Tuccillo v. Geisha Nyc, LLC

• Court: U.S. District Court — Eastern District of New York
• Writing for the Court: Joseph F. Bianco
• Citation: Tuccillo v. Geisha Nyc, LLC, 635 F.Supp.2d 227 (E.D. N.Y. 2009)
• Decision Date: 22 July 2009
• Docket Number: No. 09-CV-2022 (JFB)(WDW).,09-CV-2022 (JFB)(WDW).
• Parties: Roy TUCCILLO, an individual, Plaintiff, v. GEISHA NYC, LLC, doing business as Japonais and OSSS Hospitality NYC LLC, Defendants.

Page 227

635 F.Supp.2d 227

Roy TUCCILLO, an individual, Plaintiff, v. GEISHA NYC, LLC, doing business as Japonais and OSSS Hospitality NYC LLC, Defendants.

No. 09-CV-2022 (JFB)(WDW).

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

July 22, 2009.

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Arnold L. Kert, Esq., Garden City, NY, for Plaintiff.

Sean P. Casey, Esq. and James R. Ferguson, Esq., of Mayer Brown LLP, New York, NY, for Defendants.

MEMORANDUM AND ORDER

JOSEPH F. BIANCO, District Judge:

Plaintiff Roy Tuccillo brought the instant action against defendants Geisha NYC, LLC, doing business as Japonais ("Geisha NYC"), and OSSS Hospitality NYC, LLC ("OSS"), under the Lanham Act for trademark infringement regarding defendants' use of a registered trademark in connection with its restaurants, described in detail infra (hereinafter, the "JAPONAIS mark"). Geisha NYC, OSS, and additional counterclaim plaintiff Geisha, LLC (collectively, "Geisha") have asserted counterclaims for, inter alia, cancellation of plaintiff's registration of the JAPONAIS mark that is the subject of this litigation, pursuant to 15 U.S.C. § 1119, trademark infringement pursuant to 15 U.S.C. § 1125(a), trademark dilution pursuant to 15 U.S.C. § 1125(c), and unfair competition under New York common law. Geisha seeks a preliminary injunction that would enjoin Tuccillo from using the JAPONAIS mark in connection with restaurant and lounge services until a final determination is made on the merits of their counterclaims.

The Court held an evidentiary hearing on the motion for a preliminary injunction on July 7, 2009, which was continued to July 8, 2009, and after which the parties submitted written briefing. At the preliminary injunction hearing, the parties had the opportunity to examine witnesses and present documentary evidence. Following the hearing, Geisha NYC and OSS made a motion to add Geisha LLC as a necessary counterclaim plaintiff, as well as additional counterclaims. The Court granted those motions on the record, following oral argument on July 16, 2009. The parties subsequently agreed on the record that it was not necessary to re-open the preliminary injunction hearing, and consented to the Court adjudicating the preliminary injunction hearing upon the record of the hearing and submissions made to date. The parties submitted additional briefing by letters dated July 20, 2009, which were also considered by the Court.

Having carefully reviewed the evidence and assessed the credibility of the witnesses the Court makes the following Findings of Fact and Conclusions of Law, pursuant to Rules 52(a) and 65 of the Federal Rules of Procedure, and grants the motion for a preliminary injunction, according to the specifications dictated at the conclusion of this Memorandum and Order.

The lawsuit centers around Tuccillo's purported use of the JAPONAIS mark at what he claims to have been a restaurant and lounge located at 28 Urban Avenue in Westbury, New York. In particular, although Tuccillo claims that his statements to the United States Patent and Trademark Office—namely: (1) in June 2004, that he was unaware of anyone else using the JAPONAIS trademark; and (2) in May 2008, that he had been using the JAPONAIS trademark in connection with restaurant and lounge services at 28 Urban Avenue since April 1, 2008—were both true, the Court finds that Tuccillo's evasive testimony and other evidence on these issues was completely lacking in credibility and that Geisha has demonstrated in overwhelming fashion that these statements were patently false. In particular, as set forth in more detail below, the Court's conclusion is based upon, among other things, the following: (1) Tuccillo's explanation as to why he decided to use "Japonais" (the French word for "Japanese") to describe his infused calamari and other food items in a restaurant, including his statement that he used the French word because he sells "french fries," was completely incredible; (2) Tuccillo's explanation as to how he developed the unique letter styling for the JAPONAIS mark, including that he drew it by hand, was utterly lacking in credibility and undermined by defendants' compelling expert testimony; and (3) Tuccillo's explanation, in connection with his attempt to register an unrelated mark, that he did not knowingly copy the unique logo for the Fulton Street Lobster & Fish Company, was simply absurd.

Moreover, although Tuccillo claims that he was running this restaurant and lounge at the 28 Urban Avenue location in the 1,200 foot area that had two tables (which was also the same location of an independent sandwich business called the "Sandwich Spot") from 11 a.m. to 3 p.m. on Monday through Fridays since April 1, 2008, that claim is completely undermined by, among other things, the following: (1) the lack of any advertising or business directory listing for this purported restaurant; (2) the lack of any sales records that can be directly attributable to this restaurant, as opposed to plaintiff's many other businesses; (3) the lack of any permit from the Nassau County Board of Health until March 19, 2009; (4) the telephone number listed on the paper menus, which Tuccillo claims is "proof" that the restaurant existed, is answered "frozen foods" (which is related to plaintiff's other companies); and (5) on March 23, 2009, at a time that plaintiff claims the restaurant was open for lunch (between 11:45 a.m. and 12:15 p.m.), an investigator for Geisha took photographs of the "restaurant" which had a "closed" sign, no employees in the store, and no food or customers anywhere in sight. Tuccillo's only indicia of use of the word "Japonais" is the purchase of signs, which is hardly indicative of a functioning restaurant utilizing the mark in commerce, and the lack of a bona fide restaurant under the JAPONAIS trademark was clear from the other evidence in the record. In short, Tuccillo's incredible testimony regarding the restaurant's purported operation under the JAPONAIS trademark (and the testimony of his other witness) is completely undermined, not only by the testimony's own internal inconsistencies and facially incredible explanations, but also by the complete lack of the basic indicia of a functioning, bona fide restaurant operating under the JAPONAIS name, as well as the compelling evidence submitted by Geisha that credibly contradicts Tuccillo's testimony on the critical issues related to defendant's counterclaims.

In contrast to the testimony and evidence submitted by Tuccillo, Geisha submitted compelling evidence as to its creation and development of the JAPONAIS mark in 2003 in connection with the opening and operation of a Japanese fusion restaurant in Chicago, and its subsequent opening of restaurants in New York City and Las Vegas in 2006. Moreover, Geisha demonstrated at the evidentiary hearing in an overwhelming fashion that Tuccillo's statements to the USPTO were false and that he submitted the registration with the JAPONAIS mark copied from the defendants in a bad faith effort to "squat" on the mark in order to capitalize on Geisha's failure to register the mark. Thus, Geisha demonstrated a likelihood of success on its counterclaims for cancellation of Tuccillo's registration of the JAPONAIS mark because of the false statements to the USPTO by Tuccillo and on its trademark infringement claim as the senior user of the mark. Geisha also showed that irreparable harm will occur to its restaurant business in the absence of a preliminary injunction. Accordingly, as discussed in detail below, Geisha has satisfied all of the requirements for a preliminary injunction and such an injunction is warranted under the circumstances of the instant case.

I. BACKGROUND

Before proceeding to delineate the Court's Findings of Fact for the purposes of Rule 52(a), the Court begins by providing a summary of the instant matter and the foundation of the factual dispute between the Parties.

A. The Mark

The controversy in the instant case involves a dispute over the rightful owner of the "JAPONAIS mark," within the New York metropolitan market. The JAPONAIS mark is comprised of a stylized version of the word "Japonais"—which is the French-language word for Japanese—in which the two occurrences of the letter "A" have their crossbars removed, such that they appear to be upside down versions of the letter "V." The parties do not dispute that the stylized JAPONAIS includes the initial letter "J" as extending below the bottom reaches of the other letters in the word.

The parties also do not dispute that the JAPONAIS mark as used by counterclaim plaintiffs and used and registered by Tuccillo with the United States Patent & Trademark Office ("USPTO") are identical. However, their stories regarding their respective alleged creation and uses of the mark diverge, and are the foundation of the instant litigation. The Court proceeds to describe the basic allegations in the parties' respective pleadings and other submissions in order to frame the dispute.

B. Tuccillo's Allegations

Tuccillo claims that he used the word "Japonais" to market an infused frozen calamari product before 2000, which he sold to supermarkets and at food shows. (Preliminary Injunction Transcript, dated July 7-8, 2009, at 144-45 (hereinafter "Tr.")) He further claims that sometime in 2000, he developed the JAPONAIS mark by hand, and installed a window sign incorporating the mark on a building he owns located at 28 Urban Avenue, in Westbury, NY. (Tr. at 139, 142-44. 191-92.) On June 25, 2004, Tuccillo filed an "intent-to-use" ("ITU") application with the USPTO for the JAPONAIS mark in connection with "restaurant and lounge services." (Complaint ¶ 4 (hereinafter ("Compl.").)) Tuccillo received a "notice of allowance" from the USPTO on August 23, 2005, and alleges that he opened his restaurant under the JAPONAIS mark at 28 Urban Avenue on April 1, 2008. (Compl.¶¶ 12-13.) On May 2, 2008, Tuccillo filed a verified ...