On November 16, 2024, the United States Court of Appeals for the First Circuit affirmed a district court’s denial of a preliminary injunction, in which one Fall River, Massachusetts, business inspired by the legend of Lizzie Borden unsuccessfully asserted trademark rights against another Lizzie Borden-inspired business located right next door. The ultimate appellate decision seems largely justified, given the deferential scope of review applied by the First Circuit.

But one cannot help but wonder if a company built on the fame of the 1892 murder suspect Lizzie Borden, who was said by legend to have given her mother 40 “whacks” with a hatchet, has now itself—undeservedly—received some “whacks” from the First Circuit.

The Lizzie Borden Story and the Parties

In a still-unsolved 1892 double murder, the father and stepmother of Lizzie Borden were hacked to death with a hatchet in their Fall River home. After a highly publicized trial, their daughter Lizzie Borden was acquitted by a jury. The event inspired what the First Circuit described as this bit of “doggerel”: “Lizzie Borden took an axe/ And gave her mother forty whacks; /And when she saw what she had done / She gave her father forty-one.”

US Ghost Adventures is the successor to a business based in the historic Lizzie Borden House in Fall River, where it operates a bed and breakfast and a museum where it offers guided tours. It owns several federal trademark and service mark registrations for LIZZIE BORDEN and for a hatchet blade logo for restaurant and hotel services, as well as clothing and a variety of souvenir-type objects.

In August 2023, directly next door to the Lizzie Borden House, Miss Lizzie’s Coffee LLC opened a coffee shop with storefront signage displaying the words “Miss Lizzie’s Coffee” between a cup of coffee and a stylized hatchet. US Ghost Adventures promptly filed suit and moved for injunctive relief.

The District Court Denies Relief

On October 27, 2023, the U.S. District Court for the District of Massachusetts denied a preliminary injunction. US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, 2023 U.S. Dist. LEXIS 218559 (D. Mass., Oct. 27, 2023). It found that Ghost Adventures had not demonstrated a likelihood of success, and thus did not address the other traditional preliminary injunction criteria. The District Court relied heavily on the differences between the parties’ respective marks and the lack of direct competition between the parties’ goods and services.

The District Court acknowledged the presence of evidence of actual confusion but was unwilling to attribute such confusion to the similarity of the trademarks, as opposed to the fact that both sides’ marks trade off the Lizzie Borden story. It also gave weight to a disclaimer on Miss Lizzies’ storefront asserting that it has no affiliation or association in any way with the Lizzie Borden Museum or Bed and Breakfast next door.

The First Circuit Affirms

Just over a year later, the First Circuit affirmed. US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, ___F. 4^th___, 2024 U.S. App. LEXIS 29106 (1st Cir., Nov. 15, 2024). It initially noted that a preliminary injunction is an extraordinary and drastic remedy; that it reviews the grant or denial of a preliminary injunction for an abuse of discretion; that it reviews findings of fact for clear error; and that it reviews judgment calls with significant deference.

Given such deferential review, it seems hard to find fault with the First Circuit’s ultimate affirmance. While one could (and this observer shall) take issue with some of the District Court’s findings on the differences between the marks and the channels of trade, as well as the strength of the plaintiff’s marks and the evidence of actual confusion, one is hard pressed to say there was clear error. So too with the disclaimer.

Still, there are reasons for concern in both the District Court’s and the First Circuit’s opinions. If the plaintiff chooses to pursue the litigation to a decision on the merits, these issues may prove significant and might conceivably lead to a different result.

The Similarities Between the Marks and the Channels of Trade

Both Courts gave considerable weight to the plaintiff’s use of LIZZIE BORDEN, in contrast to defendant’s use of MISS LIZZIE. But considering the fact that the defendant was using MISS LIZZIE directly next door to the Lizzie BORDEN House, is there any doubt as to which LIZZIE was contemplated?

The two courts dwelled extensively on the parties’ respective hatchets. The defendant used a handle and a blade dripping with blood, while the plaintiff’s hatchet had no handle and no blood. And much ink was spilled over the fact that plaintiff’s hatchet blade had a small notch, while the defendant’s did not. Really?

Again, these findings may well be free from clear error. But in the general scheme of things, are they really persuasive?

The Strength of Plaintiff’s Marks

The First Circuit reaffirmed that one common criterion in measuring the strength of a plaintiff’s trademark, and the first one it mentioned, is “the length of time a mark has been used.” Id. at *17 (citing cases). While it is unclear whether the plaintiff relied on its length of use, it is clear that neither the District Court nor the First Circuit meaningfully considered this metric at all.

A review of Ghost Adventures’ asserted registrations reveals that LIZZIE BORDEN has been in use on hotel and restaurant services since 1996, and on clothing, key chains and jewelry since 2004. Similarly, Ghost Adventures’ hatchet blade logo has been in use on restaurant and hotel services, and on jewelry, key chains and clothing items since 2013. These decades of use alone would seem to suggest a not insubstantial degree of strength associated with the asserted trademarks.

Instead, the First Circuit said that Ghost Adventures’ challenge to the District Court’s assessment of strength was “haunted by legal confusion” because it failed to give appropriate weight to incontestability and secondary meaning. From this, the Court beats up on multiple straw men and ends up effectively disregarding the “strength” issue altogether.

Again, it is hard to discern from the opinions what arguments Ghost Adventures advanced, but incontestability has never guaranteed that a mark is strong. All that is needed to acquire it is five years of use and the absence of challenges. See 15 U.S.C. §1065.

The issue of secondary meaning is an even redder herring. With one exception, all of Ghost Adventures’ registrations were issued without a showing of secondary meaning under Lanham Act Section 2(f). (The exception was a 2002 registration for LIZZIE BORDEN MUSEUM for museum services). All of the remaining registrations were issued on the Principal Register without a Section 2(f) showing, meaning that they were viewed by the U.S. Patent and Trademark Office as inherently distinctive, i.e. immediately  protectable without a showing of acquired distinctiveness.

Moreover, 15 U.S.C. §1115(a) specifically states that a registration on the  Principal Register is “prima facie evidence of the validity of the registered mark.” And this entitles a plaintiff to a “presumption that its registered trademark is inherently distinctive, as opposed to merely descriptive.” Equine Techs., Inc. v. Equitechnology, Inc., 68 F. 3d 542, 545 (1^st Cir. 1995).

Confusion Found But Dismissed

Both the District Court and the First Circuit acknowledged that Ghost Adventures had adduced evidence of actual confusion—often a key piece of evidence as to the existence of an actionable likelihood of confusion. But they were unwilling to accept this evidence in this case as supporting the plaintiff. Instead, they concluded that there were three possible sources of confusion, none of which assisted the plaintiff:  (i) the two businesses were in close proximity; (ii) both businesses trade off the Lizzie Borden story; and (iii) the view that many customers generally associate services related to a historical site, such as gift shops and cafes, with the nearby historical site itself.

The evidence in question included customers asking tour guides if they (Ghost Adventures) had opened a coffee shop or telling those tour guides that they (the customers) liked Ghost Adventures’ coffee. Other guests expressed frustration to tour guides that they could not bring their Miss Lizzie’s coffee on their tours of the Lizzie Borden House, having bought the coffee under the impression that the coffee shop was affiliated with the historical site.

As to rationale (i), if the coffee shop that opened next door to the Lizzie Borden House was called STARBUCKS, would we even be here? As to rationale (ii), with all due respect, these reactions do not suggest that the customers were connecting the parties’ respective goods and services to the Lizzie Borden story. They seemed to be connecting them to the goods and services of each other.

As for rationale (iii), assuming such phenomenon to be true, that doesn’t mean that customers could not also confuse certain gift shops and cafes with each other.

Both the District Court and the First Circuit stated that Ghost Adventures’ evidence of actual confusion was “contradicted to some extent by evidence from Miss Lizzie’s of the absence of confusion.” But neither opinion discusses this evidence.

As stated, for example, in Oriental Fin. Group, Inc. v. Cooperativa De Ahorro  y Credito Oriental, 832 F. 3d 15, 35 (1^st Cir. 2016), “A lack of actual confusion means little unless the purportedly confusing marks are shown to the public over a sufficient period of time.” Miss Lizzie’s opened for business on August 4, 2023. Suit was filed on September 18, 2023—some six weeks later—and there was no lack of actual confusion during that brief interval.

To be sure, proving a negative can be difficult. And Miss Lizzie’s had no burden of proof on the issue of likelihood of confusion. But where, as here, evidence favoring the plaintiff may have been undervalued, and purportedly contradictory evidence may have been immaterial if not nonexistent, the possibility of an incorrect decision cannot be dismissed.

Why This All Matters

Having found that Ghost Adventures was not likely to succeed on the merits, neither the District Court nor the First Circuit considered the other traditional preliminary injunction criteria. Had Ghost Adventures convinced the courts that it was likely to succeed, its quest for injunctive relief might have unfolded quite differently.

In particular, Ghost Adventures might have enjoyed a statutory presumption of irreparable injury. See 15 U.S.C. §1116(a). Moreover, since most of Miss Lizzie’s Coffee’s investment in its name seemed to be a couple of signs in its window, it would seem that the balance of hardships would favor Ghost Adventures. Finally, where a likelihood of confusion is found, the public interest is usually found to lie in the public’s right to not be confused.

Still, the denial of preliminary relief does not necessarily spell doom to Ghost Adventures’ right to continue to pursue its case. If they do, I for one would not bet against it.