United States District Court, D. Nebraska
KUPER INDUSTRIES, LLC and JAMES W. KUPER d/b/a THE PANCAKE MAN, Plaintiffs,
DANIEL REID; DANIEL REID d/b/a THE PANCAKE GUYS; ALL THE MARBLES, LLC d/b/a THE PANCAKE GUYS, Defendants.
MEMORANDUM AND ORDER
M. Gerrard United States District Judge.
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."
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.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.
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.
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. 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. Filing 69-4; filing 69-5; filing 69-6;
filing 69-7; filing 69-8; filing 69-10; filing 69-12; filing
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.
STANDARD OF REVIEW
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.
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.
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
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.
Likelihood of Confusion
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.