Sparrow Barns & Events LLC v. The Ruth Farm Inc., No. 4:19-CV-00067 (E.D. Tex. Apr. 10, 2019)

A district court in Texas recently granted a preliminary injunction in a case involving unregistered trade dress rights for a popular wedding venue.

The plaintiff, Sparrow Barns, operates a wedding venue called the White Sparrow, which is a well-known wedding venue in Texas. The White Sparrow is a custom-designed white barn that contains a “Grand Hall.” Sparrow Barns alleges ownership of an unregistered trade dress for the Grand Hall, which it defines as follows:

The Grand Hall features a large, open floor plan with exposed, decorative, wrapped and framed, vaulted wooden beams placed laterally across the wooden cathedral ceiling; exposed, decorative, wrapped and framed wooden columns placed vertically along the wooden side walls; tiered exposed bulb candelabra chandeliers; rustic whitewashing of the wooden interior features; and a stylistic, stacked window display along the back wall.

The defendant, after visiting the White Sparrow several times and asking questions about its construction, opened its own wedding venue called The Nest, which is 90 miles from the White Sparrow. Below are images of both venues from the Court’s decision:

Because The Nest shares many similarities with the Grand Hall, Sparrow Barns filed this lawsuit and sought a preliminary injunction, which the court granted.

The court first considered whether Sparrow Barns owns a protectable trade dress in the Grand Hall and found that Sparrow Barns is likely to show that the Grand Hall is inherently distinctive. The court reviewed the third-party white barns submitted by the defendant and concluded that the evidence actually helped Sparrow Barns’ case because none of the third-party barns resemble White Sparrow.

Moreover, even if the Grand Hall were not inherently distinctive, the court found that Sparrow Barns is likely to prove secondary meaning. There was no evidence of Sparrow Barns’ sales and there was no consumer survey showing that consumers associated the trade dress of the Grand Hall with Sparrow Barns, but the court found the following evidence sufficient at the preliminary injunction stage of the litigation: Sparrow Barns has used the trade dress for nearly five years; the White Sparrow is a popular wedding and events venue; Sparrow Barns has spent significant time, labor, and money to advertise the White Sparrow, including on social media; the White Sparrow has been depicted in publications and is one of the top wedding venues in the U.S.; consumer testimony associated Sparrow Barns with its trade dress; and there was evidence that the defendant intended to copy the trade dress.

Next, the court decided that Sparrow Barns is likely to prove that its trade dress is nonfunctional. The court focused on the combination of elements and explained that even if one feature of the Grand Hall is functional, all of the elements combine to create a wedding venue that is not functional. Moreover, competitors of Sparrow Barns could operate a white barn venue without using Sparrow Barns’ trade dress.

Finally, the court addressed the likelihood of confusion between the parties’ trade dress. The court held that Sparrow Barns is likely to show consumer confusion based on evidence that includes the following: the respective trade dress share many similarities; both trade dress are used for wedding and event venues; the venues are 90 miles apart and therefore attract the same customers looking for wedding venues; the defendant intended to copy the Grand Hall; and consumers were actually confused (consumers tagged the wrong venue on social media and vendors called the wrong venue).

The court’s decision was most likely influenced by the fact that the defendant visited Sparrow Barns’ venue with the deliberate intention of copying its style. It remains to be seen whether Sparrow Barns will ultimately prevail in this case.