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Entry Number 220

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IN THE UNITED STATES DISTRICT COURT DISTRICT OF SOUTH CAROLINA FLORENCE DIVISION Firehouse Restaurant Group, Inc., a Florida corporation, Three Alarm Subs, Inc., a South Carolina corporation, and Fireside Restaurant Company, Inc., a South Carolina corporation, ) ) ) ) ) Plaintiffs, ) ) vs. ) ) Scurmont LLC, d/b/a Calli Bakers Firehouse ) Bar & Grill, and Heath Scurfield, an individual, ) ) ) Defendants.

Civil Action No. 4:09-cv-00618-RBH

JURY INSTRUCTIONS

Members of the jury, now that you have heard all the evidence and the arguments of the lawyers, it is my duty to instruct you on the law that applies to this case. These instructions will be in three parts: first, the instructions on general rules that define and control the jury's duties; second, the instructions that state the rules of law you must apply, i.e., what the plaintiff must prove to make the case; and third, some rules for your deliberations. As I stated at the beginning of this case, the Plaintiffs in this case are Firehouse Restaurant Group, Inc., the owner of the registered trademarks at issue and Three Alarm Subs, Inc. and Fireside Restaurant Company, Inc., which are licensed franchisees of Firehouse Restaurant Group, Inc. and which use the trademarks under contract in their local restaurant businesses. I will refer to the Plaintiffs collectively as the Firehouse Subs Plaintiffs. The Defendants Heath W. Scurfield and Scurmont, LLC own and operate Calli Baker's Firehouse Bar & Grill. I will refer to the Defendants collectively as the Calli Baker's Firehouse Defendants. Neither party in this case seeks monetary damages from the other. The issues in this case are whether or not the Calli Baker's Firehouse Defendants have infringed Firehouse Restaurant Group's trademarks, and whether Firehouse Restaurant Group obtained the registration for the

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trademark FIREHOUSE, Registration Number 3,173,030, through fraud on the U.S. Patent & Trademark Office. It is your duty to find the facts from all the evidence in the case. To those facts you must apply the law as I give it to you. You are bound to accept the rules of law as I give them to you whether you agree with them or not. And you must not be influenced by any personal likes or dislikes, opinions, prejudices or sympathies. That means that you must decide the case solely on the evidence before you and according to the law. You will recall that you took an oath promising to do so at the beginning of the case. Counsel for the parties have referred to some of the governing rules of law in their arguments. If, however, any difference appears to you between the law as stated by counsel, and the law as stated by the Court in the instructions, you are to be governed by the Courts instructions. In following my instructions, you must follow all of them and not single out some and ignore others; they are all equally important. And you must not read into these instructions or into anything I may have said or done any suggestion as to what verdict you should return - that is a matter entirely for you to decide. You must perform your duties as jurors without bias or prejudice or sympathy as to either party. The law does not permit you to be governed by sympathy, prejudice or public opinion. All parties expect that you will carefully and impartially consider all the evidence, follow the law as it is now being given to you, and reach a just verdict regardless of the consequences. Evidence The evidence from which you are to decide what the facts are consists of: (1) the sworn testimony of witnesses, both on direct and cross-examination, regardless of who called the witnesses; (2) the exhibits which have been received into evidence; and 2

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any facts to which all the lawyers have agreed to stipulate. You are to consider only the evidence in the case. But in your consideration of the

evidence, you are not limited to the bald statements of the witnesses. In other words, you are not limited solely to what you see and hear as the witnesses testify. You are permitted to draw, from the facts which you find have been proved, such reasonable inference as seems justified in the light of your experience. Inferences are deductions or conclusions which reason and common sense lead the jury to draw from facts which have been established by the evidence in the case. What Is Not Evidence In reaching your verdict, you may consider only the testimony and exhibits received into evidence. Certain things are not evidence, and you may not consider them in deciding what the facts are. I will list these things for you: (1) Arguments and statements by lawyers are not evidence. The lawyers are not witnesses. What they have said in their opening statements, closing arguments, and at other times is intended to help you interpret the evidence, but it is not evidence. If the facts as you remember them differ from the way the lawyers have stated them, then your memory of them controls. (2) Questions and objections by lawyers are not evidence. Attorneys have a duty to their clients to object when they believe that a question is improper under the rules of evidence. You should not be influenced by any of the objections or by my ruling on any of them. If I have sustained an objection, you should disregard the question and answer. If I have overruled an objection, you should treat the answer like any other. (3) Testimony that has been excluded or stricken, or that you have been instructed to disregard, is not evidence and must not be considered. In addition, if testimony or exhibits have been received only for a limited purpose, you must follow the limiting instructions I have given. (4) Anything you may have seen or heard when the court was not in session is not evidence. You are to decide this case solely on the evidence received at the trial. 3

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Direct and Circumstantial Evidence There are two kinds of evidence the law recognizes: direct and circumstantial. Direct evidence is direct proof of a fact, such as testimony of an eyewitness. Circumstantial evidence is indirect evidence, that is, proof of a chain of facts from which you could find that another fact exists, even though it has not been proved directly. You are entitled to consider both kinds of evidence. The law permits you to give equal weight to both, but it is for you to decide how much weight to give to any of the evidence in this case. It is for you to decide whether a fact has been proved by circumstantial evidence. In making that decision, you must consider all the evidence in the light of reason, common sense, and experience. Credibility of Witnesses In deciding what the facts are, you must consider all of the evidence. In doing this, you must decide which testimony to believe and which testimony not to believe. You are the sole judges of the credibility, or believability, of each witness. You must decide for yourselves whether to believe the testimony of any witness. You may believe all or any part or nothing of what a witness said while on the stand. In determining whether to believe any witness, you should apply the same tests of truthfulness which you apply in your own everyday affairs. In doing this, you may take into account a number of factors including the following: (1) Was the witness able to see, or hear, or know the things about which that witness testified? (2) How well was the witness able to recall and describe those things? (3) What was the witness's manner while testifying? (4) Did the witness have an interest in the outcome of this case or any bias or prejudice concerning any party or any matter involved in the case? (5) How reasonable was the witness's testimony considered in light of all the evidence in the case? 4

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(6) Was the witness's testimony contradicted by what that witness has said or done at another time, or by the testimony of other witnesses, or by other evidence? You should carefully scrutinize all the testimony given, the circumstances under which each witness has testified, and every matter in evidence which tends to show whether a witness is worthy of belief. Consider each witnesss intelligence, motive, and state of mind, and demeanor and manner while on the stand. Consider the witnesss ability to observe the matters as to which he or she has testified, and whether the witness impresses you as having an accurate recollection of these matters. Consider also any relation each witness may bear to either side of the case; the manner in which each witness might be affected by the verdict; and the extent to which, if at all, each witness is either supported or contradicted by other evidence in the case. Inconsistencies or discrepancies in the testimony of a witness, or between the testimony of different witnesses, may or may not cause the jury to discredit such testimony. Two or more persons witnessing an incident or a transaction may see or hear it differently; and innocent misrecollection, like failure of recollection, is not an uncommon experience. In weighing the effect of a discrepancy, always consider whether it pertains to a matter of importance or an unimportant detail, and whether the discrepancy results from innocent error or intentional falsehood. These are some of the factors you may consider in deciding whether to believe testimony. You are not bound to decide any issue of fact in accordance with the testimony of any number of witnesses which does not produce in your minds belief in the likelihood of truth, as against the testimony of a lesser number of witnesses or other evidence which does produce such belief in your minds. The test is not which side brings the greater number of witnesses, or presents the greater quantity of evidence; but which witness, and which evidence, appeals to your minds as being most accurate, and otherwise trustworthy. 5

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Expert testimony You have heard testimony of what we call an expert witness. If scientific, technical, or other specialized knowledge might assist a jury in understanding the evidence or determining a relevant fact, the law permits an expert to testify and state an opinion concerning such matters. However, merely because someone is qualified as an expert and offers an expert opinion does not require you to accept that opinion. Just as with any other witness, it is solely within your responsibility as jurors to decide whether or to what extent an experts testimony is credible. In assessing the credibility of expert testimony, you should consider whether the witness training and experience are sufficient to support the testimony in question. You should also consider whether the experts opinions were based on adequate information, sound reasoning, and good judgment. Charts And Summaries Received In Evidence Certain charts and summaries have been received into evidence to illustrate facts brought out in the testimony of some witnesses. Charts and summaries are only as good as the underlying evidence that supports them. You should therefore give them only such weight as you think the underlying evidence deserves. Use of Depositions: Written Form and Video During the trial of this case, certain testimony has been read to you by way of deposition or shown to you by way of videotape. The deposition or videotape testimony of a witness who, for some reason, cannot be present to testify from the witness stand is usually presented in writing under oath in the form of a deposition or in a videotape. Such testimony is entitled to the same consideration and, insofar as possible, is to be judged as to credibility and weighed by you in the same manner as if the witness had been present.

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Liability of Corporations A corporation under the law is a person, but it can only act through its employees, agents, directors, or officers. The law therefore holds a corporation responsible for the acts of its employees, agents, directors, and officers, but only if those acts are authorized. An act is authorized if it is a part of the ordinary course of employment of the person doing it. Whether a particular act was authorized is a question you must decide on the evidence. The fact that a plaintiff or defendant is a corporation should not affect your decision. All persons are equal before the law, and corporations, whether large or small, are entitled to the same fair and conscientious consideration by you as any other person. Description of Firehouse Subs Plaintiffs' claims In this case, Firehouse Subs Plaintiffs have asserted three claims that you must decide. These are: (1) (2) (3) Federal Trademark Infringement; False Designation of Origin; and Common Law Trademark Infringement and Unfair Competition.

I will instruct you on the elements and defenses to each of these claims. Trademark Defined A trademark is any word, name, or symbol adopted and used by a manufacturer or merchant to identify his goods or services and distinguish them from those manufactured or sold by others. Trademark Infringement/ False Designation of Origin: Burden of Proof Firehouse Subs Plaintiffs claim that the Calli Bakers Firehouse Defendants have infringed upon their registered trademarks and service marks, as well as additional unregistered trademarks and service marks. They are asserting claims for trademark infringement in violation of 15 U.S.C. 1114, false designation of origin in violation of 15 U.S.C. 1125(a), and common 7

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law trademark infringement and common law unfair competition arising out of the Calli Bakers Firehouse Defendants doing business as Calli Bakers Firehouse Bar & Grill. I instruct you that 15 U.S.C. 1125(a)(1)(A) provides that: Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. I instruct you that 15 U.S.C. 1114(1)(a) & (b) provides that: Any person who shall, without the consent of the registrant . . . (a)use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant. The test for each of the Firehouse Subs Plaintiffs claims is the same: in order to prevail, the Firehouse Subs Plaintiffs must first prove that they own the marks at issue, and that the marks are valid, protectible, and used in commerce. Second, the Firehouse Subs Plaintiffs must prove that the Calli Bakers Firehouse Defendants use of a similar mark creates a likelihood of confusion, mistake, or deception. In determining whether there is a likelihood of confusion, you must look at how the parties actually use their marks in the marketplace to determine whether the Calli Bakers Firehouse Defendants use is likely to cause confusion.

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On these issues, the Firehouse Subs Plaintiffs bear the burden of proof, and they must prove their claims by a preponderance of the evidence. That means that they have to produce evidence which, considered in the light of all the facts, leads you to believe that what the Firehouse Subs Plaintiffs claim is more likely true than not. To put it differently, if you were to put the plaintiffs and defendants evidence on opposite sides of an imaginary set of scales, the plaintiffs would have to make the scales tip slightly to that side. If the plaintiffs fail to meet this burden, the verdict must be for the defendants. Those of you who have sat on criminal cases will have heard of proof beyond a reasonable doubt. That is a stricter standard, that is, it requires more proof than a preponderance of evidence. The reasonable doubt standard does not apply to a civil case and you should therefore put it out of your mind. When I say in these instructions that a party has the burden of proof on any proposition, or use the expression, if you find, or if you decide, I mean you must be persuaded, considering all the evidence in the case. In determining whether any fact in issue has been proved by a preponderance of the evidence in the case, the jury may, unless otherwise instructed, consider the testimony of all witnesses, regardless of who may have called them, and all exhibits received in evidence, regardless of who may have produced them. If you find that the Firehouse Subs Plaintiffs have proven, by a preponderance of the evidence, that they are the owners of valid and protectible marks, and that Calli Bakers Firehouse Defendants have used their marks in a manner likely to cause confusion, your verdict should be for the Firehouse Subs Plaintiffs. If, on the other hand, you find that it is more likely than not that the Calli Bakers Firehouse Defendants have not used their marks in a manner likely to cause confusion with Firehouse Restaurant Groups marks, then your verdict must be for the Calli Bakers Firehouse Defendants. In my instructions, I will elaborate on the factors you are to consider in determining whether a likelihood of confusion exists. 9

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Trademark Infringement/ False Designation of Origin: Nature of the Claim The Firehouse Subs Plaintiffs claim that the Calli Bakers Firehouse Defendants have infringed Firehouse Restaurant Groups trademarks. More specifically, these trademarks are:

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Trademark Infringement/ False Designation of Origin: Elements To prove trademark infringement, the Firehouse Subs Plaintiffs must prove by a preponderance of the evidence that: (1) (2) Firehouse Restaurant Group owns a valid and protectible mark; and that the Calli Bakers Firehouse Defendants use of a similar mark either: (A) infringed that particular trademark or service mark by using in commerce any

word, term, name, symbol or device or any combination thereof which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Calli Bakers Firehouse Defendants with any of the Firehouse Subs Plaintiffs, or as to the origin, sponsorship or approval of the Calli Bakers Firehouse Defendants' goods, services or commercial activities by any of the Firehouse Subs Plaintiffs; OR 12

4:09-cv-00618-RBH (B)

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infringed by using in commerce any reproduction, counterfeit, copy, or colorable

imitation of Firehouse Restaurant Groups registered trademarks or service marks in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; OR (C) infringed by reproducing, counterfeiting, copying, or colorably imitating a

registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive. Registration: Prima Facie Evidence of Ownership Firehouse Restaurant Groups trademark registrations are prima facie evidence of its exclusive right to use the marks in commerce in connection with the goods and services specified in the registration certificates. Prima facie means the fact is established unless you determine that the Calli Bakers Firehouse Defendants have presented a greater weight of evidence which contradicts the existence of the fact. Validity of the Trademarks at Issue With respect to all of Firehouse Restaurant Groups trademarks except the trademark FIREHOUSE, Registration Number 3,173,030, there is no dispute that the marks are valid and protectible trademarks that the Firehouse Subs Plaintiffs use in interstate commerce. Therefore, you do not have to be concerned with that element of trademark infringement as to those trademarks. With respect to the trademark FIREHOUSE, Registration Number 3,173,030, Calli Bakers Firehouse Defendants do dispute the Firehouse Subs Plaintiffs exclusive right to the use of that mark. Therefore, because the validity and ownership of that mark is challenged, the Calli 13

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Bakers Firehouse Defendants bear the burden to prove, by the greater weight of the evidence, that the Firehouse Subs Plaintiffs do not have the right to the exclusive use of the trademark FIREHOUSE, Registration Number 3,173,030. Likelihood of Confusion Factors With respect to the second element of trademark infringement, likelihood of confusion, it is in dispute as to all of Firehouse Restaurant Groups marks, and you will have to make a determination as to each mark alleged. In doing so, you must consider whether the Calli Bakers Firehouse Defendants' use of their marks is likely to cause confusion about the source or sponsorship of either Calli Baker's or Firehouse Subs' products. In conducting the likelihood of confusion analysis, you are to look to how the parties actually use their trademarks in the marketplace to determine whether the Calli Baker's Firehouse Defendants use is likely to cause confusion. You must consider whether, in light of all the factors, there is a likelihood that an ordinary consumer would be confused as to the source or sponsorship of the parties' respective goods and services. As you consider the likelihood of confusion, you may examine the following factors: (1) (2) the strength or distinctiveness of Firehouse Restaurant Groups marks; the similarity of Firehouse Restaurant Groups trademarks and the Calli Bakers Firehouse Defendants trademarks; (3) (4) (5) (6) (7) the similarity of the goods or services that the respective marks identify; the similarity of the facilities that the parties use in their businesses; the similarity of advertising used by the parties; the Calli Bakers Firehouse Defendants' intent in selecting their marks; and actual confusion.

These factors are not meant to be a rigid formula for infringement; rather, they are meant to be a guide of the various considerations that may be relevant in determining the question of 14

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likelihood of confusion. The presence or absence of any particular factor should not necessarily suggest that there is or is not a likelihood of confusion, because you must consider all relevant evidence in making this determination. Likelihood of Confusion Factor: Strength of the Allegedly Infringed Trademarks The first factor to consider in determining likelihood of confusion is the strength or distinctiveness of each of Firehouse Restaurant Groups marks. The strength of a trademark is the degree to which a consumer in the relevant population, upon encountering the trademark, would associate the trademark with a unique source. Thus, the strength of each of Firehouse Restaurant Groups marks is the degree to which a consumer, upon encountering the mark, would uniquely associate Firehouse Subs with the mark. If a mark is found to be weak, it is entitled to less protection. In this regard, if you find that Firehouse Restaurant Groups trademarks are weak, then it is less likely that the Calli Bakers Firehouse Defendants marks will cause confusion with any of Firehouse Restaurant Groups trademarks. The strength of a trademark is evaluated in terms of the trademarks conceptual strength and commercial strength. I will now elaborate on the factors you should consider in determining the conceptual and commercial strength of a mark. Conceptual Strength of a Mark A mark's conceptual strength is determined by classifying the mark into one of four groups. From weakest to strongest, they are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. A generic mark includes the common name of a product or service itself. Genic marks receive no protection as trademarks. For example, the words LITE BEER for light beer and CONVENIENT STORE for convenience stores cannot serve as trademarks.

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A descriptive mark merely describes a function, characteristic or quality of the product or service, such as its intended use, its ingredients, its dimensions, its desirable features, or its effect on the consumer. Descriptive marks must have acquired secondary meaning in order to be protected. In this regard, KENTUCKY fried chicken and AMERICAN airlines are descriptive marks that have established secondary meanings in consumers minds, causing consumers to recognize a brand or source of fried chicken or air travel, rather than the places, Kentucky and America. Suggestive marks, which are conceptually strong and inherently distinctive, do not describe a product's features but merely suggest them; thus, the exercise of some imagination is required to associate a suggestive mark with the product. For example, PLAYBOY magazine and ORANGE CRUSH are suggestive marks. Arbitrary or fanciful marks are inherently distinctive and most conceptually strong. Arbitrary marks are based on existing words used in ways unconnected with their common meaning, such as APPLE computer or SHELL gasoline. Fanciful marks consist of made-up words that are invented to describe the product or source, such as KODAK or EXXON. These marks are valid without the holder having to make any other showing. In this case, Firehouse Restaurant Groups registrations constitute prima facie evidence that each of the marks is at least suggestive and therefore conceptually strong, but may be rebutted by the Calli Bakers Firehouse Defendants. Commercial Strength of a Mark To determine commercial strength of Firehouse Restaurant Group's marks you must look at evidence of the marketplace. A trademarks commercial strength focuses on whether, in fact, a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise. For example, FIREHOUSE SUBS can be considered commercially strong if a substantial number of 16

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consumers understand that the designation FIREHOUSE SUBS refers to the particular business of the Firehouse Subs Plaintiffs. [On the other hand, the mark FIREHOUSE SUBS can be considered commercially weak if a substantial number of consumers do not understand that the designation FIREHOUSE SUBS refers to the Firehouse Subs Plaintiffs]. In this case, to establish that their marks are commercially strong, the Firehouse Subs Plaintiffs must show that consumers have a tendency to associate each mark by itself with the goods and services offered by Firehouse Subs. In determining the commercial strength of Firehouse Restaurant Groups trademarks, you may consider the following factors: (1) (2) the Firehouse Subs Plaintiffs advertising expenditures; consumer studies linking the Firehouse Subs Plaintiffs marks to a particular source; (3) (4) (5) (6) the Firehouse Subs Plaintiffs record of sales success; unsolicited media coverage of the Firehouse Subs Plaintiffs business; attempts by others to plagiarize the Firehouse Subs Plaintiffs marks; and the length and exclusivity of the Firehouse Subs Plaintiffs use of the marks. Third Party Use & Strength of a Mark Also relevant to the strength or distinctiveness of a trademark are the number of third party uses of that trademark. Therefore, in evaluating both the conceptual and commercial strength of Firehouse Restaurant Groups marks, you may also consider the number of third party usages that include some or all of the text of Firehouse Restaurant Groups marks. Evidence of third party use and trademark registrations incorporating a common term are relevant to prove that some segment of the composite marks, which both contesting parties use, has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak. Furthermore, third party use within an industry is evidence that customers have become so conditioned by a plethora of such similar marks that 17

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customers have been educated to distinguish between different such marks on the basis of minute distinctions. The greater the number of identical or more or less similar trademarks already in use on different kinds of goods, the less the likelihood of confusion. Therefore, in assessing a mark's strength, the frequency with which a linguistic or graphical term is used in other trademark registrations must be carefully examined. A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The frequency of third party use of a trademark illustrates the mark's lack of both conceptual and commercial strength, particularly if the third party use is in the same field of merchandise or service. Evidence of third party use of a mark in unrelated markets or industries may also, to a lesser extent, indicate a mark's lack of strength. However, a mark that is subject to third party use can be rehabilitated by evidence of successful policing of the mark. In this case, in analyzing the strength of Firehouse Restaurant Groups marks, you may consider the number of third party uses and registrations of identical or similar trademarks. If you find that few or no third parties have used a mark similar to Firehouse Restaurant Groups marks, then this factor weighs in favor of the Firehouse Sub Plaintiffs. If, on the other hand, you find that a substantial number of third parties have used a mark in commerce similar to the marks alleged by the Firehouse Subs Plaintiffs, then this factor weighs in favor of the Calli Bakers Firehouse Defendants. Likelihood of Confusion Factor: Similarity of the Parties Respective Trademarks The second factor you may consider in determining likelihood of confusion is the similarity of the trademarks in question. Dissimilar trademarks are less likely to cause consumer confusion than similar trademarks. In determining the similarity of the parties respective marks, you may consider the similarity of the marks in terms of their sight, sound, and meaning.

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In determining whether trademarks are similar, the trademarks must be considered in the contexts in which they are seen by the ordinary consumer. The fact that the marks might share a common element does not alone establish a likelihood of confusion. If a mark is commonly paired with other material in the public view, that pairing must be considered in determining whether the trademarks are similar. In evaluating the similarity of the two marks, the marks need only be sufficiently similar in appearance, with greater weight given to the dominant or salient portions of the marks. A finding of similarity weighs in favor of the Firehouse Subs Plaintiffs. A finding of dissimilarity weighs in favor of the Calli Bakers Firehouse Defendants. Likelihood of Confusion Factor: Similarity of the Goods and Services Offered by the Parties The third factor to consider in determining likelihood of confusion is the similarity of the goods and services that the parties respective marks identify. Trademarks that identify

unrelated or dissimilar goods and services are less likely to be confused. As with the similarity of the marks, you are to measure the similarity of goods and services with respect to each party's actual performance in the marketplace. If you find that any of Plaintiff Firehouse Restaurant Groups marks are at least suggestive, then those marks are entitled to protection against the same or a confusing mark on the same product, or related products, and even on those which may be considered by some to be unrelated but which the public is likely to assume emanate from Firehouse Subs. The

registration of a suggestive mark should be broadly construed, and the appropriate reading is not limited to goods and services listed in the registration certificate. An infringement can occur where the parties products are related. However, even if you find there is some overlap between the products and services identified by the parties respective marks, you are entitled to find that the products are dissimilar if the products differ in many other respects. A finding that the parties goods and services are similar weighs in favor of the

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Firehouse Subs Plaintiffs. Conversely, a finding that the goods and services are not similar weighs in favor of the Calli Bakers Firehouse Defendants. Likelihood of Confusion Factor: Similarity of the Parties Respective Facilities The fourth factor to consider in determining likelihood of confusion is similarity of the facilities used by the parties in their respective businesses. If the parties utilize different

facilities and distribution channels in presenting their respective goods to consumers, then consumers are less likely to be confused about the source of those goods. In analyzing this factor you may consider the basic differences between Calli Bakers and Firehouse Subs modes of distributing their products. You may also consider the class of consumers purchasing the products, and the context in which they make their purchases. Notably, the sophistication and expertise of the consumers can preclude any likelihood of confusion among them stemming from the similarity of trademarks. In this case, a finding that the parties facilities and distribution channels are similar weighs in favor of the Firehouse Subs Plaintiffs. On the other hand, a finding that the facilities and distribution channels used by the parties are not similar weighs in favor of the Calli Bakers Firehouse Defendants. Likelihood of Confusion Factor: Similarity of Advertising Used by the Parties The fifth factor to consider in determining likelihood of confusion is the similarity of advertising used by the parties. If the Firehouse Subs Plaintiffs and the Calli Bakers Firehouse Defendants utilize different channels of advertisement, then consumers are less likely to be confused about the source of goods. When assessing the similarity of the parties respective methods of advertising you should consider the following factors: (1) (2) (3) the media used; the geographic areas in which advertising occurs; the appearance of the advertisements; and 20

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the content of the advertisements. If you find that the parties use similar methods of advertising, then this factor weighs in

favor of the Firehouse Subs Plaintiffs. On the other hand, if you find that the methods of advertising used by the Calli Bakers Firehouse Defendants are not similar to the methods of advertising used by the Firehouse Subs Plaintiffs, then this factor weighs in favor of the Calli Bakers Firehouse Defendants. Likelihood of Confusion Factor: Intent of the Alleged Infringer to Cause Confusion The sixth factor to consider in determining likelihood of confusion is the Calli Bakers Firehouse Defendants intent in adopting its marks. The Defendants intent is relevant only if you find that the Firehouse Subs Plaintiffs have shown that the Calli Bakers Firehouse Defendants intended to capitalize on any good will associated with Firehouse Restaurant Groups marks. If you find that the Calli Bakers Firehouse Defendants did not intend to capitalize on any good will associated with Firehouse Restaurant Groups marks, then you should disregard this factor. Likelihood of Confusion Factor: Actual Confusion The seventh factor to consider in the likelihood of confusion analysis is actual confusion. Examples of actual confusion are where consumers believe that one party has permission to use the other partys trademark, where consumers believe that there is an association between the parties, or their respective trademarks or their products offered under those trademarks, or if a consumer mistakes the goods and services of one party for the other. Evidence of actual confusion is often paramount in the likelihood of confusion analysis. However, consumer confusion raised by errors not related to the use of the trademarks is not actual confusion. In considering evidence of actual confusion, you may consider the credibility of the witnesses, and give such evidence the weight you deem appropriate. Additionally, the period of

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time the two businesses have coexisted may be taken into account when evaluating the number of instances of actual confusion. In determining whether there has been actual confusion, you may also consider the volume of sales conducted by the parties, compared to the number of alleged instances of confusion. Where evidence of actual confusion is minimal compared to the volume of the parties sales or business transactions, then such evidence may be considered de minimus, or insignificant. If you find that the Firehouse Subs Plaintiffs have provided more than de minimus evidence of actual confusion, then this factor weighs in favor of the Firehouse Subs Plaintiffs. On the other hand, if you find that the Firehouse Subs Plaintiffs have not provided evidence of actual confusion, or if you find that the evidence of actual confusion is de minimus or insignificant, then this factor weighs in favor of the Calli Bakers Firehouse Defendants. Trademark Cancellation Due to Fraud (15 U.S.C. 1119) Now, let me discuss with you the Calli Bakers Firehouse Defendants fraud claim. In this case, the Calli Bakers Firehouse Defendants seek an Order cancelling Firehouse Restaurant Groups trademark FIREHOUSE, Registration Number 3,173,030, which has been referred to during this trial as the FIREHOUSE word mark. Specifically, the Calli Bakers Firehouse Defendants have alleged that the Firehouse Subs Plaintiffs committed fraud on the U.S. Patent & Trademark Office in obtaining the FIREHOUSE word mark. The Calli Bakers Firehouse Defendants claim of trademark cancellation due to fraud relates only to this single trademark registration. In addition to seeking cancellation, the Calli Bakers Firehouse Defendants assert fraud in the procurement of a trademark also as a defense to trademark infringement of only this one mark. A party making a fraud claim is under a heavy burden leaving nothing to speculation, conjecture, or surmise. Any doubt must be resolved against finding of fraud. The claim of Fraud on the U.S. Patent & Trademark Office in connection with a trademark registration requires that 22

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Calli Bakers Firehouse Defendants prove by clear and convincing evidence that Firehouse Restaurant Group knowingly made a false, material representation of fact in connection with its trademark application for FIREHOUSE, Registration Number 3,173,030, with the intent to deceive the U.S. Patent & Trademark Office. You must consider only what the applicant believed at the time it filed its trademark application. Willful failure to correct a material

misrepresentation also constitutes fraud where the applicant subsequently learns of the material misrepresentation and knows that the U.S. Patent & Trademark Office has relied upon that material misrepresentation. An applicant does not, however, have a duty to disclose information that was properly before the U.S. Patent & Trademark Office during consideration of the applicants registration rights. Trademark Cancellation Due to Fraud: Burden of Proof As stated above, fraud on the U.S. Patent & Trademark Office in connection with a trademark registration must be established by clear and convincing evidence. Clear and convincing evidence is an elevated standard of proof, which lies between the lesser standard of preponderance of the evidence, used in most civil cases, and the higher standard of beyond a reasonable doubt, which is required in criminal cases. Clear and convincing evidence is that degree of proof which will produce in your minds a firm belief as to the allegations sought to be established. Such measure of proof is intermediate, it does not mean clear and unequivocal. Clear and convincing evidence requires that the evidence must be found to be credible; the facts to which the witnesses testify must be distinctly remembered; the testimony must be precise and explicit; and the witnesses must be lacking in confusion as to the facts in issue. The evidence must be of such weight that it produces in the mind of the trier of fact a firm belief or conviction, without hesitancy, as to the truth of the allegations sought to be established. When the law places upon a party a burden of proof by clear and convincing evidence, the law means that the evidence is not ambiguous, doubtful, equivocal, or contradictory, but the evidence is pointed to the issue 23

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and satisfactory in the sense that the source from which it comes is one in which you as jurors can place credence. If the Calli Bakers Firehouse Defendants should fail to establish any essential element of their trademark cancellation due to fraud claim by clear and convincing evidence, the jury should find for the Plaintiff Firehouse Restaurant Group as to this claim. Proving Fraud: Consent by Competitors Competitors that use similar or related marks are most familiar with, and most affected by the marketplace, and they are best able to attest to its effects and determine whether there is a likelihood of confusion, even in cases where the marks are identical and goods closely related. Consent from a competitor to use a mark is evidence that the competitor thought out its commercial interests with care and recognized that consumer confusion is unlikely. You may consider whether third party competitors of Firehouse Restaurant Group consented to the Firehouse Subs Plaintiff's use of its marks and under what circumstances consent was granted. Proving Fraud: Materiality and Intent A misrepresentation is material if it would have caused the U.S. Patent & Trademark Office not to register the trademark had it been disclosed. Purposely failing to disclose other users rights to use the same or similar marks may qualify as a material omission or misrepresentation. Proof of specific intent to commit fraud is an indispensable element in the analysis. Intent may be inferred from circumstantial evidence, but such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot justify the subjective intent requirement. If you find that Plaintiff Firehouse Restaurant Group did not make a material misrepresentation in its application for trademark FIREHOUSE, Registration Number 3,173,030, or if you find that Plaintiff Firehouse Restaurant Group did so but did not intend to deceive the U.S. Patent & Trademark Office, then you must find for the Plaintiff. On the other hand, if you 24

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find that Plaintiff Firehouse Restaurant Group made a material misrepresentation in connection with its application to the U.S. Patent & Trademark Office, and that such material misrepresentation was made with intent to obtain a federal trademark registration to which they knew they were not entitled, you must find for the Calli Bakers Firehouse Defendants. You must also find for the Calli Bakers Firehouse Defendants if you determine that Plaintiff Firehouse Restaurant Group failed to correct such material misrepresentation after learning of its falsity, knowing that the U.S. Patent & Trademark Office relied on that material misrepresentation in issuing the registration. Duty to Deliberate When you retire to the jury room, you should first elect one from among you to serve as your foreperson. The foreperson you select will preside over the deliberations and speak for the jury here in court. After electing your foreperson, you should discuss the case with your fellow jurors to reach an agreement if you can do so. Your verdict must be unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all the evidence, discussed it fully with the other jurors, and listened to the views of your fellow jurors. Do not be afraid to change your opinion if the discussion persuades you that you should. But do not come to a decision simply because other jurors think it is right. It is important that you attempt to reach a unanimous verdict but, of course, only if each of you can do so after having made your own conscientious decision. Do not change an honest belief about the weight and effect of the evidence simply to reach a verdict. Remember at all times that you are not partisans. You are judges - judges of the facts. Your sole interest is to seek the truth from the evidence in the case.

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Consideration of Evidence Your verdict must be based solely on the evidence and on the law as I have given it to you in these instructions. However, nothing that I have said or done is intended to suggest what your verdict should be - that is entirely for you to decide. The arguments and statements of the attorneys are not evidence. If you remember the facts differently from the way the attorneys have stated them, you should base your decision on what you remember. Note-taking Some of you have taken notes during the trial. Remember that the notes are for your own personal use. They are not to be given or read to anyone else and they are not to be used in place of your memory. You should always rely on your own recollection and not someone else's notes. Your notes are not evidence and should not take precedence over your own independent recollection of the proceedings. If a conflict exists between your notes and your memory, you should rely on your memory. Return of Verdict After you have reached a unanimous agreement on a verdict, your foreperson will fill in the form that has been given to you, sign and date it and advise the marshal outside your door that you are ready to return to the courtroom. Communicating With the Court If it becomes necessary during your deliberations to communicate with me, you may send a note through the marshal, signed by your foreperson or by one or more members of the jury. No member of the jury should ever attempt to communicate with me except by a signed writing; and I will communicate with any member of the jury on anything concerning the case only in writing, or orally here in open court. Remember that you are not to tell anyone - including me - how the jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have been discharged. 26

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