Landlord Owner Need Not Operate Establishment to Demonstrate Prior Use of Mark Over Tenant Operator

The court granted the City of New Orleans and another city entity’s motion to preliminarily enjoin a restaurant defendant from using the mark “St. Roch Market” at locations other than the food halls of the same name in New Orleans and Miami and determined the City was the senior user. “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). . . . St. Roch Market has long been associated with food services. The City’s use of the mark has not been transitory and it achieved secondary meaning well before defendants acquired the lease in 2014. The City also designed and built the market, chose its lessees, and made 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 market—or any other type of food service—in the building. But defendants cite no authority for the proposition, implicitly rejected by Norden Rest. Corp. v. Sons of the Revolution in the State of N.Y., 415 N.E.2d 956 (N.Y. Ct. App. 1980) and City of New York v. Tavern on the Green, L.P., 427 B.R. 233 (S.D.N.Y. 2010), that a landlord must operate a specific business in its building in order to acquire ownership over the building’s name.”

Helpful Hound, LLC v. New Orleans Building Corporation et al, 2-18-cv-03500 (LAED 2018-08-07, Order) (Sarah S. Vance)

2018-08-09T11:50:02+00:00August 9th, 2018|Docket Report, Trademark|