ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION
THIS CAUSE comes before the Court upon Plaintiffs Motion for Preliminary In *1457 junction, filed October 1,1997. Plaintiff filed a response on December 10, 1997, and the Court held a hearing on the motions on January 8, 9, and 12,1998.
Factual Background
Plaintiff is an eighty-six person company that designs and manufactures retail clothing under the brand name “Bongo.” Defendants own and operate a “theme” restaurant/bar, specializing in Cuban cuisine, named “Bongos Cuban Cafe.”
Plaintiff received its first trademark for “Bongo” in 1985. The trademark applied to clothing, primarily jeans, skirts, pants, shirts, jackets, vests, jump suits, and blouses. Since then, Plaintiff has received several other trademarks for the display of “Bongo” on different kinds of retail apparel. Plaintiffs signature product is a classic American blue jean, which it offers in a variety of designs and colors. Plaintiffs clothing is sold throughout the United States, as well as in some foreign countries. The vast majority of Plaintiffs products are marketed and sold to young women (also known as “juniors”). Plaintiff sells its products through department stores such as Sears, J.C. Penney, and Macy’s and through smaller retail clothing stores such as Denim Works, Denim World, and Jeans Warehouse. Plaintiff advertises primarily through print advertisements in women’s and teen fashion magazines and some television advertisements on the MTV music television network. Plaintiffs products display the word “Bongo” in a variety of type faces, often accompanied by the words “Jeans” and “Authentic” and the slogans “Always American Made,” “Fine American Jeans,” “Authentic American,” and “An American Classic.” Since the company’s inception, Plaintiff has sold a total of approximately $1.5 billion in retail sales.
Defendants’ 500 seat Cuban-theme restaurant opened for business on September 14, 1997, in Downtown Disney, Orlando. Downtown Disney is an entertainment-oriented complex of the Walt Disney World Resort, consisting of various “theme” restaurants and bars, a multiplex movie theater, gift and specialty stores, and other entertainment establishments. There are no other “Bongos Cuban Cafes” in existence. Defendants market their restaurant as a uniquely Cuban entity. This Cuban theme is emphasized by the restaurant’s design, including the display of bongo drums on the furniture and decor, and the restaurant’s menu, which is comprised of exclusively Cuban cuisine. In addition to cuisine, Defendants sell souvenir merchandise, including clothing (i.e. T-shirts, sweatshirts, and hats), in a gift shop adjoining the main dining area. Defendants also sell an array of non-clothing souvenir merchandise like mugs, black beans, cigars, ash trays, and drinking glasses.' As of November 30, 1997, Defendants experienced total sales of $2,462,849.24. Of that amount, $167,640.00 (6.8% of total sales) is attributable to the sale of souvenir clothing items. Defendants’ merchandise products display the word “Bongos” in large type in connection with three logos: (1) a man dressed in Cuban-style clothing playing bongo drums, (2) a woman dressed in Cuban-style clothing dancing and playing maracas, and (3) the silhouette of hands superimposed over both “0”s in BONGOS to convey the impression of hands playing bongo drums. The words “Cuban Cafe” appear on all the merchandise in smaller type directly under “Bongos.”
Plaintiff filed suit in this Court on September 17, 1997, alleging: (1) trademark infringement in violation of the United States Trademark Act of 1946 (also known as the Lanham Act), 15 U.S.C. §§ 1051-1127 (“Lanham Act”); (2) unfair competition in violation of section 1125(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark dilution in violation of both section § 1125(c) of the Lanham Act, 15 U.S.C. § 1125(c) (“Federal Dilution Act”), and Fla.Stat. § 495.151 (“Florida Dilution Act”); and (4) common law unfair competition. Plaintiff now seeks to enjoin Defendants from using in any manner the mark “Bongos Cuban Cafe.”
Legal Standard
To prevail on a motion for preliminary injunction, the plaintiff must establish that: (1) there is a substantial likelihood of success on the merits of the claims; (2) he will suffer irreparable harm in the absence of injunctive relief; (3) the threatened injury to the plaintiff outweighs any potential harm to the defendant as a result of the injunction; and (4) granting the injunction would not be
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adverse to the public interest.
See Haitian Refugee Center, Inc. v. Nelson,
Analysis
At the outset, the Court observes that Plaintiff has requested truly far-reaching relief: the prohibition of Defendants’ use in any manner of the mark “Bongos Cuban Cafe.” Even if the Court were to find that the use of the mark “Bongos Cuban Cafe” in connection with Defendants’ souvenir clothing and even non-clothing merchandise infringes upon Plaintiffs trademark, such a finding would not justify the clearly over broad remedy of enjoining Defendants from using the mark in any context.
See Lever Bros. Co. v. United States,
I. SUBSTANTIAL LIKELIHOOD OF SUCCESS ON THE MERITS
A. Trademark Infringement and Unfair Competition
In order to show substantial likelihood of success on the merits of its trademark infringement and unfair competition claims under the Lanham Act and common law, Plaintiff must present compelling evidence that there is a likelihood that consumers will be confused about the relationship or affiliation between Plaintiffs products and Defendants’ restaurant and merchandise. “Likelihood of confusion” means probable ■confusion rather than mere possible confusion.
Shatel Corp. v. Mao Ta Lumber & Yacht Corp.,
1. Strength of Plaintiff’s Mark
“The primary indicator of trademark strength measures the logical correlation between a name and a product. If a seller of a product or service would naturally use a particular name, it is weakly protected.”
Freedom Sav. & Loan Ass’n v. Way,
Defendants respond that the fact that the term “bongo” is arbitrarily applied to retail clothing makes the mark stronger. Courts in this Circuit have held, however, that even arbitrarily applied common terms are of weaker trademark significance. In
Amstar Corp. v. Domino’s Pizza, Inc.,
Plaintiff also contends that the fact that two of his marks are now “incontestable”
2
makes them inherently strong marks and cites the Eleventh Circuit’s holding in
Dieter
for this proposition.
Plaintiffs mark is further weakened by extensive third party use of the term “bongo.”
See Sun Banks,
*1460 Defendants’ evidence reveals that at least seventy-five businesses other than Plaintiffs throughout the United States have incorporated “bongo” or “bongos” into their marks. There are presently a total of seventeen state and federal registrations and two pending registrations, not including Plaintiffs registrations, for marks incorporating the terms. Before Plaintiff began using the “Bongo” mark, there were seven prior federal registrations incorporating the term. Defendants’ evidence also shows that twenty-two of the third party marks were or are used in connection with restaurant or nightclub services and 12 were or are used in connection with clothing products. Three of the restaurants, “Bongo Burger” in California, “Bongo Java” in Tennessee, and “Bongo’s Beach Bar & Grill” in Florida, sell souvenir merchandise, including T-shirts. After examination of all the evidence, the Court concludes that Plaintiffs use of a common English term combined with the extensive third party use of the term renders it unlikely that Plaintiffs mark will be found to have strong trademark significance.
2. Similarity of the Parties ’ Marks
In determining whether the parties’ marks are similar, the Court must compare the marks’ appearances, sounds, and meanings, as well as the manner in which the marks are used.
Amstar,
The mere fact that both marks incorporate a form of the common word “bongo” does not render the marks similar.
See, e.g., Freedom Sav. & Loan Ass’n,
“Bongo” and “Bongos Cuban Cafe” have distinct appearances and sounds. Plaintiffs “bongo” mark is displayed on clothing in advertising accompanied by slogans conveying the impression that the clothing is classically American or quality American-made. Defendants’ mark, by contrast, is displayed with pictures that convey a uniquely Cuban impression. The decor of Defendants’ establishment, the food served, and much of the souvenir merchandise are uniquely Cuban. Moreover, while Plaintiffs use of “bongo” is simply, as Plaintiff states, “a catchy name under which to market the jeans” with no independent association, (Pl.’s Mem. at 6), Defendants’ use of “Bongos” conjures up images of the musical instrument and the Cuban music associated with it. Moreover, Defendants’ incorporation of the terms “Cuban Cafe” explicitly indicate to the viewer that the associated business is a Cuban restaurant rather than an all-American clothing company. The parties’ marks clearly convey different commercial impressions. See
Amstar,
3. Similarity of Goods and Services
There can be no doubt that a Cuban cafe provides materially different goods and services from a retail clothing company. Plaintiff points out, however, that overlap occurs because Defendants’ gift shop sells souvenir clothing items. The mere fact that Defendants sell some clothing items and Plaintiff specializes in retail apparel does not establish proximity of the goods for the purposes of likelihood of confusion.
See
W.W.W.
Pharm. Co., Inc. v. Gillette Co.,
In order to establish similarity, consumers must be likely to think that Defendants’ goods come from the same source as Plaintiffs goods or are sponsoi’ed or approved by Plaintiff.
See E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc.,
The Court finds, however, that it is unlikely that the products will be confused at the post consumer stage. The words “Cuban Cafe” clearly delineate that Defendants’ clothing products are souvenirs from a restaurant. As Defendants’ evidence imparts, people ai’e accustomed to clothing items that refer to sendees and establishments. Consumers are able to establish the difference between clothing with brand labels on them (i.e. “Guess?” jeans) and clothing sold as souvenirs from commercial establishments (i.e. “Planet Hollywood” T-shirts). The Court agrees with defense counsel’s assertion at the preliminary injunction hearing that “if we were to see a person on the street or at a mail wearing a T-shirt saying ... Lee’s Hungarian Cafe, we would understand that the T-shirt is promoting a restaurant. We would not be at all likely to assume that the T-shirt was made by the company that makes Lee Jeans.”
Moreover, Defendants’ clothing merchandise only comprises 6.8% of Defendants’ business. Thus, the vast majority of Defendants’ business is extremely dissimilar from Plaintiffs business. Finally, Plaintiff concedes that it does not have evidence that Defendants’ products have been confused for its products. Thus, because Plaintiff has not shown that it is likely that the consumer public will mistake Defendants’ products for Plaintiffs merchandise, Plaintiff has not shown that the goods and services are similar.
4. Similarity of Retail Outlets and Customers
Plaintiff is unlikely to prove that the parties’ retail outlets and customers are similar. Defendants only sell their, clothing merchandise in a shop adjoining their one restaurant in Downtown Disney, Orlando. Plaintiff sells its products in shopping centers and smaller retail clothing stores all over the country. Plaintiffs customers are primarily females who wear junior apparel, while Defendants’ customers are primarily tourists visiting the Walt Disney World Resort. Although Defendants’ clientele may include members of Plaintiffs clientele and vice versa, the two customer classes are not one and the same.
5. Similarity of Advertising Media
Plaintiff contends that the advertising media employed by the parties are “substantially similar,” while Defendants contend that they are “entirely distinct.” Plaintiffs principal advertisements are glossy color print advertisements in fashion and teen magazines such as Seventeen, Glamour, Teen, Elle, and Cosmopolitan, as well as some television advertisements on MTV. Plaintiff points out that its Latin American distributors also advertise in Spanish-lan *1462 guage magazines. Defendants, on the other hand, advertise their restaurant/bar through radio advertisements, print advertisements in newspapers such as The Orlando Sentinel, The Tampa Tribune, and The Miami Herald, and travel and locality-related magazines such as Travel Host and South Florida Magazine. Defendants also advertise on Spanish-language radio and in Spanish-language newspapers. The fact that some of Plaintiffs Latin American distributors and Florida distributors might advertise in some of the same magazines and newspapers as Defendants may prevent the parties’ advertising media from being “entirely distinct.” The Court, however, finds absolutely no evidence that the parties’ advertising media are “substantially similar.” Rather, it is clear that the parties’ advertising media are substantially different, although there is the slight potential for overlap in certain areas. Moreover, none of Defendants’ advertising refers to the merchandise sold in Defendants’ gift shop. All advertising refers exclusively to the restaurani/bar.
6. Actual Confusion
Plaintiff has presented no competent evidence
3
that actual confusion of the parties’ products has occurred. In fact, Plaintiff admits that it is “presently unaware of any instances of actual confusion.” (Pl.’s. Mem. at 9). Although, as Plaintiff points out, “[t]he law is well settled in this circuit that evidence of actual confusion between trademarks is not necessary to a finding of likelihood of confusion,”
E. Remy Martin,
7. Defendants’Intent
Plaintiff has not presented evidence that Defendants acted in bad faith by naming their restaurant “Bongos Cuban Cafe.” To determine whether a defendant has acted in bad faith, a court must examine “whether the defendant adopted its mark with the intention of capitalizing on plaintiffs reputation and goodwill and any confusion between his and the senior user’s product.”
The Sports Authority, Inc. v. Prime Hospitality Corp.,
Consequently, after careful examination of the seven factors in the likelihood of confusion test, the Court concludes that Plaintiff has not made an adequate showing that there is a likelihood that consumers will confuse its products with Defendants’ products. As a *1463 result, Plaintiff does not have a substantial likelihood of succeeding on its trademark infringement or unfair competition claims.
B. Trademark Dilution
The trademark dilution remedy allows an owner of a uniquely famous trademark to prevent subsequent use of the mark even where there is no likelihood of confusion, as in cases involving completely different products. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:68, at 24-112 (4th ed.1997). Congress has provided examples of marks constituting trade dilution: “Dupont shoes,” “Buick aspirin,” “Kodak pianos.” H.R .Rep. No. 874 (1995), 1995 U.S.C.C.A.N. 1029,1031. ' To warrant protection from dilution, a trademark must be especially famous and distinctive. See McCarthy, supra § 24:92, at 24-144. The Federal Dilution Act provides:
In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to—
(A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered----
15 U.S.C. § 1125(c)(1).
While the Court recognizes that Plaintiff has registered his mark and that Plaintiff extensively advertises his mark in certain markets, namely the junior women’s apparel market, the Court finds that Plaintiffs mark is not so inherently distinctive and famous as to rise to the level of “Buick” or “Dupont.” To be inherently distinctive, a mark must “clearly be more than just distinctive in a trademark sense,”
King of the Mountain Sports, Inc. v. Chrysler Corp.,
Moreover, the duration of Plaintiffs use of the mark contradicts the contention that the mark is uniquely famous. Plaintiff has used the mark “Bongo” for fifteen years, which has been generally held an insufficient amount of time for a mark to become famous.
See, e.g., Star Markets, Ltd. v. Texaco, Inc.,
In addition, even if the Court were to assume,
arguendo,
that Plaintiffs mark is famous, Plaintiff does not have evidence that dilution is likely to occur. Courts employ a six factor test to determine likelihood of dilu
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tion: (1) similarity of the marks; (2) similarity of the products; (3) sophistication of customers; ■ (4) predatory intent; (5) renown of senior mark, and (6) renown of junior mark.
See, e.g., Ringling Brothers-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp.,
The Florida Dilution Act permits a court to enjoin the user of the “same or similar mark ... if it appears to the court that there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the mark.” Fla.Stat. § 495.151. In addition to the statutory requirement that the marks be similar, Florida courts require the prior user’s mark to be distinctive.
See, e.g., Great Southern Bank v. First Southern Bank,
A trademark is sufficiently distinctive to be diluted by a nonconfusing use if the mark retains its source significance when encountered outside the context of the goods or services "with which it is used by the trademark owner. For example, the trademark KODAK evokes an association with the cameras sold under that mark whether the word is displayed with the cameras or used in the abstract.
Because the Florida Dilution Act, like the Federal Dilution Act, requires distinctiveness and similarity, Plaintiff’s claim under the Florida Dilution Aet must also fail for reasons set forth above.
Plaintiffs failure to show a substantial likelihood of success on the merits of his substantive causes of action is alone sufficient ground for the denial of the preliminary injunction.
5
See Swatch Watch, S.A. v. Taxor, Inc.,
II. IRREPARABLE HARM TO PLAINTIFF IN ABSENCE OF INJUNCTION
Plaintiff contends that it will suffer irreparable harm if the Court does not enjoin Defendants’ use of the name “Bongos Cuban Cafe.” Plaintiff argues that irreparable harm is presumed when there is a strong showing of likelihood of confusion, while Defendants assert that courts do not presume irreparable harm. Indeed, there is a split among courts in this Circuit as to whether irreparable harm is presumed from a finding of likelihood of confusion.
Compare E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc.,
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Moreover, Defendants have presented evidence of extensive third party use, which has not caused irreparable damage to Plaintiff. This seriously undermines Plaintiffs contention that irreparable harm will occur if Defendants’ use continues. Finally, Plaintiff has not demonstrated how confusion between its products and Defendants’ products would harm Plaintiffs reputation. Id. at 1188 (“potential injury to one’s reputation is the gravamen of trademark infringement”). Because Plaintiff has not shown that consumer confusion is likely or that Defendants’ use of the term “Bongos” will actually cause irreparable harm to Plaintiffs reputation, the Court finds that Plaintiff has not shown that irreparable injury would occur in the absence of an injunction.
III. POTENTIAL HARM TO DEFENDANTS
Plaintiff has asked for the broad relief that this Court enjoin Defendants from using the name “Bongos Cuban Cafe” in any manner. Evidence presented to the Court reveals that the name “Bongos Cuban Cafe” is incorporated into virtually every aspect of Defendants’ restaurant. Enjoining the use of “Bongos Cuban Cafe” would not only make Defendants’ merchandise worthless, but it would also require Defendants to reconstruct a restaurant that took 2 years and $5 million to build. Plaintiff asserts that any harm to Defendants is justified by “Defendants’ tortious and malicious conduct.” (Pl.’s Mem. at 15). Even assuming that tortious and malicious conduct by a defendant relieves the Court of the need to analyze harm to the defendant, the Court has found Defendants’ conduct to be neither tortious nor malicious. As a result, the great harm posed to Defendants by such an injunction is not justified.
IV. PUBLIC INTEREST
Plaintiff contends that the public interest is served when a Court prevents consumers from being confused by deceptive products. Again, the Court has already found that Plaintiff has not shown that a likelihood of consumer confusion exists. The Court recognizes the public’s ability to distinguish the “Bongos Cuban Cafe” theme restaurant and related souvenir products from “Bongo” retail juniors apparel. Consequently, the public interest will not be served by preventing public consumption of “Bongos Cuban Cafe” food and goods.
Conclusion
Plaintiff has not established the requisite elements for a preliminary injunction. Because the Court finds that immediate equitable relief is not warranted, it declines to grant Plaintiff the “extraordinary remedy” of a preliminary injunction.
See Tefel v. Reno,
Accordingly, after careful review of the record, and the Court being otherwise fully advised, it is
ORDERED and ADJUDGED that the Plaintiffs Motion for Preliminary Injunction be, and the same is hereby, DENIED.
DONE AND ORDERED in chambers at the James Lawrence King Federal Justice Building and United States Courthouse, Miami, Florida, this 12th day of February, 1998.
Notes
. In
Bonner v. City of Prichard,
. Five years after registering a mark, the holder may file an affidavit under § 1065 of the Lanham Act and have its mark declared "incontestable.” 15U.S.C. § 1065(3).
. Plaintiff presents a memorandum that indicates that a caller mistook. Plaintiffs offices for Defendants’ restaurant. This memorandum is inadmissible hearsay and thus of no evidentiary value.
See Ocean Bio-Chem, Inc. v. Turner Network Television, Inc.,
. Defendants offers a survey to show that no actual confusion has occurred. Plaintiff contends that the introduction of the survey violates the parties’ agreement to abstain from investigating actual confusion. The Court need not resolve this dispute, however, because it did not rely on the survey in concluding that actual confusion is lacking. Rather, the Court reached its conclusion based on the lack of any competent evidence of actual confusion.
. On January 20, 1998, after the preliminary injunction hearing, Plaintiff filed a Supplemental Memorandum setting forth an additional cause of action for "reverse confusion." "Reverse confusion occurs when a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user.... [T]he senior user is injured because the public comes to assume that the senior user's products are really the junior user’s or that the former has become somehow connected to the latter.”
Sands, Taylor & Wood Co. v. Quaker Oats Co.,
The substance of Plaintiff's reverse confusion claim consists of the allegation that a Ft. Lauder-dale radio station, Y-100, urged its listeners to ban "Bongo” jeans to prove the point that customers could distinguish "lunch from jeans.” (PI.'s Supp.Mem. at 2). Plaintiff's evidence of this allegation consists solely of hearsay statements.
Even if this claim were properly before the Court and supported by admissible evidence, it would still fail on the merits. It would be a stretch of logic and law, indeed, to hold that the public's backlash against what it perceives to be a frivolous law suit constitutes reverse confusion. If anything, it constitutes just the opposite. Y-100 listeners think that confusion, reverse or otherwise, is so unlikely that they desire to protest against Plaintiff's law suit.