A few days ago, the court in the Middle District of Florida held that the company that designed the logo for the “Beef O’Brady” restaurant did not own the logo for promotional goods, as blogged here.
A few days later, the court also adopted the magistrate’s report and recommendation and granted a preliminary injunction against the T-shirt company’s continued sale of the promotional goods. On likelihood of confusion, the magistrate said:
|Moreover, FSC’s rights to the protected marks are not restricted to food and beverage service and seemingly extend to other areas, such as apparel and merchandise to promote its food and beverage franchises. “The protection afforded a trademark owner is not limited to the goods on which he is using the mark, but, rather extends to any goods on which the use of the offending mark is likely to cause confusion.”
. . . .
Particularly in the absence of any contrary showing, the plaintiff has demonstrated a likelihood of success on the merits. This conclusion is supported by decisions holding generally that when franchisees or licensees are terminated and continue using the previously authorized trademarks, they are guilty of trademark infringement.
The case also provides a few more details – the logo designer filed for bankruptcy during the proceedings and apparently has been a no-show since then. It didn’t oppose the motion for preliminary injunction or oppose the magistrate’s report. It also wasn’t exactly an upstanding citizen, continuing to sell shirts after the agreement was terminated but asked the buyers not to tell the restaurant. Likelihood of confusion isn’t so hard under those circumstances.
FSC Franchise Co. v. Express Corporate Apparel, LLC, No. 8:09-cv-454-T-23TGW, 2009 WL 3334138 (M.D. Fla. Oct. 2, 2009).
© 2009 Pamela Chestek