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Git-R-Done Productions, Inc. v. Giterdone C Store, LLC

United States District Court, S.D. Mississippi, Southern Division

December 28, 2016




         BEFORE THE COURT is the [115] Motion for Summary Judgment filed by Defendants Giterdone C Store, LLC and 443-B Yacht Club Drive LLC. Having reviewed the parties' submissions and the applicable law, the Court is of the opinion that the Motion should be denied.[1]

         This is an action for federal trademark infringement and related claims. Plaintiff Git-R-Done Productions, Inc., originally sued Defendant Giterdone C Store, LLC, the owner of the Giterdone gas station and convenience store located in Diamondhead, Mississippi.[2] Plaintiff contends that “Defendant has purposefully misappropriated” the well-known Git-R-Done “tagline and trademark of the famous comedian and actor, Daniel Lawrence Whitney, known by his stage name, Larry the Cable Guy.” (Compl. 1 (¶1), ECF No. 1). It alleges that “Defendant's actions are infringing [Plaintiff]'s trademark rights and causing it damages.” (Id.). Plaintiff's Complaint includes claims against Defendant for (1) trademark infringement under federal law; (2) false designation of origin, passing off, and unfair competition under federal law; (3) trademark dilution under federal law; (4) trademark infringement and unfair competition under Mississippi common law; and (5) cancellation of trademark. Defendant moves for summary judgment on all claims.


          A motion for summary judgment shall be granted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The movant bears the initial burden of identifying those portions of the pleadings and discovery on file, together with any affidavits or declarations, which it believes demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986). The Court views the evidence in the light most favorable to the non-movant. Abarca v. Metro. Transit Auth., 404 F.3d 938, 940 (5th Cir. 2005). If the movant “fails to meet [its] initial burden, the motion must be denied, regardless of the nonmovant's response.” Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994). If the movant carries its burden of demonstrating the absence of a genuine issue of material fact, the burden shifts to the non-movant to show that summary judgment should not be granted. Celotex, 477 U.S. at 323-25.

         Defendant makes the following arguments in support of its Motion: (1) Plaintiff's mark is generic, and, thus, unprotected; (2) there is no likelihood of confusion between Plaintiff's mark and Defendant's mark; (3) Plaintiff's state law claims fail as a matter of law; (4) Plaintiff cannot prove actual damages; and (5) problems with Plaintiff's expert support summary judgment in its favor.[3] The Court discusses each argument below.

         Classification of “Git-R-Done”

         “‘The threshold issue in any action for trademark infringement is whether the word or phrase is initially registerable or protectable.'” Union Nat'l Bank of Tex., Laredo, Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir. 1990) (citations omitted). “To determine whether a word or phrase is protectable, it must first be determined into which category, (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful, the word or phrase belongs.” Id. The parties agree that “Git-R-Done” is not descriptive or suggestive. Defendant claims that the phrase is generic, while Plaintiff claims that it is arbitrary.

         “The significance of assigning a word or phrase to one of these categories is that the assignment determines whether or not, or in what circumstances, the word or phrase is eligible for trademark protection.” Id. “Generic terms are never eligible for trademark protection.” Id. (emphasis omitted). “Descriptive terms may only be protected after proof of secondary meaning, and suggestive, arbitrary or fanciful terms are all protectable without proof of secondary meaning.” Id.

         “A generic term is one which identifies a genus or class of things or services, of which the particular item in question is merely a member.” Id. at 845. “An example of a generic word is ‘fish.' ‘Fish' is a generic term which applies with equal force to sole, haddock, perch, salmon, bass and carp.” Id. In contrast, “arbitrary and fanciful terms or phrases are those which are either coined words or words which are not suggestive of the product or service. Here we have a sub-set of classifications within the categories.” Id. “Fanciful terms are most often coined words such as ‘Xerox' or ‘Kodak[, ]' [while] the term ‘arbitrary' refers to ordinary words which do not suggest or describe the services involved. An example is ‘Ivory' as applied to Soap.” Id.

         “[T]he categorization of a term is properly considered a matter of fact because the appropriate categorization is not self-evident.” Id. at 846. “Because categorization is a question of fact, summary judgment is rarely appropriate.” Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 232 (5th Cir. 2009); see also, e.g., Who Dat Yat Chat, LLC v. Who Dat, Inc., No. 10-1333, 2012 WL 2579815, at *1 (E.D. La. July 3, 2012).

When considering whether a trademark is generic, the Court looks to dictionary definitions, consumer surveys, the so-called ‘imagination test, '[4] whether others in the same business would generally need the word to adequately describe their product or service, expert testimony by language and usage scholars, and evidence regarding how many other businesses, in the same industry, use the term to describe their product.[5]

Camowraps, LLC v. Quantum Digital Ventures LLC, 74 F.Supp.3d 730, 735 (E.D. La. 2015) (citing Union Nat'l Bank, 909 F.2d at 847-48) (quotation marks omitted).

         None of the evidence cited by Defendant leads this Court to conclude as a matter of law that Git-R-Done is generic. For example, Defendant cites to evidence from its expert Bridget Anderson that the phrase “Get ‘er done” is a commonly used phrase “in the American English lexicon[, ]” (Anderson Report § 6, ECF No. 118-1), but this evidence does not equate to a showing that “Git-R-Done” is generic. “[T]he context in which a word or phrase appears is relevant to determining the proper category for purposes of trademark protection eligibility. The word or phrase must be compared to the product or service to which it is applied.” Union Nat'l Bank, 909 F.2d at 846 (emphasis added) (discussing how “fish” could be categorized into any of the four categories depending on the product or service at issue). Moreover, “[t]he context in which a ...

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