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  • 8/6/2019 Lingo v Lingo





    ARCHIES MARKET, INC., ) )Plaintiffs, )

    )v. ) Civ. No. 10-624-SLR


    )Defendants. )

    Matt Neiderman, Esquire, and Katharine V. Jackson, Esquire, of Duane Morris, LLP,Wilmington, Delaware. Anthony L. Gallia, Esquire, of Duane Morris, LLP, Philadelphia,Pennsylvania. Counsel for Plaintiffs.

    Richard A Zappa, Esquire, Adam W. Poff, Esquire, and Monte T. Squire, Esquire, ofYoung Conaway Stargatt & Taylor, LLP, Wilmington, Delaware. Counsel forDefendants.


    Dated: May 19, 2011Wilmington, Delaware

    Case 1:10-cv-00624-SLR Document 70 Filed 05/19/11 Page 1 of 21 PageID #: 1466

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    I. INTRODUCTIONArchibald Lingo ("Archie") and Archie's Market, Inc. (collectively "plaintiffs") filed

    this action against Dinah Lingo ("Dinah"), Jessica Lingo ("Jessica"), Lingo Bros. LLC,and The Original Lingo's Market (collectively "defendants") on July 2,2010. (0.1.1) Intheir amended complaint, plaintiffs allege that defendants improperly use their "Lingo'sMarket" trademark1 in violation of 32 of the Lanham Act, 15 U.S.C. 1114, andDelaware state trademark law, 6 Del. C. 3312-14 (2009). Plaintiffs also allege thatsaid use of the mark falsely describes or designates the source of goods or servicesaffecting commerce in violation of 43(a) of the Lanham Act, 15 U.S.C. 1125(a), andthe Delaware Deceptive Trade Practices Act ("DTPA"), 6 Del. C. 2531 (2009). (0.1.47) In addition to the 43(a) claims, plaintiffs allege that use of their mark bydefendants causes dilution in violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c). (/d.) A bench trial was held October18 - O?tober 20,2010. The court hasjurisdiction pursuant to 28 U.S.C. 1331 and 1121. Having considered thedocumentary evidence and testimony, the court makes the following findings of fact andconclusions of law pursuant to Fed. R. Civ. P. 52(a).II. FINDINGS OF FACT AND CONCLUSIONS OF LAW

    A. The Parties

    1 The court uses the word "trademark" in its opinion in order to be consistentwith the parties' use of the term in their briefs. However, the court recognizes that"Lingo's Market" is most likely a servicemark as it is "[a] mark used in the sale oradvertising of [grocery] services to identify the services of one person and distinguishthem from the services of another.I! Blacks Law Dictionary 1369 (Deluxe 6th ed. 1990).The court also uses the word "trademark" interchangeably with "mark," as a "trademark"is a subset of source identifying "marks."

    Case 1:10-cv-00624-SLR Document 70 Filed 05/19/11 Page 2 of 21 PageID #: 1467

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    1. Archibald Lingo is a resident of Delaware and is the owner of Archies Market,

    Inc. Archies Market, Inc. is a Delaware corporation with its principal place of business

    in Lewes, Delaware.

    2. Dinah Lingo is Archies sister, and is the owner and operator of The Original

    Lingos Market. Dinah, through her company Lingo Bros., LLC, owns the building

    where The Original Lingos Market has operated. Dinah owns and operates The

    Original Lingos Market through her company, The Original Lingos Market, LLC.

    Jessica Lingo is Archies daughter and has been the manager of The Original Lingos


    B. The History of Lingos Market

    3. Lingos Market has operated at the same address in Rehoboth Beach,

    Delaware for 112 consecutive years. (D.I. 60 at 2) Lingos Market was run by Archie

    and Dinahs father, William Lingo (William), until his death in 1981. (Id.) When

    William became ill, Archie took over the business and ran it continuously until 2009.

    (D.I. 59 at 3) Williams wife Eleanor Lingo (Eleanor), who was the mother of Archie

    and Dinah, also worked at Lingos Market after Williams death. (Id. at 5) Eleanor was

    a regular fixture at the market, who often worked long hours for no pay until she retired

    in 2005. (D.I. 60 at 3)

    4. Until Eleanors death in November of 2009, Archie made rent payments to her

    pursuant to a lease that he signed for use of the building where Lingos Market

    operated. (Id.) After Eleanor died, the building was put up for a partition sale wherein

    Dinah purchased the property outright. (Id. at 17)


    Case 1:10-cv-00624-SLR Document 70 Filed 05/19/11 Page 3 of 21 PageID #: 1468

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    C. Ownership of the Mark and the Market

    5. There is no clear evidence on record as to who owned Lingos Market after

    Williams death in 1981. Archie claims that his father gave it to him before he died, and

    that even Eleanor thought that [Archie] should take over the business because if [he]

    did not it would -it would be over. There would be no more Lingos Market. (D.I. 59 at

    3) When William died, neither his will nor his estate planning documents purported to

    transfer any interest in either Lingos Market or the Lingos Market trademark to

    anyone. (JTX 43; JTX 121) However, Williams will did contain a residuary clause that

    created a trust for the benefit of Eleanor out of Williams non-personal property. (JTX

    121 at 1) Upon Eleanors death, the trust terminated, and its corpus was distributed to

    Archie and Dinah per stirpes. (Id. at 2)

    6. Similarly, Eleanors will and estate documents made no mention of devising

    Lingos Market or the Lingos Market trademark despite the fact that other specific

    properties were devised. (JTX 43; JTX 122) The only mention of Lingos Market

    appears in the paragraph wherein Eleanor disinherits Archie, and provides context as to

    why she made the decision to do so:

    FOURTH. I make no provisions in this will for my son Archie, except thesame amount of love that he showed me after he started living with hisFrench girlfriend, because he has been well provided for. This is because,

    Archie, you came to me and said "mother, let me show you how to savemoney by incorporating Lingo's Market." You incorporated it as "ArchieLingo's Market." I trusted you my son, but you used me for [your] ownmoney grubbing ways. I thought your wife Bunny was a piece of work, afterliving in our house rent free for years with her demands. But your Frenchgirlfriend is a real sick person. I work over 100 days a year in the market, 12hours a day without a break, and my son does not pay me or offer any help.My son makes me wait for the rent check until the end of the year so he canget the interest and only pays half the rent. You only care about your Frenchgirlfriend, you treat your mother, your sister and your daughter the same,


    Case 1:10-cv-00624-SLR Document 70 Filed 05/19/11 Page 4 of 21 PageID #: 1469

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    without any care.

    (JTX 122 at 2)

    7. At one point, Archie indicated that Eleanor was the owner of Lingos Market.

    During his divorce proceedings, Eleanor and Archie both testified that Eleanor was the

    true owner of Lingos Market, and that Archie was a mere employee. (D.I. 60 at 11-12;

    D.I. 66 at 188:19-189:5) However, during trial, Archie argued that he had convinced his

    mother to lie about the ownership of Lingos Market in order to prevent his wife from

    getting more alimony. (D.I. 66 at 189:14-21)

    8. Consistent with Eleanors recitation, Archie incorporated the business in June

    of 1998, naming himself the sole stockholder and officer under the business name

    Archies Market, Inc. (JTX 75-76) Additionally, Archie filed an application for the

    trademark Lingos Market with the United States Patent and Trademark Office

    (USPTO) on May 5, 2008, and was granted registration number 3,553,466 on

    December 30, 2008. (JTX 62)

    9. Both parties submitted various documents including vendor invoices and

    building permits which the parties argue show ownership in either Archie or Eleanor

    (and, thus, Dinah by means of Eleanors will). Archies documents are far more

    numerous. (JTX 95-97 et. al.) Included in these documents are two leases for the

    building where Lingos Market operates, one lease between Eleanor and Archie (JTX

    123) and the other between Eleanor and Archies Market, Inc. (JTX 124)

    D. The Contested Mark

    10. The contested trademark consists of a the wordmark Lingos Market whose

    primary exposure to the public is in the form of two large signs that are affixed to the


    Case 1:10-cv-00624-SLR Document 70 Filed 05/19/11 Page 5 of 21 PageID #: 1470

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    wall of the building that Lingos Market once occupied. In both their current and

    previous forms, the signs span the majority of the width of the wall to which they are

    affixed, and contain the words Lingos Market in large gold lettering. In their current

    form, the words The Original appear in small font in the upper left hand corner of the

    sign, integrated into the gold trim. Similarly, the words Dinah H. Lingo, Sole Proprietor

    appear in the bottom right hand corner of the current signs. A picture of both signs is

    found below:

    F. Trademark Infringement

    1. Standard

    11. The law of trademark protects trademark owners in the exclusive use of

    their marks when use by another would be likely to cause confusion. Fisons

    Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994); Freedom Card,

    Inc. v. J.P. Morgan Chase & Co., 432 F.3d 463, 470 (3d Cir. 2005).

    12. A plaintiff proves trademark infringement by demonstrati

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