In Wild Willy’s Holding Company, Inc. v. Palladino, 2006 WL 3423765 (D.Me.), the U.S. District Court for the District of Maine refused a plaintiff’s motion for injunctive relief in a trademark infringement case due to a lack of evidence of a likelihood of confusion.
The plaintiff operated Wild Willy’s Burgers as a family-style restaurant since 2001 inYorkMaine, and obtained federal registration of “Wild Willy’s Burgers” in 2003. The defendant operated Wild Willy’s Aleroom at the Shed, a bar and lounge. Plaintiff notified defendant of the trademark and requested that defendant cease using the name.
In assessing the likelihood of success on the merits, requisite for injunctive relief, the District court applied a Lanham analysis to determine the likelihood of confusion by defendant’s use of the same or similar mark as plaintiff. The court utilized the “Frisch factors.” The eight Frisch factors set forth in Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648, 214 USPQ 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982) are (1) strength of the plaintiff’s mark, (2) relatedness of the goods or services, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) likely degree of purchaser care, (7) the defendant’s intent in selecting its mark, and (8) likelihood of expansion of the product lines.
In evaluating factor (3), the District Court held that the similarity of the marks is tested on sound, sight, and meaning. Other than one occasion of mistaken and unauthorized use of similar font type by defendant, the court noted no similarity between plaintiff’s advertising and defendant’s. However, the District Court found that there was identity in the sound of the respective names used and this similarity favored a finding of likelihood of confusion based upon factor (3).
With regard to similarity of goods (factor (2)), the District Court stated that there was a significant difference in plaintiff’s family-style restaurant and defendant’s bar/lounge, respecting menu options and bar attractions (darts, pool tables, etc.). Further, this difference in business approach (demographics) led the District Court to determine that there would be only a small chance of customer overlap between the two establishments. Thus, factor (2) favored the defendants.
There was no record of advertising channels/methods used by either party (factor (5), thus no indication of confusion was present based on those elements. However, the Court did find that the strength of mark (factor (1))favored the plaintiff given Williams’ licensing of the trademark (two other “Willy’s” had opened inNew HampshireandMassachusetts), restaurant success and critical praise from restaurant critics.
Ultimately, the fatal blow to plaintiff’s case came from absence of evidence of actual confusion (factor (4)). Plaintiff tried to cite several e-mails from unidentified parties claiming confusion over defendant’s advertising. The District Court did not allow these emails into evidence due to hearsay concerns. As there was insufficient evidence of actual confusion and since factor (2) favored the defendant, the District Court determined that the plaintiff had little chance of success on the merits, and denied the plaintiff’s motion for preliminary injunctive relief.