Patsy's Italian Restaurant, Inc. v. Banas, 06-CV-00729 (DLI)(RER).
| Court | United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York) |
| Citation | 508 F.Supp.2d 194 |
| Decision Date | 28 August 2007 |
| Docket Number | No. 06-CV-00729 (DLI)(RER).,No. 06-CV-05857 (DLI)(RER).,06-CV-00729 (DLI)(RER).,06-CV-05857 (DLI)(RER). |
| Parties | PATSY'S ITALIAN RESTAURANT, INC. and Patsy's Brand, Inc., Plaintiffs v. Anthony BANAS d/b/a Patsy's, Patsy's Pizzeria, and Patsy's Bakery & Café and Anthony & Patsy's Inc., Defendants. Patsy's Italian Restaurant, Inc., Plaintiff and Counterclaim Defendant v. Anthony Banas d/b/a Patsy's and Patsy's Pizzeria Trattoria Impazzire, Allan Zyller d/b/a Patsy's and Patsy's Pizzeria Trattoria Impazzire, Al & Anthony's Patsy's, Inc., I.O.B. Realty, Inc., Patsy's, Inc. and BSZ Realty Corp., Defendants and Counterclaim Plaintiffs. |
v.
Anthony BANAS d/b/a Patsy's, Patsy's Pizzeria, and Patsy's Bakery & Café and Anthony & Patsy's Inc., Defendants.
Patsy's Italian Restaurant, Inc., Plaintiff and Counterclaim Defendant
v.
Anthony Banas d/b/a Patsy's and Patsy's Pizzeria Trattoria Impazzire, Allan Zyller d/b/a Patsy's and Patsy's Pizzeria Trattoria Impazzire, Al & Anthony's Patsy's, Inc., I.O.B. Realty, Inc., Patsy's, Inc. and BSZ Realty Corp., Defendants and Counterclaim Plaintiffs.
Page 195
COPYRIGHT MATERIAL OMITTED
Page 196
COPYRIGHT MATERIAL OMITTED
Page 197
COPYRIGHT MATERIAL OMITTED
Page 198
Norman H. Zivin, Robert Thomas Maldonado, Tonia A. Sayour, Cooper & Dunham, LLP, New York City, for Plaintiffs.
Kieran X. Bastible, Meyer, Suozzi, English & Klein, PC, Garden City, NY, Paul Grandinetti, Rebecca Stempien, Levy & Grandinetti, Washington, DC, for Defendants.
IRIZARRY, District Judge:
For over six decades, plaintiffs' and defendants' "restaurants, both of which include "Patsy's" in their names, have coexisted on the island of Manhattan. The restaurants have successfully kept the risk of confusion to a minimum by identifying plaintiffs' restaurant, known for its traditional Italian fare, as "Patsy's Italian Restaurant," and defendants' restaurants, known for their coal oven fired, thin crust pizzas, as "Patsy's Pizzeria." The only blip on the radar of the parties' peaceful co-existence was a suit filed by plaintiff Patsy's Brand, Inc. ("Patsy's Brand") in 1999, relating to the restaurants' individual efforts to sell pasta sauces in jars for retail distribution.
The instant litigation arose with defendants' decision to increase their number of franchise locations (totaling five at the time), by expanding Patsy's Pizzeria beyond the island of Manhattan. Towards that end, defendants Anthony Banas ("Banas") and Anthony & Pasty's, Inc. (collectively, the "Staten Island defendants") opened a Patsy's Pizzeria at 1949 Richmond Avenue, Staten Island, New York in July 2005. Soon thereafter, on February 17, 2006, plaintiffs Patsy's Italian Restaurant, Inc. ("Patsy's Italian Restaurant") and Patsy's Brand (collectively, the "plaintiffs") brought suit against Banas, asserting claims of (1) federal service mark and trademark infringement under § 32 of the
Page 199
Lanham Act, 15 U.S.C. § 1114, (2) injury to business reputation under 360-1 of the General Business Law of the State of New York, and (3) common law trademark infringement and unfair competition (06-CV-00729).1
After the Staten Island Patsy's Pizzeria closed in September 2006, the parties commenced settlement negotiations. During the course of those discussions, plaintiffs discovered that a restaurant bearing the name "Patsy's Pizzeria" was about to open at 407 Jericho Turnpike, Syosset, New York. Patsy's Italian Restaurant then brought suit against defendants Banas, Allan Zyller ("Zyller"), and Al & Anthony's Patsy's, Inc. on October 30, 2006, asserting claims of (1) federal service mark infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114, (2) unfair competition and false designation of origin under § 43(a) of the Lanham Act, 15 U.S.C. 1125(a), (3) injury to business reputation under 360-1 of the General Business Law of the State of New York, and (4) common law trademark infringement and unfair competition (06-CV-05857).2 In addition, Patsy's Italian Restaurant filed an application for an order pursuant to Fed.R.Civ.P. 65, enjoining defendants during the pendency of this action from opening the Syosset restaurant under the. PATSY'S mark. The court granted the temporary restraining order on October 30, 2006, but amended it on November 9, 2006 to allow the Long Island defendants to open their restaurant, so long as the words "Trattoria Impazzire" did not appear on any of the advertising, signs or menus associated with the restaurant. On November 27, 2006, the Long Island defendants filed an answer and counter-claim seeking cancellation of Patsy's Italian Restaurant's Registration Nos. 3,009,836 and 3,009,866, and a declaration pursuant to Fed.R.Civ.P. 57 and 28 U.S.C. § 2201(a) et seq. that they have not infringed upon plaintiffs' trademark rights. On November 30, 2006, the court consolidated the two civil actions for all purposes.
Presently before the court are defendants' (1) motion for partial summary judgment pursuant to Fed.R.Civ.P. 56, requesting correction of the United States Patent and Trademark Office's ("PTO") Principal Register, and dismissal of plaintiffs' service mark infringement claims (Count One in both civil actions); and (2) motion for summary judgment pursuant to Fed.R.Civ.P. 56 on all of plaintiffs' remaining claims in both civil actions. For the reasons set forth below, the court grants defendants' motion to correct the register with respect to the restoration of I.O.B.'s U.S. Trademark Registration No. 2,213,574 for PATSY'S PIZZERIA for restaurant services, but denies defendants' motion with respect to the cancellation of Patsy's Italian Restaurant's U.S. Trademark Registration No. 3,009,836 for PATSY'S PR, and Registration No. 3,009,866 for PATSY'S, "not including pizza," both for restaurant services. Defendants' motions for partial summary judgment on the service mark infringement claims, and for summary judgment on plaintiffs' remaining
Page 200
causes of action are denied.3
1. The Restaurants
In 1933, Pasquale ("Patsy") Lancieri opened a pizzeria-style restaurant in East Harlem (1312 2nd Avenue) under the name "Patsy's Pizzeria," and often referred to as simply, "Patsy's." (Grandinetti Decl. Ex. 1, Arles Dep. 12, Jan. 20, 2007; Ex. 34, Joseph Scognamillo Decl. ¶ 10, July 29, 1998; Ex. 35, Joseph Scognamillo Dep. 54, Oct. 19, 1999; Ex. 16, Sal Scognamillo Dep. 22, Jan. 12, 2007.) See also Patsy's Brand, Inc. v. I.O.B. Realty, Inc., et al., 317 F.3d 209, 212 (2d Cir.2003). With the exception of limited periods during which the restaurant was under renovation, Patsy's Pizzeria has been in continuous operation, serving at least pizza, since 1933. (Grandinetti Decl. Ex. 1 at 14-16, 33-39, 41-42; Ex. 2.) On May 21, 1996, I.O.B. obtained a U.S. Trademark for a non-stylized rendition of PATSY'S in connection with restaurant services (Registration No. 1,975,110). I.O.B. obtained an additional U.S. Trademark on December 29, 1998 for a non-stylized rendition of PATSY'S PIZZERIA in connection with restaurant services (Registration No. 2,213,574). The PTO cancelled both marks on May 27, 2003. (Grandinetti Decl. Ex. 18 at TTAB 1-261; Ex. 20 at TTAB 2-104.)
Plaintiffs'"Patsy's Italian Restaurant" is a family-owned Italian restaurant located at West 56th Street. It offers a more complete Italian-style menu than that of a typical pizzeria, and has been in continuous operation since 1944. (Grandinetti Decl. Ex. 16 at 21-22.) In 1993, plaintiff formed an affiliated company known as Patsy's Brand for the purpose of selling pasta sauces in jars for retail distribution. See Patsy's Brand, Inc., 317 F.3d at 213. Patsy's Brand then began manufacturing and distributing its pasta sauces in 1994. Id. Since that time, Patsy's Brand obtained U.S. Trademark Registration No. 1,874,789 for a stylized rendition of PATSY'S PR SINCE 1994 and U.S. Trademark Registration No. 2,777,068 for a non-stylized rendition of PATSY'S, both to be used in connection with their pasta sauces.4 (Grandinetti Decl. Ex. 26; Ex. 27.) Patsy's Brand also obtained U.S. Trademark Registration No. 2,845,063 for a non-stylized rendition of PATSY'S to be used in connection with olive oil, extra virgin oil, cheese, roasted peppers, and processed eggplant in International Class 29, and cheese ravioli, manicotti, lasagna, pasta, vinegar, and pastries, namely, tiramisu, in International Class 30. (Grandinetti Decl. Ex. 28.)
Page 201
Patsy's Italian Restaurant and Patsy's Pizzeria have received much praise in the print media and on television, and its principals appear regularly on national and regional television shows and radio programs. Moreover, each restaurant contends that celebrities, including particularly Frank Sinatra, often frequented both restaurants. (Grandinetti Decl. Ex. 1 at 37-38; Salvatore Scognamillo Decl. Ex. 1; Ex. 5.)
In 1991, I.O.B. purchased Patsy's Pizzeria. (Grandinetti Decl. Ex. 3; Ex. 4, Isa ("John") Brija Dep. 12, Dec. 28, 2006.) See also Patsy's Brand Inc. v. I.O.B. Realty, Inc., et al., No. 99 Civ. 10175, 2001 WL 170672, at *I, (S.D.N.Y. Feb. 21, 2001).5 Soon thereafter, between 1994 and 1996, I.O.B. licensed Nick Tsoulos to open five franchise locations in Manhattan under the names "Patsy's Pizzeria" or "Patsy's." Patsy's Pizzeria's franchise operations now encircle plaintiffs' lone restaurant on West 56th Street with locations in Greenwich Village at 67 University, Murray Hill at 509 3rd Avenue, the Upper West Side at 61 West 74th Street, Chelsea at 318 West 23rd Street, and the East Side at 206 East 60th Street. (Grandinetti Decl. Ex. 2.) John Brija ("Brija"), an officer of I.O.B., testified that he routinely conducts quality inspections of Tsoulos's franchises. (Grandinetti Decl. Ex. 4 at 86-100.) Although the original East Harlem Patsy's Pizzeria and the franchise locations are primarily known for their coal oven fired, thin crust pizzas, the menus also include items such as appetizers, soups, salads, pasta dishes, calzones, and a few traditional Italian dishes. (Grandinetti Decl. Ex. 2.)
In 1998, I.O.B. entered into a Cross-License Agreement with Patsy's Inc., which remains in effect until March 10, 2018. (Grandinetti Decl. Ex. 7.) The Cross-License Agreement grants Patsy's Inc. a license to use the "Patsy's System," a proprietary system for developing, opening and operating Italian pizzerias, and I.O.B.'s proprietary marks. (Id....
To continue reading
Request your trial
-
FENDI ADELE v. Burlington Coat Factory Warehouse, 06 Civ. 85(LBS).
...succeed on a "naked licensing" abandonment claim, Burlington must meet a "high burden of proof." Patsy's Italian Restaurant v. Banas, 508 F.Supp.2d 194, 212 (E.D.N.Y.2007) (citing Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327, 334 (2d Cir.1983)). Burlington has failed put forth actual ......
-
LPD N.Y., LLC v. Adidas Am., Inc., 15-CV-6360 (MKB)
...abandoned the rights to the 50 mark.” (citation and internal quotation marks omitted)); Patsy's Italian Rest., Inc. v. Banas, 508 F.Supp.2d 194, 212 (E.D.N.Y. 2007) (“Where a licensor retains no control over the nature or quality of goods or services provided in connection with the mark, . ......
-
Lebewohl v. Heart Attack Grill LLC, 11 Civ. 3153 (PAE).
...due to the USPTO's decision here is limited because it was not a final decision of the USPTO, see Patsy's Italian Rest. Inc. v. Banas, 508 F.Supp.2d 194, 215 (E.D.N.Y.2007), and that preliminary decision was made without the benefit of the discovery taken in this case, following which HAG [......
-
Palomo Palomov. Demaio, 5:15-CV-1536 (LEK/TWD)
...inferred from the ‘specific conduct of the parties, industry custom, and course of dealing.’ " Patsy's Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 218 (E.D.N.Y. 2007) (quoting Nadel Play-by-Play Toys & Novelties, Inc., 208 F.3d 368, 377 n.5 (2d Cir. 2000) ). "A party's conduct indica......