United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
J. BOYLE, UNITED STATES DISTRICT JUDGE
a trademark infringement dispute. Plaintiff Firebirds
International LLC owns and operates restaurants under the
mark “Firebirds.” Defendant Firebird Restaurant
Group operates a restaurant-management company, Firebird
Restaurant Group. Plaintiff sued Defendants under various
trademark-infringement-related laws. Before the Court are the
parties' crossmotions for summary judgment. Plaintiff
seeks partial summary judgment on the issue of
Defendants' liability for trademark infringement and the
related claims. Doc. 71, Pl.'s Mot. Defendants seek
partial summary judgment on Plaintiff's claim for damages
and unjust enrichment. Doc. 72, Defs.' Mot. Because fact
issues preclude both requests, the Court
DENIES these motions (Docs. 71 & 72).
Firebirds International LLC owns and operates a chain of
nearly fifty restaurants in nineteen states across the
country. Doc. 77, Pl.'s Br., 3; Doc. 78, Pl.'s App.,
31-32 (chart listing restaurants). The restaurants are
steakhouses that offer "an upscale dining experience at
a casual, or affordable, price point." Doc. 78, PL's
App., 2 ¶ 6 (Decl. Eason). All of Plaintiffs restaurants
operate under the "Firebirds" mark. Id. at
2 ¶ 5. Some restaurants display only
some restaurants display a sign that says "Firebirds
Wood Fired Grill":
at 41, 45. The mark puts emphasis on both the “F”
and the “S” in the word “Firebirds.”
There are currently no Firebirds restaurants in Texas, but
Plaintiff plans to expand into this market by 2020.
Id. at 2 ¶ 4. And Plaintiff recently opened its
first restaurant in Oklahoma. Id.
2001, the United States Patent and Trademark Office
(“USPTO”) issued Plaintiff a registration for the
“Firebirds” mark to be used for restaurant
services. Doc. 77, Pl.'s Br., 4 (citing Doc. 78,
Pl.'s App., 46-49). Additionally, Plaintiff owns four
related registrations: (1) “Firebirds Wood Fired
Grill” for restaurant services; (2) “Firebirds
Firebar” for restaurant and bar services; (3)
“Firebirds” for wine; and (4)
“Firebirds” design for restaurant and bar
services, as well as wine. Id. at 5 (citing Doc. 78,
Pl.'s App., 59-66). Plaintiff also has a pending
application for the mark “Firebirds Inner Circle”
used for a consumer-loyalty program. Id. (citing
Doc. 78, Pl.'s App., 67-73). Plaintiff uses these marks
for commercial, promotional, and advertising purposes. Doc.
96-1, Pl.'s Resp., 5-6. For example, they're used on
menus, flyers, print advertisements, and in television and
radio advertisements, internet promotions, social media, and
event sponsorships. Id. at 6.
Firebird Restaurant Group (“FRG”) is a
restaurant-management company that owns various restaurants
in north Texas. Doc. 73, Defs.' Br., 5-6. FRG owns and
operates restaurants doing business under six brands: El
Fenix Mexican Restaurant, Snuffer's Restaurant & Bar,
Village Burger Bar, Meso Maya, Taqueria La Ventana, Tortaco,
and Sunrise Mexican Foods. Doc. 98, Defs.' Resp., 8.
These brand restaurants, in turn, own around fifty restaurant
Michael Karns started FRG in 2008 as a holding company for
the El Fenix restaurants, the first of the brand restaurants
he purchased. Doc. 77, Pl.'s Br., 6. Karns continued to
use the El Fenix mark for marketing and business purposes;
FRG was merely used as a shell company to acquire El Fenix.
Id. It was not until 2012 that Karns decided to
“rebrand” and start using the “Firebrand
Restaurant Group” mark as a logo. Id.
Defendants commissioned someone to create a logo for their
FRG mark. Plaintiff contends that Karns
“rebranded” FRG for several reasons. First, FRG
started adding new restaurant brands to the company.
Id. Second, Plaintiff argues that “Karns felt
that he was having trouble looking cool as a restaurant group
with El Fenix as the mother brand.” Id.
(internal quotations omitted). Then, in 2013, Plaintiff
claims that Defendants started to use their mark as a
“motherbrand” to advertise and market the brand
restaurants. Id. The mark can be seen in the upper
right-hand corner of this photo:
at 7 (citing Doc. 78, Pl.'s App., 182). The type-written
portion of the mark displays the word “Firebird”
in large print and “restaurant group” in smaller
print. The mark is also typically featured with the large
flame, as displayed above. Plaintiff argues that, since 2012
or 2013, Defendants Karns and FRG “advertise and
promote the restaurants that they own and operate under the
infringing ‘Firebird' mark both locally and
nationally within the restaurant industry.”
Id. Plaintiff produces evidence that shows that
Defendants have used the FRG mark on, among other things,
restaurant menus, flyers, business cards, print
advertisements, websites, promotional information, press
releases, social media, and in event and charity
sponsorships. Id. at 6. Defendants dispute that they
use the FRG mark as a trademark or anything other than a
“business name.” Doc. 98, Defs.' Resp., 9.
They also push back on Plaintiff's characterization of
their use of the FRG logo as a “motherbrand.”
Id. at 6. On the other hand, Karns has expressed
that he wanted to use the newly designed logo to “add
other restaurants underneath it.” Doc. 73, Defs.'
2013, Defendant Firebird IP, LLC filed a trademark
registration with the USPTO for the FRG mark to be used for
“[r]estaurant management for others.” Doc. 78,
Pl.'s App., 249. Plaintiff contends that at some point
before or during this process Defendants became aware of the
“Firebirds” marks through a clearance search
conducted by their attorneys. Doc. 77, Pl.'s Br., 7.
Despite this, Defendants proceeded with their trademark
application. Id. The USPTO attorney assigned to the
application issued an initial refusal based on likelihood of
confusion with the Firebirds mark. Id. at 8 (citing
Doc. 78, Pl.'s App., 274-310). Ultimately, the examining
attorney issued a Final Office Action that maintained the
initial refusal decision. Id. at 9. The examining
attorney found that the marks were very similar and that the
parties' services were closely related. Doc. 78,
Pl.'s App., 316. Then, Defendants filed a request for
reconsideration in response to the Final Office Action,
renewing arguments and evidence they previously submitted and
submitting additional evidence. Doc. 99-10, Defs.' App.,
583-86. In a turn of events, the USPTO allowed
Defendants' application and published the FRG mark in the
Trademark Official Gazette. Doc. 99-11, Defs.' App., 587.
Plaintiff proceeded to oppose Firebird IP's application
in the Trademark Trial and Appeal Board (“TTAB”).
Doc. 77, Pl.'s Br., 9. That proceeding was stayed pending
the outcome of this litigation. Id. at 10.
October 4, 2017, Plaintiff filed its original complaint in
this case. Doc. 1, Orig. Compl. The complaint brought claims
for federal and common law trademark infringement and unfair
competition. Id. ¶¶ 47-66. It also brought
a claim for unjust enrichment. Id. ¶¶
67-71. As relief, Plaintiff sought: (1) a permanent
injunction preventing Defendants from, inter alia, continuing
to use its allegedly infringing mark; (2) damages based on
illicit profit, reasonable royalties, corrective advertising,
and other harm suffered as a result of the complained
activity; and (3) attorneys' fees and costs under 15
U.S.C. § 1117. Id. ¶¶ A-J. Plaintiff
demanded a jury trial on all issues of triable fact.
Id. at 15. Plaintiff filed an amended complaint on
June 22, 2018, which made essentially the same allegations
and claims as the original, but included Michael Karns as a
defendant and added allegations specific to him. Doc. 38,
First Am. Compl. The first amended complaint is currently the
operative complaint in this case.
before the Court are the parties' motions for summary
judgment. Plaintiff seeks partial summary judgment against
Defendants on their liability for the trademark and unfair
competition claims. Doc. 71, Pl.'s Mot. Defendants seek
partial summary judgment on Plaintiff's claim for damages
and unjust enrichment. Doc. 72, Defs.' Mot. Both motions
have been fully briefed, so the Court addresses them now.
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A dispute “is ‘genuine'
if the evidence is sufficient for a reasonable jury to return
a verdict for the non-moving party.” Burrell v. Dr.
Pepper/Seven Up Bottling Grp., 482 F.3d 408, 411 (5th
Cir. 2007). And a fact “is ‘material' if its
resolution could affect the outcome of the action.”
reviewing crossmotions for summary judgment, courts examine
“each party's motion independently” and view
“the evidence and inferences in the light most
favorable to the nonmoving party.” JP Morgan Chase
Bank, N.A. v. Data Treasury Corp., 823 F.3d 1006, 1011
(5th Cir. 2016) (quoting Morgan v. Plano Indep. Sch.
Dist., 589 F.3d 740, 745 (5th Cir. 2009)). “A
genuine issue of material fact exists if a reasonable jury
could enter a verdict for the non-moving party.”
Am. Family Life Assurance Co. of Columbus v. Biles,
714 F.3d 887, 896 (5th Cir. 2013) (per curiam).
Plaintiff's Motion for Partial Summary Judgment on
motion for partial summary judgment, Plaintiff asks the Court
to find that there is no genuine dispute that Defendants are
liable for trademark infringement, false designation of
origin, and unfair competition. Doc. 77, Pl.'s Br., 1.
The dispositive inquiry for these claims is whether there is
a likelihood of confusion between the parties'
marks. Thus, the Court's likelihood of
confusion analysis below for Plaintiff's federal
trademark infringement claim applies also to Plaintiff's
federal claims for unfair competition and false designation
of origin and common law claims for trademark infringement
and unfair competition. And because a reasonable jury could
find no likelihood of confusion between the parties'
marks, the Court denies Plaintiff's request for summary
judgment as to liability on each of these claims.
establish trademark infringement, a plaintiff must
demonstrate ownership of a legally protectable mark and a
likelihood of confusion between the marks. Amazing
Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 235-36
(5th Cir. 2010). First, the Court considers whether Plaintiff
has a legally protectable interest in the Firebirds mark.
Proof of registration with the United States Patent and Trade
Office is “prima facie evidence that the mark is valid
and that the registrant has the exclusive right to use the
registered mark in commerce with respect to the specified
goods or services.” Id. at 237. Plaintiff owns
five related and valid United States trademark registrations
for the Firebirds mark. Doc. 77, Pl.'s Br., 4-5. The
first registration was issued on December 18, 2001.
Id. at 4. Defendants do not challenge the
registrations, the ownership, or the incontestible status of
the Firebirds marks. Doc. 98, Defs.' Resp., 20. Plaintiff
has also used the mark in commerce since around the time it
was first registered. From this, the Court can conclude that
Plaintiff has established that it owns a legally protectable
to show a “likelihood of confusion, ” Plaintiff
must show that Defendants' use of their mark
“create[d] a likelihood of confusion in the minds of
potential consumers as to the source, affiliation, or
sponsorship” of Defendants' products or services.
Springboards to Educ., Inc. v. Hou. Indep. Sch.
Dist., 912 F.3d 805, 811-12 (5th Cir. 2019) (quoting
Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188,
193 (5th Cir. 1998)). “Likelihood of confusion is
synonymous with a probability of confusion, which is more
than a mere possibility of confusion.” Elvis
Presley Enters., 141 F.3d at 193. Courts consider a
non-exhaustive list of eight factors to determine whether a
party has established likelihood of confusion. The factors
include: “(1) strength of the plaintiff's mark; (2)
similarity of design between the marks; (3) similarity of the
products [or services]; (4) identity of retail outlets and
purchasers; (5) similarity of advertising media used; (6) the
defendant's intent; (7) actual confusion; and (8) degree
of care exercised by potential purchasers.” Am.
Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321,
329 (5th Cir. 2008). “The absence or presence of any
one factor ordinarily is not dispositive; indeed, a finding
of likelihood of confusion need not be supported even by a
majority of the . . . factors.” Id. (quoting
Conan Props., Inc., v. Conans Pizza, Inc., 752 F.2d
145, 150 (5th Cir. 1985)). Word association between the marks
is, in itself, insufficient to establish a probable
likelihood of confusion. Viacom Int'l v. IJR Capital
Inv., L.L.C., 891 F.3d 178, 192 (5th Cir. 2018). And
“the court must consider the marks in the context that
a customer perceives them in the marketplace.”
Id. (internal quotations omitted) (quoting Scott
Fetzer, 381 F.3d at 485).
asserts that each of the eight digits weighs in favor of
finding a likelihood of confusion and, thus, that the Court
should rule for it as a matter of law. “Likelihood of
confusion is a question of fact.” Id.
“However, summary judgment is proper if the record
compels the conclusion that the movant is entitled to
judgment as a matter of law.” Id. (internal
quotations omitted) (quoting Xtreme Lashes, LLC v.
Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir.
2009)). The Court analyzes each factor in turn.
Strength of Plaintiff's Mark
focus here is on Plaintiff's “Firebirds” mark
because Plaintiff is the senior user. See Elvis Presley
Enters., 141 F.3d at 201. The stronger Plaintiff's
mark, the greater the protection it receives “because
the greater the likelihood that consumers will confuse the
junior user's use with that of the senior user.”
Id. Two separate considerations are relevant-the
conceptual strength and the commercial strength of the mark.
Conceptual strength “considers where the mark falls on
a spectrum: ‘Marks may be classified as generic,
descriptive, suggestive, or arbitrary and fanciful. . . .
Within this spectrum the strength of a mark, and of its
protection, increases as one moves away from generic and
descriptive marks toward arbitrary marks.” Am.
Rice, 518 F.3d at 330 (alterations incorporated)
(quoting Falcon Rice Mill, Inc. v. Cmty. Rice Mill,
Inc., 725 F.2d 336, 346 (5th Cir. 1984)). Commercial
strength is the standing of the mark in the marketplace.
Id. Plaintiff argues there is no fact issue that its
mark is strong based on both of these considerations.
with the conceptual strength, Plaintiff argues its mark is
arbitrary and thus inherently distinctive. Doc. 77, Pl.'s
Br., 18. Marks that are suggestive, arbitrary, or fanciful
are deemed “inherently distinctive and are entitled to
protection.” Xtreme Lashes, 576 F.3d at 227
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992)). Arbitrary marks have no relation to
the product or service with which they are used.
Springboards, 912 F.3d at 814. For example, the mark
“APPLE” is arbitrary when used for computers
because it neither describes nor suggests anything about the
nature of the computers. J. Thomas McCarthy, 2 McCarthy
on Trademarks and Unfair Competition § 11:11 (5th
ed. 2019) (hereinafter “McCarthy on
Trademarks”). Defendants dispute that the
Firebirds mark is arbitrary. Doc. 98, Defs.' Resp.,
Defendants argue that the mark should not be afforded the
same degree of protection as “coined and fanciful terms
such as Kodak or Xerox.” Id. (quoting
Amstar Corp v. Domino's Pizza Inc., 615 F.2d
252, 260 (5th Cir. 1980) (holding that the mark