Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA297005
`ESTTA Tracking number:
`07/23/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050711
`Plaintiff
`Geisha LLC d/b/a JAPONAIS
`Joan L. Long
`Mayer Brown LLP
`P.O. Box 2828
`Chicago, IL 60690-2828
`UNITED STATES
`ipdocket@mayerbrown.com, jlong@mayerbrown.com
`Other Motions/Papers
`Jason L. White
`jlwhite@mayerbrown.com
`/Jason L. White/
`07/23/2009
`Petitioner's Status Report and Request for Stay.pdf ( 64 pages )(2794694 bytes
`)
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark Registration No. 3591621
`Registered: March 17, 2009
`For the mark: JAPONAIS (stylized)
`
`Geisha LLC, d/b/a JAPONAIS,
`
`Petitioner,
`
`V.
`
`Roy Tuccillo, an individual,
`
`Registrant.
`
`\./\Z\/\/\./\/\/€\J
`
`Cancellation No. 92050711
`
`PETITIONER’S STATUS REPORT AND
`
`REQ QUEST FOR STAY
`
`Geisha LLC d/b/a JAPONAIS (hereinafter “Petitioner”), hereby provides a confirmation
`
`of the current status of the litigation between Petitioner and Roy Tuccillo (“Registrant”).
`
`On April 14, 2009, Petitioner requested the Board to defer ruling on Registrant’s Motion
`
`to Suspend the present cancellation proceeding until the District Court for the Northern District
`
`of Illinois decided Petitioner’s Motion to Stay the civil action between the parties. On July 7,
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`2009, the district court dismissed the case without prejudice, upon Petitioner’s request, and
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`awarded Petitioner attorneys’ fees in the amount of $67,150.46 for Respondent’s “grossly
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`misleading” actions. A copy of the district court’s order and judgment are attached hereto as
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`Exhibit A.
`
`On May 12, 2009, while the case in the Northern District of Illinois was pending and
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`after this cancellation proceeding had been commenced, Registrant filed a complaint in the
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`Eastern District of New York alleging that Petitioner’s New York affiliate engaged in trademark
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`infringement, unfair competition, false designation of origin, trademark dilution, and
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`

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`cybersquatting. A copy of Registrant’s complaint is attached hereto as Exhibit B. Petitioner
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`filed an answer and counterclaims on June 18, 2009, seeking, in relevant part, cancellation of the
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`captioned registration (N0. 3591621) based on Registrant’s procurement of the mark through
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`fraudulent statements with the U.S. Patent and Trademark Office (USPTO) and Petitioner’s use
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`that pre—dated Registrant’s filing date and alleged use. A copy of Petitioner’s Answer,
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`Affirmative Defenses, and Counterclaims is attached hereto as Exhibit C.
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`On July 22, 2009, the District Court for the Eastern District of New York preliminarily
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`enjoined Registrant from further use of the captioned JAPONAIS (stylized) mark. A copy of the
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`district court’s order is attached hereto as Exhibit D. In its findings of fact, the district court
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`determined that Petitioner “demonstrated at the evidentiary hearing in an overwhelming fashion
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`that Tuccillo’s statements to the USPTO were false and that he submitted the registration with
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`the JAPONAIS mark copied from the defendants in a bad faith effort to “squat” on the mark in
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`order to capitalize on Geisha’s failure to register the mark. Thus, Geisha demonstrated a
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`likelihood of success on its counterclaims for cancellation of Tuccillo’s registration of the
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`JAPONAIS mark because of the false statements to the USPTO by Tuccillo and on its trademark
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`infringement claim as the senior user of the mark.” See Ex. D, at p. 3. Petitioner’s counterclaim
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`for cancellation remains pending before the Eastern District of New York.
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`

`
`WHEREFORE, Petitioner asks the TTAB to suspend the captioned proceedings until the
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`District Court for the Eastern District of New York rules on Petitioner’s counterclaim for
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`cancellation of Registrant’s registration.
`
`Respectfully submitted,
`
`GEISHA LLC
`
`
`
`P.
`
`. Box 2828
`
`Chicago, H. 60690-2828
`(312) 701-8607
`
`Attorney for Petitioner
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on July 23, 2009, a copy of the foregoing PETITIONER’S STATUS REPORT
`AND REQUEST FOR STAY, was served by prepaid, first class U.S. mail upon the following
`individuals at the following addresses:
`
`Roy Tuccillo
`P.O. Box 887
`
`Westbury, New York 11590
`
`Stewart J. Bellus
`
`Collard & Roe, PC.
`1077 Northern Blvd.
`
`Roslyn, New York 11576-1614
`
`Arnold L. Kert
`
`Arnold L. Kert, PLLC
`
`666 Old Country Road
`Garden City, NY 11530
`
`oan L. ong
`
`1485624
`
`

`
`Exhibit A
`
`

`
`Aomm (35a&s)ed1;]0§—.c (—.Q$§g9 Document 124
`Filed 07/09/2009
`Page 1 of1
`.
`CV.
`- LIE It?
`[[13 ,ll
`.6
`
`
`United States District Court
`
`Northern District of Illinois
`Eastern Division
`
`Geisha LLC
`
`JUDGMENT IN A CIVIL CASE
`
`v.
`
`Roy Tuccillo
`
`Case Number: 05 C 5529
`
`El
`
`I
`
`Jury Verdict. This action came before the Court for a trial by jury. The issues have been
`tried and the jury rendered its verdict.
`
`Decision by Court. This action came to trial or hearing before the Court. The issues
`have been tried or heard and a decision has been rendered.
`
`IT IS HEREBY ORDERED AND ADJUDGED that Geisha’s motion to stay is denied without
`prejudice. Pursuant to its March 1, 2006 order this court awards attorneys’ fees and expenses
`in favor of Geisha in the amount of $67,150.46. Tuccillo’s motion to strike is denied.
`
`Michael W. Dobbins, Clerk of Court
`
`Date: 7/7/2009
`
`/s/ Ena T. Ventura, Deputy Clerk
`
`

`
`.,,,,,,,,n,,,.,,,,,,,,_,,
`
`Case 1:O5~cv~05529 Document 123
`
`Filed 07/07/2009
`
`Page 1 of 3
`
`United States District Court, Northern District of Illinois
`
`
`
`
`
`7/7/2009
`
`
`
`CASE NUMBER
`
`CASE
`TITLE
`
`
`
`or Magistrate Judge
`
`'
`
`than Assigned Judge
`
`
`
`
`
`05 C 5529
`
`DATE
`
`Geisha LLC vs. Roy Tuccillo
`
`DOCKET ENTRY TEXT
`
`Geisha’s motion to stay [1 17] is denied without prejudice. Pursuant to its March 1, 2006 order [34], this court
`awards attorneys’ fees and expenses in favor of Geisha in the amount of $67,150.46. Tuccillo’s motion to
`strike [61] is denied. This case is dismissed without prejudice, to be reinstated, if appropriate, following
`completion of the TTAB cancellation proceeding. (For further details see minute order.)
`
`-[ For further details see text below.]
`
`D°°k°‘i”g to “"3” “°“°°5‘
`
`On September 26, 2005, Plaintiff Geisha, LLC, sued Defendant Roy Tuccillo for infringing a mark it uses in
`connection with a high—end Chicago restaurant. Through counsel, Tuccillo filed a verified answer, and
`verified amended answer, in early November. Then at his discovery deposition in January 2006, Tuccillo
`testified unequivocally that he had not signed the answer to the complaint in this case and had no knowledge
`that the answer had ever been filed. Tuccillo nevertheless made no effort at that time to withdraw the
`improper answer or amend it. When Plaintiff reported the substance of Tuccillo’s testimony on February 21,
`2006, the court entered an order striking the answer. Tuccillo filed his amended answer a week later. Then on
`March 1, 2006, the court directed ordered Plaintiff to pay the fees and expenses Plaintiff incurred as a result of
`these events.
`
`Plaintiff has filed a detailed fee petition seeking an award of $69,499.96, an amount Tuccillo characterizes as
`“outrageous.” Before addressing his few other objections (which are largely overruled), the court pauses to
`describe the background of this dispute.
`
`Procedural History
`
`In order to investigate Tuccillo’s implicit charge of serious wrongdoing by his attorneys, Plaintiff issued
`subpoenas for the testimony of the two New York lawyers who had filed the answers. Apparently caught in a
`misstatement (if not in a deliberate falsehood), Tuccillo filed a motion to quash the subpoenas, now
`acknowledging that he had in fact signed a Power of Attomey—an instrument that he failed to mention at his
`deposition or produce for review by Geisha’s attorneys. Tuccillo’s objections to Plaintiffs efforts to depose
`his attorneys, and those of the New York lawyers themselves, were overruled by a federal judge in New York.
`
`To complicate these events, when deposed, one of Tuccillo’s New York lawyers insisted he was unaware of
`
`O5C5529 Geisha LLC vs. Roy Tuccillo
`
`Page I of 3
`
`

`
`
`
`
`
`the Power of Attorney and did not sign Tuccillo’s name to the answer filed in this lawsuit. The other lawyer, a
`friend of Tuccillo’s who is now suspended from the practice of law, testified that he also did not sign
`Tuccillo’s name to the answer; instead, this witness claimed that, at Tuccillo’s own request, the answer was
`signed and notarized by an unidentified former employee. Attorney No. 2 was unable to provide the name,
`address, telephone number, or any other identifying information for the mystery signer.
`
`
`
`
` In at least some respects, Tuccillo’s second amended answer, filed on February 28, 2006, differed from the
`
`
`
`
`
`
`
`
`
`
`original one. Although Tuccillo insists that the differences are insignificant, the filing of a purportedly sworn
`answer that is inaccurate in any respect is of grave concern to the court. And Tuccillo has not to date
`explained why, upon learning that an answer had been filed purportedly without his knowledge or
`authorization, Tuccillo himself took no steps to seek leave to withdraw that answer. Instead, after adamantly
`denying knowledge of the original answer at his deposition, Tuccillo submitted an affidavit on March 1 in
`which he suddenly recalled having granted his New York lawyers a broad Durable Power of Attorney
`authorizing their filings on his behalf.
`
`
`
`Fee Petition
`
`
`
` As noted, Tuccillo calls the amount sought by Geisha’s attorney “outrageous.” Although the fees requested,
`totaling $69,499.96, are indeed substantial, the court notes that Geisha has submitted detailed billing
`
`statements identifying the services performed, the attorneys who performed them, the time expended and the
`hourly rate claimed. Those detailed billing statements, as amplified in Geisha’s memoranda of law, reflect the
`following:
`-
`Geisha was required to issue two subpoenas for Tuccillo’s New York lawyers, and then respond with
`legal memoranda, supported by research, in opposition to Tuccillo’s own motion to quash those
`subpoenas
`Geisha’s counsel had to prepare for a brief, but successful, appearance before a federal judge in New
`York
`
`
`
`
`
`
`
`-
`
`-
`
`
`
`-
`
`Geisha utilized two attorneys for the New York depositions, not only to enable Geisha to depose the
`witnesses simultaneously but also to ensure that an attorney admitted in New York (for whom no
`travel or accommodations expense was incurred) would be available should a return to court be
`necessary
`Geisha incurred a hotel bill for one night’s stay as a result of the New York lawyers’ failure to notify
`counsel that they would not proceed with the deposition on the date it was originally noticed
`
`
`
`
`
`
`
`
`
`
`
`Tuccillo has not challenged Geisha’s counsel’s hourly rates. He argues, instead, that Geisha has not
`authenticated its attorneys’ billing records or shown that the bills were actually paid; that Geisha used too
`many lawyers; that the fees generated were unrelated to Tuccillo’s own amended answer: that Geisha’s efforts
`to establish that Tuccillo’s testimony was false was “completely unsuccessful,” and that Geisha has engaged
`in improper ex parte communications with the court.
`
`
`
`
`
`
`
`
`
`
`
`
`
`To the extent that Tuccillo’s objections to Geisha’s billing records had any merit, Geisha has cured those
`objections by submitting the affidavit of Attorney Joan Long [63]. Ms. Long’s affidavit, and the unredacted
`billing records she submitted as an exhibit to that affidavit, satisfy the court that the original fee petition was
`“cleansed” of time devoted to matters unrelated to the stricken answer. And, although Tuccillo baldly asserts
`that Geisha relied on too many lawyers, all of whom presumably had to become familiar with the case,
`Tuccillo has not specifically identified any particularly troublesome entries, and the court sees none. Nor is
`
`
`
`
`
`
`
`
`
`
`O5C5529 Geisha LLC vs. Roy Tuccillo
`
`Page 2 of 3
`
`

`
`
`
`
`
`the court moved by Tuccillo’s implicit suggestion that fees are not recoverable unless Geisha has already
`actually paid them; although payment of an attorney’s fee is strong evidence that the fee is reasonable, the real
`question is whether the requested amounts are fees that commercial parties would have incurred and paid even
`without a fee-shifting award. See Kallman v. Tandy Corp, No. 99 C 490, 2001 WL 761137 (N.D. 111. June 1],
`2001), citing Medcom Holding Co. v. Baxter Travenol Labs, Ine., 200 F.3d 518, 521 (7th Cir. 1999).
`In this
`case, where Geisha engaged in the effort to get to the bottom of the matter even before the court directed
`payment of fees, the answer is obviously yes.
`
`
`
`
`
`
` Tuccillo’s contention that Geisha’s attorney time was not generated by the confusion surrounding his original
`answer simply ignores the record. Absent Tuccillo’s adamant insistence that he did not sign the answer—and
`
`simultaneous failure to explain what he himself now claims to have known about the Power of Attorney~sent
`
`Geisha’s lawyers on a “wild goose chase” to determine whether Tuccillo was lying under oath or his attorneys
`
`had violated the canons of ethics. Rather than cooperate with that investigation, Tuccillo and the lawyers
`fought Geisha’s subpoenas, with the predictable result that Geisha’s lawyers were required to file briefs,
`prepare for a court appearance, and then appear before Judge Kaplan. Whether or not Geisha demonstrated
`that Tuccillo’s testimony was false, there can be no question that Geisha showed that his testimony was
`grossly misleading. And the confusing and misleading nature of his former attorneys’ conduct is attributable
`to their client, Tuccillo, as well. Again, Tuccillo himself, who had all of the relevant information at his
`disposal, did nothing to clarify his earlier statements; he did not even seek leave to amend his answer until the
`original, purportedly—unauthorized one, was stricken on the court’s own motion.
`
`
`
`
`
`
`
`
`
`
`
`
`Tuccillo’s objection to alleged ex parte communications bears little discussion; Ms. Hall’s March 2, 2006
`letter bore the mark: “cc: Jeffrey Pine,” making it clear that she had included Tuccillo’s attorney in her letter
`to the court. A motion may (or may not) have been a more appropriate way to seek instruction from the court,
`but any suggestion that the letter was an improper ex parte communication is unconvincing.
`
`
`
`
`
`
`
`
`
`
`
`Tuccillo himself has not bothered to identify specific objectionable time entries, but the court notes that its
`own review of Geisha’s fee petition chart suggests that certain minor reductions are appropriate: On 2/2/06,
`Attorney R. Unikel devoted time to “1TU” applications as well as to the subpoenas. As ITU research is
`relevant to the merits of the case rather than to the withdrawn answer, the court will reduce the recovery for
`Mr. Unikel’s work on that date by one-half, or $250. Similarly, on 2/ 16/06, Attorney B. Batzer devoted time
`to reading an opinion on trademark jurisdiction, an issue presumably relevant to the case as a whole, not to the
`withdrawn answer. The court will reduce the recovery for Attorney Batzer’s work by one-half, or $187.00.
`On 3/23/06, Attorney J. Long devoted 8.50 hours to the case, which included not only Mr. Montanez’s
`deposition but also a meeting with the client in New York to prepare an affidavit for summary judgment.
`Without further information regarding the length of time devoted to each of these projects, the court will
`reduce the fee for her work on that date by one-half, or $1912.50. Total reduction is $2,349.50.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
` The resulting award is $67,150.46. Qi~1»w«0@/:fi«7w——
`
`05C5529 Geisha LLC vs. Roy Tuccillo
`
`Page 3 of 3
`
`

`
`Exhibit B
`
`

`
`‘J5 44 (Rm I2/07)
`
`Filer} £35/12/(39 Page 1 of2
`Case 2:O9—cv~O2022—.JFB~WDW Document 14
`CIVIL COVER SHEET
`
`~
`
`\
`
`fhe JS 44 civil cover sheet and the information contained herein neither re lace nor su
`by local rules ofcoun. This form, approved by the Judicial Conference 0 the United .
`the civil docket sheet.
`(SEE. INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`.
`PLAINTIFFS
`
`I
`
`(a)
`ROY TUCCILLO, an individual
`
`-
`
`s n
`
`-
`
`'
`
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`DEFENDANTS
`GEISHA NYC, LLC. dlb/a JAPONAIS and 0533 HOSPITALITY
`NYC. LLC
`
`N385?“-I
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN US. PLAINTIFF CASES)
`
`New Yolk
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE:
`
`
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`PERSONAL INJURY
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`D SID Agriculture
`D 422 Appeal 28 USC I58
`0 400 State Reapponionment
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`D 423 Withdrawal
`0 I20 Marina
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`362 Personal Injury -
`U 620 Other Food & Drug
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`D I30 Miller Act
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`0 430 Bank: and Banking
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`D 450 Cornmenx
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`VI‘ CAUSE OF ACTION Briefescription ofcause:
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`CHECK YES only if demanded in complaint:
`JURY DEMAND:
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`0 No
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`VIII. RELATED CASE(S)
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`» DOCKET NUMBER
`1}: ANY
`‘ ‘°‘“"'“°"°""'
`JUDGE
`ATTORNEYOF RECORD
`DATE SI
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`FOR OFFI E USE ONLY
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`RECEIPT 1?
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`
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`AMOUNT
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`APPLYING IFP
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`JUDGE
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`MAG. JUDGE
`—__-3_—Z——
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`

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`Case 2:09-cv—O2O22—Jf5B—Wi3W Document 1-1
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`535360‘ O5/12109 Page 2 of 2
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`ARBITRATION CERTIFICATION
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`do hereby
`counsel for Plaintiff
`1, AlT'l0ld L. KBFI, ESQ.
`certify pursuant to the Local Arbitration Rule 83.10 that to the best of my knowledge and belief the damages
`recoverable in the above captioned civil action exceed the sum of $ 1 50,000 exclusive of interest and costs.
`1
`Relief other than monetary damages is sought.
`
`
`DISCLOSURE STATEMENT - FEDERAL RULES CIVIL PROCEDURE 7.1
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`Identify any parent corporation and any publicly held corporation that owns 10% or more or its stocks:
`
`N/A
`
`Please refer to NY-E Division of Business Rule 50.1§d)_(2)
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`1.) Is the civil action being filed in the Eastern District of New York removed from a New York State court located
`in Nassau or Suffolk County: No
`
`2.) If you answered “no” above:
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`2:.) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in Nassau
`or Suffolk County? Yes
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`b.) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in the
`Eastern District? Yes
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`If your answer to question 2 (b) is “No,” does the defendant (or a majority of the defendants, if there is more than
`one) reside in Nassau or Suffolk County, or, in an interpleader action, does the claimant (or a majority of the
`claimants, if there is more than one) reside in Nassau or Sufiolk County?
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`(Note: A corporation shall be considered a resident of the County in which it has the most significant contacts).
`
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`I am currently admitted in the Eastern District of New York and currently a member in good standing of the
`bar of this court.
`
`Yes
`
`1
`
`No
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`Are you currently the subject of any disciplinary action(s) in this or any other state or federal court?
`
`1 P
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`lease provide your E—MAIL Address and bar code below. Your bar code consists of the initials of your first and last
`name and the last four digits of your social security number or any other four digit number registered by the attorney
`with the Clerk of Court.
`
`(This information must be provided pursuant to local rule l1.l(b) ofthe civil rules).
`
`ATTORNEY BAR CODE: ALK3105
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`E-MAIL Address: ALKERT@optonline.net
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`I consent to the use of electronic filing procedures adopted by the Court in Administrative Order No. 97-12, ‘‘In re
`Electronic Filing Procedures(EFP)”, and consent to the electronic service of all papers.
`
`Signature:
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`Yes
`
`(If yes, please explain)
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`No
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`

`
`Case 2;O9—ov—02022~JFB-V\/DW Document ‘§—2
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`Filed 05/12/09 Page ‘I of 1 ‘l_
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`ROY TUCCILLO, an individual
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`Plaintiff,
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`Civil Action No.
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`,
`— against -
`
`/D
`L)L/
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`GEISHA NYC, LLC d/b/a JAPONAIS and
`OSSS HOSPITALITY NYC, LLC
`
`Defendants.
`
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`COMPLAINT AND
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`JURY DEMAND
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`COMPLAINT FOR TRADEM/JRQNG 15L1,. ,
`INFRINGEMENT UNFAIR COMPETITION AND DILUTI‘/(§l\IOf"‘F/Q E
`
`Plaintiff, ROY TUCCILLO, by his attorneys ARNOLD L. KERT PLLC, complaining of
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`the defendants, GEISHA NYC, LLC d/b/a JAPONAIS and OSSS HOSPITALITY NYC, LLC,
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`allege as follows:
`
`THE PARTIES
`
`1.
`
`2.
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`3.
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`4.
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`5.
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`Roy Tuccillo is an individual residing in the State of New York and operates
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`Japonais restaurant and lounge.
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`Upon information and belief, Geisha NYC, LLC is 21 Domestic Limited Liability
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`Company, doing business as Japonais, with offices at 420 Lexington Avenue,
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`New York, New York 10170.
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`Upon information and belief, Geisha NYC, LLC owns Japonais New York.
`
`Upon information and belief, Geisha NYC, LLC operates Japonais New York.
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`Upon information and belief, OSSS Hospitality NYC, LLC is a Domestic Limited
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`Liability Company, with offices at 420 Lexington Avenue, New York, New York
`
`10170.
`
`

`
`Case 2:0§)—cv»O2£322~JFE3~‘v’\/DW Document L2
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`Féied O5/‘t 2/09 Page 2 of "H,
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`6.
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`Upon information and belief, OSSS Hospitality NYC, LLC owns J aponais New
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`York.
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`7.
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`Upon information and belief, OSSS Hospitality NYC, LLC operates Japonais
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`New York.
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`JUELISDICTION AND VENUE
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`8.
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`This action is for trademark infringement, unfair competition, trademark dilution
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`and cybersquatting committed by the defendants in violation of the laws of the
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`United States and the State of New York. Count I of this action for trademark
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`infringement is brought under the Sections 32-34 of the Trademark Act, 15 U.S.C.
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`§105l et seq. and 15 U.S.C. Sections 1114-1116; Count II for unfair competition
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`is brought under Section 43(a) of the Trademark Act, l5 U.S.C. §l225(a); Count
`
`111 for dilution is brought under Section 43(c) of the Trademark Act, 15
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`U.S.C.§1 l25(c); Count IV for cybersquatting is brought under Section 43(d) of
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`the Trademark Act, 15 U.S.C. §1125(d); Count V is brought pursuant to the
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`common law of New York; and Count V1 for injury to business reputation and
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`dilution is brought under New York General Business Law §360-I. Accordingly,
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`this court has jurisdiction pursuant to 15 U.S.C. §§l114-l1l6 and Il25(a), and 28
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`U.S.C. §§ ll38(a) and l138(b) (pendant jurisdiction over unfair competition
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`claims). Upon information and belief, venue is proper in this district, pursuant to
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`28 U.S.C. §l39l, as defendant operates offices and does significant business in
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`New York, and this district is convenient to both litigants in terms of witnesses
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`and evidence.
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`

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`Case 2:09~c\/—02022~JFB-WDW Document ’%-2
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`Filed O5/12/(J9 Page 3 of 1 1‘
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`FACTS
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`Roy Tuccillo (hereinafier “TUCClLLO”) operates Japonais, a restaurant and
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`lounge in Westbury, New York.
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`On June 25, 2004, TUCCILLO filed a trademark application with the US. Patent
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`and Trademark Office (USPTO), Serial No. 76599761, for the JAPONAIS design
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`mark.
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`TUCCILLO’s application was an "intent-to-use” (ITU) application because he had
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`not yet actually used the mark in commerce specifically in connection with the
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`type of restaurant services described in his application for registration.
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`TUCCILLO received his “notice of allowance" from the USPTO on August 23,
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`2005.
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`On April 1, 2008 TUCCILLO opened his restaurant, Japonais, using his
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`JAPONAIS mark throughout.
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`On May 2, 2008, TUCCILLO filed a verified “statement of use” with the USPTO,
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`swearing that he was using the mark in commerce in connection with restaurant
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`and lounge services.
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`TUCCILLO registered the trademark on March 17, 2009, under Reg. No.
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`3591621.
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`Afier the mark registers, the registrant, TUCCILLO, is treated as though he began
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`using the mark on the date he filed the ITU application (the “constructive use
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`date”), June 25, 2004.
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`In 2006, Geisha NYC LLC and OSSS Hospitality NYC LLC opened two new
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`10.
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`ll.
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`12.
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`13.
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`14.
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`15.
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`16.
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`17.
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`

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`Case 2:09-cv~O2022-JFB—VVDW Document ‘I-2
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`Filed 05/12/09 Page 4 of ‘I 1‘
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`18.
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`19.
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`20.
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`21.
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`22.
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`23.
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`24.
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`Japonais restaurants, one in the Flatiron district in New York City, the other in the
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`MGM Mirage Hotel and Casino in Las Vegas.
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`Both restaurants use the stylized JAPONAIS mark throughout.
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`The fame of the mark, JAPONAIS, is partly attributable to the amount of business
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`conducted under the mark, over a long period of time.
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`Through its continuous use of the JAPONAIS design since 2008, the plaintiff has
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`acquired substantial goodwill and customer recognition throughout the region.
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`Plaintiff has expended substantial time, effort and money in developing a brand
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`image for his restaurant, including the development and marketing of his
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`JAPONAIS design.
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`As a result of providing services under the JAPONAIS mark, JAPONAIS has
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`become distinctive in the restaurant industry, as well as among the general public.
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`The scope of goodwill and customer recognition in plaintiff s JAPONAIS design
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`is evidenced by the substantial sales of plaintiffs JAPONAIS restaurant since
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`2008.
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`TUCCILLO is the owner of the U.S. Trademark Reg. No. 3591621. Under
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`Trademark Act Section 33. such ownership creates and constitutes primafacie
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`evidence that TUCCILLO owns this mark, that TUCCILLO’s trademark currently
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`is valid, and that TUCCILLO has exclusive rights to use the registered mark,
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`JAPONAIS.
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`25.
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`The defendants have adopted and used in commerce the name and mark
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`JAPONAIS in connection with restaurants and lounges, in bad faith and with full
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`

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`Case 2:09-cv»O2022—JFB-‘v'%fD\fV Document 4-2
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`Féied 05/12/09 Page 5 of 11
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`knowledge of the prior, long established rights of TUCCILLO and his related
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`companies.
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`26.
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`The defendants also have in bad faith obtained and retained ownership of the
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`27.
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`28.
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`29.
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`30.
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`domain names JAPONAISNYCCOM and JAPONAISLASVEGASCOM, acts
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`which constitute trademark infringement, dilution and unfair competition, with the
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`added intent of improperly attempting to obtain profit from ownership of the
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`domain name in violation of anti—cybersquatting prohibitions.
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`Despite demands from TUCCILLO that the defendants cease use of JAPONAIS
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`as a trademark, trade name and domain name, defendants have continued to use
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`these designations improperly and in bad faith.
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`COUNT I
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`This cause of action arises under the Trademark Act of 1946, as amended (U.S.C
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`Section 1051 et seq.). More particularly, this Count is to remedy infringement of
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`trademarks registered in the U.S. Patent and Trademark Office, and is brought
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`pursuant to §§32-34 ofthe Trademark Act of 1946 (15 U.S.C. §§l 114-1116).
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`TUCCILLO repeats and realleges each and every allegation contained in
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`paragraphs 1-27 of this Complaint
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`Use in commerce by the defendants of a colorable imitation of TUCCILLO’s
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`federally registered trademark is likely to cause confusion, mistake and deception
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`among members of the public and in the trade as to the source, origin, or
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`sponsorship of defendants’ services. Such use by defendants constitutes a clear
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`and direct infringement ofTUCClLLO’s right in and to TUCCILLO’s federally
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`

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`Case 2:O9—<:v~02G22—JFB~WDW Docgiment “S Filed O5x”l 2X09 Page 8 of 11
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`registered trademarks, and has resulted in injury and damage to TUCCILLO that
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`will continue ifdefendants are not ordered to cease all use of the mark,
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`JAPONAIS.
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`COUNT II
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`31.
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`32.
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`33.
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`34.
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`35.
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`36.
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`This cause of action arises under §43(a) of the Trademark act of 1946, as
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`amended (15 U.S.C. §ll25(a)) for unfair competition and false designation of
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`origin.
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`TUCCILLO repeats and realleges each and every allegation contained in
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`paragraphs 1-30 of this Complaint.
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`Defendants, by reason of the foregoing acts, have falsely described, represented
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`and designated the origin of its services. Defendants activities already have
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`confused the public into believing that defendants’ restaurant and lounge is
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`associated with TUCCILLO, and defendants’ continued activities are likely to
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`create further confusion and deceive the public concerning the source of
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`defendants’ services. Such activities have caused, and are likely to cause, fiirther
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`damage to TUCCILLO and his related companies.
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`COUNT III
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`This cause of action arises under Section 43(c) of the Trademark Act (15 U.S.C
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`§l125(c)).
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`TUCCILLO repea