## Facts

- Multiple closely held Brennan-family corporations operated restaurants using the “Brennan’s” name and related branding, with interlocking directors.
- Brennan’s, Inc. owned and operated the well-known Brennan’s restaurant at 417 Royal Street in New Orleans.
- Brennan’s Restaurants, Inc. and related entities operated other Brennan-family restaurants in Louisiana, Texas, and Georgia.
- From 1971 to November 1973, attorney Edward F. Wegmann served as general counsel for the family corporations, with his retainer paid pro rata by all corporations.
- During that joint representation, Wegmann worked (with trademark counsel) to obtain federal registrations for three service marks used for restaurant services: “Brennan’s,” “Breakfast at Brennan’s,” and a distinctive rooster design.
- The rooster registration issued in February 1972; the word marks were initially refused as primarily a surname, and Wegmann gathered evidence to show acquired distinctiveness/secondary meaning.
- In March 1973, registrations for the word marks issued in the name of Brennan’s, Inc.
- In 1974, a family dispute led to a split in corporate ownership: Brennan’s, Inc. became wholly owned by one family group; the defendant corporations became wholly owned by the other.
- After the split, both sides continued using the marks and disputed ownership; defendants contended the registrations were placed in Brennan’s, Inc.’s name only for convenience and for the benefit of all family restaurants.
- When trademark litigation commenced, Wegmann chose to represent the defendant corporations and ended his relationship with Brennan’s, Inc.; he also retained New York lawyer Arnold Sprung to assist the defense.

## Issues

1. What showing must a former client make to disqualify an attorney who now represents an adversary: is it sufficient to show the current matter is substantially related to the prior representation?
2. Whether Wegmann’s prior joint representation and trademark-registration work required his disqualification in the later trademark infringement and unfair competition suit.
3. Whether co-counsel (Sprung), who never represented the former client, may be disqualified without a factual finding that he received confidential information from the disqualified attorney.

## Decision

- The Fifth Circuit applied the substantial-relationship test for former-client conflicts.
- The court affirmed the disqualification of Wegmann.
- The court vacated Sprung’s disqualification and remanded for factual findings on whether Sprung learned confidential information from Wegmann that the former client reasonably expected to remain confidential.

## Legal Principles

- A former client seeking to disqualify an attorney appearing against it must show the current matter is substantially related to the attorney’s prior representation of the former client.
- Once a substantial relationship is shown, courts presume confidential information would ordinarily have been shared, and the former client need not prove specific confidential disclosures.
- Disqualification protects duties of loyalty and confidentiality and the integrity of the adversary process, but must be weighed against the opposing party’s interest in counsel of choice.
- A lawyer who previously represented a client in matters directly connected to the subject of later litigation (including developing evidence supporting trademark validity and secondary meaning) may not later oppose that former client in the substantially related dispute.
- Co-counsel who did not represent the former client is not automatically subject to the same presumption of shared confidences; disqualification requires a factual basis to conclude co-counsel was exposed to the former client’s confidential information through the disqualified attorney.

## Conclusion

The court held that prior counsel who jointly represented family corporations and helped secure the disputed trademark registrations had an impermissible former-client conflict when later representing one faction against another in substantially related trademark litigation, warranting disqualification, but co-counsel could not be disqualified without case-specific findings that he actually received protected confidences.


Brennan’s, Inc. v. Brennan’s Restaurants, Inc., 590 F.2d 168 (5th Cir. 1979)