No. 23-2000

US GHOST ADVENTURES, LLC,

Plaintiff, Appellant,

v.

MISS LIZZIE'S COFFEE LLC and JOSEPH PEREIRA, Individually,

Defendants, Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Leo T. Sorokin, U.S. District Judge]

Before

Barron, Chief Judge, Selya and Gelpí, Circuit Judges.

Christoper D. Strang, Strang, Scott & Giroux, LLP, Pietro Sanitate, Timothy Bechen, Woods Rogers Vandeventer Black PLC, Genesis Guzman, Michael P. Mullins, and Day Pitney LLP on brief for appellant. Joseph Pereira, pro se, on brief for appellee Joseph Pereira. Matthew J. Ginsburg, Ascendant Law Group LLC, Daniel J. Larson, and Larson Law LLC for appellee Miss Lizzie's Coffee LLC.

November 15, 2024 SELYA, Circuit Judge. The Lizzie Borden House is located in Fall River, Massachusetts. It bears a storied history that originates with the still-unsolved murders — in 1892 — of Lizzie Borden's father and stepmother. Prosecutors alleged that Borden hacked her parents to death with a hatchet in their family home.1 But these allegations were never proven: in the ensuing "trial of the century," a jury acquitted Lizzie of all charges. This macabre tale not only has permeated the national consciousness but also has turned Borden's ancestral home into a destination for those with a taste for the supernatural. It is against this grizzly backdrop that the case at hand arises.

I

We briefly rehearse the relevant facts and travel of the case. We glean the facts from the district court's findings and the record below. See Waldron v. George Weston Bakeries Inc., 570 F.3d 5, 7 (1st Cir. 2009).

A

US Ghost Adventures, LLC (Ghost Adventures) provides ghost tours and related hospitality services across the United States. The firm owns a bed and breakfast that is operated out of

1 These allegations gave rise to a bloody bit of doggerel that has gained increasing notoriety with the passage of time: "Lizzie Borden took an axe / And gave her mother forty whacks; / And when she saw what she had done / She gave her father forty-one." Lizzie Borden, Britannica (Sept. 20, 2024), https://www.britannica.com/ biography/Lizzie-Borden-American-murder-suspect.

- 2 - the Lizzie Borden House in Fall River. This venue features a museum, so-called "ghost tours," and kindred activities. The commercial success of the business depends in large part on the Lizzie Borden name and lore. To this end, Ghost Adventures owns an incontestable federal trademark on both the name "Lizzie Borden" as used in hotel and restaurant services and on a realistic hatchet logo displaying a notched blade, which hearkens back to the implement that allegedly killed Borden's parents.2

Miss Lizzie's Coffee LLC (Miss Lizzie's) recently opened a coffee shop next door to the Lizzie Borden House.3 It, too, markets itself by reference to the Lizzie Borden saga. Its storefront signage displays the words "Miss Lizzie's Coffee" between a cup of coffee and a stylized hatchet spewing blood. A second sign, with similar accoutrements, advertises Miss Lizzie's as "The Most Haunted Coffee Shop in the World!" The hatchets on both signs include handles and dramatic blood splatters.

2 If a registered trademark has been consistently used for five consecutive years from the date of federal registration and complies with other statutory formalities, it becomes "incontestable" (that is, impervious to certain challenges to its use). See 15