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Tana v. Dantanna's

Court of Appeals for the Eleventh Circuit
611 F.3d 767 (2010)
ELI5:

Rule of Law:

For a trademark infringement claim involving an unregistered, descriptive mark, the mark's strength and the likelihood of consumer confusion are evaluated within the defendant's specific geographic market. Geographic remoteness between two businesses with similar names is a highly relevant factor that weighs against a finding of a likelihood of confusion.


Facts:

  • In 1964, Plaintiff Dan Tana opened 'Dan Tana's', an Italian-themed restaurant, in West Hollywood, California.
  • Over several decades, Dan Tana's restaurant became a well-known establishment, attracting Hollywood celebrities and significant press coverage, primarily within the Los Angeles area.
  • In 2003, David Clapp, a principal of the Defendants, opened 'Dantanna's', an upscale sports restaurant with a 'surf and turf' theme, in Atlanta, Georgia.
  • Defendants claimed the name 'Dantanna's' was created by combining the names of Clapp's two children, Daniel and Anna.
  • Defendants applied for a federal trademark for 'Dantanna's' in June 2003 and obtained the registration in March 2005.
  • Plaintiff Dan Tana did not attempt to federally register the name 'Dan Tana's' until June 2005, forty-one years after opening his restaurant.
  • The Patent and Trademark Office (PTO) denied Tana's application due to the existing registration of the 'Dantanna's' mark.

Procedural Posture:

  • Plaintiff Dan Tana filed a Petition for Cancellation of Defendants' trademark with the Trademark Trial and Appeal Board.
  • Plaintiff subsequently filed a trademark infringement suit in the U.S. District Court for the Central District of California, which was dismissed for lack of personal jurisdiction.
  • Plaintiff then filed the present lawsuit in the U.S. District Court for the Northern District of Georgia.
  • Defendants moved for summary judgment on all counts.
  • The district court (trial court) granted summary judgment in favor of Defendants.
  • Plaintiff Dan Tana, as appellant, appealed the grant of summary judgment to the U.S. Court of Appeals for the Eleventh Circuit.

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Issue:

Does the use of the name 'Dantanna's' for an Atlanta restaurant infringe on the common-law trademark rights of the similarly named 'Dan Tana's' restaurant in Hollywood, California, by creating a likelihood of confusion among consumers?


Opinions:

Majority - Anderson, Circuit Judge

No. The use of the 'Dantanna's' mark in Atlanta does not infringe on the common-law rights of 'Dan Tana's' in Hollywood because there is no genuine issue of material fact regarding the likelihood of confusion between the two marks. Applying a seven-factor test, the court found that while the names are similar, the marks themselves, the goods and services offered, the customer bases, and the advertising methods are overwhelmingly dissimilar. Plaintiff's mark is descriptive (a personal name) and relatively weak outside of its home market of Los Angeles, as it lacks widespread secondary meaning in Atlanta. Furthermore, there was scant evidence of the defendant's intent to misappropriate the name and negligible evidence of actual consumer confusion. The court also held that the vast geographic distance between the restaurants is a particularly relevant factor that weighs heavily against a finding of likely confusion for an unregistered, common-law mark.



Analysis:

This decision reinforces the territorial limitations of unregistered, common-law trademark rights, emphasizing that a mark's fame in one region does not automatically confer nationwide protection. It clarifies that for descriptive marks, the 'secondary meaning' and 'likelihood of confusion' analyses must be focused on the defendant's specific market. The court's explicit recognition of geographic remoteness as a key, and sometimes dispositive, factor provides a clear framework for future disputes between businesses with similar names operating in distant, non-competing markets. The case serves as a strong reminder of the strategic importance of timely federal trademark registration for any business seeking to secure nationwide rights and prevent junior users from acquiring rights in other territories.

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