IP Law Daily, TRADEMARK—E.D. La.: Louisiana restaurant operator can forget about easy elimination of California operator’s trademark infringement claim, (Jan 29, 2025)

By Justin Marcus Smith, J.D.

While some factors weighed against a finding of likelihood of confusion, there was enough evidence for a reasonable jury to award a verdict for the California plaintiff, at least as to injunctive if not monetary relief.

In a trademark infringement dispute involving two widely -separated restaurants, there was enough evidence for a reasonable jury to award a verdict for the California plaintiff, but only as to injunctive relief, held the federal district court in New Orleans, Louisiana. Given the variety of logos placed before the court, questions of similarity were for a jury to decide; however, the court otherwise granted summary judgment to the defendant with respect to monetary damages because the plaintiff failed to dispute that it suffered any. The court also granted summary judgment to the defendant on the plaintiff’s Trademark Dilution Revision Act claim because the plaintiff failed to establish that its mark was sufficiently famous (H. Wood Group, LLC v. Allison & Glenn, Inc., No. 2:23-cv-01830-DJP-DPC (E.D. La. Jan. 28, 2025)).

Background. Plaintiff H. Wood Group, LLC (HWG) brought an action against defendant Allison & Glenn, Inc. (A&G) under the Lanham Act to enforce THE NICE GUY trademark. HWG’s THE NICE GUY trademark served as the name of its flagship restaurant in West Hollywood, California. HWG alleged that A&G was infringing based on A&G’s use of the name “Nice Guys NOLA” for a restaurant in New Orleans, Louisiana.

HWG said it registered THE NICE GUY with the U.S. Patent and Trademark Office (USPTO) in 2014 and began using it in connection with the West Hollywood restaurant shortly thereafter. HWG said it was also using the trademark for a restaurant in Dubai, United Arab Emirates, as of 2022, and that it plans to open a third location in Miami, Florida, in 2026.

HWG alleged A&G began operating its New Orleans restaurant under the trade name “Nice Guys Bar & Grill” in 2019, and, by 2020, began calling it “Nice Guys NOLA” as registered only with the Louisiana Secretary of State. HWG said it learned of Nice Guys NOLA in 2022 when a customer asked whether the two restaurants were affiliated.

A&G appeared to be unaware of HWG’s trademark until it received a letter from HWG. A&G moved for summary judgment without challenging HWG’s ownership of THE NICE GUY mark. The court noted that the Fifth Circuit has emphasized that a plaintiff need only show a likelihood of confusion, not actual confusion, to survive summary judgment. The court partly granted and partly denied A&G’s motion for summary judgment.

Infringement. The court denied A&G’s motion for summary judgment on the question of infringement. In analyzing the eight factors or “digits of confusion” for likelihood of confusion, the court found, first, that “Nice Guy” was not a generic term for a restaurant or nightclub. It also did not signify restaurant services. The court found it “at least suggestive” of “a member of the mafia” to the extent an Italian restaurant aims to reflect the notional atmosphere of a mafia hangout. However, the court concluded the mark was not arbitrary because there was a “discernible connection” with the “atmosphere and cuisine offered at The Nice Guy.” A&G submitted evidence that “nice guy” appeared in 76 active and inactive USPTO applications for numerous businesses around the country, but it only identified at most one other restaurant with the phrase “nice guy” in its name. The court concluded that HWG’s strong standing in the market and “at least” suggestive descriptiveness meant this digit weighed in favor of finding a likelihood of confusion.

Next, as to similarity, the court saw that The Nice Guy and Nice Guys NOLA marks shared the phrase “nice guy”, but they otherwise differed in typeface and colors. The variety of logos placed before the court meant similarity was for the jury to decide. The court said this precluded summary judgment that there was no infringement.

Continuing to analyze the next digit, similarity of products and services, although the parties’ restaurants did not compete directly, geographical expansion was a potential issue. However, the court saw that the A&G restaurant had a very different local New Orleans cuisine and theme. The court found that at least one opinion instructed against putting much weight on whether party businesses target different subsections of the same market. See Rex Real Estate I, L.P. v. Rex Real Estate Exch., Inc., 80 F.4th 607 (5th Cir. 2023). The court held a reasonable jury could weigh this digit in HWG’s favor.

As to outlet and purchaser similarity, the two restaurants’ potential customers might overlap, but HWG acknowledged the geographic distance between them suggested little, if any, direct overlap. The court found this digit weighed against finding a likelihood of confusion. Continuing on to advertising media identity, the court found nothing in the two restaurants’ advertising strategies suggested any affiliation. This digit also weighed against finding a likelihood of confusion. Turning to intent, the court found this digit neutral because there was no evidence that A&G intended to confuse.

As for actual confusion, the court noted that testimony of a single known incident of actual consumer confusion can be sufficient evidence to support a district court finding of actual confusion. The court said the Fifth Circuit has sometimes required proof that actual confusion swayed consumer purchases, but in other situations, “mere offhand remarks have qualified.” The court noted how this lawsuit sprang from a consumer inquiry that expressed confusion about whether the two restaurants were affiliated. Although HWG did not supply evidence of the actual communication at issue, the court found this incident was an example of actual consumer confusion. See Viacom Int’l v. IJR Cap. Invs., L.L.C., 891 F.3d 178, 197 (5th Cir. 2018).

A&G presented expert opinion that there was low net aggregate confusion of 0.5%. This was partly based on a survey where only one consumer indicated confusion between the two restaurants. However, the court said the expert’s deposition testimony cast some doubt on the survey findings. Flaws in A&G expert’s survey evidence were not enough to overcome the single known incident of real-world confusion. The court accordingly concluded that the actual confusion digit weighed “slightly” in HWG’s favor.

As for the degree of care exercised by potential buyers, The Nice Guy’s purported premium positioning suggested its customers might be more discerning than average. There was hardly any evidence here, so the court did not find much insight on this digit.

All told, while some digits weighed against a finding of likelihood of confusion, there was enough evidence for a reasonable jury to award a verdict for HWG. The court held it must therefore deny A&G’s motion for summary judgment.

Lanham Act damages. The court granted summary judgment to A&G on HWG’s claim for monetary damages because HWG did not respond to A&G’s argument that that injunctive relief might suffice where there was no evidence of damages or lost sales.

Trademark dilution. HWG also failed to respond to A&G’s argument that there was no evidence that HWG’s mark was sufficiently famous for protection under the Trademark Dilution Revision Act of 2006 (TDRA). The court awarded summary judgment to A&G on HWG’s trademark dilution claim.

The Case is No. 2:23-cv-01830-DJP-DPC.

Judge: Papillion, D.

Attorneys: Shaun P. McFall (Barrasso, Usdin, Kupperman, Freeman & Sarver, LLC) for H. Wood Group, LLC. Jared A. Davidson (Taylor, Wellons, Politz & Duhe APLC) for Allison & Glenn, Inc.

Companies: H. Wood Group, LLC; Allison & Glenn, Inc.

Cases: Trademark LouisianaNews