throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1132462
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`Filing date:
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`05/10/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Party
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`Correspondence
`Address
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`92076850
`
`Defendant
`ZA CORP.
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`ZA CORP.
`20680 JOHN CARROLL BLVD.
`UNIVERSITY HEIGHTS, OH 44118
`UNITED STATES
`Primary Email: dspiccia@msn.com
`216-321-7272
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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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`Motion to Suspend for Civil Action
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`David A. Kunselman, Counsel for Za Corporation
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`kunselman@buckleyking.com, dfrisina@bdblaw.com
`
`/s/ David A. Kunselman
`
`05/10/2021
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`Attachments
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`Motion for Suspension of Cancellation Proceedings.pdf(2696302 bytes )
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`

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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 6,175,436
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`Mark: PIZZAZZ
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`
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`
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`CANCELLATION PROCEEDING
`NO. 92076850
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`) ) ) ) ) ) ) ) ) )
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`Petitioner,
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`Respondent.
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`MVGMM, INC.,
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`ZA CORPORATION,
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`-vs-
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`RESPONDENT’S MOTION FOR SUSPENSION OF ALL PROCEEDINGS
`PENDING DISPOSITION OF RELATED CIVIL ACTION
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`
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`Respondent Za Corporation (“Za”), through its undersigned counsel, states as
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`follows for its Motion for Suspension of All Proceedings Pending Disposition of a Related
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`Civil Action.
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`I.
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`INTRODUCTION
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`
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`This matter concerns Proceeding No. 92076850 filed by Petitioner MVGMM, Inc.
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`(“MVGMM”) seeking cancellation of Za’s federal registration of its mark PIZZAZZ (U.S.
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`Registration No. 6,175,436, issued on October 13, 2020).
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`
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`On January 25, 2021, Za, et al., initiated a civil action against MVGMM, et al., in
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`the District Court for the Northern District of Ohio, Case No. 1:21-cv-00204 (the “District
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`Court Action”), which action remains pending. A true and accurate copy of the Complaint
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`filed in the District Court Action is attached as Exhibit 1.
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`In the District Court Action, Za has alleged, among other things, that it owns
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`enforceable rights in the PIZZAZZ mark, that such rights are evidenced by U.S.
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`Registration No. 6,175,436, on the principal register, and that MVGMM has infringed and
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`otherwise violated Respondent Za’s rights.
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`
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`The District Court Action thus will have a direct impact on these cancellation
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`proceedings. In accordance with well-established principles, including those codified in 37
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`C.F.R. § 2.117(a) and set forth in Section 510.02(a) of the Trademark Trial and Appeal
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`Board Manual of Procedure (“TBMP”), Za respectfully requests that the Board suspend
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`these cancellation proceedings pending a final determination of the District Court Action.
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`II.
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`FACTS AND PROCEDURAL HISTORY
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`
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`In the District Court Action Complaint (the “Complaint”), Za alleges, among other
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`things, that it owns rights in the PIZZAZZ mark that are superior to MVGMM’s claimed
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`rights in the PIZZAZZ mark, that MVGMM’s use of the PIZZAZZ mark is confusingly
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`similar to Za’s PIZZAZZ mark, and that MVGMM has infringed Respondent Za’s rights.
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`(See Complaint.)
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`III. ARGUMENT
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`
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`When parties to a Board proceeding are involved in a civil action that may be
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`dispositive of the issues before the Board, the Board generally will suspend its
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`proceedings pending the final determination of the civil action. See 37 C.F.R. § 2.117(a).
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`This rule is set forth in TBMP 510.02(a), which states: “[w]henever it comes to the
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`attention of the Board that a party or parties to a case pending before it are involved in a
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`civil action that may have a bearing on the Board case, proceedings before the Board may
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`be suspended until final determination of the civil action.” TBMP § 510.02(a); see also
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`Farah v. Topiclear Beauty Prods., 2003 TTAB LEXIS 405, at *17 (Trademark Trial &
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`App. Bd. August 21, 2003) (suspension granted because it “would avoid the undesirable
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`2
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`result of the parties litigating the same issue in two forums, with potentially inconsistent
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`results and would minimize waste of both the parties’ and the Board’s resources”); GMC
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`v. Cadillac Club Fashions, Inc., 22 U.S.P.Q.2D (BNA) 1933, 1992 TTAB LEXIS 7
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`(Trademark Trial & App. Bd. March 26, 1992) (granting a motion for suspension where
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`“[a] decision by the district court [would] be dispositive of the issues before the Board”);
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`Tokaido v. Honda Assocs., 1973 TTAB LEXIS 169, 179 U.S.P.Q. (BNA) 861 (Trademark
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`Trial & App. Bd. November 14, 1973) (suspending proceeding “pending final
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`determination of the civil suit in which the parties are now involved”).
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`
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`The question before the Board, therefore, is whether the District Court Action will
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`have a “bearing” on the cancellation proceedings. See TBMP § 510.02(a); Jafar Abukhalil,
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`Inc. v. Roor Int'l BV, 2018 TTAB LEXIS 522, at *2 (Trademark Trial & App. Bd.
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`November 5, 2018). “It is standard procedure for the Trademark Board to stay
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`administrative proceedings pending the outcome of court litigation . . . involving related
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`issues.” Oneida Indian Nation v. United States DOI, 336 F. Supp. 3d 37, 45 (N.D.N.Y.
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`2018) (citing New Orleans Louisiana Saints LLC & NFL Properties LLC, 99 U.S.P.Q.2d
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`1550 (T.T.A.B. July 22, 2011) (quoting 6 McCarthy on Trademarks and Unfair
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`Competition §32:47 (4th ed. updated June 2011))). To the extent that a civil action in a
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`Federal district court involves issues in common with those in a proceeding before the
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`Board, the decision of the Federal district court is binding upon the Board. See, e.g., Goya
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`Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1953-55 (2d Cir.
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`1988).
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`
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`Here, the Complaint in the District Court Action raises issues that are identical to
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`those at issue in the cancellation proceedings before the Board. The cancellation
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`3
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`proceedings therefore should be suspended pursuant to 37 C.F.R. § 2.117(a) and TBMP §
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`510.02(a).
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`
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`As discussed above, Za has alleged in the District Court Action that it owns
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`enforceable rights in the PIZZAZZ mark and that MVGMM’s use of the PIZZAZZ mark
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`is confusingly similar to Za’s PIZZAZZ mark, and that MVGMM has infringed
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`Respondent Za’s rights. Za’s District Court Action also seeks to enjoin MVGMM’s use of
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`the PIZZAZZ mark. These matters, as raised in Za’s Complaint against MVGMM, are
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`central to the District Court Action. Any final determination by the District Court of the
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`likelihood of confusion between the parties’ marks and the priority of rights would resolve
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`the questions before the Board in the cancellation proceedings at issue here. For these
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`reasons, the District Court Action not only will have a “bearing” on the issues before the
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`Board, but also likely will be dispositive. See GMC, 1992 TTAB LEXIS 7 (granting a
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`motion for suspension where “[a] decision by the district court [would] be dispositive of
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`the issues before the Board”).
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`
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`Accordingly, Za respectfully submits that the Board should grant its Motion for
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`Suspension of All Proceedings Pending Disposition of Related Civil Action and stay all
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`proceedings in this matter pending resolution of the District Court Action.
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`IV. CONCLUSION
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`
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`For the foregoing reasons, Za respectfully requests that the Board stay Proceeding
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`No. 92076850 seeking cancellation of Za’s registration of the PIZZAZZ mark pending a
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`final resolution of the District Court Action.
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`4
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`Dated May 10, 2021
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`
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`Respectfully submitted,
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`
`
`
` /s/ David A. Kunselman
`David A. Kunselman (OH Reg. No. 0073980)
`Kunselman@buckleyking.com
`BUCKLEY KING LPA
`1400 Fifth Third Center
`600 Superior Avenue, East
`Cleveland, OH 44114-2652
`(216) 363-1400
`(216) 579-1020 (facsimile)
`
`Dominic Frisina (OH Reg. No. 0078599)
`dfrisina@bdblaw.com
`Buckingham Doolittle & Burroughs LLC
`1375 E. 9th St. Suite 1700
`Cleveland, Ohio 44114
`Direct dial: 216.736.4239
`www.bdblaw.com
`
`Counsel for Respondent
`Za Corporation
`
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 10, 2021, a true and correct copy of the foregoing was
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`served via email on:
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`
`Michael P. Harvey, Esq.
`311 Northcliff Drive
`Rocky River, OH 44116
`Email: MPHarveyCo@aol.com
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`Counsel for Petitioner
`MVGMM, Inc.
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`
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`
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`2492045_1
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`
`
` /s/ David A. Kunselman
`DAVID A. KUNSELMAN
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`6
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 1 of 15. PageID #: 1
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`
`
`Za Corp.
`20680 John Carroll Blvd.
`University Heights, Ohio 44118
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`
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`Spiccia Inc.
`1370 Ontario St.
`Cleveland, Ohio 44113
`
`
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`
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`MVGMM, INC.
`839 S.O.M. Center Road
`Mayfield Village, Ohio 44143
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`
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`MARK C. and VALERIE V. GASPAR
`367 Shetland Court
`Highland Heights, Ohio 44143
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`
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`M. GASPAR, INC.
`367 Shetland Court
`Highland Heights, Ohio 44143
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`
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`CASE NO.:
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`JUDGE:
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`COMPLAINT
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`(Jury Demand Endorsed Hereon)
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`and
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`vs.
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`Plaintiffs,
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`and
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`and
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`Defendants.
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`Plaintiffs, Za Corp. and Spiccia Inc. (hereinafter collectively “Plaintiffs”), by and through
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`their attorneys, Buckley King LPA and Mansour Gavin LPA, for their Complaint against
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`Defendants, MVGMM, Inc., Mark C. Gaspar, Valerie V. Gaspar, and M. Gaspar, Inc.
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`(hereinafter collectively, “Defendants”), state and allege as follows:
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`
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`1
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`

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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 2 of 15. PageID #: 2
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`
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`PRELIMINARY STATEMENT
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`1.
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`Plaintiffs, Za Corp. and Spiccia Inc., are the owners of valuable state and federal
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`trademark rights in the word PIZZAZZ in connection with pizzeria and related restaurant
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`services.
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`2.
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`The Gaspars and their business entities, MVGMM Inc. and M Gaspar Inc., are in
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`breach of a license provided by Spiccia Inc. and/or are infringing the trademark rights of Plaintiff
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`Za Corp. Plaintiff Spiccia Inc. has informed the Defendants of their breach and has repeatedly
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`attempted to resolve this matter with them to no avail.
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`3.
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`Plaintiff Za Corp. recently obtained a federal registration of its longstanding rights
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`in the PIZZAZZ name, predating any use by the Defendants by many years.
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`4.
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`The Defendants are therefore engaging in willful infringement of trademark rights
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`under the federal Lanham Act and Ohio law, and are engaging in state and federal unfair
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`competition. Plaintiffs seek injunctive and monetary relief.
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`JURISDICTION
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`5. The Court has original subject matter jurisdiction over Plaintiff’s federal claims
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a). The Court has supplemental subject matter
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`jurisdiction over Plaintiff’s state law claims pursuant to 28 U.S.C. §§ 1338(b) and 1367(a).
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`6. This Court has personal jurisdiction over Defendants, MVGMM, Inc. and M. Gaspar,
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`Inc., because both Defendants are incorporated in the State of Ohio.
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`7. This Court has personal jurisdiction over Defendants, Mark C. Gaspar and Valerie V.
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`Gaspar, because both are individuals residing in the State of Ohio.
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`2
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 3 of 15. PageID #: 3
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`
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`VENUE
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`8. Venue is proper in the United States District Court for the Northern District of Ohio
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`pursuant to 28 U.S.C. § 1391(b)(1) because all Defendants reside in this district, and pursuant to
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`28 U.S.C. § 1391(b)(2) because a substantial part of the events giving rise to the claims in this
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`Complaint occurred in this district, or pursuant to 28 U.S.C § 1391(b)(3) because Defendants are
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`subject to personal jurisdiction in this district with respect to this action.
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`PARTIES
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`9. Plaintiff Za Corp., d/b/a Pizzazz on the Circle located at 20680 John Carroll Blvd.,
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`University Heights, Ohio, is a corporation organized and existing under the laws of the State of
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`Ohio and having a principal place of business in the County of Cuyahoga, State of Ohio.
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`10. Plaintiff Spiccia Inc. is a corporation organized and existing under the laws of the
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`State of Ohio and having a principal place of business in the County of Cuyahoga, State of Ohio.
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`11. Upon information and belief, Defendant MVGMM, Inc. is a corporation organized
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`and existing under the laws of the State of Ohio and having a principal place of business in the
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`County of Cuyahoga, State of Ohio.
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`12. Upon information and belief, Defendant M. Gaspar, Inc. is a corporation organized
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`and existing under the laws of the State of Ohio and having a principal place of business in the
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`County of Lake, State of Ohio.
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`13. Upon information and belief, Defendants, Mark C. Gaspar and Valerie V. Gaspar, are
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`residents of the State of Ohio, and can be served at 367 Shetland Court, Highland Heights, Ohio
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`44143.
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`3
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 4 of 15. PageID #: 4
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`
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`FACTUAL ALLEGATIONS
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`14. The Pizzazz pizzeria located at 839 SOM Center Road in Mayfield Village, Ohio
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`(hereinafter “839 SOM Center Road”) was founded by John J. Spiccia in 1975.
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`15. John C. Spiccia organized the Pizzazz pizzeria at 839 SOM Center Road as Spiccia
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`Inc., a plaintiff in this action, on June 8, 1988. A true and accurate copy of the Certificate of
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`Incorporation and the Articles of Incorporation of Spiccia, Inc. recorded with the Ohio Secretary
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`of State is attached as Exhibit 1, and is hereby incorporated herein by reference.
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`16. David Spiccia organized Plaintiff Za Corp. on February 27, 1992.
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`17. Plaintiff Za Corp. has owned and operated “Pizzazz on the Circle,” located at 20680
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`John Carroll Blvd., University Heights, Ohio, starting on or about February 27, 1992 through the
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`present day.
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`18. Plaintiff Za Corp. has continuously provided pizzeria restaurant services starting on
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`or about February 27, 1992 through the present day.
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`19. With the permission of Plaintiff Spiccia Inc., Plaintiff Za Corp. has used the word
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`“PIZZAZZ” as a common law trademark in connection with restaurant services starting on or
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`about February 27, 1992 through the present day.
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`20. Plaintiff Za Corp. has continuously used the word “PIZZAZZ” as a common law
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`trademark in connection with restaurant services over sixteen (16) years before June 12, 2008.
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`21. Plaintiff Za Corp. is the owner of federal trademark Reg. No. 6,175,436 conferring
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`the exclusive right to use the word “PIZZAZZ” in connection with “restaurant services featuring
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`pizzas, calzones, pasta, and sandwiches”. A true and accurate copy of the Trademark
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`Registration No. 6,175,436 for the word “PIZZAZZ” issued by the United States Patent and
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`Trademark Office on Oct. 13, 2020, is attached as Exhibit 2, and is hereby incorporated herein
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`4
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 5 of 15. PageID #: 5
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`
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`by reference.
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`22. Defendant MVGMM, Inc. entered into a Purchase Agreement dated June 12, 2008
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`(herein after “2008 Purchase Agreement”) with Plaintiff Spiccia, Inc. to purchase the assets of
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`the Pizzazz restaurant located at 839 SOM Center Road. A true and accurate copy of the 2008
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`Purchase Agreement is attached as Exhibit 3, and is hereby incorporated herein by reference.
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`See Exhibit 3, ⁋ 1(a).
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`23. The 2008 Purchase Agreement includes a non-exclusive royalty-free license to use
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`the “PIZZAZZ” trade name limiting Defendant MVGMM, Inc.’s permitted use of “PIZZAZZ” to
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`operations “at or within a four (4) mile radius of 839 SOM Center Road… but in no event within
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`a five (5) mile radius of 20680 North Park Blvd., University Heights, Ohio 44118” (hereinafter
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`“Pizzazz on the Circle”). Id. at ¶6.
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`24. The 2008 Purchase Agreement requires that MVGMM Inc. maintain or exceed “the
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`present quality of food and service” of the 839 SOM Center Road location “and that of Za Corp.
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`dba as “Pizzazz On the Circle”.
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`Defendants’ Infringing Conduct
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`25. Defendants are not authorized to use the “PIZZAZZ” mark outside of the four (4)
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`mile radius of 839 SOM Center Road, Mayfield Village, Ohio, including but not limited to the
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`five (5) mile radius of “Pizzazz on the Circle,” which is owned and operated by Plaintiff Za
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`Corp., or otherwise claim they are affiliated with, or sponsored or endorsed by Plaintiff Za Corp.
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`26. Upon information and belief, in 2014 Defendants began using the “PIZZAZZ”
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`mark at a second location at 7345 Center Street in Mentor, Ohio (hereinafter, the “Mentor
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`Location”), which is well outside of the four (4) mile radius of 839 SOM Center Road, Mayfield
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`Village, Ohio.
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`5
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 6 of 15. PageID #: 6
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`
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`27. Although Defendants use of the “PIZZAZZ” mark was unknown to Plaintiffs at
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`that time, Defendants requested to use the “PIZZAZZ” mark at the Mentor Location and
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`Plaintiffs expressly denied Defendants’ request.
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`28. Plaintiffs did not permit Defendants to use the “PIZZAZZ” mark at the Mentor
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`Location, and Defendants’ unauthorized use of the “PIZZAZZ” mark at the Mentor Location
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`was, and continues to be, in breach of the 2008 Purchase Agreement.
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`29. Upon information and belief, in 2019 Defendants began using the “PIZZAZZ”
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`mark on a food truck in various Northeast Ohio locations further expanding their unauthorized
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`use of the “Pizzazz” mark outside of the agreed four (4) mile radius of 839 SOM Center Road.
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`Defendants’ unauthorized use of the Pizzazz Mark on its food truck also intruded into the five (5)
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`mile radius of Pizzazz on the Circle.
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`30. Defendants’ unauthorized uses of the “PIZZAZZ” mark on its food truck was, and
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`continues to be, in breach of the 2008 Purchase Agreement.
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`31. Defendants’ marks are confusingly similar to the Plaintiffs’ “PIZZAZZ” mark in
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`appearance, sound, connotation and overall commercial impression.
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`32. Defendants’ goods and services are of substantially inferior quality as compared to
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`Plaintiff Za Corp.’s own goods or services such that Plaintiff’s “PIZZAZZ” mark will likely
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`suffer negative associations through Defendants’ unauthorized use. Consequently, consumers
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`may wrongly associate Plaintiff Za Corp. with Defendants’ goods and services due to
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`Defendants’ unauthorized use of the “PIZZAZZ” mark.
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`33. Defendants’ infringing use of the “PIZZAZZ” mark falsely suggests an affiliation,
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`connection, or association with Plaintiff Za Corp. in connection with identical or similar goods
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`and services and is likely to confuse consumers.
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`6
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 7 of 15. PageID #: 7
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`
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`34. Defendants’ infringing use of the “PIZZAZZ” mark is likely to cause reasonably
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`prudent consumers to confuse Defendants’ goods and services for those of Plaintiff Za Corp.
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`35. Defendants are aware of Plaintiffs’ rights in the “PIZZAZZ” mark arising under
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`state and federal trademark and unfair competition laws but upon demand has refused, and
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`continues to refuse, to respect them.
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`36. Notwithstanding these facts and Plaintiffs’ rights to the “PIZZAZZ” mark (other
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`than within a four (4) mile radius of 839 SOM Center Road), Defendants have failed to stop their
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`unauthorized use of the “PIZZAZZ” mark outside of the permitted radius.
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`37. Upon information and belief, Defendants have intentionally and with knowledge
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`sought to cause consumer confusion, mistake, and deception through their continued
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`unauthorized use of the “PIZZAZZ” mark.
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`COUNT ONE
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`Willful Trademark Infringement
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`38.
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`Plaintiffs repeat each of the foregoing allegations contained in paragraphs 1
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`through 37 as if fully set forth herein.
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`39.
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`Defendants’ unauthorized use of the “PIZZAZZ” mark has caused and is causing
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`a likelihood of confusion and amounts to trademark infringement of Plaintiff Za Corp.’s
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`PIZZAZZ Reg. No. 6,175,436 under 15 USC § 1114.
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`40.
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`Defendants’ infringing conduct is willful, knowing, and intentional under 15 USC
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`§ 1117.
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`41.
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`As a result of Defendants’ acts of trademark infringement, Plaintiff has suffered
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`and will continue suffering irreparable harm.
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`42.
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`Unless Defendants are enjoined, the Defendants will continue their unlawful
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`7
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 8 of 15. PageID #: 8
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`
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`conduct which amounts to trademark infringement and will continue to irreparably harm the
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`Plaintiff and confuse the public.
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`43.
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`Plaintiff Za Corp. is entitled to recover all profits from Defendants, as well as all
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`damages that Plaintiff has sustained due to Defendants’ actions, and all costs of this action, and
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`attorney fees pursuant to 15 U.S.C.A. § 1117(a).
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`COUNT TWO
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`Unfair Competition Under 15 USC § 1125(a)
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`44.
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`Plaintiffs repeat the allegations contained in paragraphs 1 through 43 as though
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`fully set forth herein.
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`45.
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`Defendants’ unauthorized use of the “PIZZAZZ” mark has caused and is causing
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`a likelihood of confusion with the Plaintiff Za Corp’s “PIZZAZZ” mark and amounts to unfair
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`competition under 15 USC § 1125(a).
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`46.
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`47.
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`Defendants’ infringing conduct is willful, knowing, and intentional.
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`Defendants’ conduct constitutes unfair competition pursuant to 15 U.S.C. §
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`1125(a). Upon information and belief, Defendants’ conduct is intended to cause confusion, has
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`caused confusion, and will continue to cause confusion unless enjoined.
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`48.
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`For each completed act of unfair competition, Plaintiff Za Corp. is entitled to
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`recover all profits from Defendants for such conduct, as well as all actual damages that Plaintiff
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`has sustained due to Defendants’ actions, and all costs of this action and attorney fees pursuant to
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`15 U.S.C.A. § 1117(a).
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`49. Monetary relief alone is not adequate to address fully the irreparable injury that
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`Defendants’ illegal actions have caused and will continue to cause Plaintiff Za Corp. if not
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`enjoined. Plaintiff Za Corp. is therefore also entitled to preliminary and permanent injunctive
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`8
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`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 9 of 15. PageID #: 9
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`relief to stop Defendants’ ongoing unfair competition.
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`COUNT THREE
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`Unfair Competition under Ohio Common Law
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`50.
`
`Plaintiffs repeat the allegations contained in paragraphs 1 through 49 as though
`
`fully set forth herein.
`
`51.
`
`The actions of Defendants complained of herein constitute unfair competition
`
`under the common law of the State of Ohio.
`
`52.
`
`Defendants, without the consent or authorization of the Plaintiffs, have used and
`
`are using the “PIZZAZZ” mark in connection with their restaurant services, which is likely to
`
`deceive and cause confusion and mistake among consumers as to the source or origin of the
`
`services provided by Defendants.
`
`53.
`
`Defendants’ unfair competition has caused and will continue to cause damage to
`
`Plaintiffs, including irreparable harm for which there is no adequate remedy at law.
`
`54.
`
`As a consequence of Defendants’ ongoing unlawful activities, Plaintiffs are
`
`entitled to damages and preliminary and permanent injunctive relief ordering Defendant to cease
`
`this unfair competition.
`
`COUNT FOUR
`
`Ohio Deceptive Trade Practices under O.R.C. 4165.02
`
`55.
`
`Plaintiffs repeat the allegations contained in paragraphs 1 through 54 as though
`
`fully set forth herein.
`
`56.
`
`Defendants, without the consent or authorization of Plaintiffs, have used and are
`
`using the “PIZZAZZ” mark in connection with their restaurant services, which has caused and is
`
`
`
`9
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 10 of 15. PageID #: 10
`
`
`
`causing a likelihood of confusion or misunderstanding as to the source, sponsorship or approval
`
`of Defendants’ services with those of Plaintiff Za Corp.
`
`57.
`
`Defendants’ use of the “PIZZAZZ” mark has also caused and is causing, a
`
`likelihood of confusion as to affiliation, connection, or association of Defendants’ services with
`
`Plaintiff Za Corp.
`
`58.
`
`By using the “PIZZAZZ” designation, Defendants are engaging in deceptive trade
`
`practices in violation of Section 4165.02 of the Ohio Revised Code.
`
`59.
`
`60.
`
`Defendants’ deceptive trade practices are knowing, intentional, and willful.
`
`As a result of Defendants’ deceptive trade practices, Plaintiff Za Corp. is suffering
`
`irreparable harm.
`
`61.
`
`Unless Defendants are enjoined, the Defendants will continue their deceptive
`
`trade practices and will continue to confuse the public and cause irreparable harm to Plaintiffs.
`
`62.
`
`As a direct and proximate result of Defendants’ ongoing unlawful activities,
`
`Plaintiff Za Corp. has suffered damages and continues to suffer damages in an amount to be
`
`proven at trial.
`
`63.
`
`Because Defendants’ conduct is willful, Plaintiff Za Corp. is also entitled to
`
`recover from Defendants reasonable attorney’s fees pursuant to Ohio Revised Code § 4165.03.
`
`COUNT FIVE
`
`Declaratory Judgment: Breach of Contract
`
`64.
`
`Plaintiffs repeat the allegations contained in paragraphs 1 through 63 as though
`
`fully set forth herein.
`
`65.
`
`Pursuant to 28 USC §§ 2201 - 2202, this Court has jurisdiction to determine
`
`actual controversies between Plaintiffs and Defendants as to Plaintiff Spicia Corp.’s rights and
`
`
`
`10
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 11 of 15. PageID #: 11
`
`
`
`Defendant MVGMM, Inc.’s obligations under the 2008 Purchase Agreement between Plaintiff
`
`Spiccia Inc. and Defendant MVGMM, Inc.
`
`66.
`
`The 2008 Purchase Agreement between Plaintiff Spiccia Inc. and Defendant
`
`MVGMM, Inc. is valid and enforceable.
`
`67.
`
`Paragraph 6 of the 2008 Purchase Agreement, which provides that Defendant
`
`MVGMM, Inc. is required to confine its operations to within a four (4) mile radius of 839 SOM
`
`Center Road, but in no event within a five (5) mile radius of Pizzazz on the Circle, is valid and
`
`enforceable.
`
`68.
`
`Defendant MVGMM, Inc. is in breach of paragraph six (6) of the 2008 Purchase
`
`Agreement requiring Defendant MVGMM, Inc. to confine its operations to within a four (4) mile
`
`radius of 839 SOM Center Road, but in no event within a five (5) mile radius of Pizzazz on the
`
`Circle.
`
`69.
`
`Defendant is further in breach of paragraph six (6) of the 2008 Purchase
`
`Agreement for failing to maintain the quality of food and service in conformity with agreed
`
`standards. Plaintiff Spiccia Inc. is in compliance with its obligations under the 2008 Purchase
`
`Agreement.
`
`70.
`
`Plaintiff Spiccia Inc. is entitled to injunctive and such further necessary or proper
`
`relief against Defendants so as to enforce Plaintiff Spiccia Inc.’s rights under the 2008 Purchase
`
`Agreement and remedy all breaches by Defendants of the 2008 Purchase Agreement.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs respectfully request that this Court grant the following relief:
`
`A.
`
`Entering judgment declaring that Defendants have been and are infringing on
`
`trademark Reg. No. 6,175,436 under 15 U.S.C.A. §1114;
`
`
`
`11
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 12 of 15. PageID #: 12
`
`
`
`B.
`
`Entering judgment declaring that Defendants have been and are committing unfair
`
`competition under 15 U.S.C.A. §1125(a);
`
`C.
`
`Entering judgment declaring that Defendants have been and are committing unfair
`
`competition under the common law of Ohio;
`
`D.
`
`Entering judgment declaring that Defendants have been and are committing
`
`deceptive trade practices under Ohio Revised Code 4165.02;
`
`E.
`
`Entering judgment declaring that Defendants have been and are in breach of the
`
`2008 Purchase Agreement.
`
`F.
`
`Preliminarily and permanently enjoining Defendants and their agents, servants,
`
`employees, attorneys, and assigns, and all persons in active concert or participation with any of
`
`them, as follows:
`
`i.
`
`Prohibiting Defendants from providing any goods and/or services under the
`
`“PIZZAZZ” mark or any names, marks or wording confusingly similar to the
`
`“PIZZAZZ” mark or using any names, marks, wording or other indicia which
`
`are likely to be confused or associated with Plaintiff Za Corp.;
`
`ii.
`
`Prohibiting Defendants from otherwise competing unfairly with Plaintiff Za
`
`Corp. by trading off Plaintiff Za Corp.’s goodwill and business reputation, or by
`
`infringing or misappropriating the “PIZZAZZ” mark;
`
`iii.
`
`Prohibiting Defendants from stating or suggesting, in any advertising
`
`materials, promotional materials, or other materials, that they or their goods
`
`and/or services are associated with, related to, approved by, licensed from, or
`
`sponsored by Plaintiff Za Corp.;
`
`
`
`12
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 13 of 15. PageID #: 13
`
`
`
`iv. Requiring Defendants to promptly destroy all products, product packaging,
`
`signage, letterhead, advertisements, marketing materials, and other items that
`
`include or display any confusingly similar names, marks, or wording
`
`infringing upon the “PIZZAZZ” mark;
`
`v. Requiring Defendants to immediately disable all content on the Internet, and
`
`specifically the content on the https://pizzazzpizzeria.com/ website, which
`
`infringes upon the “PIZZAZZ” mark or otherwise creates the false impression
`
`of an association between Defendants and Plaintiff Za Corp;
`
`vi. Requiring Defendants to immediately transfer the https://pizzazzpizzeria.com/
`
`domain name to Plaintiff Za Corp. at the Defendants’ expense;
`
`vii. Requiring Defendants to immediately delete, permanently disable, or transfer
`
`control of all social media and other Internet accounts containing infringing
`
`content;
`
`viii. Requiring Defendants to file with this Court and to serve on Plaintiffs, within
`
`thirty (30) days after entry of the injunction, a report in writing and under oath
`
`setting forth in detail the manner and form in which Defendants have
`
`complied with the injunction;
`
`G.
`
`Pursuant to 15 U.S.C.A. §§ 1111, 1114, and 1117, ordering Defendants to account
`
`for all profits resulting from Defendants’ use of the mark PIZZAZZ;
`
`H.
`
`Pursuant to 15 U.S.C.A. §§ 1111, 1114, and 1117, ordering Defendant to pay to
`
`Plaintiffs all damages, in an amount to be proven at trial, that Plaintiffs have sustained as a
`
`consequence of Defendants’ use of the mark PIZZAZZ, including treble damages, together with
`
`pre- and post-judgment interest, costs, and expenses;
`
`
`
`13
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 14 of 15. PageID #: 14
`
`
`
`I.
`
`As this is an exceptional case pursuant to 15 U.S.C.A. § 1117(a), and Defendants’
`
`acts of deceptive trade practices were and continue to be willful pursuant to Ohio Revised Code
`
`§ 4165.03, awarding Plaintiffs their costs and attorney’s fees; and,
`
`J.
`
`Awarding to Plaintiffs such other and further relief as this Court deems just and
`
`proper.
`
`
`
`
`
`
`
`14
`
`

`

`Case: 1:21-cv-00204 Doc #: 1 Filed: 01/25/21 15 of 15. PageID #: 15
`
`
`
`JURY DEMAND
`
`Pursuant to Fed.R.Civ.P. 38(b) Plaintiffs hereby demand a trial by jury for all claims and
`
`issues so triable.
`
` Date: January 25, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/S/ Dominic A. Frisina
`_________________________
`Theodore M. Dunn Jr. (Reg. No. 0024195)
`Dominic A. Frisina (Reg. No. 0078599)
`Buckley King, LPA
`600 Superior Ave., Suite 1400
`Cleveland, Ohio 44114
`Ph. (216) 363-1400
`Dunn@buckleyking.com
`Frisina@buckleyking.com
`Attorneys for Plaintiff, Za Corp.
`
`
`
`Respectfully submitted,
`/S/ Michael Quinlan
`_________________________
`Michael Quinlan (Reg. No. 0066718)
`Mansour Gavin, LPA
`North Point Tower
`1001 Lakeside Ave.
`Suite 1400
`Cleveland, OH 44114
`Ph. (216)523-1500
`MQuinlan@mggmlpa.com
`Attorney for Spiccia, Inc.
`
`
`15
`
`

`

`DOC ID ----> G399_1207
`Case: 1:21-cv-00204-SO Doc #: 1-1 Filed: 01/25/21 1 of 6. PageID #: 16
`
`State of Ohio
`ｄ･ｾｲｴｭ･ｮｴ＠of Stat.
`
`Date 6! , 6 I B 3
`
`Number
`
`726844
`
`Sherrod Brown
`Secretary Of State
`
`Ae-celpt No.
`
`8240'
`
`G399-1207
`
`0159
`
`S P lC C II\, III A S r R 0 I ANN r & v ARC H 0
`Received of
`ＭＭＭ［ｇＭｉｊｾＳＹＭＭＱＭｾＰＷ＠-
`... ----.- .-- - ------
`or flied by ------------------.. -----
`The sum of S ___________ ｾ｟］｟｟ｏｏｦｯｾ＠filing
`Allf __ ___ __ ___ __ __________ , of
`SPICCIA INCORPORATEn
`
`An: ".iIIASTRO IANPH C ;::'C· -'E I PT
`
`_
`
`ARF
`
`75.00
`ＤＮＭＭｾＭＭＭ
`
`Total Fge: $ ____ 75 ___ 0_0
`
`Returned to:
`8 2 40 'j
`ｓｐｉｃｃＱａｾｍａｓｔｒｏｉａｎｾｉ＠ ｾ＠ VARCHO
`
`1220 STANDARD BLDG. 8 Ｎｾ＠ '_' I
`CLEVELAND, ｾｈ＠ 44113-1763
`ｎｾｭ･Ｚ＠
`
`ｳｰｉｾｾＱＱ＠ INCORPORATED
`
`

`

`DOC ID ----> G399_1207
`Case: 1:21-cv-00204-SO Doc #: 1-1 Filed: 01/25/21 2 of 6. PageID #: 17
`
`=
`
`.
`
`Department of Stalt!
`
`The State of Ohio
`Sherrod Brown
`Secretarr of Stale
`
`726844
`
`ｾ＠Certificate ｾ＠
`
`It is hereby certified rl\;u ｾＡｬｴＧ＠ ｾ､､ｊＮｦｩ＠of SI:I1,· of (i!I!O II:b ＨｬｉｾｬＨｬ､ＧＬ＠ ": :I!t

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