Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA830305
`06/29/2017
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92062713
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Masciarelli Tenute Agricole S.r.l.
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`PHILIP Y BRAGINSKY
`TARTER KRINSKY & DROGIN LLP
`1350 BROADWAY, 11TH FLOOR
`NEW YORK, NY 10018
`UNITED STATES
`Email: docket@tarterkrinsky.com, nlippert@tarterkrinsky.com, pbragin-
`sky@tarterkrinsky.com
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`Motion to Suspend for Civil Action
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`Nels T. Lippert
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`docket@tarterkrinsky.com, pbraginsky@tarterkrinsky.com, nlip-
`pert@tarterkrinsky.com
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`/Nels T. Lippert/
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`06/29/2017
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`Motion to Suspend Proceedings.pdf(168169 bytes )
`Plaintiff Verified Compalint.PDF(4290283 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92062713
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`MARK: MASCIARELLI
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`MASCIARELLI TENUTE AGRICOLE S.R.L., )
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`Petitioner,
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`v.
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`ROBERTA MASCIARELLI-SPAGNUOLO, )
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`) )
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`Respondent.
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`MOTION TO SUSPEND PROCEEDINGS
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`Pursuant to Trademark Rule 2.117(a), 37 C. F. R. §2.117(a) Petitioner, Masciarelli
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`Tenute Agricole S.r.1., hereby moves for an order suspending the above-identified proceeding
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`pending disposition of the civil action styled, San Martino Imports, Inc. d/b/a Masciarelli Wine
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`Company and Roberta Masciarelli-Spagnuolo v. Masciarelli Tenute Agricole SR.L. and Vintus
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`LLC, 1:17-cv-10798-RWZ (D.Mass.). This action was filed on May 5, 2017, involves the same
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`parties, Masciarelli Tenute Agricole S.R.L. and Roberta Masciarelli-Spagnuolo, and concerns the
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`same trademark Registration No. 2,986,940, as the above-identified proceeding. A copy of the
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`verified complaint is attached hereto.
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`The issues raised in the civil action (see, e.g. paragraphs 55-60) will have a bearing on
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`the instant cancellation proceeding. Therefore, it is submitted that suspension of this proceeding,
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`until termination of the civil action, is appropriate.
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`There are no potentially dispositive motions pending before the Board in the
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`cancellation proceeding.
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`

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`Wherefore, early and favorable consideration of this motion is earnestly solicited.
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`Dated: New York, NY
`June 29, 2017
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`Respec idly submitted,
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`N s . Lippert
`Tarter Krinsky & Drogin LLP
`1350 Broadway
`New York, New York 10018
`212 216-8000
`nlippert@tarterkrinsky.com
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`Attorneys for
`Masciarelli Tenute Agricole
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`

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`CERTIFICATE OF SERVICE
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`1 hereby certify that on June 29, 2017, a true and correct copy of the foregoing MOTION
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`TO SUSPEND PROCEEDINGS was served via e-mail addressed to:
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`Andrew J. Ferren
`aferren@v,oulstonstorn.corn
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`Andrew T. O'Connor
`anconnorriPpulstorrs.com
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`els T. Lippc
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`

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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 1 of 37
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`SAN MARTINO IMPORTS, INC. d/b/a
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`MASCIARELLI WINE COMPANY and
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`ROBERTA MASCIARELLI-SPAGNUOLO,
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`Plaintiffs,
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`v.
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`MASCIARELLI TENUTE AGRICOLE S.R.L.
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`and VINTUS LLC,
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`Defendants.
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`Civil Action No.
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`VERIFIED COMPLAINT
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`For over 30 years, Plaintiff Roberta Masciarelli-Spagnuolo, her family, and their
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`company, San Martino Imports, Inc. d/b/a Masciarelli Wine Company, have poured their hearts,
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`souls, and economic fortunes into building a brand in the United States: MASCIARELLI wine.
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`As the exclusive importer and distributor in the United States of wine bearing the name
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`MASCIARELLI, they built the brand and the associated goodwill from scratch. And in doing
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`so, they created a business that provides livelihoods for members of the Masciarelli family on
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`both sides of the Atlantic Ocean.
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`But now, all of that is at risk. Masciarelli Tenute Agricole S.r.l., the company in Italy
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`that produces the wine for Masciarelli Wine Company, and Vintus LLC, a U.S. importer and
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`distributor, are flagrantly disregarding Plaintiffs’ rights. They are ignoring the registered and
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`common law trademark rights held by Ms. Masciarelli-Spagnuolo and asserting that they have
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`the right to sell wine products bearing her registered trademark for MASCIARELLI without her
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`consent; they are actively interfering with Masciarelli Wine Company’s business relations with
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 2 of 37
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`its customers; and they are breaching certain agreements between Masciarelli Wine Company
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`and Masciarelli Tenute Agricole S.r.l. Despite being told to stop their unlawful conduct, the
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`Defendants persist. This has left Ms. Masciarelli-Spagnuolo and Masciarelli Wine Company
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`with little choice but to file this lawsuit seeking damages and injunctive relief, pursuant to 19
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`U.S.C. § 1526(c) and 15 U.S.C. § 1116, enjoining the Defendants from using the “Masciarelli”
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`trademark in commerce in the United States in connection with wine products without the
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`consent of Ms. Masciarelli-Spagnuolo, among other remedies.
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`The Parties
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`1.
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`Plaintiff San Martino Imports, Inc. d/b/a Masciarelli Wine Company (“Masciarelli
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`Wine Company”) is a corporation organized under the laws of the Commonwealth of
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`Massachusetts, with its principal place of business located at 144 Moore Road, Weymouth,
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`Massachusetts 02189. For approximately the past 30 years, Masciarelli Wine Company has
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`imported, marketed, and sold wines bearing the MASCIARELLI Mark in the United States,
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`under a license from Plaintiff Roberta Masciarelli-Spagnuolo and her father, Nicola Masciarelli.
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`2.
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`Plaintiff Roberta Masciarelli-Spagnuolo (“Ms. Masciarelli-Spagnuolo”) is an
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`individual residing in Braintree, Massachusetts. Ms. Masciarelli-Spagnuolo is the owner of all
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`rights, title, and goodwill in the trademark “MASCIARELLI” for wine and spirits in the United
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`States, including all common law rights and United States Trademark Registration No. 2,986,940
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`for “MASCIARELLI” on the Principal Register (the “MASCIARELLI Mark”). Copies of
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`records from the U.S. Patent and Trademark Office for the MASCIARELLI Mark are attached to
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`this Verified Complaint as Exhibit A. Ms. Masciarelli-Spagnuolo is also the President and Chief
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`Financial Officer of Masciarelli Wine Company.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 3 of 37
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`3.
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`On information and belief, Defendant Masciarelli Tenute Agricole S.r.l. is a
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`limited liability company organized under Italian law, with its principal place of business located
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`at Via Gamberale 1, 66010 San Martino sulla Marrucina (CH), Italy. On information belief,
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`until 2013, Masciarelli Tenute Agricole S.r.l. was previously known as Azienda Agricola
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`Masciarelli s.n.c. Masciarelli Tenute Agricole S.r.l. and Azienda Agricola Masciarelli s.n.c. will
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`be referred to in this Verified Complaint collectively as “MTA.” For approximately thirty years,
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`MTA has been selling wine to Masciarelli Wine Company in Massachusetts.
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`4.
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`On information and belief, Defendant Vintus LLC (“Vintus”) is a limited liability
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`company organized under the laws of the State of Delaware, with its principal place of business
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`located at 42 Memorial Plaza, Suite 210, Pleasantville, New York 10570. On information and
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`belief, Vintus holds four Certificates of Compliance with the Massachusetts Alcoholic Beverages
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`Control Commission in order to avail itself of the benefits of Massachusetts law and sells
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`products to Massachusetts purchasers.
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`Jurisdiction and Venue
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`5.
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`This Court has jurisdiction over the subject matter of Plaintiffs’ claims pursuant to
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`28 U.S.C. §§ 1331 and 1338, as well as 15 U.S.C. §§ 1116 and 1121. This Court has
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`supplemental jurisdiction over Plaintiffs’ state law claim pursuant to 28 U.S.C. § 1367.
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`6.
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`This Court has personal jurisdiction over the Defendants pursuant to M.G.L. c.
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`223A, §§ 3(a), (b), (c), and (d) because they have transacted business in the Commonwealth of
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`Massachusetts; contracted to supply services or things in the Commonwealth; caused tortious
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`injury by acts or omissions in the Commonwealth; caused tortious injury in the Commonwealth
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`by acts or omissions outside the Commonwealth and regularly do and solicit business in the
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 4 of 37
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`Commonwealth; and engaged in conduct, and derived substantial revenue from goods used or
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`consumed or services rendered, in the Commonwealth.
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`7.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2) or (3)
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`because either a substantial part of the events or omissions giving rise to the Plaintiffs’ claims
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`occurred in this judicial district, or there is no district in which any action may otherwise be
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`brought as provided in 28 U.S.C. § 1391 and there is personal jurisdiction over the Defendants in
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`this district.
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`Facts Entitling Plaintiffs to Relief
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`AN AMERICAN SUCCESS STORY
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`8.
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`Nicola Masciarelli was born on December 9, 1931, and raised in San Martino
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`sulla Marrucina in the Abruzzo region of Italy. While in Italy, Nicola developed a close bond
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`with his relatives there, including the grandparents and parents of his cousin, Gianni Masciarelli.
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`9.
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`In 1959, Nicola Masciarelli immigrated to the United States, and settled down in
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`Massachusetts. Although he did not speak a word of English when he arrived, Nicola
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`Masciarelli did not let his unfamiliar surroundings or lack of English get in the way of his
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`achieving the American Dream.
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`10.
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`In just a few years, Nicola Masciarelli became an accomplished and respected
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`businessman. Years of hard work and dedication led to success for Nicola Masciarelli, both in
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`business and at home, where he enjoyed a full life with his wife and four children in Braintree,
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`Massachusetts.
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`THE CREATION OF A BRAND
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`11.
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`Over the years, Nicola Masciarelli remained close with his family in Italy,
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`including his younger cousin Gianni Masciarelli, who had remained in San Martino. Over the
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 5 of 37
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`years, Nicola and Gianni had developed a close personal relationship with one another,
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`supported by their common family bonds and shared history.
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`12.
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`By the early 1980’s, after Nicola Masciarelli had become an accomplished and
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`successful businessman in the United States, Gianni had begun producing small batches of wine
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`out of the estate where Nicola was born and raised, but had never sold wine in the United States.
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`13.
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`Recognizing Nicola’s business acumen and experience with the U.S. market and
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`Gianni’s knowledge of wine, Nicola and Gianni agreed to forge a business relationship whereby
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`Gianni would produce wine for Nicola to sell in the United States.
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`14.
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`Nicola and Gianni agreed that Gianni would produce wine from the family estate
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`in Italy for importation into the United States. Gianni thus began producing this wine under the
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`corporate name Azienda Agricola Masciarelli (now MTA).
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`15.
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`Gianni and Nicola further agreed that Nicola would be solely responsible for
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`importing and distributing the wine in the United States under the brand “Masciarelli,” for
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`building and protecting the “Masciarelli” brand here, and for cultivating the customers and
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`relationships in this county that would allow the brand to become successful.
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`16.
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`In 1986, Nicola founded San Martino Imports, Inc. (a company named after his
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`hometown in Italy) for the purpose of importing, distributing, and building a market for the wine
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`bearing his “Masciarelli” name that Gianni would make for him. Nicola operated the company,
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`along with his adult children, under the name Masciarelli Wine Company. Nicola and
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`Masciarelli Wine Company had sole responsibility for developing a market for the wine in the
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`United States, as well as building and protecting the brand in this country, and invested all the
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`capital and took all the risk in developing the brand in the United States.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 6 of 37
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`17.
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`Because Gianni knew nothing about the American wine market, Gianni took
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`direction and instructions from Nicola on the development of a wine that would be suitable for
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`the American market. For example, Nicola felt that Gianni’s wine was too rustic, bitter, and dry
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`for the American palate, so Gianni modified the wine to suit Nicola’s specifications, making it
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`more supple, softer, and easier to drink.
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`18.
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`Nicola also worked with Gianni to design the labels for the wine to appeal to the
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`U.S. market, including what the labels should look like and what they should say. To this day,
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`the labels continue to depict the estate where Nicola was born.
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`19.
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`Nicola and two of his adult sons, Arthur and Luigi Masciarelli, went door-to-door
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`to Massachusetts retailers staking their personal reputations on the quality of the wine that bore
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`their name. For example, Nicola would routinely go into liquor stores holding a bottle of wine
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`and say, “My name is Nick Masciarelli. This is my wine.” Pointing at the house in Italy
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`depicted on the label on the wine bottle, where he was born, Nicola would continue, “I was born
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`here. If you like the wine, you can pay me for it. If not, I will take it back.” In this manner,
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`Nicola introduced many customers to Masciarelli wine and built goodwill for himself and his
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`business. Nicola also built custom wooden wine racks by hand and provided them, at no cost, to
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`liquor stores so that the wine could be displayed prominently in stores.
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`20.
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`In 1986, Gianni and MTA confirmed in writing their agreement that Masciarelli
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`Wine Company would have “EXCLUSIVE rights of distribution in all 50 (fifty) states located in
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`the United States of America.” Gianni, on behalf of MTA, and Nicola, on behalf of Masciarelli
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`Wine Company, also agreed that Masciarelli Wine Company would be solely responsible for
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`taking care of all licensing and regulatory compliance matters in the United States, including but
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 7 of 37
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`not limited to authorization to “post prices as may be required by law.” The September 20, 1986
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`letter confirming these agreements is attached to this Verified Complaint as Exhibit B.
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`21.
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`Because of the trust and close, familial relationship between Nicola and Gianni,
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`many of the details of their arrangement were discussed in person or over the phone and secured
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`with a handshake. Over the years, Gianni reiterated to Nicola and his adult children repeatedly
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`that Masciarelli Wine Company was responsible for the family business in the United States and
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`that it was to do whatever was necessary to comply with laws and regulations to sell wine in the
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`United States and to protect the goodwill associated with the family name. On several occasions,
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`when the subject of business details in the U.S. would come up, Gianni would always say, “just
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`tell me how much wine to make for you and I will make it.”
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`22.
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`By 1987, Nicola’s personal investment, tireless efforts, network of contacts, and
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`staking his name and personal reputation behind the wine had begun to pay off. In a letter to
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`Gianni, Nicola explained how he had invested in his new enterprise with his own “capital” and
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`secured new clients through the “people who I have worked with for many years.” Consistent
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`with their agreement Nicola controlled all aspects of the Masciarelli business in the United States
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`while Gianni made the wine in Italy, Nicola gave explicit instructions on how he wanted his
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`“Masciarelli” labels and bottles to look, and to “please (this is very important) do everything I
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`have asked.” A copy of this letter, and its translation into English, is attached to this Verified
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`Complaint as Exhibit C.
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`23.
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`Over the years, Gianni continued to depend upon Nicola and his family in the
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`United States to assist in the development of the wine for Nicola to sell in the U.S. market under
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`the “Masciarelli” brand.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 8 of 37
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`24.
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`For example, Nicola and his family members shared the wine with various
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`potential customers and people in the wine business; collected their input on the quality of the
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`wine, the packaging, and other characteristics; and reported this information to Gianni in Italy so
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`that it could be used to improve and develop the wine being made for Nicola. This process
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`involved substantial effort and expense by Nicola and his family in the U.S., in part because the
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`montepulciano and trebbiano grapes that Gianni was using to make the wine were relatively
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`unknown in the United States.
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`25.
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`Nicola and Masciarelli Wine Company also worked with Gianni and MTA to
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`further redesign the labels for the wine. For example, Nicola did not like a black label on white
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`wine, which is why the white wine MTA sells abroad have a black label and the white wine
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`Masciarelli Wine Company sells in the United States has a white label. Over the years, Gianni
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`and MTA would routinely request approval from Masciarelli Wine Company before affixing
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`labels to the wine being made “EXCLUSIVELY” for Masciarelli Wine Company in the United
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`States.
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`26.
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`Over the years, Nicola would frequently travel to Italy to inspect the grapes and
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`the wine to ensure that the wine he was selling in the United States that bore his name met his
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`standards of quality. Further, when shipments from Italy would arrive, Nicola and his family and
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`other employees of Masciarelli Wine Company would sample the wine to ensure it met their
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`quality standards. When the wine did not meet with their approval, they would buy only small
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`quantities, discount it, and in some instances not sell it at all.
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`27.
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`Nicola and Masciarelli Wine Company were solely responsible for handling
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`customer complaints in the United States (both from distributors and consumers) about the wine
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`they sold under the “Masciarelli” name. When customers were dissatisfied with the wine, it was
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 9 of 37
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`Nicola and Masciarelli Wine Company – not MTA – who addressed complaints and gave
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`refunds. They also carefully stored and handled the wine to ensure its quality.
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`28.
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`Nicola, his children, and Masciarelli Wine Company also dedicated enormous
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`amounts of their time and resources over the years to marketing and promoting Masciarelli wine
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`in the United States. They ran advertisements in trade publications. They held wine tasting
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`events in stores, at festivals, and in other venues, inviting customers and potential customers and
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`introducing them to the wine. They supplied posters, cardboard cutouts, and similar marketing
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`materials to numerous liquor stores. They trained sales representatives around the county. They
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`offered incentives to the sales representatives and their customers. They participated in industry
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`trade shows. They hosted private wine dinners. They monitored trade publications for awards
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`and scores. They offered incentives to customers at their own expense. They paid for the
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`printing of wine lists. They donated wines to charities to promote the brand. They spent
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`substantial money sending wine samples around the country. Nicola, his children, and
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`Masciarelli Wine Company did all of this at their own risk and expense in accordance with their
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`agreement with Gianni and MTA, which provided that Nicola and Masciarelli Wine Company
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`were to be solely responsible for marketing and promoting the Masciarelli brand in the United
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`States.
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`29.
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`Due to the hard work, dedication, and perseverance of Nicola and his children –
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`including visiting countless liquor stores in person to deliver products to store owners without
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`advance payment, all at Masciarelli Wine Company’s risk – over a period of many years the new
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`business venture became a success. Sales of “Masciarelli” wine, which had never before been
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`sold in the United States, started small and grew over time. After about 30 years of effort, with
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`Masciarelli Wine Company acting at all times as the exclusive source of “Masciarelli” wine in
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 10 of 37
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`the United States, the venture had created livelihoods for members of the Masciarelli family on
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`both sides of the Atlantic Ocean. By their efforts over these years, Nicola and Masciarelli Wine
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`Company generated a large network of customers and valuable goodwill.
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`THE PROTECTION OF THE BRAND
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`30.
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`Over the years, Nicola and Masciarelli Wine Company took appropriate steps to
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`protect the family business in the United States and to comply with federal and state laws, as
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`Gianni and MTA had agreed they should do. Among other things, Masciarelli Wine Company
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`filed for and obtained wine label approvals for Masciarelli products with the Alcohol and
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`Tobacco Tax and Trade Bureau of the United States Department of the Treasury. These wine
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`labels would bear the “Masciarelli” name and identify Masciarelli Wine Company as the
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`exclusive source of the products in the United States.
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`31.
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`In addition, and pursuant to their express agreement, Masciarelli Wine Company
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`filed applications for, paid for, and obtained the required certificates of compliance in
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`Massachusetts to enable MTA to ship the wine to Massachusetts. Masciarelli Wine Company
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`also filed price schedules with the Massachusetts Alcoholic Beverages Control Commission on
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`behalf of MTA with MTA’s express authorization, in compliance with M.G.L. c. 138, § 25B.
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`32.
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`In or about 2003, after he had been diagnosed with cancer several years earlier,
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`Nicola wanted to ensure that his legacy continued, but grew concerned that the tremendous
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`goodwill he and Masciarelli Wine Company had built around his “Masciarelli” brand in the
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`United States could be threatened by competitors.
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`33.
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`In order to protect himself and his company against this possibility, and to secure
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`the goodwill associated with the Masciarelli brand that he had created, Nicola filed an
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`application with the United States Patent and Trademark Office for a trademark registration for
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 11 of 37
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`the MASCIARELLI Mark. Nicola did this both to protect his “Masciarelli” brand in the United
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`States and also to ensure that no one else could import or sell products in the U.S. under the
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`name “Masciarelli” without his permission, which would have the added effect of protecting
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`Gianni.
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`34.
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`On May 31, 2005, the Patent and Trademark Office published Nicola’s
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`application for opposition. Neither Gianni, MTA, nor anyone else filed any opposition to the
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`registration of the MASCIARELLI Mark by Nicola.
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`35.
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`Accordingly, on August 23, 2005, the Patent and Trademark Office issued
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`Trademark Registration No. 2,986,940 for “MASCIARELLI” on the Principal Register for wine
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`and spirits with a date of first use of 1987.
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`36.
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`On August 11, 2011, Ms. Masciarelli-Spagnuolo, Nicola’s successor to all rights
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`in the MASCIARELLI Mark pursuant to an assignment, filed a declaration of use and
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`incontestability pursuant to Section 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065.
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`The Patent and Trademark Office issued a notice of acceptance of that filing on September 15,
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`2011. Accordingly, the MASCIARELLI Mark became incontestable in accordance with Section
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`15 of the Lanham Act.
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`37.
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`Again, no one raised any objection in 2011 to the MASCIARELLI Mark
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`becoming incontestable.
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`38.
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`At all pertinent times, Nicola Masciarelli and Roberta Masciarelli-Spagnuolo
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`licensed their rights in the MASCIARELLI Mark to Masciarelli Wine Company and allowed
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`Masciarelli Wine Company to use the MASCIARELLI Mark in the conduct of its business under
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`their supervision.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 12 of 37
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`A CHANGING OF THE GUARD
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`39.
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`In 2004, Nicola passed away. After his passing, Masciarelli Wine Company
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`continued to be a family-run business, with Nicola’s daughter, Roberta Masciarelli (now Roberta
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`Masciarelli-Spagnuolo) assuming responsibility for the company.
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`40. Ms. Masciarelli-Spagnuolo continued running Masciarelli Wine Company,
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`continued managing the goodwill associated with the business and the MASCIARELLI Mark,
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`and continued the family’s close personal ties with Gianni. The parties’ business relationship
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`continued seamlessly for several years after Nicola passed away.
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`41. Ms. Masciarelli-Spagnuolo also became the owner by assignment of all rights,
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`title, and goodwill in the MASCIARELLI Mark. As her father had done before her, Ms.
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`Masciarelli-Spagnuolo is and has been, at all times while she ran the company, personally
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`engaged in ensuring the quality of the “Masciarelli”-branded wine products sold in the United
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`States and the services offered by Masciarelli Wine Company to its customers. In this way, she
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`developed and protected the goodwill associated with the company, its business, and the
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`MASCIARELLI Mark.
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`42.
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`In 2008, Gianni passed away and, on information and belief, his wife, Marina
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`Cvetic, inherited an ownership interest in MTA in Italy. Ms. Cvetic had married Gianni after he
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`and Nicola began their business venture together. She was not involved in the business when the
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`arrangements discussed above were agreed to.
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`43.
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`At first, business and the parties’ relationship continued as Nicola and Gianni
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`intended. For a time, Ms. Cvetic continued to operate MTA in compliance with the parties’
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`agreements referenced above and respected the rights of Ms. Masciarelli-Spagnuolo and
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`Masciarelli Wine Company.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 13 of 37
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`44. Ms. Cvetic also reaffirmed the exclusivity arrangement and allocation of
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`responsibilities between MTA and Masciarelli Wine Company in two letters dated September
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`22, 2010, expressly recognizing that Masciarelli Wine Company was the “exclusive distributor”
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`of products from MTA in the United States. These letters signed by Ms. Cvetic also expressly
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`authorized Masciarelli Wine Company to “comply with all applicable laws and regulations” and
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`“to post prices as may be required by law.”
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`45.
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`As time passed, however, Ms. Cvetic decided that she wanted to make changes at
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`MTA in order to make it a more internationally known winery. Standing in her way, however,
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`was the parties’ agreement that the MASCIARELLI Mark was owned by Ms. Masciarelli-
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`Spagnuolo and Masciarelli Wine Company.
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`46.
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`Unlike Gianni before her, Ms. Cvetic moved away from working cooperatively
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`with Ms. Masciarelli-Spagnuolo and Masciarelli Wine Company. Among other things, Ms.
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`Cvetic plotted to take over the rights in the MASCIARELLI Mark.
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`47.
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`On June 17, 2010, MTA applied for a United States trademark registration for
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`“Masciarelli” for alcoholic beverages, except beer, Serial Number 79/086,367. Predictably,
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`because of the prior registration of the MASCIARELLI Mark, MTA’s application was refused
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`by the USPTO. On May 16, 2012, MTA allowed its application to go abandoned – a tacit
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`recognition of the validity of the MASCIARELLI Mark and Ms. Masciarelli-Spagnuolo’s
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`ownership of the trademark.
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`48.
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`Subsequently, in a continued acknowledgment of Ms. Masciarelli-Spagnuolo’s
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`trademark rights, MTA continued to seek approval from Masciarelli Wine Company before
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`affixing labels bearing the MASCIARELLI Mark to the bottles of wine being shipped to the
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`United States.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 14 of 37
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`49.
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`In or about March 2013, MTA retained the services of a consultant named
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`Antonio Motteran to assist Ms. Cvetic with her plans to expand her global footprint. As part of
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`this effort, Mr. Motteran, on behalf of MTA, asked Ms. Masciarelli-Spagnuolo if she would
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`consider “joint ownership” of the MASCIARELLI Mark. She declined.
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`50.
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`In October 2014, MTA filed another identical trademark application for
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`“Masciarelli,” Serial Number 79/157,811. Yet again, the USPTO refused MTA’s application for
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`“Masciarelli” on the ground of likelihood of confusion with the MASCIARELLI Mark.
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`51.
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`After receiving the USPTO’s second refusal, MTA approached Plaintiffs and
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`asked again whether Ms. Masciarelli-Spagnuolo would be willing to allow MTA to co-exist with
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`Masciarelli Wine Company in the United States under the MASCIARELLI Mark. On August
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`11, 2015, MTA submitted a response to the USPTO’s refusal of its application expressly stating
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`that it had contacted Ms. Masciarelli-Spagnuolo to negotiate an agreement “with a view towards
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`coexistence.” In these ways, MTA recognized the validity of Ms. Masciarelli-Spagnuolo’s rights
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`in the MASCIARELLI Mark.
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`52.
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`Plaintiffs declined MTA’s requests that it be granted permission to use the
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`MASCIARELLI Mark in the United States because they wanted to preserve the agreement that
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`Nicola and Gianni had forged thirty years ago.
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`53.
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`Apparently frustrated that Plaintiffs would not agree to change the terms of the
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`parties’ agreement, Ms. Cvetic’s conduct grew hostile and relations between Masciarelli Wine
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`Company and Ms. Cvetic deteriorated. Whereas relations had previously been cordial and
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`cooperative, Ms. Cvetic took an increasingly adversarial tone with Ms. Masciarelli-Spagnuolo on
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`a variety of matters. Ms. Cvetic’s tone and uncooperative conduct made it increasingly difficult
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`for Masciarelli Wine Company to do its business.
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 15 of 37
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`54.
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`Nonetheless, all products bearing the MASCIARELLI Mark being made by MTA
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`for Masciarelli Wine Company continued to identify Masciarelli Wine Company as the exclusive
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`source of the goods and the “Sole U.S. Importer” in the United States.
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`MTA FILES A TRADEMARK CANCELLATION PROCEEDING AND VIOLATES
`PLAINTIFFS’ CONTRACTUAL AND STATUTORY RIGHTS
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`Having failed to secure Ms. Masciarelli-Spagnuolo’s rights in the
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`55.
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`MASCIARELLI Mark by agreement, Ms. Cvetic and MTA employed another tactic. On
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`November 23, 2015, MTA filed a petition pursuant to Section 14 of the Lanham Act (15 U.S.C.
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`§ 1064) with the United States Patent and Trademark Office for cancellation of the registration
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`of the MASCIARELLI Mark.
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`56.
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`The cancellation proceeding for the MASCIARELLI Mark remains pending as
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`Proceeding No. 92062713 before the Trademark Trial and Appeal Board of the Patent and
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`Trademark Office (the “TTAB”).
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`57.
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`There has been no finding in the trademark cancellation proceeding that in any
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`way impairs the MASCIARELLI Mark or Ms. Masciarelli-Spagnuolo’s rights in it.
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`58.
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`Because the MASCIARELLI Mark has become incontestable under Section 15 of
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`the Lanham Act, 15 U.S.C. § 1065, it can be cancelled in the cancellation proceeding only on
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`very limited grounds set forth in Section 14 of the Lanham Act, 15 U.S.C. § 1064. In this
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`instance, MTA is alleging that Nicola Masciarelli obtained the MASCIARELLI Mark
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`fraudulently and Ms. Masciarelli-Spagnuolo maintained it fraudulently because, according to
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`MTA, they “knew” the MASCIARELLI Mark in the United States was owned by MTA.
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`59.
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`In fact, there was no fraud. Nicola had both the actual right to obtain the
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`MASCIARELLI Mark registration and a good faith belief that he had the right to do so.
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`Likewise, Ms. Masciarelli-Spagnuolo had both the actual right to maintain the MASCIARELLI
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`8940660.1
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`Case 1:17-cv-10798-RWZ Document 3 Filed 05/05/17 Page 16 of 37
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`Mark registration and a good faith belief that she had the right to do so. Accordingly, MTA will
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`not be successful in the cancellation proceeding.
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`60.
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`On information and belief, MTA does not actually believe that there was any
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`fraud in the procurement of the registration of the MASCIARELLI Mark. Indeed, at Ms.
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`Cvetic’s deposition in the cancellation proceeding, she admitted that she had no reason to believe
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