Helpful Hound, L.L.C. v. New Orleans Building Corp., et al., No. 2:2018cv03500 - Document 58 (E.D. La. 2018)

Court Description: ORDER AND REASONS granting 18 Motion for Preliminary Injunction as stated herein. Signed by Judge Sarah S. Vance on 8/7/2018. (Reference: All cases)(cg)

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Helpful Hound, L.L.C. v. New Orleans Building Corp., et al. Doc. 58 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA HELPFUL HOUND, L.L.C. VERSUS NEW ORLEANS BUILDING CORPORATION AND CITY OF NEW ORLEANS CIVIL ACTION NO. 18-350 0 c/ w 18-3594 SECTION “R” (2) PRELIMIN ARY IN JU N CTION ORD ER AN D REASON S New Orleans Building Corporation and the City of New Orleans m ove to prelim inarily enjoin Helpful Hound, L.L.C. and related parties from using the m ark “St. Roch Market” at locations other than the food halls of the sam e nam e in New Orleans and Miam i. 1 The Court issues the prelim inary injunction contained in this Order for the reasons discussed below. I. BACKGROU N D This case arises out of a dispute over use of the name “St. Roch Market.” The original St. Roch Market is located at 2381 St. Claude Avenue, on the neutral ground of St. Roch Avenue. It is one of the few rem nants of the once-extensive network of public markets in New Orleans. 2 According to 1 2 R. Doc. 18. R. Doc. 18-6 at 1. Dockets.Justia.com defendants, St. Roch Market dates back to 1838, when an open-air market was built at the site. 3 It was originally known as Washington Market, just as St. Roch Avenue used to be known as Washington Avenue. 4 The present structure was designed and built in 1875. 5 According to the City, the m arket was enclosed in 1914, and rebuilt in 1937 by the Works Progress Adm inistration. 6 By 1964, the m arket had acquired its distinctive signage: 7 Figure 1: St. Roch Market, January 28, 1964 3 R. Doc. 21 at 2. Id. 5 See J effrey Chusid et al., St. Roch Market: Historic Structure Report and Rehabilitation Study 8 (J uly 19, 20 0 6), http:/ / projectneworleans.org/ urbananalysis/ strochm arketbook.pdf. 6 Case No. 18-3594, R. Doc. 1 at 7-8 ¶¶ 21-22. 7 Case No. 18-3594, R. Doc. 1-3. 2 4 The City leased stalls in St. Roch Market to various food vendors until 1945. 8 From 1945 until the 1990 s, the City leased the m arket to the Lam a fam ily, who first operated a seafood m arket and po-boy restaurant at the site before converting the space to a superm arket in 1954. 9 The City then leased the space to a different tenant, which operated a seafood m arket, po-boy restaurant, and Chinese food restaurant until the space was dam aged by Hurricane Katrina in 20 0 5. 10 The City renovated St. Roch Market between 20 12 and 20 14. 11 The renovation cost $ 3,258,873.77, of which the City contributed $ 555,459.34. 12 The City then sought a m aster tenant to operate the property. 13 On May 10 , 20 14, defendant Will Donaldson subm itted a proposal on behalf of a com pany called Launch Pad. 14 Launch Pad proposed to “replicate the original St. Roch Market through the installation of 15 independent, local food vendors, each selling fresh and prepared foods seven days a week.”15 8 R. Doc. 18-6 at 1. Id. at 1-2. 10 Id. at 2. 11 R. Doc. 18-8 at 1-2. 12 Id. at 1. The rest of the m oney cam e from FEMA ($ 1,169,0 46.17) and the Departm ent of Housing and Urban Development’s Com m unity Development Block Grant program ($ 1,534,368.26). Id. 13 See R. Doc. 57 at 7. 14 R. Doc. 18-11. 15 Id. at 1. 3 9 On September 29, 20 14, New Orleans Building Corporation (NOBC) leased the building to Bayou Secret, LLC, which was allegedly established by Donaldson and his business partners. 16 The lease places a number of restrictions on Bayou Secret’s use of the building. For exam ple, the lease requires Bayou Secret to operate “a full service neighborhood restaurant” and “fresh foods m arket using m ultiple vendors in a ‘stalls’ concept.”17 According to the lease, “[i]t is important to [NOBC] that the fresh and prepared foods m arket concept remain intact.”18 Exhibit D to the lease provides that Bayou Secret “m ay utilize existing typeface logo for the St. Roch Market as is presently posted on the building and replicate this logo in additional locations of the building.”19 According to Bayou Secret, it “has successfully operated St. Roch Market as a southern food hall featuring a diverse lineup of food and beverage purveyors.”20 Bayou Secret’s responsibilities allegedly include identifying, securing, and m anaging the m arket’s vendors, cleaning and 16 17 18 19 20 R. Doc. 18-9 at 1; R. Doc. 21-1. R. Doc. 21-1 at 5. Id. Id. at 42. R. Doc. 1 at 3 ¶ 19. 4 m aintaining the prem ises, and perform ing adm inistrative functions for the m arket. 21 Bayou Secret opened a second food hall in New Orleans, called “Auction House Market,” in 20 18. 22 Bayou Secret allegedly displayed a m arketing banner using the “St. Roch Market” m ark at this location in December 20 17. 23 After NOBC CEO Cynthia Connick raised this issue with Bayou Secret, the banner was rem oved. 24 Bayou Secret and related entities also opened a food hall called “St. Roch Market” in Miam i in 20 18. 25 Various newspaper articles and Bayou Secret’s website report that Bayou Secret has plans to open additional food halls called “St. Roch Market” in other locations, including Chicago and Nashville, Tennessee. 26 The City and NOBC have not consented to the opening of additional of food halls under the name “St. Roch Market.”27 Helpful Hound, L.L.C. (allegedly a mem ber of Bayou Secret) applied for registration of “St. Roch Market” on April 6, 20 17. 28 The U.S. Patent and 21 22 23 24 25 26 27 28 Id. ¶ 18. R. Doc. 18-9 at 2. Id. Id. Id. Id.; see also R. Docs. 18-2, 18-3, 18-4. R. Doc. 18-9 at 2. Case No. 18-3594, R. Doc. 1-5 at 51. 5 Tradem ark Office (PTO) refused registration on the Principal Register on the ground that the m ark was prim arily geographically descriptive. 29 The PTO allowed registration on the Supplem ental Register on September 19, 20 17. 30 In April 20 18, the City and Helpful Hound filed competing applications for registration of “St. Roch Market” on the Principal Register. 31 Both applications rem ain pending. The PTO initially refused registration of the City’s m ark, again on the ground that it is prim arily geographically descriptive. 32 On J uly 5, 20 18, the PTO approved the City’s m ark for publication on the Principal Register, 33 but then withdrew it on August 1. 34 On August 3, the PTO refused registration to the City because of a likelihood of confusion with Helpful Hound’s Supplemental Register m ark. 35 See 15 U.S.C. § 10 52(d) (providing that a tradem ark application m ay be refused if it “com prises a m ark which so resembles a m ark registered in the [PTO], or a 29 R. Doc. 21-2 at 2. Case No. 18-3594, R. Doc. 1-5 at 1. 31 R. Doc. 18-7; R. Doc. 18-13. 32 R. Doc. 49-5 at 2. 33 R. Doc. 57 at 9. 34 See PTO, Trademark Status & Docum ent Retrieval, Serial No. 87890 988, http:/ / tsdr.uspto.gov/ # caseNumber=87890 988&caseSearchType=US_ AP PLICATION&caseType=DEFAULT&searchType=statusSearch. 35 PTO Office Action, Serial No. 87890 988 (Aug. 3, 20 18), http:/ / tsdr.uspto.gov/ docum entviewer?caseId=sn87890 988&docId=OOA 20 180 80 3110 20 7# docIndex=0 &page=1. 6 30 m ark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion”). Also on August 3, the PTO refused Helpful Hound’s application on the ground that the m ark is primarily geographically descriptive. 36 The City and Helpful Hound have not yet responded to these August 3 office actions. The PTO’s actions in these proceedings do not directly affect whether the City is entitled to prelim inary injunctive relief in this case. See Viacom Int’l v. IJR Capital Invs., L.L.C., 891 F.3d 178, 185 (5th Cir. 20 18) (noting that federal law protects valid though unregistered tradem arks); Union N at’l Bank of Tex., Laredo v. Union N at’l Bank of Tex., Austin, 90 9 F.2d 839, 842 (5th Cir. 1990 ) (“Ownership of tradem arks is established by use, not by registration.”). On April 3, 20 18, Helpful Hound brought a declaratory judgm ent action against the City and NOBC. 37 Helpful Hound’s com plaint seeks a declaration of noninfringem ent and a declaration that the registration of its service m ark was proper. 38 The City and NOBC (collectively, plaintiffs) filed suit the next day against Bayou Secret, St. Roch F&B, LLC, Helpful Hound, 36 PTO Office Action, Serial No. 87860 766 (Aug. 3, 20 18), http:/ / tsdr.uspto.gov/ docum entviewer?caseId=sn87860 766&docId=OOA2 0 180 80 2135650 # docIndex=0 &page=1. 37 R. Doc. 1. 38 Id. at 6 ¶¶ 37-38. 7 St. Roch Design District, LLC, Will Donaldson, Barre Tanguis, and David Donaldson (collectively, defendants). 39 num ber of claim s, including Plaintiffs’ com plaint asserts a tradem ark cancellation, tradem ark infringement, tradem ark dilution, unfair com petition, breach of tradem ark license or im plied tradem ark license, breach of contract, and unauthorized use of assum ed nam e of a governmental entity. On May 4, 20 18, plaintiffs m oved for a prelim inary injunction to enjoin defendants “from using the designation ‘St. Roch Market’ or any other confusingly similar designation in connection with any business” at any location other than 2831 St. Claude Avenue in New Orleans and defendants’ Miam i location. 40 39 Case No. 18-3594, R. Doc. 1. According to plaintiffs’ com plaint, Bayou Secret changed its nam e to St. Roch F&B in J une 20 16. Id. at 4 ¶ 5. St. Roch Design District operates “St. Roch Market” in Miam i; Will Donaldson is a m anager of Helpful Hound and St. Roch Design District; Barre Tanguis is a m ember of Helpful Hound and a m anager of St. Roch Design District; and David Donaldson is a m ember of Helpful Hound. Id. at 4-5 ¶¶ 8-11. 40 R. Doc. 18; R. Doc. 18-15 (proposed order). Ultim ately, plaintiffs also seek to enjoin the use of the m ark at the Miam i location. Indeed, NOBC sent a cease-and-desist letter to Bayou Secret and Helpful Hound regarding the Miam i location in J anuary 20 18. R. Doc. 18-9 at 2. Plaintiffs state that they nevertheless chose not to seek a prelim inary injunction against the Miam i location because “an injunction at that already-open location presents difficult irreparable harm and balance of the harm issues.” R. Doc. 18-1 at 2. At oral argum ent, counsel for plaintiffs further explained that the prelim inary injunction would m erely preserve the status quo. 8 II. LEGAL STAN D ARD A party m ay obtain a prelim inary injunction only if: (1) there is a substantial likelihood that the m ovant will prevail on the m erits; (2) there is a substantial threat that the m ovant will suffer irreparable harm if the injunction is not granted; (3) the threatened injury to the m ovant outweighs the potential injury to the nonm ovant; and (4) the prelim inary injunction will not disserve the public interest. Guy Carpenter & Co., Inc. v. Provenzale, 334 F.3d 459, 464 (5th Cir. 20 0 3). When evaluating whether the m ovant has satisfied these requirem ents, the Court must remember that “[a] prelim inary injunction is an extraordinary remedy which courts grant only if the m ovant has clearly carried the burden as to all four elements.” Id. Granting a prelim inary injunction is “the exception rather than the rule.” Miss. Pow er & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th Cir. 1985). III. D ISCU SSION A. Trad e m ark In frin ge m e n t Plaintiffs first seek a prelim inary injunction based on trademark infringement under the Lanham Act. See 15 U.S.C. §§ 10 51, et seq. The Lanham Act provides a cause of action for tradem ark infringement against a 9 person who “uses (1) any reproduction, counterfeit, copy[,] or colorable im itation of a m ark; (2) without the registrant’s consent; (3) in com m erce; (4) in connection with the sale, offering for sale, distribution[,] or advertising of any goods; (5) where such use is likely to cause confusion, or to cause m istake or to deceive.” Am . Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 20 0 8) (quoting Boston Prof’l Hockey Ass’n v. Dall. Cap & Em blem Mfg., 510 F.2d 10 0 4, 10 0 9-10 (5th Cir. 1975)). The Fifth Circuit has spoken directly to what a party m ust show in order to obtain a prelim inary injunction for tradem ark infringement: First, he m ust prove that the nam e he seeks to protect is eligible for protection. He m ust then prove he is the senior user. Having proven these elem ents he m ust then show a likelihood of confusion between his m ark and that of the defendant. Finally, because he is asking for the equitable remedy of an injunction, he m ust show that the likelihood of confusion will actually cause him irreparable injury for which there is no adequate legal remedy. Union N at’l Bank, 90 9 F.2d at 844; see also Paulsson Geophy sical Servs., Inc. v. Sigm ar, 529 F.3d 30 3, 30 9 (5th Cir. 20 0 8). 1. Pr o t e ct a b ilit y The Lanham Act defines a service mark (i.e., a trademark used for services rather than goods) as “any word, name, sym bol, or device, or any com bination thereof . . . used by a person . . . to identify and distinguish the services of one person . . . from the services of others and to indicate the 10 source of the services, even if that source is unknown.” 15 U.S.C. § 1127; see also Am azing Spaces, Inc. v. Metro Mini Storage, 60 8 F.3d 225, 236 (5th Cir. 20 10 ). A m ark m ust be distinctive to be protectable. Am azing Spaces, 60 8 F.3d at 237. Certain m arks, including words “that are ‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film ), or ‘suggestive’ (‘Tide’ laundry detergent) are held to be inherently distinctive.” W al-Mart Stores, Inc. v. Sam ara Bros., 529 U.S. 20 5, 210 -11 (20 0 0 ). Marks that are not inherently distinctive m ust acquire “secondary meaning” to be protectable. Id. at 211. The parties agree that the m ark is protectable; each side seeks to protect it against the other’s use. The Court nevertheless addresses this element because the Patent and Tradem ark Office (PTO) refused registration on the Principal Register. 41 “[R]egistration of a m ark with the PTO constitutes prim a facie evidence that the m ark is valid and that the registrant has the exclusive right to use the registered mark in com merce with respect to the specified goods or services.” Am azing Spaces, 60 8 F.3d at 237. As noted earlier, lack of registration is not fatal to a tradem ark infringem ent claim because “the Lanham Act ‘protects qualifying unregistered m arks.’” Viacom Int’l, 891 F.3d at 185 (quoting Sugar Busters LLC v. Brennan, 177 F.3d 258, 267 (5th Cir. 1999)). The PTO found that “St. Roch Market” was 41 R. Doc. 21-2 at 2. 11 not registrable because it was m erely descriptive. Specifically, the m ark was “geographically descriptive of the origin of the applicant’s services.”42 See 15 U.S.C. § 10 52(e). The PTO added the m ark to the Supplem ental Register, 43 which m eans that the PTO regarded “St. Roch Market” as “capable of” distinctiveness. 15 U.S.C. § 10 91(a); see also T-Mobile US, Inc. v. AIO W ireless LLC, 991 F. Supp. 2d 888, 90 9 (S.D. Tex. 20 14) (“While supplem ental registration does not create a statutory presumption of validity, the m ark m ay still become distinctive and legally protectable through its use in com m erce.”). “A m ark is geographically descriptive if it describes to consum ers the geographic origin of the goods or services rather than the source of the goods or services.” Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1538 (S.D. Tex. 1996) (citing Burke-Parsons-Bow lby Corp. v. Appalachian Log Hom es, Inc., 871 F.2d 590 , 594 (6th Cir. 1989)). A mark is not descriptive m erely because it contains a geographic term , especially if “the geographic m eaning is m inor, obscure, rem ote, or unconnected with the goods.” W orld Carpets, Inc. v. Dick Littrell’s N ew W orld Carpets, 438 F.2d 482, 486 (5th Cir. 1971); see also id. (“Additionally, it has been noted that a m ark is not 42 43 Id. Case No. 18-3594, R. Doc. 1-5 at 1. 12 prim arily geographically descriptive if (1) it does not identify the place or the region from which the goods com e, or (2) it does not suggest that the goods com e from the place or region named by the m ark.”). But a m ark is geographically descriptive if “a logical connection can be m ade between the product and the geographical term.” Burke-Parsons-Bow lby , 871 F.2d at 595. As an initial m atter, the Court distinguishes between use of the m ark in New Orleans and prospective use of the m ark in other cities. See Sarco Creek Ranch v. Greeson, 36 F. Supp. 3d 726, 733 (S.D. Tex. 20 14) (“[T]he services-place association is evaluated ‘from the perspective of the relevant public for those services.’” (quoting In Re MCO Props. Inc., 38 U.S.P.Q.2d 1154 (T.T.A.B. Nov. 27, 1995)). Like the PTO, the Court finds that use of the m ark in New Orleans is geographically descriptive. St. Roch is the nam e of the avenue on which the m arket is located, and is one name for the neighborhood in which it is situated. The geographic elem ent of the m ark is clearly connected to the services provided by St. Roch Market in New Orleans. Thus, the m ark identifies the place where the services are provided. This association between place and services makes St. Roch Market geographically descriptive for consum ers in the New Orleans area. 13 Potential consum ers in Chicago, Nashville, and other cities far afield likely would not m ake the sam e association. St. Roch—unlike, say, the French Quarter—is not a place nam e that is generally recognizable by the Am erican public. Cf. In re The N ew bridge Cutlery Co., 776 F.3d 854, 862 (Fed. Cir. 20 15) (substantial evidence did not support “[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant Am erican public”). Nor is there any reason to believe that the neighborhood of St. Roch would be any less obscure to potential customers at defendants’ prospective food halls. Thus, the use of the m ark outside the New Orleans area is inherently distinctive rather than geographically descriptive. Because plaintiffs have used the m ark only in New Orleans, they m ust show secondary m eaning in order to establish the protectability of the m ark. Secondary m eaning “occurs when, ‘in the m inds of the public, the prim ary significance of a [m ark] is to identify the source of the product rather than the product itself.’” W al-Mart, 529 U.S. at 211 (quoting Inw ood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, n.11 (1982)); see also Restatem ent (Third) of Unfair Com petition § 13 cm t. e (1995) (“Secondary m eaning exists only if a significant num ber of prospective purchasers understand the term, when used in connection with a particular kind of good, service, or business, 14 not m erely in its lexicographic sense, but also as an indication of association with a particular, even if anonym ous, entity.”). “Secondary m eaning ‘in connection with geographically descriptive m arks m eans that the m ark no longer causes the public to associate the goods with the geographical location, but to associate the goods with a particular product or source of the product.’” Sarco Creek Ranch, 36 F. Supp. 3d at 732 (citation om itted). A party’s burden of dem onstrating secondary m eaning “is substantial and requires a high degree of proof.” N ola Spice Designs, L.L.C. v. Hay del Enters., Inc., 783 F.3d 527, 544 (5th Cir. 20 15) (quoting Test Masters Educ. Servs. v. Singh, 428 F.3d 559, 567 (5th Cir. 20 0 5)). In evaluating whether a m ark has acquired secondary meaning, courts consider the following factors: (1) length and m anner of use of the m ark or trade dress, (2) volum e of sales, (3) am ount and m anner of advertising, (4) nature of use of the m ark or trade dress in newspapers and m agazines, (5) consum er-survey evidence, (6) direct consum er testim ony, and (7) the defendant’s intent in copying the mark. Viacom , 891 F.3d at 190 (quoting Test Masters Educ. Servs. v. Robin Singh Educ. Servs., Inc., 799 F.3d 437, 445 (5th Cir. 20 15)). The inquiry is prim arily em pirical. N ola Spice, 783 F.3d at 544. Survey evidence is “the m ost direct and persuasive way of establishing secondary m eaning,” but it is not necessary. Id. (quoting Am azing Spaces, 60 8 F.3d at 248). 15 Because the protectability of the m ark is uncontested, the parties provide little evidence of secondary meaning. Nevertheless, it is clear that St. Roch Market has long been used as the nam e of a specific food m arket in New Orleans. Both parties state that St. Roch Market has been known as such since the late 180 0 s. 44 Attached to plaintiffs’ com plaint is a photograph dated J anuary 28, 1964, portraying St. Roch Market with its distinctive sign. 45 The photograph shows an additional sign, which reads “Lam a’s Meat Market.” The Lama fam ily later relocated their business—now a restaurant called “Lam a’s St. Roch”—to Mandeville, Louisiana. 46 Their website em phasizes the restaurant’s connection to St. Roch Market. 47 The Lam a fam ily’s continued use of the nam e “St. Roch” outside of the St. Roch neighborhood indicates an association between the nam e and the provision of food that transcends geographic boundaries. This undisputed evidence, though lim ited, suggests a lengthy use of the m ark in connection with the 44 See R. Doc. 18-1 at 3; R. Doc. 21 at 2. Case No. 18-3594, R. Doc. 1-3. 46 See R. Doc. 21 at 14; see also Lam a’s St. Roch, https:/ / www.strochm andeville.com (last visited J une 18, 20 18). 47 See Lam a’s St. Roch, https:/ / www.strochm andeville.com/ about (last visited J une 18, 20 18) (“By 1947 the fam ily stepped into the New Orleans St. Roch Market and quickly becam e the area’s favorite place for seafood of all kinds, St. Roch Seafood became a staple business in the com m unity and continued to serve the New Orleans area as the sole occupant of the Market for over 50 years.”). 16 45 provision of food. Cf. Resorts of Pinehurst, Inc. v. Pinehurst N at’l Corp., 148 F.3d 417, 421 (4th Cir. 1998) (agreeing with district court’s finding of secondary meaning because “the undisputed evidence showed that PINEHURST had been used in connection with [plaintiff’s] golf courses since the turn of the century”). Thus, the secondary meaning of St. Roch Market is that of a specific food m arket in New Orleans. Defendants, like the Lam a fam ily, seek to capitalize on this secondary m eaning. For exam ple, a screenshot of defendants’ website for its Miam i location states that “St. Roch Market is a contem porary, multi-vendor food hall brand, hailing from New Orleans,” and that “[t]his popular New Orleans food hall has m ade its way down to Miam i.”48 Another screenshot from the website gives a brief history of St. Roch Market in New Orleans. 49 These deliberate associations suggest that defendants themselves believe the m ark has “secondary meaning that could influence consum ers, which further supports the conclusion that there is secondary m eaning here.”50 Bd. of 48 R. Doc. 18-12 at 3. Id. at 6. 50 Of course, the m eaning of “St. Roch Market” created by defendants in Miam i and other cities is not technically “secondary” because the m ark is inherently distinctive there. Moreover, defendants’ use of the m ark outside New Orleans is not necessarily indicative of the m ark’s meaning in the New Orleans area. But this use in other cities suggests a nascent association between the mark and the provision of food services in the m inds of the Am erican public, millions of whom visit New Orleans each year. See J ennifer 17 49 Supervisors for La. State Univ. Agric. & Mech. Coll. v. Sm ack Apparel Co., 550 F.3d 465, 477 (5th Cir. 20 0 8). In light of this evidence, it is substantially likely that plaintiffs will be able to establish secondary meaning of the mark in the New Orleans area. Thus, it is substantially likely that the m ark is protectable both in New Orleans (where it is has secondary m eaning) and in cities far afield (where the m ark is inherently distinctive). 2. Use The parties chiefly dispute whose use of the m ark is senior. “The first one to use a mark is generally held to be the ‘senior’ user and is entitled to enjoin other junior users from using the m ark, or one that is deceptively sim ilar to it, subject to lim its im posed by the senior user’s m arket and natural area of expansion.” Union Nat’l Bank, 90 9 F.2d at 842-43. The senior user’s use m ust be continuous up until the present, 2 McCarthy on Tradem arks and Unfair Com petition § 16:9 (5th ed. 20 18), although some evolution in use is tolerated, id. § 17:24; see also 4 Callm ann on Unfair Com petition, Tradem arks and Monopolies § 20 :4 (4th ed. 20 18) (“The product or service on which priority of use is predicated need not be the same as the product or Larino, How Many Tourists Visited N ew Orleans in 20 17? The Answ er Depends on W ho You Ask, NOLA.com | Tim es-Picayune (May 14, 20 18), https:/ / www.nola.com / business/ index.ssf/ 20 18/ 0 5/ tourist_ count_ new_ o rleans_ cvb.htm l; see also R. Doc. 18-3 at 1 (Chicago Eater article referring to St. Roch Market as “a New Orleans staple”). 18 service for which the m ark rights are later asserted; a relation between them m ay suffice.”). For a m ark that is distinctive only because it has acquired secondary m eaning, the senior user is the party that first developed secondary meaning. See 2 McCarthy on Tradem arks and Unfair Com petition § 16:34. Generally, a senior user’s com m on law rights are geographically lim ited. 51 Two Suprem e Court cases, Hanover Star Milling Co. v. Metcalf, 240 U.S. 40 3 (1916) (Tea Rose), and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918), “have given rise to the general proposition that ‘a senior user has exclusive rights to a distinctive m ark anywhere it was known prior to the adoption of the junior user.’” C.P. Interests, Inc. v. Cal. Pools, Inc., 238 F.3d 690 , 70 0 (5th Cir. 20 0 1) (quoting A.J. Canfield Co. v. Honickm an, 80 8 F.2d 291, 295 n.4 (3d Cir. 1986)). In other words, “the national senior user of a m ark cannot oust a geographically rem ote goodfaith user who has used the m ark first in a rem ote trade area.” 2 McCarthy on Tradem arks and Unfair Com petition § 26.4. “A ‘rem ote’ territory is one where, at the critical date of the junior user’s first use, the senior user’s m ark was not known by custom ers in that territory, such that no one would have 51 These geographical lim itations do not apply if the m ark is properly registered on the Principal Register. See 15 U.S.C. § 10 57. 19 been confused as to source.” Id. (footnote om itted). Under Fifth Circuit precedent, the good faith inquiry takes into consideration both the junior user’s knowledge of the plaintiff’s use and the junior user’s “intent to benefit from the reputation or good will of the plaintiff.” El Chico, Inc. v. El Chico Cafe, 214 F.2d 721, 726 (5th Cir. 1954); see also C.P. Interests, 238 F.3d at 70 0 . It is undisputed that the City has leased St. Roch Market to tenants who provide food services since the nineteenth century. The City leased stalls in to various food vendors until 1945. 52 The Lam a fam ily was the sole tenant from 1945 until the 1990 s, and first operated a seafood market and po-boy restaurant at the site before converting the space to a superm arket in 1954. 53 Every lease to a mem ber of the Lama fam ily required that the lessee use the space for som e sort of food m arket. 54 From the 1990 s until 20 0 5, the City leased the space to a different tenant who operated a seafood m arket, po-boy restaurant, and Chinese food restaurant under the name St. Roch Market. 55 52 R. Doc. 18-6 at 1. Id. at 1-2. 54 See generally R. Doc. 49-4. 55 R. Doc. 18-6 at 2. This lease does not appear in the record, although there is a sublease between St. Roch Market, Inc. (run by the Lama fam ily) and Nhu Thi-Nguyen Le dated J uly 17, 1996. See R. Doc. 49-4 at 31. The sublease requires the sublessee to operate a seafood m arket on the prem ises under the name St. Roch Seafood Market. Id. at 32. The City sent a letter to A.J . Lam a on February 20 , 1997, indicating that the City did not consent to 20 53 The m arket was dam aged by Hurricane Katrina and sat vacant until the City com pleted renovations in 20 14. 56 NOBC then leased the space to Bayou Secret, which has since operated a food hall in the building pursuant to the term s of the lease. Although the use of St. Roch Market has evolved over tim e, each prior use is substantially identical to its present use as a food hall. See Big Blue Prods. Inc. v. IBM Corp., 19 U.S.P.Q.2d 10 72 (T.T.A.B. 1991) (holding that for purposes of registration, a prior use m ay be tacked onto a subsequent “substantially identical” use); see also C.P. Interests, 238 F.3d at 70 0 -0 1 (citing Big Blue v. IBM); Ludden v. Metro W eekly , 8 F. Supp. 2d 7, 15 (D.D.C. 1998) (holding that an advice colum n and a stage show inspired by that colum n were sufficiently related for a jury to find that use of a m ark in connection with one established priority of use of the m ark in connection with the other). The various uses of St. Roch Market over tim e are essentially different iterations of a public food m arket. The critical question in this case is whether the landlord (as owner of the food hall) has seniority over the tenant (as operator of the food hall). According to a leading treatise, “[o]wnership of a m ark identifying a business the sublease and would term inate the lease on February 28, 1997. Id. at 20 . It is unclear whether the City ever signed a form al lease for St. Roch Market with Nhu Thi-Nguyen Le, or anyone else, until the Bayou Secret lease was signed in 20 14. 56 R. Doc. 18-6 at 2. 21 carried on at rented prem ises will depend on an informed balancing of the policies of customer perception and contractual provisions (express or im plied) between landlord and tenant.” See 2 McCarthy on Tradem arks and Unfair Com petition § 16:38. Of course, if the tenant creates the m ark and owns the business with which the m ark is associated, the tenant owns the m ark. See id. “But the rule is otherwise where the business has become inseparably identified with a particular building.” 4 Callm ann on Unfair Com petition, Tradem arks and Monopolies § 20 :40 . A num ber of courts have held that the nam e of a public building used in com m erce belongs to the owner of that building. See, e.g., City of N ew York v. Tavern on the Green, L.P., 427 B.R. 233 (S.D.N.Y. 20 10 ); N orden Rest. Corp. v. Sons of the Revolution in the State of N .Y., 415 N.E.2d 956 (N.Y. Ct. App. 1980 ); see also Shubert v. Colum bia Pictures Corp., 72 N.Y.S.2d 851, 855 (Sup. Ct. 1947) (“[T]he good will of a public building, such as a theatre or hotel, runs with the building . . . .”). In N orden Restaurant, the defendant owned a building in lower Manhattan that had been called Fraunces Tavern since the eighteenth century. The plaintiff leased the space and operated a restaurant there called Fraunces Tavern Restaurant. Although the plaintiff-tenant registered “Fraunces Tavern” as a service m ark, the court held that the defendant- 22 landlord’s comm on law rights were superior. N orden Rest., 415 N.E.2d at 957. The court focused on provisions of the lease that required the tenant to conduct business only under the name “Fraunces Tavern Restaurant,” and lim ited the tenant’s right to use the name to the building itself. Id. According to the court, the tenant thereby “accepted the licensed use of the name upon the terms dictated by the defendant,” and could not “assert ownership” of the nam e against the defendant. Id. In another New York case, City of N ew York v. Tavern on the Green, the city owned a building in Central Park called Tavern on the Green. The building was built in 1934 and then leased to various com panies that operated a restaurant under the nam e “Tavern on the Green.” The defendants, who had leased the building and operated the restaurant since 1973, registered the nam e of the restaurant as a service m ark in 1981. The court nevertheless found that the city had a superior com m on law right. Tavern on the Green, 427 B.R. at 241. The court noted that the city established the restaurant over thirty-five years before the defendants began to operate it, nam ed the restaurant, selected its tenants, and “m ade significant investments to ensure” its success. Id. The court also noted that the 1973 lease required the tenant to operate Tavern on the Green as a restaurant and gave the city som e m anagerial power. For exam ple, the lease 23 required the m anager to be “satisfactory to the City,” required “a sufficient num ber of trained attendants,” and required that the attendants “wear a City-approved uniform .” Id. at 238. “Because the undisputed facts show[ed] that the City established and continuously m aintained a restaurant under the nam e ‘Tavern on the Green’ at the same location in New York’s Central Park since 1934,” the court held that “the City ha[d] a protectible interest in that nam e under” state law. Id. at 242. The Ninth Circuit cam e to the opposite conclusion, ruling in favor of a tenant, in Departm ent of Parks and Recreation for the State of California v. Bazaar del Mundo, 448 F.3d 1118 (9th Cir. 20 0 6). There, the state had owned two historic buildings in Old Town San Diego, Casa de Pico and Casa de Bandini, since 1968. The buildings housed shops in 1968 and 1969, and Casa de Bandini served as the headquarters for San Diego’s bicentennial celebration. The state granted the defendant a concession to operate restaurants in the two buildings, and the defendant began using the buildings’ names in com m erce in 1971 (Casa de Pico) and 1980 (Casa de Bandini). To show ownership of the marks, the state pointed to a brochure advertising the bicentennial celebration and a brochure describing the history of Old Town San Diego. Although each brochure m entioned the two buildings, neither “was designed to attract the attention of the viewer to the 24 m arks themselves.” Id. at 1127. The brochures therefore “fail[ed] to create any association between the m arks and the tourism and recreation services provided by the Departm ent of Parks.” Id. Even if the state had used the m arks in com merce, the court noted, such use was “merely transitory,” and did not establish secondary meaning. Id. The Court finds that this case m ore closely resem bles the New York cases than Bazaar del Mundo. Like Tavern on the Green, St. Roch Market has long been associated with food services. The City’s use of the m ark has not been transitory and it achieved secondary m eaning well before defendants acquired the lease in 20 14. The City also designed and built the m arket, chose its lessees, and m ade significant investments to restore it after Hurricane Katrina. Defendants argue that this conduct does not suffice to establish use because there is no evidence that the City ever actually operated a m arket—or any other type of food service—in the building. 57 But defendants cite no authority for the proposition, implicitly rejected by N orden Restaurant and Tavern on the Green, that a landlord m ust operate a specific business in its building in order to acquire ownership over the building’s name. 58 The Court therefore finds that plaintiffs used “St. Roch 57 R. Doc. 21 at 9. Defendants also argue that the Louisiana Constitution prohibits the City from using the m ark in com m erce. R. Doc. 21 at 11-12. No such 25 58 Market” in com merce, and achieved secondary meaning in the m ark, before defendants began to use the mark in 20 14. Moreover, the 20 14 lease—like the leases in the New York cases— includes several lim itations on Bayou Secret’s use of the prem ises. Section 5.1 of the lease requires Bayou Secret to operate “a full service neighborhood restaurant” and “fresh foods m arket using m ultiple vendors in a ‘stalls’ concept.”59 The lease also prohibits Bayou Secret from using the building “for any other business or purpose” or “in any way that will injure the reputation of the NOBC or the Building.”60 Bayou Secret m ust obtain NOBC’s consent to assign the lease, and NOBC m ay reject an assignm ent if the proposed transferee’s use of the prem ises “would not be in strict conform ity with” Section 5.1. 61 If Bayou Secret desires to change the use of the building, the lease requires Bayou Secret to provide NOBC “with detailed inform ation on the proposed new or additional uses,” and subjects any such prohibition appears in the Louisiana Constitution of 1974, however, and the one case cited by defendants, Public Housing Adm inistration v. Housing Authority of the City of Bogalusa, 129 So. 2d 871 (La. App. 1 Cir. 1961), was decided before the current version of the constitution cam e into effect. 59 R. Doc. 21-1 at 5. 60 Id. at 5-6. 61 Id. at 18. 26 change to NOBC’s approval. 62 The lease also provides for certain business hours, though it gives Bayou Secret som e discretion to vary the hours. 63 Additionally, the lease perm its Bayou Secret to “utilize existing typeface logo for the St. Roch Market as is presently posted on the building and replicate this logo in additional locations of the building.”64 But the lease requires the City’s consent to change or add exterior signage, and gives the City “the right to disapprove and require the rem oval of any sign, graphics, lettering, or advertising readily visible from outside” the market. 65 The lease also prohibits the use of “any signs or displays illum inated electrically or otherwise.”66 These terms do not give plaintiffs as much m anagerial authority as the Tavern on the Green lease gave the City of New York, nor does it restrict the tenant’s use of the building name as explicitly as the Fraunces Tavern lease did. Nevertheless, the lease’s restrictions on Bayou Secret’s use of St. Roch Market further buttresses the Court’s finding that plaintiffs own the m ark. Defendants also argue that even if plaintiffs owned the m ark, their com m on law rights do not extend to the locations where defendants plan to 62 63 64 65 66 Id. at Id. Id. at Id. at Id. at 10 . 45. 6-7. 10 . 27 open additional food halls called “St. Roch Market.” Chicago and Nashville m ay very well be rem ote locations. But, as noted earlier, the evidence suggests that defendants intend to capitalize on the goodwill and reputation developed by plaintiffs. Screenshots from defendants’ website for its Miam i location include a num ber of references to New Orleans: • “St. Roch Market is a contem porary, m ulti-vendor food hall brand, hailing from New Orleans.” • “This popular New Orleans food hall has made its way down to Miam i.” • “[A]t St. Roch, a New Orleans-based concept, chefs can try out their ideas on a sm all scale before launching stand-alone restaurants.” • “In 1875, the original St. Roch Market in New Orleans was nam ed in honor of the Patron Saint of m iraculous cures. For m onths prior, the neighborhood held vigil to Saint Roch, praying for an end to a devastating yellow fever epidem ic. Once the fever broke, the grateful com munity enclosed the Market and gave it its official nam e. “In its lifetim e, the New Orleans Market has gone from an outdoor selling space on the neutral ground, to the fish m arket that was shut down by Katrina, to the food hall we know and love today. But it’s always been a gathering place, a place where neighbors become friends and break bread together. Each day, we strive to keep the spirit of comm unity and the resilience inherent to the St. Roch Market nam e alive.”67 67 R. Doc. 18-12 at 3-6. 28 This evidence indicates that defendants seek to use the mark in bad faith. See C.P. Interests, 238 F.3d at 70 0 ; El Chico, 214 F.2d at 726. Thus, plaintiffs’ tradem ark rights are not lim ited geographically. 3. Lik e lih o o d o f co n fu s io n The m ost im portant question in a tradem ark infringement action “is whether one m ark is likely to cause confusion with another.” Xtrem e Lashes, LLC v. Xtended Beauty , Inc., 576 F.3d 221, 226 (5th Cir. 20 0 9). The Fifth Circuit relies on a nonexhaustive list of “digits of confusion” to determ ine whether a likelihood of confusion exists: “(1) the type of tradem ark; (2) m ark sim ilarity; (3) product sim ilarity; (4) outlet and purchaser identity; (5) advertising m edia identity; (6) defendant’s intent; (7) actual confusion; and (8) care exercised by potential purchasers.” Id. at 227. Generally, no single “digit” is treated as dispositive of the existence of a likelihood of confusion. Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985). As an initial m atter, the Court notes that the parties are not necessarily in direct com petition with each other because plaintiffs do not intend to establish additional food halls called “St. Roch Market” outside New Orleans. But “[d]irect com petition between the parties’ services or products is not required in order to find a likelihood of confusion.” Elvis Presley Enters., 29 Inc. v. Capece, 141 F.3d 188, 20 2 (5th Cir. 1998). “When products or services are noncom peting, the confusion at issue is one of sponsorship, affiliation, or connection.” Id. Mark sim ilarity weighs heavily in favor of finding a likelihood of confusion. “‘The relevant inquiry is whether, under the circum stances of the use,’ the m arks are sufficiently sim ilar that prospective purchasers are likely to believe that the two users are som ehow associated.” Capece, 141 F.3d at 20 1 (quoting Restatem ent (Third) of Unfair Com petition § 21 cm t. c). “Mark sim ilarity ‘is determ ined by comparing the m arks’ appearance, sound, and m eaning.’” Xtrem e Lashes, 576 F.3d at 228 (quoting Capece, 141 F.3d at 20 1). “Sim ilarity of appearance is determ ined on the basis of the total effect of the designation, rather than on a com parison of individual features.” Id. (quoting Am star Corp. v. Dom ino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980 )). Here, plaintiffs’ and defendants’ m arks are identical. Indeed, both sides assert ownership over the sam e m ark. Defendants’ Miam i food hall even uses the same typeface as the signage on St. Roch Market in New Orleans. Mark sim ilarity therefore weighs heavily in favor of a likelihood of confusion. See, e.g., Paulsson, 529 F.3d at 310 -11 (affirm ing prelim inary injunction in tradem ark infringement case even though district court relied solely on m ark sim ilarity); see also Cham pions Golf Club, Inc. v. The 30 Cham pions Golf Club, Inc., 78 F.3d 1111, 1119 (6th Cir. 1996) (noting that m ark sim ilarity “is a factor entitled to considerable weight”). Service sim ilarity also suggests a likelihood of confusion. Defendants intend to use the m ark in connection with a food hall—the same services currently provided at St. Roch Market in New Orleans. Plaintiffs and defendants are responsible for slightly different aspects of running a food hall: plaintiffs own the space and lease it to defendants, while defendants operate the food hall and lease stalls to different vendors. But the Fifth Circuit has not regarded such m inor differences as m aterial. See, e.g., Viacom , 891 F.3d at 193-94 (noting that services sim ilarity indicated a likelihood of confusion because both m arks were associated with a restaurant, even though the plaintiff produced a television show featuring a restaurant and the defendant sought to operate an actual restaurant); Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628 F.2d 50 0 , 50 5 (5th Cir. 1980 ) (noting “a strong sim ilarity between the[] wares and services” of Exxon and car repair shop). In light of m ark similarity and associations with the New Orleans St. Roch Market on news and advertising media, 68 the services are sim ilar enough to cause confusion as to whether the New Orleans St. Roch 68 See, e.g., R. Doc. 18-3 (Chicago Eater article); R. Doc. 18-4 (Crain’s Chicago Business article); R. Doc. 18-5 (New Orleans Eater article); R. Doc. 18-12 (screenshots from defendants’ website). 31 Market and defendants’ other prospective food halls called “St. Roch Market” are affiliated. Defendants’ intent also weighs in favor of finding a likelihood of confusion. This “inquiry focuses on whether the defendant intended to derive benefits from the reputation of the plaintiff.” Stream line Prod. Sy s., Inc. v. Stream line Mfg., Inc., 851 F.3d 440 , 455 (5th Cir. 20 17). The Fifth Circuit has noted that “the intent of defendants in adopting their m ark is a critical factor, since if the mark was adopted with the intent of deriving benefit from the reputation of the plaintiff, that fact alone m ay be sufficient to justify the inference that there is confusing sim ilarity.” Am . Rice, 518 F.3d at 332 (quoting Chevron Chem . Co. v. Voluntary Purchasing Grps., Inc., 659 F.2d 695, 70 3-0 4 (5th Cir. 1981)) (parentheses om itted). As explained earlier, defendants have deliberately created associations between St. Roch Market in New Orleans and their Miam i food hall. 69 There is no reason to believe that defendants will not also create such associations with regard to their prospective food halls in other cities. Thus, it is apparent that defendants seek to “appropriate the good will and good nam e” developed by 69 See, e.g., R. Doc. 18-12 at 3 (“This popular New Orleans food hall has m ade its way down to Miam i.”). 32 plaintiffs. N at’l Ass’n of Blue Shield Plans v. United Bankers Life Ins. Co., 362 F.2d 374, 377 (5th Cir. 1966). On the other hand, the physical distances between New Orleans and the cities where defendants plan to open additional food halls called “St. Roch Market” weigh against finding a likelihood of confusion. Because of these distances, the overlap in potential custom ers of St. Roch Market in New Orleans and defendants’ future locations is likely sm all. The strength of the m ark, which is descriptive rather than inherently distinctive, also weighs against finding a likelihood of confusion. 70 There is little evidence pertaining to the rem aining factors, so these factors do not weigh strongly either way. In weighing the factors, the Court finds that m ark sim ilarity, services sim ilarity, and defendants’ deliberate attem pts to associate their food halls outside New Orleans with St. Roch Market in New Orleans outweigh the 70 Defendants further argue that use of the nam e “St. Roch” by third parties tends to reduce the likelihood of confusion. R. Doc. 21 at 14. But there is no evidence that third parties are using the name “St. Roch Market,” which is the term plaintiffs seek to enjoin defendants from using. Cf. Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 317 (5th Cir. 1981) (weakness of the mark weighed against finding a likelihood of confusion because the only sim ilarity in the m arks was the use of the word “sun,” and “[t]he evidence abundantly established existing third-party use of the name ‘Sun,’ both within and without the financial comm unity”). That the m arks of a few third parties also incorporate “St. Roch” m erely reflects the geographic descriptiveness and secondary m eaning of that term , issues that the Court has already addressed. 33 sm all overlap in potential custom ers and the weakness of the m ark. The Fifth Circuit has em phasized that finding a likelihood of confusion is particularly appropriate when a defendant’s use of the plaintiff’s m ark “is designed to create the illusion of affiliation” with the plaintiff. Sm ack Apparel, 550 F.3d at 483. “This creation of a link in the consum er’s m ind . . . and the intent to directly profit therefrom results in ‘an unm istakable aura of deception’ and likelihood of confusion.” Id. at 484 (quoting Bos. Athletic Ass’n v. Sullivan, 867 F.2d 22, 35 (1st Cir. 1989)). Plaintiffs have therefore shown a substantial likelihood of success on the m erits of their tradem ark infringement claim . B. Bre ach o f Trad e m ark Lice n s e Plaintiffs also seek a prelim inary injunction based on breach of tradem ark license. This claim essentially asserts breach of contract under Louisiana law. See Brennan’s Inc. v. Dickie Brennan & Co. Inc., 376 F.3d 356, 366 (5th Cir. 20 0 4) (treating breach of tradem ark license claim as breach of contract claim ); see also 3 McCarthy on Tradem arks and Unfair Com petition § 18:43 (“Tradem ark license contract disputes are governed by the general rules of contract interpretation.”). To prevail on a breach of contract claim under Louisiana law, an obligee m ust establish that (1) the obligor undertook an obligation to perform , (2) “the obligor failed to perform 34 the obligation,” and (3) “the failure to perform resulted in dam ages to the obligee.” Favrot v. Favrot, 68 So. 3d 10 99, 110 8-0 9 (La. App. 4 Cir. 20 11). Plaintiffs argue that defendants’ use of the m ark outside St. Roch Market in New Orleans violates the 20 14 lease. 71 The lease does not explicitly prohibit such use of the m ark; Exhibit D to the lease m erely perm its Bayou Secret to “utilize existing typeface logo for the St. Roch Market as is presently posted on the building and replicate this logo in additional locations of the building.”72 This language clearly grants Bayou Secret a license to use the m ark inside St. Roch Market in New Orleans. According to the Fifth Circuit, “the prevailing view is that one who exceeds the scope of [such a] license” m ay be liable for both breach of contract and tradem ark infringement. Brennan’s, 376 F.3d at 364; see also N at’l Bus. Form s & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 535 (5th Cir. 20 12) (agreeing with the proposition “that the terms of the tradem ark license circum scribe a tradem ark licensee’s right to use a protected mark”); Digital Equip. Corp. v. AltaVista Tech., Inc., 960 F. Supp. 456, 473-75 (D. Mass. 1997) (analyzing breach of tradem ark license claim ). But “a party cannot enforce a license it 71 72 R. Doc. 18-1 at 19-20 . R. Doc. 21-1 at 45. 35 does not control.” J & J Sports Prods., Inc. v. Morales, 226 F. Supp. 3d 730 , 733 (W.D. Tex. 20 16) (citing Brennan’s, 376 F.3d at 364). These cases suggest that if a party owns a m ark, then a license to use that m ark im plies an obligation not to use the m ark outside the scope of the license. For exam ple, in Digital Equipm ent, the plaintiff licensed the m ark “AltaVista” to the defendant. 960 F. Supp. at 473. The license read: “Digital hereby grants to ATI a nonexclusive, nontransferable license to use the tradem ark . . . as part of the corporate name ‘Altavista Technologies, Inc.’ and as part of the url ‘http:/ / www.altavista.com,’ and in accordance with and subject to the term s and conditions of this Agreement . . . .” Id. at 473-74. The district court applied the m axim expressio unius est exclusio alterius in concluding that the license’s “express grant of perm itted uses precludes other uses.” Id. at 473. The court held that any other use of the mark would likely breach the license agreement, and enjoined any such use. Id. at 474, 478. Here, the Court has already found a substantial likelihood that plaintiffs will succeed in establishing their ownership of a protectable m ark. Defendants’ use of the mark in connection with food halls in other cities obviously exceeds the scope of the license in Exhibit D to the 20 14 lease. 36 Thus, the Court finds a substantial likelihood that plaintiffs will succeed on the m erits of their breach of tradem ark license claim. C. Su bs tan tial Th re at o f Irre parable H arm The central prerequisite for injunctive relief “is a dem onstration that if it is not granted the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered.” 11A Wright & Miller, Federal Practice and Procedure § 2948.1 (3d ed. 20 18). “In general, a harm is irreparable where there is no adequate rem edy at law, such as m onetary dam ages.” Janvey v. Alguire, 647 F.3d 585, 60 0 (5th Cir. 20 11). This risk of harm m ust be “more than m ere speculation,” id. at 60 1; “[a] presently existing actual threat m ust be shown,” 11A Wright & Miller, Federal Practice and Procedure § 2948.1. In trademark infringement cases, courts have historically presum ed irreparable harm once a plaintiff establishes likelihood of success on the m erits. See Paulsson, 529 F.3d at 312 (collecting cases); ADT, LLC v. Capital Connect, Inc., 145 F. Supp. 3d 671, 695 (N.D. Tex. 20 15); see also Restatem ent (Third) of Unfair Com petition § 35 cm t. h (“Absent special circum stances, courts will ordinarily grant a prelim inary injunction in a tradem ark infringem ent action if there is strong evidence of a likelihood of confusion.”). But the Fifth Circuit “has avoided ‘expressly adopting this 37 presum ption of irreparable injury.’” Paulsson, 529 F.3d at 312 (quoting S. Monorail Co. v. Robbins & My ers, Inc., 666 F.2d 185, 188 (5th Cir. Unit B 1982)). Moreover, recent Suprem e Court cases have called into question whether this presum ption is appropriate. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (20 0 6); see also 5 McCarthy on Tradem arks and Unfair Com petition § 30 .47.30 (“Som e courts have either hinted, indicated or outright held that the U.S. Supreme Court’s 20 0 6 decision in eBay elim inates the traditional presum ption of irreparable injury triggered if a likelihood of success on the merits of tradem ark infringement is proven.”). In any event, the record supports a showing of irreparable harm. Defendants have appropriated a m ark that the City has m aintained for a century. Now, plaintiffs have “lost control” of the quality of the services associated with their m ark. 73 Paulsson, 529 F.3d at 313; see also 5 McCarthy on Tradem arks and Unfair Com petition § 30 .47.50 (“[I]n m any situations, irreparable harm can be dem onstrated by pointing to the fact that the tradem ark owner’s business goodwill and reputation are in peril.”). The potential harm to plaintiffs’ reputation and goodwill cannot be quantified, and rises to the level of irreparable harm . 74 Paulsson, 529 F.3d at 313; see 73 74 R. Doc. 18-1 at 23. Id. 38 also Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 20 5 (3d Cir. 20 14); ADT, 145 F. Supp. 3d at 696 (“[I]f one tradem ark user cannot control the quality of the unauthorized user’s goods and services, he can suffer irreparable harm .” (quoting Mary Kay , Inc. v. W eber, 661 F. Supp. 2d 632, 640 (N.D. Tex. 20 0 9)); TGI Friday ’s Inc. v. Great Nw . Rests., Inc., 652 F. Supp. 2d 763, 771 (N.D. Tex. 20 0 9) (“[D]efendants are prom oting consum er confusion by holding out their restaurants as TGI Friday’s locations even though TGIF does not sponsor or control defendants’ restaurants. This consum er confusion m eans that TGIF no longer possesses control over its valuable tradem arks or its reputation. This loss of control constitutes a substantial threat of irreparable injury.”). Plaintiffs therefore face a substantial threat of irreparable harm absent an injunction. D. Balan ce o f H ard s h ip s Without an injunction, plaintiffs stand to lose control over the services associated with St. Roch Market, and potentially face dam age to their reputation and goodwill. If an injunction is granted, defendants will also experience hardship. Specifically, defendants will be unable to use their preferred name for the food halls defendants seek to open in other cities. This restriction m eans that defendants will be unable to capitalize on the reputation and goodwill associated with St. Roch Market. 39 Defendants’ counsel also noted in oral argum ent that defendants have spent hundreds of thousands of dollars prom oting the “St. Roch Market” brand. But any harm defendants m ay suffer is self-inflicted because defendants did not have the right to use the m ark in the first place. Cf. ADT, 145 F. Supp. 3d at 699-70 0 . Moreover, an injunction would not prevent defendants from opening food halls in other cities, so long as the food halls are not nam ed “St. Roch Market.” Nor would the injunction prevent defendants from continuing to operate St. Roch Market and Auction House Market in New Orleans. The Court finds that the balance of hardships weighs in favor of granting the injunction. E. Pu blic In te re s t Finally, a prelim inary injunction would not disserve the public interest. Here, where plaintiffs have established a substantial likelihood of success on the m erits, an injunction would serve the public interest by preventing unfair com petition and protecting intellectual property. These values promoted by tradem ark law outweigh the public’s interest in competition and free exchange of ideas. See Allied Mktg. Grp., Inc. v. CDL Mktg., Inc., 878 F.2d 80 6, 810 n.1 (5th Cir. 1989) (district court’s finding that injunction served public interest “reflect[ed] the policy judgm ent implicit in copyright and unfair com petition laws that the public’s interest in com petition m ay be 40 outweighed by the public’s interest in preserving rights in intellectual property”). The Court further notes that St. Roch Market is a public institution with a rich history. It is one of only a few rem nants of the once-extensive network of public m arkets in New Orleans. The City and other governmental bodies have invested substantial sum s of m oney in the market over the years. The reputation of St. Roch Market and the goodwill associated with that nam e therefore belong to the public. In fact, Louisiana law explicitly recognizes the City’s right to use, and exclude others from using, the name of a public facility owned by the City. See La. R.S. § 51:281.2(A) (“[N]o person shall transact any business under an assum ed name which contains the nam e of any . . . public facility without the written consent of the governing authority of the governmental entity which owns or operates the . . . public facility.”). For these reasons, the public interest would be served by enjoining defendants’ infringing use of St. Roch Market. The Court notes that the prelim inary injunction will not affect defendants’ Miam i location. The Court need not, and does not, decide the proper scope of a perm anent injunction at this tim e. 41 IV. PRELIMIN ARY IN JU N CTION The Court has found that plaintiffs have satisfied the requirements for prelim inary injunctive relief. Accordingly, the Court prelim inarily enjoins and restrains defendants, Bayou Secret, LLC, St. Roch Design District, LLC, Helpful Hound, L.L.C., St. Roch F&B, LLC, William Donaldson, Barre Tanguis, and David Donaldson, as well as their officers, agents, servants, em ployees, attorneys, successors, and assigns, and all others in active concert or participation with them , from using the designation “St. Roch Market” in connection with any food hall, or any other type of public food m arket, at any location other than 2381 St. Claude Avenue, New Orleans, Louisiana and 140 NE 39th Street, Suite 241, Miam i, Florida. This prelim inary injunction shall rem ain in effect until a trial is conducted on the m erits, or until it is otherwise m odified by the Court. 7th New Orleans, Louisiana, this _ _ _ _ _ day of August, 20 18. _____________________ SARAH S. VANCE UNITED STATES DISTRICT J UDGE 42

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