Phelan Holding, Inc. did not have its day in the sun when the Eleventh Circuit granted RARE Hospital Management, Inc.’s motion for summary judgment. Phelan and RARE are owners of casual dining restaurants, and the court found this was the only trait they had in common.

Phelan’s Pinchers Crab Shack extensively used its tagline “YOU CAN’T FAKE FRESH” since 2004 in advertising, and holds a United States trademark registration. It sued RARE for trademark infringement and cancellation of RARE’s federal trademark “YOU CAN’T FAKE STEAK.” Phelan claimed that RARE’s trademark created consumer confusion with Phelan’s “YOU CAN’T FAKE FRESH” in that consumers would believe that Phelan was associated with RARE.

The court found that no trademark infringement existed, because of the differences in restaurant themes, décor, colors, and the fact that there was no evidence of actual confusion by customers in the 4 years that both parties used their marks.

Takeaway: Even with strong trademark rights, advertisers may need to show evidence of actual confusion to proceed with a successful claim against competitors.