Hooters fails in trade dress dispute

In HI Limited Partnership v Winghouse of Florida Inc, the US District Court for the Middle District of Florida Orlando Division has ruled that the defendant had not infringed the plaintiff's trade dress associated with a popular restaurant chain.

HI Limited Partnership (Hooters) runs the Hooters chain of restaurants famous for the distinctive uniforms (white tank tops and tight orange shorts) of the female serving staff (the Hooters Girls). Over seven years ago, Hooters approached Winghouse of Florida Inc, which controls a chain of restaurants in Florida, threatening Winghouse with trade dress litigation unless it changed the uniforms of its female serving staff from red shorts and white tank tops to all black. The parties reached an agreement in 1997. Following a change of management at Hooters, it filed a lawsuit against Winghouse with the US District Court for the Middle District of Florida Orlando Division, alleging trade dress infringement and dilution, unfair competition, and violation of state law. Winghouse counterclaimed that the action breached the settlement agreement.

After over two weeks of trial, Judge Conway held that no reasonable jury could find a likelihood of confusion between Hooters and Winghouse. Based on Hooters' own pre-trial representations to regulatory agencies, Conway concluded that the overwhelmingly predominant feature of Hooters' trade dress, the Hooters Girl, was primarily functional (to attract male customers) and not entitled to trade dress protection. He found the remaining elements of Hooters' alleged trade dress (eg, interior woodwork, parchment paper menus, surfboards and hula hoops) were generic items commonly found in sports bars and beach-themed restaurants. Moreover, because of the significant differences between the restaurants, for example in relation to the names, exterior designs and colour schemes, the generic similarities could not provide a basis for finding infringement, dilution or violation of state law.

Following direction from Conway, the jury awarded Winghouse $1.2 million on its counterclaim for breach of the settlement agreement.

Hooters may file an appeal.

Howard Shire and Elizabeth Weiskopf, Kenyon & Kenyon, New York

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