IP Law Daily, TRADEMARK—S.D. Fla.: Questions of fact existed in trademark license dispute between Florida seafood restaurants, (Jun 24, 2022)

By Kevin M. Finson, J.D.

Summary judgment was not appropriate in a dispute over consumer confusion in restaurant licenses because material questions of fact existed about the actual representations made and actions taken by the parties.

A Florida restaurant owner did not show the absence of questions of material fact with respect to alleged consumer confusion with its use of a licensed trademark, the federal district court in Fort Pierce has held. A reasonable jury could find that the owner used the mark outside the geographic area of the license in an attempt to draw a connection between its own restaurant and the licensor in the minds of consumers (Tuna Family Mgmt Inc. v. All Trust Management Inc., June 22, 2022, Maynard, S.).

Tuna Family Mgmt, Inc. (Tuna Family) and its co-plaintiffs sold their seafood restaurant The Twisted Tuna, along with the company All Trust Management, Inc., to Mad Twist, LLC (Mad Twist) and its director, Didharth Sethi, pursuant to a complex arrangement of secured transactions. The secured transactions included a licensing agreement granting Mad Twist, by way of All Trust, an exclusive license to use the “The Twisted Tuna” trademark and related intellectual property within 10 miles of The Twisted Tuna restaurant. After disputes arose between the parties, Tuna Family brought suit against the buyers for, among other things, trademark infringement and unfair competition, and false designation of origin under the Lanham Act. The defendants moved for summary judgment, arguing that these claims lacked evidence of consumer confusion or damages.

Consumer confusion. Reviewing the evidence in the record, the court found that there was evidence, including the defendant’s own statements, that the defendant used the Twisted Tuna marks outside the ten-mile radius in a deliberate attempt to draw Twisted Tuna customers to the defendants’ new restaurant, the Fysh Bar and Grill, by showing a connection between the Fysh brand and the Twisted Tuna brand. The parties disputed whether defendant Sethi attempted to register the Twisted Tuna mark with the state of Florida in violation of the license agreement and whether defendants had represented to any third parties that Fysh Bar and Grill would be a replication or copy of The Twisted Tuna. These factual disputes required trial on the merits, so summary judgment was denied.

The Case is No 1:19-cv-00142-GNS-HBB.

Attorneys: Eric Lee Mcaliley (Lydecker Diaz) for Tuna Family Mgmt Inc. Timothy Andrew Kolaya (Stumphauzer Foslid Sloman Ross & Kolaya, PLLC) for All Trust Management Inc.

Companies: Tuna Family Mgmt Inc.; All Trust Management Inc.

Cases: Trademark FloridaNews