jury instructions firehouse restaurant group inc v. scurmont llc
TRANSCRIPT
8/4/2019 Jury Instructions Firehouse Restaurant Group Inc v. Scurmont LLC
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IN THE UNITED STATES DISTRICT COURT
DISTRICT OF SOUTH CAROLINA
FLORENCE DIVISION
Firehouse Restaurant Group, Inc., a Florida
corporation, Three Alarm Subs, Inc., a SouthCarolina corporation, and Fireside Restaurant
Company, Inc., a South Carolina corporation,
Plaintiffs,
vs.
Scurmont LLC, d/b/a Calli Baker’s Firehouse
Bar & Grill, and Heath Scurfield, an individual,
Defendants.
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Civil Action No. 4:09-cv-00618-RBH
JURY INSTRUCTIONS
Members of the jury, now that you have heard all the evidence and the arguments of the
lawyers, it is my duty to instruct you on the law that applies to this case. These instructions will
be in three parts: first, the instructions on general rules that define and control the jury's duties;
second, the instructions that state the rules of law you must apply, i.e., what the plaintiff must
prove to make the case; and third, some rules for your deliberations.
As I stated at the beginning of this case, the Plaintiffs in this case are Firehouse
Restaurant Group, Inc., the owner of the registered trademarks at issue and Three Alarm Subs,
Inc. and Fireside Restaurant Company, Inc., which are licensed franchisees of Firehouse
Restaurant Group, Inc. and which use the trademarks under contract in their local restaurant
businesses. I will refer to the Plaintiffs collectively as the Firehouse Subs Plaintiffs. The
Defendants Heath W. Scurfield and Scurmont, LLC own and operate Calli Baker's Firehouse Bar
& Grill. I will refer to the Defendants collectively as the Calli Baker's Firehouse Defendants.
Neither party in this case seeks monetary damages from the other. The issues in this case are
whether or not the Calli Baker's Firehouse Defendants have infringed Firehouse Restaurant
Group's trademarks, and whether Firehouse Restaurant Group obtained the registration for the
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trademark FIREHOUSE, Registration Number 3,173,030, through fraud on the U.S. Patent &
Trademark Office.
It is your duty to find the facts from all the evidence in the case. To those facts you must
apply the law as I give it to you. You are bound to accept the rules of law as I give them to you
whether you agree with them or not. And you must not be influenced by any personal likes or
dislikes, opinions, prejudices or sympathies. That means that you must decide the case solely on
the evidence before you and according to the law. You will recall that you took an oath
promising to do so at the beginning of the case.
Counsel for the parties have referred to some of the governing rules of law in their
arguments. If, however, any difference appears to you between the law as stated by counsel, and
the law as stated by the Court in the instructions, you are to be governed by the Court’s
instructions.
In following my instructions, you must follow all of them and not single out some and
ignore others; they are all equally important. And you must not read into these instructions or
into anything I may have said or done any suggestion as to what verdict you should return - that
is a matter entirely for you to decide.
You must perform your duties as jurors without bias or prejudice or sympathy as to either
party. The law does not permit you to be governed by sympathy, prejudice or public opinion. All
parties expect that you will carefully and impartially consider all the evidence, follow the law as
it is now being given to you, and reach a just verdict regardless of the consequences.
Evidence
The evidence from which you are to decide what the facts are consists of:
(1) the sworn testimony of witnesses, both on direct and cross-examination, regardless of
who called the witnesses;
(2) the exhibits which have been received into evidence; and
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(3) any facts to which all the lawyers have agreed to stipulate.
You are to consider only the evidence in the case. But in your consideration of the
evidence, you are not limited to the bald statements of the witnesses. In other words, you are not
limited solely to what you see and hear as the witnesses testify. You are permitted to draw, from
the facts which you find have been proved, such reasonable inference as seems justified in the
light of your experience. Inferences are deductions or conclusions which reason and common
sense lead the jury to draw from facts which have been established by the evidence in the case.
What Is Not Evidence
In reaching your verdict, you may consider only the testimony and exhibits received into
evidence. Certain things are not evidence, and you may not consider them in deciding what the
facts are. I will list these things for you:
(1) Arguments and statements by lawyers are not evidence. The lawyers are not witnesses. What
they have said in their opening statements, closing arguments, and at other times is intended to
help you interpret the evidence, but it is not evidence. If the facts as you remember them differ
from the way the lawyers have stated them, then your memory of them controls.
(2) Questions and objections by lawyers are not evidence. Attorneys have a duty to their clients
to object when they believe that a question is improper under the rules of evidence. You should
not be influenced by any of the objections or by my ruling on any of them. If I have sustained an
objection, you should disregard the question and answer. If I have overruled an objection, you
should treat the answer like any other.
(3) Testimony that has been excluded or stricken, or that you have been instructed to disregard,
is not evidence and must not be considered. In addition, if testimony or exhibits have been
received only for a limited purpose, you must follow the limiting instructions I have given.
(4) Anything you may have seen or heard when the court was not in session is not evidence. You
are to decide this case solely on the evidence received at the trial.
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Direct and Circumstantial Evidence
There are two kinds of evidence the law recognizes: direct and circumstantial. Direct
evidence is direct proof of a fact, such as testimony of an eyewitness. Circumstantial evidence is
indirect evidence, that is, proof of a chain of facts from which you could find that another fact
exists, even though it has not been proved directly. You are entitled to consider both kinds of
evidence. The law permits you to give equal weight to both, but it is for you to decide how much
weight to give to any of the evidence in this case.
It is for you to decide whether a fact has been proved by circumstantial evidence. In
making that decision, you must consider all the evidence in the light of reason, common sense,
and experience.
Credibility of Witnesses
In deciding what the facts are, you must consider all of the evidence. In doing this, you
must decide which testimony to believe and which testimony not to believe. You are the sole
judges of the credibility, or believability, of each witness. You must decide for yourselves
whether to believe the testimony of any witness. You may believe all or any part or nothing of
what a witness said while on the stand. In determining whether to believe any witness, you
should apply the same tests of truthfulness which you apply in your own everyday affairs. In
doing this, you may take into account a number of factors including the following:
(1) Was the witness able to see, or hear, or know the things about which that witness testified?
(2) How well was the witness able to recall and describe those things?
(3) What was the witness's manner while testifying?
(4) Did the witness have an interest in the outcome of this case or any bias or prejudice
concerning any party or any matter involved in the case?
(5) How reasonable was the witness's testimony considered in light of all the evidence in the
case?
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(6) Was the witness's testimony contradicted by what that witness has said or done at another
time, or by the testimony of other witnesses, or by other evidence?
You should carefully scrutinize all the testimony given, the circumstances under which each
witness has testified, and every matter in evidence which tends to show whether a witness is
worthy of belief. Consider each witness’s intelligence, motive, and state of mind, and demeanor
and manner while on the stand. Consider the witness’s ability to observe the matters as to which
he or she has testified, and whether the witness impresses you as having an accurate recollection
of these matters. Consider also any relation each witness may bear to either side of the case; the
manner in which each witness might be affected by the verdict; and the extent to which, if at all,
each witness is either supported or contradicted by other evidence in the case.
Inconsistencies or discrepancies in the testimony of a witness, or between the testimony
of different witnesses, may or may not cause the jury to discredit such testimony. Two or more
persons witnessing an incident or a transaction may see or hear it differently; and innocent
misrecollection, like failure of recollection, is not an uncommon experience. In weighing the
effect of a discrepancy, always consider whether it pertains to a matter of importance or an
unimportant detail, and whether the discrepancy results from innocent error or intentional
falsehood. These are some of the factors you may consider in deciding whether to believe
testimony.
You are not bound to decide any issue of fact in accordance with the testimony of any
number of witnesses which does not produce in your minds belief in the likelihood of truth, as
against the testimony of a lesser number of witnesses or other evidence which does produce such
belief in your minds.
The test is not which side brings the greater number of witnesses, or presents the greater
quantity of evidence; but which witness, and which evidence, appeals to your minds as being
most accurate, and otherwise trustworthy.
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Expert testimony
You have heard testimony of what we call an “expert witness.” If scientific, technical, or
other specialized knowledge might assist a jury in understanding the evidence or determining a
relevant fact, the law permits an “expert” to testify and state an opinion concerning such matters.
However, merely because someone is qualified as an expert and offers an expert opinion does
not require you to accept that opinion. Just as with any other witness, it is solely within your
responsibility as jurors to decide whether or to what extent an expert’s testimony is credible.
In assessing the credibility of expert testimony, you should consider whether the witness’
training and experience are sufficient to support the testimony in question. You should also
consider whether the expert’s opinions were based on adequate information, sound reasoning,
and good judgment.
Charts And Summaries Received In Evidence
Certain charts and summaries have been received into evidence to illustrate facts brought
out in the testimony of some witnesses. Charts and summaries are only as good as the underlying
evidence that supports them. You should therefore give them only such weight as you think the
underlying evidence deserves.
Use of Depositions: Written Form and Video
During the trial of this case, certain testimony has been read to you by way of deposition
or shown to you by way of videotape. The deposition or videotape testimony of a witness who,
for some reason, cannot be present to testify from the witness stand is usually presented in
writing under oath in the form of a deposition or in a videotape. Such testimony is entitled to the
same consideration and, insofar as possible, is to be judged as to credibility and weighed by you
in the same manner as if the witness had been present.
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Liability of Corporations
A corporation under the law is a person, but it can only act through its employees, agents,
directors, or officers. The law therefore holds a corporation responsible for the acts of its
employees, agents, directors, and officers, but only if those acts are authorized. An act is
authorized if it is a part of the ordinary course of employment of the person doing it. Whether a
particular act was authorized is a question you must decide on the evidence.
The fact that a plaintiff or defendant is a corporation should not affect your decision. All
persons are equal before the law, and corporations, whether large or small, are entitled to the
same fair and conscientious consideration by you as any other person.
Description of Firehouse Subs Plaintiffs' claims
In this case, Firehouse Subs Plaintiffs have asserted three claims that you must decide.
These are:
(1) Federal Trademark Infringement;
(2) False Designation of Origin; and
(3) Common Law Trademark Infringement and Unfair Competition.
I will instruct you on the elements and defenses to each of these claims.
Trademark Defined
A trademark is any word, name, or symbol adopted and used by a manufacturer or
merchant to identify his goods or services and distinguish them from those manufactured or sold
by others.
Trademark Infringement/ False Designation of Origin: Burden of Proof
Firehouse Subs Plaintiffs claim that the Calli Baker’s Firehouse Defendants have
infringed upon their registered trademarks and service marks, as well as additional unregistered
trademarks and service marks. They are asserting claims for trademark infringement in violation
of 15 U.S.C. § 1114, false designation of origin in violation of 15 U.S.C. § 1125(a), and common
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law trademark infringement and common law unfair competition arising out of the Calli Baker’s
Firehouse Defendants doing business as “Calli Baker’s Firehouse Bar & Grill.”
I instruct you that 15 U.S.C. § 1125(a)(1)(A) provides that:
Any person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleadingdescription of fact, or false or misleading representation of fact, which . . . is
likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by
another person . . . shall be liable in a civil action by any person who believes thathe or she is or is likely to be damaged by such act.
I instruct you that 15 U.S.C. § 1114(1)(a) & (b) provides that:
Any person who shall, without the consent of the registrant . . . (a)use in
commerce any reproduction, counterfeit, copy, or colorable imitation of aregistered mark in connection with the sale, offering for sale, distribution, oradvertising of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and applysuch reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering for sale, distribution, oradvertising of goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil
action by the registrant.
The test for each of the Firehouse Subs Plaintiffs’ claims is the same: in order to prevail,
the Firehouse Subs Plaintiffs must first prove that they own the marks at issue, and that the
marks are valid, protectible, and used in commerce.
Second, the Firehouse Subs Plaintiffs must prove that the Calli Baker’s Firehouse
Defendants’ use of a similar mark creates a likelihood of confusion, mistake, or deception. In
determining whether there is a likelihood of confusion, you must look at how the parties actually
use their marks in the marketplace to determine whether the Calli Baker’s Firehouse Defendants’
use is likely to cause confusion.
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On these issues, the Firehouse Subs Plaintiffs bear the burden of proof, and they must
prove their claims by a preponderance of the evidence. That means that they have to produce
evidence which, considered in the light of all the facts, leads you to believe that what the
Firehouse Subs Plaintiffs claim is more likely true than not. To put it differently, if you were to
put the plaintiffs’ and defendants’ evidence on opposite sides of an imaginary set of scales, the
plaintiffs would have to make the scales tip slightly to that side. If the plaintiffs fail to meet this
burden, the verdict must be for the defendants. Those of you who have sat on criminal cases will
have heard of proof beyond a reasonable doubt. That is a stricter standard, that is, it requires
more proof than a preponderance of evidence. The reasonable doubt standard does not apply to a
civil case and you should therefore put it out of your mind.
When I say in these instructions that a party has the burden of proof on any proposition,
or use the expression, “if you find,” or “if you decide,” I mean you must be persuaded,
considering all the evidence in the case. In determining whether any fact in issue has been
proved by a preponderance of the evidence in the case, the jury may, unless otherwise instructed,
consider the testimony of all witnesses, regardless of who may have called them, and all exhibits
received in evidence, regardless of who may have produced them.
If you find that the Firehouse Subs Plaintiffs have proven, by a preponderance of the
evidence, that they are the owners of valid and protectible marks, and that Calli Baker’s
Firehouse Defendants have used their marks in a manner likely to cause confusion, your verdict
should be for the Firehouse Subs Plaintiffs. If, on the other hand, you find that it is more likely
than not that the Calli Baker’s Firehouse Defendants have not used their marks in a manner
likely to cause confusion with Firehouse Restaurant Group’s marks, then your verdict must be
for the Calli Baker’s Firehouse Defendants.
In my instructions, I will elaborate on the factors you are to consider in determining
whether a likelihood of confusion exists.
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Trademark Infringement/ False Designation of Origin: Nature of the Claim
The Firehouse Subs Plaintiffs claim that the Calli Baker’s Firehouse Defendants have
infringed Firehouse Restaurant Groups’ trademarks. More specifically, these trademarks are:
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Trademark Infringement/ False Designation of Origin: Elements
To prove trademark infringement, the Firehouse Subs Plaintiffs must prove by a
preponderance of the evidence that:
(1) Firehouse Restaurant Group owns a valid and protectible mark; and
(2) that the Calli Baker’s Firehouse Defendants’ use of a similar mark either:
(A) infringed that particular trademark or service mark by using in commerce any
word, term, name, symbol or device or any combination thereof which is likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of Calli Baker’s Firehouse Defendants with any of the Firehouse Subs
Plaintiffs, or as to the origin, sponsorship or approval of the Calli Baker’s Firehouse
Defendants' goods, services or commercial activities by any of the Firehouse Subs
Plaintiffs; OR
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(B) infringed by using in commerce any reproduction, counterfeit, copy, or colorable
imitation of Firehouse Restaurant Group’s registered trademarks or service marks in
connection with the sale, offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; OR
(C) infringed by reproducing, counterfeiting, copying, or colorably imitating a
registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be
used in commerce upon or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake or to deceive.
Registration: Prima Facie Evidence of Ownership
Firehouse Restaurant Group’s trademark registrations are prima facie evidence of its
exclusive right to use the marks in commerce in connection with the goods and services
specified in the registration certificates. Prima facie means the fact is established unless you
determine that the Calli Baker’s Firehouse Defendants have presented a greater weight of
evidence which contradicts the existence of the fact.
Validity of the Trademarks at Issue
With respect to all of Firehouse Restaurant Group’s trademarks except the trademark
FIREHOUSE, Registration Number 3,173,030, there is no dispute that the marks are valid and
protectible trademarks that the Firehouse Subs Plaintiffs use in interstate commerce. Therefore,
you do not have to be concerned with that element of trademark infringement as to those
trademarks. With respect to the trademark FIREHOUSE, Registration Number 3,173,030, Calli
Baker’s Firehouse Defendants do dispute the Firehouse Subs Plaintiffs’ exclusive right to the use
of that mark. Therefore, because the validity and ownership of that mark is challenged, the Calli
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Baker’s Firehouse Defendants bear the burden to prove, by the greater weight of the evidence,
that the Firehouse Subs Plaintiffs do not have the right to the exclusive use of the trademark
FIREHOUSE, Registration Number 3,173,030.
Likelihood of Confusion Factors
With respect to the second element of trademark infringement, likelihood of confusion, it
is in dispute as to all of Firehouse Restaurant Group’s marks, and you will have to make a
determination as to each mark alleged. In doing so, you must consider whether the Calli Baker’s
Firehouse Defendants' use of their marks is likely to cause confusion about the source or
sponsorship of either Calli Baker's or Firehouse Subs' products.
In conducting the likelihood of confusion analysis, you are to look to how the parties
actually use their trademarks in the marketplace to determine whether the Calli Baker's
Firehouse Defendants’ use is likely to cause confusion. You must consider whether, in light of
all the factors, there is a likelihood that an ordinary consumer would be confused as to the source
or sponsorship of the parties' respective goods and services.
As you consider the likelihood of confusion, you may examine the following factors:
(1) the strength or distinctiveness of Firehouse Restaurant Group’s marks;
(2) the similarity of Firehouse Restaurant Group’s trademarks and the Calli Baker’s
Firehouse Defendants’ trademarks;
(3) the similarity of the goods or services that the respective marks identify;
(4) the similarity of the facilities that the parties use in their businesses;
(5) the similarity of advertising used by the parties;
(6) the Calli Baker’s Firehouse Defendants' intent in selecting their marks; and
(7) actual confusion.
These factors are not meant to be a rigid formula for infringement; rather, they are meant to be a
guide of the various considerations that may be relevant in determining the question of
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likelihood of confusion. The presence or absence of any particular factor should not necessarily
suggest that there is or is not a likelihood of confusion, because you must consider all relevant
evidence in making this determination.
Likelihood of Confusion Factor: Strength of the Allegedly Infringed Trademarks
The first factor to consider in determining likelihood of confusion is the strength or
distinctiveness of each of Firehouse Restaurant Group’s marks. The strength of a trademark is
the degree to which a consumer in the relevant population, upon encountering the trademark,
would associate the trademark with a unique source. Thus, the strength of each of Firehouse
Restaurant Group’s marks is the degree to which a consumer, upon encountering the mark,
would uniquely associate Firehouse Subs with the mark.
If a mark is found to be “weak,” it is entitled to less protection. In this regard, if you find
that Firehouse Restaurant Group’s trademarks are weak, then it is less likely that the Calli
Baker’s Firehouse Defendants’ marks will cause confusion with any of Firehouse Restaurant
Group’s trademarks.
The strength of a trademark is evaluated in terms of the trademark’s conceptual strength
and commercial strength. I will now elaborate on the factors you should consider in determining
the conceptual and commercial strength of a mark.
Conceptual Strength of a Mark
A mark's conceptual strength is determined by classifying the mark into one of four
groups. From weakest to strongest, they are: (1) generic; (2) descriptive; (3) suggestive; and (4)
arbitrary or fanciful.
A generic mark includes the common name of a product or service itself. Genic marks
receive no protection as trademarks. For example, the words LITE BEER for light beer and
CONVENIENT STORE for convenience stores cannot serve as trademarks.
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A descriptive mark merely describes a function, characteristic or quality of the product or
service, such as its intended use, its ingredients, its dimensions, its desirable features, or its effect
on the consumer. Descriptive marks must have acquired secondary meaning in order to be
protected. In this regard, KENTUCKY fried chicken and AMERICAN airlines are descriptive
marks that have established secondary meanings in consumers’ minds, causing consumers to
recognize a brand or source of fried chicken or air travel, rather than the places, Kentucky and
America.
Suggestive marks, which are conceptually strong and inherently distinctive, do not
describe a product's features but merely suggest them; thus, the exercise of some imagination is
required to associate a suggestive mark with the product. For example, PLAYBOY magazine
and ORANGE CRUSH are suggestive marks.
Arbitrary or fanciful marks are inherently distinctive and most conceptually strong.
Arbitrary marks are based on existing words used in ways unconnected with their common
meaning, such as APPLE computer or SHELL gasoline. Fanciful marks consist of made-up
words that are invented to describe the product or source, such as KODAK or EXXON. These
marks are valid without the holder having to make any other showing.
In this case, Firehouse Restaurant Group’s registrations constitute prima facie evidence
that each of the marks is at least suggestive and therefore conceptually strong, but may be
rebutted by the Calli Baker’s Firehouse Defendants.
Commercial Strength of a Mark
To determine commercial strength of Firehouse Restaurant Group's marks you must look
at evidence of the marketplace. A trademark’s commercial strength focuses on whether, in fact,
a substantial number of present or prospective customers understand the designation when used
in connection with a business to refer to a particular person or business enterprise. For example,
FIREHOUSE SUBS can be considered commercially strong if a substantial number of
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consumers understand that the designation FIREHOUSE SUBS refers to the particular business
of the Firehouse Subs Plaintiffs. [On the other hand, the mark FIREHOUSE SUBS can be
considered commercially weak if a substantial number of consumers do not understand that the
designation FIREHOUSE SUBS refers to the Firehouse Subs Plaintiffs].
In this case, to establish that their marks are commercially strong, the Firehouse Subs
Plaintiffs must show that consumers have a tendency to associate each mark by itself with the
goods and services offered by Firehouse Subs. In determining the commercial strength of
Firehouse Restaurant Group’s trademarks, you may consider the following factors:
(1) the Firehouse Subs Plaintiffs’ advertising expenditures;
(2) consumer studies linking the Firehouse Subs Plaintiffs’ marks to a particular
source;
(3) the Firehouse Subs Plaintiffs’ record of sales success;
(4) unsolicited media coverage of the Firehouse Subs Plaintiffs’ business;
(5) attempts by others to plagiarize the Firehouse Subs Plaintiffs’ marks; and
(6) the length and exclusivity of the Firehouse Subs Plaintiffs’ use of the marks.
Third Party Use & Strength of a Mark
Also relevant to the strength or distinctiveness of a trademark are the number of third
party uses of that trademark. Therefore, in evaluating both the conceptual and commercial
strength of Firehouse Restaurant Group’s marks, you may also consider the number of third
party usages that include some or all of the text of Firehouse Restaurant Group’s marks.
Evidence of third party use and trademark registrations incorporating a common term are
relevant to prove that some segment of the composite marks, which both contesting parties use,
has a normally understood and well recognized descriptive or suggestive meaning, leading to the
conclusion that the segment is relatively weak. Furthermore, third party use within an industry is
evidence that customers have become so conditioned by a plethora of such similar marks that
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customers have been educated to distinguish between different such marks on the basis of
minute distinctions. The greater the number of identical or more or less similar trademarks
already in use on different kinds of goods, the less the likelihood of confusion.
Therefore, in assessing a mark's strength, the frequency with which a linguistic or
graphical term is used in other trademark registrations must be carefully examined. A strong
trademark is one that is rarely used by parties other than the owner of the trademark, while a
weak trademark is one that is often used by other parties. The frequency of third party use of a
trademark illustrates the mark's lack of both conceptual and commercial strength, particularly if
the third party use is in the same field of merchandise or service. Evidence of third party use of
a mark in unrelated markets or industries may also, to a lesser extent, indicate a mark's lack of
strength. However, a mark that is subject to third party use can be rehabilitated by evidence of
successful policing of the mark.
In this case, in analyzing the strength of Firehouse Restaurant Group’s marks, you may
consider the number of third party uses and registrations of identical or similar trademarks. If
you find that few or no third parties have used a mark similar to Firehouse Restaurant Group’s
marks, then this factor weighs in favor of the Firehouse Sub Plaintiffs. If, on the other hand, you
find that a substantial number of third parties have used a mark in commerce similar to the marks
alleged by the Firehouse Subs Plaintiffs, then this factor weighs in favor of the Calli Baker’s
Firehouse Defendants.
Likelihood of Confusion Factor: Similarity of the Parties’ Respective Trademarks
The second factor you may consider in determining likelihood of confusion is the
similarity of the trademarks in question. Dissimilar trademarks are less likely to cause consumer
confusion than similar trademarks. In determining the similarity of the parties’ respective
marks, you may consider the similarity of the marks in terms of their sight, sound, and meaning.
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In determining whether trademarks are similar, the trademarks must be considered in the
contexts in which they are seen by the ordinary consumer. The fact that the marks might share a
common element does not alone establish a likelihood of confusion. If a mark is commonly
paired with other material in the public view, that pairing must be considered in determining
whether the trademarks are similar. In evaluating the similarity of the two marks, the marks
need only be sufficiently similar in appearance, with greater weight given to the dominant or
salient portions of the marks. A finding of similarity weighs in favor of the Firehouse Subs
Plaintiffs. A finding of dissimilarity weighs in favor of the Calli Baker’s Firehouse Defendants.
Likelihood of Confusion Factor: Similarity of the Goods and Services Offered by the Parties
The third factor to consider in determining likelihood of confusion is the similarity of the
goods and services that the parties’ respective marks identify. Trademarks that identify
unrelated or dissimilar goods and services are less likely to be confused. As with the similarity
of the marks, you are to measure the similarity of goods and services with respect to each party's
actual performance in the marketplace.
If you find that any of Plaintiff Firehouse Restaurant Group’s marks are at least
suggestive, then those marks are entitled to protection against the same or a confusing mark on
the same product, or related products, and even on those which may be considered by some to be
unrelated but which the public is likely to assume emanate from Firehouse Subs. The
registration of a suggestive mark should be broadly construed, and the appropriate reading is not
limited to goods and services listed in the registration certificate.
An infringement can occur where the parties’ products are related. However, even if you
find there is some overlap between the products and services identified by the parties’ respective
marks, you are entitled to find that the products are dissimilar if the products differ in many
other respects. A finding that the parties’ goods and services are similar weighs in favor of the
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Firehouse Subs Plaintiffs. Conversely, a finding that the goods and services are not similar
weighs in favor of the Calli Baker’s Firehouse Defendants.
Likelihood of Confusion Factor: Similarity of the Parties’ Respective Facilities
The fourth factor to consider in determining likelihood of confusion is similarity of the
facilities used by the parties in their respective businesses. If the parties utilize different
facilities and distribution channels in presenting their respective goods to consumers, then
consumers are less likely to be confused about the source of those goods. In analyzing this
factor you may consider the basic differences between Calli Baker’s and Firehouse Subs’ modes
of distributing their products. You may also consider the class of consumers purchasing the
products, and the context in which they make their purchases. Notably, the sophistication and
expertise of the consumers can preclude any likelihood of confusion among them stemming from
the similarity of trademarks. In this case, a finding that the parties’ facilities and distribution
channels are similar weighs in favor of the Firehouse Subs Plaintiffs. On the other hand, a
finding that the facilities and distribution channels used by the parties are not similar weighs in
favor of the Calli Baker’s Firehouse Defendants.
Likelihood of Confusion Factor: Similarity of Advertising Used by the Parties
The fifth factor to consider in determining likelihood of confusion is the similarity of
advertising used by the parties. If the Firehouse Subs Plaintiffs and the Calli Baker’s Firehouse
Defendants utilize different channels of advertisement, then consumers are less likely to be
confused about the source of goods.
When assessing the similarity of the parties’ respective methods of advertising you
should consider the following factors:
(1) the media used;
(2) the geographic areas in which advertising occurs;
(3) the appearance of the advertisements; and
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(4) the content of the advertisements.
If you find that the parties use similar methods of advertising, then this factor weighs in
favor of the Firehouse Subs Plaintiffs. On the other hand, if you find that the methods of
advertising used by the Calli Baker’s Firehouse Defendants are not similar to the methods of
advertising used by the Firehouse Subs Plaintiffs, then this factor weighs in favor of the Calli
Baker’s Firehouse Defendants.
Likelihood of Confusion Factor: Intent of the Alleged Infringer to Cause Confusion
The sixth factor to consider in determining likelihood of confusion is the Calli Baker’s
Firehouse Defendants’ intent in adopting its marks. The Defendants’ intent is relevant only if
you find that the Firehouse Subs Plaintiffs have shown that the Calli Baker’s Firehouse
Defendants intended to capitalize on any good will associated with Firehouse Restaurant
Group’s marks. If you find that the Calli Baker’s Firehouse Defendants did not intend to
capitalize on any good will associated with Firehouse Restaurant Group’s marks, then you
should disregard this factor.
Likelihood of Confusion Factor: Actual Confusion
The seventh factor to consider in the likelihood of confusion analysis is actual confusion.
Examples of actual confusion are where consumers believe that one party has permission to use
the other party’s trademark, where consumers believe that there is an association between the
parties, or their respective trademarks or their products offered under those trademarks, or if a
consumer mistakes the goods and services of one party for the other. Evidence of actual
confusion is often paramount in the likelihood of confusion analysis. However, consumer
confusion raised by errors not related to the use of the trademarks is not actual confusion.
In considering evidence of actual confusion, you may consider the credibility of the
witnesses, and give such evidence the weight you deem appropriate. Additionally, the period of
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time the two businesses have coexisted may be taken into account when evaluating the number
of instances of actual confusion.
In determining whether there has been actual confusion, you may also consider the
volume of sales conducted by the parties, compared to the number of alleged instances of
confusion. Where evidence of actual confusion is minimal compared to the volume of the
parties’ sales or business transactions, then such evidence may be considered de minimus, or
insignificant. If you find that the Firehouse Subs Plaintiffs have provided more than de minimus
evidence of actual confusion, then this factor weighs in favor of the Firehouse Subs Plaintiffs.
On the other hand, if you find that the Firehouse Subs Plaintiffs have not provided evidence of
actual confusion, or if you find that the evidence of actual confusion is de minimus or
insignificant, then this factor weighs in favor of the Calli Baker’s Firehouse Defendants.
Trademark Cancellation Due to Fraud (15 U.S.C. § 1119)
Now, let me discuss with you the Calli Baker’s Firehouse Defendants’ fraud claim. In
this case, the Calli Baker’s Firehouse Defendants seek an Order cancelling Firehouse Restaurant
Group’s trademark FIREHOUSE, Registration Number 3,173,030, which has been referred to
during this trial as the “FIREHOUSE” word mark. Specifically, the Calli Baker’s Firehouse
Defendants have alleged that the Firehouse Subs Plaintiffs committed fraud on the U.S. Patent &
Trademark Office in obtaining the “FIREHOUSE” word mark. The Calli Baker’s Firehouse
Defendants’ claim of trademark cancellation due to fraud relates only to this single trademark
registration. In addition to seeking cancellation, the Calli Baker’s Firehouse Defendants assert
fraud in the procurement of a trademark also as a defense to trademark infringement of only this
one mark.
A party making a fraud claim is under a heavy burden leaving nothing to speculation,
conjecture, or surmise. Any doubt must be resolved against finding of fraud. The claim of Fraud
on the U.S. Patent & Trademark Office in connection with a trademark registration requires that
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Calli Baker’s Firehouse Defendants prove by clear and convincing evidence that Firehouse
Restaurant Group knowingly made a false, material representation of fact in connection with its
trademark application for FIREHOUSE, Registration Number 3,173,030, with the intent to
deceive the U.S. Patent & Trademark Office. You must consider only what the applicant believed
at the time it filed its trademark application. Willful failure to correct a material
misrepresentation also constitutes fraud where the applicant subsequently learns of the material
misrepresentation and knows that the U.S. Patent & Trademark Office has relied upon that
material misrepresentation. An applicant does not, however, have a duty to disclose information
that was properly before the U.S. Patent & Trademark Office during consideration of the
applicant’s registration rights.
Trademark Cancellation Due to Fraud: Burden of Proof
As stated above, fraud on the U.S. Patent & Trademark Office in connection with a
trademark registration must be established by clear and convincing evidence. Clear and
convincing evidence is an elevated standard of proof, which lies between the lesser standard of
“preponderance of the evidence,” used in most civil cases, and the higher standard of “beyond a
reasonable doubt,” which is required in criminal cases. Clear and convincing evidence is that
degree of proof which will produce in your minds a firm belief as to the allegations sought to be
established. Such measure of proof is intermediate, it does not mean clear and unequivocal.
Clear and convincing evidence requires that the evidence must be found to be credible; the facts
to which the witnesses testify must be distinctly remembered; the testimony must be precise and
explicit; and the witnesses must be lacking in confusion as to the facts in issue. The evidence
must be of such weight that it produces in the mind of the trier of fact a firm belief or conviction,
without hesitancy, as to the truth of the allegations sought to be established. When the law places
upon a party a burden of proof by clear and convincing evidence, the law means that the evidence
is not ambiguous, doubtful, equivocal, or contradictory, but the evidence is pointed to the issue
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and satisfactory in the sense that the source from which it comes is one in which you as jurors can
place credence. If the Calli Baker’s Firehouse Defendants should fail to establish any essential
element of their trademark cancellation due to fraud claim by clear and convincing evidence, the
jury should find for the Plaintiff Firehouse Restaurant Group as to this claim.
Proving Fraud: Consent by Competitors
Competitors that use similar or related marks are most familiar with, and most affected by
the marketplace, and they are best able to attest to its effects and determine whether there is a
likelihood of confusion, even in cases where the marks are identical and goods closely related.
Consent from a competitor to use a mark is evidence that the competitor thought out its
commercial interests with care and recognized that consumer confusion is unlikely. You may
consider whether third party competitors of Firehouse Restaurant Group consented to the
Firehouse Subs Plaintiff's use of its marks and under what circumstances consent was granted.
Proving Fraud: Materiality and Intent
A misrepresentation is “material” if it would have caused the U.S. Patent & Trademark
Office not to register the trademark had it been disclosed. Purposely failing to disclose other
users’ rights to use the same or similar marks may qualify as a material omission or
misrepresentation.
Proof of specific intent to commit fraud is an indispensable element in the analysis. Intent
may be inferred from circumstantial evidence, but such evidence must still be clear and
convincing, and inferences drawn from lesser evidence cannot justify the subjective intent
requirement.
If you find that Plaintiff Firehouse Restaurant Group did not make a material
misrepresentation in its application for trademark FIREHOUSE, Registration Number 3,173,030,
or if you find that Plaintiff Firehouse Restaurant Group did so but did not intend to deceive the
U.S. Patent & Trademark Office, then you must find for the Plaintiff. On the other hand, if you
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find that Plaintiff Firehouse Restaurant Group made a material misrepresentation in connection
with its application to the U.S. Patent & Trademark Office, and that such material
misrepresentation was made with intent to obtain a federal trademark registration to which they
knew they were not entitled, you must find for the Calli Baker’s Firehouse Defendants. You must
also find for the Calli Baker’s Firehouse Defendants if you determine that Plaintiff Firehouse
Restaurant Group failed to correct such material misrepresentation after learning of its falsity,
knowing that the U.S. Patent & Trademark Office relied on that material misrepresentation in
issuing the registration.
Duty to Deliberate
When you retire to the jury room, you should first elect one from among you to serve as
your foreperson. The foreperson you select will preside over the deliberations and speak for the
jury here in court. After electing your foreperson, you should discuss the case with your fellow
jurors to reach an agreement if you can do so. Your verdict must be unanimous.
Each of you must decide the case for yourself, but you should do so only after you have
considered all the evidence, discussed it fully with the other jurors, and listened to the views of
your fellow jurors. Do not be afraid to change your opinion if the discussion persuades you that
you should. But do not come to a decision simply because other jurors think it is right.
It is important that you attempt to reach a unanimous verdict but, of course, only if each of
you can do so after having made your own conscientious decision. Do not change an honest belief
about the weight and effect of the evidence simply to reach a verdict.
Remember at all times that you are not partisans. You are judges - judges of the facts.
Your sole interest is to seek the truth from the evidence in the case.
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Consideration of Evidence
Your verdict must be based solely on the evidence and on the law as I have given it to you
in these instructions. However, nothing that I have said or done is intended to suggest what your
verdict should be - that is entirely for you to decide. The arguments and statements of the
attorneys are not evidence. If you remember the facts differently from the way the attorneys have
stated them, you should base your decision on what you remember.
Note-taking
Some of you have taken notes during the trial. Remember that the notes are for your own
personal use. They are not to be given or read to anyone else and they are not to be used in place
of your memory. You should always rely on your own recollection and not someone else's notes.
Your notes are not evidence and should not take precedence over your own independent
recollection of the proceedings. If a conflict exists between your notes and your memory, you
should rely on your memory.
Return of Verdict
After you have reached a unanimous agreement on a verdict, your foreperson will fill in
the form that has been given to you, sign and date it and advise the marshal outside your door that
you are ready to return to the courtroom.
Communicating With the Court
If it becomes necessary during your deliberations to communicate with me, you may send
a note through the marshal, signed by your foreperson or by one or more members of the jury. No
member of the jury should ever attempt to communicate with me except by a signed writing; and I
will communicate with any member of the jury on anything concerning the case only in writing,
or orally here in open court. Remember that you are not to tell anyone - including me - how the
jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have
been discharged.
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