Patsy's Italian Restaurant, Inc. v. Banas
658 F.3d 254
| 2d Cir. | 2011Background
- Patsy’s Italian Restaurant, Inc. and Patsy’s Brand, Inc. (Patsy’s Italian) and Patsy’s Pizzeria-related entities clash over Patsy’s marks for restaurant and pizzeria services and sauces.
- Patsy’s Italian held two registrations for restaurant services (Nos. 3,009,836 and 3,009,866) and Patsy’s Brand held No. 1,874,789 for sauces; intervening appellees held registrations for Patsy’s marks via I.O.B. Realty.
- A long “sauce” dispute previously led to injunctive relief and cancellations in the PTO and subsequent appellate decisions restricting the scope of those injunctions.
- The current action consolidates two suits challenging registrations, with a jury determining senior-user status (I.O.B. Realty), scope of use, naked licensing, infringement, likelihood of confusion, and fraud concerning PTO registrations.
- The district court (i) cancelled Patsy’s Italian registrations, (ii) allowed limited rights with geographic scope, (iii) issued injunctive relief limiting use of Patsy’s and related terms, and (iv) denied attorneys’ fees; the court of appeals affirms.
- The Staten Island and Syosset locations operated under licenses with I.O.B. Realty, and the East Harlem location was the original Patsy’s; the Syosset location faced a Trattoria Impazzire disclaimer requirement as part of the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Cancellation of registrations bar or not by injunction | Patsy’s Italian argues the sauce injunction barred cancellation | Appellees contend injunction did not bar cancellation of Patsy’s Italian registrations | Cancellation affirmed; injunction did not bar cancellation |
| Scope of abandonment/naked licensing geographic effect | Abandonment should be total; geographic limits disputed | Naked licensing can cause partial abandonment in specific areas | Partial abandonment limited to Staten Island and Syosset; nationwide rights retained only as to registrations not reinstated |
| Fraud on the PTO finding | Evidence supports fraud by I.O.B. Realty in PTO filing | Insufficient evidence of fraud; prior use defense intact | Jury finding of fraud sustained; supports cancellation of 574 Registration |
| Injunctive relief scope and tailoring | Broad injunction protecting Patsy’s nationwide rights | Relief should be narrowly tailored to reduce confusion | Injunction upheld with tailored scope; includes limits against sole use of PATSY’S and signage requirements |
| Attorneys’ fees denial | Prevailing party in exceptional case entitled to fees | Court acted within discretion; not exceptional | Affirmed denial of attorneys’ fees |
Key Cases Cited
- Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir.1959) (abandonment concepts and geography influence on rights; use in commerce standards discussed)
- Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 (Fed. Cir.1983) (geographic separation can preclude registration due to likelihood of confusion)
- Buti v. Perosa, S.R.L., 139 F.3d 98 (2d Cir.1998) (broad interpretation of use in commerce and service marks)
- United States v. Spallone, 399 F.3d 415 (2d Cir.2005) (interpretation of orders and contract-like terms in cross-litigation)