US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC

121 F.4th 339
CourtCourt of Appeals for the First Circuit
DecidedNovember 15, 2024
Docket23-2000
StatusPublished
Cited by4 cases

This text of 121 F.4th 339 (US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC) is published on Counsel Stack Legal Research, covering Court of Appeals for the First Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC, 121 F.4th 339 (1st Cir. 2024).

Opinion

United States Court of Appeals For the First Circuit

No. 23-2000

US GHOST ADVENTURES, LLC,

Plaintiff, Appellant,

v.

MISS LIZZIE'S COFFEE LLC and JOSEPH PEREIRA, Individually,

Defendants, Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Leo T. Sorokin, U.S. District Judge]

Before

Barron, Chief Judge, Selya and Gelpí, Circuit Judges.

Christoper D. Strang, Strang, Scott & Giroux, LLP, Pietro Sanitate, Timothy Bechen, Woods Rogers Vandeventer Black PLC, Genesis Guzman, Michael P. Mullins, and Day Pitney LLP on brief for appellant. Joseph Pereira, pro se, on brief for appellee Joseph Pereira. Matthew J. Ginsburg, Ascendant Law Group LLC, Daniel J. Larson, and Larson Law LLC for appellee Miss Lizzie's Coffee LLC.

November 15, 2024 SELYA, Circuit Judge. The Lizzie Borden House is located

in Fall River, Massachusetts. It bears a storied history that

originates with the still-unsolved murders — in 1892 — of Lizzie

Borden's father and stepmother. Prosecutors alleged that Borden

hacked her parents to death with a hatchet in their family home.1

But these allegations were never proven: in the ensuing "trial of

the century," a jury acquitted Lizzie of all charges. This macabre

tale not only has permeated the national consciousness but also

has turned Borden's ancestral home into a destination for those

with a taste for the supernatural. It is against this grizzly

backdrop that the case at hand arises.

I

We briefly rehearse the relevant facts and travel of the

case. We glean the facts from the district court's findings and

the record below. See Waldron v. George Weston Bakeries Inc., 570

F.3d 5, 7 (1st Cir. 2009).

A

US Ghost Adventures, LLC (Ghost Adventures) provides

ghost tours and related hospitality services across the United

States. The firm owns a bed and breakfast that is operated out of

1 These allegations gave rise to a bloody bit of doggerel that has gained increasing notoriety with the passage of time: "Lizzie Borden took an axe / And gave her mother forty whacks; / And when she saw what she had done / She gave her father forty-one." Lizzie Borden, Britannica (Sept. 20, 2024), https://www.britannica.com/ biography/Lizzie-Borden-American-murder-suspect.

- 2 - the Lizzie Borden House in Fall River. This venue features a

museum, so-called "ghost tours," and kindred activities. The

commercial success of the business depends in large part on the

Lizzie Borden name and lore. To this end, Ghost Adventures owns

an incontestable federal trademark on both the name "Lizzie Borden"

as used in hotel and restaurant services and on a realistic hatchet

logo displaying a notched blade, which hearkens back to the

implement that allegedly killed Borden's parents.2

Miss Lizzie's Coffee LLC (Miss Lizzie's) recently opened

a coffee shop next door to the Lizzie Borden House.3 It, too,

markets itself by reference to the Lizzie Borden saga. Its

storefront signage displays the words "Miss Lizzie's Coffee"

between a cup of coffee and a stylized hatchet spewing blood. A

second sign, with similar accoutrements, advertises Miss Lizzie's

as "The Most Haunted Coffee Shop in the World!" The hatchets on

both signs include handles and dramatic blood splatters.

2 If a registered trademark has been consistently used for five consecutive years from the date of federal registration and complies with other statutory formalities, it becomes "incontestable" (that is, impervious to certain challenges to its use). See 15 U.S.C. § 1065; Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117 & n.3 (1st Cir. 2006). It is undisputed that Ghost Adventures' trademarks satisfy this definition. 3 The other named defendant, Joseph Pereira, owns Miss Lizzie's. For ease in exposition, we refer to the defendants collectively as "Miss Lizzie's."

- 3 - Since Miss Lizzie's opened, some visitors have

incorrectly assumed that the Lizzie Borden House and Miss Lizzie's

are affiliated. Seven Ghost Adventures employees attested by

declaration that various customers have either expressed the

belief that the establishments were related or inquired whether

such a relationship existed. One tour guide explained that guests

were frustrated to learn that they could not bring Miss Lizzie's

coffee on their tours of the Lizzie Borden House, having bought

the coffee under the erroneous impression that the coffee shop was

affiliated with the historical site. Another visitor separately

attested to his belief that the businesses were affiliated. And

Ghost Adventures' director of operations recounted that a Fall

River city official had telephoned the company to discuss its "new

business in the building next door named Miss Lizzie's."

B

On September 18, 2023, Ghost Adventures sued Miss

Lizzie's in the federal district court for, inter alia, trademark

infringement and unfair competition. See US Ghost Adventures, LLC

v. Miss Lizzie's Coffee LLC, No. 23-12116, 2023 WL 8367730, at *1

(D. Mass. Oct. 27, 2023). Hot on the heels of the commencement of

suit, Ghost Adventures moved for a temporary restraining order

and/or preliminary injunction based on its trademark infringement

claim. See id.; see also Fed. R. Civ. P. 65(a), (b). It sought

to enjoin Miss Lizzie's from using either the "Lizzie Borden"

- 4 - trademark or the hatchet logo in the coffee shop's trade names,

trade dress, and marketing materials. See Ghost Adventures, 2023

WL 8367730, at *1. Miss Lizzie's objected, asserting that it had

not infringed either trademark.

The district court heard Ghost Adventures' motion for

preliminary injunction on the papers. See id. Applying the

customary four-part test, the court held that Ghost Adventures had

failed to show a likelihood of success on the merits. See id.

The court explained that "the key element in any infringement

action is likelihood of confusion." Id.; see Pignons S. A. de

Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 486-87

(1st Cir. 1981). Specifically, "the alleged infringement must

create 'a likelihood of confounding an appreciable number of

reasonably prudent purchasers exercising ordinary care.'" Ghost

Adventures, 2023 WL 8367730, at *1 (quoting Bos. Duck Tours, LP v.

Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008)). The court

further explained that "Ghost Adventures must demonstrate that

Miss Lizzie's 'used an imitation of its protected mark in commerce

in a way that is likely to cause confusion, or to cause mistake,

or to deceive.'" Id. (quoting Swarovski Aktiengesellschaft v.

Bldg. No. 19, Inc., 704 F.3d 44, 48-49 (1st Cir. 2013) (internal

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
121 F.4th 339, Counsel Stack Legal Research, https://law.counselstack.com/opinion/us-ghost-adventures-llc-v-miss-lizzies-coffee-llc-ca1-2024.