Pizzeria Uno Corp. v. Temple

• Decision Date: 08 April 1983
• Docket Number: Civ. A. No. 82-1218-15.
• Parties: PIZZERIA UNO CORPORATION, Plaintiff, v. James W. TEMPLE, Jr., d/b/a Taco Uno, Defendant.
• Court: U.S. District Court — District of South Carolina

566 F. Supp. 385

PIZZERIA UNO CORPORATION, Plaintiff, v. James W. TEMPLE, Jr., d/b/a Taco Uno, Defendant.

Civ. A. No. 82-1218-15.

United States District Court, D. South Carolina, Columbia Division.

April 8, 1983.

Robert A. McKenzie, Columbia, S.C., George L. Greenfield, and Edward F. Perlman, Boston, Mass., for plaintiff.

Cort Flint, Jr., Greenville, S.C., for defendant.

ORDER

HAMILTON, District Judge.

The plaintiff, Pizzeria Uno Corporation, brought this action against the defendant, James W. Temple, Jr., d/b/a Taco Uno, alleging three causes of action; namely, (1) trademark infringement of a federally registered mark pursuant to Section 32(1) of the Lanham Trade-Mark Act, 15 U.S.C. § 1114(1); (2) false designation of origin pursuant to Section 43(a) of the Lanham Trade-Mark Act, 15 U.S.C. § 1125(a); and (3) unfair competition under principles of (South Carolina) common law.

The action came on for trial before the court sitting without a jury on March 24, 1983. Pursuant to Rule 52(a), Fed.R.Civ.P., the court hereby enters the following Findings of Fact and Conclusions of Law stating the reasons for its decision that the plaintiff has failed to establish its burden of proving that the defendant has infringed plaintiff's mark, that the defendant has designated falsely the origin of its food services, or that the defendant has engaged in unfair competition under the principles of South Carolina common law.

FINDINGS OF FACT

1. Plaintiff, Pizzeria Uno Corporation, is a corporation duly organized and existing under the laws of the Commonwealth of Massachusetts and has its principal place of business at 100 Charles Park Road, Boston, Massachusetts 02132. Plaintiff is the owner of United States Trademark Registration No. 1,089,458 for the mark "Pizzeria Uno." The United States Patent and Trademark Office on April 11, 1978, granted to the plaintiff's predecessor in title Registration No. 1,089,458 for the mark "Pizzeria Uno" to be used in conjunction with restaurant services. Plaintiff operates or franchises a number of restaurants under the name "Pizzeria Uno" which specialize in Italian cuisine, most notably pizza products. Plaintiff owns four restaurants, is the franchisor for twelve others and has plans to open from 120 to 150 more restaurants in the next five years. Plaintiff and its franchisees have opened and are operating Pizzeria Uno restaurants in the following cities: Boston, Massachusetts; Cambridge, Massachusetts; Framingham, Massachusetts; Indianapolis, Indiana; Washington, D.C.; Kansas City, Missouri; San Francisco, California; Philadelphia, Pennsylvania; Laguna Hills, California; Columbus, Ohio; Cincinnati, Ohio; Ann Arbor, Michigan; Ft. Lauderdale, Florida; Louisville, Kentucky and Atlanta, Georgia. Plaintiff does not have any restaurants in the state of South Carolina.

2. The mark "Pizzeria Uno" was first used by a Chicago, Illinois, restaurant. In 1943, Ike Sewell and his partner, Ric Riccardo, opened a unique pizza restaurant in Chicago under the mark "Pizzeria Uno." Mr. Sewell and his partner began selling a deep-dish style, thick-crusted pizza under the mark "Pizzeria Uno" which met with success in the Chicago area. The original Pizzeria Uno restaurant continues to sell this unique pizza under the mark "Pizzeria Uno." Plaintiff acquired rights to the mark "Pizzeria Uno" from Mr. Sewell by agreement dated August 3, 1979. Plaintiff is the exclusive franchisor of the mark "Pizzeria Uno" throughout the world, excluding the state of Illinois.

3. Each restaurant operating under the mark "Pizzeria Uno" has approximately five thousand square feet of space and is located in both free standing and attached building locations. Each of the restaurants has exterior signs which prominently display the mark "Pizzeria Uno." In addition, various items, such as menus, napkins and miscellaneous restaurant furnishings and supplies, have the mark "Pizzeria Uno" prominently displayed thereon.

4. In using the mark "Pizzeria Uno," plaintiff has tended to emphasize the word "Uno" to the extent of gradually having "Uno" predominate in the mark. "Pizzeria" has diminished in size and "Uno" has been enlarged and accentuated. "Uno" is emphasized in this manner on menus, indoor and outdoor signing, napkins, matchcovers, take-out boxes, comment cards, aprons for the waiters and waitresses, baseball caps and in all of plaintiff's advertisements. Notwithstanding the relative sizes of the two words, the registered trademark is "Pizzeria Uno" and plaintiff has neither registered the word "Uno" as its mark nor otherwise taken steps to inform the public that "Uno" is claimed as its trademark. The court does note, however, that the plaintiff has filed an application to register the word "Uno," which matter currently is pending before the United States Patent and Trademark Office.

5. Pizza sales are 47% of plaintiff's business. In addition to various pizzas, plaintiff's menus offer soups, sandwiches, salads, desserts, beers, wines and other (mixed drinks) alcoholic beverages. Plaintiff's restaurants sell a "Mexican Pizza," "Mexicano" pizza-style sandwich, "Sangria Puncher-Uno," Pina Colada and Midori Colada.

6. Plaintiff's restaurants are staffed by hosts/hostesses, waiters/waitresses, chefs and bartenders. "Take-out" service is provided, but the predominant method of conducting business is by means of sit-down service.

7. Pizzeria Uno restaurants are distinctively designed and decorated. The interior design is marked by the use of hardwood floors, tables with natural wood tops, brass, antiques, leaded glass, Tiffany light fixtures and tin ceilings. The heritage is depicted in the back of the menu as "A Chicago Legend Comes To Town." The restaurants are designed to create a warm and comfortable environment in which to enjoy a meal. High standards of overall product presentation under the mark "Pizzeria Uno" are extensively controlled and monitored by plaintiff.

8. All of the franchised restaurants use the mark "Pizzeria Uno" to identify plaintiff as the source of origin of a restaurant which sells deep-dish pizza pie created by Ike Sewell and franchised by plaintiff throughout the United States. A valuable asset of plaintiff's business is the goodwill and reputation attached to its distinctive trademark, "Pizzeria Uno." The average cost to a franchisee for opening a Pizzeria Uno restaurant approximates one million dollars. Thereafter the franchise royalty is 5% of gross sales, which for 1982 amounted to approximately $1,100,000.00 per restaurant.

9. Plaintiff has an advertising budget in the order of two percent of the gross sales of the restaurants. Plaintiff advertises extensively throughout the United States, including northern Georgia. This advertising includes monthly ads in Atlanta magazine, weekly newspaper ads in the Atlanta Constitution and the Atlanta Journal, frequent radio advertising on Atlanta FM stations WQXI and Z-93, and occasional national television advertisements for the Atlanta franchise. Plaintiff does not advertise in South Carolina.

10. Plaintiff has had inquiries from persons interested in obtaining a franchise for a Pizzeria Uno restaurant in the state of South Carolina and reviewed two inquiries from people in Columbia, South Carolina.

11. Plaintiff is seeking franchisees for its Pizzeria Uno restaurants throughout the United States, including South Carolina. An employee living in South Carolina is in charge of negotiating for new Pizzeria Uno locations.

12. Defendant, James W. Temple, Jr., an individual residing within the state of South Carolina, has adopted and uses the mark "Taco Uno" to identify restaurant services located at 2444 Decker Blvd., Columbia, South Carolina 29206, and at 1064 Broad Street, Sumter, South Carolina 29150 which specialize in Mexican food products. Defendant began using the mark "Taco Uno" on or about July 14, 1981, in connection with his restaurant services at the Decker Blvd. and Broad Street locations in the Columbia and Sumter areas. Defendant's restaurants predominantly specialize in the serving of Mexican style food. The defendant's business is a fast-food type operation where food is ordered at the counter and then carried to a table or out of the restaurant. The restaurant operation is typical of the many fast-food restaurants which have rapidly developed over the past two decades that specialize in a certain type of food such as pizzas, hamburgers, fried chicken, hot dogs, Mexican foods, etc.

13. Prior to July 14, 1981, and beginning in 1979, defendant was owner and manager of two Mexican fast-food restaurants operated under the name "Taco Cid" at the Decker Blvd. and Broad Street (South Carolina) locations. From 1970 to 1979, the defendant was engaged in various operator and managerial positions in the food service industry. Mr. Temple first worked for Pizza Corporation of America, a franchisee of Pizza Hut, and later for the parent company, Pizza Hut, Inc. Initially, Mr. Temple managed a Pizza Hut restaurant from October, 1971, to March 31, 1972, in Columbia, South Carolina. From April 1, 1972, until February, 1973, Mr. Temple was an area manager for Pizza Hut restaurants in Savannah, Charleston, and Myrtle Beach, South Carolina. During 1973, he served as regional manager over Pizza Hut restaurants in Virginia and South Carolina. By early 1974 Mr. Temple was regional manager of numerous Pizza Hut restaurants in the north central market which comprised the six states of North Dakota, South Dakota, Minnesota, Wisconsin, Iowa and Illinois. As regional manager, Mr. Temple had the duties of planning growth in these areas, staffing the restaurants, upgrading, directing the area managers, budgeting expenses, monitoring sales volume and profit, and analyzing the competition. Included within his responsibility were restaurants located in the suburban Chicago area: Waukegan, Libertyville, Zion, Kenosha and Racine. Waukegan borders North Chicago,...