i, Pit iiltien f i | | 1 ' (The Summer House tn Corona del Mar, California (Id. at 8)). A third unaffiliated restaurant in Florida also uses the name. In 2021, Plaintiff sued this restaurant, called “Siesta Key Summer House,” arguing that the restaurant’s use of the name “Summer House Siesta Key” violated its trademark. (Id. at 9). The case settled with Plaintiff consenting to a change of the same to “Siesta Key Summer House.” (a).
Beyond these three “Summer House” restaurants, Defendant identifies at least four other dining establishments in the United States that also use the name “Summer House” as well as dozens of other hospitality services, including a pop-up restaurant from Eleven Madison Park. (Id. at 10; EMP Summer House, Dkt. 30-5, at 28).2 Plaintiff argues that these marks are not indicative of commercial weakness because they have sued at least one of the Summer House’s and are not required to sue the others until it becomes clear that they will have a significant impact on their
rights.3 (Pl.’s Resp., Dkt. 32, at 8 (citing Progressive Concepts, Inc. v. Hawk Elecs, 2009 WL 10705254, at*4 (N.D. Tex. Aug. 20, 2009)). But Plaintiff’s cite to Progressive deals with laches—it does not relate to the commercial strength of a mark. 4 Regardless of their market size, the fact that several restaurants around the country use the same mark without confusion strongly suggests that the mark is commercially weak.
2 Plaintiff contests these websites as “hearsay” without explaining why. (Pl.’s Resp., Dkt. 32, at 10). But the websites are not offered for the truth of the matter asserted therein—Defendant is not actually trying to establish that the halibut in the Massachusetts Summer House was indeed “perfectly seasoned.” (Summer House Yelp, Dkt. 30-5, at 35). Rather, the pages are offered to show potential consumer perception and awareness of the “Summer House” mark. Courts often allow such evidence to be admitted or judicially noted. See, e.g., Mateo v. Hsin, Inc., No. 7:19-CV-419, 2021 U.S. Dist. LEXIS 197645, at *29 (S.D. Tex. 2021) (taking judicial notice of information provided on a company website and noting that “[i]t is not uncommon for courts to take judicial notice of factual information found on the world wide web”) (citing cases); Brooks v. United Dev. Funding III, L.P., No. 4:20-cv-00150-O, 2020 U.S. Dist. LEXIS 197662, at *100 (N.D. Tex. Apr. 15, 2020) (taking judicial notice of existence of website and report posted online);.Town of Davie Police Pension Plan v. Pier 1 Imports, Inc., 325 F. Supp. 3d 728, 746 n.3 (N.D. Tex. 2018) (taking judicial notice of advertisements on website). 3 Plaintiff’s argument that third-party use of the mark does not diminish its commercial strength fundamentally contradicts the premise of this lawsuit. Plaintiff is suing Defendant because its use of the name “Summer House” allegedly creates “confusion,” “substantial damage,” and “irreparable harm.” (Am. Compl., Dkt. 10, at 13). It is difficult to accept that Defendant’s use of the name causes substantial and irreparable harm while the use of the name by at least three other restaurants has no effect whatsoever on its commercial recognition. If Defendant’s use creates substantial harm, then third-party use must likewise diminish the mark’s commercial strength. If extensive third-party use does not diminish commercial strength, then there is little reason to think Defendant’s use will cause substantial harm. But a plaintiff alleging a likelihood of confusion cannot have the argument both ways. 4 Similarly, Plaintiff argues that the Ohio restaurant’s use of the mark is not relevant to the strength of the mark because of Plaintiff’s pending litigation against it. (Id. (citing Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500 (5th Cir. 1980))). But Exxon Corp. does not actually state the quote that Plaintiff’s use, and at any rate, the case would still leave several other restaurants currently using the mark without litigation against them. The sheer number of restaurants and venues using the name “Summer House” is highly indicative of the mark’s commercial weakness. See Springboards To Educ., 912 F.3d at 815 (“[A]lthough the fact that three of Springboards’ marks are suggestive would normally indicate that the marks are strong, the strength of Springboards’ marks is substantially undercut by their lack of recognition in the market and widespread third-party use.”); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986) (explaining common use of “XL” mark with various consumer goods “dilute[d] the
strength of the mark”); Firebirds, 397 F. Supp. at 862 (“[E]xtensive third-party usage of the term ‘Firebird’ in related and unrelated industries militates against finding Plaintiff’s mark commercially strong.”). As in Firebirds and Springboards, the mark’s mild conceptual strength is overshadowed by its commercial weakness. Firebirds, 397 F. Supp. 3d at 863; Springboards To Educ., 912 F.3d at 815. While the mark is likely suggestive, third-party use is extensive, and there is virtually no evidence of recognition in the Texas market. As a whole, the digit weighs in favor of Defendant. C. Similarity of the Marks When considering the similarity of the parties’ marks, courts look at “the mark’s appearance, sound, and meaning.” Smack Apparel Co., 550 F.3d at 479. “The more similar the marks, the greater likelihood of confusion.” Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 454 (5th Cir. 2017). “Even if two marks are distinguishable, we ask whether, under the circumstances of use, the
marks are similar enough that a reasonable person could believe the two products have a common origin or association.” Id. (quoting Xtreme Lashes, 576 F.3d at 228). “In assessing mark similarity, we ‘give more attention to the dominant features of a mark.’” Id. Courts also consider the context in which the marks appear, as well as the color schemes and design elements of the marks. Id. (citing Smack Apparel, 550 F.3d at 480). Beginning with appearance, the marks look distinct. Beyond the very premise of the suit— that they share the same first two words of the name “Summer House”—the differences are far more apparent than the similarities. Plaintiffs mark uses a serif font with wide, centered spacing. (Mot. Summ. J., Dkt. 30, at 14). Defendant’s mark uses a much more flowing font, with thin lines flowing above and below the logo. (/d.). Defendant’s mark puts “House” on a second line and shapes the mark as part of a coherent circle. Both are green, though different shades, and Defendant’s logo is contrasted with a pastel orange sun. (/d.). Defendant’s other mark uses entirely different colors. ({d.). Defendant’s mark also matches the font and visual theme of the hotel it is situated in: Hotel Magdalena.
Plaintiff SUMMER HOUSE
SUMMERHOUSE
_ hotel| Defendant's lEGOCIEGNE nneaite hotck MOR SANS SNA
(Mot. Summ. J., Dkt. 30, at 19; Hotel Magdalena Website, Dkt. 30-10, at 26). Plaintiff argues that “Summer House” ts the dominant feature of each mark. (PI.’s Resp., Dkt. 32, at 11). Specifically, Plaintiff points to the physical signs used by both parties at their restaurant location. “Summer House” does appear far larger in both parties’ signs than the text of
the location. But the physical signs also highlight the key differences between the two: Defendant’s logo is visually quite distinct from Plaintiff's:
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(Pl.’s Resp., Dkt. 32, at 11). In short, beyond the dominant feature, (1.e., the words “Summer House’’), there are many more differences in the marks than similarities. Given that nearly every design element appears to be different between the two marks, a reasonable juror would find it difficult to believe that the two “have a common origin or association.” Xéreme Lashes, 576 F.3d at 228; Picnik Holdings LLC v. Bento Picnic, LLC, No. 1:18-CV-897-RP, 2019 WL 2515310 (W.D. Tex. June 18, 2019), aff'd 797 Fed. Appx. 169 (5th Cir. 2020) (denying a preliminary injunction where the two marks “look very different”). Beyond the shared words and general color, there 1s no visual link between the two marks. Thus, the element weighs in Defendant’s favor.”
> Plaintiff argues that this weighing of visual similarity 1s a task exclusively for the jury. At least within the Fifth Circuit, this is not so. See Streamline, 851 F.3d at454 (discussing visual similarity of marks); Swvack Apparel, 550 3d. at 479 (same); Xtreme Lashes, 576 F.3d at 228 (same); Pienik Holdings, 2019 WL 2515310 at * 5 (same).
The meaning of the mark also tends to favor Defendant more. Defendant chose the “Summer House on Music Lane” mark to describe the “Austin 70’s lake culture” and pay homage to the fact that local musician Willie Nelson used to own the site. (Id. at 13). Moreover, the restaurant previously on the site used to be called “Summer House.” (Id. at 13–14). Plaintiff, by contrast, chose the “Summer House Santa Monica” name to evoke a feeling of “sunshine all year round” with “West Coast vibes” that emphasize the “California-inspired” menu. (Id.). While the evidence is
limited that consumers in fact associate Defendant with Willie Nelson or the lot’s storied history, (Pl.’s Resp., Dkt. 32, at 12), the term “Music Lane” carries a distinct meaning from “Santa Monica,” and there is no evidence that consumers assume Defendant is attempting to recreate a California- inspired menu. D. Product Similarity Both parties offer similar services. Both are American-style restaurants that provide upscale, sit-down service to patrons. (Id. at 13). The fare is not literally identical, but it is similar, and this digit weighs in favor of Plaintiff. E. Outlet and Purchaser Identity Consumer identity weighs strongly in favor of Defendant. “The smaller the overlap between the retail outlets for and the predominant consumers of [the parties’] goods, the smaller the possibility of confusion.” Streamline, 851 F.3d at 455 (citing Exxon Corp., 628 F.2d at 505). Defendant
argues that the geographic separation of the consumer bases is so strong that it should be dispositive in this case under the Dawn Donut doctrine. (Mot. Summ. J., Dkt. 30, at 16 (citing Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959))). That Second Circuit doctrine states that a “registrant is not entitled to enjoin the junior user’s use of the mark” if the two are “confined to sufficient distinct and geographically separate markets, with no likelihood that the registrant will expand his use into the defendant’s market . . . .” Dawn Donut, 267 F.2d at 364. More recently, this Court has affirmed that it will still apply the doctrine and consider geographic separation to be potentially dispositive. See Wilson v. Tessmer Law Firm, PLLC, 483 F. Supp. 3d 416 (W.D. Tex. 2020) (citing Cross Trailers, Inc. v. Cross Trailer Mfg. & Sales, LLC, 363 F. Supp. 3d 774, 782 (W.D. Tex. 2018)). See also Am. Rice, 518 F.3d at 329 (“This Court has previously refused to grant a remedy to a plaintiff where that plaintiff was not using the allegedly infringed mark in the same trading area as a defendant.”).
Ultimately, despite this Court’s continued adherence to Dawn Donut, the doctrine does not dispose of the case here by itself. While the consumer overlap is extremely minimal, it is not exactly zero. (Pl.’s Resp., Dkt. 32, at 14). Moreover, because Plaintiff operates a national chain of restaurants, it is at least foreseeable that they could one day open a Summer House Santa Monica in the Austin area.6 While not entirely dispositive, the different consumer bases still weigh substantially in Defendant’s favor. At their closest locations, the two restaurants are at least 1,000 miles away from each other. (Mot. Summ. J., Dkt. 30, at 15). Restaurants predominantly serve local consumers, and there is no reason to think that there is any special overlap between diners in Austin and diners in Chicago or Bethesda. (Id.). Plaintiff claims that the “customers overlap” because “thousands of people from Texas (and Austin) have made reservations at Summer House Santa Monica restaurants . . . .” (Pl.s’ Resp., Dkt. 32, at 14). This is, at best, circumstantial evidence of overlap. It
does not directly show that consumers do in fact eat at (or even recognize) both restaurants. Beyond a sole Yelp review, Plaintiff’s evidence does not show that there has been a single overlapping customer. (Yelp Review, Dkt. 30-1, at 15–16).
6 One representative testified on this matter, but the deposition is sealed to protect trade secrets. (Bell Depo., Dkt. 30-1, at 30). Both as to the strength of its mark and the hypothetical overlapping customers, Plaintiff argues that many online users from Texas visit its site. (Pl.’s Resp., Dkt. 32, at 2–3, 14–15). But Plaintiff conflates the numbers for its entire restaurant group—which encompasses over 120 establishments—with those for Summer House Santa Monica specifically. (Id.; Am. Compl., Dkt. 10, at 3; Def.’s Reply, Dkt. 34, at 3). Moreover, the company’s own numbers show that only a small fraction of visitors to its site come from Texas. (Bell Dec. Dkt. 33-1, at 91).7 Again, Plaintiff could
have potentially created an issue of fact on consumer overlap by conducting a customer survey, but it did not provide any such evidence. In sum, Defendant showed that the consumers of the two restaurants were highly unlikely to overlap. In response, Plaintiff provided only hypothetical scenarios suggesting the slight possibility of overlap between the two restaurants in different cities. Accordingly, a reasonable juror could not find any meaningful consumer overlap probable, and the digit weighs substantially in Defendant’s favor. F. Advertising Media “The greater the degree of overlap in the marketing approaches of the two entities, the greater the likelihood of confusion.” Dallas Cowboys Football Club, Ltd. v. Am.'s Team Props., Inc., 616 F. Supp. 2d 622, 639 (N.D. Tex. 2009) (alterations incorporated). Both restaurants use social media to advertise their restaurants, have profiles on Yelp, and use OpenTable and Resy to let customers
make reservations. (Pl.’s Resp., Dkt. 32, at 16–17). The relevance of this digit, however, is limited by the fact that this advertising breaks down by geographic region.8 The fact that both parties use OpenTable means little if they are located 1,000 miles apart, and users look for reservation by city. 7 The exact fraction is filed under seal. 8 The Sixth Circuit, for example, examines internet marketing differently, looking at (1) whether the parties use the internet as a substantial marketing channel, (2) whether the product is web-based, and (3) whether the parties’ marketing channels overlap in other ways. Kibler v. Hall, 843 F.3d 1068, 1079 (6th Cir. 2016). Here, the parties’ product (i.e., food) is sold largely in-person. Moreover, the channels cannot be said to “overlap” in the sense that they target different geographic areas. See John R. Thompson Co. v. Holloway, 366 F.2d 108, 111–12 (5th Cir. 1966) (noting neither party advertised nationally and one party advertised only in Dallas/Fort Worth while the other never advertised within Texas). Because there is no evidence that these advertising channels overlap geographically, this factor is neutral. G. Defendant’s Intent “Proof of an intent to confuse the public is not necessary to a finding of a likelihood of
confusion, but if a mark was adopted with the intent to confuse the public, that alone may be sufficient to justify an inference of likelihood of confusion.” Bd. of Regents of the Univ. of Hous. Sys., 214 F. Supp. 3d at 590 (cleaned up) (quoting Elvis Presley Enters., 141 F.3d at 203). “If there is no evidence of intent to confuse, then this factor is neutral.” Viacom Int’l v. IJR Capital Inv., L.L.C., 891 F.3d 178, 192 (5th Cir. 2018). Courts in this circuit focus “on whether the defendant intended to derive benefits from the reputation of the plaintiff.” Streamline, 851 F.3d at 455. “But mere awareness of the senior user’s mark does not establish bad intent.” Id. at 456 (cleaned up) (quoting Conan Props., Inc., v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985)). The undisputed evidence shows that Defendant was aware of the “Summer House Santa Monica” name but not that there was any intent to derive a benefit from its reputation. Defendant knew that Plaintiff owned the mark “Summer House Santa Monica” two years before opening Summer House on Music Lane. (Pl.’s Resp., Dkt. 32, at 17). Nine months before opening,
Defendant knew that Plaintiff objected to use of the name. (Id.). Ultimately, this evidence does not show any bad faith or intent to derive benefit from the existing mark. As established infra Section III.B, “Summer House” is a common name for restaurants. There is minimal overlap between consumers of the two restaurants, and no evidence that the mark had recognition in 2020 in Austin. Because consumer awareness of the mark in Austin was negligible to nonexistent, a reasonable juror would find it difficult to believe Defendant adopted the mark to receive the benefit of the mark’s reputation. Moreover, “Summer House” was already the name of a restaurant that had historically existed on the site, and at least one representative testified that they named the restaurant “Summer House” in part to receive the benefit of the previous Austin restaurant’s name. (Mot. Summ. J., Dkt. 30, at 17–18; Moore Depo., Dkt. 30-10, at 18). Because Plaintiff can only show that Defendant knew of the mark, but not any intent to derive a benefit from it, the digit is neutral. H. Consumer Care
“Where items are relatively inexpensive, a buyer may take less care in selecting the item, thereby increasing the risk of confusion.” Smack Apparel, 550 F.3d at 483; see also Oreck Corp., 803 F.2d at 173–74 (reasoning that because purchasers were “buying for professional and institutional purposes at a cost in the thousands of dollars, they are virtually certain to be informed, deliberative buyers”) (citation omitted). However, a high price tag alone does not negate other indicia of likelihood of confusion, especially if the goods or marks are similar. See Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 595–96 (5th Cir. 1985). Defendant argues that it is “an upscale restaurant that attracts upscale patrons who pay upscale prices,” serving entrées averaging around $25 to $40, while Plaintiff argues that the restaurants’ brunch, lunch, and happy hour prices are “inexpensive.” (Mot. Summ. J., Dkt. 30, at 21; Pl.’s Resp., Dkt. 32, at 13–14). While a reasonable jury could disagree about whether the restaurant’s happy hour is “expensive,” the dinner prices are clearly above average. Reviewers themselves at
Summer House Santa Monica have called the food “expensive” and “pricey” and “upscale.” (Bell Dec., Dkt. 33-3, at 185, 201, 130, 282). Overall, the digit leans slightly in Defendant’s favor. I. Actual Confusion Actual confusion is the “best evidence of a likelihood of confusion.” Viacom Int’l, 891 F.3d at 197 (quoting Elvis Presley Enters., 141 F.3d at 203–04). “Even if initial consumer confusion is quickly dispelled, this initial misunderstanding is evidence of confusion.” Id. “To show actual confusion, a plaintiff may rely on anecdotal instances of consumer confusion or consumer surveys.” Id. Importantly, “very little proof of actual confusion” is needed to establish a likelihood of confusion. Streamline, 851 F.3d at 457 (quoting Xtreme Lashes, 576 F.3d at 229). “Testimony of a single known incident of actual confusion by a consumer has been found to be sufficient evidence to support the district court’s finding of actual confusion.” Id. (citing La. World Exposition v. Logue, 746 F.2d 1033, 1041 (5th Cir. 1984)). “However, not all confusion counts: evidence of actual confusion must show
more than a fleeting mix-up of names; rather it must show that the confusion was caused by the trademarks employed and it swayed consumer purchases.” Id. (internal quotations omitted and alterations incorporated) (quoting Xtreme Lashes, 576 F.3d at 230). To state the matter simply: Plaintiff failed to meet its burden of showing any meaningful actual confusion. Plaintiff provides only two instances of confusion. First, Plaintiff shows texts from a Chicago real-estate developer who texted one of Plaintiff’s corporate executives that he found the shared name “CONFUSING.” (Text, Dkt. 30-2, at 19). Second, Plaintiff provides one Yelp review of Defendant’s restaurant from “Quin T.” who gave Summer House on Music Lane 3 out of 5 stars, who said she was “miffed” when she realized the restaurant was not affiliated with Summer House Santa Monica. (Yelp Review, Dkt. 30-1, at 15–16). This evidence is insufficient to carry Plaintiff’s burden at the summary judgment stage. Fifth Circuit cases illustrate that evidence of only de minimis confusion supports a finding that there is no
likelihood of confusion. See Soc’y of Fin. Examiners v. Nat’l Ass’n of Certified Fraud Examiners Inc., 41 F.3d 223, 228 (5th Cir. 1995) (12 instances of actual confusion over five years “refutes the likelihood of confusion”); Oreck Corp., 803 F.2d at 170 (no instances of actual confusion over 17 months “highly significant” in establishing that confusion is unlikely). Numerous other circuits have likewise declined to find infringement where the instances of actual confusion were extremely limited. See Hornady Mfg. Co., Inc. v. Doubletap, Inc., 746 F.3d 995 (10th Cir. 2014) (finding only de minimis confusion where there was a handful of instances over ten years); George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 398–400 (4th Cir. 2009) (handful of instances were de minimis); Savin Corp. v. Savin Group, 391 F.3d 439, 459 (2d Cir. 2004) (“A single anecdote of confusion over the entire course of competition, however, constitutes de minimis evidence insufficient to raise triable issues.”); Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 298–99 (3d Cir. 2001) (affirming district court’s finding that 20 instances of confusion over 7 years was de minimis).
Moreover, Plaintiff’s single instance of consumer confusion must be considered within the context of the restaurant industry. See George & Co., 575 F.3d at 398 (“Evidence of the number of instances of actual confusion must be placed against the background of the number of opportunities for confusion before one can make an informed decision as to the weight to be given the evidence.”) (quoting “Weight of the Evidence”, 4 McCarthy on Trademarks and Unfair Competition § 23:14 (5th ed.)). Both restaurants have dozens—if not hundreds—of consumers every day. And each has hundreds of reviews across online sites like Yelp. Since Summer House on Music Lane opened in 2020, there is only one known incidence of consumer confusion in restaurants with tens of thousands of customers in an industry that is particularly likely to leave online reviews. This evidence is de minimis. While the Fifth Circuit has held that evidence of actual confusion is not always necessary, it has also suggested that actual confusion can be necessary when the other digits weigh strongly in
favor of the defendant. Streamline, 851 F.3d at 457; Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc., 725 F.2d 336, 347–48 (5th Cir. 1984). On nearly every digit with probative value, Defendant has shown that there is no likelihood of confusion. The mark is commercially weak. It lacks recognition in Texas. The marks look different. There is no evidence of bad faith. Most crucially, the marks have entirely different consumer bases. In short, there is no reason to suspect any consumer confusion between the marks. Under Falcon Rice, Plaintiff should have provided some evidence of actual confusion. It failed to meet its burden to create a genuine issue of material fact. As a result, summary judgment is proper. IV. CONCLUSION The likehhood of confusion is ordinarily a question of fact. Elvis Presley Enters., Inc, 141 F.3d at 196. Still, summary judgment is proper if the “record compels the conclusion that a movant 1s entitled to judgment as a matter of law.” Smack Apparel, 550 F.3d at 474. If a reasonable juror could not find that confusion 1s probable, then a court may grant summary judgment. Xéreme Lashes, 576 F.3d at 226. ‘Three factors compel the Court to grant summary judgment: (1) “Summer House” is a commercially weak mark with widespread third-party use, (2) there is no evidence of consumer overlap, and (3) there 1s de minimis evidence of actual confusion. See Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010) (affirming summary judgment where two restaurants had substantial geographic separation and minimal actual confusion). In light of these factors, a reasonable jury could not find a likelihood of confusion. Accordingly, Defendant is entitled to summary judgment. For these reasons, Defendant’s Motion for Summary Judgment, (Dkt. 30), is GRANTED. The Court shall enter final judgment in a separate order. SIGNED on April 6, 2023.
Ceo ROBERT PITMAN UNITED STATES DISTRICT JUDGE