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Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 8 of 24 Inc., 880 F.2d 322, 326 (11th Cir. 1989) citing 15 U.S.C. § 1114(1)(a). If the court determines from the pleadings that confusion is unlikely as a matter of law, the complaint should be dismissed. Murray v. Cable Nat’l Broad. Co., 86 F.3d 858 (9th Cir. 1996) (holding that a district court is not precluded from determining likelihood of confusion as a matter of law, either through dismissal or summary judgment). In determining the likelihood of confusion between the two marks under Federal and Florida law, courts consider the following relevant factors: (1) strength of the mark at issue, (2) similarity of the marks, (3) similarity of the products the marks represent, (4) characteristics of the parties’ customers and the degree of care they exercise, (5) defendant’s intent and (6) evidence of actual confusion. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir. 1989); Great S. Bank v. First S. Bank, 625 So. 2d 463 (Fla. 1993). Of these factors, the strength of the mark at issue and the evidence of actual confusion are the two most important factors. Lone Star Steakhouse & Saloon, Inc., 122 F.3d at 1382 citing Dieter, 880 F.2d at 326. Where, as here, Plaintiffs’ mark is weak and the Amended Complaint fails to allege sufficient allegations of actual confusion, the Court should dismiss the claims of Federal Trademark Infringement, Federal Trademark Infringement Based on Reverse Confusion, False Association/False Designation of Origin and Federal Unfair Competition, False Advertising, Common Law Trademark Infringement, Common Law Unfair, and Violation of Florida’s Deceptive and Unfair Trade Practices Act 2 (Counts I through VI and VIII) with prejudice. A. Plaintiffs’ Mark is Extraordinarily Weak “A vital factor in the determination of whether there is likelihood of confusion between two service marks is the strength or weakness of plaintiff’s mark.” Sun Banks of Fla. v. Sun Fed. Savs. & Loan Ass’n, 651 F.2d 311, 315 (5th Cir. 1981). To gauge a mark’s strength, courts consider its distinctiveness in the marketplace. W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993). As such, extensive third-party use of the mark in commerce severely weakens the strength of the mark and is “impressive evidence” that there would be no likelihood of confusion. See, e.g., Sun Banks of Fla., 651 F.2d at 316 (extensive third-party use of the word “Sun” is impressive evidence that there would be no likelihood of confusion between Sun Banks 2 The “analysis of [Florida Deceptive and Unfair Trade Practices Act] claims are the same as for Lanham Act claims.” Pepsico, Inc. v. Distribuidora La Matagalpa, Inc., 510 F. Supp. 2d 1110 (S.D. Fla. 2007). -8- RICHMAN GREER, P.A. Miami • West Palm Beach
Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 9 of 24 and Sun Federal); Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 505 (5th Cir. 1979) (wide use of mark “World” results in little likelihood of confusion); Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445, 448 (5th Cir. 1973) (common word “Holiday” is of weak trademark significance). Here, Plaintiffs have allegedly used its “Mr. Chow” mark for its Chinese restaurant since 1974. (Compl. 29.) However, throughout that same period of time, the United States Patent and Trademark Office issued two hundred and fifty (250) trademarks that utilize the mark “CHOW” in commerce. Of those 250 trademarks, fifty three (53) were approved for use on “Restaurant Services” – many of which were issued for Chinese food restaurants – and an additional sixty one (61) marks were issued for food related products and services, including three (3) trademark registrations for “CHEF CHOW’S” for use on “oriental cooking.” See Composite Exhibit A and B to the Declaration of Lyle E. Shapiro (“Shapiro Decl.”) attached hereto. These circumstances certainly evidence that Plaintiffs’ mark is incredibly weak. See El Chico, Inc. v. El Chico Cafe, 214 F.2d 721, 725 (5th Cir. 1954) (27 trademark registrations of “El Chico” make the term a weak trade name deserving limited protection). Furthermore, Plaintiffs allege that they operate Mr. Chow restaurants in New York City, California and will open a new location next month in Miami, Florida. (Compl. 29-31.) However, these markets are completely saturated with the use of “CHOW” on Chinese food restaurants. For example, in New York City and Los Angeles alone there are at least thirty six six (36) Chinese food restaurants that use the word “CHOW” in their name. See Composite Exhibit C to Shapiro Decl. Thus, Plaintiffs’ use of “Mr. Chow” – even in its own geographic location – is weak. Moreover, this Circuit also considers the number of businesses incorporated with the Division of Corporations of the Secretary of State in determining the strength – or in this case weakness – of a plaintiff’s mark. Sun Banks of Fla., 651 F.2d 311, 316 (5th Cir. 1981) (citing a composite print out from the Florida Secretary of State that revealed a number of businesses employing the word “Sun” in finding no likelihood of confusion between “Sun Banks” and “Sun Federal Savings & Loan” due to extensive third party use). Here, there are one hundred and three (103) businesses registered with the Secretary of State in New York, California and Florida using the mark “CHOW” in the name of their restaurant. See Composite Exhibit D to Shapiro Decl. Clearly, this overwhelming use of “CHOW” in the marketplace, coupled with the -9- RICHMAN GREER, P.A. Miami • West Palm Beach
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