                                       No. 07-60497

           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT United States Court of Appeals
                                                   Fifth Circuit

                                                                             FILED
                                                                           August 6, 2008

                                       No. 07-60497                    Charles R. Fulbruge III
                                                                               Clerk

BRENNAN’S, INC.

                                                   Plaintiff-Appellant
v.

BERT CLARK BRENNAN; BLAKE W BRENNAN

                                                   Defendants-Appellees



                   Appeal from the United States District Court
                     for the Southern District of Mississippi
                             USDC No. 3:06-cv-00694


Before SMITH, DeMOSS, and STEWART, Circuit Judges.
PER CURIAM:*
       Appellant Brennan’s Inc. appeals the district court’s denial of a
preliminary injunction against Appellees Bert Clark Brennan and Blake
Brennan for trademark infringement and dilution and the district court’s
granting of Appellees motion to exclude expert testimony.


                                              I.

       *
        Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not be
published and is not precedent except under the limited circumstances set forth in 5TH CIR. R.
47.5.4.
                                  No. 07-60497

      Appellant owns and operates the well known Brennan’s restaurant in New
Orleans, Louisiana. Appellees, former employees of the Appellant, initiated
plans to open their own restaurants in Destin, Florida, and Jackson, Mississippi.
On August 31, 2006, Appellees registered the mark “Clark and Blake Brennan’s
Royal B” for use in connection with their restaurants with the United States
Patent and Trademark Office (USPTO). Appellant brought suit against
Appellees pursuant to the Lanham Act, 15 U.S.C. §§ 1114 & 1125, for trademark
infringement and unfair competition. Appellant also sought an injunction
pursuant to 15 U.S.C. § 1116, to prohibit Appellees from using the name, or any
name similar to, the “Brennan’s” mark; selling, displaying, using, or advertising
under the “Brennan’s” mark or incorporating the “Brennan’s” mark or any
variation thereof; and engaging in unfair competition. The district court held
that Appellant failed to satisfy the elements necessary to impose a preliminary
injunction. Appellant timely filed the present appeal.
      We review the factual findings of the district court for clear error and its
legal conclusions de novo. Hoover v. Morales, 164 F.3d 221, 224 (5th Cir.1998).
Each of the four elements required to support a preliminary injunction presents
mixed questions of law and fact. Id. The ultimate decision whether to grant or
deny a preliminary injunction is reviewed only for abuse of discretion, however
a decision based on erroneous legal principles is reviewed de novo. Id. In
reviewing a trademark claim, a “finding of a likelihood of confusion is . . . a
finding of fact reviewed for clear error.” Westchester Media v. PRL USA
Holdings, Inc., 214 F.3d 658, 665 (5th Cir. 2000).
      A preliminary injunction is an extraordinary equitable remedy that may
be granted only if the plaintiff establishes four elements: (1) a substantial
likelihood of success on the merits; (2) a substantial threat that the movant will
suffer irreparable injury if the injunction is denied; (3) that the threatened
injury outweighs any damage that the injunction might cause the defendant; and
(4) that the injunction will not disserve the public interest. Speaks v. Kruse, 445
                                         No. 07-60497

F.3d 396, 399-400 (5th Cir.2006) (internal quotations omitted). To succeed in a
trademark infringement claim, a party must first show that it has a protectable
right in the mark and, second, show that there is a likelihood of confusion
between the marks. See Sec. Ctr., Ltd. v. First Nat'l Sec. Ctrs., 750 F.2d 1295,
1298 (5th Cir.1985).
       Following limited discovery and a hearing, the district court found that
Appellant failed to establish a substantial likelihood of success on the merits
after considering the “digits of confusion.”1 Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188, 194 (5th Cir. 1998). Specifically, the district court found that: 1)
the “Brennan’s” mark is weak due to the number of restaurants using the
Brennan name; 2) the only similarity in the two marks is the name “Brennan’s,”
and differences in exemplars and the use of the Appellees’ first names
sufficiently distinguishes the marks; 3) any similarities between the parties’
restaurants already exist between Appellant’s restaurants and “countless other”
New Orleans and French Quarter restaurants, including restaurants opened by
other Brennan family members, and that Appellees have not replicated
Appellant’s restaurant to an extent likely to cause confusion; 4) the parties are
not in direct competition for customers due to the distances between the
restaurants and the sophistication of the potential patrons; 5) the distances in
between the restaurants would not likely result in advertising that misleads
potential customers; 6) the Appellees did not intend to confuse or deceive the
public; and 7) there was insufficient evidence of actual confusion by the public.
The district court found that, with only one exception, Appellant has not suffered
any confusion, loss of goodwill, or loss of reputation with any of the multiple




       1
         The non-exhaustive list of factors, or “digits of confusion,” includes: “ 1) the type of
trademark allegedly infringed; 2) the similarity between the two marks; 3) the similarity of the
products or services; 4) the identity of the retail outlets and purchasers; 5) the identity of the
advertising media used; 6) the defendants’ intent; and 7) any evidence of actual confusion.
Elvis Presley Enters., 141 F.3d at 194.
                                        No. 07-60497

Brennan family restaurants in operation in New Orleans and elsewhere.2 The
district court also held that Appellant failed to establish irreparable harm given
the lack of evidence that Appellees’ restaurant would threaten Appellant’s
reputation. Finally, the district court found that allowing Appellees to use their
own last name in connection with their restaurant when there is a low likelihood
of confusion would not disserve the public interest.
       We find no error with the district court’s findings and hold that the district
court did not abuse its discretion in denying the preliminary injunction, thus the
decision of the district court is affirmed.
                                              II.
       We review the district court’s exclusion of expert testimony for abuse of
discretion. United States v. Ogle, 328 F.3d 182, 188 (5th Cir. 2003). The district
court denied Appellant’s motion to exclude the expert testimony of Kenneth
Germain. Appellant has offered no basis for this court to find that the district
court abused its discretion in excluding the testimony. Thus, we affirm the
district court’s granting of Appellees’ motion to exclude.
AFFIRMED.




       2
         For example, the district court heard testimony that Brennan’s in Houston, specifically
intended to replicate the Brennan’s in New Orleans, created little to no confusion with, and had
no effect on the reputation or goodwill of, the Brennan’s in New Orleans.
