A generic post about trademark overclaiming

Miller’s Ale House, Inc. v. DCCM Restaurant Group, LLC, 2016
WL 1040005, No: 6:15-cv-1109-Orl-22TBS (M.D. Fla. Mar. 16, 2016)
 
Miller sued DCCM for false designation of origin/unfair
competition under state and federal law. Miller’s operates approximately
seventy sports bar restaurants throughout Florida and the United States, using
a similar, but not always identical, sign on each. “Sometimes the sign appears
with the name Miller’s in italics preceding a geographical prefix and followed
by the phrase ‘ale house;’ and other times the sign omits “Miller’s” and
contains only a geographical prefix and ‘ale house.’” Thus: “Miller’s ORLANDO
ALE HOUSE,” or “ORLANDO ALE HOUSE,” generally but not always in red letters and
not always in italics.
 
DCCM’s sports bar restaurant, located in Davenport, Florida,
is called Davenport’s Ale House, with a sign comprised of Davenport’s in
italics preceding the phrase “ale house.” Miller’s argued that the relevant public,
central Florida, associated an italicized word followed by ALE HOUSE with
Miller’s restaurants, regardless of the nature of the italicized word.
 
In  Ale House Mgmt,
Inc. v. Raleigh Ale House, Inc., 205 F.3d 137 (4th Cir. 2000), the Fourth
Circuit concluded that Miller’s predecessor had no protectable interest in the
phrase “ale house” because they are generic words. In Miller’s Ale House, Inc.
v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359 (S.D. Fla. 2010), the
court found that issue preclusion barred Miller’s claim based on “[geographic
prefix] ALE HOUSE” because the Fourth Circuit had already determined that “ale
house” is generic, and Miller’s had failed to present evidence showing that it
had “recaptured” the generic term “ale house.” The Eleventh Circuit affirmed,
emphasizing that “Miller’s still has no protectable interest in the words ‘ale
house,’ ” nor any protectable trade dress in red letters on an outside
sign.  Miller’s Ale House, Inc. v.
Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th Cir. 2012).
 
Here, Miller argued that it wasn’t relitigating its
trademark claims, but rather seeking protection against misuse of a generic
term under the head of unfair competition. 
(Now-Justice Ginsburg said this kind of claim was ok in Blinded American Veterans, but the judge
here pointed out that Eleventh Circuit precedent controls.)  DCCM pointed out that this looked a lot like
the prior litigation, and noted that Miller’s does not use italics consistently
on its buildings, nor do any of its signs italicize the geographical prefix.
 
Font style wasn’t raised in previous litigation and wasn’t
directly precluded, but summary judgment was warranted because of a lack of a
genuine issue of material fact. The magistrate judge reasoned that Miller’s
evidence, at most, could show confusion among consumers in central Florida, but
didn’t show that the general public, outside of just central Florida,
associated the font and style of the sign with Miller’s.
 
Adopting the magistrate’s recommendation, the district judge
reasoned that courts in the Eleventh Circuit treat trademark infringement and
false designation of origin identically, other than the presumptions afforded
by registration.  Knights Armament Co. v.
Optical Sys. Tech. Inc., 654 F.3d 1179 (11th Cir. 2011) (declining to consider
claims for unfair competition and false designation of origin under §43(a)(1)(A)
because the defendant did not have enforceable rights in a mark). Miller failed
to distinguish its claims from trademark infringement claims; the only
difference here from the previous Miller case was DCCM’s use of italics, but
Miller conceded that it only occasionally used italics in its signage and didn’t
do so for the geographical prefix. Thus, the false designation of origin claim
was premised on nearly identical allegations as the trademark infringement
claim, and Miller’s didn’t have enforceable rights in the relevant symbol.
 
Miller objected to the magistrate’s recommendation, arguing
that the appropriate geographical area for the likelihood of consumer confusion
element was central Florida, not nationwide. But without a mark in which there
were rights, that issue was irrelevant. 
The state law claims suffered the same fate.
 
Comment: I hope the court awards defendant its fees.  “Ale house” was born generic and there’s no
good reason to allow claims over it to persist, even if there is some policy
reason for holding out hope for formerly non-generic terms like SINGER for
sewing machines.  Right now, Miller seems
to believe that it’s worth harassing competing ale houses in the hope that it
can deter enough of them to make a better case for having claimed the
term.  The next suit will presumably be
over the size and shape of the outside sign, also not previously
litigated.  Miller would be better served
by focusing on building up a brand in MILLER’S ALE HOUSE, if it can.

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