Opinion
Case No. 2:00-CV-0045C
September 28, 2000
ORDER
On January 19, 2000, Plaintiffs the Delta Western Group ("Delta Western") filed this suit to challenge the use of the "U.S. Prime" trademark by Ruth U. Fertel, Inc. ("RUFI"). The complaint alleges that RUFI violated the Federal Trade Commission Act and the federal Lanham Trademark Act of 1946 ("Lanham Act"). On May 23, 2000, RUFI filed an amended counterclaim, alleging that Delta Western's use of the name "U.S. Prime" on their restaurant and products infringes RUFI's registered trademark in violation of the Lanham Act, 15 U.S.C. § 1114 (1), 1125(a). RUFI's counterclaim seeks temporary, preliminary, and permanent injunctive relief barring Delta Western's continued use of the name "U.S. Prime."
On June 1, 2000, RUFI filed a motion for injunctive relief. Following a hearing held on the same day, the court denied RUFI's request for a temporary restraining order. Delta Western then moved to amend its complaint, but the court denied Delta Western's motion. On July 19, 2000, the court granted RUFI's motion to dismiss both of Delta Western's claims for failure to state a claim upon which relief can be granted. The only claims remaining in this case, therefore, are those raised in RUFI's counterclaim.
This matter is now before the court on RUFI's motion for a preliminary injunction. A hearing was held on September 12 and 13, 2000, at which RUFI was represented by Donald Winder and Joseph Chauntin III, and Delta Western was represented by Donald Little. Having fully considered the arguments of counsel, the submissions of the parties, and applicable legal authorities, the court grants RUFI's motion and enters the following findings of fact and conclusions of law.
Findings of Fact
Delta Western is the owner of the U.S. Prime Steak House, a restaurant in Park City, Utah. RUFI is the owner of the Ruth's Chris Steak House chain. There are nearly 70 Ruth's Chris Steak Houses nationwide, although none in the state of Utah.
In 1994, RUFI began using a mark which features the words "U.S. Prime" tilted at an upward angle and surrounded by two concentric circles ("U.S. Prime service mark"). The words "U.S. Prime" in the U.S. Prime service mark appear in black, all-caps, block lettering. RUFI uses its U.S. Prime service mark in a variety of ways. RUFI's director of marketing, Debra Hinson, testified that, since 1994, RUFI has been using the mark decoratively on the etched glass and awnings of restaurants and as a logo on its menus, promotional materials, and correspondence. The U.S. Prime service mark also appears as part of the overall logo for the Ruth's Chris Steak Houses chain. In December 1999, RUFI applied to the Patent and Trademark Office ("PTO") to register the U.S. Prime service mark, and in February 2000, the PTO granted RUFI's application and placed the U.S. Prime service mark on its principal register.
A service mark is "any word, name, symbol, or device, or any combination thereof . . . to identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services, even if that source is unknown." 15 U.S.C. § 1127.
RUFI's expert witness on marketing, Dr. Gary Bamossy, testified that, based on his survey of 602 people in New Orleans, Baltimore, and Indianapolis, the U.S. Prime service mark is recognized by potential customers and associated by them with the Ruth's Chris Steak House chain. The testimony of Delta Western's expert, Dr. Allen Rosenzweig, was of limited value due to severe problems in the methodology of Delta Western's survey.
Delta Western's survey was conducted not by Dr. Rosenzweig himself, but by Delta Western employees. The survey did not ask respondents about their income levels, frequency of dining in steak houses, or city or state of residence. The survey was administered in Park City during the summer months, well before the beginning of the ski season. Dr. Rosenzweig conceded that it was possible that most of the survey respondents were residents of Utah, where there is no Ruth's Chris Steak House, rather than tourists coming from cities with a Ruth's Chris. Dr. Rosenzweig had also failed to look over the results of all the surveys. The court thus received Dr. Rosenzweig's testimony for the limited point that none of the survey respondents had associated the words "U.S. Prime" with Ruth's Chris Steak House, but did not permit him to testify as to secondary meaning.
In 1999, Donald Little and Daniel McCauley, the managers of Delta Western, decided to open a steak house in Park City. Little, who had grown up in New Orleans, Louisiana, the home of RUFI and the birthplace of the Ruth's Chris chain, had eaten at Ruth's Chris numerous times, and, as he testified, "grew up on" Ruth's Chris food. Little considered Ruth's Chris Steak House to be one of the top three steak house chains in the country. Little was impressed by the food and manner of operation of Ruth's Chris Steak Houses, and he generally looked to the chain as an example of how to succeed in the steak house market. Little admitted that he had the colors and look of Ruth's Chris signs and logos in mind as he developed the look and style for his own restaurant. Little and McCauley considered several names for their new restaurant, eventually settling on the name "U.S. Prime Steak House." The U.S. Prime Steak House opened for business in Park City in December 1999.
Delta Western uses the mark "U.S. Prime" as the name for its restaurant, but also to describe its products and specialties, such as the "U.S. Prime Caesar Salad." Delta Western's mark uses the same words as does RUFI's service mark, namely the words "U.S. Prime." Although Delta Western sometimes adds the words "Steak House" to its mark, it also uses the words "U.S. Prime" alone to describe its restaurant and products.
In trademark cases, the phrases, symbols, or logos in dispute are typically referred to as "marks." This applies both to the registered trademark and to the phrase, symbol, or logo alleged to infringe upon the trademark.
Delta Western uses "U.S. Prime" in textual form only and does not place the words in any sort of logo. The words "U.S. Prime" appear in red, all-caps, block lettering. The words "U.S.D.A. Prime" appeared on the front door of the U.S. Prime Steak House, tilted at the same upward angle as the words "U.S. Prime" in RUFI's service mark. At one point these words were surrounded by one circle, but Delta Western later removed the circle.
Little testified that he was aware of RUFI's U.S. Prime service mark before he named his restaurant. A former associate of Little's, Mark Jacson, testified that he saw a copy of RUFI's U.S. Prime service mark in Little's apartment before Delta Western settled on the name "U.S. Prime Steak House."
The style and operation of the U.S. Prime Steak House and Ruth's Chris Steak Houses are similar in several respects: both are "fine dining" establishments, catering to those who have above-average incomes; both specialize in steak; both cook their steaks in special 1800 degree ovens; both serve their steaks in butter and sizzling on a heated plate; the original menus of the U.S. Prime Steak House and Ruth's Chris Steak Houses are very similar, and the descriptions of some food items are nearly identical; U.S. Prime Steak House menus refer directly to Ruth's Chris Steak Houses by stating that "In Park City, Utah there is not a Ruth's Chris Steak House or a Morton's of Chicago Steak House . . . however, there is The U.S. Prime Steak House"; some of the recipes used at the U.S. Prime are similar to those used at Ruth's Chris Steak Houses.
After commencing this litigation with RUFI, the U.S. Prime Steak House revised its menus. These new menus have been in use for approximately two months.
For example, the menus of both Ruth's Chris Steak Houses and the U.S. Prime Steak House describe a ribeye as "an outstanding example of USDA Prime at its best. Well marbled for peak flavor, deliciously juicy." Ruth's Chris's menu, in describing a porterhouse, states that "this USDA Prime cut combines the rich flavor of a strip with the tenderness of a filet," while the U.S. Prime Steak House menus states that "this USDA Prime cut combines the rich flavor of a New York Strip and the classic tenderness of a Filet."
Jacson testified that Little had told him that he planned to base several of the recipes at the U.S. Prime Steak House off of Ruth's Chris's recipes. This testimony was refuted by Little and Brian Morgan, the manager of the U.S. Prime Steak House, who testified that none of the recipes used at the U.S. Prime Steak House are Ruth's Chris recipes.
There are, however, several differences between the two restaurants. For example, while the U.S. Prime Steak House is an informal establishment that plays rock music and in which customers may dine in casual clothing, certain Ruth's Chris Steak Houses play classical music and have a more formal atmosphere.
Hinson testified, however, that some Ruth's Chris Steak Houses have an informal atmosphere, and that customers at all Ruth's Chris Steak Houses are typically allowed to wear whatever they wish, at the discretion of the franchisee.
Many of the customers of the U.S. Prime Steak House are out-of-state tourists who come to Park City during the ski season, and the U.S. Prime Steak House is open only during the ski season. Delta Western is currently exploring the possibility of opening U.S. Prime Steak Houses in Texas and in California, and, in fact, Delta Western has registered the name "U.S. Prime Steak House" in Texas and California in anticipation of this expansion.
According to Little, Delta Western would incur expenses of less than $5000 if required to change the name of the restaurant on menus, name cards, etched window glass, and the storefront. Little testified that, because the majority of the U.S. Prime Steak House's customers are tourists, any customers lost as a result of the name change would simply be replaced by new tourists who were unfamiliar with the old name.
Although the awning of the U.S. Prime Steak House would also have to be replaced, Delta Western already plans to do this in order to comply with a Park City ordinance regarding the size of lettering on commercial signs.
Conclusions of Law
To obtain injunctive relief, a party must establish that: (1) it will likely prevail on the merits of the litigation; (2) it will suffer irreparable injury unless an injunction is issued; (3) its threatened injury outweighs any harm the proposed injunction may cause to the opposing party; and (4) an injunction, if issued, would not be adverse to the public interest. See ACLU v. Johnson, 194 F.3d 1149, 1155 (10th Cir. 1999); see also SCLC IFC, Inc. v. VISA USA, Inc., 936 F.2d 1096 (10th Cir. 1991) (trademark case). In order to prevail, RUFI must demonstrate that, when considered together, the four factors weigh heavily and compellingly in its favor. See SCFC ILC, 936 F.2d at 1099; see also Buca, Inc. v. Gambucci's, Inc., 18 F. Supp.2d 1193, 1201 (D. Kan. 1998). If the movant in a trademark case succeeds in demonstrating these four factors, the issuance of a preliminary injunction is appropriate. See, e.g., Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268 (10th Cir. 1988) (affirming trial court's issuance of a preliminary injunction in a trademark case).
1. Likelihood of Success on the Merits
To prevail on the merits in a trademark action, RUFI must demonstrate that its trademark is entitled to legal protection. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992). It must also demonstrate that there is a likelihood of confusion between its own mark and Delta Western's allegedly infringing mark. See id. at 769.
A. Entitlement to Legal Protection
Registration of a mark on the PTO's principal register is prima facie evidence of the validity of that mark, of the registrant's ownership of that mark, and of the registrant's exclusive right to the use of that mark in commerce. See 15 U.S.C. § 1115(a). RUFI's U.S. Prime service mark is registered on the PTO's principal register.
Delta Western alleges that RUFI comes before the court with unclean hands due to RUFI's allegedly illegal use of the service mark "U.S. Prime Only." RUFI does not contend that Delta Western has infringed the "U.S. Prime Only" mark and, in fact, offered evidence that it no longer uses this mark. Because Delta Western's alleged infringement of RUFI's "U.S. Prime" service mark is the only issue before the court, the court does not reach the issue of unclean hands with regards to the "U.S. Prime Only" service mark.
A mark may only be registered on the primary register if it is distinctive and distinguishes a business's goods. See Two Pesos, 505 U.S. at 768. A mark that is solely descriptive of a product or service and does not identify a particular source is not capable of trademark protection. See 15 U.S.C. § 1052(e); see also Two Pesos, 505 U.S. at 769; San Francisco Arts Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 532 n. 7 (1987). A descriptive mark may acquire distinctiveness through use of the mark in commerce, however, and this distinctiveness is generally referred to as "secondary meaning." See Two Pesos, 505 U.S. at 769, citing 15 U.S.C. § 1052(e), 1052(f). The general rule regarding the distinctiveness of a trademark is that an identifying mark is distinctive and capable of being protected if it is either inherently distinctive or has acquired distinctiveness through secondary meaning. See id. RUFI must therefore demonstrate that its U.S. Prime service mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.
Under the Lanham Act, a presumption of distinctiveness through secondary meaning arises if a mark has been in substantially exclusive and continuous use by one business for at least five years before that business applies to register the mark. See 15 U.S.C. § 1052(f). RUFI began using its U.S. Prime service mark in 1994, more than five years before it sought to register the mark in December 1999. As RUFI has been using the U.S. Prime service mark for more than five years, they are entitled to a presumption of the distinctiveness of this mark. The testimony of RUFI's expert, Dr. Bamossy, strengthens the presumption.
Delta Western has not introduced any evidence sufficient to rebut the presumption of secondary meaning. The court therefore finds that RUFI's U.S. Prime service mark has secondary meaning and is entitled to protection under the Lanham Act.
B. Likelihood of Confusion
The Lanham Act protects the owner of a trademark from unauthorized use of that mark that is "likely to cause confusion, or to cause mistake, or to deceive. . . ." 15 U.S.C. § 1114(1)(a). Because the Lanham Act is meant to guard against consumers' confusion over the source of a product, "[l]ikelihood of confusion forms the gravamen for a trademark infringement action." King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089 (10th Cir. 1999); see also GTE Corp. v. Williams, 731 F.2d 676, 678 (10th Cir. 1976) (stating that "the key to proving trademark infringement is showing a likelihood of confusion as to the source of the product or service").
In determining whether a likelihood of confusion exists between a trademark and an allegedly infringing mark, a court should consider:
(a) the degree of similarity between the marks; (b) the intent of the alleged infringer in adopting its mark; (c) evidence of actual confusion; (d) the relation in use and the manner of marketing between the goods or services marketed by the competing parties; (e) the degree of care likely to be exercised by purchasers; and (f) the strength or weakness of the marks.
King of the Mountain, 185 F.3d at 1089-90. The court will consider each one of these factors in turn.
a. Degree of Similarity Between the Marks
Although a court is to consider all six factors outlined by the Tenth Circuit for determining likelihood of confusion, "the similarity of the marks factor constitutes the heart of our analysis." Id. at 1090; see also Two Pesos, 505 U.S. at 780. "We test the degree of similarity between marks on three levels: sight, sound, and meaning." King of the Mountain, 185 F.3d at 1090; see also First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 653 (10th Cir. 1996). These factors are to be examined "in the context of the marks as a whole as they are encountered by consumers in the marketplace." King of the Mountain, 185 F.3d at 1090, citing Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 925 (10th Cir. 1986). The court should not engage in a side-by-side comparison, but should rather determine whether consumers would be confused when encountering the allegedly infringing mark. See King of the Mountain, 185 F.3d at 1090. Similarities between the two marks are to be afforded more weight than the differences. See id.
In this case, the sounds of RUFI's service mark and Delta Western's allegedly infringing mark are identical. Both RUFI's and Delta Western's marks employ the words "U.S. Prime." Although Delta Western sometimes adds the words "Steak House" to its mark, it also uses the words "U.S. Prime" alone to describe its restaurant and products.
RUFI's service mark uses all-caps, black, block lettering for the words "U.S. Prime," and sets the words at an upward-tilting angle. The words are surrounded by two concentric circles. Delta Western uses the identical words — "U.S. Prime" — on its restaurant and products. Delta Western correctly notes, however, that it uses the words "U.S. Prime" only as text, removed from circles or any other logo. Delta Western's use of the words "U.S. Prime" appears in red, not black, but the style of font is an all-caps, block lettering similar to that in RUFI's service mark. Although Delta Western's use of "U.S. Prime" is not set at an angle, the words "U.S.D.A. Prime," which until recently appeared on the door of the U.S. Prime Steak House, are set at the same angle as the words "U.S. Prime" in RUFI's service mark. The visual similarity of the two marks is thus neither particularly weak nor particularly strong.
These words were removed from the door by Delta Western after RUFI submitted its motion for injunctive relief.
Finally, the meanings of the two marks seem substantially similar. Both RUFI's and Delta Western's usage of the "U.S. Prime" marks apparently is calculated to suggest to the customer that the goods and services available at their respective restaurants are excellent, and, more specifically, that the steaks and other food items served in those restaurants are high-quality.
Delta Western's use of the words "U.S. Prime" on their restaurant and products is thus identical to RUFI's U.S. Prime service mark in terms of sound, similar in terms of meaning, and somewhat similar in terms of appearance. The court finds that this factor weighs slightly in favor of RUFI in its demonstration of likelihood of confusion.
b. Intent of the Alleged Infringer in Adopting its Mark
With this factor, the court must consider whether Delta Western "had the intent to derive benefit from the reputation or goodwill" of RUFI or Ruth's Chris Steak House restaurants. Id. at 1091, quoting Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987).
Little conceded that he was not only aware of the U.S. Prime logo on Ruth's Chris signs and products, but that he had the colors and look of Ruth's Chris signs and logos in mind when he designed the style of the U.S. Prime Steak House's signs and logos. Additionally, Jacson's testimony suggested that Little may have had RUFI's U.S. Prime service mark in mind when he developed the name of his restaurant. Because the evidence, much of it uncontested, indicates that Delta Western did intend to emulate Ruth's Chris operation and the look and style of its signs and logos, this factor weighs in favor of a likelihood of confusion.
c. Evidence of Actual Confusion
Evidence of "[a]ctual confusion in the marketplace is often considered the best evidence of likelihood of confusion." King of the Mountain, 185 F.3d at 1092 (internal citations omitted). The manager of the U.S. Prime Steak House, Brian Morgan, testified that, in his many interactions with customers at the restaurant, he has never encountered a customer who expressed confusion over the source of the U.S. Prime mark.
RUFI introduced testimony alluding to two persons, only one a customer of the U.S. Prime Steak House, who may have been confused by the similarity between the two marks in question. This isolated instance of actual confusion, however, is insufficient to prove that consumers confuse Delta Western's use of the words "U.S. Prime" with RUFI's use of the same words. "Evidence of actual confusion of a very limited scope may be dismissed as de minimus: Probable confusion cannot be shown by pointing out that at someplace, at some time, someone made a false identification." Id., quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:14 (4th ed. 1996); accord Smith Fiberglass Prod. v. Ameron, Inc., 7 F.3d 1327, 1331 (7th Cir. 1993) (one instance of an unidentified consumer's confusion de minimus). This factor thus fails to contribute to RUFI's demonstration of likelihood of confusion.
d. Relation in Use and Manner of Marketing Between the Goods Or Services Marketed by the Competing Parties
There is a likelihood of confusion between two similar marks if the products or services marketed by the two companies are also similar. See King of the Mountain, 185 F.3d at 1092; Beer Nuts, 805 F.2d 920, 927 (10th Cir. 1986). In this case, the products and services marketed by the two parties are very similar — both are steak houses. Although the U.S. Prime Steak House and Ruth's Chris Steak Houses may differ in terms of atmosphere, ambience, style of service, and other features, both are still essentially restaurants specializing in steak. Both Delta Western and RUFI cater to consumers with above average incomes, and both place their advertisements in similar media. Significantly, Delta Western acknowledged the similarity when it stated on its menu that "In Park City, Utah there is not a Ruth's Chris Steak House or a Morton's of Chicago Steak House . . . however, there is The U.S. Prime Steak House." This close similarity between the marketed products lends weight to the finding that a reasonable consumer would likely become confused as to the source of the "U.S. Prime" mark.
e. Degree of Care Likely to be Exercised by Consumers
If a product's consumers take great care in selecting that product, it reduces the probability that they will confuse similar marks. See King of the Mountain, 185 F.3d at 1092. Because neither Delta Western nor RUFI introduced significant evidence on this factor, the court does not give much weight to this factor in considering whether Delta Western's use of the words "U.S. Prime" is likely to be confused with RUFI's use of its U.S. Prime service mark.
f. Strength of RUFI's Mark
The stronger a trademark, the more likely that consumers will be confused by infringement of that mark. See id. at 1093. In order to assess the relative strength of a mark, a court must consider two factors: (1) conceptual strength (the relative distinctiveness of a mark, on a scale ranging from fanciful to generic); and (2) commercial strength (the recognizibility of the mark in the marketplace). See id.
In descending order of relative conceptual strength, a mark may be deemed to be fanciful, arbitrary, suggestive, descriptive, or generic. See id.; see also Two Pesos, 505 U.S. at 768. Judged on this scale, the conceptual strength of RUFI's U.S. Prime service mark is neither particularly weak nor particularly strong. RUFI's U.S. Prime service mark seems to be either "descriptive" or "suggestive," indicating some quality or ingredient of the goods. See McCarthy § 11.62.
The commercial strength of RUFI's U.S. Prime service mark is quite strong. Ruth's Chris itself is a large and successful chain of restaurants. The U.S. Prime service mark appears on the front cover of the menus used in all Ruth's Chris Steak Houses, is used decoratively in Ruth's Chris restaurants, and is included on the marketing correspondence RUFI sends to media and guests. RUFI's U.S. Prime service mark has also been used as a graphic in magazine articles reporting on the success of the Ruth's Chris chain. See, e.g., King of the Mountain, 185 F.3d at 1093 (finding strong mark in combination of "suggestive" conceptual strength and robust commercial strength). Therefore, RUFI has a strong mark.
g. Conclusion
Based on the above, the court concludes that RUFI has demonstrated that its U.S. Prime service mark is entitled to legal protection under the Lanham Act. In addition, RUFI has shown that Delta Western's use of the words "U.S. Prime" in the name of its restaurant is likely to be confused by consumers with RUFI's U.S. Prime service mark. The court thus rules that RUFI has shown a substantial likelihood of prevailing on the merits and meets the first part of the test for a preliminary injunction.
2. Irreparable Injury
When a registered trademark is wrongfully appropriated by another business, the court may presume that irreparable injury has occurred. See SCFC ILC, 936 F.2d at 1100-01; accord Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir. 1983) (stating that a "showing of a prima facie case of copyright infringement or reasonable likelihood of success on the merits raises a presumption of irreparable harm"). The damage caused by trademark infringement is, by its very nature, irreparable, and is not susceptible to easy measurement. See Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1029 (11th Cir. 1990) (stating that trademark "infringement by its nature causes irreparable harm"); Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 858 (7th Cir. 1982).
Delta Western argues that two companies must do business in the same geographic area in order for one to be able show the potential for irreparable injury stemming from trademark infringement. See Pizzeria Uno v. Temple, 747 F.2d 1522, 1535 (4th Cir. 1984) (holding that, despite likelihood of confusion, injunctive relief was not necessary because plaintiff and defendant did not operate in the same area).
The "remoteness" defense is not applicable to the facts of this case. Although there are no Ruth's Chris restaurants in the state of Utah, the majority of the U.S. Prime Steak House's customers are tourists, many of them from cities with a Ruth's Chris Steak House. There is a likelihood that certain tourists may confuse Delta Western's use of the "U.S. Prime" mark with Ruth's Chris and its use of its own U.S. Prime service mark. Accord Park `n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 191 (1984) (finding trademark infringement despite fact that plaintiff and defendant operated in different cities). Accordingly, the court finds that RUFI has demonstrated that it is threatened with irreparable injury and has met the second prong of the preliminary injunction test.
3. Balancing of Harms
The court must also consider the degree to which Delta Western would be harmed by the issuance of a preliminary injunction. Once intentional infringement has been found in a trademark case, the harm which the issuance of a preliminary injunction would cause the trademark violator warrants little consideration. See Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476, 1498 (10th Cir. 1993) (copyright case). This is because "a knowing infringer cannot be permitted to construct its business around its infringement." Id.; see also In re Indep. Serv. Orgs. Antitrust Litig., 911 F. Supp. 1537, 1542 (D. Kan. 1995) (copyright case). Even if the trademark violator's business would be devastated by an injunction, the court must not reward trademark infringement by denying injunctive relief on the basis of this factor alone. See Autoskill, 994 F.2d at 1498.
In any event, based on Little's own testimony, it is clear that Delta Western would suffer little harm if ordered to cease its use of the words "U.S. Prime."
4. Public Interest
The last factor which RUFI must demonstrate is that the issuance of a preliminary injunction is not contrary to the public interest. In a trademark case, protecting the rights of the owner of a registered trademark is consistent with the public interest because trademarks foster competition and promote the maintenance of quality in business. See San Francisco Arts Athletics, 483 U.S. at 531; Park `n Fly, 469 U.S. at 193. "[T]his factor normally weighs in favor of the issuance of an injunction because the public interest is the interest in upholding [trademark] protections." Autoskill, 994 F.2d at 1498 (copyright case). RUFI has thus satisfied the fourth prong of the preliminary injunction test.
Conclusion
RUFI has demonstrated that it is entitled to injunctive relief. Therefore, RUFI's motion for a preliminary injunction is GRANTED. Delta Western is hereby preliminarily enjoined from using the mark "U.S. Prime" on its restaurant exterior, menus, products, packaging, advertisements, name tags, correspondence, decorations, or business plans.
IT IS SO ORDERED.