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The Row, Inc. v. Rooke, LLC

United States District Court, M.D. Tennessee, Nashville Division

December 19, 2017

THE ROW, INC. Plaintiff,
v.
ROOKE, LLC, Defendant.

          MEMORANDUM OPINION

          WAVERLY D. CRENSHAW, JR., CHIEF UNITED STATES DISTRICT JUDGE

         Pending before the Court in this trademark infringement action is Rooke, LLC's (“Rooke”) Motion for Summary Judgment (Doc. No. 39), to which The Row, Inc. (“The Row”) has responded in opposition (Doc. No. 46), and Rooke has replied (Doc. No. 53). For the reasons that follow, the Motion will be granted and judgment will entered in favor of Rooke.

         I. Factual Background

         The Statement of Undisputed Material Facts, Additional Statement of Facts, and Responses thereto (Doc. Nos. 41, 48 & 54) reveal the following facts:

         Rooke owns and operates a chain of restaurants called “Dierks Bentley's Whiskey Row” (“Whiskey Row”). Prior to the date on which the first “Whiskey Row” restaurant opened for formal business, Rooke advertised and promoted the restaurant name in commerce in connection with the offering of bar and restaurant services. (Doc. No. 41 at 1).

         Rooke filed its application for federal trademark registration of the word mark “Whiskey Row” on September 21, 2011, and submitted to the United States Patent and Trademark Office (“USPTO”) a specimen identifying Rooke's use of the mark in commerce through advertisement and promotion of Rooke's restaurant and bar services. Subsequently, the USPTO issued a certificate of registration. (Id. at 2). The trademark registration is for the words “Whiskey Row” in standard font. Typically, Rooke displays the mark and advertises its restaurant as “Dierks Bentley's Whiskey Row.” (Id.).

         On November 29, 2012, The Row filed an application on an “intent-to-use” basis for a design mark consisting of the words “Genuine Food and Drink The Row Kitchen and Pub.” The USPTO granted Plaintiff's trademark application and registered its mark on the principal register. That registration is for a colored design logo. The Row was not awarded a trademark registration for the singular word “row.” (Id. at 3).

         Up until the last paragraph, The Row agrees with Rooke's recitation of the facts. It adds, however, that while Rooke represented to the USPTO that its Whiskey Row mark was first used in commerce on September 15, 2011, the first Whiskey Row restaurant did not open until July 4, 2013 in Scottsdale, Arizona. (Doc. No. 48 at 5). In fact, in a December 19, 2011 response to an Office Action by the USPTO, Rooke submitted a specimen described as a “website image of mark for services” and verified that “[t]he Applicant is using the mark in commerce, . . . in connection with the identified . . . services” and that the specimen “was . . . in use in commerce at least as early as the filing date of the application.” (Id. at 6). That specimen also contained an address and the notation “COMING SOON.” (Id. at 8). In a second response dated December 29, 2011, to the same Office Action, Rooke again stated that the mark was being used in commerce, but the notation “COMING SOON” was deleted. (Id.).

         As for its own mark, The Row contends that “[t]he literal element of the mark The Row applied to register consisted of ‘Genuine Food and Drink The Row Kitchen & Pub' and the word THE in stylized cursive red letters with gold borders and the word ROW in capital block red letters with gold borders and red shading, bordered on the top with the words GENUINE FOOD AND DRINK in dark red block capital letters with gold borders and on the bottom with the words KITCHEN & PUB in red block capital letters with gold borders. with gold borders.” (Id. at 3). It also points to registration number 4, 511, 836 issued to The Row by the USPTO for the following:

THE COLOR(S) RED AND GOLD IS/ARE CLAIMED AS A FEATURE OF THE MARK. THE MARK CONSISTS OF THE WORD “THE” IN STYLIZED CURSIVE RED LETTERS WITH GOLD BORDERS AND THE WORD “ROW” IN CAPITAL BLOCK RED LETTERS WITH GOLD BORDERS AND RED SHADING, BORDERED ON THE TOP WITH THE WORDS “GENUINE FOOD AND DRINK” IN DARK RED BLOCK CAPITAL LETTERS WITH GOLD BORDERS AND ON THE BOTTOM WITH THE WORDS “KITCHEN & PUB” IN RED BLOCK CAPITAL LETTERS WITH GOLD BORDERS.

(Id. at 13).

         The Row opened its restaurant under the named Genuine Food and Drink - The Row - Kitchen and Pub on Lyle Avenue in Nashville, Tennessee on March 9, 2013. Since then, The Row, Inc. has earned more than $16, 000, 000 from the sale of over 850, 000 meals. In addition to locals and tourists, customers have come from all 50 states and 15 foreign countries. (Id. at 12). The Row also claims that its restaurant has been reviewed on the Trip Advisor website by more than 2, 300 patrons, and it is ranked within the top two percent of Nashville restaurants[1] rated on that site. The Row claims to have a presence not only on Trip Advisor, but also on internet sites such as Open Table, Yelp, Facebook, Four Square, Urban Spoon and Twitter. (Id. at 11).

         In addition to its restaurant and catering business, The Row sells a wide range of merchandise containing its mark, ranging from t-shirts to koozies to beer glass to wristbands. That merchandise is sold both at the restaurant and online through The Row's website.

         The Row's mark has also been used in magazine advertisements and dining guides, as well as on gift cards, concierge cards, and the like. The mark has also been used in marketing directed at local and regional residents, as well as tourists. It has also been used in advertisements and promotions on cable television and radio stations.

         Although The Row presently has only the restaurant in Nashville, it claims to be “studying plans to advertise, promote, market, display, distribute, offer for sale and sell its services in Huntsville, Alabama; Atlanta, Georgia; Austin, Texas and Gatlinburg, Tennessee.” (Id. at 7). It is also studying the possibility of advertising in a regionally distributed magazine available on Southwest Air routes to and from Nashville, Boston, New York and Chicago.

         II. Summary Judgment Standards

         The standards governing summary judgment have been set forth in countless opinions and should be well understood. For present purposes, it suffices to note: (1) summary judgment is only appropriate where there is no genuine issue as to any material fact and the movant is entitled to judgment as a matter of law, Fed.R.Civ.P. 56(a); (2) the facts and inferences must be construed in favor of the nonmoving party, Van Gorder v. Grand Trunk W. R.R., Inc., 509 F.3d 265, 268 (6th Cir. 2007); (3) the Court does not weigh the evidence, or judge the credibility of witnesses when ruling on the motion, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986); and (4) the mere existence of a scintilla of evidence in support of the nonmoving party's position is insufficient to survive summary judgment, Rodgers v. Banks, 344 F.3d 587, 595 (6th Cir. 2003).

         III. Application of Law

         The Row alleges that Rooke infringed on its trademark in violation of the Lanham Act, 15 U.S.C. § 1114(b). It also requests that the Whiskey Row mark be cancelled as provided for in 15 U.S.C. § 1119. Prior to reaching the substance of those claims, the Court addresses a preliminary matter raised by the parties.

         A. Senior or Junior Mark

         The parties dispute which among them holds the senior mark and is therefore entitled to a presumption of validity. Under the Lanham Act, “[a] certificate of registration of a mark upon the principal register . . . shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” 15 U.S.C. § 1057(b). Although a certificate is not dispositive and validity must be shown, “federal registration . . . entitles the [holder] to a ‘strong presumption' that the mark is a protectable mark.” Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). In other words, “[r]egistration of a mark on the Principal Register of the USPTO creates a rebuttable presumption that a trademark is valid, that is, either inherently distinctive or descriptive with secondary meaning, and therefore, protectable under federal trademark law.” Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513 (6th Cir. 2007).

         The Row argues that the presumption based on registration should not apply in this case and that it should be deemed the senior user. This is because The Row opened its restaurant first, and Rooke misrepresented in both its verified application and in responses to an Office Action from the USPTO that the mark was being used in commerce in September 2011 when, in fact, the first Whiskey Row restaurant did not open until some 21 months after the application was filed. Rooke insists it is the senior user because Whiskey Row was registered first, and argues “that it defies citation to authority” for the “so basic principle” that “a junior trademark user and applicant cannot sue a senior user for infringement based on the senior user's own trademark.” (Doc. No. 53 at 2).

         “Traditionally, ownership of a trademark accrues when goods bearing the mark are sold, displayed for sale or otherwise publicly distributed.” Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 320 (3d Cir. 1999). Rooke argues this general rule is inapplicable because “[t]he Sixth Circuit has found that a genuine commercial transaction in connection with the rendering of services is only required when a trademark is not registered; otherwise, open use through advertising is sufficient to establish priority” (Doc. No. 53 at 3), and hence its advertising was sufficient to show use. It relies on Allard Ent. Inc. v. Advanced Programming Resources, Inc. 146 F.3d 350 (6th Cir. 1998) for this proposition.

         Rooke is correct that the Sixth Circuit in Allard stated that “in the absence of federal registration, prior ownership of a mark is only established as of the first actual use of a mark in a genuine commercial transaction.” Id. at 356. However, the court's concern in Allard was with both common law trademarks and trademarks under federal law. In fact, prior to making that statement, the Sixth Circuit noted that the Lanham Act was amended in 1988 and “redefined the term ‘use in commerce' as ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a mark.'” Id. at 357 (quoting 15 U.S.C. § 1127). The amended Act goes on to provide that, with respect to services, “a mark shall be deemed in use in commerce . . . when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” 15 U.S.C.A. § 1127.

         Here, The Row has agreed to Rooke's Statement of Fact that “[p]rior to the date on which the first ‘Whiskey Row' restaurant opened for formal business, Rooke advertised and promoted the restaurant name in commerce in connection with the offering of bar and restaurant services.” (Doc. No. 47 at 1-2). This admission, however, hardly establishes that the advertising was “open and notorious” as Rooke claims, let alone the extent of the advertisement and promotion, or when that advertising and promotion began for purposes of determining whether Whiskey Row was “in use.”

         Ultimately, resolution of this issue does not matter because even if The Row is deemed the senior user, it has not established trademark infringement. And, because The Row cannot show trademark infringement, it lacks standing to seek cancellation of the Whiskey Row mark.

         B. ...


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