Mother's Restaurants Inc. v. Mother's Bakery, Inc.

• Decision Date: 09 October 1980
• Docket Number: No. Civ-80-202.,Civ-80-202.
• Citation: 498 F. Supp. 847,210 USPQ 207
• Parties: MOTHER'S RESTAURANTS INCORPORATED, Plaintiff, v. MOTHER'S BAKERY, INC. and Mother's Bakery Amherst, Inc., Defendants.
• Court: U.S. District Court — Western District of New York

498 F. Supp. 847

210 USPQ 207

MOTHER'S RESTAURANTS INCORPORATED, Plaintiff, v. MOTHER'S BAKERY, INC. and Mother's Bakery Amherst, Inc., Defendants.

No. Civ-80-202.

United States District Court, W. D. New York.

October 9, 1980.

Jaeckle, Fleischmann & Mugel, Buffalo, N. Y. (David J. Calverley, Buffalo, N. Y., of counsel), and Gottlieb, Rackman & Reisman, P. C., New York City (George Gottlieb, and David S. Kashman, New York City, of counsel), for plaintiff.

Falk, Siemer, Glick, Tuppen & Maloney, Buffalo, N. Y. (Sheldon B. Benatovich, Buffalo, N. Y., of counsel), and Christel, Bean & Linihan, Buffalo, N. Y. (Edwin T. Bean, Jr., and Anna E. Mack, Buffalo, N. Y., of counsel), for defendants.

CURTIN, Chief Judge.

The plaintiff, Mother's Restaurants Incorporated "MRI", brought this action seeking a declaratory judgment that its use of the trade names and service marks "Mother's Pizza Parlour," "Mother's Pizza Parlour & Spaghetti House," and "Mother's," in connection with its operation of a then, soon-to-be-opened restaurant on Transit Road, Amherst, New York, would not infringe on any rights of the defendants. The defendants are Mother's Bakery, Inc. "Mother's Bakery" and Mother's Bakery Amherst, Inc. "Mother's Amherst", both of which are existing restaurants in the Buffalo, New York metropolitan area. Almost immediately after this action was filed, the defendants made a motion for a temporary restraining order or preliminary injunction restraining plaintiff from opening and operating the proposed restaurant utilizing the name "Mother's" in any fashion. I heard oral arguments with respect to the defendants' motion for a preliminary injunction on March 19, 1980. Both sides represented that no further factual information was necessary for the court to make a decision on the motion. No temporary restraining order against the opening of the restaurant was issued, and I reserved decision on whether a preliminary injunction should be granted.

FACTUAL BACKGROUND

MRI is a Canadian corporation with its principal office in Burlington, Ontario. MRI's predecessor opened its first "Mother's Pizza Parlour" restaurant in Hamilton, Ontario in December of 1970. From that time until the present, MRI has developed a chain of 46 restaurants, all following the format of the original restaurant. The restaurants serve pizza and other Italian dishes in a 1930's boardinghouse atmosphere aimed at attracting a family-oriented clientele; they also operate a takeout and delivery service. Each of the restaurants in the chain has utilized the name "Mother's" or "Mother's Pizza Parlour" in some form. Of the 46 restaurants, 43 are located in Canada and 3 in Columbus, Ohio. In addition to the new restaurant at issue in this case, MRI proposes to open an additional restaurant in Rockville, Maryland within a short time and has further plans for restaurants in other parts of the United States. This growth is also reflected in MRI's gross sales, which have arisen from $361,000 in 1971 to approximately $45,000,000 in 1979.

To foster this growth, MRI has engaged in substantial advertising since 1971. Radio advertising apparently has been the principal medium utilized, and MRI has purchased radio time on stations located in Hamilton, Ontario and Kingston, Ontario which broadcast their radio beams into New York State. Exhibit 7 of the Perry Affidavit, a "reach map" of Station CHML in Hamilton, shows that its broadcasts have reached the Buffalo area in the United States.

MRI has also pointed to its promotional efforts to attract American tourists to its restaurants in Canada, many of which are near Buffalo along the well-traveled Niagara Peninsula corridor.

In order to protect its name and service mark, MRI has obtained trademark registrations in Canada for the marks "Mother's Pizza Parlour" (Registration No. 207,302; application filed March 15, 1971, granted May 23, 1975), "Mother's Pizza Parlour and Spaghetti House" (Registration No. 239,584, dated February 21, 1980), and "Mother's" (Registration No. 207,342, dated May 30, 1975). In addition, on September 17, 1971 MRI's predecessor filed a trademark application with the United States Patent and Trademark Office to register "Mother's Pizza Parlour" in this country. This application, made by a Canadian party, was filed pursuant to the Paris Convention for the Protection of Industrial Property. See 15 U.S.C. § 1126(e). The Patent and Trademark Office issued a registration, Reg. No. 1,040,322, for the service mark "Mother's Pizza Parlour" on May 25, 1976 for use in restaurant services. This registration gives a filing date of September 17, 1971. See Affidavit of Michael John Martino, Exhibit 5.

The defendant Mother's Bakery is a New York corporation. It opened for business as a restaurant on December 27, 1972, at 33 Virginia Place, Buffalo, New York. It has continuously conducted business under the name "Mother's Bakery" since that time, and has used both the words "Mother's" and "Mother's Bakery" in connection with its restaurant operations and advertising. The defendant Mother's Amherst is also a New York corporation and was apparently an expansion by the principals of Mother's Bakery to a suburban location. It has operated as a restaurant at 4575 Main Street, Amherst, New York, in a suburb close to Buffalo, since July, 1978. It too has extensively used the word "Mother's" in connection with its restaurant business.

The business of the defendants has been successful. Since at least 1976, Mother's Bakery has had annual sales of $500,000, and the defendants' combined annual sales today exceed $1,500,000. This figure is purportedly among the highest annual sales figures for restaurants in the Western New York area. See Affidavit of Sheldon Benatovitch, ¶ 5. There appears little question that the defendants have developed a large clientele and much good will in the Greater Buffalo area. The defendants have not provided any specific information as to the amount of money spent on advertising since 1972, or even in recent years, nor have they specified the forms of advertising utilized. The exhibits attached to their supporting affidavits, however, are advertisements of various kinds all of which prominently promote and focus on the word "Mother's." Neither of the defendants has obtained a registration of its service mark from the Patent and Trademark Office.

To complete the factual discussion, the court has also reviewed the examples of the logos of the respective parties provided as exhibits to the Affidavit of Sheldon Benatovitch. See Exhibits A-E. Finally, the court takes note that the defendants are far from the only businesses in the State of New York which have utilized the word "Mother" or "Mother's" in connection with their trade names or marks. See Exhibit A to the Affidavit of David S. Kashman, at 1-16, which contains a list of numerous businesses using the name "Mother's," several of which appear to be in the restaurant services business.

DISCUSSION

On a motion for a preliminary injunction, the standard for issuing such a remedy is as follows:

there must be a showing of possible irreparable injury and either (1) probable success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief.

Caulfield v. Board of Education of City of New York, 583 F.2d 605, 610 (2d Cir. 1978); Markel v. Scovill Mfg. Co., 471 F.Supp. 1244, 1247 (W.D.N.Y.1979), aff'd mem. 610 F.2d 807 (2d Cir. 1979). A preliminary injunction is an extraordinary remedy which should not be granted except upon a clear showing, under the above standard, by the party seeking such relief. See Beech-Nut, Inc. v. Warner-Lambert Co., 480 F.2d 801, 803 (2d Cir. 1973); Clairol, Inc. v. Gillette Co., 389 F.2d 264, 265 (2d Cir. 1968). Holding aside for now the question of irreparable injury, I will examine primarily the likelihood of defendants' being successful on the merits.

The plaintiff contends that the defendants do not have a strong likelihood of success on the merits and, thus, no right to a preliminary injunction, for three reasons. First, plaintiff argues that, by virtue of the federal registration it holds for the service mark "Mother's Pizza Parlour," it has a prima facie right to use that mark. Second, plaintiff claims a constructive use date of September 17, 1971, the filing date listed on its registration for "Mother's Pizza Parlour," and an actual use date of 1971, based on its radio advertising reaching Western New York, both of which predate the opening of Mother's Bakery. These use dates purportedly negate any claim of priority to the use of the word "Mother's" which defendants might allege. Third, the plaintiff argues that the mark "Mother's" is an especially weak mark which is not entitled to any protection. I believe that this motion can and should be resolved by focusing on the third argument, for it raises the primary question of whether the defendants have shown any entitlement to relief.

I

The defendants base their claim for injunctive relief on federal common law and on New York General Business Law § 368-d, which protects businesses against unfair competition and dilution of the strength of a trade or service mark. Assuming initially, for the purposes of analysis, that the Canadian plaintiff's United States registration of the service mark "Mother's Pizza Parlour" does not preclude the injunctive relief requested, the appropriate starting point, and the question upon which this motion will ultimately be resolved, is whether the defendants have made a showing that they are likely to succeed on the merits of their claims under these laws.

The essence of a claim of trademark infringement or unfair competition is the likelihood of confusion caused by the infringement among prospective customers. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway &...