Thursday, April 24, 2008

Federal court judge supports Domino’s Pizza’s right to sell Brooklyn Style Pizza

On April 21, 2008, a U.S. Magistrate Judge for the Eastern District of Texas issued his report and recommendations recommending that the district court grant a motion for summary judgment filed by Domino’s Pizza (“Domino's”) in a trademark infringement lawsuit brought by The Great American Restaurant Company (“Pizzeria”) over Domino’s use of the name “Brooklyn Style Pizza.” See The Great American Restaurant Company v. Domino's Pizza LLC et al, Case No. 07-cv-00052, 2008 U.S. Dist. LEXIS 32495 (E.D. Texas April 21, 2008).

Pizzeria’s complaint alleged, inter alia, trademark infringement by Domino’s of Pizzeria’s registered trademarks for A TASTE OF THE OLD NEIGHBORHOOD and BROOKLYN'S OLD NEIGHBORHOOD STYLE PIZZERIA. After the lawsuit was filed, Domino’s stopped running advertisements using the slogan “taste of the old neighborhood,” but continued to market its Brooklyn Style Pizza. Pizzeria maintained that Domino’s use of the Brooklyn Style Pizza mark will cause consumers to associates Pizzeria's “high quality, hand-made pizza” with Domino's “inferior quality, machine-produced pizzas” even though Pizzeria acknowledges that it does not sell “Brooklyn style pizza.”

Noting that a trademark cannot be infringed by a generic term for the product it designates, the court analyzed Pizzeria’s claim of infringement by turning its focus to the classification of Domino’s “Brooklyn Style Pizza” mark (i.e., whether it is generic or, if descriptive, whether it has acquired a secondary meaning identifying the source of a product, and not just to identify the product itself).

In order to demonstrate that the public perceives the Brooklyn Style Pizza mark as generic, Domino's submitted survey evidence, various newspaper advertisements mentioning “Brooklyn style pizza,” and 28 media articles referring to the term generically. Domino’s also noted that over a hundred restaurants around the country use the Brooklyn Style Pizza name and even the USPTO has recognized “Brooklyn style pizza” as a generic term not entitled to protection.

Pizzeria attempted to argue that there is no such thing as “Brooklyn style pizza” by having a food expert testify as such and arguing that this at least created a factual issue as to the whether the “Brooklyn Style Pizza” mark was generic. The court stated the following regarding Pizzeria’s expert:

Schwartz [Pizzeria’s expert] then devotes four pages of his affidavit directing the Court to where the best pizza can be found and how it is made -- a must read for any pizza maven. Where is the best pizza? According to Schwartz, it is not Domino's, but probably at Di Fara's, which has recently been reopened after having been closed down by the health department. Equally interesting is that Di Fara uses sheep's milk cheese.

2008 U.S. Dist. LEXIS 32495 at *10.

Pizzeria also argued that Domino’s own arguments and evidence demonstrated that the “Brooklyn Style Pizza” mark was at least descriptive. However, the court rejected Pizzeria’s position because, even assuming the mark to be descriptive, Pizzeria had not submitted any evidence showing the “Brooklyn Style Pizza” mark to have acquired a secondary meaning whereby its primary significance to the consuming public was to identify the source of a product, rather than the product itself. Pizzeria’s own survey, which the court actually excluded because it “too flawed to be reliable,” found that ¾ of the participants surveyed had no idea that Domino’s sold a “Brooklyn style pizza.”

The court concluded that, whether viewed as generic or as descriptive, Domino’s use of the name “Brooklyn Style Pizza” could not serve as a basis for Pizzeria to claim for trademark infringement

The court added that, even if Domino’s use of “Brooklyn Style Pizza” could be a basis for Pizzeria’s trademark infringement claim, there was no likelihood of confusion between Domino’s “Brooklyn Style Pizza” mark and Pizzeria’s “Brooklyn’s Old Neighborhood Style Pizzeria.”

Although the court did not do a factor-by-factor analysis of the eight likelihood of confusion factors used by the Fifth Circuit (see American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)), the court noted that Domino’s survey report was the only probative survey which even addressed the issue of likelihood of confusion, and concluded that there was none. The court noted that the two establishments, while selling the same product (pizza), are different in that Pizzeria is primarily a dine-in restaurant where the pizza is delivered to the customer’s table whereas Domino’s is primarily delivery where the pizza is delivered in a car. [Ed.- this is what the court wrote]. The court further noted that Pizzeria submitted no evidence that Domino’s selected its name with the intent to compete with Pizzeria – rejecting the evidence by Pizzeria of a few customers who presented Domino’s coupons (such evidence “fails to suggest real confusion since it is not unusual according to the testimony for individuals to present inappropriate coupons. See also Pizzazz Pizza & Rest. v. Taco Bell Corp., 642 F. Supp. 88 (N.D. Ohio 1986).” 2008 U.S. Dist. LEXIS 32495 at *12-13). Finally, the court found that Pizzeria had presented no evidence to raise a genuine issue of material fact with respect to a likelihood of confusion with respect to its other phrase “a taste of the old neighborhood”

The court summarized its decision as follows:
If nothing else, this whole exercise has been a learning experience in defining what a Brooklyn style pizza is. One of Domino's exhibits states that its allure is so powerful that Carmine Giovianzzo (CSI: NY) still walks the streets of Southern California in search of a Brooklyn style pizza (evidently he didn't find it at Domino's). So, in the end analysis, if you are from Brooklyn, you may know what it is or what it is not, but, in any event, the mere mention of [“Brooklyn Style Pizza”] doesn't conjure up the image of a $ 9.99 pizza delivered in a cardboard box with a red domino on it.
Id. at *13-14.

The court recommended summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “Brooklyn Style Pizza.”

The court went on to dismiss Pizzeria’s other claims for unfair competitions under both the Lanham Act and Texas law noting that Pizzeria simply did not address whether Domino’s use of the mark “a taste of the old neighborhood” for the limited time it did caused or was likely to cause any confusion. The court further noted that the parties “exercised 99% of their resources addressing [“Brooklyn Style Pizza”] and nothing more.” Id. at *14. The court recommend summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “a taste of the old neighborhood.”

Finally, Pizzeria had also sought injunctive relief under the Texas Anti-Dilution Act (see TEX. BUS. & COM. CODE § 16.29). Because the statute allows for recovery without a showing of likelihood of confusion, the court did not grant summary judgment with respect to this claim; however, because this state law claim was the only remaining claim, the court declined to exercise supplemental jurisdiction over the claim (see 28 U.S.C. § 1367 (c)(3)) and recommended it be dismissed without prejudice.

Vegas™Esq Comments:
Around the time Domino’s introduced its Brooklyn Style Pizza, The New York Times ran an article (link here) about the authenticity of Domino’s Brooklyn style pizza – and addresses the issue of what exactly constitutes a "Brooklyn style pizza."

Any reader thoughts about the issue of Brooklyn style pizza?

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