Opposition Brief — Brennan's, Inc. v. Brennan (No. 08-752)

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Supreme Count, U.S.

FILED

a FEB 1 1 2009

ae OFFICE OF THE CLERK

No. 08-752

In The

Supreme Court of the United States

BRENNAN’S, INC.,

Petitioner,

BERT CLARK BRENNAN

and BLAKE W. BRENNAN,

Respondents.

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Fifth Circuit

BRIEF IN OPPOSITION

STEPHEN J. CARMODY

Counsel of Record

BRUNINI GRANTHAM GROWER & HEWES, PLLC

The Pinnacle Building, Suite 100

190 East Capitol Street

Post Office Drawer 119

Jackson, Mississippi 39205

Telephone: 601-948-3101

Facsimile: 601-960-6902

Attorneys for Respondents,

Bert Clark Brennan and

Blake W. Brennan

QUESTION PRESENTED

Whether Petitioner has presented compelling

reasons to grant the Petition, where the Fifth

Circuit’s Opinion affirming the District Court’s

rigorous analysis of the evidence presented at a

trademark infringement preliminary injunction

hearing does not conflict with a decision of this Court

or a Court of Appeals, and where Petitioner does not

claim the Fifth Circuit’s ruling implicates an

important federal question that has not been settled

by this Court.

TABLE OF CONTENTS

QUESTION PRESENTED .........sceeeees

Rt SIE CAPT EEREED 63 sp ciwsieceetenswe

TABLE OF AUTHORITIES .. 0... ses cceees

STATEMENT OF THE CASE ..............

I. The Underlying Dispute ............

II. The 1979 Settlement Agreement .....

lil. The 1998 Agreement ...............

IV. Trademark Infringement Claims .....

REASONS FOR DENYING THE PETITION ..

I. The District Court’s Ruling and Fifth

Circuit’s Affirmation Has Been

Mischaracterized by the Petitioner. ...

II. The Split in Circuit Court Decisions is

POVIIERR. 6g os ee eee

A. Consent Agreements — Defined ...

B. Consent Agreements — Usage ....

C. The Federal Circuit Considers

Consent Agreements in its

Likelihood of Confusion

Determummtion. .. i... ini elie eo.

D. Other Circuit Courts, District

Courts and Trademark Board

Decisions Allow Consent

Agreements to Be Considered

in the Determination of the

Likelihood of Confusion Factors. . .

®. Gummy ......c5+seese eee

ill

III. Contrary to the Company’s Baseless

Statement in its Petition, the Fifth

Circuit’s Affirmation of the District

Court’s Decision Does Not Result

in a Departure from Established

a os So en eb ok cee 32

IV. Even If a Circuit Court Conflict

Exists, this Case Is a Poor Vehicle for

PU Ls. xo oe oa neo ee OS 33

ONE hoo oF ba ee oa eee ee 35

TABLE OF AUTHORITIES

CASES

Amalgamated Bank v. Amalgamated Trust

& Sav. Bank, 842 F.2d 1270

SO A ogg PG bv 6 6 wo 23

American Chicle Co. v. Topps

Chewing Gum, Inc., 112 F. Supp.

848 (D.N.Y. 1953), aff,

210 F.2d 680, 101 U.S.P.Q.

Dee ee es nk ek a ee Oe a eek 29

American Fid. & Liberty Ins. Co.

v. American Fid. Group,

2000 U.S. Dist. LEXIS 138683,

44-45 (E.D. Pa. Sept. 25, 2000) ........... 29

Andersen Corp. v. Therm-O-Shield

International, Inc., 1985 WL 72080

(Trademark Tr. & Appeal Bd.) ........... 30

Bongrain Intl (Am.) Corp.

v. Delice de France, Inc.,

811 F.2d 1479, 1484-85

PE on CG ks dew she ew 27

Brennan’s, Inc. v. Brennan,

512 F. Supp. 2d 568-69 (S.D. Miss. 2006),

aff'd, 2008 U.S. App. LEXIS 16890

a ee ee gee wise 16-18, 21

California Fruit Growers Exchange

v. Sunkist Baking Co.,

pee ee eee Ger. 2ST) ww. we 28

CBS, Inc. v. Morrow,

708 F.2d 1579, 218 U.S.P.Q. 198

a 24-26, 34

Croton Watch Co. v. Laughlin,

aoe ¥.20 Go, oe (2a Cir. 1953) ........... 28

DC Comics v. Pan American Grain

Mfg. Co., Inc., 2005 WL 2093233

(Trademark Tr. & Appeal Bd.) .......... 30

Freedom Card, Inc. v. JPMorgan Chase & Co.,

aoa F.30 4Ga (Grd Cir. 2005) ............. 28

In Application of E.I. DuPont DeNemours & Co.,

476 F.2d 1357, 1363 (C.C.P.A. 1973) ...... 22

In re Majestic Distilling Co., Inc.,

315 F.3d 1311 (Fed. Cir. 2003) ........ 24, 25

In re N.A.D., Inc.,

754 F.2d 996 (Fed. Cir. 1985) ......... 26, 27

In re Pacific Life Insur. Co.,

2004 WI. 1090645 (Trademark Tr.

ec ee ew 30

In re Superior Outdoor Display, Inc.,

el ED hs, 24

In re The Biltmore Company

A/K/A Biltmore Estate,

2002 WL 471795

(Trademark Tr. & App. Bd.) ............: 30

Knaack Mfg. Co. v. Rally Accessories, Inc.,

955 F. Supp. 991,

42 U.S.P.Q.2d 1649 (N.D. Ill. 1997) ....... 29

McNeil Laboratories, Inc. v. American Home

Products Corp., 416 F. Supp. 804

ee 31

Moore Business Forms, Inc. v. Ryu,

960 F.2d 486, 489 (5 Cir. 1992) .......... 32

Mushroom Makers, Inc. v. R.G. Parry Corp.,

441 F. Supp. 1220, 1231 (S.D.N.Y. 1977),

alfa, G80 F.24 44 (2d Cir. 1978) .......... 29

Patsy’s Italian Restaurant, Inc.

v. Banas, 508 F. Supp. 2d 194

EE ol

Peyrat v. L. N. Renault & Sons, Inc.,

247 F. Supp. 1009 (S.D.N.Y. 1965) ........ 29

Playboy Enterprises, Inc. v. Chuckleberry

Publishing, Inc., 486 F. Supp. 414,

Pee a LE Ae) eer 30

vii

Swedish Beer Export Co. Aktiebolag

v. Canada Dry Corp., 469 F.2d 1096

ee BTU 6 is a ok ee ona bees 23, 24

Universal City Studios, Inc. v. Nintendo Co.,

578 F. Supp. 911 (S.D.N.Y. 1983),

aff'd, 746 F.2d 112,

923 U.S.P-@: 1000 (2d Cir. 198@ ......... 29

University of Southern California v. University

of South Carolina, 2008 WL 3333839

(Trademark Tr. & Appeal Bd.) ........... 30

OTHER AUTHORITIES

3 J. Thomas McCarthy, McCarthy on

Trademarks & Unfair

Competition § 18:81 (4th ed. 2008) ........ 22

Practitioner’s Trademark Manual of Examining

Procedure § 1207.01(d)(viii) (4" ed. 2008) .. 20

Richard L. Kirkpatrick, Likelihood of

Confusion in Trademark Law

BOT gc co wc vv anaes 21

Supreme Court Practice (9° ed. 2007) 504 .... 34

RULES

EE og oe ew A Wak NeW wl 31

I I ro ge lire he 18

STATEMENT OF THE CASE

Petitioner Brennan’s, Inc. (the “Company”) has

asserted that there is a split among circuit courts of

appeal and that the “split” is pertinent to the

resolution of this case. Furthermore, the Company

insists that the Fifth Circuit’s ruling affirming the

District Court’s detailed critique of the evidence

presented at the hearing on the Company’s

application for a _ preliminary injunction was

erroneous. However, the “split” cited by the

Company is mythical. In fact, the circuit courts and

district courts have uniformly considered “consent”

agreements in the multi-factor likelihood of

confusion trademark infringement ansiysis. The

courts have consistently considered all the facts and

circumstances involved in the formation, execution

and implementation of these agreements and given

them whatever weight the court deems fit for each

situation. Accordingly, the “split” is fictional and the

Petition should be denied. Moreover, the Company

has exaggerated the significance of the consent

agreements. The District Court did not use the

agreements to support its decision other than in

discussing the “intent to confuse” factor of the

hkelihood of confusion analysis.

The Company has mischaracterized the Fifth

Circuit’s ruling and the District Court’s reliance

upon the agreements at issue in this case. Even if

one assumes for argument’s sake that the two

“consent” agreements introduced into evidence were

licenses, at least one of the agreements contained no

control provisions and therefore it is a “naked”

license. Contrary to the Company’s Petition, the

Circuit Courts have addresses this issue and have

uniformly held that “naked” licenses may result in

trademark owners being estopped from asserting

infringement claims.

Consequently, for these aforementioned reasons

the Company’s Petition should be denied.

I. The Underlying Dispute

The Company is owned equally by Owen (“Pip”)

Brennan, Jr., Theodore (“Ted”) M. Brennan, and

James (“Jimmy”) C. Brennan. In April of 1995,

Respondents Clark Brennan and Blake Brennan

(“Clark and Blake”) were hired as co-general

managers of the restaurant owned by the Company.

Pip Brennan is the father of Clark and Blake

Brennan. Ted and Jimmy Brennan are the brothers

of Pip Brennan and are Clark and Blake’s uncles.

The Company is the owner of the Brennan’s

restaurant. Ted and Jimmy Brennan ousted their

brother, Pip, from the company management. The

three owners/brothers are currently embroiled in two

lawsuits in state and federal courts in New Orleans,

Louisiana over control of the Company. This

trademark infringement lawsuit is a part of Ted and

Jimmy Brennan’s effort to thwart their brother’s

family from operating restaurants in New Orleans

and elsewhere.

No less than six Brennan family restaurants

using the word “Brennan” or “B” are operating in

New Orleans blocks away from the Company’s

pany

“Brennan’s” restaurant:

1. Dickie Brennan’s Palace Café;

2. Dickie Brennan’s Bourbon House;

3. Dickie Brennan’s Steakhouse;

4. Ralph Brennan’s Red Fish Grill;

5. Ralph Brennan’s Bacco: and

6. Mr. B's.

Although this is the first family dispute between

the members of the Company, intra-familial disputes

between other Brennan family factions have been

quite common over the years.

II. The 1979 Settlement Agreement

The first documented family feud arose during

the 1970's between competing Brennan family

restauranteurs. After much negotiation, the feuding

factions entered into a use agreement for the

“Brennan’s” mark so as to avoid any future confusion

between those using the Brennan name (the “1979

Agreement”). In the 1979 Agreement, the Brennan

family was divided into two groups: the Brennan’s,

Inc. (the Company) group, and the Brennan’s, Ltd.

(Commander's Palace) group. The Brennan’s, Ltd.

group included the aunts and uncles of Pip, Ted and

Jimmy. In addition to other restaurants, the

Brennan’s, Ltd. group operated Commanders Palace,

and Mr. B’s restaurants in New Orleans. The 1979

Agreement gave exclusive use of the “Brennan’s”

name to each respective group in certain geographic

areas. Under the terms of the 1979 Agreement,

Brennan’s, Inc. could continue to operate “Brennan’s

of New Orleans,” and Brennan’s, Ltd. was allowed to

continue operation of identical replications of the

New Orleans’ Brennan’s and use the name

“Brennan’s of Houston,” and “Brennan’s of Atlanta.”

Although the Company attempts to label the 1979

Agreement as a “licensing” agreement, a cursory

review of its title and its contents belies the

Company’s moniker. The 1979 agreement title is

“settlement agreement,” not “licensing agreement,”

and the body of the agreement contains detailed

provisions relating to the use of the marks. Clearly,

these provisions were drafted and negotiated to

eliminate customer confusion:

3. EXPANSION

kKkK*

b. Both parties agree that except for the four

existing BRENNAN’S Restaurants... no

Restaurant Operation shall be opened or

operated by either party anywhere under

the namc Brennan or Brennan’s, or in

conjunction with the name Brennan or

Brennan’s .... Both parties further agree

that they... may each open, operate or

sell additional Restaurant Operations

under the surname Brennan provided such

party or purchaser from such party agrees

to and observes all of the following

conditions in regard to each _ such

additional Restaurant Operation.

1) One or more first names are always

used in conjunction with the surname

Brennan as the name of the Restaurant

Operation, for example, “Pip, Jimmy

and Ted Brennan’s Restaurant’, “Dick

Brennan's”, “Ella Brennan’s

Restaurant,” ctc.

2) The first name or names are always of

at least equal prominence with the

surname Brennan in regard to size,

color, appearance and_e similar

characteristics in any and all uses of

the surname Brennan so that the name

Brennan does not appear, to be and is

not emphasized nor more prominent

that the first name or names;

3) No name appears in script form;

4) None of the three marks are used;

5) No connection or association is made

between any such “first name/surname”

Restaurant Operation and any of the

four existing Brennan’s Restaurants in

New Orleans, Atlanta, Dallas, and

Houston, nor the cities in which these

restaurants are located, except that

LTD may indicate a connection or

association with Commander’s Palace

Restaurant or Mr. B’s Bistro (The

Quarter Bistreau) in New Orleans.

Record Excerpt at page 71-73, Settlement Agreement

at 3-5.

In addition, the feuding family members attempt

to eliminate confusion about the use of the surname

“Brennan,” and the potential conflicts that might

arise when using the family name on trademarks

and servicemarks:

6. AVOIDANCE OF CONFLICT

b. Nothing herein shall prohibit, restrict or

prevent either party to this Agreement

from discreetly using, in any advertising or

menus, the name Brennan or Brennan’s

together with a first name or names to

indicate proprietorship of any non

“Brennan’s Restaurant” owned by that

party, provided that the first name or

names are always placed first and are

always of at least equal prominence with

the surname in regard to size, color,

appearance and similar characteristics,

and further provided that LTD shall not be

required to comply with this provision

insofar as Commander’s Palace Restaurant

is concerned as to any advertising

previously contracted for and, until such

time as new menus are printed for said

restaurant, as to the menus for

Commander’s Palace Restaurant.

Record Excerpt at page 79-80, Settlement Agreement

at 11-12.

Despite the self-serving label given to the 1979

Agreement by the Company in its Petition, the 1979

Agreement, by its very nature and operation, is a

“consent to use” agreement. The parties to the 1979

Agreement desired to avoid confusion in the

marketplace about the operation of family

restaurants, and they agreed as to how the mark was

to be used, what format it would take, and even how

it was to be presented in advertising.

Ill. The 1998 Agreement

In its introductory provisions, the 1998

Agreement confirms its purpose and intent:

WHEREAS, Richard Brennan Jr. has

created and currently operates

restaurants in or near the city of New

Orleans, under the name and service

mark DICKIE BRENNAN’S PALACE

CAFE and DICKIE BRENNAN’S

STEAKHOUSE; and

WHEREAS, Richard Brennan Jr.

desires to promote both the

aforementioned restaurants using his

name “Dickie Brennan;” and

WHEREAS, the parties’ are

mutually desirous of avoiding any

confusion of the trade or public as

to the origin, affiliation or

sponsorship of any restaurants

operated by them;

Consent-to-Use Agreement 1, Record Excerpt 106

(emphasis added).

The terms of the 1998 Agreement between yet

another family member operating a restaurant

bearing the Brennan surname are almost identical to

the “use” terms of the 1979 Agreement:

NOW THEREFORE, for good and

valuable consideration, the receipt and

sufficiency of which is’ expressly

acknowledged, the parties hereby

AGREE as follows:

Brennan’s, Inc., shall not object to the

operation by Richard Brennan Jr. of

restaurants under the name and marks

DICKIE BRENNAN’S PALACE CAFE

and DICKIE BRENNAN’S

STEAKHOUSE, or under other names

which may be opened in the future, so

long as:

1. The use of BRENNAN’S by Richard

Brennan Jr. shall always be

accompanied by the name DICKIE and

the term BRENNAN’S shall not be of

greater size or prominence than the

name DICKIE, and shall be arranged

so as to present a combined name of

DICKIE BRENNAN’S, as proprietor;

2. The use of DICKIE BRENNAN’S

shall be used in conjunction with the

remaining portions of the names and

marks so as to present a unified name

and mark, such as DICKIE

BRENNAN’S PALACE CAFE and

DICKIE BRENNAN’S STEAKHOUSE,

and the name DICKIE BRENNAN’S

shall not be of greater size or

prominence than the remaining portion

or the restaurant name;

3. The names and service marks of

Richard Brennan identified as being

permitted hereunder shall not appear

in script style; and except as shown on

Exhibit “A” attached hereto; and

4. Noconnection is made, promoted or

suggested between any restaurant

operated by Richard Brennan Jr. and

any restaurant operated under a name

or mark owned or licensed by

Brennan’s, Inc., including but not

limited to those identified above. By

way of example but not limitation, use

by Richard Brennan Jr. of terminology

such as “original” or “famous” would

imply such a connection.

Consent-to-Use Agreement 1-2, Record Excerpt 06-

07.

The 1998 agreement also included a telling

strikeout provision. The strikeout confirmed that the

parties intended that Richard Brennan, Jr. (“Dickie”)

would be allowed to file a trademark application for

his use of his surname in the name of his

restaurants:

Richard Brennan Jr. does not and shall

not object to any use or registration ofa

name or mark incorporating the name

BRENNAN by Brennan’s, Inc., and

Consent-to-Use Agreement 2, Record Excerpt 107

(emphasis added; strikeout in original).

Accordingly, the language of the consent

agreement is clear — as long as Dickie followed the

strict rules governing potential confusion regarding

the use of the “Brennan” surname, he was free not

only to use the mark in identifying restaurant goods

and services, but also to apply for trademark

registration with the United States Patent and

Trademark Office (“USPTO”). The 1998 Agreement

did not include any quality control provisions and did

not provide any geographic limitations, nor did it

limit Dickie to any number of restaurants. Dickie

currently operates three restaurants using the

“Brennan” name within blocks of the Company’s

restaurant in New Orleans.

IV. Trademark Infringement Claims

In addition to the two “consent” agreements, the

Company has allowed others to use the Brennan

name on restaurants. Many years before this

dispute, the Company registered the servicemark

“Owen Brennan’s.” The Company eventually

received a trademark registration for the mark, and

under a “licensing” agreement with another

company, a restaurant in Memphis, Tennessee began

using the “Owen Brennan’s” mark. On March 29,

2005, at the conclusion of a meeting with all of the

shareholders of the Company, an Assignment of

Service Mark Agreement was executed by Pip

Brennan as President of the Company (“March

Assignment”). Under the terms of the March

Assignment, the ownership of the Owen Brennan’s

mark was conveyed to B.3.G., L.L.C. Clark and

Blake are the sole owners of B.3.G., L.L.C.

In June 2005, Ted and Jimmy Brennan met with

Clark and Blake. The uncles, in no uncertain terms,

expressed disapproval with Clark and Blake’s efforts

to expand the use of “Owen Brennan’s” service mark.

Ted and Jimmy made it clear to Clark and Blake

that they would have no ownership position in the

company, that they would receive no further raises,

that there was no possibility of further advancement,

and that expansion was no longer an option. The

source of Ted and Jimmy's dissatisfaction related to

Clark and Blake’s suggestion that Ted and Jimmy

consider selling their interest in the restaurant to

Clark and Blake. Clark and Blake left the June 2005

meeting with a clear understanding that, if they

were dissatisfied with their current situation, they

should leave and find other work.

In June of 2005, Clark and Blake began to explore

their options, which included expansion of the “Owen

Brennan’s” mark, and development of Clark and

Blake’s own restaurant business. However, in late

August of 2005, their plans were delayed when

Hurricane Katrina devastated New Orleans and the

surrounding Gulf Coast. Clark’s and Blake’s homes

were completely destroyed. Clark and Blake

relocated their families to Jackson, Mississippi.

During the months following Katrina, Clark and

Blake traveled from their temporary homes in the

Jackson, Mississippi area to New Orleans to help

re-open Brennan's Restaurant. At some point during

the months following Katrina, Clark and Blake

decided to open a new restaurant in the Jackson,

Mississippi area, located 187 miles north of New

Orleans, Louisiana. Later, they decided to open a

similar restaurant in Destin, Florida - - over 250

miles from New Orleans.

On March 1, 2006, Clark and Blake gave their

written resignations to the Company. Clark and

Blake first selected the mark “Brennan Brothers” as

the name for their restaurant. Clark and Blake filed

an intent-to-use trademark application for this mark.

The USPTO refused registration of the “Brennan

Brothers” mark. The trademark examiner

eventually based the denial upon the fact that the

proposed mark was “primarily a surname.” After

they received a cease and desist letter from the

Company about the use of the “Brennan Brothers”

mark, Clark and Blake decided to change the name

of their future restaurants.

Clark and Blake next considered using the “Owen

Brennan’s” mark, which was the subject of the March

2005 Assignment. However, Clark and Blake

Brennan made a business decision against the use

the “Owen Brennan’s” mark because it was being

used by a business establishment in Memphis,

Tennessee, and also because Ted and Jimmy

Brennan angrily objected to any additional use of the

mark. In yet another attempt to appease their

demanding uncles, Clark and Blake decided to use -

- “Clark and Blake Brennan’s Royal B” - - as the

name for their new restaurants.

Although they were not parties to the 1979 and

1998 Agreements, Clark and Blake Brennan decided

to use a name that would comply with the use

restrictions contained in these agreements. The

“Clark and Blake Brennan’s Royal B” mark was

accepted for registration by the USPTO, but the

application has since been held in abeyance pending

the outcome of this litigation. The mark, along with

its shortened version “Royal B,” are the marks which

Clark and Blake intend to use and are using to

operate their restaurant operations. In response to

Clark and Blake’s decision to use these marks, the

Company filed the District Court action and sought

a preliminary injunction based upon claims of

trademark infringement, unfair competition, federal

anti-dilution law, and Mississippi anti-dilution law.

The Company demanded extraordinary injunctive

relief from the District Court for “trademark

infringement,” and requested an order blocking the

use of the mark “Clark and Blake Brennan’s Royal

B” in Jackson, Mississippi, Destin, Florida, and

elsewhere. After an extensive evidentiary hearing on

the application for preliminary injunction, the

District Court denied the requested injunctive relief

because the Company failed to establish the essential

prerequisites needed to issue a_ preliminary

injunction.

The Fifth Circuit affirmed the District Court's

finding that the Company’s trademark infringement

claims will fail because, among other things, it failed

to establish a likelihood of customer confusion. In

addition, the Fifth Circuit affirmed the District

Court’s ruling that the Company failed to establish

a substantiai threat of immediate and irreparable

harm. In fact, the record is totally void of any

testimony about the threat of irreparable loss if

Clark and Blake arc allowed to operate a restaurant

with the name of “Clark and Blake Brennan’s Royal

B.” Moreover, the Fifth Circuit affirmed the District

Court’s holding that the balancing of harms test

favors Clark and Blake. Clark and Blake provided

overwhelming evidence of the harm they would

potentially suffer if the court issued a preliminary

injunction. In contrast, other than sheer conjecture,

the Company introduced no evidence of the harm it

would suffer if the request for an injunction was

denied. Finally, the Fifth Circuit affirmed the

District Court’s finding that the use by Clark and

Blake of their surname in a restaurant name does

not disserve the public interest.

The Fifth Circuit affirmed the District Court’s

denial of the application for preliminary injunction

and adopted the lower courts extensive ruling on the

likelihood of confusion factors. In discussing the

‘“antent” factor of multi-factor likelihood of confusion

analysis, the District Court mentioned the 1979 and

1998 Agreements and concluded they were “consent-

to-use” agreements:

The court is not persuaded that defendants

selected the mark “Clark and Blake Brennan’s

Royal B” for the purpose of creating confusion.

These defendants simply wanted to use their

own names on their own restaurants, and

undertook to do so in a way they thought (or

at least hoped) would satisfy plaintiff's

objections to their use of the Brennan name.

In so doing, defendants relied on earlier

agreements between Brennan’s, Inc. and other

members of the Brennan family prescribing

allowable use of the “Brennan’s” mark,

including a 1979 agreement with Owen

Brennan, Sr.’s brothers and sisters and their

heirs, and a 1998 agreement with Dickie

Brennan. The stated purpose of those

consent-to-use agreements was to

delineate acceptable uses of the mark

toward the goal of avoiding confusion of

the trade or _ public,” and both

agreements provided that the other

Brennan family members could use the

Brennan name so long as they adhered to

certain defined criteria...

Brennan's, Inc. v. Brennan, 512 F. Supp. 2d 568-69

(S.D. Miss. 2006), aff'd, 2008 U.S. App. LEXIS 16890

(5 Cir. 2008) (footnotes omitted). In footnote 13,

the District Court discussed the “consent to use”

defense raised by Clark and Blake, but did not rule

on this defense:

Defendants have argued that plaintiff is

foreclosed from asserting a claim for

infringement because their mark complies

with the requirements of the 1979 and 1998

agreements. In Brennan’s, Inc. [Dickie

Brennan lawsuit], the Fifth Circuit declined to

decide whether a stranger could rely on a

consent-to-use agreement, stating:

We point out that the defendants do not

raise the theory, adopted by some

courts but not by others, that a

stranger to a consent-to-use agreement

can use the agreement against the

mark-holder as an admission that

certain uses do not create confusion,

though other courts reject such a

theory. See 2 McCarthy § 18:81. In

terms of the facts of this case, the

i Oo ee

argument would be that the plaintiffs’

consent to let Dickie use certain names

could be turned against the plaintiffs if

they brought an infringement case

against other parties for similar

conduct, on the theory that even

strangers to the consent-to-use

agreement could use the plaintiffs’

contract with Dickie as an admission

that such uses do not _ produce

confusion. Since the defendants have

not raised this particular theory in

their brief in defense of either the

companies or Richard Sr., we

accordingly express no opinion on

whether such a theory is a viable

defense in an infringement suit.

Brennan ’s, Inc. v. Dickie Brennan & Co.

Inc., 376 F.3d at 369 n. 7.

Brennan ’s, Inc., 512 F. Supp. 2d at 569, n. 13.

The Fifth Circuit — without discussing the use

agreements — affirmed the lower courts ruling that

the Company had failed to establish a substantial

likelihood of success on the merits. Nonetheless, it is

clear that the District Court and the Fifth Circuit did

not base their decisions upon the consent agreements

at issue in this appeal — except as to deciding the

intent to confuse factor in favor of Clark and Blake.

REASONS FOR DENYING THE PETITION

The decisions below do not conflict with a decision

of this Court or any Court of Appeals, and they do

not implicate a federal question that has not been

decided by this Court. Accordingly, the Company has

not carried its burden of demonstrating “compelling

reasons” for the Petition to be granted. See Sup. Ct.

R. 10.

I. The District Court’s Ruling and Fifth

Circuit’s Affirmation Has Been

Mischaracterized by the Petitioner.

In the Petition, the Company attempts to create

an issue where none exists. In fact, the language

used by the Company in its Petition is telling:

The Fifth Circuit’s affirmation of the District

Court’s ruling seems to establish a

precedent within the Fifth Circuit that the

use of the license agreement and the consent-

to-use agreement by Brennan's Inc. has

weakened its “BRENNANS” trademark.

Petition at 13 (emphasis added). However, the Fifth

Circuit’s affirmation does not even mention the

agreements that the Company attempts to place in

issue on this appeal. The “seems to establish”

language used by the Company confirms that the

issue attempted to be raised is simply a figment of a

very creative and manipulative imagination. In fact,

the consent agreements are only mentioned by

District Court in an innocuous footnote. See

Brennan’s, Inc., 512 F. Supp. 2d at 569 n. 13.

Furthermore, after concluding that both the 1979

and 1998 agreements were “consent-to-use”

agreements, the District Court used the agreements

to sort out one of the factors of confusion — “intent of

the parties to cause confusion.” Contrary to the

claims of thé Company, the District Court did not

hold that tKe existence of the agreements resulted in

an admission against interest by the Company nor

an affirmative defense for Clark and Blake, nor cid

it rule that the Company acquiesced in the use of the

mark by entering in to the agreements with third

parties, nor was there any ruling that the Company

was estopped in asserting its infringement action

because of the existence of these agreement.

Therefore, the issue raised in the Petition is in fact,

not an issue at all. Accordingly, the Court should

deny the Company’s Petition.

I. The Split in Circuit Court Decisions is

Mythical.

In addition to creating a ruling that does not

exist, the Company has also manufactured a “split”

in circuit court decisions. While it is true that some

courts have allowed consent agreements to serve as

complete defense to trademark infringement and

opposition actions, courts on a regular and consistent

basis, review the agreements at issue, and based

upon the facts and circumstances of each case, use

the language contained in the agreements, and the

stated intent of the contracting parties, in the

likelihood of confusion analysis.

A. Consent Agreements — Defined

Consent-to-use’ agreements have been defined as

those agreements whereby an owner of a mark

consents to the use of the same or similar mark by

another in a defined format, market, or territory.

When such an agreement exists, the consent is a

factor to be considered in the likelihood of confusion

analysis.

The USPTO Trademark Examiners Manual

defines consent agreements as follows:

The term “consent agreement” generally refers

to an agreement in which a party (e.g., a prior

registrant) consents to the use and/or

registration of a mark by another party (e.g.,

an applicant for registration of the same mark

or a similar mark), or in which each party

consents to the use and/or registration of

the same mark or a similar mark by the

other party.

Praciitioner’s Trademark Manual of Examining

Procedure § 1207.01(d)(viii) (4 ed. 2007) (emphasis

addeda).

'Tn this brief in opposition and the decisions cited

herein, the term “consent agreement” and “consent-to-use”

agreement are used interchangeably. Arguably, consent-to-use

agreements define agreements where the parties consent to

ongoing or future use in the marketplace of the same or similar

marks, and consent agreements are broader in nature and in

addition to including consent-to-use agreements and consent-to-

Here, without question, the agreements at issue

are consent agreements. In fact, the District Court

held that the “stated purpose of those consent-to-use

agreements was to delineate acceptable uses of the

mark toward a goal of avoiding confusion of the trade

or public... .” Brennan’s, Inc., 512 F. Supp. 2d at

568. The agreements describe in detail the format

for use of the mark and how and where it is to used,

in an effort to limit, or eliminate, marketplace

confusion over the use of the family surname

Brennan by family members operating restaurants.

Surely, both the 1979 and 1998 rpreomonts operate

as consent agreements.

B. Consent Agreements - Usage

Consent agreements are relevant in the confusion

analysis because they may dilute the strength of the

mark and make confusion unlikely. Scholars have

discussed how much weight can be given to consent

agreements in trademark infringement and

opposition actions:

That a third party uses a mark under a

settlement, consent or other agreement with

the complainant is again not technically a

legal defense which may be relied upon by the

defendant without privity. However, such an

agreement, if admissible, may be evidence in

the nature of an admission against interest by

the complainant that confusion is unlikely in

the case at hand, if the circumstances are

comparable and the usage substantial.

Richard L. Kirkpatrick, Likelihood of Confusion in

Trademark Law § 3:6.3 (2008) (footnotes omitted).

A consent to a defined format, market or

territory at least implicitly admits that the

permitted use is noninfringing. In a future

infringement suit against a nonparty to the

consent, such a third party may point to the

consent as an admission by plaintiff that a

defined usage is noninfringing. Defendant

will then argue that its own use is within the

defined field permitted by the consent. The

defense is similar to an estoppel in that

defendant argues that plaintiffis precluded by

the consent agreement from claiming that

defendant's usage is an infringement.

3 J. Thomas McCarthy, McCarthy on Trademarks &

Unfair Competition § 18:81 (4th ed. 2008).

The rationale in using consent agreements in

considering whether confusion is likely to exist is

succinctly stated in Jn Application of E.I. DuPont

DeNemours & Co., 476 F.2d 1357, 1363 (C.C.P.A.

1973) (emphasis added):

[W]hen those most familiar with use in the

marketplace and most interested in

precluding confusion enter agreements

designed to avoid it, the scales of evidence are

clearly tilted. It is at least difficult to

maintain a_ subjective view that

confusion will occur when those directly

concerned say it won't. A mere assumption

that confusion is likely will rarely prevail

against uncontroverted evidence from those on

the firing line that it is not.

The Federal Circuit has held that conser '

agreements should be accorded great weight and has

chastised the USPTO for substituting its judgment

for the reasoning of the real parties in interest.

Amalgamated Bank v. Amalgamated Trust & Sav.

Bank, 842 F.2d 1270 (Fed. Cir. 1988).

At the very least, the courts allow the

introduction of consent-to-use agreements to be

considered as one of the factors in the multi-factor

confusion analysis. As discussed in more detail in

the following section, because consent agreements

come in a wide variety of forms, the weight given to

consent agreements depends upon the facts and

circumstances of each case.

C. The Federal Circuit Considers

Consent Agreements in its Likelihood

of Confusion Determination.

The Company would have this Court believe that

parties in the Federal Circuit defending trademark

infringement and opposition actions, cannot

introduce consent agreements to defend or support

their claims. However, the predecessor court to the

Federal Circuit, the Court of Cusioms and Patent

Appeals, has held that third parties may introduce

such agreements to support their claims of absence

of confusion.

In Swedish Beer Export Co. Aktiebolag v. Canada

Dry Corp., 469 F.2d 1096., 1097 (C.C.P.A. 1972), the

trademark ow: er of SKOL for beer opposed the

registration of SKOLA for soft drinks. The appellate

court held that when a party to a consent-to-use

agreement seeks to oppose a third party registration

of a similar mark, the terms of the consent are

evidence of the lack of likely confusion. Jd. The

appellate court opined “[t]he acquiescence of a

registrant, in a concurrent use of another for a

similar mark on different goods in the belief he will

not be injured is evidence that there is little

likelihood of confusion.” Jd. Thus, it is clear that the

Federal Circuit and its predecessor court consider

the “consent-to-use” agreements as evidence to be

considered along with all of the other facts and

circumstances in deciding whether there is a

hkelihood of confusion. See also In re Superior

Outdoor Display, Inc., 478 F.2d 1388 (C.C.P.A. 1973)

(consent agreement which asserted ten years of

concurrent use without confusion and_ such

marketplace divergence between the goods rendered

confusion unlikely).

The Company cites Jn re Majestic Distilling Co.,

Inc., 315 F.3d 1311 (Fed. Cir. 2003) and CBS, Inc. v.

Morrew, 708 F.2d 1579, 218 U.S.P.Q. 198 (Fed. Cir.

1983) as authority for the alleged “split” in circuit

courts. However, each of these Federal Circuit cases

can be distinguished.

In the Majestic case, the Federal Circuit

determined based upon the facts and circumstances

of that particular case there was no presumption or

an admission of lack of confusion. Majestic, 315 F.3d

at 1311. The Majestic court distinguished the

consent agreement at issue in that case from others

used by courts to confirm lack of confusion. The

Majestic court held that because the consent

agreement contained express disclaimers and

limitations on the use of the mark on products, it

295

could not presume no confusion. Jd. at 1318. Here,

there are no disclaimers or other limitations on the

use of the “Brennan’s” mark. In fact, the 1998

agreement allows Dickie Brennan to use the mark

however and where ever he chooses, just so long as

he abides by the format for usage (e.g. no script

writing, first name is included in the use of the mark

and displayed with equal prominence as the surname

Brennan). Accordingly, the Majestic decision has no

application to the facts and circumstances presented

in the Company’s Petition.

Similarly, in the CBS decision, the Federal

Circuit found that because there was no evidence

that the non-litigant to the consent agreement ever

filed or even considered filing for a trademark, the

consent agreement did not carry much weight. CBS,

708 F.2d at 1582. The CBS court put much credence

in the fact that no application for a trademark was

made. The CBS court noted that registration “gives

the registrant a set of nationwide rights and

statutory presumptions which differ in kind from

those based upon a mere consent to concurrent use of

a trade name in an isolated geographic location.” Jd.

Here, the non-litigant party (Dickie Brennan) to the

1998 Consent Agreement, submitted a trademark

application with the USPTO. The terms of the 1998

Agreement contemplated that he was within his

contractual rights to do so. Unlike the restrictions

contained in the CBS consent agreement, there was

no geographic or other limitations placed upon

Dickie’s right to use the mark. Dickie was granted

unlimited rights to create, register and apply for the

agrecd upon version of the “Brennan’s” mark and use

it anywhere as long as it met the format contained

within the agreement. The Federal Circuit’s CBS

decision is therefore also easily distinguished.

An accurate summary of how the Federal Circuit

considers consent agreements is found in Jn re

N.A.D., Inc., 754 F.2d 996 (Fed. Cir. 1985). The

N.A.D., Inc. court held that a consent given by a

competitor well acquainted with relevant business

practices, when taken together with all of the other

facts was sufficient to overturn the USPTO board

and the Examining Attorney finding of a likelihood

of confusion. ‘The Federal Circuit opined:

Consents come in different forms and under

circumstances in infinite variety. They are,

however, but one factor to be taken into

account with all of the other relevant

circumstances bearing on the likelihood of

confusion referred to in § 2(d). Dynamics

Research Corp. v. Langenau Mfg. Co., 704

F.2d 1575, 217 U.S.P.Q. (BNA) 649 (Fed. Cir.

1983) (likelihood of confusion depends upon all

the facts, or overall facts, of the case). The

board spent much of its opinion analyzing and

dissecting the marks in arriving at its opinion

that they are “confusingly similar,” and then

finding it “axiomatic that confusion is likely

when confusingly similar marks are used to

identify closely related goods and services.”

We have never found anything axiomatic

about the application of § 2(d) to fact

situations, especially when consent

agreements are involved. All aspects of the

fact situation must be appraised and the

situation judged as a whole.

Id. at 999.

Similarly, in Bongrain Int'l (Am.) Corp. v. Delice

de France, Inc., 811 F.2d 1479, 1484-85 (Fed. Cir.

1987), the Federal Circuit reversed a finding by the

Board that confusion was likely between similar

marks for nonidentical goods despite the parties’

presentation to the Board of a detailed consent

agreement. The Federal Circuit criticized the Board

for having “essentially synthesized its own case for

likelihood of confusion... .” The Bongrain court

concluded that the Board “appears effectively to have

ignored the views and conduct of the parties merely

because it harbored a different view from the parties

on likelihood of confusion” and that, “on the basis of

the situation as a whole and in light, at least, of all

13 of the DuPont factors’ upon which Bongrain relied

before the board and here,” it was constrained to find

no likelihood of confusion to exist. Jd. at 1485.

Clearly, the Federal Circuit does not ban the use

of consent-to-use agreements in the multi-factor

likelihood of confusion analysis; instead, it can be

fairly said that the Federal Circuit embraces consent

agreements and allows them to be considered along

with all of the other facts and circumstances

surrounding the alleged confusingly similar mark.

Because the Federal Circuit was the only circuit

court cited by the Company in support of its “split” in

jurisdictions, the Petition must fail because the

“split” simply does not exist.

D. Other Circuit Courts, District Courts

and Trademark Board Decisions Allow

Consent Agreements to Be Considered

in the Determination of the

Likelihood of Confusion Factors.

The Federal Circuit rulings are consistent with

all of the other circuit courts that have considered

the “consent-to-use” agreement. California Fruit

Growers Exchange v. Sunkist Baking Co., 166 F.2d

971(7th Cir. 1947) (where A and B by contract

consent and agree that there will be no confusion by

use of the same mark on closely related food

products, they cannot claim that there will be

confusion from defendant’s use of the mark on other

food); Freedom Card, Inc. v. JPMorgan Chase & Co.,

432 F.3d 463 (8rd Cir. 2005) (plaintiffs consent

agreement and arguments to the PTO constituted

either judicial estoppel, an admission, waiver or

“simply hoisting [plaintiff] on its own petard”);

Croton Watch Co. v. Laughlin, 208 F.2d 93, 96 (2d

Cir. 1953) (court found a recitation contained in the

consent agreement that there was no confusion to be

an “admission,” which could be invoked even by a

person not a party to the consent agreement).

In addition to appellate court jurisprudence,

countless district court cases support Clark and

Blake’s position that consent-to-use agreements are

relevant in the likelihood of confusion determination.

Campbell Soup Co. v. Armour & Co., 81 F. Supp. 114,

120 (D. Pa. 1948), aff'd on other grounds, 175 F.2d

795 (3d Cir. 1949), cert. denied, 338 U.S. 847, 94 L.

Ed. 518, 70 S. Ct. 88, 83 U.S.P.Q. 543 (1949)

(Campbell Soup and Carnation consented to each

other’s use of a red and white banded label and

joined against Armour which used a red and white

label on canned meats - - the court held that the

plaintiffs engaged in “very dubious reasoning” to

argue that there would be public confusion caused by

Armour’s slightly different red and white label);

American Chicle Co. v. Topps Chewing Gum, Inc.,

112 F. Supp. 848 (D.N.Y. 1953), aff'd, 210 F.2d 680,

101 U.S.P.Q. 133 (2d Cir. 1954) (id.); Universal City

Studios, Inc. v. Nintendo Co., 578 F. Supp. 911

(S.D.N.Y. 1983), aff'd on other grounds, 746 F.2d 112,

223 U.S.P.Q. 1000 (2d Cir. 1984) (agreements

whether they be considered licenses or consents to

use have a substantial impact in the likelihood of

confusion analysis); Knaack Mfg. Co. v. Rally

Accessories, Inc., 955 F. Supp. 991, 42 U.S.P.Q.2d

1649 (N.D. Ill. 1997) (consent-to-use agreements with

third parties restrict the scope of the mark and limits

a parties ability to assert infringement); Peyrat v. L.

N. Renault & Sons, Inc., 247 F. Supp. 1009 (S.D.N_Y.

1965) (consent agreement made 14 years previously

settling litigation is a factor to be considered);

Mushroom Makers, Inc. v. R.G. Barry Corp., 441 F.

Supp. 1220, 1231 (S.D.N.Y. 1977), aff'd, 580 F.2d 44

(2d Cir. 1978) (no likelihood of confusion when

plaintiff had previously executed a _ consent

agreement with a third party settling a dispute that

allowed use of the mark for shoes); American Fid. &

Liberty Ins. Co. v. American Fid. Group, 2000 U.S.

Dist. LEXIS 13863, 44-45 (E.D. Pa. Sept. 25, 2000)

(“If an owner of a mark consents to the use of the

same or a similar mark by another in a defined

format, market, or territory, that consent is a factor

to be considered as to the eristence of a likelihood of

confusion in an infringement claim against a third

party for the same or a similar use, but is not

conclusive”).*

The only district court decision cited in support of

the Company’s Petition is Playboy Enterprises, Inc.

v. Chuckleberry Publishing, Inc., 486 F. Supp. 414,

423 n. 10 (S.D.N.Y. 1980). In the Playboy decision,

the district court discussed in a footnote that

* In addition the Trademark Trial and Appeal Board

has adopted a similar analysis. Jn re The Biltmore Company

A/K/A Biltmore Estate, 2002 WL 471795 (Trademark Tr. &

App. Bd.)(a consent agreement between the registrants and

applicant's mark is significantly different in sound, appearance,

and meaning from the cited registrations and confirms finding

that registrations can co-exist without a likelihood of

confusion); In re Pacific Life Insur. Co., 2004 WL 1090645

(Trademark Tr. & App. Bd.) (Board reversed refusal by

Examining Attorney and discussed the application of consent

agreement in the likelihood of confusion analysis). But see,

Andersen Corp. v. Therm-O-Shield International, Inc., 1985 WL

72080 (Trademark Tr. & Appeal Bd.) (consent agreements for

use of sufficiently dissimilar products cannot be used in

estoppel defense); University of Southern California v.

University of South Carolina, 2008 WL 3333839 (Trademark Tr.

& Appeal Bd.) (use of the trademark “SC” by Spellman College,

although some evidence in Carolina’s favor, is not entitled to

significant probative value in the Board’s likelihood of confusion

determination); DC Comics v. Pan American Grain Mfg. Co.,

Inc., 2005 WL 2093233 (Trademark Tr. & Appeal Bd.) (decision

cited by the Company in Petition)(agreement was not clear as to

the specific marks and goods covered and therefore could not

serve as a presumption or an admission that another’s use of

the mark is not likely to cause confusion).

settlement agreements giving consent to use a mark

to another party are not admissible under Rule 408

of the Federal Rules of Evidence. Here, there was no

contemporaneous Rule 408 objection and therefore

this authority is casily distinguished.

Other district court decisions not cited by the

Company support its claim, but are likewise easily

distinguished. Patsy's Italian Restaurant, Inc. v.

Banas, 508 F. Supp. 2d 194 (E.D.N.Y. 2007)

(evidence of the terms of an oral consent agreement

contradictory and enforcement is prohibited by the

statute of frauds); McNeil Laboratories, Inc. v.

American Home Products Corp., 416 F. Supp. 804 (D.

N.J. 1976) (permissions to use suffix “nol” granted to

small manufacturers of no great importance in

considering the “likelihood of confusion” factors.

because of the much more significant market position

of American Home Products in relation to the small

pharmaceutical manufacturer).

E. Summary

Accordingly, there is no “split” in circuit courts.

The “split” is nothing more than a jurisprudential

smokescreen. The Court should therefore deny the

Company’s Petition.

III. Contrary to the Company’s Baseless

Statement in its Petition, the Fifth

Circuit’s Affirmation of the District

Court’s Decision Does Not Result ina

Departure from Established

Precedence.

Contrary to the Company’s statement of the law

of trademark licensing, not all licensing strengthens

a trademark. In fact, some hcenses serve to weaken

one’s trademark resulting in the courts refusing to

allow a party to prosecute infringement actions.

While it is true that the courts allow for licensing

coupled with quality control, it also true that

“naked” licensing is considered tantamount to

abandonment of a trademark and can be used

against a party in the threshold question of whether

a party is estopped from asserting rights to a

trademark. Insufficient controls signal involuntary

trademark abandonment and erode a party’s right to

claim trademark infringement or confusion. As

explained in Moore Business Forms, Inc. v. Ryu, 960

F.2d 486, 489 (5"" Cir. 1992):

A trademark owner may grant a license and

remain protected provided quality control of

the goods and services sold under the

trademark by the licensee is maintained.

Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932

F.2d 1113 (5th Cir.1991), cert. granted in part,

502 U.S. 1071, 112 S.Ct. 964, 117 L.Ed.2d 130

(1992); Denison Mattress Factory v. Spring-Air

Co., 308 F.2d 403 (5th Cir.1962). Without

adequate control of the licensee, a court may

find that the trademark owner has abandoned

the trademark, in which case the owner would

be estopped from asserting rights to the

trademark. Kentucky Fried Chicken Corp. v.

Diversified Packaging Corp., 549 F.2d 368 (5th

Cir.1977); Sheila's Shine Products, Inc. v.

Sheila Shine, Inc., 486 F.2d 114 (5th

Cir.1973).

Here, the Company mischaracterizes the Fifth

Circuit’s opinion by claiming “that the Fifth Circuit

classified all uses of the ‘BRENNAN’S’ mark under

both the 1979 License Agreement and the 1998

Agreement as third party uses instead of uses

sanctioned by Brennan’s Inc. by one of the

agreements.” Petition at 30. To the contrary, the

Fifth Circuit’s opinion makes no mention of licenses.

Furthermore, even if one assumes arguendo that the

Iifth Circuit somehow found the agreements to be

licenses — which Clark and Blake deny — the 1998

agreement is nothing more than a naked license

without the requisite quality controls needed to

ensure quality. Therefore the Company should be

estopped from raising trademark infringement

claims. For these additional reasons, the Court

should deny the Company’s Petition.

TV. Even If a Circuit Court Conflict

Exists, this Case Is a Poor Vehicle for

Resolving It.

Lower courts have produced adequate steps in

analyzing evidence relating to customer confusion in

trademark infringement actions. Even assuming

arguendo that a split exists, this case does not

provide the Court with an adequate vehicle to

address the split because the Company loses no

matter how the law is interpreted. The end result is

the same — the Company has not established the

likelihood of customer confusion and thus is not

entitled to a preliminary injunction. In addition, if

there is a split in circuits, it has existed since 1988,

the date of the CBS decision cited by the Company,

and in the last quarter century there has not been

widespread confusion or lack of uniformity in the

federal system with regard trademark infringement

cases and application of the likelihood of confusion

factors. Finally, the facts are so one-sided that this

case would be decided in favor of Clark and Blake no

matter how the alleged conflict is resolved. For this

additional reason the case is a poor vehicle to resolve

a circuit conflict. Gressman, Geller et al., Supreme

Court Practice (9° ed. 2007) 504. If this Court

wishes to address a conflict among circuits’

application of consent agreements, it should wait for

a meaningful case. This case does not present the

compelling reasons required under Supreme Court

Rule 10 for the grant of certiorari. For these

additional reasons, the Court should deny the

Company’s Petition.

CONCLUSION

For the foregoing reasons, the Court should deny

the Company’s petition for a writ of certiorari.

Respectfully submitted,

Stephen J. Carmody

Counsel of Record

BRUNINI GRANTHAM GROWER &

HEWES PLLC