Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1049903
`
`Filing date:
`
`04/17/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88164367
`
`Lake Effect Ice Cream, LLC
`
`Applied for Mark
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`LAKE EFFECT ARTISAN ICE CREAM
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`Correspondence
`Address
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`ELLEN S. SIMPSON
`SIMPSON & SIMPSON, PLLC
`5555 MAIN STREET
`WILLIAMSVILLE, NY 14221
`UNITED STATES
`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com, trade-
`markefs@idealawyers.com
`716-626-1564
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Applicant's Motion to Suspend
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`LKET102US_Motion to Suspend 04-17-2020.pdf(98245 bytes )
`LKET102US_Attorney Declaration 04-17-2020.pdf(124673 bytes )
`Exhibit 1 04-17-2020.pdf(470112 bytes )
`Exhibit 2 04-17-2020.pdf(320723 bytes )
`
`Ellen S. Simpson
`
`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com
`
`/Ellen S. Simpson/
`
`04/17/2020
`
`

`

`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of US. Trademark Application Serial No. 88164367
`
`Applicant:
`
`Lake Effect Ice Cream, LLC
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` Mark:
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`APPLICANT’S MOTION TO SUSPEND PROCEEDINGS
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`Applicant, Lake Effect Ice Cream, LLC (“Applicant”), by and through its counsel
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`Simpson & Simpson, PLLC, hereby moves to suspend proceedings on its ex parte appeal, filed
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`February 21, 2020, pursuant to 37 C.F.R. § 2.117(a) and TBMP 1213(1).
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`Attached is a Declaration in support of Applicant’s Motion to Suspend Proceedings,
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`along with attached Exhibit A, which is a copy of a Complaint filed on February 21, 2019, and
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`Exhibit B, which is a copy of the Answer and Counterclaims filed on March 29, 2019, both of
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`which are pleadings filed in the action 199 Delaware Avenue, Inc. v. Lake Eflect Artisan Ice
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`Cream, et al. Civil Action No. 1:19-cv-00224, currently pending in the United States District
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`Court, Western District of New York.
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`In the Complaint, Plaintiff, 199 Delaware Avenue, Inc., the owner of US. Service Mark
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`Registration No. 3185742 which has been cited against Applicant’s pending application, alleges
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`that Registrant’s mark and Applicant’s mark are confusingly similar. Applicant has filed a
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`counter-claim in the civil action seeking cancellation of Registrant’s registration. The outcome
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`of this action directly relates to the issue of any likelihood of confusion between Applicant’s
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`

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`mark and Registrant’s mark, which is the subject of the appeal now pending on this application
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`before the Board, and to the cancellation of Registrant’s registration, which is the registration
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`cited against Applicant’s pending application to register its mark.
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`As the final determination of the pending civil action may have a bearing on the issues
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`before the Board, Applicant respectfully requests that the Board grant Applicant’s Motion to
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`Suspend the Proceedings on Applicant’s ex parte appeal pending the resolution of the civil
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`action.
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`Respectfully submitted,
`
`Ellen S. Slmgson E
`
`Attorney for Applicant
`Simpson & Simpson PLLC
`5555 Main Street
`
`Williamsville, New York 14221
`(tel) 716-626-1564
`(fax) 716-626-0366
`(email) esimQsongaiidealawyerscom
`
`DATED: April 17, 2020
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`

`

`CERTIFICATION UNDER 37 C.F.R. §1.8
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`this MOTION TO SUSPEND PROCEEDINGS is being filed
`I hereby certify that
`electronically with the United States Patent and Trademark Office utilizing the Electronic System
`for Trademark Trials and Appeals on this 17th day of April, 2020.
`
`“Ellen s. 31%]?ng
`
`
`
`Attorney for Applicant
`Simpson & Simpson PLLC
`5555 Main Street
`
`Williamsville, New York 14221
`(tel) 716-626-1564
`(fax) 716-626-0366
`(email) esimpsongcbidealawyers.com
`
`

`

`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of US. Trademark Application Serial No. 88164367
`
`Applicant:
`
`Lake Effect Ice Cream, LLC
`
` Mark:
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`ATTORNEY DECLARATION IN SUPPORT OF APPLICANT’S MOTION TO
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`SUSPEND PROCEEDINGS
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`1, Ellen S. Simpson, declare under penalty of perjury under the laws of the United States
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`of America, pursuant to 28 U.S.C. § 1746, that the following is true and correct:
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`1.
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`I am a member of SIMPSON & SIMPSON PLLC, counsel of record for Applicant, Lake Effect
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`Ice Cream, LLC. As such, I am fi111y familiar with this matter based upon a review of the file
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`maintained in my office.
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`2.
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`I submit this affirmation in support of Applicant’s Motion to Suspend Proceedings pursuant to
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`37 C.F.R. § 2.117(a) and TBMP 1213(1). .
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`3. Applicant filed an application to register its mark for use in association with ice cream and
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`frozen confections, in International Class 30, and scoop shops in the nature of ice cream and
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`frozen confection parlor services for consumption on and off the premises, in International Class
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`

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`43, on October 22, 2018. The application identifies the date of first use of the mark anywhere as
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`June 28, 2008, and date of first use of the mark in commerce as November 29, 2013 for the
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`goods identified in International Class 30, and the date of first use of the mark anywhere and in
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`commerce as June 4, 2011 for the services identified in International Class 43.
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`. Applicant’s application for registration was initially approved for publication, but the approval
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`was withdrawn and an Office Action refusing registration was issued on February 8, 2019
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`alleging a likelihood of confusion with the mark which is the subject of U.S. Service Mark
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`Registration No. 3185742. The Examining Attomey issued a Final Office Action refusing
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`registration on August 22, 2019. Applicant filed the instant Notice of Appeal on February 21,
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`2020.
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`. A Complaint alleging various claims related to the likelihood of confusion of Applicant’s mark
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`with Plaintiffs registered mark, U.S. Service Mark Registration No. 3185742 was filed on
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`February 21, 2019 in the United States District Court, Western District of New York, as See 199
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`Delaware Avenue, Inc. v. Lake Effect Artisan Ice Cream, et al. Civil Action No. 1:19-cv-00224.
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`See Exhibit A, Complaint, dated February 21, 2019. Applicant, the Defendant in that action,
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`filed its Answer and a Counterclaim seeking to cancel U.S. Service Mark Registration No.
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`3185742 on March 29, 2019. See Exhibit B, Answer and Counterclaim, dated March 29, 2019.
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`The issues identified in the Complaint, namely, the likelihood of confusion between Applicant’s
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` have a bearing on the issues before the
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`

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`Board in relation to the pending appeal. Specifically, the court’s decision on whether there is a
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`likelihood of confusion between the marks has a bearing on this same issue which is before the
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`Board. In addition, the court’s decision on Applicant’s counterclaim to cancel Registrant’s mark
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`has a bearing on the issue which is before the Board as, if Registrant’s registration is cancelled, it
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`will no longer be a bar to the registration of Applicant’s mark.
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`. Under TBMP 1213(a), if the applicant is involved in a civil action that may be dispositive of the
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`issue(s) involved in the appeal, the Board may suspend the appeal pending final determination of
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`the civil action.
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`. Based on Applicant’s Motion, this Declaration, and the attached Exhibits, Applicant respectfillly
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`requests that the Motion to Suspend the appeal be granted.
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`I declare under penalty of perjury pursuant to 28 U.S.C. § 1746 that the foregoing is true and
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`correct.
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`Executed on: Q fig :[/1 30510
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`i H g d! £§L$
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`LLEN S. SIMP ON
`
`

`

`U.S. Trademark Application Serial No. 88164367
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`Mark:
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`
`
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`EXHIBIT 1
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`

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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 1 of 23
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`COMPLAINT
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`DEMAND FOR JURY TRIAL
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`Civil Action No. 19-cv-00224
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`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`_____________________________________________
`
`
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`199 DELAWARE AVENUE, INC.,
` Plaintiff,
`
` v.
`
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`LAKE EFFECT ARTISAN ICE CREAM, and
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`LAKE EFFECT ICE CREAM HERTEL, LLC, and
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`LAKE EFFECT ICE CREAM, LLC, and
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`LAKE EFFECT ICE CREAM WHOLESALE, LLC, and,
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`LAKE EFFECT CANAL STREET, LLC,
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` Defendants.
`_____________________________________________
`
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`Plaintiff 199 DELAWARE AVENUE, INC., (“Plaintiff”), by and through its attorneys,
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`KLOSS, STENGER & LOTEMPIO, as and for its Complaint against Defendants, LAKE
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`EFFECT ARTISAN ICE CREAM, LAKE EFFECT ICE CREAM HERTEL, LLC, LAKE
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`EFFECT ICE CREAM, LLC, LAKE EFFECT ICE CREAM WHOLESALE, LLC, and LAKE
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`EFFECT CANAL STREET, LLC (collectively hereinafter “Defendant” or “Defendants”),
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`alleges upon information and belief:
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`PARTIES
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`1. Plaintiff is a domestic corporation duly organized and existing under the laws of the State
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`of New York, with its principal place of business located at 3165 Main St., Buffalo, NY, 14214.
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`Plaintiff filed a fictitious name certificate on December 24, 2002 with the Erie County Clerk’s
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`office to conduct business under the fictitious name “LAKE EFFECT DINER.” Thereafter,
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`Plaintiff has done business under that name continuously.
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`
`
`1
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`

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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 2 of 23
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`2. Upon information and belief, Defendant LAKE EFFECT ARTISAN ICE CREAM is an
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`unregistered business that transacts business under the fictitious name of “LAKE EFFECT
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`ARTISAN ICE CREAM.” Upon information and belief, Defendant resides and transacts
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`business within the State and District, with its principal offices located within Niagara County.
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`3. Upon information and belief, Defendant LAKE EFFECT ICE CREAM HERTEL, LLC is
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`a domestic limited liability company of the State of New York, and transacts business under the
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`fictitious name of “LAKE EFFECT ARTISAN ICE CREAM.” Defendant resides and transacts
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`business within the State and District, with its principal office located within Niagara County.
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`4. Upon information and belief, Defendant LAKE EFFECT ICE CREAM, LLC is a
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`domestic limited liability company of the State of New York, and transacts business under the
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`fictitious name of “LAKE EFFECT ARTISAN ICE CREAM.” Defendant resides and transacts
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`business within the State and District, with its principal office located within Niagara County.
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`5. Upon information and belief, Defendant LAKE EFFECT ICE CREAM WHOLESALE,
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`LLC is a domestic limited liability company of the State of New York, and transacts business
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`under the fictitious name of “LAKE EFFECT ARTISAN ICE CREAM.” Defendant resides and
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`transacts business within the State and District, with its principal office located within Niagara
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`County.
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`6. Upon information and belief, Defendant LAKE EFFECT CANAL STREET, LLC is a
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`domestic limited liability company of the State of New York, and transacts business under the
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`fictitious name of “LAKE EFFECT ARTISAN ICE CREAM.” Defendant resides and transacts
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`business within the State and District, with its principal office located within Niagara County.
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`7. Upon information and belief, Defendants LAKE EFFECT ARTISAN ICE CREAM,
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`LAKE EFFECT ICE CREAM HERTEL, LLC, LAKE EFFECT ICE CREAM, LLC, LAKE
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`
`
`2
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`

`

`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 3 of 23
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`
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`EFFECT ICE CREAM WHOLESALE, LLC, and LAKE EFFECT CANAL STREET, LLC
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`share the same or substantially the same owners, members, directors, officers and engage in the
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`same or related enterprises. Accordingly, these defendants are alter egos that exercise dominion
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`and control over each other, and are therefore collectively referred to as “Defendants.”
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`JURISDICTION
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`8. This is an action for, inter alia, Trademark Infringement under 15 U.S.C. § 1114, Unfair
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`Competition (False Designation Of Origin, False Advertising) in violation of Section 43(a) of the
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`Lanham Act, 15 U.S.C. 1125(a); as well as New York Unfair Competition, Trademark Dilution
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`under 15 U.S.C. § 1125, Deceptive Business Practices, Use of Business Name With Intent To
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`Deceive, New York Trademark Dilution, and common law trademark infringement.
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`9. This Court has subject matter jurisdiction over this action under 15 U.S.C. § 1121 and 28
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`U.S.C. §§ 1331 and 1338.
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`10. All New York state law claims alleged herein arise under the same nucleus of operative
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`facts as the federal causes of action, and are therefore part of the same case or controversy as the
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`federal causes of action. Accordingly, the Court has supplemental jurisdiction over Plaintiff’s
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`state law claims under 28 U.S.C. § 1367.
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`11. Defendants all reside and transact business within this District and Defendant’s wrongful
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`acts were committed in this District. Among other things, Defendants have advertised its services
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`using infringing marks on Defendants’ website, Facebook, and business in this State and District,
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`as well as elsewhere online. Thus, this Court has personal jurisdiction over Defendants.
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`VENUE
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`12. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 as both the Plaintiff and the
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`Defendants may be found and transact business in this District, and a substantial part of the
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`
`
`3
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`

`

`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 4 of 23
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`
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`events giving rise to the claims alleged herein occurred and are continuing to occur in this
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`District.
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`COUNT I
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`TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114
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`13. Plaintiff repeats and incorporates by reference all previous allegations contained within
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`this Complaint.
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`14. Plaintiff’s “LAKE EFFECT DINER” is one of the last authentic Fifties era dining car-
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`style diners left in America.
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`15. With 25 flavors of old-fashioned milkshakes, ice cream, vegan ice cream, ice cream
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`cakes, and a hearty menu of home favorites, the LAKE EFFECT DINER has become a popular
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`destination for locals and for travelers to the Western New York area.
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`16. Plaintiff’s owner and proprietor has been making milkshakes and selling ice cream at this
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`location, which also houses the LAKE EFFECT DINER’s sister restaurant, “THE STEER,”
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`since the early 1990s.
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`17. Plaintiff has undertaken great efforts to secure the positive reputation of the business
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`name, “LAKE EFFECT DINER,” by ensuring high quality food and customer service.
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`18. Plaintiff has registered on the Principal Register of the United States Patent and
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`Trademark Office (“USPTO”) the trademark comprised of both the words “LAKE EFFECT
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`DINER” (Plaintiff’s “Word Mark”) and certain corresponding design elements (Plaintiff’s
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`“Design Mark(s)”), as USPTO Registration No. 3185742 (collectively, Plaintiff’s “Mark” or
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`“Marks”). A copy of the Certificate of Registration is annexed hereto as EXHIBIT “A”.
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`19. Plaintiff has utilized the Mark in connection with its services, which include but are not
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`limited to “services for providing food and drink, namely, restaurant, coffee shop service,
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`
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`4
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`

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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 5 of 23
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`banquet-style serving of food and drinks, and catering and take-out restaurant services,” since as
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`early as January 31, 2002 anywhere, and since at least as early as November 30, 2003 in
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`commerce.
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`20. As a result of Plaintiff’s continuous and extensive use of the Plaintiff’s Mark for over
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`sixteen years, the Plaintiff’s Mark has acquired secondary meaning.
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`21. An affidavit has been filed, acknowledged, and accepted by the USPTO pursuant to
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`Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and the federal registration
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`for the Mark is incontestable. A copy of Plaintiff’s Statement of Incontestability is annexed
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`hereto as EXHIBIT “B”.
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`22. Plaintiff has utilized the Mark in its advertising, through newspapers and other print
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`media, as well as internet promotion, via mediums including but not limited to Facebook and
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`Plaintiff’s website page.
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`23. Plaintiff’s Mark has gained nationwide recognition as a result of the Food Network
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`featuring Plaintiff’s restaurant and services on Guy Fieri’s “Diners, Drive Ins, and Dives”
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`(Season 7, Episode 13), which first aired on November 16, 2009.
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`24. Plaintiff’s Mark and services have been featured on “Come Dine With Me ---WNY,” a
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`television series that spotlights western New York restaurants.
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`25. Plaintiff’s Mark and services have come to represent high quality food and drinks along
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`with excellent restaurant services.
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`26. Upon information and belief, Defendants are doing business using the name “LAKE
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`EFFECT ARTISAN ICE CREAM” in connection with restaurant and food services throughout
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`Western New York.
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`5
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 6 of 23
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`27. Upon information and belief, Plaintiff and Defendants provide similar and/or identical
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`services.
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`28. Upon information and belief, Defendants have caused Defendants’ infringing marks to be
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`utilized commerce in connection with food products for which they sell and distribute to local
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`retailers.
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`29. Upon information and belief, Defendants have also utilized the fictitious name “LAKE
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`EFFECT ARTISAN ICE CREAM” in commerce through its promotion on the internet via
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`mediums including but not limited to Facebook, YouTube, and Defendant’s website page.
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`30. Upon information and belief, Defendants have caused the misrepresentations to enter
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`interstate commerce by advertising its services online.
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`31. Upon information and belief, Plaintiff and Defendants are using substantially similar
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`word and design marks in connection with such services.
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`32. Defendants’ actions in adopting word and design marks that are confusingly similar to
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`Plaintiff’s Mark have caused actual confusion and are likely to cause further confusion in the
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`marketplace with respect to the origin of services.
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`33. Actual consumers have stated that they believed that the Defendant’s business is
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`associated with the Plaintiff or that the Defendants’ and the Plaintiff’s businesses are one in the
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`same.
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`34. Several consumers have stated that they believe that the Defendants’ business is
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`associated with Plaintiff’s business since the Defendants’ mark is so similar to Plaintiff’s Mark.
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`But, the similarity of the marks is only one reason why consumers are actually confused as to the
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`source of the respective goods and services.
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`6
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`

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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 7 of 23
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`35. Additionally, several consumers have stated that they were confused, since both the
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`Plaintiff’s and Defendants’ places of business are so close in proximity to each other.
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`Defendants’ business is located less than a mile from Plaintiff’s business.
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`36. Upon information and belief, on October 22, 2018, Defendants filed two applications
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`with the United States Patent and Trademark Office one for the word mark “LAKE EFFECT
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`ARTISAN ICE CREAM” in standard characters, and the other for the words “LAKE EFFECT
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`ARTISAN ICE CREAM” plus design. Copies of Defendants’ respective trademark applications
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`are annexed hereto as EXHIBIT “C” and EXHIBIT “D” respectively.
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`37. Upon information and belief, on February 8, 2019, the USPTO issued an Office Action
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`refusing to register Defendants’ proposed trademarks, based upon a “Likelihood of Confusion”
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`with Plaintiff’s “LAKE EFFECT DINER” registered trademark. Copies of the USPTO’s Office
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`Actions (hereinafter “Office Actions”)_ are annexed hereto as EXHIBIT “E” and EXHIBIT
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`“F” respectively.
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`38. Plaintiff has priority of use of the trademark, as Plaintiff’s first use of its Marks in
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`International Class 043 predates Defendants’ alleged first use of Defendants’ marks in said class
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`by several years.
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`39. Defendants’ continued trademark infringement is likely to cause continued confusion,
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`mistake, or deception amongst consumers as to the origin, sponsorship, or approval of
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`Defendants’ services because of the similarity of Defendants’ marks with Plaintiff’s Word Mark
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`and Design Marks, as shown below:
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`Plaintiff’s Word Mark
`“LAKE EFFECT DINER”
`First Use Anywhere: January 31, 2002
`(IC 043)
`First Use in Commerce: November 30, 2003
`(IC 043)
`
`Defendants’ Word Mark
`“LAKE EFFECT ARTISAN ICE CREAM”
`First Use Anywhere: June 4, 2011
`(IC 043)
`First Use in Commerce: June 4, 2011
`(IC 043)
`
`
`
`7
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`

`

`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 8 of 23
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`
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`Plaintiff’s Design Mark 1
`First Use Anywhere: January 31, 2002
`(IC 043)
`First Use in Commerce: November 30, 2003
`(IC 043)
`
`Defendants’ Design Mark 1
`First Use Anywhere: June 4, 2011
`(IC 043)
`First Use in Commerce: June 4, 2011
`(IC 043)
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`
`
`
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`
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`40. Defendants have also been utilizing the following design mark 2 on the exterior of their
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`storefronts and design mark 3 on their vehicles. A copy of a photograph of the exterior logo of
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`the storefront and vehicles are attached hereto as EXHIBIT “G” and EXHIBIT “H”
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`respectively.
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`41. A photo of the exterior signage of Plaintiff’s restaurant is depicted as “Plaintiff’s Design
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`Mark 2” below and is attached as EXHIBIT “I”.
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`8
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 9 of 23
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`Plaintiff’s Design Mark 2
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`Defendants’ Design Mark 2
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`Plaintiff’s Design Mark 2
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`Defendants’ Design Mark 3
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`
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`42. “Consumers are generally more inclined to focus on the first word, prefix, or syllable in
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`any trademark or service mark.” 1 Referring to the word marks, both the Plaintiff’s Word Mark
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`and the Defendants’ infringing word mark have the same first two words, which is LAKE
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`EFFECT. Moreover, for both marks, there are descriptive words following LAKE EFFECT that
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`denote a food service: the Plaintiff’s Mark contains the word “DINER” after LAKE EFFECT
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`while the infringing mark contains the words “ARTISAN ICE CREAM” after LAKE EFFECT2.
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`“Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is
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`1 Office Actions, at pg. 3.
`2 Both “DINER” and “ARTISAN ICE CREAM” have been disclaimed by the respective parties.
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`
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`9
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`

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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 10 of 23
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`
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`typically less significant or less dominant when comparing marks.”3 The primary, non-
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`descriptive element, namely, “LAKE EFFECT,” is identical between both marks.
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`43. “[T]he marks are confusingly similar for purposes of a likelihood of confusion
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`analysis.”4Thus, it is likely that consumers will be confused as to the source of the respective
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`services, and consumers actually have been confused as to the source of respective services.
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`44. Referring to Plaintiff’s Design Mark 1 and 2, and Defendants’ Design Marks 1, 2, and 3,
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`the marks incorporate the primary literal element of the words “LAKE EFFECT” into their
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`design schemes. Plaintiff’s use of its Marks predates Defendants’ use of Defendants’ marks.
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`Thus, the Defendants’ Design Mark 1 and 2 infringe upon Plaintiff’s Design Mark and cause a
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`likelihood of confusion.
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`45. Referring to Plaintiff’s Design Marks 1 and 2, and Defendants’ Design Marks 2 and 3,
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`both marks have the same identical first two words, LAKE EFFECT. Moreover, the words
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`LAKE EFFECT are written in a certain stylistic cursive format for both marks, in very similar
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`fonts. Further, both the first letters of the first two words are capitalized, with the “L” in “Lake”
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`and the “E” in “Effect.” Additionally, the subsequent words following LAKE EFFECT are both
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`written in a block formatting with all capitalized letters. Thus, the similarity of the marks is
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`likely to, and actually does, result in consumer confusion.
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`46. Upon discovering the infringing nature of Defendants’ conduct, Plaintiff, through its
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`corporate counsel sent a cease and desist letter to Defendant on August 18, 2017. A copy of
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`Plaintiff Counsel’s cease and desist letter is annexed hereto as EXHIBIT “J”.
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`47. Subsequent to receiving the cease and desist letter, Defendants’ attorneys engaged
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`Plaintiff’s attorneys in settlement negotiations that spanned the course of several months, but
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`3 Office Actions, at pg. 3.
`4 Office Actions, at pg. 4.
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 11 of 23
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`ultimately proved unsuccessful. Accordingly, that breakdown in settlement negotiations and the
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`continued willful infringement by Defendants is what precipitated the instant lawsuit.
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`48. Upon information and belief, after such notice by Plaintiff of the ongoing infringement
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`and the demand by Plaintiff to cease and desist, Defendants continue to market and provide its
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`services using Plaintiff’s Marks as of the date hereof.
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`49. Upon information and belief, Defendants are knowingly and willingly continuing their
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`unauthorized use of a confusingly similar name and design mark to intentionally deceive
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`consumers in the marketplace and to trade off the valuable goodwill of Plaintiff’s Marks and
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`reputation.
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`50. Affiliation and connection with Plaintiff’s Marks and good name is precisely the
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`implication, and the intent, of Defendants’ false designation. Consumers view this purposefully
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`disseminated, clearly confusing misinformation in the marketplace and are getting, and will
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`continue to get the false impression that Defendants’ services originate from Plaintiff. Confusion
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`and deception is further enhanced by the fact that Defendants offer the same type of services as
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`Plaintiff, namely, restaurant and food services. Thus, consumers are more likely to, and will in
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`fact believe, the false designation of origin put forth by Defendants.
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`51. The geographic proximity of Defendants’ business to Plaintiff’s business, less than one
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`mile away, further contributes to the confusion of the consumer. “Indeed, it is highly likely,
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`particularly given the geographic proximity of applicant and registrant, that consumers would
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`perceive the [Defendants’] ice cream shop and goods as a spin-off directly associated with the
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`[Plaintiff’s] diner of the same name.”5
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`52. Plaintiff has suffered and continues to suffer irreparable harm from Defendants’ actions
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`and bad faith conduct as customers have been, and continue to be misled into thinking that
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`5 Office Actions, at pg. 4.
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 12 of 23
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`Defendants’ services actually originate under and are associated with Plaintiff’s Marks. Plaintiff
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`thus seeks and is entitled to a preliminary and permanent injunction restraining the false
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`designation and associated acts of Defendant
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`including,
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`inter alia, advertisements,
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`communications, and statements directly or indirectly asserting origin of Defendants’ services
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`under Plaintiff’s Marks. Plaintiff also seeks Defendants’ profits, income, or other gains accrued
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`from Defendants’ misconduct, as well as Plaintiff’s pecuniary damages resulting from
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`Defendants’ actions, and Plaintiff’s costs of bringing suit. Additionally, the present case is an
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`exceptional one warranting the award of attorneys’ fees to Plaintiff.
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`COUNT II
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`UNFAIR COMPETITION UNDER 15 U.S.C. § 1125 (FALSE DESIGNATION OF
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`ORIGIN, FALSE ADVERTISING)
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`53. Plaintiff repeats and incorporates by reference all previous allegations contained within
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`this Complaint.
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`54. The bad faith conduct of Defendants, as alleged above, has caused actual confusion in
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`which consumers are misled to believe that Defendants’ services originate under and are
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`associated with Plaintiff’s Marks.
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`55. Upon information and belief, Defendants are knowingly and willingly continuing their
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`unauthorized use of a confusingly similar name and design mark to intentionally deceive
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`consumers in the marketplace and to trade off the valuable goodwill of Plaintiff’s Marks and
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`reputation.
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`56. Affiliation and connection with Plaintiff’s Marks and good name is precisely the
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`implication, and the intent, of Defendants’ false designation of origin. Consumers view this
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`purposefully disseminated, clearly confusing misinformation in the marketplace and are getting,
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`
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 13 of 23
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`and will continue to get the false impression that Defendants’ services originate from Plaintiff.
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`Confusion and deception is further enhanced by the fact that Defendants offer the same type of
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`services as Plaintiff, namely, restaurant and food services. This means that consumers are more
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`likely to, and will in fact believe, the false designation of origin put forth by Defendants.
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`57. Plaintiff has suffered and continues to suffer irreparable harm from Defendants’ false
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`designation of origin as customers have been, and continue to be misled into thinking
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`Defendants’ services actually originate under and are associated with Plaintiff’s Marks. Plaintiff
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`thus seeks and is entitled to a preliminary and permanent injunction restraining the false
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`designation and associated acts of Defendants
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`including,
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`inter alia, advertisements,
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`communications, and statements asserting origin of Defendants’ services under Plaintiff’s Marks.
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`Plaintiff also seeks Defendants’ profits, income, or other gains accrued from Defendants’
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`misconduct, as well as Plaintiff’s pecuniary damages resulting from Defendants’ actions, and
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`Plaintiff’s costs of bringing suit. Additionally, the present case is an exceptional one warranting
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`the award of attorneys’ fees to Plaintiff.
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`COUNT III
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`TRADEMARK DILUTION UNDER 15 U.S.C. § 1125
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`58. Plaintiff repeats and incorporates by reference all previous allegations contained within
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`this Complaint.
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`59. Plaintiff’s Marks have gained nationwide recognition, which increased after Food
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`Network ® featured Plaintiff’s restaurant and services on Guy Fieri’s “Diners, Drive Ins, and
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`Dives” (Season 7, Episode 13), which first aired on November 16, 2009.
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`60. Plaintiff’s Marks and services have also been featured on “Come Dine With Me ---
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`WNY,” a television series that spotlights western New York restaurants.
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 14 of 23
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`61. Through Food Network and other various entertainment media platforms, Plaintiff’s
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`Marks have acquired fame.
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`62. Defendants’ actions and bad faith conduct results in a likelihood of injury to Plaintiff’s
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`business reputation.
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`63. There has been actual dilution of the distinctive quality of Plaintiff’s Marks, through
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`which Plaintiff has generated the goodwill of the public, by Defendants’ actions of blurring and
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`tarnishment.
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`64. As a proximate result of Defendants’ actions, Plaintiff has suffered pecuniary damage,
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`loss of goodwill, injury to business reputation, and other damages.
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`65. Plaintiff is thus entitled to and hereby requests a preliminary and permanent injunction
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`restraining the Defendants’ unfair competition, including without limitation, all of Defendants’
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`business activities in which Defendants utilizes Plaintiff’s Marks, as well as efforts to solicit
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`Plaintiff’s customers in connection with any reference to the subject marks.
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`COUNT IV
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`NEW YORK UNFAIR COMPETITION
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`66. Plaintiff repeats and incorporates by reference all previous allegations contained within
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`this Complaint.
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`67. The bad faith conduct of Defendants, as alleged above, has caused actual confusion to
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`consumers and agents in the marketplace in which consumers are misled to believe that
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`Defendants’ services originate under and are associated with Plaintiff’s Marks.
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`68. Defendants’ nearly identical name, as well as its adoption of a confusingly similar design
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`mark, evinces Defendants’ intention to capitalize on Plaintiff’s reputation, goodwill, and
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`promotion by furthering and exploiting confusion amongst consumers.
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`Case 1:19-cv-00224 Document 1 Filed 02/21/19 Page 15 of 23
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`69. Based on Defendants’ unlawful use of Plaintiff’s Marks and related misconduct,
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`Defendants have engaged, and continue to engage in unfair competition and unlawful
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`appropriation of Plaintiff’s customers, market share, sales, revenues, profits, income, goodwill,
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`and other business value.
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`70. As a proximate result of Defendants’ unfair competition, Plaintiff has suffered pecuniary
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`damage, loss of goodwill, and other damages.
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`71. In addition, Defendants’ unfair competition will cause further irreparable harm if
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`Defendants are not restrained by this Court from further violation of Plaintiff’s rights. Plaintiff
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`has no adequate remedy at law for all of the harm being caused to it, particularly with respect to
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`the loss of Plaintiff’s goodwill and mar