IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 10-20587

Almeda Mall, L.P.

Plaintiff-Appellee

v.

Shoe Show, Inc., doing business as The Shoe Department, Inc.;

The Shoe Show of Rocky Mount, Inc., doing business as Shoe Department,

Defendants-Appellants

Appeal from the United States District Court for 

the Southern District of Texas

Before WIENER, BENAVIDES, and STEWART, Circuit Judges.

Wiener, Circuit Judge.

Defendant-Appellant Shoe Show, Inc. (“Shoe Show”) entered into a lease

(the “Lease”) as lessee (“Lessee”) of a store space (the “Leased Premises”) in a

shopping mall in Houston, Texas. The Lessor was San Mall, the predecessor in

interest of Plaintiff-Appellee Almeda Mall, L.P. (“Almeda”). In the Lease, Shoe

Show agreed to operate a retail shoe store in the Leased Premises under the

trade name “The SHOE DEPT.” The Lease expressly prohibited Shoe Show 1

United States Court of Appeals

Fifth Circuit

F I L E D

August 8, 2011

Lyle W. Cayce

Clerk

The Lease refers to the trade name to be used by Lessee as “The SHOE DEPT.”; the 1

record photo of the sign on the Leased Premises reflects “the SHOE DEPT.” as does Appellee’s

brief; the Appellants’ brief refers to “THE SHOE DEPT.” We have chosen to go with the Lease

and use “The SHOE DEPT.” throughout this opinion.

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from operating another business under the name “The SHOE DEPT.” or any

“substantially similar trade-name,” within two miles of the Leased Premises. 

Shoe Show subsequently opened a retail footwear store under the name “SHOE

SHOW” in a commercial center located less than a quarter mile from the mall

in which the Leased Premises is located. Neither San Mall nor Almeda objected

until, some time later, Shoe Show exercised its option to terminate the Lease

early, which option was conditioned on Shoe Show’s not being in default under

the Lease. Only then did Almeda, as the current owner of the mall in which the

Leased Premises is located, sue Shoe Show. Almeda contended that its

operation of that second store violated the terms of the Lease because the name

of the second store was “substantially similar” to the name of the store in the

Leased Premises, thereby making Shoe Show ineligible to terminate the Lease

early. Holding that the two trade names were indeed substantially similar, the

district court granted Almeda’s motion for summary judgment. As we conclude

that, under the uncontested facts of this case and the discrete provisions of the

Lease, the trade name SHOE SHOW is not substantially similar to The SHOE

DEPT., we reverse that court’s summary judgment and remand for further

proceedings consistent herewith.

I. FACTS & PROCEEDINGS

A. Facts

Shoe Show entered into the Lease with San Mall for the stated purpose of

operating a retail shoe store in the Almeda mall which was then owned and

operated by San Mall. The Lease was for a term of ten years, but gave Shoe

Show the option of terminating the Lease after five years if the Lessee’s annual

sales in the Leased Premises did not exceed one million dollars by the end of the

fifth year of the lease term. This option was conditioned, however, on Shoe

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Show’s not being in default under the Lease when it mailed the termination

notice.

Section 4.01(c) of the Lease states that Shoe Show “shall operate its

business . . . under the following trade-name only and under no other tradename: The SHOE DEPT.” Section 4.08 of the Lease (“the trade name provision”)

states:

Tenant agrees that so long as this Lease shall remain in effect,

Tenant . . . shall not, either directly or indirectly, own, operate or be

financially interested in . . . a business operating under the same or

substantially similar trade-name, as permitted by Section 4.01(c) of

this Lease, within a radius of two (2) miles of the perimeter of the

[mall].

Section 4.08 of the Lease also provides that if Shoe Show should violate the trade

name provision, theLessor could include all gross sales from the other proximate

business when calculating Shoe Show’s rent for the Leased Premises.

Pursuant to the Lease, Shoe Show opened a retail shoe store in the Leased

Premises under the name The SHOE DEPT. Approximately four years later,

Shoe Show opened another retail shoe store, using the trade name SHOE

SHOW, in a commercial center located approximately 400 feet from the

perimeter of the shopping mall in which the Leased Premises is located. A few

months after that, San Mall sold that shopping mall to Almeda and assigned all

of the leases of space therein to Almeda. Neither San Mall nor Almeda

registered any concern or took any action against Shoe Show for using SHOE

SHOW as the name of its new store in the nearby center, however, until the

spring of the year following Almeda’s acquisition of the mall – and then only

after Shoe Show had notified Almeda that it intended to exercise its earlytermination option. In that notice, Shoe Show advised Almeda that annual sales

at The SHOE DEPT. had failed to reach the million-dollar level by the end of the

fifth lease year of the Lease.

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Almeda rejected Shoe Show’s early termination of the Lease, contending

for the first time that Shoe Show’s operation of SHOE SHOW in such close

proximity to the Leased Premises violated the trade name provision of the Lease,

thereby constituting a default and making Shoe Show ineligible to exercise its

early-termination option. Shoe Show disagreed, vacated the Leased Premises,

and ceased paying rent under the Lease. Two months later, Almeda sued Shoe

Show for breach of the Lease.

B. Proceedings

The parties filed opposing motions for summary judgment. Almeda took

the position that Shoe Show’s operation of a retail store under the name SHOE

SHOW in the nearby commercial center violated the trade name provision of the

Lease, putting Shoe Show in default and rendering it ineligible to exercise its

right to terminate the Lease early. Almeda sought past due rent, future

damages, and attorneys fees. Shoe Show countered that it had not violated the

trade name provision of the Lease because the name SHOE SHOW is neither

expressly prohibited in the Lease nor substantially similar to The SHOE DEPT.

as a matter of law.

The district court agreed with Almeda that the two stores had

substantially similar trade names and granted Almeda’s motion for summary

judgment, awarding it damages and attorneys fees. Shoe Show timely filed a

notice of appeal.

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II. STANDARD OF REVIEW

We review a district court’s summary judgment de novo. Summary 2

judgment is appropriate when “there is no genuine dispute as to any material

fact and the movant is entitled to judgment as a matter of law.” When 3

reviewing a summary judgment, we construe all the evidence and reasonable

inferences in the light most favorable to the nonmoving party.4

III. ANALYSIS

The parties agree that, pursuant to the choice-of-law provision of the

Lease, Ohio law governs the interpretation of that contract. We conduct our

review of the instant summary judgment in two steps. We first determine the

meaning of the phrase “substantially similar trade-name” as it is used in the

Lease. We then determine whether, in that context, the trade names SHOE

SHOW and The SHOE DEPT. are substantially similar. 

We agree with the district court that, as used in the Lease, the phrase

“substantially similar trade-name” is not ambiguous. A term is not ambiguous

when it can be given a definite legal meaning. The district court drew on the 5

Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 233 (5th Cir. 2010) (citing

2

Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465,

474 (5th Cir. 2008)).

 FED. R. CIV. P. 56(a). 3

Amazing Spaces, 608 F.3d at 234 (citing Xtreme Lashes, LLC v. Xtended Beauty, Inc.,

4

576 F.3d 221, 226 (5th Cir. 2009)).

Westfield Ins. Co. v. Galatis, 797 N.E.2d 1256, 1261 (Ohio 2003) (citing Gulf Ins. Co. 5

v. Burns Motors, Inc., 22 S.W.3d 417, 423 (Tex. 2000)).

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Ohio Labor and Industry Code as well as BLACK’S LAW DICTIONARY in 6 7

determining that a trade name is “the name that identifies a business.” The

court then credited RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY’S

8

definition of “substantially similar” as having “essential elements in common.” 

The district court surmised (and we agree) that the subject phrase, as used in

the trade name provision of the Lease, prohibits Shoe Show from opening and

operating any business withing two miles of the Leased Premises under a name

that “identifies a business” and has essential elements in common with “The

SHOE DEPT.” For purposes of such identification, “business” refers to the party

conducting the operation, not to the nature of the operation that it conducts.

Of equal importance to our inquiry as what the trade name provision of

the Lease specifies is what it does not specify. As reflected in the record and 9

confirmed by counsel at oral argument, the parties who negotiated the Lease

were sophisticated individuals with considerable experience operating and

leasing shopping malls and commercial centers on the one hand, and renting and

operating retail footwear stores in such locations on the other hand. More to the

point, the party who negotiated the lease for the Lessor was aware that Shoe

Store is a national footwear retailer with some 1,100 outlets, almost all of which 

are operated under one of but three trade names: SHOE SHOW, The SHOE

DEPT., or BURLINGTON SHOES. Within that framework we note:

 OHIO REV. CODE ANN. § 4165.01. 6

 (8th ed. 2004). 7

 (2d ed. 1999). 8

 We remain mindful that this is not a trademark, patent, or copyright case and does

9

not involve infringement or appropriation of such a right by a stranger against the holder of

the right. Rather, this trade name case implicates precisely the opposite, viz., the express

contractual effort to limit the use of a trade name by its rightful holder.

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• The trade name provision of the Lease does not expressly prohibit

Shoe Store from operating a retail shoe store within a two-mile

radius of the Leased Premises.

• Neither does the trade name provision expressly prohibit Shoe Show

from using the word “shoe” in the trade-name of any operation that

it might conduct within a two-mile radius of the Leased Premises.

• Although the trade name provision expressly prohibits Shoe Store

from using the name The SHOE DEPT. for any store that it might

operate within two miles of the Leased Premises, that provision

never mentions, much less expressly prohibits, Shoe Show’s use of

either of its other two widely used trade names, SHOE SHOW or

BURLINGTON SHOES.

• Instead of forthrightly prohibiting Shoe Show from using those

other two widely used trade names, the trade name provision

employs only the non-specific, elastic term “substantially similar” in

reference to The SHOE DEPT. to identify the set of other trade

names that Shoe Show may not use within two miles of the Leased

Premises.

• Although the trade name provision prohibits Shoe Show from using

a trade name that is “substantially similar” to The SHOE DEPT., it

does not proscribe the use of “misleadingly similar” or “confusing”

trade names or other such restrictive labels that are commonly

employed in patent, copyright, and trademark law.

In failing expressly to prohibit the use of SHOE SHOW or BURLINGTON

SHOES, and instead employing (or, more likely, reluctantly accepting) the nonspecific phrase “substantially similar trade-names,” San Mall, as the original

lessor of the Leased Premises, apparently attempted to do indirectly that which

it did not (and likely could not) do directly, i.e., make Shoe Show as Lessee

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expressly commit not to use its other two widely used trade names, SHOE

SHOW and BURLINGTON SHOES, in close proximity to the Leased Premises. 

Then, after the Lease was signed and the Leased Premises occupied, San Mall,

and, subsequently, Almeda, remained silent the whole time that Shoe Show was

opening and operating its new store under the name SHOE SHOW less than a

quarter of a mile from Lessor’s mall — until, that is, Shoe Show gave notice that

it was terminating the Lease. Only then did Almeda, as successor Lessor,

attempt to shoehorn the name “SHOE SHOW” into the non-specific prohibition

contained in the trade name provision, “substantially similar.”

We are chary to reward Almeda’s attempt to do indirectly that which its

Lease fails to do directly. Contrary to the assertions of Almeda and the

conclusions of the district court, we are satisfied that, when examined in the

context of the entire Lease and the history of the confection, “The SHOE DEPT.”

and “SHOE SHOW” are not substantially similar trade names within the

intendment oftheLease’s trade name provision. Consequently, we conclude that

Shoe Show did not violate that provision of the Lease when it opened and

operated the second store under the name SHOE SHOW within a two mile

radius of the first. Here is why.

In Cleveland Opera Co. v. Cleveland Civic Opera Association, a case

heavily relied on by the district court, an appellate court in Ohio employed a twostep analysis to determine whether the names of two rival organizations were

substantially similar. The Ohio court’s first step was to eliminate 10

consideration of geographical and descriptive terms, stating that “we think there

is no authority that warrands [sic] the barring of words geographical and

descriptive, unless in connection with other words they are precisely similar, or

 154 N.E. 352, 353 (Ohio Ct. App. 1926). 10

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so substantially similar, that, in the face of proof, deception and confusion would

arise, and therefore unfair competition.”11

We see that pronouncement as precisely applicable to the word “shoe” in

this case. As used in the trade names of both The SHOE DEPT. and SHOE

SHOW, the word “shoe” is descriptive only. It generically identifies the nature

of the operation being conducted, not the particular business entity that is

conducting it. Therefore, in neither of these names does “shoe” contribute to the

determination whether the two trade names are “substantially similar.” Indeed,

it is completely neutral and is neither deceptive nor confusing.

Another reason that “shoe” cannot be a determinative element here is

because the trade name provision of the Lease does not forbid Shoe Show from

conducting a footwear operation within the proscribed proximity of the Leased

Premises. We take judicial notice of the fact that the vast majority of retail

footwear stores throughout this country include the word “shoe” in their titles

and do so for the single purpose of identifying the type of merchandise offered

in that store, and not for the purpose of identifying the business – the person,

company, corporation, or chain – that is making those goods available.

Almeda, like San Mall before it, has to have known that — absent an

express prohibition in the Lease of the use of SHOE SHOW or BURLINGTON

SHOES — any facility opened and operated by Shoe Show within (or, for that

matter, beyond) two miles of the Leased Premises would almost certainly employ

one of those trade names, each of which includes the generic or descriptive term

“shoe.” We must reject out of hand any consideration of the word “shoe” as a

factor in determining whether “SHOE SHOW” is substantially similar to “The

SHOE DEPT.”

Id. (emphasis added).

11

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The second step under the Cleveland Opera Co. analysis is to determine

whether “the other words constituting the name . . . result in apparent or

obvious confusion, or by inference tend in that direction to such extent that there

is a probability that by reason of confusion unfair competition may be the result

. . . .” DEPT. (silently read by all who see it as “department”) and SHOW have 12

very different meanings; they are not each other’s synonyms. This is confirmed

by comparing many of the synonyms for those two words that are listed in

ROGET’S THESAURUS. A sampling of the synonyms found in ROGET’S for

“department” includes administration, agency, area, bureau, division, office,

quarter, station, subdivision, unit, assignment, classification, subdivision,

territory, classification, specialty, and sphere. Compare those with some of 13

ROGET’S synonyms for “show,” e.g., demonstration, exhibition, appearance,

display, expo, fair, parade, presentation, and production. It becomes readily 14

apparent that there is no overlap in the synonyms for shoe and those for

department, making it highly unlikely that a potential customer would be

confused or misled as to what business entities, i.e., who, is offering shoes in the

subject stores based on any similarity in “SHOW” and “DEPT.” And, Almeda

does not contend that a shopper would be likely to know that the same entity

owns and runs both “The SHOW DEPT.” and “SHOE SHOW.” If, instead of

SHOW, the name of the second store had included a synonym of department,

such as “agency,” “bureau,” “division,” “unit,” this might have been a much closer

case. Instead, by selecting SHOW, Shoe Show included a synonym for, e.g.,

“exhibition,” “display,” “expo,” and “presentation,” but not for “department.”

Id.

12

 ROGET II: THE NEW THESAURUS (3d ed. 1995). 13

Id. 14

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If anything, the definitions of those determinative words imply two

functionally different types of establishments. The retail shoe store dubbed “The

SHOE DEPT.” inside Almeda’s shopping mall could well be thought of by the

average shopper as that mall’s footwear department, division, specialty, or the

like. By contrast, the space occupied by SHOE SHOW in the nearby commercial

center is not located inside a mall and has the appearance to the general public

of a free-standing commercial space. More to the point, the word “show” conveys

a connotation different from “department. When, as here, “SHOW” (1)

designates an exterior space or premises in a commercial center and (2) is

modified by an adjective (shoe) to identify the kind of “show” being conducted

in that space, a reasonable inference is that it is a place in which to view and

inspect shoes, boots, sandals, and the like, but not necessarily a place in which

to purchase footwear.

The Sixth Circuit, in a trademark infringement case, noted that “[w]hen

analyzing similarity, courts should examine the pronunciation, appearance, and

verbal translation of conflicting marks.” Although this is not a trademark 15

case, the differences in pronunciation, appearance, and verbal translation

between SHOW and The . . . DEPT. strengthen our conclusion that these two

terms are not substantially similar within the context of the trade name

provision of the Lease.

First, the operative words do not sound alike. SHOW plays off the

alliteration with shoe; DEPT. is the abbreviation of “department” and translates

as such in the mind of the beholder, playing out in three syllables to SHOW’s

one. Second, the structure of the two store names are different. SHOE SHOW

comprises two unabbreviated words, neither of which is modified by an article;

The SHOE DEPT. comprises three words, one being the article, “The,” and the

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 15

283 (6th Cir. 1997) (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988)).

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third being an abbreviation. As used in these two store names, SHOW and

DEPT. are about as different in pronunciation and appearance as is conceivable.

We perceive as highly unlikely any potentiality for confusion about

proprietor identity being engendered by the use of SHOW and DEPT.,

respectively, in the names of these two retail footwear establishments. 

Examined in a vacuum, the two words have very different meanings, as

illustrated by ROGET’S lists of their mutually exclusive synonyms. And, when

the words are examined in context, modified as they are by SHOE, the generic

adjective that they have in common, SHOW and DEPT. imply two different

types of footwear facilities or operations. Separate and apart from their

respective meanings, the two words differ in pronunciation, appearance, and

verbal translation.

In sum, we are convinced that, because (1) “shoe” is a generic or

descriptive term and is common to the overwhelming majority of establishments

that have anything at all to do with footwear, and (2) the non-generic terms

SHOW and DEPT. have virtually nothing in common, SHOE SHOW, (the name

of the store in the nearby commercial center), is not substantially similar to The

SHOE DEPT. (the name of Shoe Show’s store in Almeda’s mall) – at least not for

purposes of the trade name provision of the Lease. This is even more apparent

when these trade names are viewed in the perspective of the way that the trade

name provision of the Lease evolved through substantial negotiations by

experienced and sophisticated commercial leasing parties, and the fact that the

presence of a SHOE SHOW in the nearby commercial center never elicited

protest by either San Mall or Almeda until Shoe Show gave notice that it was

terminating the Lease.

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IV. CONCLUSION

The Lease’s trade name provision is unambiguous. It prohibits Shoe Show

from conducting a proximate operation – any operation, not just a shoe store –

under the name The SHOE DEPT. or any other name that is substantially

similar to The SHOE DEPT. This lease provision is pregnant with the negative

– the absence of – (1) an express prohibition of Shoe Show’s operation of one or

more shoe stores within the proscribed radius of Almeda’s shopping mall and (2)

an express prohibition of Shoe Show’s using either of its other two widely used

trade names, SHOE SHOW and BURLINGTON SHOES. If Almeda’s

predecessor expected to be able to block Shoe Show’s use of either or both of

those trade names, it should have included them expressly in the Lease’s list of

forbidden trade names, just as it did with The SHOE DEPT. To sign a lease

containing that omission and thereafter come into court with a collateral attack

on the use of one of those two known trade names based on nothing more than

the amorphous ban on “substantially similar” trade names should not and will

not be countenanced – especially when (1) the generic word, shoe, is universally

descriptive of the non-barred act of operating a retail footwear store, and (2)

SHOW is not substantially similar to The . . . DEPT. Interestingly, Almeda has

not pointed to any example of a retail store that, in its trade name, employs the

word “show” modified by a generic word that references the kind of merchandise

being sold, much less the identity of the merchant doing the selling: No “Grocery

Show,” no “Sporting Goods Show” no “Appliance Show,” and so on ad infinitum.

When viewed in the context of the entire Lease and all of the relevant facts

of this case, SHOE SHOW is just not substantially similar to The SHOE DEPT. 

Accordingly, Shoe Show did not violate the Lease when it opened a second store

under the name SHOE SHOW within two miles of Almeda’s mall. Absent such

a violation, Shoe Show’s use of SHOE SHOW did not constitute a default by the

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Lessee under the Lease and thus did not prohibit Shoe Show from exercising its

option to terminate the Lease as of the end of its fifth year. We therefore reverse

the district court’s summary judgment and remand for further proceedings

consistent herewith.

REVERSED and REMANDED.

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CARL E. STEWART, Circuit Judge, dissenting:

The only issue presented is whether the trade names “The SHOE DEPT.”

and “SHOE SHOW” are substantially similar within the context of the parties’

lease agreement. The district court’s well-reasoned memorandum opinion and

order concluded that “SHOE SHOW” and “The SHOE DEPT.” are substantially

similar trade names within the meaning of the lease agreement, and therefore

that Shoe Show breached its contract with Almeda Mall when it abandoned its

store in the Almeda Mall and ceased paying rent prior to the end of the lease

term.

The district court concluded, and all parties agree, that the phrase

“substantially similar trade name” is unambiguous. The dispute turns on the

differing viewpoints employed to parse the language. For essentially the reasons

given by the district court, I would affirm the summary judgment. Accordingly,

I dissent from the majority opinion.

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