UNITED STATES DISTRICT COURT SOUTHERN ... - Nymag

Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 11 of 24
lowercase); and color (Mr. Chow: black and white v. Philippe: red). These marks are so
dissimilar that it is like comparing wantons to walruses.
The only similarity between these two marks is the name “Chow” at the end of Philippe’s
mark. As discussed above, the word “Chow” is an incredibly weak aspect of the two marks as
evidenced by the hundreds of “Chow” trademarks registered with the United States Patent and
Trademark Office, the number of Chinese restaurants using the name “Chow” in the same
geographic locations in which the parties operate, and the large number of businesses
incorporating the name “Chow” with the Secretary of State in the areas where Plaintiffs and
Philippe do business.
Furthermore, Philippe regularly uses other marks on nearly every aspect of its restaurants
to identify Philippe in a way that could never be confusingly similar to Mr. Chow:
Philippe displays these marks on everything from their storefront to their artificial sweeteners to
distinguish themselves from Plaintiffs. See Composite Exhibit F to Shapiro Decl. Indeed, the
difference between Plaintiffs’ and Philippe’s marks is as different as night and day. The stark
contrast of the overall look of the two marks plainly evidences that the two marks are entirely
dissimilar as a matter of law, and therefore, this factor weighs strongly in Philippe’s favor.
C. Similarity of the Products
Both Plaintiffs and Philippe operate restaurants that serve Chinese cuisine; however, this
lone similarity is not fully dispositive of this factor. In fact, when two restaurants have highly
distinct and unique features, the weight of this factor is significantly diminished. In Barbeque
Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir. 2000), the court held that even though
two restaurants serving similar food were in close proximity to each other, they were not likely
to cause consumer confusion based on the differences between their ambiance and theme:
SMOKE DADDY, a small restaurant seating only 42, and
decorated in a 1950s style, focuses heavily on blues music. In
contrast, BONE DADDY styles itself as an “irreverent” restaurant,
using [ ] sexually charged slogans . . . BONE DADDY's interior
has a very different feel, and its stronger emphasis on food
differentiates its style from that of SMOKE DADDY.
-11-
RICHMAN GREER, P.A.
Miami • West Palm Beach