Once an Ale House, always an Ale House: finding of genericness cannot be later avoided

In Miller’s Ale House Inc v Boynton Carolina Ale House LLC (Case No 10-15140, December 20 2012), addressing the issue of trademark and trade dress infringement in the context of a restaurant chain asserting common law trademark rights in the term 'ale house' and trade dress rights in the interior decorations of its restaurant, the US Court of Appeals for the 11th Circuit has affirmed a summary judgment ruling of no infringement.

The plaintiff, Miller’s Ale House, has more than 50 locations, with the vast majority in Florida. Each location has a different name, but all use the words 'Ale House', such as 'Boynton Ale House'. The plaintiff's restaurants share several common features, and the predecessor company obtained copyright protection for five different floor plans containing a different arrangement of common elements.

Defendant Boynton Carolina Ale House is a licensee of the creator of the Carolina Ale House brand in North Carolina. Each of the defendant’s locations has a different name, but all use the words 'Carolina Ale House' (eg, Boynton Carolina Ale House). Boynton Carolina opened up a Boynton Carolina Ale House restaurant in Boynton Beach, Florida, after Miller’s had already opened a Boynton Ale House. The two restaurants shared many common features, including walls made of wood, exposed kitchen, a central bar and similar server uniforms. Nevertheless, there were several differences. For example, the Boynton Carolina restaurant had an outdoor area while Miller’s did not.

Miller’s sued Boynton Carolina for trademark and trade dress infringement under the Lanham Act. The 11th Circuit, in affirming the district court’s grant of summary judgment on all counts in favour of the defendant, Boynton Carolina, held that the unregistered term 'ale house' was a generic term like 'bar', 'lounge' or 'pub', citing the US Court of Appeals for the Fourth Circuit’s Decision in Ale House Mgmt v Raleigh Ale House (2000). The district court noted that Miller’s had previously contested this very issue in the Fourth Circuit case (to prevent the original Carolina Ale House from opening) and concluded it was now barred from relitigating the same issue again (ie, by issue preclusion).

Miller claimed that the term 'ale house' (the term that the Fourth Circuit found was generic) was no longer generic as of the date of the present case, 2009, and that, as a consequence, issue preclusion did not apply. The 11th Circuit disagreed, noting that even a changed perception of the mark in the ensuing 11 years was not enough to overcome issue preclusion, stating that “[w]ere changed perception sufficient to warrant the elevation of a non-coined, generic term to trademark status, such change would have to be radical”. The 11th Circuit concluded that Miller’s evidence was not sufficient to show a radically changed perception of 'ale house', since it offered only two declarations from individual customers, not evidence from, for example, a survey. The 11th Circuit concluded that, even though Miller’s expanded its locations and spent money on advertising, it was not enough to show that the mark is no longer generic.

As to the trade dress, the 11th Circuit affirmed that there was nothing “particularly unique” about Miller’s common features, which were typical of brewpubs or sports bars, such as the arrangement of the exposed kitchen, central bar and wood-paneled walls, among other non-distinctive features.

The case shows that a finding of genericness of a trademark cannot be later avoided unless a mark’s significance to the public is radically changed.

Jeremy T Elman, McDermott Will & Emery, Miami