Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1087743
`10/09/2020
`
`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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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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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92074266
`
`Defendant
`Mad Italian Pizza LLC
`
`NATHAN P SUEDMEYER
`LARSON & LARSON PA
`11199 69TH STREET NORTH
`LARGO, FL 33773
`UNITED STATES
`Primary Email: nathan@larsonpatentlaw.com
`Secondary Email(s): anona@larsonpatentlaw.com
`727-546-0660
`
`Other Motions/Papers
`
`Nathan P. Suedmeyer
`
`nathan@larsonpatentlaw.com
`
`/Nathan P. Suedmeyer/
`
`10/09/2020
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`Notice of Pending Action.pdf(139526 bytes )
`Dkt. 19 - Pejas Motion to Intervene.pdf(2774684 bytes )
`Dkt. 21 - Memo Opposing Motion to Intervene Part 1.pdf(4490477 bytes )
`Dkt. 21 - Memo Opposing Motion to Intervene Part 2.pdf(2354360 bytes )
`Dkt. 22 - Notice to Withdraw Motion to Intervene.pdf(158512 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Peja Inc.,
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`Cancellation No.: 92074266
`
`Petitioner,
`
`v.
`
`Mad Italian Pizza LLC,
`
`Respondent.
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`
`
`
`
`
`
`
`Mark:
`
`
`
`Registration No. 5575238
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`Registration Date: October 2, 2018
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`
`
`NOTICE OF PENDING ACTION
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`Pursuant to the Board’s Order on Petitioner’s Motion to Quash (Dkt. 10, n. 2),
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`Respondent files the following documents with the Board:
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`1. Dkt. 19 – Peja’s Motion to Intervene, including all exhibits;
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`2. Dkt. 21 – Mad Italian Pizza’s Memorandum in Opposition to Motion to
`Intervene, including all exhibits; and
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`3. Dkt. 22 – Peja’s Notice to Withdraw its Motion to Intervene.
`
`Respectfully submitted,
`
`s/ Nathan P. Suedmeyer /
`Nathan P. Suedmeyer, Esq.
`
`LARSON & LARSON, P.A.
`11199 69th Street North
`Largo, FL 33773
`nathan@larsonpatentlaw.com
`Phone: (727) 546-0660
`Attorney for Respondent
`
`
`
`
`
`

`

`CERTIFICATE OF FILING AND SERVICE
`
`I hereby certify that on October 9, 2020, I electronically filed this document
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`with the Board by using the ESTTA system, and emailed a copy to:
`
`Steven M. Forte
`Paul Murty
`Smith & Hopen, PA
`180 Pine Avenue North
`Oldsmar, FL 34677
`United States
`trademarks@smithhopen.com
`steven.forte@smithhopen.com
`paul.murty@smithhopen.com
`Phone: 813-925-8505
`
`
`s/ Nathan P. Suedmeyer /
`Nathan P. Suedmeyer, Esq.
`
`
`
`
`2
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 1 of 10 PageID 181
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`
`MAD ITALIAN PIZZA, LLC d/b/a
`SLICE OF LIFE PIZZERIA,
`
`
`
`
`
`
`
`
`
`
`Case No.: 8:20-cv-01369-SDM-JSS
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`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`v.
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`
`
`TWO BOYS, LLC,
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`Defendant.
`
`_________________________________/
`
`
`NON-PARTY, PEJA, INC.’S MOTION TO INTERVENE
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`Pursuant to Rule 24 (a)(2) and (b)(1), Federal Rules of Civil Procedure, non-party, Peja,
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`
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`Inc. (“Peja”), moves on the following grounds to intervene as a defendant and counterclaimant in
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`the above-captioned litigation between Plaintiff, Mad Italian Pizza, LLC d/b/a Slice of Life
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`Pizzeria (“Mad Italian”), and Defendant, Two Boys, LLC (“Two Boys”):
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`1.
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`Peja owns the rights to the word mark, SLICE OF LIFE, and design mark SLICE
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`OF LIFE (collectively, the “SLICE OF LIFE Mark”), which is the subject of this lawsuit and
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`should be allowed to intervene to protect its interests in the Mark.
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`2.
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`Peja licensed use of the SLICE OF LIFE Mark to Defendant, Two Boys, and should
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`be allowed to intervene in order to protect its business interest in its license and relationship with
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`Two Boys.
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`3.
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`Before filing this lawsuit, Plaintiff, Mad Italian, knew of Peja’s interests in the
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`SLICE OF LIFE Mark.
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`4.
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`At the very latest, Mad Italian was aware of Peja’s interests on April 20, 2020. In
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`response to Peja’s attempt to informally resolve this trademark dispute, Mad Italian had its attorney
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`

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`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 2 of 10 PageID 182
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`send a threatening letter to Peja’s principal, which letter acknowledged Peja’s rights to use the
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`SLICE OF LIFE Mark. A true and accurate copy of the April 20, 2020 correspondence from
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`Nathan Suedmeyer, Esq. to Safet Mulaj is attached hereto as Exhibit “A”.
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`5.
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`On May 19, 2020, Peja filed a trademark cancellation proceeding against Mad
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`Italian’s U.S. Trademark Reg. No. 5,575,238 (the “’238 Registration”) for the word mark “The
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`Original Slice Of Life Pizzeria” and design mark (collectively, “Mad Italian’s SLICE OF LIFE
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`Mark”).
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`6.
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`In apparent response to Peja’s filing of the cancellation proceeding against Mad
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`Italian, Mad Italian lived up to its name and sued Peja’s licensee Two Boys, but not Peja, for
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`infringement of Mad Italian’s SLICE OF LIFE Mark” on June 14, 2020.
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`7.
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`Peja’s counsel attempted to obtain an agreement from Mad Italian’s counsel to add
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`Peja as a party to this lawsuit. Mad Italian’s counsel initially agreed to file an amended complaint
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`adding Peja, but later reneged. See Certificate of Good Faith Conference, infra. As a result, Peja
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`needs to move this Court to intervene in order to protect Peja’s rights to the SLICE OF LIFE Mark
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`and in its license with Two Boys.
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`8.
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`As set forth in more detail in the Memorandum Of Law, infra, Peja has a right to
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`intervene under Rule 24 (a)(2), Federal Rules of Civil Procedure, or should alternatively be
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`permitted to intervene under Rule 24 (b)(1)(B).
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`9.
`
`Pursuant to Rule 24 (c), Federal Rules of Civil Procedure, a proposed Answer,
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`Affirmative Defenses, and Counterclaim is attached hereto as Exhibit “B”.
`
`
`
`WHEREFORE, Peja, Inc. respectfully requests the Court grant this Motion, direct Peja,
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`Inc., to file and serve the attached Answer, Affirmative Defenses, and Counterclaim, and grant
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`such other and further relief this Court deems just and necessary.
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` 2
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`

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`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 3 of 10 PageID 183
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`CERTIFICATE OF GOOD FAITH CONFERENCE
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`
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`Pursuant to Local Rule 3.01 (g), the undersigned counsel hereby certifies that he conferred
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`with Plaintiff’s counsel via telephone and email regarding the substance of this Motion. Although
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`Plaintiff’s counsel initially agreed to amend the Complaint to add Peja as a defendant, counsel
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`later recanted and would not agree to the relief requested in this Motion.
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`
`
`
`
`
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`
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`
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`
`
`
`
`/s/ Richard E. Fee
`
`
`
`
`
`MEMORANDUM OF LAW
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`In accordance with Local Rule 3.01 (a), Peja submits this Memorandum of Law in support
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`of Peja’s Motion to Intervene.
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`The foundation of this pizza trademark case, the basic pie if you will, is a dispute between
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`Mad Italian and Peja, which own pizzerias, over ownership of the SLICE OF LIFE Mark. Mad
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`Italian filed suit against Two Boys merely as an added topping, because it apparently perceives
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`doing so makes its arguments more palatable. But, toppings alone do not a pizza make. You need
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`the underlying pie. As a result, Peja should be permitted to intervene so the real parties can resolve
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`the real dispute – who owns the SLICE OF LIFE Mark. Such intervention is legally proper under
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`both the Federal Rules of Civil Procedure and controlling precedent.
`
`I.
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`FACTUAL BACKGROUND
`
`Peja Is The Senior User Of The SLICE OF LIFE Mark
`
`
`
`Peja’s use of the SLICE OF LIFE Mark in connection with restaurant services dates back
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`to at least as early as February, 2012. See Exhibit C to Defendant’s Answer, Affirmative Defenses
`
`to Complaint, Counterclaim, and Request for Jury Trial [Dkt. #14-3]. According to the ‘238
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`Registration, Mad Italian’s first use of Mad Italian’s SLICE OF LIFE Mark dates back to only
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`March 14, 2016. See Complaint, Ex. 1, Dkt. #1-1.
`
` 3
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`

`

`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 4 of 10 PageID 184
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`
`
`
`
`
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`Peja Licensed Use of The SLICE OF LIFE Mark To Two Boys
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`Before Mad Italian filed this lawsuit, Peja granted Defendant Two Boys a license to use
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`the SLICE OF LIFE Mark in connection with restaurant services at 7375 Commercial Way, Weeki
`
`Wachee, Florida (the “Weeki Wachee Location”). Mad Italian’s lawsuit is based on Two Boys’
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`use of the SLICE OF LIFE Mark at the Weeki Wachee location. See Complaint, at paras. 4, 14-
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`16, 27, and 36-43.
`
`
`
`
`
`
`
`Peja’s Trademark Cancellation Proceeding
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`Also before this lawsuit was filed, Peja filed its Petition for Cancellation of Mad Italian’s
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`‘238 Registration on May 19, 2020. See Exhibit C, hereto. Peja raised two grounds for cancellation
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`in its Petition: (1) priority and likelihood of confusion; and (2) fraud. Id. at paras. 1 through 14.
`
`Peja contends in the Petition for Cancellation that Mad Italian committed fraud in its application
`
`for the ‘238 Registration when its authorized agent declared in the application:
`
`no other person, firm, corporation, or association, to the best of Plaintiff’s agent’s
`knowledge and belief, had the right to use the applied-for mark in commerce either
`in the identical form of the mark or in such near resemblance of the mark as to be
`likely, when used on or in connection with the goods of such other person, firm,
`corporation, or association, to cause confusion, mistake, or deception.
`
`Mad Italian knew at the time it applied to register the mark that issued as the ‘238 Registration,
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`that Peja had used the SLICE OF LIFE Mark in the U.S. in connection with restaurant services
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`before Mad Italian. Thus, Mad Italian’s declaration to the USPTO was made with knowledge and
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`belief that its statement was false and with the intent to induce the USPTO, including the
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`examining attorney, to grant the ‘238 Registration.
`
`
`
`
`
`
`
`Mad Italian Retaliates Against Peja By Suing Peja’s Licensee, Two Boys
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`After Peja initiated the cancellation proceeding, Mad Italian filed this action against Two
`
`Boys for infringement of the ‘238 Registration on June 14, 2020. Two Boys’ counsel executed a
`
` 4
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`

`

`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 5 of 10 PageID 185
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`Waiver of the Service of Summons [Dkt. #10], and filed Defendant’s Answer, Affirmative
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`Defenses, and Counterclaim on September 8, 2020 [Dkt. # 14].
`
`II.
`
` THE COURT CAN AND SHOULD ALLOW PEJA TO INTERVENE
`
`A. Peja Is Entitled To Intervene As Of Right
`
`This Court should grant Peja’s intervention as a matter of right. Rule 24 (a), Federal Rules
`
`of Civil Procedure, provides that, upon on timely motion:
`
`the court must permit anyone to intervene who:
`. . .
`(2) claims an interest relating to the property or transaction that is the subject of
`the action, and is so situated that disposing of the action may as a practical matter
`impair or impede the movant’s ability to protect its interest, unless existing parties
`adequately represent that interest.
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`The Eleventh Circuit requires a movant to demonstrate four criteria to intervene as of right under
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`Rule 24 (a)(2):
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`(1) that the intervention application is timely;
`(2) that an interest exists relating to the property or transaction which is the subject
`of the action;
`(3) that disposition of the action, as a practical matter, may impede or impair the
`ability to protect that interest; and
`(4) the existing parties to the lawsuit inadequately represent the interests.
`
`Federal Sav. & Loan Ins. Corp. v. Falls Chase Special Taxing Dist., 983 F.2d 211, 215 (11th Cir.
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`1993) (reversing denial of motion to intervene). “Any doubt concerning the propriety of allowing
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`intervention should be resolved in favor of the proposed intervenors because it allows the court to
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`resolve all related disputes in a single action.” Id. at 216 (emphasis added).
`
`
`
`Peja meets all four prerequisites.
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`1. Peja’s Motion to Intervene is timely.
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`“Timeliness is not a word of exactitude or of precisely measured dimensions.” Chiles v.
`
`Thornburgh, 865 F.2d 1197, 1213 (11th Cir. 1989). Moreover, “[t]he requirement of timeliness
`
` 5
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`

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`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 6 of 10 PageID 186
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`must have accommodating flexibility toward both the court and the litigants if it is to be
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`successfully employed to regulate intervention in the interest of justice.” Retina-X Studios, LLC
`
`v. ADVAA, LLC, 303 F.R.D. 642 (M.D. Fla. 2014) (allowing non-party to intervene who was
`
`seeking to register the trademark that was the basis of plaintiff’s trademark infringement claim).
`
`The Eleventh Circuit has identified four factors to consider in determining the timeliness
`
`of a motion to intervene:
`
`(1) The time between when the movant sought to intervene and when it had known
`or reasonably should have known of its interest in the case …; (2) the extent of
`prejudice to the existing parties resulting from the movant’s delay (in other words,
`the prejudice that would result from the movant’s failure to request intervention as
`soon as it had known or reasonably should have known of its interest in the case);
`(3) the extent of prejudice to the movant if the court denies the motion; and (4)
`whether unusual circumstances militate for or against a timeliness finding.
`
`
`Georgia v. U.S. Army Corps of Eng’rs, 302 F.3d 1242, 1259 (11th Cir. 2002).
`
`
`
`Here, Peja has known of its interest in the case since near the end of June of 2020. Two
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`Boys filed its Answer, Affirmative Defenses, and Counterclaim on September 8, 2020, the Court
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`entered the scheduling order on September 15, 2020, and discovery has not yet begun. Because
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`the case is still at an early stage with no pending motions or discovery served, Peja’s intervention
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`will not delay the proceedings. Consequently, neither Plaintiff Mad Italian nor Defendant Two
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`Boys will be prejudiced by Peja’s intervention. Peja, on the other hand, will be prejudiced if it is
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`not allowed to protect its business interest in its license and business relationship with Two Boys,
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`and protect its interest in the SLICE OF LIFE Mark.
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`The Eleventh Circuit has found that motions to intervene were timely when filed
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`significantly later than here. In Chiles v. Thornburgh, 865 F.2d 1197, 1213 (11th Cir. 1989), the
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`Eleventh Circuit held that the motion to intervene was timely filed seven months after the
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`complaint, three months after the government filed its motion to dismiss, and before discovery had
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` 6
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`

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`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 7 of 10 PageID 187
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`begun. In U.S. Army Corps. Eng’rs, 302 F.3d at 1259-60, the motion to intervene was timely when
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`filed six months after the movant knew of the litigation, and after “discovery was largely complete”
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`and a briefing schedule entered. Thus, under controlling Eleventh Circuit precedent, Peja is within
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`the timeliness window.
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`2. Peja has an interest relating to the property or transaction that is the subject
`of the action.
`
`
`
`Peja clearly satisfies the interest requirement of Rule 24 (a)(2). The interest relating to the
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`property or transaction “must be direct, substantial and legally protectable.” Retina-X Studios, 303
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`F.R.D. at 653. The legally protectable interest “is something more than an economic interest.”
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`Mt. Hawley Ins. Co. v. Sandy Lake Props., Inc., 425 F.3d 1308, 1311 (11th Cir. 2005). “What is
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`required is that the interest be one which the substantive law recognizes as belonging to or being
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`owned by the applicant.” Id. (emphasis in original).
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`Here, Peja claims ownership rights to the SLICE OF LIFE Mark through its use of the
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`Mark in commerce before Mad Italian’s claimed date of first use. Mad Italian is suing Two Boys
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`for infringement of an identical or nearly identical trademark. The trademark is the “property”
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`which is the subject of the action and is owned by Peja. In addition, Peja licensed the SLICE OF
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`LIFE Mark to Two Boys to use in connection with restaurant services, namely a pizzeria. Two
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`Boys is using the SLICE OF LIFE Mark pursuant to that license agreement. That licensed use is
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`the “transaction” which is the subject of the action, and Peja has a legally protectable interest in
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`Two Boys’ licensed use of the Mark.
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`3. Peja is so situated that disposition of this action may impede its ability
`to protect its interest.
`
`
`
`
`Because Peja owns the SLICE OF LIFE Mark and licensed Two Boys’ use of the Mark,
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`Peja also satisfies the third requirement of Rule 24 (a)(2).
`
` 7
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`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 8 of 10 PageID 188
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`Where a party seeking to intervene in an action claims an interest in the very
`property and very transaction that is the subject of the main action, the potential
`stare decisis effect may supply that practical disadvantage which warrants
`intervention as of right.
`
`
`Chiles, 865 F.2d at 1214 (emphasis added).
`
`
`4. Peja is not adequately represented by Two Boys.
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`The fourth and final requirement for intervention of right is inadequate representation of
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`the movant’s interest by existing parties to the litigation. This condition is met if the proposed
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`intervenor “shows that representation of his interest ‘may be’ inadequate.” Chiles, 865 F.2d at
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`1214. The burden to show that the existing parties cannot adequately represent its interest is
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`“minimal.” U.S. Army Corps of Eng’rs, 302 F.3d at 1259. Proposed intervenors “should be
`
`allowed to intervene unless it is clear that [the parties] will provide adequate representation.”
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`Chiles, 865 F.2d at 1214.
`
`
`
`Peja meets the minimal burden to show that its interests are not adequately represented by
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`Two Boys. Peja, not Two Boys, owns the SLICE OF LIFE Mark. Two Boys has no ownership
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`interest in the Mark and uses the Mark only pursuant to a license agreement with Peja. Two Boys,
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`which has no ownership of the Mark, may decide to abandon its Counterclaim seeking to invalidate
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`Mad Italian’s ‘238 Registration and simply focus on its affirmative defenses. Alternatively, Two
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`Boys may ultimately cease using the SLICE OF LIFE Mark in an effort to simply end the lawsuit.
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`The “possibility” of such a different approach to litigation “sufficiently demonstrates that the
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`[intervenor’s] interests are not adequately represented.” Chiles, 865 F.2d at 1215.
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`B. Alternatively, Peta Meets The Requirements For Permissive Intervention
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`If the Court determines that Peja cannot intervene as of right, the Court should nevertheless,
`
`permit Peja to intervene under Rule 24 (b)(1)(B), Federal Rules of Civil Procedure, which
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` 8
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`
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`provides:
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`
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 9 of 10 PageID 189
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`On timely motion, the court may permit anyone to intervene who … has a claim or
`defense that shares with the main action a common question of law or fact.
`
`
`“In exercising its discretion, the court must consider whether the intervention will unduly delay or
`
`prejudice the adjudication of the original parties’ rights.” Rule 24 (b)(3), Federal Rules of Civil
`
`Procedure.
`
`
`
`First, for the reasons set forth more fully above, Peja’s Motion to Intervene is timely.
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`Second, Peja “has a claim or defense that shares with the main action a common question
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`of law or fact”. Peja initiated a proceeding to cancel Mad Italian’s SLICE OF LIFE Mark
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`registration on the grounds that Peja is a senior user of the SLICE OF LIFE Mark and Mad Italian
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`perpetrated a fraud on the USPTO in connection with its trademark application. Two Boys has
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`raised affirmative defenses and asserted a Counterclaim for trademark cancellation based on the
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`grounds that its licensor is a senior user of the Mark and Mad Italian’s fraudulent conduct before
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`the USPTO. In short, if Peja prevails in its earlier-filed cancellation proceeding against Mad
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`Italian, the claims of Mad Italian against Two Boys in this case will fail.
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`This situation is remarkably similar to that presented to the court in Petrik v. Reliant
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`Pharms., Inc., 2007 U.S. Dist. LEXIS 82037 (M.D. Fla. Nov. 5, 2007). In Petrik, the court
`
`permitted a trademark licensor to intervene in trademark infringement action against its licensee
`
`where the claims in the case before it and an earlier filed arbitration proceeding between the
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`Plaintiff and the intervenor had:
`
`questions of law and fact in common, because if the arbitration results in a
`determination that [the intervenor] could sub-license [the trademark at issue], it
`would appear that Plaintiff’s claims against [the defendant] in the instant case
`would necessarily fail.
`
` Id. at *5.
`
`
`
` 9
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`

`

`Case 8:20-cv-01369-SDM-JSS Document 19 Filed 09/18/20 Page 10 of 10 PageID 190
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`
`
`Finally, Peja’s intervention will not delay or prejudice the adjudication of the present
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`parties’ rights. The scheduling order was only recently entered and neither of the parties has
`
`commenced discovery.
`
`
`
`For all of the foregoing reasons, the Court should grant Peja’s Motion and allow Peja to
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`intervene in the action and file the pleading attached as Exhibit “B”.
`
`
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that on September 18, 2020, I electronically filed the foregoing with
`
`the Clerk of the Court by using the CM/ECF system, which will send a notice of electronic filing
`
`to Nathan P. Suedmeyer, Esq. (nathan@larsonpatentlaw.com) and Herbert W. Larson, Esq.
`
`(bill@larsonpatentlaw.com), Larson & Larson, P.A., 11199 69th Street, Largo, Florida 33773,
`
`counsel for Plaintiff.
`
`
`
`
`
`
`
`
`
`/s/ Richard E. Fee
`Richard E. Fee
`Florida Bar No. 813680
`FEE & JEFFRIES, P.A.
`1227 N. Franklin Street
`Tampa, Florida 33602
`(813) 229-8008
`(813) 229-0046 (Facsímile)
`rfee@feejeffries.com
`kwade@feejeffries.com
`ccastellvi@feejefries.com
`bszabo@feejeffries.com
`
`Counsel for Peja, Inc. and
`Defendant, Two Boys, LLC
`
`
`
`
`10
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`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-1 Filed 09/18/20 Page 1 of 3 PageID 191
`Case 8:20-cv-01369-SDM-JSS Document 19—1 Filed 09/18/20 Page 1 of 3 PageID 191
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`EXHIBIT A
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-1 Filed 09/18/20 Page 2 of 3 PageID 192
`Case 8:20-cv-01369-SDM-JSS Document 19-1 Filed 09/18/20 Page 2 of 3 PageID 192
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`“WWW“
`
`Managing Pm.“
`
`Nathan Suadmnyur. Euq.
`Pmm Allotmy mm 1:
`
`LILARSON&LARSON'
`
`Pa lent a nd Trodemu rk A LLorneys
`9'.\v_|.'»-_Lulgm:mglqn_t W cm“
`
`Lnrnn Office
`u Ins and. simt N.
`Lama. FL 33173-5504
`{1'27} 546-0380
`
`Tunn- 031w
`320 w «mm-d; HIvd..#szo
`Tampa. FL 83808
`[313) 2234238
`
`“3::2lhiflf'LE'gam
`
`k Li I:-
`F
`Elntgnl‘ifm
`
`I represent Mad IstaliaIiPizgzfig, BIC in inhellectual Propértquattens.
`I am your onlg,r point of conflict;
`It is my understanding ghaiiyqu visited Mad [galian Pizzgand meli wiiih
`Manager Robert Tarbox.
`
`Otherwise my client will proceed to enforce its trademark.
`
`
`
`April 20. 2029
`
`Safet Mulaj. Manager
`Peja Inc.
`188 Mariner Boulevard
`Spring Hill, FL 34609
`
`Re:
`
`Trademark Notice
`
`The Original Slice oftiDife Pizzeria, TMfieg.Ng;5§Ig§;-§8
`Larson Ref: 4953;7‘1;
`Dear Safet Mufiaj:
`
`Do not visit Mad Italian Ping again.
`If you wish to discuss this matter? do so aiIzeclily withme.
`
`You can only use the Slice of Life tradegggyk atthefifiéijngflill
`location.
`Use of your Slice of Life trademaljkjinnnbt be expanded to Wen/kin
`Winches.
`
`My client can coexist with your Spring Hill location.
`
`If you wish to maintain your restaurant imWeeki Wachee, it must use
`completely difiemnt mark.
`
`My client will prntect its trademark.
`
`My client's restaurant. and your Spring Hill location, have amicably co-
`exiab'ed fnr years.
`
`Opening the Weeki Waehee location threatens this peace.
`
`Change your mark, or close your Weeki Wachea restaurant.
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-1 Filed 09/18/20 Page 3 of 3 PageID 193
`Case 8:20-cv-01369-SDM-JSS Document 19-1 Filed 09/18/20 Page 3 of 3 PageID 193
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`
`
`Contact me immediately to discuss.
`
`Very truly yours,
`
`/Nathan P. Suedmeyer/
`
`Nathan P. Suedmeyer
`
`Larson & Larson, PA.
`
`nathan@1arsonpatent1aw.com
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-2 Filed 09/18/20 Page 1 of 56 PageID 194
`Case 8:20-cv-01369-SDM-JSS Document 19—2 Filed 09/18/20 Page 1 of 56 PageID 194
`
`EXHIBIT B
`
`

`

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`Case 8:20-cv-Ol369—SDM-JSS Document 19-2 Filed 09/18/20 Page 2 of 56 PageID 195
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`UNITED STATES DISTRICT COURT
`
`MIDDLE DISTRICT OF FLORIDA
`
`TAMPA DIVISION
`
`MAD ITALIAN PIZZA, LLC d/b/a
`SLICE OF LIFE PIZZERIA,
`
`Plaintiff,
`
`v.
`
`TWO BOYS, LLC,
`
`Defendant.
`
`/
`
`Case N0.: 8:20-cv-01369-SDM-JSS
`
`PEJA, INC.’s ANSWER AND AFFIRMATIVE DEFENSES TO COMPLAINT,
`COUNTERCLAIM, AND REQUEST FOR JURY TRIAL
`
`Peja,
`
`Inc.
`
`(“Peja”), answers Plaintiff s Complaint Injunctive Relief Sought And
`
`Demand For Jury Trial (the “Complaint”), as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Admitted the Complaint purports to allege an action for trademark infringement
`
`under Section 32 of the Lanham Act, 15 U.S.C. § 1114, but denied that any such action is
`
`meritorious; denied that Two Boys used in commerce, a trademark owned by Plaintiff; the
`
`remaining allegations are denied.
`
`2.
`
`Admitted that a copy of the ‘238 Registration is attached as Exhibit 1 to the
`
`Complaint; denied that the Slice of Life trademark registered on October 2, 2018 (“Plaintiff’s
`
`Mark”) is valid and enforceable; without knowledge as to the remaining allegations, therefore
`
`denied.
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-2 Filed 09/18/20 Page 3 of 56 PageID 196
`Case 8:20-cv-01369-SDM-JSS Document 19-2 Filed 09/18/20 Page 3 of 56 PageID 196
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`PARTIES
`
`Without knowledge, therefore denied.
`
`Admitted that Two Boys is operating a restaurant at 7375 Commercial Way,
`
`3.
`
`4.
`
`Weeki Wachee, Florida 34613.
`
`5.
`
`Exhibit 2 speaks for itself.
`
`6.
`
`7.
`
`8.
`
`JURISDICTION AND VENUE
`
`Admitted for jurisdictional purposes, only.
`
`Admitted that venue is proper.
`
`Admitted that this Court has personal jurisdiction over Two Boys.
`
`FACTS COMMON TO ALL COUNTS
`
`9.
`
`Admitted.
`
`10.
`
`Without knowledge, therefore denied.
`
`1 l.
`
`Denied.
`
`12. Without knowledge, therefore denied.
`
`1 3 .
`
`Denied.
`
`14.
`
`Admitted that Two Boys operates a pizza restaurant in Weeki Wachee, Florida;
`
`the remaining allegations are denied.
`
`15.
`
`Admitted that Two Boys was formed on October 5, 2019; Exhibit 2 speaks for
`
`itself; without knowledge of the remaining allegations, therefore denied.
`
`16.
`
`Admitted that Two Boys uses the SLICE OF LIFE word mark and the SLICE
`
`OF LIFE design mark (“Two Boys’ Design Mark”) in connection with restaurant services,
`
`namely, pizza parlors; Exhibit 3 speaks for itself; the remaining allegations are denied.
`
`

`

`Case 8:20-cv-01369-SDM-JSS Document 19-2 Filed 09/18/20 Page 4 of 56 PageID 197
`Case 8:20-cv-01369-SDM-JSS Document 19-2 Filed 09/18/20 Page 4 of 56 PageID 197
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`17.
`
`Admitted that the logo below paragraph 17, and on the left, is identical or nearly
`
`identical to the Two Boys’ Design Mark below paragraph 17, and on the right, and is
`
`confusingly similar; the remaining allegations are denied.
`
`18.
`
`Denied.
`
`19.
`
`Admitted that Two Boys” use of the Two Boys’ Design Mark is without
`
`authority from Plaintiff but expressly denied that such authorization is necessary;
`
`the
`
`remaining allegations are denied.
`
`20.
`
`Denied.
`
`21.
`
`Denied.
`
`22.
`
`Denied.
`
`23.
`
`Denied.
`
`24.
`
`Denied.
`
`25.
`
`Denied.
`
`26.
`
`Denied.
`
`27.
`
`Denied that Plaintiff is entitled to any relief it seeks.
`
`COUNT I
`
`Trademark Infringement under I 5 US. C. § 1 I I 4
`
`28.
`
`29.
`
`Pej a realleges its responses to paragraphs 1-27 above, as if set forth fully herein.
`
`Admitted that Plaintiff purports to allege a claim for trademark infringement
`
`but denied that it is meritorious.
`
`30.
`
`Denied.
`
`31. Without knowledge, therefore denied.
`
`

`

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`32. Without knowledge, therefore denied.
`
`33.
`
`Denied.
`
`34.
`
`Denied.
`
`35.
`
`Denied.
`
`36.
`
`Admitted that the Plaintiff’s Slice of Life mark is nearly identical in sound,
`
`appearance, connotation, and commercial impression to the Two Boys’ Design Mark, and is
`
`confilsingly similar thereto; the remaining allegations are denied.
`
`37.
`
`Admitted the restaurant services are identical or nearly identical.
`
`38.
`
`Admitted that Plaintiff’s Slice of Life mark is identical or nearly identical to
`
`Two Boys’ Design Mark and likely to cause confusion, to cause mistake, or to deceive as to
`
`sources of the restaurant services; the remaining allegations are denied.
`
`39.
`
`Denied.
`
`40.
`
`Denied.
`
`41 .
`
`Denied.
`
`42.
`
`Denied.
`
`43.
`
`Denied.
`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`Plaintiff is not entitled to relief for trademark infringement in Count I of the Complaint
`
`because the asserted ‘238 Registration is invalid for fraud. On February 23, 2018, Plaintiffs
`
`authorized agent willfully and knowingly misrepresented to the U.S. Patent and Trademark
`
`Office (“USPTO”) in Plaintiff’s application for the ‘238 Registration, and declared:
`
`

`

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`no other person, firm, corporation, or association, to the best of Plaintiff’s
`agent’s knowledge and belief, had the right to use the applied-for mark in
`commerce either in the identical form of the mark or in such near
`resemblance of the mark as to be likely, when used on or in connection with
`the goods of such other person, firm, corporation, or association, to cause
`confusion, mistake or deception.
`
`Plaintiff knew at the time it applied to register the mark that issued as the ‘238 Registration,
`
`that Peja had used the “SLICE OF LIFE” design mark and “SLICE OF LIFE” work mark
`
`continuously in the United States in connection with restaurant services before Plaintiff, since
`
`at least as early as February of 2012. Thus, Plaintiff’s declaration to the USPTO was made
`
`with knowledge and belief that its statement was false, and with the intent to induce the
`
`USPTO, including the examining attorney, to grant the ‘238 Registration. Reasonably relying
`
`upon, and believing the truth of, Plaintiff’ s declaration,
`
`the USPTO granted the ‘238
`
`Registration. Peja has been damaged by Plaintiff’ s willful false statement in Plaintiff’s
`
`application. On or around May 19, 2020, Peja filed a Petition for Cancellation with the
`
`USPTO, seeking to cancel
`
`the “238 Registration for, among other reasons, Plaintiff’s
`
`fraudulent statement to the USPTO.
`
`Second Affirmative Defense
`
`Plaintiff is not entitled to relief for trademark infringement in Count I of the Complaint
`
`because its ‘238 Registration is invalid. The ‘23 8 Registration consists of a mark or trade name
`
`previously used in the United States by another and not abandoned, as to be likely, when used
`
`on or in connection with the services of Plaintiff, to cause confilsion, or to cause mistake, or to
`
`deceive. Specifically, the ‘238 Registration consists of a mark previously used in the United
`
`States by Peja before Plaintiff and not abandoned, in connection with restaurant services. Peja
`
`had used the “SLICE OF LIFE” design mark and “SLICE OF LIFE” work mark continuously
`
`

`

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`in the United States in connection with restaurant services before Plaintiff, since at least as
`
`early as February, 2012. On or around May 19, 2020, Peja filed a Petition For Cancellation
`
`with the USPTO, seeking to cancel the ‘238 Registration.
`
`Third Affirmative Defense
`
`Plaintiff’s claim is barred by the doctrine of unclean hands. Before Plaintiff filed its
`
`Complaint for infringement of the ‘238 Registration, Plaintiff knew that it had obtained the
`
`‘238 Registration through fraudulent means. On February 23, 2018, Plaintiff’s authorized
`
`agent willfully and knowingly misrepresented to the USPTO in Plaintiff’s application for the
`
`‘238 Registration, and declared:
`
`no other person, firm, corporation, or association, to the best of Plaintiffs
`agent’s knowledge and belief, had the right to use the applied—for mark in
`commerce either in the identical form of the mark or in such near
`resemblance of the mark as to be likely, when used on or in connection
`with the goods of such other person, firm, corporation, or association, to
`cause confusion, mistake or deception.
`
`Plaintiff knew at the time it applied to register the mark that issued as the ‘238 Registration,
`
`that Peja had used the “SLICE OF LIFE” design mark and “SLICE OF LIFE” wor