Facts

Plaintiff L&L Franchise Inc. has operated a chain of fast food restaurants in Hawaii since 1976, and began expanding to the mainland United States in 1999. The plaintiff has used the name "L&L Hawaiian Barbecue" for its restaurants, and had registered trademarks and service marks for "L&L Hawaiian Barbecue", "The Original Hawaiian Barbecue" and "Hawaiian Barbeque". In 2006, defendant Edward Tsai briefly operated two fast food restaurants in San Diego County named "Shaka Hawaiian BBQ."

The plaintiff filed a complaint alleging claims for trademark infringement, unfair competition and Lanham Act violations.

PLAINTIFF'S CONTENTIONS:
The plaintiff contended that it had the exclusive right to use the words "Hawaiian Barbecue" in connection with any restaurant serving Hawaiian-style plate lunches, and that because defendant's restaurants used the words "Hawaiian BBQ" in their name, they infringed on plaintiff's trademarks and service marks.

The plaintiff also contended that defendant infringed on its "trade dress" by, inter alia, using plaintiff's photographs of menu items in its restaurants, on its promotional website and on posters, and having its employees wear L&L uniforms.

DEFENDANT'S CONTENTIONS:
The defendant contended that the words "Hawaiian Barbecue" (and variants such as "Hawaiian BBQ") were generic, merely describing a type of food or food preparation, and therefore could not be registered as a valid trademark or service mark. Also, the term "Hawaiian Barbecue" was already being used in the name of numerous other restaurants in California and throughout the United States, and was frequently used to describe a type of food on menus, in recipes, in books and on television shows, and therefore could not have any "secondary meaning" exclusively identifying L&L as the source.

The defense also argued that the plaintiff's "trade dress" claims were meritless because they were based in part on the assumption that plaintiff had the exclusive right to use the words "Hawaiian BBQ" in the name of a restaurant; the photographs of menu items were functional and non-original; the defendant's employees were never instructed to wear L&L uniforms, and the one occasion when an employee wore his own L&L t-shirt to work was unauthorized; and there was no likelihood of "consumer confusion" between L&L and Shaka Hawaiian's restaurants.

Damages

The plaintiff sought an award of more than $1 million for alleged trademark and trade dress infringement, trebled pursuant to the 15 U.S.C. Section 1117(a), and attorney's fees and costs.

Result

By order dated March 7, 2008, U.S. District Court Judge John A. Houston granted defendant's motion for partial summary judgment, and held that the words "Hawaiian Barbecue" were generic, and as a matter of law could not by themselves be entitled to trademark or service mark protection. The plaintiff filed an appeal from the district court's order. On Nov. 4, 2008, the Ninth Circuit Court of Appeals issued an order dismissing the appeal, on the ground that the plaintiff had failed to show any applicable exception to the rule against appellate review of interlocutory orders of the district court. On May 19, 2009, the parties entered a settlement, with defendant making a payment ($2,500) to plaintiff in exchange for a mutual release and dismissal of all claims. The action was dismissed by order of the district court entered on June 1, 2009.

Other Information

FILING DATE: May 31, 2006.