Fall River Coffee Shop Can Keep Its Lizzie Borden-Related Name
FALL RIVER (WBSM) — Miss Lizzie’s Coffee, the coffee shop that opened up next to the infamous Lizzie Borden House in Fall River, can keep its name and its hatchet logo, a federal judge has ordered.
The coffee shop opened on August 4, 2023 – the 131st anniversary of the murders of Andrew and Abby Borden – and its use of the name “Lizzie” and a drawing of a bloody hatchet on its signage led to Lizzie Borden House owner Lance Zaal and his company U.S. Ghost Adventures first issuing a cease-and-desist letter and then filing a lawsuit claiming trademark infringement.
U.S. Ghost Adventures owns multiple federal trademarks in relation to the Lizzie Borden House business. The company claimed a trademark for the name “Lizzie Borden” for use in hospitality services, and another trademark for a hatchet logo, were being violated by the coffee shop, and it was a “willful and intentional attempt to trade on the goodwill and commercial success that (U.S. Ghost Adventures) has built up in the marks and their corollary registrations and an attempt to free ride on (the) plaintiff’s success as a preeminent and well-known provider of hospitality services in Fall River,” according to the official complaint.
The complaint, filed on September 18, 2023, also alleged the infringement “has caused actual confusion” with those seeking the services offered at the Lizzie Borden House.
U.S. Ghost Adventures sought to have Miss Lizzie’s Coffee forced to change its name and surrender all profits made since its August 4 opening, in addition to other penalties, in a jury trial. Before the case could be heard, however, the company sought the injunction to prevent Miss Lizzie’s Coffee from continued operation using its name and hatchet logo.
U.S. District Judge Leo T. Sorokin heard arguments regarding the injunction on October 23 in a non-evidentiary hearing, as neither U.S. Ghost Adventures nor Miss Lizzie’s Coffee offered live testimony, according to the judge’s decision.
In his decision filed on Friday, October 27, Judge Sorokin denied U.S. Ghost Adventures’ motion for a temporary restraining order or a preliminary injunction to prevent Miss Lizzie’s Coffee and its owner Joe Pereira from “utilizing the ‘LIZZIE BORDEN trademark’ or ‘hatchet logo’ in their trade names, advertising materials, branding and associated materials used in conjunction with the operation of their business, signage, internet domain and social media.”
In his decision, the judge wrote that the Court applied “the familiar four-part test for injunctive relief,” which according to BonaLaw.com meant U.S. Ghost Adventures would have to prove: a likelihood of success on the merits; a likelihood of irreparable harm; balance of equities and hardships; and public interest.
The judge stated U.S. Ghost Adventures “failed to demonstrate a likelihood of success” of having Miss Lizzie’s permanently forced to change its name or logo because U.S. Ghost Adventures “must demonstrate that Miss Lizzie’s ‘used an imitation of its protected mark in commerce in a way that is ‘likely to cause confusion, or to cause mistake, or to deceive.’”
Judge Sorokin wrote that the Court found that the hatchet logo used by Miss Lizzie’s Coffee is not similar to the U.S. Ghost Adventures mark.
“The hatchet used by Miss Lizzie is not at all the hatchet trademarked by Ghost Adventures. The former has a handle, and the axe blade features no notch; the latter is the image of a blade without a handle, but with a notch halfway along the bottom of the metal forming the blade,” Judge Sorokin wrote. “Miss Lizzie’s hatchet has blood coming from it; Ghost Adventures’ does not. On its face, then, Miss Lizzie’s hatchet is neither the trademarked hatchet nor a colorable imitation of it.”
The judge also noted that U.S. Ghost Adventures holds a service mark on just the term “Lizzie Borden” for hotel and restaurant services.
“Ghost Adventures does not have a trademark on the term ‘Lizzie,’” he wrote.
“Ghost Adventures claims that Miss Lizzie’s cannot use a portion of its mark (the word ‘Lizzie’), at least in close physical proximity to Ghost Adventures’ location, and especially in combination with a hatchet (albeit, in the Court’s view, a decidedly different hatchet),” Judge Sorokin wrote. “Of course, as Ghost Adventures concedes, it does not own the Lizzie Borden story or history.”
“Here, Miss Lizzie’s mark associates its business with the historical story of Lizzie Borden, not the mark ‘Lizzie Borden,’” he wrote. “The differing hatchets and differing colors further support that point. While Ghost Adventures has an ‘incontestable’ trademark in ‘Lizzie Borden’ and its hatchet, Miss Lizzie’s is using neither the mark ‘Lizzie Borden’ nor the Ghost Adventures hatchet.”
U.S. Ghost Adventures had claimed that having Miss Lizzie’s Coffee next door was creating “customer confusion,” but Judge Sorokin said there was only “limited evidence” of such confusion and that any confusion comes from the coffee shop being in close proximity to a historical site and that it is not “suggestive of consumer confusion arising from infringement of Ghost Adventures’ trademarks.”
“Indeed, the same issues would arise if Miss Lizzie’s called its cafe ‘Forty Whacks Coffee’ and used a different image as its logo,” Judge Sorokin wrote.
The judge also pointed out that Miss Lizzie’s Coffee has posted “distinct notices stating that it has no affiliation with the Lizzie Borden House, which, in addition to the low likelihood of confusion or infringement, further distinguish the businesses.”
Judge Sorokin stated that while both businesses sell goods that fall within the same class of hospitality services, U.S. Ghost Adventures registered the “Lizzie Borden” mark for hotel and restaurant services and that “Ghost Adventures and Miss Lizzie’s are not direct competitors,” according to the judge.
“Ghost Adventures sells tours and a bed-and-breakfast experience; Miss Lizzie’s operates a coffee shop,” he wrote. “Different goods are sold to different classes of prospective purchasers – on one hand, sophisticated buyers who come from afar with tickets or reservations to experience the Lizzie Borden House; and the other, buyers seeking food or coffee.”
“The absence of direct competition and the fact that the parties offer different services weakens Ghost Adventures’ claim of confusion or irreparable harm to its goodwill or reputation,” Judge Sorokin wrote.
In the decision, Judge Sorokin noted that U.S. Ghost Adventures “contends that it ‘does not claim a monopoly on the story of Lizzie Borden or its non-trademarked use; it merely seeks to protect the recognition and good will established in its registered trademark from confusingly (similar) uses.”
“There is, however, no ‘confusingly similar use’ here,” he wrote. “Ghost Adventures is really claiming that, because it has registered the term ‘Lizzie Borden’ along with one type of hatchet: (1) no one can use any of these words or any hatchet symbol in a business in the hospitality field, and (2) no one can trade on the Lizzie Borden history in the hospitality field – at least in the vicinity of Ghost Adventures’ business. Ghost Adventures has not demonstrated a likelihood of success on this broad reach.”
Although the motion for an injunction was denied, U.S. Ghost Adventures could continue to pursue its lawsuit against Miss Lizzie’s to stop them from using the name and hatchet logo, but that would still be before Judge Sorokin, who made it clear in his decision on the injunction that he does not see where such a lawsuit could succeed.
“Even assuming Ghost Adventures is correct in contending that the defendants intentionally opened a location in immediate proximity to its business…and intentionally used the word ‘Lizzie’ and a hatchet in their name and signage…given the historical significance of the location, neither these acts alone nor the acts considered in light of the entire record evidence an intent by the defendants to adopt Ghost Adventures’ trademark,” Judge Sorokin concluded in denying the motion.
On Friday, Miss Lizzie’s Coffee posted its Facebook page about the decision.
“We at Miss Lizzie’s just want to thank you all so very much for all your support. A federal judge has just found in our favor. We are free to keep our name! LIZZIE IS FREE! Once again!” the coffee shop wrote.
WBSM reached out to the public relations firm that handles publicity for Zaal and the Lizzie Borden House requesting a statement on the judge’s decision. We will update this story if one is made available.
However, Zaal did supply a statement to WJAR in Providence.
“No trial has started or concluded. We’re continuing through the full process until they change their name so as to not draw a connection to our business as they are right next door to us," Zaal told the station.
U.S. Ghost Adventures recently announced it was purchasing the Villisca Ax Murder House, another allegedly haunted location. The Villisca, Iowa home was where eight people – including six children – were brutally murdered with the blunt end of an ax in 1912.
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