United States District Court, S.D. New York
PRIVADO MARKETING GROUP LLC, DC 115 CEDAR NR, LLC and Don Coqui HOLDING COMPANY, LLC, Plaintiffs,
ELEFTHERIA REST CORP., Defendant. ELEFTHERIA REST CORP. and JOHN MANGAN, Counterclaim Plaintiffs,
PRIVADO MARKETING GROUP LLC, DC 115 CEDAR NR, LLC and Don Coqui HOLDING COMPANY, LLC, Counterclaim Defendants.
OPINION AND ORDER
Edgardo Rantas, U.S.D.J.
Marketing Group LLC (“Privado”), DC 115 Cedar NR,
LLC (“DCNR”), and Don Coqui Holding Company, Inc.
(“DC Holdings”) (collectively
“Plaintiffs”) bring this trademark infringement
action against Eleftheria Restaurant Corp.
(“Eleftheria”) and John Mangan
(“Mangan”). Plaintiffs allege trademark
infringement and unfair competition at common law and under
the Lanham Act, 15 U.S.C. §§ 1051 et seq.,
arising from the use of the trademark “Don Coqui”
in connection with restaurants located in the New York area.
Doc. 20. Plaintiffs now move pursuant to Rule 56 of the
Federal Rules of Civil Procedure for summary judgment on all
causes of action.
following reasons, Plaintiffs' motion is DENIED.
following facts are undisputed unless otherwise noted.
trademark infringement action involves a complex web of
individuals and entities, some of whom are parties, and many
of whom claim current or former partial ownership of the Don
Coqui trademark. Plaintiffs Privado, DCNR and DC Holdings are
organized and existing under the laws of the State of New
York with a principal place of business at 115 Cedar Street,
New Rochelle, New York. See Declaration of Olivera
Medenica dated July 27, 2016 (“Medenica Declr.”)
(Doc. 76), at Ex. E, ¶¶ 4-6, and Ex. F,
¶¶ 4-6. Defendant Eleftheria is a corporation
organized and existing under the laws of the State of New
York with a principal place of business at 2818 31st Street,
in the Astoria section of Queens, New York. Id. Ex.
A, at ¶ II, and Ex. B, at ¶11. Eleftheria owns and
operates a restaurant named Don Coqui located at this address
in Astoria, Queens. Id. Counterclaim Plaintiff
Mangan is a principal of Eleftheria. Id.
Additional Relevant Individuals
Jaime “Jimmy” Rodriguez (“Rodriguez”)
is a restaurateur who owned and operated restaurants in New
York City including Jimmy's Bronx Café,
Jimmy's Uptown, Jimmy's Downtown, and Sofrito.
Declaration of Jaime “Jimmy” Rodriguez
(“Rodriguez Declr.”) (Doc. 79) ¶ 2.
Rodriguez's daughters are Jaleene and Jewelle Rodriguez.
Plaintiffs' Rule 56 Statement of Material Facts
(“Pls.' Rule 56.1”) (Doc. 80) ¶ 10.
Non-party Dimitrios Mitsios (“Mitsios”) is also a
principal and owner of Defendant and Counterclaim Plaintiff
Eleftheria. See Memorandum of Law in Opposition to
Plaintiffs' Motion for Summary Judgment
(“Defs.' Mem. L. Opp.”) (Doc. 85) at 3 n.1.
Sofrito Xanadu LLC and the Inception of the “Don
March of 2008, Rodriguez owned and operated a restaurant
called “Sofrito” in Manhattan. Pls.' Rule
56.1 ¶ 15. Rodriguez was interested in expanding to
another location, and together with Mangan, Mitsios, and his
daughter Jewelle, was contemplating opening a Sofrito
restaurant in the Meadowlands Xanadu, a shopping complex yet
to be built at the Meadowlands, New Jersey. Id.
furtherance of that effort, in March of 2008, Mangan,
Mitsios, and Jewelle formed a New Jersey limited liability
company named Sofrito Xanadu LLC (“Sofrito
Xanadu”). Id. ¶ 12. Jewelle owns a
minority interest of Sofrito Xanadu, while Mangan and
Mistios, collectively, own a majority interest.
Defendants' Separate Rule 56 Statement of Material Facts
(“Defs.' Rule 56.1”) (Doc. 85-2) ¶
Mangan was listed as the agent for Sofrito Xanadu, and
personally invested at least $110, 000 of his own funds to
capitalize it. Id. ¶ 9. Rodriguez was also
involved in the business and operations of Sofrito Xanadu.
Pls.' Rule 56.1 ¶ 13.
March 18, 2008, Jewelle, on behalf of Sofrito Xanadu,
executed a commercial lease to open the restaurant at the
Meadowlands Xanadu (“Xanadu Lease”). Id.
¶ 17; see also Declaration of Jewelle Rodriguez
(“Jewelle Rodriguez Declr.”) (Doc. 78) Ex. A, at
¶ 00095. Rodriguez, Mangan, and Mitrios were the
guarantors on the lease. Id. at P00019; see
also Rodriguez Declr. ¶ 6. Subsequent to the
execution of the Xanadu Lease, Rodriguez sold the Manhattan
Sofrito restaurant, as well as his rights to use the name
“Sofrito.” Pls.' Rule 56.1 ¶ 18. As a
result, the name could not be used in connection with the
proposed Xanadu restaurant. Id.
Rodriguez, Mangan, and members of Mangan's staff at his
marketing company, CIN Productions, spent several weeks
choosing a new name for the Xanadu restaurant. Defs.'
Rule 56.1 ¶ 11. The parties collectively determined to
use the name “Don Coqui.” Id.
September 2008, Mangan, through CIN Productions, registered
various “Don Coqui” domain names, including
doncoqui.com. Id. ¶ 11; see also
Declaration of John Mangan (“Mangan Declr.”)
(Doc. 87) Ex. B. Also in September 2008, Rodriguez and
Mangan, as guarantors under the Xanadu Lease, executed a
First Amendment of Lease agreement stating that the name
“Sofrito” would be replaced by “Don
Coqui.” Rodriguez Declr. Ex. C (“Amended Xanadu
Lease”) ¶ 7; see also Pls.' Rule
56.1 ¶ 19. The Meadowlands Xanadu project never came to
fruition, and as a result, Don Coqui was never opened there.
Pls.' Rule 56.1 ¶ 20.
Rodriguez's “Intent-to-Use” Trademark
9, 2008, Rodriguez filed an “Intent-to-Use”
trademark application with the United States Patent and
Trademark Office (“USPTO”) for the Don Coqui mark
in his own name (Registration No. 3, 764, 084) (the
“Don Coqui Mark”). Id. ¶ 21; Doc
79-1 (the “Intent-to-Use Application”). Rodriguez
did not discuss that he would be registering the Don Coqui
Mark in his own name with Mangan. Defs.' Rule 56.1 ¶
The New Rochelle Don Coqui Restaurant, DC Holdings and
the Xanadu Lease fell through, Rodriguez approached
MacMenamin's Grill in New Rochelle, New York, about
taking over the location to open a “Don Coqui”
restaurant there. Pls.' Rule 56.1 ¶ 23. At the time,
MacMenamin's Grill was in bankruptcy proceedings.
Id. ¶ 24. MacMenamin's was converted to
conform with the “Don Coqui” branding, and the
restaurant opened as the New Rochelle Don Coqui in late
January or early February 2009. Eleftheria Restaurant
Corp.'s and John Mangan's Response to Plaintiffs'
Rule 56.1 Statement (“Defs.' Rule 56.1
Resp.”) (Doc. 85-1) ¶ 26. News articles and other
publically available information confirm the use of the name
“Don Coqui” at the former MacMenamin's prior
to March of 2009. Defs.' Rule 56.1 ¶ 26. Both
Rodriguez and Mangan were involved in the opening of the Don
Coqui restaurant in New Rochelle. Pls.' Rule 56.1
¶¶ 25, 27.
Don Coqui initially opened, the MacMenamin's bankruptcy
proceeding was still ongoing. Thus, Don Coqui opened under
the prior restaurant's existing lease and liquor license,
and its owner Brian MacMenamin continued to work at the
restaurant. Id. ¶ 28; Defs.' Rule 56.1
¶¶ 27-28. Shortly after its opening, however, in
March of 2009, the bankruptcy trustee shut down the Don Coqui
restaurant pending completion of the bankruptcy proceeding.
Pls.' Rule 56.1 ¶ 30.
the trustee closed the restaurant, on April 8, 2009, DC
Holdings and DCNR were formed as New York limited liability
companies. Id. ¶ 31. DC Holdings is the sole
member of DCNR. Id. ¶ 4. The purpose of DC
Holdings and DCNR was to own and operate Don Coqui
restaurants, including the New Rochelle location. Defs.'
Rule 56.1 Resp. ¶ 32. Money from the account of Sofrito
Xanadu, including the funds that Mangan personally
contributed, were transferred to the accounts of DC Holdings
and DCNR. Id. ¶ 24.
approximately July 2009, Don Coqui in New Rochelle re-opened.
Pls.' Rule 56.1 ¶ 35. When it re-opened, the equity
owners of DC Holdings were real estate developer Larry Siegal
(40%), attorney Joseph Calascibetta (10%), Jaleene Rodriguez
(20%), Jewelle Rodriguez (20%) and Mangan (10%). Id.
¶ 37; Defs.' Rule 56.1 ¶ 33. Mangan maintained
an office at the restaurant, and was himself responsible for
all marketing for the New Rochelle Don Coqui. Defs.' Rule
56.1 ¶ 37. This included all signage, branding, usage
and development, staff apparel, advertising, and promotions.
Id. Rodriguez executed the DC Holdings Operating
Agreement on October 1, 2009 as an “employee”-as
opposed to an equity owner. Rodriguez Declr., Exh. F at
Under the Operating Agreement, DC Holdings was controlled by
a Management Committee, which was comprised of Siegel,
Calascibetta, and Rodriguez -who was designated as the
representative of the interests of Mangan, Jewelle, and
Jaleene. Id. ¶ 3. The DC Holdings operating
agreement refers to the Don Coqui Mark as a registered
trademark. Pls.' Rule 56.1 ¶ 41. The parties agree,
however, that the reference to the Mark as a registered
trademark is incorrect.
Statement of Use in Connection with the Don Coqui
December 23, 2009, Rodriguez filed a Statement of Use in
connection with the Don Coqui Mark Application, alleging that
the date of first use of the mark was July 3,
2009.Pls.' Rule 56.1 ¶ 42; Doc. 76-15
(“Statement of Use”). The USPTO subsequently
issued the Don Coqui Mark registration on March 23, 2010.
Id. ¶ 43.
Privado Marketing Group LLC and the Purported Assignment of
the Don Coqui Mark
April 16, 2010, Jewelle and Jaleene Rodriguez executed an
operating agreement for Privado, with each owning a 50%
membership interest in Privado. Id. ¶ 44.
Approximately one year later, on April 6, 2011, Rodriguez
executed and recorded documents that purported to assign the
entire interest and goodwill in the Don Coqui Mark to
Privado, and recorded the assignment with the USPTO.
Id. ¶ 45; Rodriguez Declr., Ex. L
(“Trademark Assignment”). The parties dispute
whether Rodriguez owned any interest in the Don Coqui Mark as
of this date, and therefore whether this purported assignment
transferred any interest to Privado. See Defs.'
Rule 56.1 ¶ 49.
Jaleene and Jewelle Rodriguez Purportedly Acquire DC
April 30, 2011 Joseph Calascibetta and Laurence Siegel
entered into an agreement to sell their membership interest
in DC Holdings to Jaleene and Jewelle. Pls.' Rule 56.1
¶ 46. On July 26, 2011 Mangan entered into an agreement
with Jaleene and Jewelle, under which Mangan purported to
sell his 10% membership interest in DC Holdings to them in
exchange for $100, 000 (“Mangan Share
Agreement”). Defs.' Rule 56.1 ¶ 50. Jaleene
and Jewelle executed promissory notes in favor of Mangan,
each promising to pay him $50, 000 in regular installment
payments. Id. Neither Jaleene nor Jewelle have made
any payments to Mangan, however. Id. Plaintiffs
claim that as a result of these transfers, Jaleene and
Jewelle Rodriguez each became a 50% owner in DC Holdings,
see Pls.' Rule 56.1 ¶ 47, but Defendants
maintain that Mangan still owns his 10% share because he has
not received any consideration for sale of his membership
interest. Defs.' Rule 56.1 Resp. ¶ 47.
Eleftheria Restaurant Corp. and the Astoria Don Coqui
is a corporation organized and existing under the laws of the
State of New York with a principal place of business at 2818
31st Street, Queens, New York. Id. ¶ 5. Mitsios
and Mangan are principals of Eleftheria. Pls.' Rule 56.1
¶¶ 7-8. In 2008, as they were planning the New
Rochelle Don Coqui, Jimmy, Jaleene and Jewelle Rodriguez and
Mangan planned with Mitsios to simultaneously convert
Mitsios' then-existing “Zodiac” Greek
restaurant in Astoria into a second Don Coqui restaurant.
Defs.' Rule 56.1 ¶¶ 19, 53, 54. As a part of
the conversion, Mangan invested $50, 000 in Eleftheria.
Id. ¶ 55. Eleftheria incurred substantial sums
in connection with the work necessary for the conversion,
including filings with the Secretary of State and State
Liquor Authority, and changing the signage and physical
structure of the restaurant to conform with the design of the
New Rochelle Don Coqui. Id. ¶ 56.
has never been any written license agreement relating to the
use of the Don Coqui Mark at the Astoria location. Pls.'
Rule 56.1 ¶ 49. In October of 2011, the Don Coqui
Astoria location opened. Id. ¶ 52. Both
Rodriguez and Jaleene were on Eleftheria's payroll.
Id. ¶ 55. Defendant Eleftheria made some
payments to Privado, but the parties dispute the purpose of
the payments and, specifically, whether they were licensing
royalty payments for the use of the Don Coqui Mark.
Id. ¶ 54; Defs.' Rule 56.1 Resp. ...