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Kuper Industries, LLC v. Reid

United States District Court, D. Nebraska

August 1, 2016



          John M. Gerrard United States District Judge.

         This matter is before the Court on the plaintiffs' motion for summary judgment (filing 65). That motion will be denied. Specifically, the Court finds that there are, at the very least, genuine issues of material fact as to whether there is a likelihood of confusion between the plaintiffs' registered service mark of "The Pancake Man" and the defendants' since-changed solicitation of business as "The Pancake Guys."

         I. BACKGROUND

         The plaintiffs, James W. Kuper and Kuper Industries, LLC, do business in Nebraska and Iowa as "The Pancake Man, " cooking pancakes for events at schools, clubs, churches, and local businesses. Filing 67 at 1-2.[1]Kuper has been catering pancakes since 1985. Filing 67 at 2. According to Kuper, people recognize him in public and know him as "The Pancake Man." Filing 67 at 2. Kuper registered the service mark "The Pancake Man" in 2009. Filing 67 at 3.

         The defendants, Daniel Reid and All The Marbles, LLC, began doing business as "The Pizza Pie Guys" in 2008, catering for fundraising events at which guests can make their own pizzas. Filing 68 at 10. In 2013, they began doing business as "The Grill Guys, " catering hot dogs and hamburgers. Filing 68 at 10. At some point, Reid contacted Kuper and proposed to purchase the plaintiffs' pancake business. Filing 67 at 4. (The parties dispute the timeline of those discussions, but the disagreement is not material.) Eventually, Kuper declined. Filing 67 at 4. So, in 2013, the defendants began doing business as "The Pancake Guys, " catering pancakes, sausage, and orange juice for events and fundraisers. Filing 68 at 11.

         By 2014, Kuper found out about "The Pancake Guys." Filing 67 at 4. The advertisement Kuper found included the solicitation, "try us instead of the Pancake Man." Filing 67 at 4. Over the following months, Kuper discovered events that were promoted, in various ways, as featuring a "Pancake Man, " but were in fact catered by the defendants. Filing 67 at 6-8; see also filing 78-1. But the defendants deny being involved in those promotions, which they suggest were undertaken by customers, not the defendants. See filing 68 at 6-7; filing 80 at 3. Instead, the defendants point to evidence that for at least four of those events, the customers had previously hired the plaintiffs and deliberately chose to hire the defendants instead.[2] Filing 4-1 at 5; filing 69-1 at 5; filing 69-3; filing 69-9; filing 69-11. For another event, the defendants have presented evidence that the customer was not aware of the plaintiffs' business or service mark at all. Filing 81-1. And the defendants have presented evidence from some of other customers explaining that those customers had not confused the plaintiffs' and defendants' businesses-rather, they were aware of both, and elected to hire the defendants.[3] Filing 69-4; filing 69-5; filing 69-6; filing 69-7; filing 69-8; filing 69-10; filing 69-12; filing 69-22.

         The plaintiffs sued on January 28, 2015. Filing 1. In February, the defendants stopped using the moniker, "The Pancake Guys, " instead identifying themselves as "The Flapjack Guys." Filing 69-1 at 4. The plaintiffs have continued to pursue claims under the Lanham Act, 15 U.S.C. § 1051 et seq., and Nebraska Uniform Deceptive Trade Practices Act (UDTPA), Neb. Rev. Stat. § 87-301 et seq., for injunctive relief, money damages, and attorney fees. See filing 55. The plaintiffs move for summary judgment in their favor. Filing 65.


         Summary judgment is proper if the movant shows that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The movant bears the initial responsibility of informing the Court of the basis for the motion, and must identify those portions of the record which the movant believes demonstrate the absence of a genuine issue of material fact. Torgerson v. City of Rochester, 643 F.3d 1031, 1042 (8th Cir. 2011) (en banc). If the movant does so, the nonmovant must respond by submitting evidentiary materials that set out specific facts showing that there is a genuine issue for trial. Id.

         On a motion for summary judgment, facts must be viewed in the light most favorable to the nonmoving party only if there is a genuine dispute as to those facts. Id. Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the evidence are jury functions, not those of a judge. Id. But the nonmovant must do more than simply show that there is some metaphysical doubt as to the material facts. Id. In order to show that disputed facts are material, the party opposing summary judgment must cite to the relevant substantive law in identifying facts that might affect the outcome of the suit. Quinn v. St. Louis County, 653 F.3d 745, 751 (8th Cir. 2011). The mere existence of a scintilla of evidence in support of the nonmovant's position will be insufficient; there must be evidence on which the jury could conceivably find for the nonmovant. Barber v. CI Truck Driver Training, LLC, 656 F.3d 782, 791-92 (8th Cir. 2011). Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial. Torgerson, 643 F.3d at 1042.


         The primary dispute in this case is whether the defendants' use of the "Pancake Guys" moniker infringed the plaintiffs' "The Pancake Man" mark. On the facts of this case, the plaintiffs' claim under the UDTPA is substantially coextensive with their federal mark infringement claim. See Prime Home Care, LLC v. Pathways to Compassion, LLC, 809 N.W.2d 751, 764 (Neb. 2012). And the parties do not contend otherwise. See, filing 67 at 14; filing 68 at 22-23. So, the Court considers whether the plaintiffs have proven mark infringement pursuant to the Lanham Act.

         1. Mark Infringement

         Mark infringement requires proof that the plaintiff has ownership or rights in the mark and that the defendant has used the mark in commerce, in connection with goods or services, in a manner likely to cause consumer confusion as to the source or sponsorship of the goods or services. Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church, 634 F.3d 1005, 1009 (8th Cir. 2011). The parties do not dispute the plaintiffs' ownership of the mark. Filing 67 at 3; filing 68 at 3. Nor do the defendants deny that their use of "The Pancake Guys" occurred in commerce, in connection with goods or services. Filing 68 at 17. The question is whether that use occurred in a manner likely to cause consumer confusion as to the source or sponsorship of the goods or services. See Devon Park, 634 F.3d at 1009.

         (a) Likelihood of Confusion

         In evaluating a likelihood of confusion between a mark and an allegedly-infringing mark, courts consider such factors as the strength of the owner's mark, the similarity between the marks, the degree to which the allegedly-infringing service competes with the mark-owner's service, the alleged infringer's intent to confuse the public, and evidence of actual confusion. Id. (citing SquirtCo. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980)). No one factor controls, and because the inquiry is inherently case-specific, different factors may be entitled to more weight in different cases. Id. The Court does not apply any mathematical formula in analyzing these factors; rather, on summary judgment, they are used as a guide to determine whether a reasonable jury could find a likelihood of confusion. Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 763 (8th Cir. 2010).

         (i) ...

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