Brennan's, Inc. v. Brennan's Restaurant, L.L.C., et al.

United States Court of Appeals, Second Circuit
360 F.3d 125 (2004)

ELI5:

Rule of Law:

A junior user's good faith use of their own common surname in a business name, especially when geographically remote from a senior trademark holder, is unlikely to create consumer confusion sufficient for a preliminary injunction if the mark's strength has not been established in the junior user's market.

Facts:

Since 1946, Brennan's, Inc. has owned and operated a renowned restaurant named 'Brennan's' in New Orleans, Louisiana.
Brennan's, Inc. holds a valid, registered federal trademark for the name 'Brennan's' for its restaurant services.
Terrance Brennan, a well-known chef with an established reputation in New York City, decided to open a new upscale restaurant in Manhattan.
Terrance Brennan initially named his new restaurant 'Brennan's Seafood & Chop House'.
After receiving a cease-and-desist letter from Brennan's, Inc., he changed the restaurant's name to 'Terrance Brennan's Seafood & Chop House'.
The two restaurants are located more than 1,000 miles apart from each other.

Procedural Posture:

Brennan's, Inc. (plaintiff) sued Brennan's Restaurant, LLC (defendant) in the U.S. District Court for the Southern District of New York for trademark infringement.
Plaintiff moved for a preliminary injunction to prevent the defendant from using the 'Brennan's' name.
After a two-day hearing, the district court denied the plaintiff's motion for a preliminary injunction.
Brennan's, Inc. (appellant) appealed the denial of the preliminary injunction to the U.S. Court of Appeals for the Second Circuit.

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Issue:

Does the use of the name 'Terrance Brennan's Seafood & Chop House' for a New York restaurant create a likelihood of consumer confusion with the registered trademark 'Brennan's,' held by a well-known New Orleans restaurant, sufficient to warrant a preliminary injunction for trademark infringement?

Opinions:

Majority - Cardamone, J.

No. The use of 'Terrance Brennan's Seafood & Chop House' does not create a likelihood of confusion sufficient to warrant a preliminary injunction. To prevail, a plaintiff must demonstrate a likelihood of consumer confusion, which is evaluated using the multi-factor Polaroid test. Here, several key factors weigh against finding a likelihood of confusion. The plaintiff's mark, based on the common surname 'Brennan,' is inherently weak and has not been shown to have acquired distinctiveness in the relevant New York City market. The defendant's addition of his first name, 'Terrance,' significantly reduces the marks' similarity, especially since he is a known chef in New York. Crucially, the substantial geographic remoteness of over 1,000 miles between the single-location restaurants makes it unlikely they compete for the same customers. The court also noted the sophistication of high-end restaurant patrons, the defendant's good faith, and the lack of evidence of actual confusion.

Analysis:

This decision clarifies the limitations on protecting trademarks based on common personal names, especially against geographically remote, good faith junior users who share the name. It emphasizes that a mark's strength, a key factor in the confusion analysis, is not absolute but must be proven within the relevant market where infringement is alleged. The case serves as a precedent that substantial geographic distance can be a powerful, if not dispositive, factor against finding a likelihood of confusion for businesses like single-location restaurants that require a customer's physical presence. This ruling reinforces the judicial reluctance to prevent an individual from using their own name in their business, balancing trademark protection with personal identity rights.

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