incontestable LIZZIE BORDEN registration + actual confusion insufficient to overcome weight of history, 1st Circuit rules

US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, No.23-2000 (1^st Cir. Nov. 15, 2024)

The Lizzie Borden House “bears a storied history thatoriginates with the still-unsolved murders — in 1892 — of Lizzie Borden’sfather and stepmother.” Ghost Adventures “provides ghost tours and relatedhospitality services across the United States.” It owns a bed and breakfast operatedout of the Lizzie Borden House featuring a museum, “ghost tours,” and kindredactivities. 

bed & breakfast sign

Its success “depends in large part on the Lizzie Borden name andlore.” Ghost Adventures owns incontestable trademark registrations for both thename “Lizzie Borden” for hotel and restaurant services and for a realistichatchet logo displaying a notched blade (a reference to the implement thatallegedly killed Borden’s parents).

Ghost Adventures' registered logo

Miss Lizzie’s Coffee LLC recently opened a coffee shop nextdoor to the Lizzie Borden House. You will not be surprised to learn that it,too, markets itself by reference to the Lizzie Borden saga. One sign says “MissLizzie’s Coffee” between a cup of coffee and a stylized bloody hatchet. Asecond sign advertises Miss Lizzie’s as “The Most Haunted Coffee Shop in theWorld!” “The hatchets on both signs include handles and dramatic bloodsplatters.”

2 hatchets and blood splatters, "The Most Haunted Coffee Shop in the World!" Miss Lizzie's Coffee in Sweeney Todd-like font and a bloody hatchet

Some visitors have incorrectly assumed that the LizzieBorden House and Miss Lizzie’s are affiliated or asked about whether such arelationship existed. Some guests of the Lizzie Borden House were frustrated tolearn that they could not bring Miss Lizzie’s coffee on their tours of theLizzie Borden House, having bought the coffee under the erroneous impressionthat the coffee shop was affiliated with the historical site. A Fall River cityofficial called Ghost Adventures to discuss its “new business in the buildingnext door named Miss Lizzie’s.”

Ghost Adventures sought to enjoin Miss Lizzie’s from usingeither the “Lizzie Borden” trademark or the hatchet logo in the coffee shop’strade names, trade dress, and marketing materials.

The core problem here was causation. Ghost Adventures neededto show that Miss Lizzie’s used its mark in commerce in a way thatcaused confusion, not the Lizzie Borden mythos. The district court found thatthe hatchet displayed on Miss Lizzie’s signage was “not at all the hatchettrademarked by Ghost Adventures” nor even “a colorable imitation of it.” Itcontinued: “Miss Lizzie’s mark associates its business with the historicalstory of Lizzie Borden, not the mark ‘Lizzie Borden’” that Ghost Adventuresowns. Although “Ghost Adventures has an ‘incontestable’ trademark in ‘LizzieBorden’ and its hatchet, Miss Lizzie’s is using neither the mark ‘Lizzie Borden’nor the Ghost Adventures hatchet.” “Ghost Adventures has not demonstrated thatits mark bears the strength which might give it the ‘secondary meaning’ reachthat, for example, ‘Sam Adams Beer’ might claim regarding the historical figureSam Adams.”

The court found the consumer confusion “limited” and causedmainly by physical proximity, their common but independent reliance on theshared Lizzie Borden mythos, and the tendency to associate services related toa historical site with the site itself, not by the similarity of the businesses’marks. After all, “the same issues would arise if Miss Lizzie’s called its cafe‘Forty Whacks Coffee’ and used a different image as its logo.”

The district court also noted that the parties’ serviceswere different: “on one hand, sophisticated buyers who come from afar withtickets or reservations to experience the Lizzie Borden House; and the other,buyers seeking food or coffee.”

The parties also rely on different forms of advertising, anda sign on Miss Lizzie’s storefront explicitly disclaimed any relationship withthe neighboring Lizzie Borden House. Such a disclaimer can “tip the scales to afinding of no likelihood of confusion and no infringement” where, as here, “themulti-factor analysis points to a low likelihood of confusion.”

disclaimer of affiliation or association in window

The court of appeals affirmed, noting, for example, that “MissLizzie’s hatchet spews blood, whereas Ghost Adventures’ is spotless. Indeed, itappears that the only similarity between the hatchet logos is that they bothdepict hatchets. The court, then, did not clearly err in finding that thehatchet logos are facially dissimilar.” Also, “the district court supportablyfound that Miss Lizzie’s reference to ‘Lizzie’ was to the lore of Lizzie Borden— which Ghost Adventures does not own — rather than to the mark ‘Lizzie Borden.’Thus, the meaning associated with the name ‘Miss Lizzie’s Coffee’ is onlyincidentally similar to that of the ‘Lizzie Borden House.’” Ghost Adventuresdidn’t persuade the court of appeals that consumers would associate “LizzieBorden” with its services rather than with Lizzie Borden herself.

Likewise, the district court permissibly viewed the parties’differences as more important than their joint presence in the broadhospitality industry. “Ghost Adventures’ registration of the mark ‘LizzieBorden’ did not prohibit other businesses in the hospitality industry fromsetting up shop in the vicinity of the Lizzie Borden House. Nor did it prohibitsuch businesses from marketing themselves by the use of Lizzie Borden’s story.”

What about actual confusion?

The relevant consumer confusion ina trademark infringement action is confusion caused by an infringingmark. Consumer confusion due to non-trademarked similarities between businessesor products does not indicate infringement. For example, if two outdoorSaturday farmers’ markets opened on the same block, causing wandering shoppersto think that they were affiliated, their proximity and similar businessmodels, without more, would not be suggestive of trademark infringement. Thisbasic principle tracks a core purpose of trademark law: to prevent a copycatfrom appropriating the goodwill of a brand by wrongly copying the brand’s mark.Because the district court supportably found that the source of consumerconfusion was not the similarity of their marks, but something else altogether,the evidence of confusion relied upon by Ghost Adventures is of no consequence.(emphasis added)

Of course, this means that we have to be very sure what youcan and can’t own as a mark! The foundational proposition of the district courtand court of appeals here is “Ghost Adventures can’t own the Lizzie Borden mythos,even if consumers think they do.” I agree! But apparently a beer company mightown the Sam Adams mythos, at least for sufficiently beer-related activities?This is of course related to the difference between owning a mark for somethingand confusion about affiliation, which is a very different animal.

What about intent? Ghost Adventures argued that the coffeeshop “opened a location in immediate proximity to [Ghost Adventures’] business”and “intentionally used the word ‘Lizzie’ and a hatchet in [its] name andsignage.” The district court supportably found that Miss Lizzie’s sought tobenefit from the Lizzie Borden story in its own right, “not from the manner inwhich Ghost Adventures used that story.” It was not clear error to decide, “giventhe historical significance of the location,” neither Miss Lizzie’s acts alonenor those acts “considered in light of the entire record” evinced an intent toappropriate Ghost Adventures’ trademark.

What about incontestability? It didn’t affect themarketplace strength of the mark, which was not strong enough to displaceconsumers’ association with the real Lizzie Borden. 

The district court also pointed to a sign taped to the physical storefront that conspicuously reads: “MissLizzie’s Coffee is NOT ASSOCIATED, NOR AFFILIATED in any way with the LizzieBorden Museum or Bed and Breakfast next door, nor any other business.” The district court supportably found that thisclarification “further distinguish[ed] the businesses,” noting that effectivedisclaimers can “tip the scales to a finding of no likelihood of confusion andno infringement.”