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Patsy's Italian Restaurant, Inc. v. Banas

October 31, 2007

PATSY'S ITALIAN RESTAURANT, INC. AND PATSY'S BRAND, INC., PLAINTIFFS,
v.
ANTHONY BANAS D/B/A PATSY'S, PATSY'S PIZZERIA, AND PATSY'S BAKERY & CAFÉ AND ANTHONY & PATSY'S INC., DEFENDANTS.
PATSY'S ITALIAN RESTAURANT, INC., PLAINTIFF AND COUNTERCLAIM DEFENDANT,
v.
ANTHONY BANAS D/B/A PATSY'S AND PATSY'S PIZZERIA TRATTORIA IMPAZZIRE, ALLAN ZYLLER D/B/A PATSY'S AND PATSY'S PIZZERIA TRATTORIA IMPAZZIRE, AL & ANTHONY'S PATSY'S, INC., I.O.B. REALTY, INC., PATSY'S, INC. AND BSZ REALTY CORP., DEFENDANTS AND COUNTERCLAIM PLAINTIFFS.



The opinion of the court was delivered by: Dora L. Irizarry, U.S. District Judge

MEMORANDUM & ORDER

Patsy's Italian Restaurant, Inc. and Patsy's Brand, Inc. ("plaintiffs") timely filed a motion asking the court to reconsider its Opinion and Order dated August 28, 2007 restoring defendant I.O.B. Realty, Inc.'s ("I.O.B.") United States Trademark Registration No. 2,213,574 (the "pizzeria registration") and, alternatively, asking the court to certify the portion of its decision restoring the pizzeria registration for interlocutory review by the Second Circuit. For the reasons set forth below, plaintiff's motion is denied in its entirety.

Plaintiff's Motion for Reconsideration

1. Standard

Motions for reconsideration are governed by Local Civil Rule 6.3 and are entrusted to the discretion of the court. See Baker v. Dorfman, 239 F.3d 415, 427 (2d Cir. 2000). "The standard for granting such a motion is strict, and reconsideration will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked-matters, in other words, that might reasonably be expected to alter the conclusion reached by the court." Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995). The moving party must demonstrate that the factual matters or controlling precedent overlooked by the court "were presented to it on the underlying motion." In re New York Cmty. Bancorp, Inc., 04-CV-4165, 2007 WL 1958911 at *3 (E.D.N.Y. June 29, 2007) (citation omitted). Importantly, in order to prevail on a motion for reconsideration, a movant must demonstrate that there is "an intervening change of controlling law, the availability of new evidence, or the need to correct a clear error or prevent manifest injustice." Virgin Atl. Airways, Ltd. v. Nat'l Mediation Bd., 956 F.2d 1245, 1255 (2d Cir. 1992) (citations omitted). However, a court's reconsideration of an earlier order is an "extraordinary remedy to be employed sparingly in the interests of finality and conservation of scarce judicial resources" and reconsideration motions should not be granted where the moving party seeks solely to re-litigate an issue already decided. In re Health Mgmt. Sys., Inc. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000); In re Houbigant, Inc.,914 F. Supp. 997, 1001 (S.D.N.Y. 1996) (noting that a Rule 6.3 motion is "not a motion to reargue those issues already considered when a party does not like the way the original motion was resolved").

2. Discussion*fn1

Plaintiffs argue that the court's decision restoring the pizzeria registration should be reconsidered because (1) the court ignored the plain meaning of section 8 of the Lanham Act, (2) the court ignored the plain meaning of section 21 of the Lanham Act, and (3) the court lacked subject matter jurisdiction to restore the registration. Because plaintiffs have failed to point to any fact or precedent the court overlooked that requires the court to depart from its August 28, 2007 decision, plaintiffs' burden has not been sustained and their motion for reconsideration is denied.

A. Section 8 of the Lanham Act

Plaintiffs first argue that I.O.B.'s failure to file a section 8 affidavit of continuing use for the pizzeria registration prevents the court from subsequently restoring the pizzeria registration to the register. Section 8 of the Lanham Act provides that "the registration of any mark shall be canceled by the Director for failure to [file an affidavit of continuing use] . . . at the end of 6 years following the date of registration." 15 U.S.C. § 1058. Plaintiffs incorrectly claim that the court's opinion ignored this language and overlooked a body of authority instructing courts to enforce the plain meaning of statutes. See Lamie v. United States Tr., 540 U.S. 526, 534 (2004); United States v. Oakland Cannabis Buyers' Coop., 532 U.S. 483, 497-98 (2001); In re Fickling, 361 F.3d 172, 176 (2d Cir. 2004); Belanger v. Office of Pers. Mgmt., 1 F.3d 1223, 1225 (Fed. Cir. 1993).

The cases cited by plaintiff are inapposite. Although section 8's requirements are mandatory, In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 1405 (Fed. Cir. 1991), nothing in its language suggests that its provisions apply once the Patent and Trademark Office ("PTO") has already canceled the registration. Nor was the section enacted with such a situation in mind. Congress enacted section 8 to prevent out-of-use registrations, or "deadwood," from collecting on the register. Application of International Nickel Co., 282 F.2d 952, 954 (C.C.P.A. 1960). "[T]he purpose of section 8 affidavits is to remove from the register automatically works which are no longer in use." First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LL, 99-CIV-11239, 2000 WL 122175 at *2 (S.D.N.Y. Feb. 1, 2000) (quoting Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 887 (C.C.P.A. 1969)). "Failure of registrants to file affidavits results in removal of such deadwood." Checkers Drive-In Restaurants v. Comm'r, 51 F.3d 1078, 1085 (D.C. Cir. 1995) (quoting Morehouse, 407 F.2d at 887).

When removal from the register is already a fait accompli, however, filing the affidavit can accomplish nothing of substance. The penalty sought to be avoided has already occurred. The Trademark Trial and Appeal Board ("TTAB") conceded as much in its June 28, 2007 cancellation order when it noted that a timely filed section 8 affidavit "would not have been approved while [the pizzeria registration] w[as] in cancelled status." (ECF Docket Entry 105 at 29.) Although I.O.B. would have been well advised to file the affidavit as a precautionary measure, it is difficult to read section 8 to require the filing after the PTO cancelled the registration, and even more difficult to fault I.O.B. for its actions considering the opaque and contradictory guidance offered by the TTAB. No statutory interest is furthered by requiring former registrants to file doomed affidavits with the PTO and the court declines to read section 8 to produce such an illogical result. See Griffin v. Oceanic Contractors, Inc. 458 U.S. 564, 575 (1982) ("[I]nterpretations of a statute which would produce absurd results are to be avoided if alternative interpretations consistent with the legislative purpose are available."); cf. Lamie, 540 U.S. at 534.

Relying on a Supreme Court decision interpreting the incontestability provisions of the Lanham Act, plaintiffs relatedly argue that section 37 of the Lanham Act-which grants courts the power to "restore canceled registrations"-cannot undermine the more specific provisions of the act, such as section 8. The relevant passage from the Court's opinion states:

Whatever the precise boundaries of the courts' equitable power, we do not believe that it encompasses a substantive challenge to the validity of an incontestable mark on the grounds that it lacks secondary meaning. To conclude otherwise would expand the meaning of "equity" to the point of vitiating the more specific provisions of the Lanham Act. Similarly, the power of the courts to cancel registrations and "to otherwise rectify the register," [pursuant to section 37], must be subject to the specific provisions concerning incontestability.

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 203 (1985) (quoting 15 U.S.C. ยง 1119) (emphasis added). Apart from being dictum, and never presented to the court in plaintiffs' papers on the underlying motion, this lone sentence from Park N' Fly discussing section 37 lends little support to plaintiffs' argument. See In re New York Cmty. Bancorp, Inc., 2007 WL 1958911 at *3 ("[A] party in its motion for reargument may not advance new facts, issues or arguments not previously presented ...


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