5th Cir. decides SHOE SHOW not “substantially similar” to THE SHOE DEPT.

This was a contract case—not a dispute under the Lanham Act. A mall leased space for a shoe retailer called THE SHOE DEPT. The retailer also operated shoe stores elsewhere called SHOE SHOW and BURLINGTON SHOES. The contract said the retailer couldn’t open a store with a “substantially similar trade-name” nearby. When the retailer opened a SHOE SHOW nearby, the mall said nothing, until much later when the retailer tried to get out of the lease. Then the mall complained about the nearby SHOE SHOW.

Ostensibly under Ohio law, but borrowing from a few trademark precedents, the 5th Circuit found that SHOE SHOW is not “substantially similar” to THE SHOW DEPT. The given reason was that “shoe” is generic or descriptive, and so doesn’t count in the comparison, and “show” is not substantially similar” to “dept.” The court made quite clear that it thought the mall was being opportunistic: that it knew darn well that the retailer operated SHOE SHOWs also; that it could have, but didn’t, contract for a prohibition against nearby SHOE SHOWs; and that it was seizing on the fudgy nature of the term “substantially similar” to try to gain advantage in the lease dispute.

(NB – I wonder if, under Ohio law, an acquiescence defense could have been interposed. Seems this would have more directly addressed the court’s concern with opportunism.)

The case is Almeda Mall, L.P. v. Shoe Show, Inc., No. 10-20587 (5th Cir. Aug. 8, 2011)