United States District Court, S.D. New York
I.O.B. REALTY, INC., Plaintiff,
PATSY'S BRAND, INC. and JOHN DOES 1-10, Defendants.
OPINION & ORDER
L. STANTON U.S.D.J.
Patsy's Brand, Inc. ("Patsy's Brand")
moves, pursuant to Fed.R.Civ.P. 12(b)(6), to dismiss I.O.B.
Realty, Inc.'s ("IOB Realty") complaint
alleging trademark infringement for failure to state a claim
upon which relief can be granted.
reasons that follow, the motion is denied.
complaint (Dkt. No. 1) alleges the following:
Realty is a New York corporation based in New York City.
Id. ¶ 2. IOB Realty and its predecessors have
continuously used the mark PATSY'S PIZZERIA for
restaurant services since 1933. Id. ¶ 13. IOB
Realty licenses the mark PATSY'S PIZZERIA to its
Patsy's Pizzeria franchisees for use in restaurant
services in the New York metropolitan area. Id.
¶¶ 2, 12-13. IOB Realty obtained U.S. Trademark
Registration Number 2, 213, 574 for the mark PATSY'S
PIZZERIA, but as a result of what IOB Realty alleges was
"shenanigans" engaged in by Patsy's Brand's
counsel, that registration was canceled. Id. ¶
Brand is a New York corporation based in New York City.
Id. ¶ 3. Patsy's Brand uses and licenses
the marks PATSY'S OF NEW YORK and PATSY'S OF NEW YORK
ITALIAN RESTAURANT for restaurant services in New York.
Id. ¶ 4. Patsy's Brand obtained U.S.
Trademark Registration Number 3, 090, 551 for the mark
PATSY'S OF NEW YORK. Id. ¶ 11. Use of IOB
Realty's mark PATSY'S PIZZERIA predates use of
Patsy's Brand's mark PATSY'S OF NEW YORK.
Id. ¶ 21.
Trademark Office has denied two IOB Realty applications to
register the mark PATSY'S PIZZERIA for restaurant
services and franchising services because of Patsy's
Brand's registration for the mark PATSY'S OF NEW
YORK. Id. ¶ 17.
consolidated action brought in United States District Court
for the Eastern District of New York by Patsy's Brand and
non-party Patsy's Italian Restaurant, Inc.
("Patsy's Italian Restaurant"), in which IOB
Realty was a defendant, Judge Irizarry ordered the
restoration of "I.O.B. Realty, Inc.'s U.S. Trademark
Registration No. 2, 213, 574 for non-stylized rendition of
PATSY'S PIZZERIA for restaurant services." See
Patsy's Italian Rest., Inc. v. Banas, 508 F.Supp.2d
194, 221 (E.D.N.Y. 2007). The U.S. Patent and Trademark
Office did not restore the registration at that time,
choosing to await final disposition of the case. Compl.
ruling on a post-trial motion in that action, Magistrate
Judge Reyes declined IOB Realty's invitation to order the
cancelation of Patsy's Brand's registration for the
mark PATSY'S OF NEW YORK. Id. ¶ 15.
an appeal, Judge Reyes ordered that Patsy's Brand and
Patsy's Italian Restaurant "are required to refer to
their restaurant services using the mark PATSY'S ITALIAN
RESTAURANT" and IOB Realty and its Patsy's Pizzeria
franchisees "are required to refer to their pizzeria
services using the mark PATSY'S PIZZERIA." IcL
¶ 16; see Exhibit H to Defendant's Brief (Dkt. No.
12-8) at 4, quoting Patsy's Italian Rest., Inc. v.
Banas, 575 F.Supp.2d 427, 470-71 (E.D.N.Y. 2008),
aff'd, 658 F.3d 254 (2d Cir. 2011).
Realty sought an order from Judge Reyes holding Patsy's
Brand in contempt for continuing to use the mark PATSY'S
OF NEW YORK despite being ordered to use the mark PATSY'S
ITALIAN RESTAURANT. Compl. ¶ 18. In a hearing on that
application held on January 6, 2015, Judge Reyes reemphasized
his prior order that Patsy's Brand was to use the mark
PATSY'S ITALIAN RESTAURANT and Patsy's Pizzeria was
to use the mark PATSY'S PIZZERIA. Id.;
see Exhibit 4 to the Complaint (Dkt. No. 1-4).
Patsy's Brand argued that disputes over the mark
PATSY'S OF NEW YORK were beyond the scope of that case.
Judge Reyes referred the matter to a special master who
recommended against holding Patsy's Brand in contempt,
noting, among other things, that "Plaintiffs
[Patsy's Brand and Patsy's Italian Restaurant]
apparently are not using the mark PATSY'S OF NEW
YORK." Compl. ¶ 18; see Exhibit H to
Defendant's Brief at 13-14. Accepting the special
master's recommendation, Judge Reyes did not issue the
requested contempt order. Compl. ¶ 18.
registration for the mark PATSY'S OF NEW YORK was set to
expire on May 19, 2016, and IOB Realty expected that the
expiration would enable it to register its mark PATSY'S
PIZZERIA. Id. ¶ 19. However, on August 5, 2016,
after Patsy's Brand asserted that it was still using the
mark PATSY'S OF NEW YORK in interstate commerce, the
Trademark Office renewed the registration for that mark; with
limited exception, renewing a trademark registration requires
proof that the mark is in use in interstate commerce.
Id. ¶¶ 19-20.
September 30, 2016, IOB Realty commenced this action
asserting that the continued use and the registration of the
mark PATSY'S OF NEW YORK by Patsy's Brand promotes
consumer confusion and infringes on its more senior mark
PATSY'S PIZZERIA in violation of section 43 of the Lanham
Act, 15 U.S.C. § 1125(a), and New York common law.
Id. ¶¶ 21-30. IOB Realty seeks, among
other things, compensatory and punitive damages to be
determined at trial, an order enjoining Patsy's Brand
from using the mark PATSY'S OF NEW ...