The Delta Group, L.L.C. v. Ruth's Chris Steak Houses, et al.

In this trademark infringement case arising under the Lanham Trademark Act of 1946 ("Lanham Act"), specifically 15 U.S.C. §§ 1114(1) and 1125(a), plaintiffs-appellants Delta Western Group, LLC, Daniel B. McCauley, and Donald E. Little (collectively "DWG") appeal an order from the United States District Court for the District of Utah granting a preliminary injunction in favor of defendants-appellees Ruth U. Fertel, Inc. and Ruth's Chris Steak Houses (collectively "RUFI"). Exercising appellate jurisdiction under 28 U.S.C. § 1292(a)(1), this court affirms.

At the time of the original complaint, DWG owned the U.S. Prime Steak House, a restaurant in Park City, Utah. RUFI is the owner of the Ruth's Chris Steak House chain. RUFI is also the owner of a registered service mark which features the words "U.S. Prime" in all-capital, block lettering tilted at an upward angle and surrounded by two concentric circles. DWG filed this suit challenging the validity of RUFI's "U.S. Prime" service mark. RUFI filed a counterclaim and a motion for injunctive relief, alleging that DWG's use of the name "U.S. Prime" in its restaurant and products infringed on RUFI's registered mark, in violation of the Lanham Act. The district court granted RUFI's motion to dismiss DWG's complaint for failure to state a claim upon which relief can be granted. Following a preliminary injunction hearing, the district court enjoined DWG from using the mark "U.S. Prime" on its restaurant, products, advertisements, and other materials in an order filed on September 28, 2000.

On appeal, DWG makes several challenges to the district court's determinations of the validity of RUFI's registered mark and DWG's infringement. Specifically, DWG argues that the district court erred in (1) failing to consider whether RUFI's mark was generic; (2) concluding that RUFI's mark had acquired secondary meaning; (3) determining that there was a likelihood of confusion between DWG and RUFI's marks; and (4) failing to consider adequately DWG's defenses based on RUFI's disclaimer of a prior mark and RUFI's allegedly unclean hands.

This court reviews the grant of a preliminary injunction for abuse of discretion. See Prairie Band of Potawatomi Indians v. Pierce, 253 F.3d 1234, 1243 (10th Cir. 2001). A district court abuses its discretion if it "commits an error of law, or is clearly erroneous in its preliminary factual findings." Id. (quotation omitted). The district court's determination of the level of distinctiveness is a question of fact reviewed for clear error. See Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir. 1993). A determination of whether a mark has acquired secondary meaning is also a question of fact reviewed for clear error. See J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1470 (10th Cir. 1985). In general, likelihood of confusion is a question of fact subject to clear error review. See Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 553 (10th Cir. 1998); Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 923 n.2 (10th Cir. 1986).

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of the Court's opinion.

The United States District Court for the District of Utah did not abuse its discretion and its order granting a preliminary injunction is therefore AFFIRMED.

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