Stonefire Grill, Inc. v. FGF Brands, Inc.
987 F. Supp. 2d 1023
C.D. Cal.2013Background
- Stonefire Grill (Plaintiff) is a Southern California restaurant chain owning federal and state registrations for “Stonefire Grill” and related design marks for restaurant services; FGF Brands (Defendant) is a Canadian flatbread maker that sells "Stonefire Authentic Flatbreads" (SAF) in retail stores nationwide and registered the mark "Stonefire" for flatbreads.
- Plaintiff sued for federal and state trademark infringement, false designation of origin, unfair competition, and sought cancellation of FGF’s registration; FGF counterclaimed. The Court considered FGF’s motion for summary judgment.
- The parties’ uses of the word “Stonefire” differ in context: Plaintiff’s marks include “Grill” and are used for restaurant services; FGF’s mark includes “Authentic Flatbreads” and is used on packaged grocery products.
- Plaintiff alleged consumer confusion (a handful of anecdotal incidents) and asserted plans to expand into retail; evidence showed Stonefire Grill’s commercial presence is largely local (Southern California) and it has taken few concrete steps to sell retail products.
- FGF offered a likelihood-of-confusion survey showing minimal confusion; Plaintiff offered expert critiques and other evidence. The court excluded certain settlement communications under FRE 408 and rejected many boilerplate evidentiary objections.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether consumers are likely to be confused between Stonefire Grill and SAF (overall likelihood of confusion) | Marks are similar; restaurants commonly expand into retail so consumers will assume a connection | Marks differ in appearance/meaning, channels are distinct, minimal evidence of confusion | No likelihood of confusion; summary judgment for FGF granted |
| Strength of the marks (conceptual/commercial) | SG marks have acquired commercial strength from local advertising and recognition | SG marks are conceptually weak (suggestive) and commercially limited; FGF’s mark has stronger national presence | SG marks are suggestive and weak nationally; this factor favors Defendant |
| Relatedness / marketing channels (goods/services proximity) | Both are food-related and target consumers who want food; therefore related | Restaurant services vs. prepackaged flatbreads are distinct in function, distribution, price, and channels | Goods and channels are not sufficiently related; favors Defendant |
| Evidence of actual confusion & survey weight | Anecdotal instances and expert critique of FGF’s survey show confusion; reverse confusion possible | Anecdotal instances are de minimis; Ford survey shows near-zero confusion; Plaintiff lacks concrete expansion plans | Anecdotal evidence insufficient; survey contested but absence of convincing contradictory survey and Plaintiffs lack of retail plans leave this factor neutral-to-favor Defendant; overall no appreciable confusion |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden-shifting principles)
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment and "scintilla" standard)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (summary judgment — need for concrete evidence)
- Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (likelihood of confusion / Sleekcraft factors)
- Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (survey evidence admissibility and weight)