JJFM Corp. v. Mannino's Bagel Bakery

• Decision Date: 22 September 2020
• Docket Number: 601395-17
• Citation: 70 Misc.3d 171,132 N.Y.S.3d 582
• Parties: JJFM CORPORATION, Oakdale Restaurant Corp., and 2158 Restaurant Corp., Plaintiffs, v. MANNINO'S BAGEL BAKERY and RAGF Food Corp., Defendants.
• Court: New York Supreme Court

70 Misc.3d 171

132 N.Y.S.3d 582

JJFM CORPORATION, Oakdale Restaurant Corp., and 2158 Restaurant Corp., Plaintiffs,

v.MANNINO'S BAGEL BAKERY and RAGF Food Corp., Defendants.

601395-17

Supreme Court, Suffolk County, New York.

Decided on September 22, 2020

ANTHONY P. GALLO, PC, Attorneys for Plaintiff, 6080 Jericho Turnpike, Suite 216, Commack, New York 11725

LAW OFFICES OF VINCENT J. TRIMARCO, P.C., Attorneys for Defendants, 1038 W. Jericho Turnpike, Smithtown, New York 11787

Elizabeth H. Emerson, J.

It is,

ORDERED that the motion by the plaintiffs for leave to amend the complaint is denied as academic; and it is further

ORDERED that the cross motion by the defendants for summary judgment is granted; and it is further

ORDERED that the cross motion by the plaintiffs for summary judgment is denied.

The plaintiff corporations own and operate three Italian restaurant and catering businesses in Suffolk County, New York. They are: Mannino's Pizzaria Resturant in Smithtown, Mannino's Restaurant & Lounge in Oakdale, and Mannino's Italian Kitchen & Lounge in Commack. The three corporations are owned by the Mannino brothers, who have been operating restaurants in Suffolk County since 1996. The logos for all three restaurants have been registered as service marks in New York State since 2016. Moreover, "Mannino's Italian Kitchen & Lounge" and "Mannino's Pizzaria Resturant" have been registered with the U.S. Patent and Trademark Office since 2017 and 2018, respectively.

The defendant RAGF Food Corp. (RAGF) was formed in 2012 and operates Mannino's Bagel Bakery in Freeport, New York. RAGF is solely owned by Roberto Mannino, who is also its sole officer. In 2015, Roberto Mannino opened a second Mannino's Bagel Bakery in Smithtown, New York. He formed ARF Food Corp. (ARF) with his wife and son to own and operate the Smithtown location.

The plaintiffs commenced this action against RAGF and Mannino's Bagel Bakery in January 2017. The plaintiffs allege that by opening a second store in Smithtown, only a few miles from Mannino's Pizzaria Resturant, the defendants are capitalizing on the Mannino brand and its good will. The plaintiffs allege that consumers are likely to conclude that the defendants' products are made by, endorsed by, approved by, connected to, associated or affiliated with the plaintiffs' businesses. The complaint contains causes of action for a permanent injunction and to recover damages for unfair business practices under General Business Law § 349, unfair competition, and trademark infringement under General Business Law § 360-k. The plaintiffs move to amend the complaint to add AFR as a party defendant. The defendants and the plaintiffs both cross move for summary judgment.

The defendants contend in support of their cross motion that dismissal is required because the plaintiffs have not complied with General Business Law § 130 by filing assumed-business-name certificates for all of their businesses prior to commencing this action. The record reflects that the plaintiffs have now fully complied with General Business Law § 130. Accordingly, the court declines to dismiss the complaint on this ground.

Under New York State law, a mark owner may maintain a statutory or common-law action against a party who has engaged in unauthorized use of the mark ( Tiffany [NJ] Inc. v. eBay, Inc. , 576 F. Supp. 2d 463, 494 [S.D.N.Y.], affd in part, revd in part 600 F.3d 93 [2nd Cir.] ). The elements required to prevail on trademark-infringement and unfair-competition claims under New York law mirror the Lanham Act claims for trademark infringement and unfair competition ( Id. ). As with the Lanham Act, a plaintiff suing for trademark infringement under New York General Business Law § 360-k must prove that the defendant's use of the mark is likely to cause confusion, mistake, or deception ( Biosafe-One, Inc. v. Hawks , 639 F. Supp. 2d 358, 367 [S.D.N.Y.], affd 379 Fed. Appx. 4 [2nd Cir.] ). The likelihood-of-confusion inquiry turns on whether numerous ordinarily prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the defendant's mark ( Yurman Studio, Inc. v. Castaneda , 591 F. Supp. 2d 471, 487 [S.D.N.Y.], reconsideration granted in part, denied in part 2008 WL 4298582 ). To support a finding of infringement, there must be a probability of confusion, not just a mere possibility ( Id. ).

A claim of trademark infringement is analyzed under a familiar two-prong test. The test looks, first, to whether the plaintiff's mark is entitled to protection and, second, to whether the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods ( Car Freshner Corp. v. Am. Covers, LLC , 419 F. Supp. 3d 407, 421-422 [N.D.N.Y.], appeal filed Aug. 30, 2019). The first prong of the test is satisfied since the plaintiffs have registered their three marks (see , Lois Sportswear, U.S.A. v. Levi Strauss & Co. , 799 F.2d 867, 871 [2nd Cir.] [registered trademarks should be afforded the utmost protection] ). The only issue, then, is the likelihood of confusion.

The likelihood of confusion is determined by a the multi-factor test set out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495, [2nd Cir]. The factors include (1) the strength of the plaintiff's mark, (2) the similarity of the plaintiff's and the defendant's marks, (3) the proximity of the products, (4) the likelihood that the plaintiff will "bridge the gap," (5) actual confusion between products, (6) the defendant's good or bad faith in adopting the mark, (7) the quality of the defendant's product, and (8) the sophistication of the buyers ( Yurman , supra ). No single factor is dispositive ( Id. ).

Similarity of the Marks

When evaluating the similarity of the marks, courts consider the overall impression created by a mark ( Brennan's, Inc. v. Brennan's Restaurant, L.L.C. , 360 F.3d 125, 133, [2nd Cir.] ). Each mark must be compared against the other as a whole. Juxtaposing fragments of each mark does not aid in deciding whether the compared marks are confusingly similar ( Id. ). The fact that the two marks appear similar is not dispositive. Rather, the question is whether such similarity is more likely than not to cause consumer confusion ( Id. ).

A comparison of the plaintiffs' marks with the defendants' sign¹ reveals no similarity beyond the common word "Maninno's." The plaintiffs' marks consist of (1) the word "Maninno's" in stylized form with the terms "Pizzeria Restaurant" in stylized form enclosed in a shaded polygon with a curved bottom, (2) the words "Maninno's Restaurant Lounge" in stylized lettering with "Maninno's" above "Restaurant Lounge" and a shaded square between the words "Restaurant" and "Lounge," and (3) the word "Maninno's" above "Italian Kitchen Lounge" and a shaded square between the words "Kitchen" and "Lounge." The defendants' sign also uses the word "Maninno's." However, the defendants do not use any of the other elements found in the plaintiffs' trademarks. They do not use the stylized lettering; the shaded polygon with a curved bottom; the shaded square; or the words "Italian," "Kitchen," "Pizzeria," "Restaurant," or "Lounge." The only words the defendants use underneath "Mannino's" are "Bagel Bakery." Nonetheless, despite these differences in the parties' marks when they are compared as entire units, the consuming public may still be drawn or influenced by the most prominent word in the plaintiffs' marks, "Maninno's" (see , Mother's Restaurants Inc. v. Mother's Bakery, Inc. , 498 F. Supp. 847, 853 [W.D.N.Y.] ). While the marks are not similar, the impression made by the use of the word "Maninno's" may still have some effect ( Id. ).

The Strength of the Plaintiff's Mark

In evaluating the strength of the mark, the inquiry focuses on the distinctiveness of the mark or, more precisely, its tendency to identify the goods as coming from a particular source ( Car Freshner , supra at 423 ). There are two components of a mark's strength: its inherent distinctiveness and the distinctiveness it has acquired in the marketplace ( Brennan's, Inc. , supra at 130-131 ). Inherent distinctiveness examines a mark's theoretical potential to identify the plaintiff's goods or services without regard to whether it has actually done so ( Id. at 131 ). Inherent distinctiveness is classified into four categories from the least to the most distinctive: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful ( Id. ; Car Freshner Corp. , supra ). Acquired distinctiveness looks solely to the recognition that the plaintiff's mark has earned in the marketplace as a designator of the plaintiff's goods or services ( Brennan's, Inc. , supra at 131 ).

Registered trademarks are presumed to be distinctive and should be afforded the utmost protection ( Lois Sportswear , supra ). However, in this case, the parties share a common last name. While the law recognizes the unfairness of letting one person trade on the reputation or name of another, it also recognizes that one's surname given at birth creates associations attached to that name which identify the individual ( Brennan's Inc. , supra at 131 ). Because the thrust of trademark law is to avoid confusion as to the product's source, it is not helpful to draw rigid rules when dealing with a common last name ( Id. ). It would be incorrect to insist that the defendant is always entitled to use his own name in business ( Id. ). It would be equally incorrect to insist that the defendant is never entitled to use his own name to compete with the same, and perhaps more famous, business name of the plaintiff ( Id. ). As a consequence, courts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation ( Id. ). Thus, a proper name such as "Maninno's" is inherently weak and accorded only minimal...