods of
advertising (factor five). Plaintiff admittedly relies solely on free publicity to
advertise his restaurant, aside from maintaining a website. Defendants, by contrast,
both maintain a website and purchase advertising at sporting events and in various
local and national publications. Thus, the only similarity in the advertising
channels used by the two parties is their maintenance of websites on the World
Wide Web. This similarity would dispel rather than cause confusion, however,
because the websites are separate and distinct, suggesting two completely unrelated
business entities.
There is also scant evidence of any intention of Defendants to misappropriate
Plaintiff’s mark (factor six). Plaintiff asserts, in a rather conclusory fashion, that
Defendants knew of the Dan Tana’s restaurant prior to adopting the name
20
“Dantanna’s” for their own because Clapp previously lived in Los Angeles and
worked in the restaurant business there. Although this fact gives rise to an
inference that Clapp could have encountered the Dan Tana’s restaurant during his
time in California, it does not contradict Defendants’ evidence of an independent
and innocent origin of the Dantanna’s mark: that the name “Dantanna’s” was
derived from the names of Clapp’s two children, Daniel and Anna by shortening
Daniel to “Dan” and connecting the two names with a “+” sign, which was
eventually converted into a “t.” Moreover, Clapp testified in his deposition that he
did not learn of Plaintiff’s restaurant until sometime in 2003, after he had already
selected the name of his restaurant and begun the trademark registration process.
Aside from Plaintiff’s bald assertion that Clapp fabricated this story, the affidavit
and his testimony remain uncontroverted by any material evidence. In fact,
Plaintiff testified in his deposition before the PTO that he had no reason to believe
that Clapp’s story was not true. Where a story of the creation of a mark is
undisputed and shows an innocent origin, we have concluded that there is no intent
of misappropriation contributing to a likelihood of confusion. See Welding Servs.,
509 F.3d at 1361.
Additionally, and perhaps most significantly, Plaintiff is unable to identify
any credible motive for Defendants to trade on the name of his restaurant in
21
Atlanta. There is no evidence of any secondary meaning associated with Plaintiff’s
mark in the Atlanta area; there is no competition between the two restaurants; and
the restaurants fulfill entirely different niches in the food services market. Finally,
a factfinder is less likely to find intentional infringement where a defendant uses
his own name in creating his mark. See Conagra, 743 F.2d at 1515 n.9. Although
the record indicates that Clapp used his children’s as opposed to his own name for
his restaurant, the source of the name is personal and familial and further support
for our conclusion that no reasonable jury could find intentional infringement on
these facts.
The last factor, actual confusion in the consuming public, is the most
persuasive evidence in assessing likelihood of confusion. Alliance Metals, Inc. v.
Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000). Again, Plaintiff’s evidence
is nominal. In fact, the only evidence adduced by Plaintiff as to actual confusion
was an affidavit by Kenneth McGuire, a Los Angeles resident and patron of Dan
Tana’s Hollywood, who claimed that he chose to patronize Dantanna’s on a visit to
Atlanta because of the similarity of the two restaurants’ names, which led him to
believe they had an affiliation. McGuire attested that upon entry he was struck by
“the signage and the decor in the Atlanta’s Dantanna’s,” which “was so close to the
decor as the Dan Tana’s in Hollywood” that it strengthened his belief of the
22
restaurants’ association. The district court concluded that the McGuire affidavit
was simply not credible in light of the record evidence of the striking
dissimilarities between the restaurants’ interiors, menus, and ambiance and was
therefore entitled to little weight. See 10A Charles Alan Wright, Arthur R. Miller,
& Mary Kay Kane, Federal Practice and Procedure § 2727 (3d ed. 2008) (Under
Federal Rule of Civil Procedure 56, “the court may disregard an offer of evidence
that is too incredible to be believed.”). Even if we declined to completely disregard
the affidavit, this evidence of actual confusion is so minimal as to be practically
insignificant.
The only other evidence of actual confusion is Defendants’ admission that
there have been two incidents in which customers have inquired as to the
restaurants’ possible affiliation with Dan Tana’s Hollywood since Dantanna’s
opened in 2003. This evidence of actual confusion is also weak; in considering
actual confusion we look not only to the existence but also to the extent of such
confusion. Welding Servs., 509 F.3d at 1360. Dantanna’s has served over one
million customers in the five years between its opening and the filing of this
lawsuit; no reasonable jury would conclude that an inquiry by only two customers
of a possible connection between the restaurants demonstrates actual confusion in
the consuming public. Our cases finding relevant actual confusion have concerned
23
much more significant evidence. Cf. Alliance Metals, 222 F.3d at 908 (finding
“ample undisputed evidence” of actual confusion where plaintiff attached copies of
more than a dozen checks plaintiff received from customers for goods bought from
defendants and seven invoices from vendors billing plaintiff under a confusing
combination of plaintiff’s and defendant’s names); Conagra, 743 F.2d at 1515
(finding relevant actual confusion where the evidence demonstrated “numerous”
instances where people assumed an affiliation between the parties’ businesses,
including inquiries by distributors to plaintiff about services provided by
defendant).
ii. The Relevance of Geographic Proximity of Use
We also reject Plaintiff’s argument that the district court erred as a matter of
law in considering the geographic proximity of the use of the parties’ marks. Our
circuit has recognized that “new factors may merit consideration” in determining
whether there is a likelihood of confusion. Swatch Watch, S.A. v. Taxor, Inc., 785
F.2d 956, 958 (11th Cir. 1986). And our case law already establishes that
geographic considerations may be relevant to the likelihood-of-confusion analysis,
even where we have not articulated this consideration as a separate factor. See,
e.g., St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1209
(11th Cir. 2009) (considering the fact that the two companies worked in “the same
24
geographical market” in holding that there was a clear likelihood of confusion of
the parties’ service marks to sustain the jury verdict); Alliance Metals, 222 F.3d at
908 (considering the undisputed evidence that both companies distributed
prefinished aluminum sheets and sign blanks in the “same territory” in concluding
that there was a likelihood of confusion).
We have already discussed the relevance of geography in our evaluation of
the strength of Plaintiff’s mark under the first factor of our existing seven-factor
likelihood-of-confusion test. Where the secondary meaning acquired by a
descriptive mark dictates its strength and distinctiveness, as here, the geographic
remoteness of a mark’s use may be relevant to the likelihood-of-confusion inquiry.
Because Plaintiff seeks to establish a likelihood of confusion with a restaurant in
Atlanta, the geographically remote use of his mark in West Hollywood weighs
against a finding of nationwide secondary meaning, leaving him with only a weak
mark unlikely to cause a likelihood of confusion in Atlanta.
Geographic considerations are also particularly relevant where a plaintiff
holds only common-law trademark rights in a mark because it is well-established
that the scope of protection accorded his mark is coextensive only with the territory
throughout which it is known and from which it has drawn its trade. Hanover Star
Milling Co. v. Metcalf, 240 U.S. 403, 416, 36 S. Ct. 357, 361 (1916), superseded
25
by statute in irrelevant part as stated in Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 105 S. Ct. 658 (1985). The owner of a registered mark, in contrast,
enjoys the unlimited right to use the mark nationwide, and federal registration
affords the registrant priority over all future users of confusingly similar marks. 15
U.S.C. § 1057(c); Coach House Rest., 934 F.2d at 1564. Therefore, a Lanham Act
plaintiff asserting common-law trademark rights under § 43(a) against the owner of
a registered mark, as here, bears the burden of establishing the right to use its mark
by actual use in a given territory. Emergency One, Inc. v. Am. Fire Eagle Engine
Co., 332 F.3d 264, 269 (4th Cir. 2003). And because registration constitutes
constructive nationwide notice of the registrant’s priority of use of a mark, 15
U.S.C. § 1072, only actual use occurring prior to such registration gives rise to
enforceable common-law trademark rights, 15 U.S.C. § 1065. Thus, federal
registration has the practical effect of freezing a prior user’s enforceable trademark
rights thereby terminating any right to future expansion beyond the user’s existing
territory. Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564,
572 (6th Cir. 2001) (“In the case in which a junior user applies for registration, . . .
the extent of the senior user/non-registrant’s territory is frozen as of the date of
26
actual registration to the junior user.”).10
Accordingly, because Plaintiff continued to operate only a single location of
Dan Tana’s at the time Defendants registered their mark, his trademark rights in the
“Dan Tana’s” name are limited to the Los Angeles market. Furthermore, the record
also establishes that Defendants currently operate restaurants only in the Atlanta
area and that the mark of neither party is known by the customers in the other’s
market. Thus, at present, the parties’ restaurants coexist in remote markets,
geographically and otherwise. On such a record, geographic considerations are
indeed relevant and demonstrate a smaller likelihood of confusion. See Coach
House Rest., 934 F.2d at 1564–65 (explaining that in an action for trademark
10
See also Peaches Ent. Corp. v. Ent. Repertoire Assocs., Inc., 62 F.3d 690, 693
(5th Cir. 1995); Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1181 (1st Cir.
1987) (applying the same principle to the related context in which the senior user obtains
registration and yet the junior user established market penetration in a discrete area prior to such
registration). For this reason, it is irrelevant to our likelihood-of-confusion analysis that Plaintiff
testified in this lawsuit (and after Defendants’ registration) about an intent to expand his
restaurant into other markets in other parts of the country. Moreover, even if Defendants did not
enjoy the benefit of a federal registration, the record contains no evidence demonstrating that
Atlanta, Georgia, would be considered within Plaintiff’s “zone of natural expansion.” See
Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1027–28 (11th Cir. 1989) (explaining
the common-law expansion doctrine, which provides a senior user with “some limited ‘breathing
space’ in which to expand beyond its current actual use” based on the nature of the senior user’s
use at the time of the junior user’s first use). A senior user that has constantly expanded its
business prior to the junior user’s adoption of the mark may be entitled to exclusive rights in a
zone of natural expansion, even if that zone ousts a junior user from its current territory. Id.
(citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:8 (2d ed.
1984)). However, where a “senior user is static, and has restricted use to only one small area,
such as one city, a good-faith junior user may expand into a nationwide use of the mark, subject
only to an exception in the small area occupied by the senior user.” Id. at 1028 (citing McCarthy,
supra, at § 26:8).
27
infringement, as opposed to a cancellation proceeding, brought by a prior user of an
unregistered mark, there is no presumption that the mark is being used nationwide,
and therefore where the two parties “operate in discrete, remote areas, there is a
smaller likelihood that there will be confusion”); Brennan’s, 360 F.3d at 134 (“In
the restaurant industry, especially where individual restaurants rather than chains
are competing, physical separation seems particularly significant to the inquiry into
consumer confusion.”). We therefore hold that the geographic remoteness of the
parties’ restaurants is particularly relevant to our likelihood-of-confusion analysis
where a plaintiff bases a trademark infringement claim on common-law trademark
rights. The district court did not err in considering the geographic proximity of use
as an eighth factor demonstrating the unlikelihood of confusion.11
11
We decline to consider Plaintiff’s argument that the underlying action is a
cancellation proceeding rather than a trademark infringement action, so as to make geographic
proximity of use irrelevant to the likelihood-of-confusion inquiry. See Coach House Rest., 934
F.2d at 1564 (explaining that where a prior user seeks to cancel a registrant’s mark, there is a
presumption that the registered mark is being used nationwide, i.e., it is already encroaching
upon the prior user’s market—wherever that may be—and therefore “geographical remoteness is
irrelevant to this likelihood of confusion inquiry”). The district court squarely held in its order
granting Defendants summary judgment: “This is not . . . a cancellation proceeding.” And our
review of Plaintiff’s brief to the district court persuades us that the district court was warranted in
treating this case only as an infringement action. Plaintiff failed to present his case to the district
court as a cancellation proceeding; Plaintiff only argued that he was “seeking” to cancel
Defendants’ mark pursuant to 15 U.S.C. § 1119, not that this prayer for relief transformed his §
43(a) trademark infringement action into a cancellation proceeding.
Notwithstanding the district court’s clear characterization of this suit as a trademark
infringement action, and resolution thereof as a § 43(a) infringement claim, Plaintiff’s briefs on
appeal fail to fairly raise this issue for our review, which is a necessary predicate to Plaintiff’s
invocation of Coach House. “Under our case law, a party seeking to raise a claim or issue on
28
Viewing the likelihood-of-confusion factors as a whole, there is minimal
evidence of a likelihood of confusion between Plaintiff’s and Defendants’
restaurants aside from the initial similarity of their names and the fact that they
both provide restaurant services. The remaining factors all weigh against a
likelihood of confusion, some overwhelmingly so. There are stark differences
between the two restaurants’ cuisine and ambiance. There is virtually no evidence
of confusion in advertising channels. No reasonable jury could find that
Defendants intended to trade on Plaintiff’s mark, and there is negligible evidence
of any actual confusion between the two restaurants. Moreover, in light of the vast
geographical distance between the two markets currently used by the parties, a
appeal must plainly and prominently so indicate. Otherwise, the issue . . . will be considered
abandoned.” United States v. Jernigan, 341 F.3d 1273, 1283 n.8 (11th Cir. 2003).
Plaintiff did not include the issue of the district court’s mischaracterization of his suit in
his statement of the issues; he does not discuss it in his summary of the argument; and he does
not list it in his table of contents. In fact, he failed to even include a table of contents. His
standard-of-review section does not list the standard for reviewing questions of law, such as this
one. Nowhere in his brief, or in his submissions to the district court, does he even list the
elements of a claim for cancellation. Most importantly, Plaintiff failed to argue how his
complaint sufficiently alleged such a claim under federal notice pleading standards, failed to
elucidate the relationship between a trademark infringement action and a cancellation
proceeding, and failed to provide support for the proposition that merely praying for cancellation
as a remedy for infringement is sufficient to convert an infringement action into a cancellation
action or a dual infringement and cancellation action.
Plaintiff’s only argument on appeal with respect to the district court’s characterization of
his suit as one for trademark infringement, as opposed to cancellation, appears in the context of
his discussion of the relevance of geographic proximity of use in a trademark infringement
action. Because Plaintiff proceeds throughout his appeal as if this action is one for trademark
infringement under § 43(a) of the Lanham Act and has failed to “plainly and prominently”
indicate his intent to appeal to our court to correct any mischaracterization of his suit by the
district court, we deem this argument abandoned.
29
likelihood of confusion is highly unlikely. In sum, Plaintiff has failed to adduce
sufficient evidence upon which a reasonable jury could find a likelihood of
confusion between Plaintiff’s and Defendants’ marks. Accordingly, we affirm the
district court’s grant of summary judgment to Defendants on Plaintiff’s Lanham
Act count.
Because neither party contests the district court’s conclusion that the
elements to establish deceptive trade practices under Georgia’s Uniform Deceptive
Trade Practices Act and fraud under O.C.G.A. § 23-2-55 are identical to those
required to prevail on Plaintiff’s federal infringement claim, we also affirm the
district court’s grant of summary judgment on these state law claims. See
Jellibeans, 716 F.2d at 839.
B. Appropriation of Likeness
We now turn to Plaintiff’s second issue on appeal: that the district court
erred in granting summary judgment on his appropriation-of-likeness tort claim.
To prove an appropriation of likeness under Georgia law, a plaintiff must establish
that the defendant invaded his privacy by appropriating, for the defendant’s benefit,
use or advantage, the plaintiff’s name or likeness. Cabaniss v. Hipsley, 151 S.E.2d
496, 500 (Ga. Ct. App. 1966). Plaintiff asserts on appeal that an appropriation of
likeness need not be intentional to be an actionable invasion of privacy. This
30
position is wholly without merit.
An appropriation of likeness without an intent to use the likeness for one’s
benefit fails to meet the very definition of the tort itself. Furthermore, Georgia case
law plainly establishes that summary judgment is proper where a plaintiff fails to
show an intentional or knowing appropriation of likeness. Blakey v. Victory
Equip. Sales, Inc., 576 S.E.2d 288, 292 (Ga. Ct. App. 2002) (holding that the
district court properly awarded summary judgment to defendant on plaintiff’s
appropriation-of-likeness claim for the sole reason that “[t]here [was] no evidence .
. . that defendants ever knowingly took Blakely’s identity for their purposes”).
As discussed in Part II.A., Plaintiff also fails to present any material
evidence that calls into question the truthfulness of Clapp’s claim of origin for his
restaurant’s name aside from the general assertion that Clapp’s experience working
in Los Angeles may have resulted in his knowledge of the “Dan Tana’s” restaurant.
Without any evidence to contradict Clapp’s account that his restaurant is named
after his own two children, as opposed to Plaintiff’s restaurant in Hollywood, and
without any evidence of a motive for Defendants to trade on the name of Plaintiff’s
restaurant, there can be no intentional appropriation of Plaintiff’s name or likeness.
In sum, the district court did not err in granting summary judgment to Defendants
on Plaintiff’s appropriation-of-likeness claim.
31
CONCLUSION
Because Plaintiff failed to produce sufficient evidence raising a genuine
issue of material fact on the likelihood of confusion between Plaintiff’s and
Defendants’ marks, the district court did not err in granting summary judgment to
Defendants on Plaintiff’s federal and state trademark infringement claims and his
claim of fraud arising under Georgia law. We also uphold the district court’s grant
of summary judgment to Defendants on Plaintiff’s appropriation-of-likeness claim
due to the absence of any evidence of an intentional appropriation of Plaintiff’s
likeness.
AFFIRMED.
32