Friday, October 10, 2008

The Epic Battle Over the Patsy's Restaurants Comes To A Bitter (but Fair) End

I previously wrote (link here) about the long running dispute between Patsy's Pizzeria and Patsy's Italian Restaurant in New York City. On September 9, 2008, U.S. Magistrate Judge Ramon E. Reyes, Jr. issued a 72-page decision dealing with a flurry of post-verdict motions filed by each of the parties following the jury verdict earlier this year which found there was a likelihood of confusion between the two names. See Patsy's Italian Restaurant, Inc. et al v. Banas et al, Case No. 06-cv-05857, 2008 U.S. Dist. LEXIS 77802 (E.D.N.Y. September 9, 2008). Articles on the verdict can be found here and here. While the parties are likely to still file appeals to the Second Circuit Court of Appeals (after such a long battle, what’s another appeal to the Second Circuit in the grand scheme of things), the lengthy opinion is likely to be the ultimate end to this contentious battle between the Patsy’s.

In the end, the court ordered the two parties to use their full trade names going forward – both parties were enjoined from using the mark PATSY'S alone. In addition, the court, finding both parties to be partly at blame for the conflicting registrations (but also noting the careless manner in which the PTO handled the issue), put the parties back on an even playing field by ordering the PTO to cancel the registrations acquired by Patsy's Italian Restaurant for PATSY’S PR (stylized) (for restaurant services) and PATSY’S (for restaurant services not including pizza) and ordering the PTO not to restore the registration for PATSY’S PIZZERIA (for restaurant services) acquired by Patsy's Pizzeria.

The court added that with its decision the parties are free to seek new concurrent trademark registrations for the marks PATSY'S ITALIAN RESTAURANT and PATSY'S PIZZERIA and “strongly advised” them to fully acknowledge each other's existence and rights to the PTO, and that they should define as precisely and as narrowly as possible their own rights for services.

It deserves to be noted that Patsy's Italian Restaurant also was denied attorney's fees in the case despite a jury verdict of willful infringement -- the court did not find the case to be so exceptional as to jusify an award of attorney's fees becasue the victory was a minor one which paled in comparison to the claims on which Patsy's Italian Restaurant did not prevail.

What was most interesting about the opinion was the court’s eloquent expression of frustration and contempt towards the parties at wasting so much of time, money, and resources on a ridiculous case that should have been resolved with a coexistence agreement ages ago:

The Court ends by reproving the parties for what was been, in the end, wholly unnecessary and protracted litigation. As this Opinion and Order makes clear, both parties are to blame for what has transpired to date. The parties have expended an untold amount of money to litigate this action. They instead would have been well-advised to invest that money in their businesses. The Court is highly aware that Patsy's Italian Restaurant and Patsy's Pizzeria have each developed their goodwill through the sweat and labor of generations of restauranteurs. Patsy's Italian Restaurant and Patsy's Pizzeria are as much labors of love as they are businesses. However, it is the Court's sincere suggestion that the parties do not allow that love to blind them to the simple reality that there is plenty of room, and plenty of appetites in this world for Patsy's Italian Restaurant and Patsy's Pizzeria to exist and expand simultaneously and amicably.

Nicely put. And the same could be said for so much trademark litigation out there.

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