### IN THE UNI TED STATES COURT OFAPPEALS FOR THE FIF TH 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”) a s l e s s ee (“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 t o o p erate a retail shoe store in the Leased Premises under the trade name “The SHO E DEPT.” The Lease expressly prohibited Shoe Show 1 U n i te d S ta te s C o u rt o f A p p ea l s F i ft h C i rc u i t 

### F I L E D August 8, 2 011 Lyle W . Cayce Clerk

The Leas e ref

ers to the tr adename to be use d by Les se e as “The SH OE DEPT.” ; the 1
rec ord phot o of the sign on the Leas ed Prem ise s ref lect s “th e SH OE DEPT. ” as doe s App elle e’s brie f; the App ellant s’ brie f ref ers to “TH E SH OE DEPT. ” We have chos en to go wi th the Leas e and use“The SH OE DEPT. ” thr oughoutthisop inion. Case: 10-20587 Document: 00511564848 Page: 1 Date Filed: 08/08/2011No. 10-20587

f r o m operating another business under the name “The SHOE DEPT.” or a ny

“ s ub s tantially 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 lo c a t e d l e s s 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 te r minate 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. Al m e d a c o ntended that its operation of that second store violated the terms of the Lease because the name of the second store wa s “ 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 re v e r s e 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 ter m o f t e n 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 th e lease term. This option was conditioned, however, on Shoe

2 Case: 10-20587 Document: 00511564848 Page: 2 Date Filed: 08/08/2011No. 10-20587

S h ow’s not being in default under the Lease when it mailed the termi n a t i o n notice. Section 4.01(c) of the Lease states that Shoe Show “shall o p erate its busine ss . . . 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 i n 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, the Le s sor 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. Approxi m a tely 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 spac e th erein 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 n e arby center, however, until the spring of the y e a r f

ollowing 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.

3 Case: 10-20587 Document: 00511564848 Page: 3 Date Filed: 08/08/2011No. 10-20587

Almeda rejected Shoe Show’s early termination of the Lease, contending for the f ir s t time that Shoe Show’s operation of SHOE SHOW in such close proximity to the Leased Premises viol ated 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 S h o e S h ow in default and rendering it ineligible to exercise its right to terminate the Leas e e a rly . 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 s t o r e s had substantially similar trade names and gr a n t e d Almeda’s motion for summary judgment, awarding it damages and attorneys fees. Shoe Show timely filed a notice of appeal.

4 Case: 10-20587 Document: 00511564848 Page: 4 Date Filed: 08/08/2011No. 10-20587 II. STANDARD OF REVIEW We review a district court’s summary judgment d e novo. Summary 2 judgment is appropriate when “there is no g e nuine dispute as to any material fact and the movant is entitled to judgment as a matter of l aw . ” When 3 reviewing a summary judgment, we construe all the eviden c e a n d 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 “substa n t i ally similar trade-name” as it is used in the Lease. We then determine wh ether, 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 l e g al m e a ning. The district court drew on the 5

Am az ing Spa ces, Inc. v. Me tro Mi ni Stora ge , 608 F.3d 225, 233 (5th Cir. 2010) (c itin g 2 Bd. of Supe rv is ors for La. State Uni v. Agri c. & Me ch. Coll

. v. Sma ck Ap pa rel Co. , 550 F.3d 465, 474 (5th Cir

. 2008) ).
F E D

. R. C IV

. P. 56(a). 3
Am az ing Spaces , 608 F.3d at 234 (c itin g Xtre me Lash es, LLC v. Xten ded Beau ty, Inc. , 4 576 F.3d221 , 226 (5th Cir

. 2009) ).
Wes tfi eld Ins. Co. v. Ga la tis , 797 N. E.2d 1256, 1261 (O hio 2003) (c itin g Gu lf Ins. Co. 5
v. Bur ns Mo tors, Inc. , 22 S .W. 3d 417, 423(Tex. 2000) ). 5 Case: 10-20587 Document: 00511564848 Page: 5 Date Filed: 08/08/2011No. 10-20587

Ohio Labor and Industry Code as well as B LA C K’ S LAW D I C T I O NARY in 6 7 d e t e r m i ni n g that a trade name is “the name that identifies a business.” Th e court then credited RA N D O M H O U S E W E B S T E R ’ S C O L L E G E D I C T I O NARY’ S 8 definition of “substantially similar” as having “essential elements in common.” The district court surmised (and we agree) that the subject phrase, as u s e d i n 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 r e f l e c t e d i n the record and 9 confirmed by counsel at oral argument, the partie s who negotiated the Lease

were sophisticated individuals with considerabl e experience operating and leasing shopping malls and commercial centers on the one h an d , 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: S H O E S H O W , The SHOE DEPT., or BURLINGTON SHOES. Within that framework we note:

O HI O R EV

. C ODE ANN

. § 4 165. 01. 6( 8th ed. 200 4). 7( 2d ed. 199 9). 8
Wer em ain mi ndf

ul thatthisis nota tra dem ark , pat ent, orc opyright cas e a nd doe s 9 not involve infringem ent orappr opriati on of s uch a right by a str anger agains t the hold er of t h e right

. Rather , this tra de nam e cas e imp lica tes pr ecis ely the opp os ite , viz. , the e xp r e s s cont rac tual eff

ortt o l im it the useof

a tra de nam e b y it s rightful hold er. 6 Case: 10-20587 Document: 00511564848 Page: 6 Date Filed: 08/08/2011No. 10-20587

• 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 provi s io n exp re s s ly 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 with i n two miles of the Leased Premises, that provision never mentions, much less expressly prohibits, Shoe Show’s use of either of its other t w o w i d ely used trade names, SHOE SHOW or BURLINGTON SHOES.

• Instead of forthrightly prohibiting Shoe Show from using those other two widely us e d tr a d e names, the trade name provision employs only the no n-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 “ mislead i ng ly similar” or “confusing” trade names or other such restrictive labe l s th a t 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 nonspecif i c 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
7 Case: 10-20587 Document: 00511564848 Page: 7 Date Filed: 08/08/2011No. 10-20587

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 t e r m inating 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 assert ions of Almeda and the conclusions of the distri c t c o u rt, 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 substantiall y similar trade names within the intendm e nt of th e Le a s e ’ s tr ade name provision. Consequently, we conclude that Shoe Show did not violate that provision of the Lease wh e n it opened and
ope r a t e d 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 wheth e r th e names of two rival organizations were
sub s t antially similar. The Ohio court’s first step was to eliminate 1 0

c o nsideration 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

154N .E. 352 , 353 (O hio Ct. Ap p. 192 6). 1 0 8 Case: 10-20587 Document: 00511564848 Page: 8 Date Filed: 08/08/2011No. 10-20587

so substantially similar, that, in the face of proof, deception and confusion would arise, and therefore unfair competition .” 1 1 We see that pronouncement as precisely applicable to the word “shoe” in this case. As used i n th e t r a d e 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 reas o n 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 j u di c i al n otice 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. Al m e d a , like San Mall before it, has to have known that — absent a n express prohibition in the Lease of the use of SHOE SHOW or BURLINGTON SHOES — any facility opened and operated by Shoe S h o w w ithin (or, for that matter, beyond) two miles of the Leased Premises woul d al m o s t certainly employ

one of those trade names, each of which includes the generic or descriptive term “shoe.” We must reject out of hand any con s i d e ration of the word “shoe” as a factor in determining whether “SHOE SHOW” is substantially similar to “The SHOE DEPT.”

Id. ( em phas is add ed)

. 1 1 9 Case: 10-20587 Document: 00511564848 Page: 9 Date Filed: 08/08/2011No. 10-20587

The second step under the Cleveland Opera Co. analysis is to determ i n e whether “the other words constituting the n ame . . . 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 1 2
very different meanings; they are not each other’s synonyms. This is confirmed by comparing many of the synonyms for th o s e tw o w o rds that are listed in R O G E T ’ S T H E S AU R U S

. A sampling of the synony m s found in R O G E T ’ S for “department” includes admi ni s t r ation, agency, area, bureau, division, office, quarter, station, subdivision, unit, assignment, classification, s ub division, territory, classificati o n , s p e cialty, and sphere. Compare those with some of 1 3 R O G E T ’ S synonyms for “sho w,” e.g., demonstration, exhibition, appearance, display, expo, fair, parade, presentation, and pr o du c t i o n. It becomes readily 1 4 apparent that there is no o v e rl a p in the synonyms for shoe and those for depa rt m ent, 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 “SH OW” 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.” I f, instead of SHOW , the name of the second store had in c l u d e d 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

. 1 2
R OGET II: T HE N EW T HE SA URU S( 3d ed. 199 5). 1 3
Id. 1 4 10 Case: 10-20587 Document: 00511564848 Page: 10 Date Filed: 08/08/2011No. 10-20587

If anything, the definitions of those determinative w o rds imply two functionally different types of establishment s . Th e retail shoe store dubbed “The SHOE DEPT.” inside Almeda’s shoppin g 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 “ d epartment. When, as here, “SHOW” (1) designates an exterior space or premises in a commercial center a n d (2) is modified by an adjective (shoe) to identify the kind of “show” bei n g c o n du cted in that space, a reasonable inference is that it is a place in wh i c h t o vi e w 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 o f c onflicting marks.” Although this is not a trademark 1 5
case, the differences in pronunciation, appearance, and v e rb al 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. S H O W p l ay s 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

Da ddy’s Junky Mus ic Store s, In c . v . Big Da ddy’s Fam il y Mus ic Ctr. , 109 F.3d 275, 1 5 283 (6th Cir

. 1997) (cit ing Wynn Oi l Co. v. T hom as , 839 F.2d118 3, 1188 (6th Cir

. 1988) ). 11 Case: 10-20587 Document: 00511564848 Page: 11 Date Filed: 08/08/2011No. 10-20587

third being an abbreviation. A s u s e d i n these two store names, SHOW and DEPT. are about as different in pronunciation and appearance as is conceivable. We perceive as highly unlikely any pot entiality for confusion about proprietor identity being engendered by the use of SHOW and DEPT., respectively, in the names of these two r etail footwear establishments. Examined in a vacuum, the two words have very dif f e r e n t meanings, as illustrated by R O G E T ’ S l i s t s 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 , S H O W and DEPT. imply two different types of footwear facilities or o p e r a t ions. Separate and apart from their respective meanings, the two words dif f e r i n pronunciation, appearance, and verbal translation. In sum, w e a r e c o nvinced that, because (1) “shoe” is a generic or descriptive term and is common to the overwhelming majority of establishments that hav e a nyth ing 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 provisio n 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 cent e r n e ver elicited
p r o t e s t b y either San Mall or Almeda until Shoe Show gave notice that it was terminating the Lease.

12 Case: 10-20587 Document: 00511564848 Page: 12 Date Filed: 08/08/2011No. 10-20587 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. o r 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 Al m e d a ’ s predecessor expected to be abl e t o 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 SHO E D EPT. 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 o p e r a ting 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
13 Case: 10-20587 Document: 00511564848 Page: 13 Date Filed: 08/08/2011No. 10-20587

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 furth e r proceedings consistent herewith. REVERSED and REMANDED.

14 Case: 10-20587 Document: 00511564848 Page: 14 Date Filed: 08/08/2011No. 10-20587

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 e n d o f th e l ease term. The dis t ri ct court concluded, and all parties agree, that the phrase “substantially similar trade name” is unambiguous. The dispute turns o n the differing viewpoints employed to parse the language. For e s s entially the reasons given by the district court, I would affirm the summary judgment. Accordingly, I dissent from the majority opinion. Case: 10-20587 Document: 00511564848 Page: 15 Date Filed: 08/08/2011