A Real Dog of a Trademark Case

People take their pets very seriously . . . and apparently the same is true with respect to their pet store trademarks.

On January 13, 2012, Puparazzi Industries of America LLC (“PIA”) filed a trademark infringement lawsuit in the U.S. District Court of the District of Arizona against Puparazzi Pet Spa LLC (“PPS”).  See Puparazzi Industries of America LLC v. Puparazzi Pet Spa LLC, Case No. 12-cv-00084 (D. Ariz.).  A copy of the complaint can be downloaded here.

According to the complaint, PIA is a mobile pet grooming van that provides its pet grooming services throughout the Phoenix, Arizona area using the marks PUPARAZZI MOBILE PET SPAW and WHERE YOUR PET’S THE STAR (which it claims to have been using in the area since May 10, 2010) and with bright pink and purple colors on its grooming van. 

PIA only recently filed to register the mark PUPARAZZI MOBILE PET SPAW (which contains the odd concurrent use information “Regional and National).  [Sidenote: The application does not appear to have been filed by an attorney, but instead by the company’s managing member].    The same company had an application on file for PUPARAZZI INDUSTRIES OF AMERICA (filed March 2010), but when it came time to show use of the mark, all that it could muster up was its specimen showing the mark PUPARAZZI MOBILE PET SPAW.  The PTO rejected both the specimen of use (since it did not show the mark as applied in use) as well as the applicant’s attempt to alter the “drawing” of the mark from PUPARAZZI INDUSTRIES OF AMERICA to PUPARAZZI MOBILE PET SPAW (a material alteration). 

PIA claims that defendant PPS began operating a pet grooming store in Phoenix, Arizona, using the marks PUPARAZZI PET SPA and EVERY DOG IS A STAR! (and the color pink on its website and facebook account) around September 2011.  PIA’s causes of action are for federal trademark infringement and unfair competition. 

This looks more like an example of a local “pet grooming store” name battle between two local business competitors (not as uncommon as you might think), rather than a company beginning to exert trademark rights to the word PUPARAZZI.  I suspect that PIA’s “concurrent use” claim in its trademark application is a recognition by the owner of the company that there are other companies out there using the PUPARAZZI mark in connection with similar services including Puparazzi Dog Spa (in North Aurora, Illinois) and Puparazzi Pet Grooming (in Green Bay, Wisconsin).  There is also a pet photographer using the name Puparazzi Portraits.  And one man owns the registered trademark for PUPARAZZI in connection with pet clothing.  

And to the extent PIA is able to prove both that it is the prior user of the mark the Phoenix, Arizona area as well as the scope of its reputation in the Phoenix, Arizona area, then it may very well likely be able to get PPS to change its name.    

What’s in a name? Ask Roscoe and Patsy.

It was quite a week for restaurant name trademark disputes.

Earlier this week, I wrote (link here) about a North Carolina pancake house that was doing business under the name “It’s Hop’n” that was sued for trademark infringement by IHOP

On Thursday, the big story (here and here) was about the Los Angeles-based chicken and waffles chain “Roscoe's House of Chicken 'n Waffles” (“Roscoe’s”) The restaurant chain filed a trademark infringement lawsuit against the owner of “Rosscoe's House of Chicken and Waffles” (“Rosscoe’s”) in Chicago (two “S”’s and the word “and” instead of an ampersand), for infringement of its service mark ROSCOE'S HOUSE OF CHICKEN N WAFFLES (pictured below). See East Coast Foods, Inc. v. VFJ Enterprises, Inc. et al, Case No. 08-cv-01990 (N.D. Ill. April 8, 2008).

At the court’s hearing on Roscoe’s motion for a temporary restraining order, it was announced that the parties had reached an agreement as to a temporary restraining order. Rosscoe’s agreed to remove the name from all signs and menus by next Wednesday and change the name to Chicago's House of Chicken and Waffles. Meanwhile, attorneys for Roscoe's are indicating that they still plan to seek damages for Rosscoe’s infringement of its trademark. At the conclusion of the hearing, U.S. District Judge Samuel Der-Yeghiayan was quoted as saying: "I see that both parties understand the issues and facts of life and none of the parties are waffling on the issue."

One interesting aspect of the case is that Roscoe's apparently allowed Rosscoe's to operate a “Rosscoe's House of Chicken and Waffles” in New York for eight years without any claims of infringement. Roscoe's founder and long-time owner, Herb Hudson, was quoted as saying that he had no plans to expand to the New York market, and thus did not have a problem with the New York Rosscoe’s. But Hudson did have plans to open in Chicago next year, thus the reason behind the lawsuit to stop Rosscoe's this time.

One wonders whether Roscoe's considered the consequences of not enforcing its trademark rights throughout the entire U.S. Roscoe's lack of enforcement with respect to a confusingly similar mark in New York ultimately diminishes the ability of the mark to serve as a unique source identifier, and thus it value as a service mark. The story below demonstrates what can happen to a prior user’s trademark rights when an owner does not take steps to vigorously enforce such rights.

The dueling "Patsy's"

On Friday, the trademark news story of the day (link here) was about a jury verdict in an ongoing trademark battle in the New York city area over the name “Patsy’s” between Patsy's Italian Restaurant and Patsy's Pizzeria (background articles here, here, here, and here). Patsy's Italian Restaurant filed this particular trademark infringement lawsuit against the owners of Patsy's Pizzeria in October 2006. See Patsy's Italian Restaurant, Inc. v. Banas et al, Case No. 06-cv-05857 (E.D.N.Y. October 30, 2006).

Patsy's Italian Restaurant, located in Manhattan's theater district, was founded in 1944 by Pasquale "Patsy" Scognamillo and claims to have been patronized by celebrities from Frank Sinatra and Tony Bennett to Jennifer Lopez and George Clooney. Patsy's Pizzeria, on the other hand, opened up in Syosset, New York in 2006, after obtaining a license to use the name from the owner of the original Patsy's Pizzeria located in East Harlem which was founded in 1933 by Patsy Lancieri. In 1991, Lancieri's widow sold Patsy's Pizzeria, and the new owner soon after began expanding the pizzeria chain to six locations in Manhattan, one in Long Island, and then to Syosset.

While the jury found that there was a likelihood of confusion between the two restaurant names, the court did not yet order an injunction stopping Patsy's Pizzeria from using the name nor has the issue of damages been determined. A hearing on Patsy's Italian Restaurant’s request for injunctive relief is set for sometime in August.

This dispute between the two “Patsy’s” restaurants goes back almost ten years, and has quite an interesting procedural posture both in federal court and at the Trademark Trial and Appeal Board (“TTAB”). For a detailed background on one part of the dispute, read the published decision Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 65 USPQ2d 1442 (2d Cir. 2003).

The two businesses coexisted for nearly half a century. In 1993, the owners of Patsy's Italian Restaurant decided to begin selling pasta sauces in jars for retail distribution and formed Patsy's Brand Inc. (“PBI”), which filed an intent-to-use application to register its mark PATSY’S PR SINCE 1944 (stylized) for sauces. The mark was registered January 17, 1995 (with Patsy’s claiming first use in February 1994). Meanwhile, Patsy’s Pizzeria, through I.O.B. Realty, Inc. (“IOB”), had received two registrations for the marks PATSY’S and PATSY’S PIZZERIA (both for restaurant services) registered in May 21, 1996 and December 29, 1998, respectively.

On October 9, 1998, IOB filed a petition to cancel PBI’s registration for sauces alleging likelihood of confusion over its registrations. See I.O.B. Realty, Inc. v. Patsy's Brand, Inc., Cancellation No. 92028142 (TTAB October 9, 1998). Not only did PBI deny the allegations and assert the affirmative defense of estoppel, laches, and acquiescence, PBI turned around and filed its own petition to cancel IOB’s two registrations based on likelihood of confusion over its registered mark as well as fraud on the part of IOB. See Patsy's Brand, Inc. v. I.O.B. Realty, Inc., Cancellation No. 92029614 (TTAB October 28, 1999).

Theses cancellation proceedings were suspended sua sponte by the TTAB on June 21, 2000, when the TTAB was informed of a lawsuit filed by PBI on September 30, 1999 in the U.S. District Court for the Southern District of New York, alleging inter alia, trademark infringement, seeking cancellation of IOB’s registered mark PATSY’S, and seeking an order withdrawing IOB’s cancellation petition. See Patsy's Italian Restaurant, Inc. v. IOB Realty et al, Case No. 99-cv-10175 (JSM) (S.D.N.Y.). The district court in that case granted PBI’s motion for summary judgment, finding infringement, entered an injunction, and ordered the PTO to cancel IOB’s PATSY’S registration.

On appeal to the Second Circuit, the court affirmed the district court’s decision regarding likelihood of confusion. The court also held that while IOB may have originally had priority with respect to the name PATSY’S, its long-standing tolerance of the use by Patsy’s Italian Restaurant prevented IOB from stopping Patsy’s Italian Restaurant from using the name for restaurant services. Because the parties’ rights to use the PATSY’S name for restaurant services was equal, IOB had no grounds for objecting to Patsy’s Italian Restaurant's expansion into the “related market” for sauces. The Court of Appeals, however, did find the district court exceeded the scope of the litigation by restricting IOB’s use of the mark PATSY’S in connection with restaurant services and modified the district court’s injunction to remove the order to the PTO to cancel IOB’s PATSY’S registration.

Unfortunately, PBI, soon after the district court’s decision but before IOB had filed its appeal, filed a motion with the TTAB on October 18, 2001, to resume the cancellation proceeding. PBI did not notify the TTAB of IOB’s appeal to the Second Circuit. Because IOB did not file a response to PBI’s motion, the TTAB granted PBI's motion and granted PBI's petition to cancel IOB’s PATSY’S registration and dimissed with prejudice IOB’s cancellation proceeding against PBI.

On March 28, 2003, the TTAB sua sponte issued an order to IOB to show cause why judgment should not be entered against IOB on the PATSY’S PIZZERIA registration, which was also part of PBI’s original cancellation petition. By this time, the Second Circuit decision had been rendered, and IOB informed the TTAB of the decision by the Court of Appeals reversing the district court’s order to cancel IOB’s registration. PBI continued to maintain that IOB’s registrations should be canceled because IOB “had lost interest” and because of IOB’s false statement that it had exclusive right to use the mark, when the Second Circuit had held that both parties have an equal claim to the name.

Unfortunately for IOB, on May 27, 2003, the Commissioner for Trademarks went ahead and ordered the cancellation of both of IOB’s registrations because the TTAB had erroneously prepared and forwarded an order for the Commissioner to sign – even though the TTAB’s original order did not formally order IOB’s PATSY’S PIZZERIA registration to be canceled.

Further complicating matters is that when PBI filed its lawsuit against IOB, PBI also filed a new application to register the mark PATSY’S PR (stylized) for restaurant services and for PATSY’S (for restaurant services not including pizza). While these applications were at first rejected as likely to be confused with IOB’s registrations, when those registrations were prematurely canceled, the PTO withdrew its rejections and allowed PBI’s marks to be published and subsequently registered on November 1, 2005.

On that same day, IOB filed another application to register the mark PATSY’S PIZZERIA for (restaurant services, namely, take-out restaurant services). That application was rejected by the PTO on grounds of likelihood of confusion over the above two registrations held by PBI for restaurant services as well as two additional pending applicaitons filed by PBI (PATSY'S OF NEW YORK for restaurant services and PATSY'S for frozen eggplant parmigiana). Perhaps because of the PTO's rejections, on January 9, 2007, I.O.B. Realty filed two petitions to cancel each of PBI’s new registered marks. See I.O.B. Realty, Inc. v. Patsy’s Italian Restaurant, Cancellation Nos. 92046912 and 92046867 (TTAB Jan. 9, 2007). Of course, these cancellations were subsequently suspended once they became the subject matter of the federal district court lawsuit filed by Patsy’s Italian Restaurant. Interestingly, the Examining Attorney, in a subsequent non-final office action, maintained the 2(d) refusal to register IOB's mark, but only citing the PATSY'S OF NEW YORK and PATSY'S (eggplant parmigiana) registrations. Further proceedings on this particular application were suspended December 30, 2007.

To add insult to IOB’s injury, the TTAB, on June 28, 2007, upon reviewing and recounting the “tortured procedural history” of the case (link here), cancelled IOB’s registrations under §8. After PBI noted that IOB had not made the required filings under §8 (declaration of use) of the Lanham Act, the TTAB ordered the register to be corrected to reflect that IOB’s registrations were canceled on such basis – even though such a filing would not have been approved given its cancelled status. The TTAB refused IOB’s request for reconsideration.

On August 28, 2007, the judge in the above district court case ordered the PATSY’S PIZZERIA registration restored under §37 of the Lanham Act (15 USC §1119), but no action has been taken until such time as the court’s order is final (the court was unwilling to certify the order as final to allow IOB to pursue an immediate appeal).

Only time will tell if the most recent jury verdict will start to bring some order to the "procedural morass" (the TTAB's own words) in this case. Given the long-running nature of the dispute, however, one highly doubts that this dispute will end at the district court level.

A trademark dispute over Cheesecake

On February 13, 2008, Cheesecake Factory, Inc., a New Mexico corporation doing business in New Mexico as “Dee’s Cheesecake Factory” (“Dee’s Cheesecake”), filed a lawsuit against The Cheesecake Factory, Incorporated (“TCFI”), the owner of the restaurant chain “The Cheesecake Factory,” in the U.S. District Court for the District of New Mexico. See Cheesecake Factory, Inc. v. The Cheesecake Factory, Incorporated, Case. No. 08-CV-00167 (D. N.M.). A copy of the complaint can be downloaded here.

Dee’s Cheesecake Factory started in 1973 as a wholesale bakery and restaurant. Today, Dee’s Cheesecake is one of the largest producers of cheesecakes in the U.S. – distributing its cheesecakes both nationally and internationally. The company obtained a federal registration for the mark DEE'S FAMOUS CHEESECAKE EMPORIUM (for restaurant services) on October 11, 1988 (although first use in commerce was claimed on August 6, 1986, first use in another form was claimed back to 1973).

The Cheesecake Factory got its start in 1972 with the opening a wholesale bakery and a small retail component in Los Angeles. The company opened its first restaurant in 1978 in Beverly Hills, and today has over 120 locations throughout the U.S. TCFI, through its trademark holding company The Cheesecake Factory Assets Co. LLC, holds numerous trademark registrations on THE CHEESECAKE FACTORY mark (and variations thereon) with many others registration applications pending.

The current lawsuit stems from a trademark infringement lawsuit previously filed by Dee’s Cheesecake in 1997 over TCFI’s use of the name “Cheesecake Factory.”

According to the current complaint, a court decision in the 1997 case found that Dee’s Cheesecake held prior user rights to the CHEESECAKE FACTORY name in “certain parts” of the United States and that the marks DEE’S CHEESECAKE FACTORY and THE CHEESECAKE FACTORY were confusingly similar. The parties subsequently entered into a settlement agreement (which notably was not attached to the complaint) whereby Dee’s Cheesecake sold for cash its right in the CHEESECAKE FACTORY name to TCFI, but with Dee’s Cheesecake retaining an exclusive right to use DEE’S CHEESECAKE FACTORY as the name of her New Mexico-based restaurant and bakery and to use the DEE’S CHEESECAKE FACTORY name worldwide to designate wholesale bakery services (including mail order services). The settlement agreement apparently prohibited TCFI from using the CHEESECAKE FACTORY name in connection with a restaurant in New Mexico.

The complaint also states that the parties entered into a “license agreement” as part of the settlement agreement; however, the complaint characterizes this a “naked license” because TCFI has exercised no quality control over Dee’s Cheesecake’s services, and thus argues that TCFI has forfeited any trademark rights to the CHEESECAKE FACTORY name.

The complaint appears to be going after four particular trademark registrations held by TCFI:

• THE CHEESECAKE FACTORY BAKERY (stylized) (for food products);
• THE CHEESECAKE FACTORY BAKERY CAFE (word mark) (for restaurant services);
• THE CHEESECAKE FACTORY BAKERY CAFÉ (stylized and design) (for restaurant services); and
• THE CHEESECAKE FACTORY EXPRESS (word mark) (for restaurant services).

Dee’s Cheesecake asserts in its complaint that TCFI a) never disclosed to the USPTO the settlement agreement that existed between Dee’s Cheesecake and TCFI, and specifically, that TCFI did not have right to use the name CHEESECAKE FACTORY in New Mexico, and b) falsely claimed in each respective application that it had the rights to use the above marks throughout the United States without restriction (Dee’s Cheesecake notes that two of the applications were filed in September 1997 at the very same time that the parties were completing the settlement agreement).

Dee’s Cheesecake argues that had TCFI properly disclosed the settlement agreement to the USPTO, the agency would not have issued registrations – at least not without some kind of geographic scope restriction. As such, Dee’s Cheesecake seeks a declaratory judgment that TCFI committed fraud against the PTO in obtaining the above registered marks, and an order cancelling such marks

Dee’s Cheesecake also alleges breach of contract – specifically, that TCFI, through its conduct in obtaining the above registrations, breached the parties’ settlement agreement. Finally, Dee’s Cheesecake states a claim for unfair competition under New Mexico’s Deceptive Trade Practices Act (N.M.S.A. §57-12-1 et. seq.).

In addition to seeking a court order cancelling the above registrations, Dee’s Cheesecake also requests an order enjoining TCFI from selling its gift cards anywhere in New Mexico. Although the complaint is not entirely clear as to the basis for this injunction, it is likely based on the assertion that TCFI is prohibited from using CHEESECAKE FACTORY in connection with restaurant services anywhere in New Mexico.

Without seeing either the license agreement or the settlement agreement, it is difficult to comment on the merits of Dee’s Cheesecake’s lawsuit. This appears to be the beginning of yet another battle in the so-called “Cheesecake Wars” (as Dee’s Cheesecake describes on its own website (link here)).

What is a Naked License?
While the Dee’s Cheesecake complaint does not go into details regarding TCFI’s alleged “naked license” as a grounds for cancelling the above registrations, the issue is an important one that deserves special mention.

A trademark holder who “licenses” a trademark to another party without maintaining some kind of control over the quality of the goods/services sold under the trademark may be engaging in the “naked licensing” of such trademark, in which case the holder’s rights to the trademark may be deemed abandoned (and any registration on such trademark cancelled). See Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002) (registration for “Da Vinci” for wine was cancelled because licensing agreement that did not contain any quality control provisions was a “naked license” and the mark was thus deemed abandoned).

The rationale behind why “naked licensing” is an abandonment of a party’s trademark rights derives from the notion that trademarks are meant to serve as unique identifiers of the source and origin of goods or services for the benefit of the consuming public. The consuming public relies upon trademarks (and the goodwill and reputation attached thereto) to distinguish one party’s goods and services from those offered by another. As such, a party’s failure to exercise any kind of quality control over the use by others of the party’s trademark may result in the trademark no longer being recognized by consumers as a unique identifier of that party’s goods and services in which case the trademark rights associated thereto are deemed abandoned by the trademark holder.

Girls Gone Wild vs. Girls Gone Wine

The AP has a story today (link here) about a trademark dispute between the company that produces the famed (or infamous) Girls Gone Wild videos and a group of three Oklahoma businesswomen selling wine under the name "Girls Gone Wine." Another article also appears in The Oklahoman (link here).

On September 18, 2007, Shady Ladies, LLC filed a declaratory judgment action in the U.S. District Court for the Eastern District of Oklahoma against GGW Marketing, LLC and Mantra Films, Inc. See Shady Ladies, LLC v. GGW Marketing, LLC et al, Case No. 6:2007cv00293 (E. D. Okla.).

GGW Marketing, LLC holds three registrations for the GIRLS GONE WILD mark for prerecorded videotapes featuring adult entertainment, leather goods, and clothing. Mantra Films Inc. produces the Girls Gone Wild videos.

The women filed the declaratory judgment action after receiving a cease and desist letter from Mantra Films Inc. in July. The women received a registration for the mark GIRLS GONE WINE on February 27, 2007.

Joe Francis, the founder of “Girls Gone Wild” who is currently in jail in Reno, Nevada awaiting trial for tax-evasion and also facing charges in Florida over allegedly using minors in his movies, is quoted as saying "This is blatant trademark infringement. It just backs up everything that people have tried to do to me over the last few years to take advantage of me and we're tired of it."

Michael Burke, general counsel for Mantra Films, stated about the dispute: “It happens all the time. Mantra Films has spent several hundred million dollars over the last 10 years advertising its name endlessly on television to build up the image that 'Girls Gone Wild' is a fun, party environment and these women are taking a free ride on all that advertisement and name recognition.”

Vegas™Esq. Query: If this type of infringement happens all the time, then how come no opposition was filed when the GIRLS GONE WINE application was published for opposition?

This serves as a reminder as to why companies that really value their trademark portfolio should hire a reliable watch service to monitor any potentially infringing marks.

Johnson & Johnson receives minor boo-boo in its ongoing lawsuit with the American Red Cross over the “Red Cross” trademark

The AP reported today (link here) on the decision by the federal court judge in the ongoing lawsuit brought by Johnson & Johnson (“J&J”) back in August against the American National Red Cross (“ARC”) over the "Red Cross" trademark. See Johnson & Johnson v. The American National Red Cross, et al, Case No. 1:2007cv07061 (S.D.N.Y).


On Monday, November 5, 2007, Judge Jed S. Rakoff issued an order granting in part the ARC’s partial motion to dismiss and limiting the scope of one of J&J’s claims. A copy of the ruling can be downloaded here (courtesy of pharmalot.com). Specifically, Judge Rakoff dismissed with prejudice J&J’s fourth claim for promissory estoppel – J&J’s claim that the ARC promised not to sell first aid, health, safety and emergency preparedness products with the “Red Cross” trademark. Judge Rakoff’s order also limited the scope of J&J’s claim for tortious interference with a prospective economic advantage to interference with specific customers, namely Target, Wal-mart, Walgreens and CVS. Judge Rakoff’s order indicates that a memorandum explaining the decision will be forthcoming. With respect to the other claims subject to the partial motion to dismiss, however, the ARC’s motion was denied.

Both parties are claiming some victory by the decision. In a press release by the ARC, president and chief executive officer Mark W. Everson stated "I appreciate the court's decision and hope that Johnson & Johnson will reassess their actions and drop the case altogether.” However, Marc Monseau, a spokesperson for J&J, later stated “We are pleased with the court’s decision which denies in large part the American Red Cross’ motion to dismiss. The decision clears the way for Johnson & Johnson to proceed with seven of the eight claims that were originally alleged, allowing the case to move forward as planned.”

For some background on the dispute, check out the articles from the Wall Street Journal, the New York Times, and the International Herald Tribune published when the lawsuit was initially filed. In short, J&J and the ARC have shared use of the “Red Cross” mark for over 100 years. However, according to J&J, the ARC recently authorized the use of the “Red Cross” trademark by certain third parties on retails products such as first aid kits, medical examination gloves, and hand sanitizer. J&J’s lawsuit seeks to stop ARC’s actions. J&J’s original complaint set forth three claims for relief: 1) contractual and equitable estoppel, 2) violation of 18 USC §706 (which proscribes the use of the Greek red cross by anyone other than the American National Red Cross), and 3) breach of contract (but only with respect to one of the defendants). A copy of the original complaint can be downloaded here (courtesy of WSJ.com). On September 5, 2007, J&J filed an amended complaint (copy unavailable) setting forth additional claims for relief, including the aforementioned tortious interference with a prospective economic advantage. (Click here for ARC press release on the amended complaint or here for press release on ARC’s motion to dismiss and counterclaims).

While some commentators say that J&J is wrong and looks bad by bringing this lawsuit against a well-known humanitarian organization like the ARC, I think J&J’s position is the stronger of the two given the fame of the “Red Cross” trademark and the specific authority of the ARC to use such mark under 18 USC §706 (i.e., such authority was not likely to have been intended to be licensable by the ARC to third parties for the sale of products in the retail market). Who can blame J&J for taking the necessary to hold on to its trademark rights in the retail marketplace to a symbol that has in many ways already been preempted by the notoriety of the humanitarian work performed by the ARC. As for the remaining claims that were added in the amended complaint, I cannot comment without first reading a copy of the amended complaint, but the fact that the judge let them remain does send a signal that the ARC’s position may not be as strong as it thinks.