     Case: 10-20587    Document: 00511564848         Page: 1    Date Filed: 08/08/2011




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

                                                                           FILED
                                                                         August 8, 2011
                                      No. 10-20587
                                                                         Lyle W. Cayce
                                                                              Clerk
Almeda Mall, L.P.

                                                 Plaintiff-Appellee
v.

Shoe Show, Inc., doing business as The Shoe Department, Inc.;
The Shoe Show of Rocky Mount, Inc., doing business as Shoe Department,

                                                 Defendants-Appellants



                 Appeal from the United States District Court for
                          the Southern District of Texas



Before WIENER, BENAVIDES, and STEWART, Circuit Judges.
Wiener, Circuit Judge.
        Defendant-Appellant Shoe Show, Inc. (“Shoe Show”) entered into a lease
(the “Lease”) as lessee (“Lessee”) of a store space (the “Leased Premises”) in a
shopping mall in Houston, Texas. The Lessor was San Mall, the predecessor in
interest of Plaintiff-Appellee Almeda Mall, L.P. (“Almeda”). In the Lease, Shoe
Show agreed to operate a retail shoe store in the Leased Premises under the
trade name “The SHOE DEPT.”1 The Lease expressly prohibited Shoe Show


       1
         The Lease refers to the trade name to be used by Lessee as “The SHOE DEPT.”; the
record photo of the sign on the Leased Premises reflects “the SHOE DEPT.” as does Appellee’s
brief; the Appellants’ brief refers to “THE SHOE DEPT.” We have chosen to go with the Lease
and use “The SHOE DEPT.” throughout this opinion.
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                                 No. 10-20587

from operating another business under the name “The SHOE DEPT.” or any
“substantially similar trade-name,” within two miles of the Leased Premises.
Shoe Show subsequently opened a retail footwear store under the name “SHOE
SHOW” in a commercial center located less than a quarter mile from the mall
in which the Leased Premises is located. Neither San Mall nor Almeda objected
until, some time later, Shoe Show exercised its option to terminate the Lease
early, which option was conditioned on Shoe Show’s not being in default under
the Lease. Only then did Almeda, as the current owner of the mall in which the
Leased Premises is located, sue Shoe Show.         Almeda contended that its
operation of that second store violated the terms of the Lease because the name
of the second store was “substantially similar” to the name of the store in the
Leased Premises, thereby making Shoe Show ineligible to terminate the Lease
early. Holding that the two trade names were indeed substantially similar, the
district court granted Almeda’s motion for summary judgment. As we conclude
that, under the uncontested facts of this case and the discrete provisions of the
Lease, the trade name SHOE SHOW is not substantially similar to The SHOE
DEPT., we reverse that court’s summary judgment and remand for further
proceedings consistent herewith.


                         I. FACTS & PROCEEDINGS


A. Facts
      Shoe Show entered into the Lease with San Mall for the stated purpose of
operating a retail shoe store in the Almeda mall which was then owned and
operated by San Mall. The Lease was for a term of ten years, but gave Shoe
Show the option of terminating the Lease after five years if the Lessee’s annual
sales in the Leased Premises did not exceed one million dollars by the end of the
fifth year of the lease term. This option was conditioned, however, on Shoe

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                                   No. 10-20587

Show’s not being in default under the Lease when it mailed the termination
notice.
      Section 4.01(c) of the Lease states that Shoe Show “shall operate its
business . . . under the following trade-name only and under no other trade-
name: The SHOE DEPT.” Section 4.08 of the Lease (“the trade name provision”)
states:
      Tenant agrees that so long as this Lease shall remain in effect,
      Tenant . . . shall not, either directly or indirectly, own, operate or be
      financially interested in . . . a business operating under the same or
      substantially similar trade-name, as permitted by Section 4.01(c) of
      this Lease, within a radius of two (2) miles of the perimeter of the
      [mall].

Section 4.08 of the Lease also provides that if Shoe Show should violate the trade
name provision, the Lessor could include all gross sales from the other proximate
business when calculating Shoe Show’s rent for the Leased Premises.
      Pursuant to the Lease, Shoe Show opened a retail shoe store in the Leased
Premises under the name The SHOE DEPT. Approximately four years later,
Shoe Show opened another retail shoe store, using the trade name SHOE
SHOW, in a commercial center located approximately 400 feet from the
perimeter of the shopping mall in which the Leased Premises is located. A few
months after that, San Mall sold that shopping mall to Almeda and assigned all
of the leases of space therein to Almeda.         Neither San Mall nor Almeda
registered any concern or took any action against Shoe Show for using SHOE
SHOW as the name of its new store in the nearby center, however, until the
spring of the year following Almeda’s acquisition of the mall – and then only
after Shoe Show had notified Almeda that it intended to exercise its early-
termination option. In that notice, Shoe Show advised Almeda that annual sales
at The SHOE DEPT. had failed to reach the million-dollar level by the end of the
fifth lease year of the Lease.


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      Almeda rejected Shoe Show’s early termination of the Lease, contending
for the first time that Shoe Show’s operation of SHOE SHOW in such close
proximity to the Leased Premises violated the trade name provision of the Lease,
thereby constituting a default and making Shoe Show ineligible to exercise its
early-termination option. Shoe Show disagreed, vacated the Leased Premises,
and ceased paying rent under the Lease. Two months later, Almeda sued Shoe
Show for breach of the Lease.


B. Proceedings
      The parties filed opposing motions for summary judgment. Almeda took
the position that Shoe Show’s operation of a retail store under the name SHOE
SHOW in the nearby commercial center violated the trade name provision of the
Lease, putting Shoe Show in default and rendering it ineligible to exercise its
right to terminate the Lease early. Almeda sought past due rent, future
damages, and attorneys fees. Shoe Show countered that it had not violated the
trade name provision of the Lease because the name SHOE SHOW is neither
expressly prohibited in the Lease nor substantially similar to The SHOE DEPT.
as a matter of law.
      The district court agreed with Almeda that the two stores had
substantially similar trade names and granted Almeda’s motion for summary
judgment, awarding it damages and attorneys fees. Shoe Show timely filed a
notice of appeal.




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                                       No. 10-20587

                                II. STANDARD OF REVIEW
       We review a district court’s summary judgment de novo.2 Summary
judgment is appropriate when “there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law.”3                      When
reviewing a summary judgment, we construe all the evidence and reasonable
inferences in the light most favorable to the nonmoving party.4


                                     III. ANALYSIS


       The parties agree that, pursuant to the choice-of-law provision of the
Lease, Ohio law governs the interpretation of that contract. We conduct our
review of the instant summary judgment in two steps. We first determine the
meaning of the phrase “substantially similar trade-name” as it is used in the
Lease. We then determine whether, in that context, the trade names SHOE
SHOW and The SHOE DEPT. are substantially similar.
       We agree with the district court that, as used in the Lease, the phrase
“substantially similar trade-name” is not ambiguous. A term is not ambiguous
when it can be given a definite legal meaning.5 The district court drew on the




       2
         Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 233 (5th Cir. 2010) (citing
Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465,
474 (5th Cir. 2008)).
       3
           FED. R. CIV. P. 56(a).
       4
        Amazing Spaces, 608 F.3d at 234 (citing Xtreme Lashes, LLC v. Xtended Beauty, Inc.,
576 F.3d 221, 226 (5th Cir. 2009)).
       5
        Westfield Ins. Co. v. Galatis, 797 N.E.2d 1256, 1261 (Ohio 2003) (citing Gulf Ins. Co.
v. Burns Motors, Inc., 22 S.W.3d 417, 423 (Tex. 2000)).

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                                        No. 10-20587

Ohio Labor and Industry Code6 as well as BLACK’S LAW DICTIONARY7 in
determining that a trade name is “the name that identifies a business.” The
court then credited RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY’S8
definition of “substantially similar” as having “essential elements in common.”
The district court surmised (and we agree) that the subject phrase, as used in
the trade name provision of the Lease, prohibits Shoe Show from opening and
operating any business withing two miles of the Leased Premises under a name
that “identifies a business” and has essential elements in common with “The
SHOE DEPT.” For purposes of such identification, “business” refers to the party
conducting the operation, not to the nature of the operation that it conducts.
       Of equal importance to our inquiry as what the trade name provision of
the Lease specifies is what it does not specify.9 As reflected in the record and
confirmed by counsel at oral argument, the parties who negotiated the Lease
were sophisticated individuals with considerable experience operating and
leasing shopping malls and commercial centers on the one hand, and renting and
operating retail footwear stores in such locations on the other hand. More to the
point, the party who negotiated the lease for the Lessor was aware that Shoe
Store is a national footwear retailer with some 1,100 outlets, almost all of which
are operated under one of but three trade names: SHOE SHOW, The SHOE
DEPT., or BURLINGTON SHOES. Within that framework we note:




       6
           OHIO REV. CODE ANN. § 4165.01.
       7
           (8th ed. 2004).
       8
           (2d ed. 1999).
       9
        We remain mindful that this is not a trademark, patent, or copyright case and does
not involve infringement or appropriation of such a right by a stranger against the holder of
the right. Rather, this trade name case implicates precisely the opposite, viz., the express
contractual effort to limit the use of a trade name by its rightful holder.

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      •     The trade name provision of the Lease does not expressly prohibit
            Shoe Store from operating a retail shoe store within a two-mile
            radius of the Leased Premises.
      •     Neither does the trade name provision expressly prohibit Shoe Show
            from using the word “shoe” in the trade-name of any operation that
            it might conduct within a two-mile radius of the Leased Premises.
      •     Although the trade name provision expressly prohibits Shoe Store
            from using the name The SHOE DEPT. for any store that it might
            operate within two miles of the Leased Premises, that provision
            never mentions, much less expressly prohibits, Shoe Show’s use of
            either of its other two widely used trade names, SHOE SHOW or
            BURLINGTON SHOES.
      •     Instead of forthrightly prohibiting Shoe Show from using those
            other two widely used trade names, the trade name provision
            employs only the non-specific, elastic term “substantially similar” in
            reference to The SHOE DEPT. to identify the set of other trade
            names that Shoe Show may not use within two miles of the Leased
            Premises.
      •     Although the trade name provision prohibits Shoe Show from using
            a trade name that is “substantially similar” to The SHOE DEPT., it
            does not proscribe the use of “misleadingly similar” or “confusing”
            trade names or other such restrictive labels that are commonly
            employed in patent, copyright, and trademark law.
      In failing expressly to prohibit the use of SHOE SHOW or BURLINGTON
SHOES, and instead employing (or, more likely, reluctantly accepting) the non-
specific phrase “substantially similar trade-names,” San Mall, as the original
lessor of the Leased Premises, apparently attempted to do indirectly that which
it did not (and likely could not) do directly, i.e., make Shoe Show as Lessee

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                                       No. 10-20587

expressly commit not to use its other two widely used trade names, SHOE
SHOW and BURLINGTON SHOES, in close proximity to the Leased Premises.
Then, after the Lease was signed and the Leased Premises occupied, San Mall,
and, subsequently, Almeda, remained silent the whole time that Shoe Show was
opening and operating its new store under the name SHOE SHOW less than a
quarter of a mile from Lessor’s mall — until, that is, Shoe Show gave notice that
it was terminating the Lease. Only then did Almeda, as successor Lessor,
attempt to shoehorn the name “SHOE SHOW” into the non-specific prohibition
contained in the trade name provision, “substantially similar.”
      We are chary to reward Almeda’s attempt to do indirectly that which its
Lease fails to do directly.        Contrary to the assertions of Almeda and the
conclusions of the district court, we are satisfied that, when examined in the
context of the entire Lease and the history of the confection, “The SHOE DEPT.”
and “SHOE SHOW” are not substantially similar trade names within the
intendment of the Lease’s trade name provision. Consequently, we conclude that
Shoe Show did not violate that provision of the Lease when it opened and
operated the second store under the name SHOE SHOW within a two mile
radius of the first. Here is why.
      In Cleveland Opera Co. v. Cleveland Civic Opera Association, a case
heavily relied on by the district court, an appellate court in Ohio employed a two-
step analysis to determine whether the names of two rival organizations were
substantially similar.10         The Ohio court’s first step was to eliminate
consideration of geographical and descriptive terms, stating that “we think there
is no authority that warrands [sic] the barring of words geographical and
descriptive, unless in connection with other words they are precisely similar, or




      10
           154 N.E. 352, 353 (Ohio Ct. App. 1926).

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                                   No. 10-20587

so substantially similar, that, in the face of proof, deception and confusion would
arise, and therefore unfair competition.”11
      We see that pronouncement as precisely applicable to the word “shoe” in
this case. As used in the trade names of both The SHOE DEPT. and SHOE
SHOW, the word “shoe” is descriptive only. It generically identifies the nature
of the operation being conducted, not the particular business entity that is
conducting it. Therefore, in neither of these names does “shoe” contribute to the
determination whether the two trade names are “substantially similar.” Indeed,
it is completely neutral and is neither deceptive nor confusing.
      Another reason that “shoe” cannot be a determinative element here is
because the trade name provision of the Lease does not forbid Shoe Show from
conducting a footwear operation within the proscribed proximity of the Leased
Premises. We take judicial notice of the fact that the vast majority of retail
footwear stores throughout this country include the word “shoe” in their titles
and do so for the single purpose of identifying the type of merchandise offered
in that store, and not for the purpose of identifying the business – the person,
company, corporation, or chain – that is making those goods available.
      Almeda, like San Mall before it, has to have known that — absent an
express prohibition in the Lease of the use of SHOE SHOW or BURLINGTON
SHOES — any facility opened and operated by Shoe Show within (or, for that
matter, beyond) two miles of the Leased Premises would almost certainly employ
one of those trade names, each of which includes the generic or descriptive term
“shoe.” We must reject out of hand any consideration of the word “shoe” as a
factor in determining whether “SHOE SHOW” is substantially similar to “The
SHOE DEPT.”




      11
           Id. (emphasis added).

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      The second step under the Cleveland Opera Co. analysis is to determine
whether “the other words constituting the name . . . result in apparent or
obvious confusion, or by inference tend in that direction to such extent that there
is a probability that by reason of confusion unfair competition may be the result
. . . .”12 DEPT. (silently read by all who see it as “department”) and SHOW have
very different meanings; they are not each other’s synonyms. This is confirmed
by comparing many of the synonyms for those two words that are listed in
ROGET’S THESAURUS. A sampling of the synonyms found in ROGET’S for
“department” includes administration, agency, area, bureau, division, office,
quarter, station, subdivision, unit, assignment, classification, subdivision,
territory, classification, specialty, and sphere.13 Compare those with some of
ROGET’S synonyms for “show,” e.g., demonstration, exhibition, appearance,
display, expo, fair, parade, presentation, and production.14 It becomes readily
apparent that there is no overlap in the synonyms for shoe and those for
department, making it highly unlikely that a potential customer would be
confused or misled as to what business entities, i.e., who, is offering shoes in the
subject stores based on any similarity in “SHOW” and “DEPT.” And, Almeda
does not contend that a shopper would be likely to know that the same entity
owns and runs both “The SHOW DEPT.” and “SHOE SHOW.” If, instead of
SHOW, the name of the second store had included a synonym of department,
such as “agency,” “bureau,” “division,” “unit,” this might have been a much closer
case. Instead, by selecting SHOW, Shoe Show included a synonym for, e.g.,
“exhibition,” “display,” “expo,” and “presentation,” but not for “department.”




      12
           Id.
      13
           ROGET II: THE NEW THESAURUS (3d ed. 1995).
      14
           Id.

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                                     No. 10-20587

      If anything, the definitions of those determinative words imply two
functionally different types of establishments. The retail shoe store dubbed “The
SHOE DEPT.” inside Almeda’s shopping mall could well be thought of by the
average shopper as that mall’s footwear department, division, specialty, or the
like. By contrast, the space occupied by SHOE SHOW in the nearby commercial
center is not located inside a mall and has the appearance to the general public
of a free-standing commercial space. More to the point, the word “show” conveys
a connotation different from “department.             When, as here, “SHOW” (1)
designates an exterior space or premises in a commercial center and (2) is
modified by an adjective (shoe) to identify the kind of “show” being conducted
in that space, a reasonable inference is that it is a place in which to view and
inspect shoes, boots, sandals, and the like, but not necessarily a place in which
to purchase footwear.
      The Sixth Circuit, in a trademark infringement case, noted that “[w]hen
analyzing similarity, courts should examine the pronunciation, appearance, and
verbal translation of conflicting marks.”15 Although this is not a trademark
case, the differences in pronunciation, appearance, and verbal translation
between SHOW and The . . . DEPT. strengthen our conclusion that these two
terms are not substantially similar within the context of the trade name
provision of the Lease.
      First, the operative words do not sound alike. SHOW plays off the
alliteration with shoe; DEPT. is the abbreviation of “department” and translates
as such in the mind of the beholder, playing out in three syllables to SHOW’s
one. Second, the structure of the two store names are different. SHOE SHOW
comprises two unabbreviated words, neither of which is modified by an article;
The SHOE DEPT. comprises three words, one being the article, “The,” and the

      15
         Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275,
283 (6th Cir. 1997) (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988)).

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                                  No. 10-20587

third being an abbreviation. As used in these two store names, SHOW and
DEPT. are about as different in pronunciation and appearance as is conceivable.
      We perceive as highly unlikely any potentiality for confusion about
proprietor identity being engendered by the use of SHOW and DEPT.,
respectively, in the names of these two retail footwear establishments.
Examined in a vacuum, the two words have very different meanings, as
illustrated by ROGET’S lists of their mutually exclusive synonyms. And, when
the words are examined in context, modified as they are by SHOE, the generic
adjective that they have in common, SHOW and DEPT. imply two different
types of footwear facilities or operations.      Separate and apart from their
respective meanings, the two words differ in pronunciation, appearance, and
verbal translation.
      In sum, we are convinced that, because (1) “shoe” is a generic or
descriptive term and is common to the overwhelming majority of establishments
that have anything at all to do with footwear, and (2) the non-generic terms
SHOW and DEPT. have virtually nothing in common, SHOE SHOW, (the name
of the store in the nearby commercial center), is not substantially similar to The
SHOE DEPT. (the name of Shoe Show’s store in Almeda’s mall) – at least not for
purposes of the trade name provision of the Lease. This is even more apparent
when these trade names are viewed in the perspective of the way that the trade
name provision of the Lease evolved through substantial negotiations by
experienced and sophisticated commercial leasing parties, and the fact that the
presence of a SHOE SHOW in the nearby commercial center never elicited
protest by either San Mall or Almeda until Shoe Show gave notice that it was
terminating the Lease.




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                              IV. CONCLUSION


      The Lease’s trade name provision is unambiguous. It prohibits Shoe Show
from conducting a proximate operation – any operation, not just a shoe store –
under the name The SHOE DEPT. or any other name that is substantially
similar to The SHOE DEPT. This lease provision is pregnant with the negative
– the absence of – (1) an express prohibition of Shoe Show’s operation of one or
more shoe stores within the proscribed radius of Almeda’s shopping mall and (2)
an express prohibition of Shoe Show’s using either of its other two widely used
trade names, SHOE SHOW and BURLINGTON SHOES.                         If Almeda’s
predecessor expected to be able to block Shoe Show’s use of either or both of
those trade names, it should have included them expressly in the Lease’s list of
forbidden trade names, just as it did with The SHOE DEPT. To sign a lease
containing that omission and thereafter come into court with a collateral attack
on the use of one of those two known trade names based on nothing more than
the amorphous ban on “substantially similar” trade names should not and will
not be countenanced – especially when (1) the generic word, shoe, is universally
descriptive of the non-barred act of operating a retail footwear store, and (2)
SHOW is not substantially similar to The . . . DEPT. Interestingly, Almeda has
not pointed to any example of a retail store that, in its trade name, employs the
word “show” modified by a generic word that references the kind of merchandise
being sold, much less the identity of the merchant doing the selling: No “Grocery
Show,” no “Sporting Goods Show” no “Appliance Show,” and so on ad infinitum.
      When viewed in the context of the entire Lease and all of the relevant facts
of this case, SHOE SHOW is just not substantially similar to The SHOE DEPT.
Accordingly, Shoe Show did not violate the Lease when it opened a second store
under the name SHOE SHOW within two miles of Almeda’s mall. Absent such
a violation, Shoe Show’s use of SHOE SHOW did not constitute a default by the

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                                  No. 10-20587

Lessee under the Lease and thus did not prohibit Shoe Show from exercising its
option to terminate the Lease as of the end of its fifth year. We therefore reverse
the district court’s summary judgment and remand for further proceedings
consistent herewith.
REVERSED and REMANDED.




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                                 No. 10-20587

CARL E. STEWART, Circuit Judge, dissenting:
        The only issue presented is whether the trade names “The SHOE DEPT.”
and “SHOE SHOW” are substantially similar within the context of the parties’
lease agreement. The district court’s well-reasoned memorandum opinion and
order concluded that “SHOE SHOW” and “The SHOE DEPT.” are substantially
similar trade names within the meaning of the lease agreement, and therefore
that Shoe Show breached its contract with Almeda Mall when it abandoned its
store in the Almeda Mall and ceased paying rent prior to the end of the lease
term.
        The district court concluded, and all parties agree, that the phrase
“substantially similar trade name” is unambiguous. The dispute turns on the
differing viewpoints employed to parse the language. For essentially the reasons
given by the district court, I would affirm the summary judgment. Accordingly,
I dissent from the majority opinion.
