11th Circuit trademark decision puts cart before horse

In a dispute involving a Hollywood restaurant's claim that an Atlanta restaurant infringed its mark, the 11th Circuit seemed unnecessarily to go through an entire (and error-filled) likelihood of confusion analysis before ruling that the defendant was a good faith, geographically remote junior user. Instead of viewing the "good faith, geographic remoteness" argument as an affirmative defense, however, it expressly viewed it as an additional likelihood of confusion factor.

In Tana v. Dantanna's, No. 09-15123 (11th Cir. July 15, 2010), the plaintiff (Dan Tana) is the owner of an Italian restaurant in Hollywood called Dan Tana's. Defendant Dantanna's is a surf-and-turf restaurant with a sports theme in Atlanta. Among the controversial statements the court made in the likelihood of confusion analysis was its holding that the "goods and services provided in the parties' restaurants are strikingly dissimilar." I.e, Italian restaurant vs. sporty surf-and-turf joint. This seems far too fine a distinction to make where comparing the parties' services. In my view, sit-down place vs. sit-down place is about as far as this sort of parsing should go. In addition, the court concluded that the parties do not engage in similar advertising because they have different websites, which the court opined would suggest "two completely unrelated restaurants." Again, the court is parsing it too fine and missing the point. That both parties advertise primarily via the Internet should weigh in favor of confusion, not against it.

The court ultimately reached the right result (exonerating the defendant), but the court's unnecessary likelihood of confusion discussion will provide unfounded excuses for infringers in future cases.