United States District Court, M.D. Florida, Tampa Division
S. MOODY, JR., UNITED STATES DISTRICT JUDGE
CAUSE comes before the Court upon Defendant's Motion for
Summary Judgment (Dkt. 28), Plaintiff's Response in
Opposition (Dkt. 43), and Defendant's Reply (Dkt. 48).
Upon review of the motion, response, reply, record evidence,
and being otherwise advised in the premises, the Court
concludes that Defendant's motion for summary judgment
should be granted on all of Plaintiff's
a trademark infringement action between two casual dining
restaurants. Specifically, Plaintiff Phelan Holdings, Inc.
alleges that Defendant RARE Hospitality Management,
Inc.'s use of the slogan “You Can't Fake
Steak” in its advertising for its LongHorn Steakhouse
restaurant chain is confusingly similar to Phelan's
Pinchers Crab Shack's restaurant's slogan “You
Can't Fake Fresh, ” to the extent that customer
confusion regarding the source, sponsorship, or origin of the
parties' restaurants is likely to occur. The relevant
undisputed facts follow.
Phelan Holdings, Inc., a family-owned company, owns and
operates Pinchers Crab Shack, a chain of twelve casual
seafood restaurants located in Southwest Florida. Pinchers
Crab Shack's style and ambiance were designed to look
like “an old seafood shack you'd find resting along
the Gulf coast.” Pinchers Crab Shacks are bright, open
air restaurants, painted in pastel colors. The walls are
adorned with beachy, Florida-themed decorations, such as
driftwood signs, mounted fish, large oars, and Caribbean
name suggests, Pinchers Crab Shacks are known as seafood
restaurants. Approximately 70% of the food available on its
menu is seafood, and its advertising focuses on its seafood
offerings. The Pinchers Crab Shack chain is
“obsessed” with the freshness of its seafood,
and, in furtherance of that objective, Phelan obtained an
ownership interest in fish purveyor Island Crab Company to
supply fresh seafood to its restaurants. Phelan also operates
a farm in Florida that supplies fresh vegetables to its
2004, Phelan developed the advertising slogan “You
Can't Fake Fresh” to make clear to consumers that
the focus of Pinchers Crab Shacks is on the freshness of its
food. Phelan registered the “You Can't Fake
Fresh” mark with the United States Patent and Trademark
Office (USPTO) on February 16, 2010.
Crab Shack uses its “You Can't Fake Fresh”
slogan in approximately 90% of its advertising, which
consists primarily of billboards, print media, such as hotel
pamphlets and newspapers, and online through Pinchers Crab
Shack's website and social media outlets. Pinchers also
advertises on television and on the radio in Southwest
Florida, but to a much lesser extent. In every advertisement
that uses the “You Can't Fake Fresh” slogan,
the Pinchers Crab Shack name is also prominently displayed
and/or mentioned. Pinchers Crab Shack's customers are
mostly tourists to the Southwest Florida region.
Steakhouse restaurants are a chain of Western-themed casual
steakhouse restaurants owned and operated by Defendant RARE
Hospitality Management, Inc., an Orlando-based subsidiary of
Darden Restaurants, Inc. The first LongHorn Steakhouse opened
in 1981 in Atlanta, Georgia, and currently there are over 481
LongHorn Steakhouse restaurants located in 41 states.
LongHorn Steakhouses are typically large, stand-alone
restaurants located in suburban areas, and patronized most
frequently by locals.
first LongHorn was designed as a Texas-style roadhouse. The
atmosphere was relaxed: peanuts were provided at each table,
and typically peanut shells were thrown on the floor. As the
LongHorn brand began to expand, RARE decided to transition
its image from that of a “roadhouse” to that of a
steakhouse with the look and feel of a rancher's home. In
that regard, LongHorn Steakhouses are designed using dark,
warm colors, and “cowboy” art such as mounted
skulls, spurs, and paintings of Western scenes. Its menu is
still heavily focused on its steak offerings, which account
for roughly 60-65% of its food sales. LongHorn
Steakhouse's primary competitors are other casual
steakhouses, with Texas Roadhouse and Outback Steakhouse
being the chain's biggest competition.
2012, RARE started working with Grey Advertising to develop a
new, bold marketing campaign for the brand. In those
meetings, Grey first presented the slogan “You
Can't Fake Bold, ” but through collaborative
discussions RARE and Grey coined the slogan “You
Can't Fake Steak, ” which was chosen as the new
advertising campaign to portray the brand's bold
attitude. Thereafter in 2012, RARE started using the slogan
“You Can't Fake Steak” to promote its
LongHorn Steakhouse restaurants. RARE submitted an
application with the USPTO to federally register this mark on
May 3, 2015, and was granted federal registration for the
mark on August 4, 2015. LongHorn Steakhouse's “You
Can't Fake Steak” mark is used primarily in
television commercials, but also appears on the company's
website, social media posts, gift cards, coupons, and
occasionally on billboards. In all of the advertisements that
use the slogan “You Can't Fake Steak, ” the
“LongHorn” name is also prominently displayed.
October 1, 2015, Phelan filed the instant lawsuit against
RARE, asserting claims for: (1) Federal trademark
infringement/unfair competition/false designation of
origin/false description of fact; (2) trademark
infringement/unfair competition/false designation of
origin/false representation under Florida law; (3) violation
of the FDUTPA; (4) injury to business reputation and dilution
under Florida law; and (5) cancellation of RARE's
federally registered trademark for “You Can't Fake
Steak.” The record is undisputed that there is no
actual evidence of a consumer being confused by RARE's
use of “You Can't Fake Steak” to promote its
LongHorn Steakhouses in light of Phelan's use of
“You Can't Fake Fresh” to promote its
Pinchers Crab Shacks. And the Court notes the USPTO found
that the parties' marks were sufficiently dissimilar such
that RARE's “You Can't Fake Steak” mark
was granted a federal trademark registration even though
Phelan's “You Can't Fake Fresh” mark was
already federally registered.
now moves for summary judgment on all of Phelan's
infringement claims, asserting that the record is devoid of
any evidence of a likelihood of consumer confusion. With
respect to Phelan's dilution claim, RARE contends that
the record is bereft of any credible evidence that
Plaintiff's “You Can't Fake Fresh” mark
has achieved the level of notoriety necessary to sustain its
dilution claim. The Court now turns to the relevant law.
for summary judgment should be granted only when the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, show there
is no genuine issue as to any material fact and that the
moving party is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477
U.S. 317, 322 (1986). The existence of some factual disputes
between the litigants will not defeat an otherwise properly
supported summary judgment motion; “the requirement is
that there be no genuine issue of material
fact.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986) (emphasis in
original). The substantive law applicable to the claimed
causes of action will identify which facts are material.
Id. Throughout this analysis, the court must examine
the evidence in the light most favorable to the non-movant
and draw all justifiable inferences in its favor.
Id. at 255.
party properly makes a summary judgment motion by
demonstrating the absence of a genuine issue of material
fact, whether or not accompanied by affidavits, the nonmoving
party must go beyond the pleadings through the use of
affidavits, depositions, answers to interrogatories and
admissions on file, and designate specific facts showing that
there is a genuine issue for trial. Celotex, 477
U.S. at 324. The evidence must be significantly probative to
support the claims. Anderson, 477 U.S. at 248-49
Court may not decide a genuine factual dispute at the summary
judgment stage. Fernandez v. Bankers Nat'l Life Ins.
Co., 906 F.2d 559, 564 (11th Cir. 1990). “[I]f
factual issues are present, the Court must deny the motion
and proceed to trial.” Warrior Tombigbee Transp.
Co. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir.
1983). A dispute about a material fact is genuine and summary
judgment is inappropriate if the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party. Anderson, 477 U.S. at 248; Hoffman v.
Allied Corp., 912 F.2d 1379 (11th Cir. 1990). However,
there must exist a conflict in substantial evidence to pose a
jury question. Verbraeken v. Westinghouse Elec.
Corp., 881 F.2d 1041, 1045 (11th Cir. 1989).
Phelan's Trademark Infringement Claims
response to RARE's summary judgment motion reflects that
Phelan is dropping or abandoning any forward confusion claim
and is asserting its trademark infringement claims solely
under a theory of reverse confusion. As ...