Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA760153
`
`Filing date:
`
`07/25/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063659
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Gelco of GA, Inc.
`
`WAYNE S TARTLINE
`BOVIS KYLE BURCH & MEDLIN LLC
`200 ASHFORD CENTER NORTH SUITE 500
`ATLANTA, GA 30338
`UNITED STATES
`wst@boviskyle.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`/Wayne S. Tartline/
`
`wst@boviskyle.com
`
`/Wayne S. Tartline/
`
`07/25/2016
`
`001 Complaint.PDF(154693 bytes )
`001-1.PDF(525344 bytes )
`001-2.PDF(559023 bytes )
`001-3.PDF(1664352 bytes )
`001-4.PDF(90756 bytes )
`007 - Motion to Dismiss Complaint for Damages and Injunctive Re-
`lief.PDF(29039 bytes )
`007-1 - Memorandum of Law Supporting Defendant_s Motion to Dismiss Com-
`plaint for Damages and Injunct.PDF(50618 bytes )
`007-2 - Exhibit A to Memorandum of Law.PDF(1066582 bytes )
`009 Plaintiff_s Response in Opposition to Mtion to Dismiss fs
`12_12_14.PDF(186855 bytes )
`010 Amended Complaint fs 12_12_14.PDF(160953 bytes )
`010-1 Exhibit 1.PDF(373136 bytes )
`010-2 Exhibit 2.PDF(407899 bytes )
`010-3 Exhibit 3.PDF(208301 bytes )
`010-4 Exhibit 4.PDF(438446 bytes )
`010-5 Exhibit 5.PDF(1441439 bytes )
`010-6 Exhibit 6.PDF(1762109 bytes )
`010-7 Exhibit 7.PDF(2777493 bytes )
`011 Reply Brief in Support of Motion to Dismiss.PDF(305304 bytes )
`013 Answer to the Amended and Restated Complaint for Damages and Injunct-
`ive Relief 07.08.15.PDF(46034 bytes )
`
`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`
`Groucho’s Franchise Systems, LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`Grouchy’s Deli, Inc. d/b/a
`Grouchy’s New York Deli and
`Bagels.
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO.
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`DEMAND FOR JURY TRIAL
`
`
`
`
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`COMES NOW Plaintiff GROUCHO’S FRANCHISE SYSTEMS, LLC, by its
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`undersigned attorneys, and files this Complaint for Damages and Injunctive
`
`Relief against Defendant GROUCHY’S DELI, INC. d/b/a GROUCHY’S NEW
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`YORK DELI AND BAGELS, showing the Court as follows:
`
`PARTIES
`
`1.
`
`Plaintiff, Groucho’s Franchise Systems, LLC (“Groucho’s” or
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`“Plaintiff”) is a South Carolina limited liability company, providing restaurant
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`services and selling food, namely operating a deli-style restaurant with its
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`principal place of business in Columbia, South Carolina and operating twenty-
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`five restaurants located around the southeastern United States.
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`Page 1 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 2 of 17
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`2.
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`Upon information and belief, Defendant, Grouchy’s Deli, Inc. d/b/a
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`New York Deli and Bagels (“Grouchy’s” or “Defendant”) is a Georgia
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`corporation operating a restaurant with its principal place of business in
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`Alpharetta, Georgia.
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`JURISDICTION AND VENUE
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`3.
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`This action arises under the Lanham Act of the United States, 15
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`U.S.C. § 1051 et seq. and the common law of the Georgia as a result of
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`Defendant’s
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`infringement of the Plaintiff’s registered and common
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`law
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`trademarks and service mark rights, and other unlawful activities conducted by
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`Defendant in connection with such infringement.
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`4.
`
`This Court has jurisdiction over the subject matter of this action
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`pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331, 1367 and 1338, and the doctrine of
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`pendent and ancillary jurisdiction.
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`5.
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`This Court has personal jurisdiction over Defendant because it: (a)
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`regularly conducts business and transacts business within the State of Georgia; (b)
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`has committed acts of trademark and service mark infringement in the State of
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`Georgia causing injury within the State of Georgia; and (c) maintains a principal
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`place of business in the State of Georgia.
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`Page 2 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 3 of 17
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`6.
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`Venue is proper in this District and this Court pursuant to 28 U.S.C.
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`§ 1391(b) as Defendant’s registered agent is Bruce Cohn with a registered office
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`address of 12765 Wyngate Trail, Alpharetta, Fulton County, Georgia 30005.
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`FACTUAL BACKGROUND
`
`PLAINTIFF AND ITS TRADEMARKS AND SERVICE MARKS
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`7.
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`Since as early as 1941, Plaintiff has been operating a restaurant
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`which offers deli-style sandwiches. Plaintiff has always operated under the
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`service mark GROUCHOS®. Plaintiff has provided such services continuously
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`and without interruption, since opening in 1941 through the present. Since
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`opening its first location in Columbia, South Carolina, Plaintiff’s business has
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`gained popularity with its customers and its demand increased significantly.
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`GROUCHO’S now operates at least twenty-eight locations throughout the
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`southeastern United States.
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`8.
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`Plaintiff’s success is due substantially to its branding and the quality
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`control exercised over the use of its marks. In order to protect what it considers
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`one of its most valuable assets, namely, the name of its restaurants, Plaintiff filed
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`for and obtained federal trademark and service mark registrations for its marks
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`from the United States Patent and Trademark Office. Plaintiff is the owner of the
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`following trademarks and service marks, (hereafter collectively referred to as the
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`Page 3 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 4 of 17
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`“Trademarks”) which are registered on the Principal Register of the United
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`States Patent and Trademark Office (the “Registrations”).
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`9.
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`On April 1, 1996, Plaintiff filed a federal trademark application (U.S.
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`Ser. No. 75/082,003) for the mark GROUCHO’S as used in connection with
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`restaurant services in Intl. Class 42, and with a date of first use of February 1,
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`1952. The Registration issued on February 18, 1997, U.S. Registration Number
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`2,038,973.
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`10. On January 6, 2000, Plaintiff filed a federal trademark application
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`(U.S. Ser. No. 75/888,300) for the stylized mark GROUCHO’S FAMOUS as used
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`on sauces for use as a condiment, namely salad dressings and dipping sauces in
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`Intl. Class 30, and with a date of first use of November 1, 2000. The Registration
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`issued on March 25, 2003, U.S. Registration Number 2,700,771.
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`11.
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`The Registrations are valid, continuing and constitute prima facie
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`evidence of Plaintiff’s ownership of the Trademarks and the Registrations, the
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`validity of the Trademarks and Registrations and of Plaintiff’s exclusive rights to
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`use the Trademarks in commerce on and in connection with the goods and
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`services recited in the Registrations. True and correct copies of the United States
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`Patent and Trademark Office certificates of registration for the Trademarks are
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`attached hereto as Exhibit “A” and incorporated herein by this reference. The
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`Page 4 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 5 of 17
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`registrations constitute conclusive evidence of Plaintiff’s exclusive rights to use
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`said marks in connection with its services.
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`12.
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` In addition to Plaintiff’s registered Trademarks, through continuous
`
`and exclusive use of the Trademarks, Plaintiff has acquired common law
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`trademark and service mark rights in the Trademarks
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`13.
`
`Plaintiff acquired its common law rights and registrations in the
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`Trademarks years prior to the acts of Defendant complained of herein. Those
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`common law rights include the geographic area of the southeastern United States,
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`including such common law rights established by a restaurant located in
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`Augusta, Georgia, from March of 2005 until November of 2006, Athens, Georgia,
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`from August of 2013 to the present, and Statesboro, Georgia from June of 2013 to
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`the present.
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`14.
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`Plaintiff has expended a great deal of time, effort and money in the
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`promotion and advertisement of its Goods and Services offered for sale and sold
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`in connection with the Trademarks.
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`15.
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`Plaintiff’s growth and tremendous success is due in large part to the
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`public’s recognition of the high quality goods and services Plaintiff provides
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`under the Trademarks. Based in part on this value, Plaintiff is continually
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`expanding its business and offers its Goods and Services through a franchise
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`system throughout the United States. Authorized franchisees, area developers
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`Page 5 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 6 of 17
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`and other licensees associated with Plaintiff’s franchise system are or will be
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`licensed to use the Trademarks in connection with the Goods and Services and
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`Plaintiff supervises or will supervise the nature and quality of the services they
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`perform and the goods they sell. Plaintiff allows or will only allow its
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`Trademarks to be used by franchisees, area developers and licensees that meet
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`strict criteria and who are capable of cultivating the sterling image and
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`reputation of Plaintiff and its Goods and Services.
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`16. As a direct result of Plaintiff’s efforts, the general public associates
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`the Trademarks, when used by Plaintiff and to be used by its authorized
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`franchisees and licensees, as identifying Plaintiff as the single source of the goods
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`and services sold and offered for sale under the Trademarks. The Trademarks
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`distinguish Plaintiff’s goods and services from products and services offered by
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`others. Without question, the Trademarks are unique and arbitrary. As a result of
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`the widespread and continuous use and promotion of the Trademarks, they are
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`distinctive and/or have acquired secondary meaning in the minds of customers.
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`17. Also as a result of Plaintiff’s widespread and continuous use and
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`promotion of the Trademarks on the large variety of goods and services, the
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`Trademarks have become widely known and recognized as identifying Plaintiff
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`as the source of the goods and services. The Trademarks represent and embody
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`Page 6 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 7 of 17
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`the enviable reputation and very valuable goodwill of Plaintiff among members
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`of the trade and the purchasing public.
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`DEFENDANT
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`18. Defendant is operating a delicatessen under the name GROUCHY’S,
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`which has caused and will cause confusion in the market place and infringes
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`upon Plaintiff’s rights. Defendant receives a direct benefit from the infringing
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`activities. A copy of Defendant’s website home page is attached hereto as
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`Exhibit “B” and incorporated herein by this reference.
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`TRADEMARK AND SERVICE MARK INFRINGEMENT
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`19.
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`Prior to filing this lawsuit, Plaintiff, through its legal counsel,
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`demanded in writing that Defendant cease using the Trademarks and contact
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`Plaintiff’s counsel to coordinate an immediate cessation of all uses of the
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`Trademarks. Plaintiff’s counsel sent cease and desist letters on July 25, 2013 and
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`November 8, 2013. Defendant responded to Plaintiff’s letter of November 8, 2013,
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`through its counsel, on November 21, 2013. Plaintiff’s counsel then sent an email
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`to Defendant’s counsel regarding settlement of the issues on January 22, 2014,
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`and to date, has received no further response. Copies of the correspondence
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`between the parties are attached hereto as Exhibit “C” and incorporated herein
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`by reference.
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`Page 7 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 8 of 17
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`20. Defendant’s unauthorized use of
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`the Trademarks creates a
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`likelihood of confusion, mistake, and deception as to the source and sponsorship
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`of their goods and services such that consumers are likely to believe, contrary to
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`fact, that Defendant’s business is associated or affiliated with Plaintiff and that
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`Defendant’s business is an authorized licensee, which it is not, all to Plaintiff’s
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`irreparable loss and damage. In addition, Defendant’s acts complained of herein
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`injure Plaintiff’s valuable goodwill and well established business reputation.
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`21. Not only is confusion likely, but actual confusion with the public is
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`occurring, as Plaintiff has received inquiries from customers regarding the
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`relationship between Plaintiff’s business and Defendants’ broadcast.
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`22. Defendant’s actions were and continue to be taken in willful and
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`malicious disregard of Plaintiff’s rights.
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`23. Defendant’s infringing activities have caused Plaintiff monetary
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`harm.
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`24. Defendant’s unauthorized use of Plaintiff’s Trademarks
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`is a
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`deceptive practice that has an adverse impact on the public interest.
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`25.
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`By virtue of Defendant’s actions described herein, Plaintiff is being
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`irreparably harmed and does not have an adequate remedy at law because
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`Plaintiff’s special interest in protecting the integrity of the Trademarks and in
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`preventing customer confusion are being seriously threatened. Actual confusion
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`Page 8 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 9 of 17
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`of purchasers has already occurred and will continue to occur in the future
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`unless Defendant is enjoined from continuing its unlawful conduct. Plaintiff’s
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`irreparable injury also includes, without limitation, harm to the value of its
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`goodwill and business reputation and its ability to exclusively maintain its
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`Trademarks to the exclusion of all others. Defendant is also irreparably harming
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`the ability of Plaintiff to maintain its relationships with its existing and
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`identifiable prospective customers and with its potential franchisees and
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`franchise system.
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`26.
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`Plaintiff is likely to succeed on the merits of its claims. Any harm to
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`Defendant if injunctive relief is granted would be outweighed by the harm that
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`would result to Plaintiff if injunctive relief is not granted. The public interest
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`would be served by the granting of injunctive relief
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`27.
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`Plaintiff has hired the undersigned law firms and obligated itself to
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`pay a reasonable attorneys’ fee.
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`28. All conditions precedent to the bringing of this action has occurred,
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`have been performed, have been fulfilled, or have been waived.
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`COUNT I
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`FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. § 1114)
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`29.
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`Plaintiff repeats and realleges each and every allegation of
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`paragraphs 1 through 28 above as if fully set forth herein.
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`Page 9 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 10 of 17
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`30.
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`This count is for infringement of federally registered trademarks and
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`service marks in violation of the Lanham Act, 15 U.S.C. § 1051-1129.
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`31.
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`The acts of Defendant complained of herein constitute trademark
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`and service mark infringement of Plaintiff’s federally registered Trademarks, as
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`depicted in the Registrations, in violation of 15 U.S.C. § 1114-1118.
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`32.
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`By virtue of the foregoing conduct and as a proximate result there
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`from, Plaintiff has been damaged and is entitled to injunctive relief.
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`COUNT II
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`FALSE DESIGNATION OF ORIGIN (15 U.S.C. § 1125(a))
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`33.
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`Plaintiff repeats and realleges each and every allegation of
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`paragraphs 1 through 32 above as if fully set forth herein.
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`34.
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`This count is for infringement of common law trademark and
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`service mark rights and unfair competition in violation of the Lanham Act, 15
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`U.S.C. § 1051-1129.
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`35.
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`Through continuous and exclusive use of the Trademarks, Plaintiff,
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`through its licensees and/or potential franchisees, has acquired common law
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`rights in its Trademarks. Plaintiff possesses common law rights in the same
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`geographic areas that Defendant operates. Plaintiff’s common law Trademark
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`rights were established across the southeastern United States, and particularly in
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`Page 10 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 11 of 17
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`the State of Georgia, before Defendant first advertised and sold its infringing
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`goods within the State of Georgia.
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`36. Defendant’s acts set forth above are likely to cause confusion, or to
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`cause mistake, or to deceive as to the affiliation, connection, or association of
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`Defendant with Plaintiff, or as to the origin, sponsorship, or approval of
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`Defendant’s goods and services, in violation of 15 U.S.C. § 1125(a).
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`37.
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`By virtue of the foregoing conduct and as a proximate result there
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`from, Plaintiff has been damaged and is entitled to injunctive relief.
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`COUNT III
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`COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR
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`COMPETITION
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`38.
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`Plaintiff repeats and realleges each and every allegation of
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`paragraphs 1 through 37 above as if fully set forth herein.
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`39.
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`This count is for trademark and service mark infringement and
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`unfair competition under the common laws of the State of Georgia.
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`40.
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`Through continuous and exclusive use of the Trademarks, Plaintiff,
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`through its licensees and/or franchisees, has acquired common law rights in its
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`Trademarks. Plaintiff possesses common law rights in the same geographic areas
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`that Defendants operate their restaurants.
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`Page 11 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 12 of 17
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`41. Defendant’s acts set forth above are likely to cause confusion, or to
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`cause mistake, or to deceive as to the affiliation, connection, or association of
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`Defendant with Plaintiff, or as to the origin, sponsorship, or approval of
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`Defendant’s goods and services, in violation of the common laws of the State of
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`Georgia.
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`42.
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`By virtue of the foregoing conduct and as a proximate result there
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`from, Plaintiff has been damaged.
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`COUNT IV
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`VIOLATION OF THE DECEPTIVE TRADE PRACTICES ACT (O.C.G.A.
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`§ 10-1-372)
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`43.
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`Plaintiff repeats and realleges each and every allegation of
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`paragraphs 1 through 42 above as if fully set forth herein.
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`44.
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`This count alleges that Defendant has violated the Deceptive Trade
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`Practices Act codified in O.C.G.A. § 10-1-372.
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`45. Defendant’s acts set forth above are likely to cause confusion, or to
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`cause mistake, or to deceive as to the affiliation, connection, or association of
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`Defendant with Plaintiff, or as to the origin, sponsorship, or approval of
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`Defendant’s goods and services, in violation of the common laws of the State of
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`Georgia.
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`Page 12 of 17
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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 13 of 17
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`46.
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`By virtue of the foregoing conduct and as a proximate result there
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`from, Plaintiff has been damaged.
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`COUNT V
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`UNJUST ENRICHMENT
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`47. Plaintiffs repeat and reallege each and every allegation of
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`paragraphs 1 through 47 above as if fully set forth herein.
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`50. This count alleges that Defendant has been unjustly enriched by
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`their illegal and improper actions.
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`51. Defendant has
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`controlled, misappropriated and used
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`the
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`Trademarks for their own advantage.
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`52. Through the unlawful and improper conduct described above,
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`Defendant has, at the expense of Plaintiff, been unjustly enriched and should not
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`be entitled to retain those benefits.
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`53. Plaintiff is entitled to restitution of the amount by which Defendant
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`was, and continues to be, unjustly enriched, and Defendant should be estopped
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`from inequitably retaining such benefits.
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`WHEREFORE, Plaintiff GROUCHO’S FRANCHISE SYSTEMS, LLC
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`demands judgment against Defendant GROUCHY’S, as follows:
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`(a) A declaration that Plaintiff is the owner of the entire right, title, and
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`interest in and to the Trademarks and Registrations;
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`Page 13 of 17
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`

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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 14 of 17
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`(b) A declaration that Plaintiff’s rights
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`in the Trademarks and
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`Registrations are valid, enforceable, and has been infringed by Defendant, and
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`that Defendant has violated other relevant federal laws and regulations;
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`(c) Pursuant to 15 U.S.C. § 1116(a), a preliminary injunction, and upon
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`final hearing a permanent injunction, enjoining Defendant, its agents, employees
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`and any persons acting in concert with Defendant, from: (i) improperly using or
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`misappropriating, directly or indirectly, the Trademarks or any colorable
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`imitation thereof or mark confusing similar thereto; (ii) holding themselves out
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`to the public as being an authorized GROUCHO’S licensee or as being affiliated
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`with or sponsored by Plaintiff in any manner or committing any acts likely to
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`imply such a relationship or affiliation; (iii) passing off their products and
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`services as originating with or sponsored or authorized by Plaintiff; and (iv)
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`otherwise infringing Plaintiff’s rights in the Trademarks and Registrations and
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`competing unfairly with Plaintiff;
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`(d) Pursuant to 15 U.S.C. § 1116(a) and 1118, an order requiring
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`Defendant to deliver up to Plaintiff for destruction all signs, advertisements,
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`literature, business forms, cards,
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`labels, packages, wrappers, pamphlets,
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`brochures, receptacles, point of sale displays, and any other products in their
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`possession or under their control, as well as any products which bear any
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`Trademarks or marks owned by Plaintiff or any colorable imitation thereof or
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`Page 14 of 17
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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 15 of 17
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`any mark confusingly similar thereto and any plates, molds and other means of
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`making the same;
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`(e) Pursuant to 15 U.S.C. § 1116(a), a preliminary injunction, and upon
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`final hearing a permanent injunction, ordering Defendant to notify all of their
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`existing and prospective customers of the Court’s Order;
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`(f)
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`Pursuant to 15 U.S.C. § 1116 (a), an order requiring Defendant to file
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`with this Court and serve on Plaintiff within thirty (30) days after the entry of an
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`injunction in this cause, a written report under oath setting forth in detail the
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`manner and form in which Defendant has complied with the injunction;
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`(g) Actual and consequential damages proximately caused by
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`Defendant’s actions including, without limitation, Defendant’s profits and any
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`damages sustained by Plaintiff pursuant to 15 U.S.C. § 1117(a);
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`(h) A trebling of all damages awarded pursuant to 15 U.S.C. § 1117(a);
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`(i)
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`Plaintiff’s attorneys’ fees pursuant to 15 U.S.C. § 1117(a);
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`(j)
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`Prejudgment interest and the costs of this action; and
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`(k)
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`Such further relief as this Court deems proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a jury trial for all issues so triable as a matter of
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`right.
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`Page 15 of 17
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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 16 of 17
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`Respectfully submitted this 4th day of June, 2014.
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`MANER CRUMLY CHAMBLISS LLP
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`/s/ Jonathan D Crumly, Sr.
`Jonathan D. Crumly, Sr.
`Georgia Bar No. 199466
`Vinings Square, Suite B-101
`2900 Paces Ferry Road
`Atlanta, Georgia 30339
`Telephone: (770) 434-0310
`Facsimile: (404) 549-4666
`Email: jcrumly@ManerCC.com
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`
`
`Thomas L. Moses
`Fed. ID 7049
`SOUTHEAST IP GROUP, LLC
`13-B West Washington Street
`Greenville, South Carolina 29601
`Telephone: (864) 509-1905
`Facsimile: (864) 509-1907
`E-mail: tmoses@seiplaw.com
`(Application
`for Pro Hac Vice
`Admission to be Submitted)
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`Attorneys for Plaintiff
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`Page 16 of 17
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`Case 1:14-cv-01725-WSD Document 1 Filed 06/04/14 Page 17 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`
`Groucho’s Franchise Systems, LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`Grouchy’s New York Deli and
`Bagels.
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO.
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`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`The undersigned attorney hereby certifies, pursuant to L.R. 7.1, ND Ga.,
`
`that the foregoing COMPLAINT was prepared in accordance with L.R. 5.1, ND
`
`Ga. using Book Antiqua font, 13 point.
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`
`
`/s/ Jonathan D. Crumly, Sr.
`Jonathan D. Crumly, Sr.
`Georgia Bar No. 199466
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`
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`Page 17 of 17
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`A-1
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`Case 1:14-cv-01725-WSD Document 1-1 Filed 06/04/14 Page 1 of 2
`EXHIBIT
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`exhibitsticker.com
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`A
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`Case 1:14-cv-01725-WSD Document 1-1 Filed 06/04/14 Page 2 of 2
`Case 1:14—cv—O1725—WSD Document 1-1 Filed 06/04/14 Page 2 of 2
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`Int. CL: 30
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`Prior U.S. CL: 46
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`United States Petent and Trademark Office
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`TRADENIARK
`PRINCIPAL REGISTER
`
`Reg. No. 2;)00,771
`Registered Mar. 25, 2003
`
`
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`(CALIFORNIA CORPORA-
`
`OWNER 0}’ 1.1.8. REG. NO. 2,038,973.
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`NO CLAIM IS MADE TC1 THE EXCLUSIVE
`RIGHT TO USE "FAMOUS", APART FROM THE
`MARK AS SHOWN.
`
`SN 75«8B8,300, FILED 1-6-2000.
`
`GROgCHO’S LTD.
`T1 N)
`611 HARDEN STREET
`COLUMBIA, SC 29204
`
`FOR: SAUCES FOR USE AS A CONDIMENT,
`NAMELY SALAD DRESSINGS AND DIPPING SAU-
`CBS, IN CLASS 30 (U5. CL. 46).
`
`FIRST USE 11-1-2000; IN COMMERCE 11-1-2000.
`
`INGRID C. EULIN, EXAMINING ATTORNEY
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`A-2
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`B-1
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`EXHIBIT
`Case 1:14-cv-01725-WSD Document 1-2 Filed 06/04/14 Page 1 of 1
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`exhibitsticker.com
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`B
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`C-1
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`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 1 of 6
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`exhibitsticker.com
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`EXHIBIT
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`C
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`Case 1:14—cv—O1725'—VVSD Document 1-3 Filed 06/04/12? Page 2 of 6
`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 2 of 6
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`Thank you for your prompt attention to this matter, and I look forward to receiving your
`assurances that your business will cease and desist fiom any further use of the
`GROUCHY’ S mark for restaurant services.
`
`If you or your attorney would like to discuss this matter further, I may be reached at 864-
`509-1905.
`
`Sincerely, J
`:
`(/
`
`Thomas L. 1\/Iosjes
`
`Southeast IP Group, LLC
`
`cc:
`
`Groucho’s Franchise Systems, LLC.
`
`Enclosures: U.S. Reg. No. 2038973
`U.S. Reg. No. 2700771
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`C-2
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`Case 1'14—cv—O17‘Z5—WSD Document 1-3 Filed O6/04714 Page 3 of 6
`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 3 of 6
`Southeast
`P Group, LLC
`
`INTELLECTUAL PROPERTY LAW
`
`Registered Patent Attorney
`T'm°SeS@5eiP1aw'C°m
`
`Thomas L‘ M0565
`Member State Bar South Carolina
`
`November 8, 2013
`
`Grouchy’s New York Deli and Bagels
`11525 Haynes Bridge Rd.
`»
`Alpharetta, GA 30009
`
`Re:
`
`GROUCHY’S Trademark Matter
`
`Dear Sir or Madame:
`
`You will recall that we sent out a letter to you regarding the above-referenced trademark
`matter between your company and our client, Groucho’s Franchise Systems, LLC, based
`out of Columbia, South Carolina. To date, we have received no response to that letter of
`July 25, 2013.
`'
`
`We are attaching a courtesy copy of a Complaint alleging, inter alia, trademark
`infringement and unfair competition. Please be advised that ifwe do not hear back from
`you about this matter, we will be. forced to file this action in Federal Court, in order to
`protect our client’s valuable intellectual property.
`
`Accordingly, we look forward to hearing from you within the next ten (10) days, so that
`we may resolve this matter, preferably without having to resort to costly and time-
`consuming legal action.
`
`If you or your attorney would like to discuss this matter further, I may be reached at 864-
`509-1905.
`
`Sincerely,
`
`./
`
`___,._,_,__
`
`Thomas L. Moses
`Southeast IP Group, LLC
`
`cc:
`
`Groucho’s Franchise Systems, LLC.
`
`Enclosures:
`
`Complaint for lnjunctive and Monetary Relief and Demand for Jury Trial
`
`
`13-13 W. Washington St., Greenville, SC 29601
`lp: 864.509.1905
`lf: 864.509.1907
`
`“‘—‘—*—————————————j~
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`C-3
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`C-3
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`SMITH u%pS1L%rfv—O1725—WSD Document 1-3 Filed O6/047174 Page4of6
`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 4 of 6
`‘I
`Robert B. Dulaney III
`-
`Direct 770.709.0086 l Fax 770.804.0900
`rdulaney@srtslaw.com
`
`www.srtslaw.com
`
`November 21, 2013
`
`Via Facsimile and U.S. Mail
`Thomas L. Moses
`
`Southeast IP Group, LLC
`13—B W. Washington Street
`Greenville, SC 29601
`(_864) 509-1907 (facsimile)
`
`Re.:
`
`GROUCHY’S ® Trademark Matter
`
`Dear Mr. Moses:
`
`This firm represents Grouchy’s New York Deli and Bagels with respect to intellectual
`property matters. We have reviewed your November 8, 2013 and July 25, 2013 letters as well as
`your client’s 2038973 and 2700771 trademark registrations. After reviewing these materials, and
`our client’s
`incontestable trademark registration no. 2991924 for
`the
`stylized mark
`GROUCHY’S for restaurant and catering services, we disagree with your conclusion that there is
`a risk of confusion with your client’s marks, or that our client needs to select another name for its
`business.
`'
`I
`
`First, our client’s stylized mark for GROUCHY’S (incontestable registration no.
`2991924) bears little resemblance to your client’s stylized mark for GROUCHO’S FAMOUS
`(registration no. 2700771). Nor are the goods for your client’s GROUCHO’S FAMOUS the
`same as, or similar to, those with which our client uses its GROUCHY’S stylized mark. Thus,
`we do not believe there can be any likelihood of confirsion between these two marks.
`
`Second, we also do not believe that there is any likelihood of confusion between our
`client’s use of its stylized GROUCI-lY’S mark and your client’s GROUCHO-’S word mark.
`Referring to your client’s website in the “About US” section, your client’s mark originated with,
`and refers to, the original owner’s resemblance to a famous third-party, Grouch Marx.
`In
`particular, in the South Carolina region where your client predominantly operates (and up until
`recently solely operated), the original owner “was Groucho Marx. So that is how the name came
`about.”
`
`Notwithstanding your client’s appropriation of a famous third party’s name for its
`trademark, our client’s stylized GROUCHY’S mark has a different appearance, connotation and
`commercial impression than your clier_1t’s GROUCHO’S word mark. For example, the term
`“grouchy” used in our client’s stylizedgmark is defined as, and connotes, a grumpy, irritable, or
`bad—tempered individual. In contrast, the term “groucho” used in your client’s word mark has no
`definition other than oneeof the famous Marx brothers, a connotation that your client admits was
`the basis for its word mark. For at least this reason, we do not believe that there is any likelihood
`of confusion between the stylized mark used by our client and your client’s word mark.
`
` _?:___
`Atlanta Office E Two Ravinia Drive a Suite 700 2 Atlanta, GA 30346 0 Phone 770.709.0080 6 Fax 770.804.0900
`Athens Office 1055 Prince Avenue 9 Athens, GA 30606 2 Phone 706.621.5777
`
` _ _
`
`C-4
`C-4
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`_ Case 1:14—cv—O1725—WSD Document 1-3 Filed O6/O4l‘1I4 Page5of6
`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 5 of 6
`Mr. Thomas L. Moses
`
`November 21, 2013
`Page 2
`
`Finally, we note that our client has made substantial investments in the GROUCHY’S
`mark and brand since its inception over thirteen years ago and subsequent expansion to two
`locations. Selecting a new name for both of these locations, their website, advertising, etc., as
`your letters request would be a great expense and undermine the substantial goodwill our client
`has built in its brand and mark over the last thirteen years. Under the circumstances, we do not
`believe that your client’s demands that my client incur such an expense are, or would be viewed
`as, reasonable or warranted.
`
`We share your hope that this matter may be resolved amicably. As set forth above, we do
`not believe that your November 2013 and July 2013 letters support any legitimate demand for
`our client to cease using its GROUCHY’S mark. Our client has no desire to engage in litigation,
`or to challenge your client’s use of its own marks.
`Instead, it is our client’s desire that the two
`different businesses continue to peacefully co-exist as they apparently have for the past thirteen
`years. To that end, we look forward to your assurances that your client will cease from any
`further accusations and]or threats of litigation against our client.
`
`If you would like to further discuss any of the above, please feel free to call me at your
`convenience.
`I can be reached at (770) 709-0086.
`
`Sincerely,
`
`«*7 '_i
`
`.
`
`d;fl/vllit.lrf«,
`
`Robert B. Dulafney III
`
`C-5
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`

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`Case 1:14—cv—O17’2fl5—WSD Document 1-3 Filed O6/03.714 Page 6 of 6
`Case 1:14-cv-01725-WSD Document 1-3 Filed 06/04/14 Page 6 of 6
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`Thomas Moses
`
`From:
`
`Sent:
`To;
`Subject:
`
`Mr. Dulaney:
`
`Thomas Moses
`
`Wednesday, January 22, 2014 1:13 PM
`'rdulaney@srtslaw.com'
`Groucho's I Grouchy's Trademark Matter
`
`As you may recall, I represent Groucho’s Franchise Systems, LLC, and we have exchanged letters recently regarding our
`clients’ trademark rights.
`I would like to schedule a brief teleconference with you, at your convenience, to discuss ways
`in which we may settle this matter without having to resort to litigation.
`
`I will be out ofthe office tomorrow and Friday, but will be back next week.
`
`is there a time next week that we could talk?
`
`Thanks,
`
`Tom Moses
`
`Southeast I]? Group, LLC
`13-B West Washington 81:.
`Greenville, SC 29601
`
`864.509.1905
`
`(f) 864.509.1907
`
`E-MAIL CONFIDENTIALITY NOTICE: ‘
`
`The contents of this e—mail message and any attachments are inte