JUDGER10FF

*TrVjS~44 civil cover sheet and the information contained herein neither replace nor supplement the filing and servica/V>
CIVIL COVER SHEET

JS 44C/SDNY
REV. 4/2014

ovftgd by losal
gLsaurt. This form, approved by the
pleadings or other papers as required by law, except as prov*j|d
legal rules afxourt.

Judicial Conference ofthe United States in September 1974,

m-J*> for usdbflrf
MJIX*-*
~< Court
>..* ftwh,,< ~f
'4, requ/ll
JTslerk of

** U 1

15 CY

initiating the civil docket sheet.

DEFENDANTS

PLAINTIFFS

U.S.A Famous Original Ray's Licensing Corp.

142 West 49th St. Rest. Corp. d/b/a Ray's Pizza et al

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER

ATTORNEYS (IF KNOWN)

Ruskin Moscou Faltischek, P.C.

1425 RXR Plaza, East Tower, 15th Floor

Uniondale, New York 11556 - (516) 663-6600

CAUSE OFACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

15 U.S.C. 1125-Unauthorized use of plaintiffs trademarks

Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? NrJZVesQjudge Previously Assigned
If yes, was this case Vol. Invol.

Dismissed. No

IS THIS AN INTERNATIONAL ARBITRATION CASE?

No [*]

Yes

If yes, give date

Yes |_J
NATURE OF SUIT

(PLACE AN[x] INONEBOXONL Y)

ACTIONS UNDER STATUTES

TORTS

PERSONAL INJURY

CONTRACT

[
[
[
[

]110
] 120
1130
]140

[ ]150

[ ]151
I I 152

INSURANCE
MARINE

[ ] 310 AIRPLANE

[ ] 315 AIRPLANE PRODUCT

LIABILITY

MILLER ACT

NEGOTIABLE
INSTRUMENT
RECOVERY OF
OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT
MEDICARE ACT
RECOVERY OF
DEFAULTED
STUDENT LOANS

[ ] 320 ASSAULT, LIBEL&

SLANDER

[ ] 330 FEDERAL
EMPLOYERS'

[ 1160
[ 1190
I 1195

RECOVERY OF
OVERPAYMENT
OF VETERAN'S
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT

[ ] 340 MARINE
[ ) 345 MARINEPRODUCT
LIABILITY

[ ] 350 MOTOR VEHICLE

[ ] 355 MOTOR VEHICLE

INJURY

I 1 362 PERSONAL INJURY MED MALPRACTICE

[ ]220
[ ]230

[ I 240
I )245
[ ]290

CONDEMNATION
FORECLOSURE
RENT LEASE &
EJECTMENT
TORTS TO LAND
TORT PRODUCT
LIABILITY

21 USC 881
. , RQn othfr

INJURY PRODUCT
LIABILITY

[ ] 370 OTHER FRAUD

ALL OTHER
REAL PROPERTY

ACCOMMODATIONS
DISABILITIES EMPLOYMENT

( ] 423 WITHDRAWAL

REAPPORTIONMENT

28 USC 157

[
[
[
[
[

]410
]430
]450
]460
]470

SOCIAL SECURITY

ANTITRUST

BANKS & BANKING

COMMERCE
DEPORTATION
RACKETEER INFLU
ENCED & CORRUPT
ORGANIZATION ACT

(RICO)
]480 CONSUMER CREDIT
1490

CABLE/SATELLITE TV

[ ] 850 SECURITIES/
COMMODITIES/

[ ] 380 OTHER PERSONAL

LABOR

[ ]861 HIA(1395ff)

[ ] 710 FAIR LABOR

[ ] 862 BLACK LUNG(923)

[ ] 863 DIWC/DIWW (405(g))
[ J 864 SSID TITLE XVI

PROPERTY DAMAGE

[ I 385 PROPERTY DAMAGE

STANDARDS ACT

VACATE SENTENCE
28 USC 2255

[ ] 530 HABEAS CORPUS

[ I 535 DEATH PENALTY
[ 1540 MANDAMUS & OTHER

[ ] 740 RAILWAY LABOR ACT

( ] 751 FAMILY MEDICAL
LEAVE ACT (FMLA)

[ ] 790 OTHER LABOR

LITIGATION

[ ] 791 EMPL RET INC

SECURITY ACT
IMMIGRATION

PRISONER CIVIL RIGHTS

[ ] 462 NATURALIZATION
[ ] 550 CIVIL RIGHTS
[ ) 555 PRISON CONDITION
[ ] 560 CIVIL DETAINEE

[ ] 865 RSI (405(g))

APPLICATION

[ J 465 OTHER IMMIGRATION

EXCHANGE

[ ) 890 OTHER STATUTORY

ACTIONS

RELATIONS

(Non-Prisoner)

[ ] 445 AMERICANS WITH

J J 375 FALSE CLAIMS

I 1371 TRUTH IN LENDING

[ ] 463 ALIEN DETAINEE

[ ] 510 MOTIONS TO

[ ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/

[ (400 STATE

28 USC 158

[ ] 820 COPYRIGHTS
[ ] 830 PATENT
fc] 840 TRADEMARK

PERSONAL PROPERTY

[ ] 720 LABOR/MGMT

CIVIL RIGHTS

OTHER STATUTES

[ I 422 APPEAL

PROPERTY RIGHTS

PRISONER PETITIONS

ACTIONS UNDER STATUTES

BANKRUPTCY

[ ]368 ASBESTOS PERSONAL l ' 69 0THER

PRODUCT LIABILITY

REAL PROPERTY
LAND

[ ] 365 PERSONAL INJURY

PRODUCT LIABILITY

PRODUCT LIABILITY

[ ) 440 OTHER CIVIL RIGHTS

[ 1210

FORFEITURE/PENALTY

PHARMACEUTICAL PERSONAL ( j625DRUG RELATED

INJURY/PRODUCT LIABILITY
SE|ZURE 0F PROPERTY

[ ] 360 OTHER PERSONAL

LIABILITY

[ ] 196 FRANCHISE

PERSONAL INJURY

[ ] 367 HEALTHCARE/

LIABILITY

(EXCL VETERANS)
[ 1153

. &Case No.

[ ] 891 AGRICULTURAL ACTS

FEDERAL TAX SUITS

[ ] 870 TAXES (U.S. Plaintiffor

] 893 ENVIRONMENTAL
MATTERS

Defendant)

[ ] 871 IRS-THIRD PARTY

] 895 FREEDOMOF
INFORMATION ACT

26 USC 7609

] 896 ARBITRATION
) 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OF
APPEAL OF AGENCY DECISIO

[ ] 950 CONSTITUTIONALITY 0
STATE STATUTES

ACTIONS

CONDITIONS OF CONFINEMENT

[ ]446 AMERICANS WITH

DISABILITIES -OTHER

[ ] 448 EDUCATION

Checkif demanded in complaint:

CHECK IF THIS IS ACLASS ACTION

M THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?

UNDERF.R.C.P. 23

DEMAND $250,000

OTHER.

JUDGE

DOCKET NUMBER

Check YES onlyifdemandedincomplaint

JURY DEMAND: E YES CJNO

NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32;

(PLACEAN x INONEBOXONLY)

ORIGIN

2 Removed from

S 1 Original
Proceeding

3 Remanded 4 Reinstated or

State Court
I-] 3. all parties represented

from
Appellate

1'

Reopened

5 Transferred from 6 Multidistrict

(Specify District)

[7J 7 Appeal to District

Judge from
Magistrate Judge
Judgment

Litigation

Court

| | b. At least one
party is pro se.

(PLACE AN x INONEBOXONLY)

BASIS OF JURISDICTION

1 U.S. PLAINTIFF 2 U.S. DEFENDANT \E\ 3 FEDERAL QUESTION

IFDIVERSITY, INDICATE

4 DIVERSITY

CITIZENSHIP BELOW.

(U.S. NOT A PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

(Place an [X] in one box for Plaintiffand one box for Defendant)
CITIZEN OF THIS STATE

PTF

DEF

[ ]1

[ ]1

PTF DEF

CITIZEN OR SUBJECT OF A

INCORPORATED and PRINCIPAL PLACE

[ ]3[ ]3

[ ]2

[ ]2

DEF

[]5

[ ]6

[ ]6

OF BUSINESS IN ANOTHER STATE

FOREIGN COUNTRY

CITIZEN OF ANOTHER STATE

PTF

[]5

INCORPORATED or PRINCIPAL PLACE

FOREIGN NATION

[ ]4 [ ]4

OF BUSINESS IN THIS STATE

PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)

133 Randolph Street, Brooklyn, New York 11237

Kings County

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)

142 West 49th Street, New York, New York 10019

New York County

DEFENDANT(S) ADDRESS UNKNOWN

n
REPRESENTATION IS HEREBY MADE THAT, ATTHIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
RESILIENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:

Checkone

THIS ACTION SHOULD BE ASSIGNED TO:

Q WHITE PLAINS

(DO NOt check either box iflthis a PRISONER PETITION/PRISONER CIVIL RIGHTS
COMPLAINT.)

DATE 12/17/14

SIGNATURE OF AT/rORNEY OF RECORD

\x\ MANHATTAN

ADMITTED TO PRACTICE IN THIS DISTRICT

[ ] NO

RECEIPT #

JcffWhan C. >Ul

[)tj YES (DATE ADMITTED Mo.1

Attorney Bar Code #

5<-l

Magistrate Judge is to be designated by the Clerk of the Co1U#Af} JLTDGErOTT

is so Designated.

Magistrate Judge

Ruby J. Krajick, Clerk of Court by .

Deputy Clerk, DATED.

UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

Yr. 2006

UNITED STATES DISTRICT COURT

,..

SOUTHERN DISTRICT OF NEW YORK jlH^f H'V-U

U.S.A. FAMOUS ORIGINAL RAY'S LICENSING

:ix4 CV

9967

CORP.,
Civil Action No.

Plaintiff,
COMPLAINT

-against-

142 WEST 49th ST. REST. CORP. D/B/A RAY'S PIZZA

Jury Trial Demanded

and JOHN DOES "1" through "5" and XYZ COMPANIES

"A" through "C", said names being fictitious and unknown

c:

to Plaintiff, the persons, parties or entities intended being

"^

5-

GO

individuals or entities who have aided, abetted or conspired

with the defendants identified herein and/or are the

successors in interest to those defendants,

Defendants.

C3

CD

v' >

'n
~-r
OOI

r'

, ,

/"'.

p,

f.

Plaintiff U.S.A. Famous Original Ray's Licensing Corp., by its attorney Ruskin Moscou
Faltischek, P.C, as and for its complaint against the above-named defendants, alleges as follows:
THE PARTIES

1.

Plaintiff U.S.A. Famous Original Ray's Licensing Corp. ("Ray's" or "Plaintiff)

is a corporation duly organized and existing under the laws of the State of New York, with a

principal place of business located at 133 Randolph Street, Brooklyn, New York 11237.

2.

Upon information and belief, defendant 142 West 49th St. Rest. Corp. d/b/a Ray's

Pizza ("Rest. Corp.") is a corporation organized and existing under the laws of the State of New

York, with a principal place of business located at 142 West 49th St., New York, NY 10019.
3.

Plaintiff asserts claims against defendants John Does "1" through "5," and XYZ

Companies "A" through "C", such names being fictitious and intended to refer to individuals and
entities known and believed to have aided, abetted and conspired with the defendants identified
herein to violate Plaintiffs rights and/or are the successors in interest to those defendants. Rest.

Corp. and John Does "1" through "5", and XYZ Companies "A" through "C" are collectively
referred to herein as "Defendants."

4.

Upon information and belief, defendants John Does "1" through "5" each are

individuals residing in New York, and have actively aided, abetted and conspired with Rest.
Corp. to violate Plaintiffs rights as further alleged herein or are the successors in interest to Rest.
Corp.

5.

Upon information and belief, defendants XYZ Companies "A" through "C" each

are entities known and believed to have been organized under the laws of the State of New York,
and each of which is known and believed to have aided, abetted and conspired with Rest. Corp.

to violate Plaintiffs rights as further alleged herein or are the successors in interest to Rest. Corp.
JURISDICTION AND VENUE

6.

The Court has federal question jurisdiction over this case pursuant to sections 1331

and 1338(a) of Title 28 of the U.S. Code, as the federal courts have original federal jurisdiction over
Ray's Lanham Act claims against Defendants. The Court has supplemental jurisdiction over this
case pursuant to section 1367(a) of Title 28 of the U.S. Code, as Ray's pendent state law claims are
so related to its claims within the Court's original jurisdiction so as to form part of the same case or
controversy.

7.

Venue is proper pursuant to 28 U.S.C. 1391(b) because a substantial part of the

events giving rise to this claim occurred in the Southern District of New York.
NATURE OF CASE

8.

This case arises out of Defendants' unauthorized use of Ray's long-standing

family of trademarks in connection with its restaurant business and services.

9.

Despite Ray's request to cease and desist from this trademark infringement,

Defendants continue to use Ray's trademarks in order to promote their own restaurant business.

This deceptive and misleading conduct constitutes unlawful infringement of a registered mark,
false advertising, and false designation of origin and dilution, all in violation of the Lanham Act

(15U.S.C. 1125). In addition, Defendants' wrongful conduct and unauthorized use of Ray's

trademarks constitutes unfair competition under the common law of New York, deceptive acts
and practices in violation of 349 of the New York General Business Law, false advertising in

violation of 350-a of the New York General Business Law, and injury to business reputation in
violation of 360-1 of the General Business Law.

10.

Ray's now seeks, among other things, injunctive relief, preventing Defendants'

misuse of Ray's trademarks, along with compensatory damages, exemplary damages and
attorney's fees. Absent the requested injunctive relief, plaintiff Ray's goodwill, customer base,

market share and invaluable interest in the Ray's family of trademarks will be damaged.
BACKGROUND FACTS

11.

Ray's is engaged in the licensing of and operation of Italian style restaurants that

sell pizza and Italian food specialties.

12.

Restaurants licensed and/or owned by Ray's and its predecessors in interest have

continuously operated and existed for over forty-five (45) years.

13.

Ray's owns a family of registered trademarks incorporating the word RAY'S for

restaurant services, including the following:

(A)

RAY'S PIZZA (U.S. Registration No. 2196832);

(B)

FAMOUS RAY'S PIZZA (U.S. Registration No. 2196830);

(C)

FAMOUS ORIGINAL RAY'S PIZZA (U.S. Registration No. 1918484);

(D)

FAMOUS ORIGINAL RAY'S PIZZA EST. 1964 (logo) (U.S.

Registration No. 1918483); and

(E)

14.

RAY'S FAMOUS ORIGINAL RAY'S PIZZA (crown logo) (U.S.

Registration No. 3675202).

The aforesaid registered trademarks and logos are collectively referenced herein

as the "RAY'S Marks."

15.

For more than forty-five (45) years, Ray's and its predecessors in interest have

successfully exploited many of the RAY'S Marks, extensively advertising and promoting those
trademarks, and have achieved substantial commercial success in association with the RAY'S

Marks and caused customers and the general public to associate quality restaurant services with
the RAY'S Marks.

16.

Ray's currently licenses and/or owns and operates numerous restaurants using the

RAY'S Marks in New York City and the New York Metropolitan area.

17.

By reason of the foregoing, Ray's has developed and owns valuable goodwill

associated with the use of the RAY'S Marks in the United States.

18.

Ray's utilizes the RAY'S Marks in connection with, among other things, its

restaurants and the restaurant services that it provides.

19.

The RAY'S Marks are of great commercial value and rank among Ray's most

valuable assets.

20.

The RAY'S Marks are distinctive and widely understood to signify the services

provided and sold by Ray's.

21.

In accordance with the provisions of the Lanham Act, Ray's has registered the

RAY'S Marks with the United States Patent and Trademark Office and is the owner of the

United States Registrations in the RAY'S Marks for restaurant services. Copies of these
Registrations are annexed hereto and incorporated herein as Exhibit "A".

22.

These Registrations constituteprimafacie evidence of Ray's ownership of the

RAY'S Marks for restaurant services and Ray's exclusive right to use these Marks, or any mark
confusingly similar thereto, in association with restaurant services.

23.

Defendants have posted in the window of their store signage that states

"COMING SOON RAY'S PIZZA."

24.

Upon information and belief, Defendants are operating or plan to operate a

restaurant at that location in the near future.

25.

Defendants are using the RAY'S Marks without consent or authorization from

Ray's, in connection with their own restaurant businesses and services in New York, New York.

26.

All of the acts of Defendants that are alleged herein are without the license,

permission, authorization or consent of Ray's.

27.

These acts have caused and, unless restrained by this Court, will continue to cause

serious and irreparable harm to Ray's and to the valuable goodwill associated with the RAY'S
Marks.

28.

The "RAY'S PIZZA" mark used by Defendants is identical to one of the RAY'S

Marks and confusingly similar to Ray's other federally registered marks.

29.

Defendants' use of the mark and name "RAY'S PIZZA" for its restaurant and

restaurant services constitutes a false designation of origin in view of Plaintiff s prior use and
registration of the distinctive RAY'S Marks.

30.

Ray's has notified Rest. Corp. that Rest. Corp.'s use of the Ray's Marks infringes

on Ray's valuable trademark rights, and demanded that Rest. Corp. terminate all use of the mark
and name.

31.

Despite having received actual notice of Ray's claim of infringement, Rest. Corp.

has failed and willfully refused to cease using the RAY'S Marks and has continued its infringing
conduct.

32.

By reason of the facts alleged herein, Defendants are infringing on Ray's valuable

trademark rights in violation of Section 32(1) of the Lanham Act (15 U.S.C. 1114(1)) and
Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)).
33.

Plaintiffs remedy at law is not adequate to compensate it for the injury threatened

by Defendants' continuing infringement of the RAY'S Marks.

FIRST CLAIM FOR RELIEF

Federal Trademark Infringement

(Violation of Section 43(a) of the Lanham Act)

34.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if set forth fully hereat.

35.

The RAY'S Marks are distinctive and widely understood to signify the goods and

services provided and sold by Ray's.

36.

Defendants' unauthorized use of the RAY'S Marks in connection with its

restaurant business and services is likely to cause confusion, mistake and deception as to the
origin, sponsorship, endorsement or approval of its goods or services by Ray's.
37.

Defendants' unauthorized use and promotion of the RAY'S Marks is with the

knowledge and intent that such use and imitation of Ray's registered trademarks will deceive and
cause confusion, or mistake, all resulting in damage to Ray's.

38.

Defendants' unauthorized use of the RAY'S Marks in connection with its

restaurant business or services infringes on Ray's rights as the registered owner of the RAY'S
Marks in violation of Section 43(a) of the Lanham Act.

39.

Defendants' aforesaid conduct constitutes false advertising, infringement and

unfair competition in violation of Section 43(a) of the Lanham Act.

40.

By reason of the foregoing, plaintiff Ray's has sustained damages in an amount to

be determined at trial and now estimated to exceed $250,000.00.

41.

By reason of the foregoing, plaintiff Ray's is entitled to injunctive relief

preventing and restraining Defendants and those acting on their behalf or in concert with them,
from infringing upon the RAY'S Marks and using the RAY'S Marks to compete unfairly with
Ray's.

42.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

SECOND CLAIM FOR RELIEF

False Designation of Origin and

Dilution Under the Lanham Act

(Lanham Act Section 43 (15 U.S.C. $ 1125)

43.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if fully set forth hereat.

44.

Ray's is the owner of famous marks that have become known to the consuming

public as representing uniform standards of quality and reliability and have achieved and become
associated with valuable goodwill.

45.

By reason of the foregoing acts of Defendants as alleged herein, Defendants have

falsely described, represented and designated the origin of the services and/or goods they supply.

46.

Defendants have knowingly and willfully infringed on Ray's registered marks

with the bad faith intent to profit from the use of those marks.

47.

Defendants' wrongful conduct has already caused confusion and is likely to cause

greater confusion among the consuming public, and has already deceived customers and is likely
to continue to deceive the consuming public concerning the source of the services and/or goods
provided by Defendants, and has or may cause dilution of the RAY'S Marks.

48.

By reason of the foregoing acts of Defendants, Ray's has been damaged, and said

acts, unless restrained, will continue to cause greater damage to Ray's in the future.
49.

By reason of the foregoing, plaintiff Ray's has sustained damages in an amount to

be determined at trial and now estimated to exceed $250,000.00.

50.

By reason of the foregoing, plaintiff Ray's is entitled to injunctive relief

preventing and restraining Defendants and those acting on their behalf or in concert with them,

from infringing upon the RAY'S Marks and using the RAY'S Marks to compete unfairly with
Ray's.

51.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

THIRD CLAIM FOR RELIEF

Deceptive Trade Practices

(Violation of Section 349 of the New York General Business Law)

52.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if set forth fully hereat.

53.

Defendants have in the past, and continuethrough the present to materially

mislead consumers into falsely believing that Defendants' restaurant business is authorized by or
affiliated with Ray's or Ray's restaurant services.

54.

Defendants are further deceiving and materially misleading consumers through

their false advertising and by providing or planning to provide services under the RAY'S Marks.
55.

As a result of Defendants' deceptive business practices, Ray's has been injured by

lost sales, loss of profits, loss of future profits, loss of customers, injury to its customer goodwill,
loss of market share, and damage to its business reputation.
56.

Defendants' aforesaid conduct constitutes a violation of Section 349 of the New

York General Business Law prohibiting deceptive acts and practices.

57.

As a result of the foregoing, Ray's has been damaged in an amount to be

determined at trial and now estimated to exceed $250,000.00.

58.

As a result of the foregoing, Ray's is further entitled to injunctive relief,

preventing and restraining Defendants and all those acting on their behalf or in concert with
them, from further violations of Section 349 of the New York General Business Law.

59.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

FOURTH CLAIM FOR RELIEF

False Advertising
(Violation of 350-a of the New York General Business Law)

60.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if set forth fully hereat.

61.

Defendants have advertised their business, and continue to do so, intentionally

misleading the public in material respects and failing to reveal material facts creating the false
impression that they are associated with or approved by Ray's, causing injury to both the public
and Ray's.

62.

As a result of the foregoing, Ray's has been damaged in an amount to be

determined at trial and now estimated to exceed $250,000.00.

63.

As a result of the foregoing, Ray's is further entitled to injunctive relief,

preventing and restraining Defendants and all those acting on their behalf or in concert with
them, from further violations of Section 350-a of the New York General Business Law.

64.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

FIFTH CLAIM FOR RELIEF

Violation of Anti-Dilution Statute

(Violation of Section 360-1 of the New York General Business Law)

65.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if set forth fully hereat.

66.

The RAY'S Marks are distinctive. Defendants'use of the RAY'S Marks in

connection with restaurant services creates a likelihood of dilution as a result of blurring or

tamishment. Upon information and belief, Defendants' actions were committed with predatory
intent.

67.

Defendants' acts have already caused and/or are creating a substantial likelihood

of injury to the business reputation of Ray's and the dilution of the distinctive quality of its
registered marks, all to the detriment and damage of Ray's.
68.

As a result of the foregoing, Ray's has been damaged in an amount to be

determined at trial and now estimated to exceed $250,000.00.

69.

As a result of the foregoing, Ray's is further entitled to injunctive relief,

preventing and restraining Defendants and all those acting on their behalf or in concert with
them, from further violations of Section 360-1 of the New York General Business Law.

10

70.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

SIXTH CLAIM FOR RELIEF

Common Law Unfair Competition

71.

Ray's repeats and realleges each and every allegation contained in the foregoing

paragraphs as if set forth fully hereat.

72.

As a result of Defendants' actions as set forth above, Defendants have infringed

on and misappropriated Ray's valuable trademark rights and/or are trading on the goodwill
symbolized by the RAY'S Marks, and are likely to cause and continue to cause confusion and to
deceive members of the relevant public.
73.

Defendants have unlawfully used the RAY'S Marks, which use has created a

likelihood of confusion and mistake on the part of the public as to the source or origin of the
services provided by Defendants.

74.

Defendants' actions have caused, and are likely to continue to cause, Ray's

customers to be misled into believing that Defendants are licensed by, sponsored by, associated
with, or connected with Ray's.
75.

By virtue of its aforementioned acts, Defendants have acted in bad faith and have

engaged in common law unfair competition with respect to Ray's.

76.

By reason of the foregoing, Plaintiff Ray's has sustained damages in an amount to

be determined at trial and now estimated to exceed $250,000.00.

77.

By reason of the foregoing, Ray's is entitled to injunctive relief restraining and

preventing Defendants and those acting on their behalf or acting in concert with them.

11

78.

Defendants' conduct is causing Ray's irreparable harm for which Ray's has no

adequate remedy at law.

JURY TRIAL DEMANDED

Ray's demands a jury trial in this case.

WHEREFORE, plaintiff U.S.A. Famous Original Ray's Licensing Corp. respectfully

requests that this Court enter judgment in favor of Ray's and granting Ray's the following relief:
1.

That Defendants and their respective officers, agents, servants, employees,

attorneys, and all those in active concert or participation with them, be
preliminarily and permanently enjoined from:

(a)

Using the RAY'S Marks or any other names or marks confusingly similar
to the RAY'S Marks in connection with restaurant or related businesses or

services;

(b)

Using the RAY'S Marks or any other confusingly similar marks or names
as part of any business name or as a service mark, trademark, trade name

or part thereof, alone or in combination with other words, symbols, styles,

titles or marks in connection with any restaurant or related businesses or

services, including, but not limited to, use on signage, advertising, menus,
packaging websites or domain names;

(c)

Performing any act or displaying any words, names, trade dress or marks
which are likely to cause confusion, to cause mistake or deceive, or

otherwise mislead the public into believing that Defendants and Ray's are
one and the same, are in some way affiliated, associated or connected, or
that Ray's is a sponsor of Defendants or their restaurant, or that

12

Defendants are in some way licensed, affiliated, associated with or under

the supervision or control of Ray's, or that the goods or services of

Defendants originate from or are approved by Ray's, or which are likely in

any way to lead the public to associate Defendants with Ray's;

(d)

Doing any other act or thing likely to cause confusion with regard to the
RAY'S Marks; and

(e)

Unfairly competing with Ray's in any other manner whatsoever;

That, pursuant to 15 U.S.C. 1118, Defendants be ordered to deliver up for

destruction all packaging, promotional material, menus, pizza boxes, bags,

catalogues, print fliers, brochures, labels, wrappers and all other matter used for
distribution or marketing of goods or services using the RAY'S Marks;
That Ray's be awarded monetary relief in an amount to be determined at trial,
including:

(a)

All profits received by Defendants from sales and revenues of any kind in
connection with the provision of restaurant or related services under the
RAY'S Marks;

(b)

All damages sustained by Ray's as a result of Defendants' acts of

infringement and unfair competition; and

(c)

The costs of bringing this action, including reasonable attorneys fees, as

well as treble and/or exemplary damages pursuant to 15 U.S.C. 1117 and
all other applicable laws and statutes;

That Defendants be ordered to compensate Ray's in an amount that would enable

Ray's to conduct corrective advertising reasonably calculatedto remedy any

13

consumer confusion created as a result of Defendants' unlawful actions;

5.

That, pursuant to 15 U.S.C. 1116, Defendants be directed to file with the Court

and serve upon Ray's within thirty (30) days after issuance of an injunction, a
report in writing and under oath setting forth in detail the manner and form in
which Defendants have complied with the injunction;
6.

Damages in an amount to be determined at trial and now estimated to exceed

$250,000.00; and

7.

Such other and further reliefas the Court may deem just, appropriate and
equitable, including the costs and expenses of this action.

Dated: Uniondale, New York

December 17,2014
RUSKIN MOSCOU FALTISCHEK, P.C.

By:.
Jonathan C. Siillivan
John A. DeMaro

ittorneyfor Plaintiff

iast Tower, 15th Floor

1425 RXR Plaza

Uniondale, New York 11556-1425

(516)663-6600

To:

142 WEST 49th ST. REST. CORP.

142 West 49th Street
New York, NY 10019

14

Int. Q.: 42

Prior U.S. CI.: 100

t -i. j ox ^

United States Patent and Trademark Office

Reg. No. 2,196,832

wd Qct. 20,1W,

SERVICE MARK
PRINCIPAL REGISTER

RAY'S PIZZA

U.S.A. FAMOUS ORIGINAL RAYS LICENSING

CORP. (NEW YORK CORPORATION)
203 WEST 82ND STREET

NO CLAIM IS MADE TO THE EXCLUSIVE

NEW YORK, NY 10024

RIGHT TO USE "PIZZA", APART FROM THE

FOR: RESTAURANT SERVICES, IN CLASS

42 (U.S. CL. 100).

FIRST
0-0-1964.

USE

0-0-1964;

OWNER OF U.S. REG. NOS. 1,646,353 AND

1,918,484.

IN

COMMERCE

MARK AS SHOWN.

SER. NO. 74-349,355, FILED 7-14-1994.

EDWARD NELSON, EXAMINING ATTORNEY

Int. CI.: 42
Prior U.S. CI.: 100

Reg. No. 2,196,830

United States Patent and Trademark Office

Registered Oct. 20,1998

SERVICE MARK
PRINCIPAL REGISTER

FAMOUS RAY'S PIZZA

U.S.A. FAMOUS ORIGINAL RAYS LICENSING

CORP. (NEW YORK CORPORATION)

203 WEST 82ND STREET

NEW YORK, NY 10024

OWNER OF U.S. REG. NOS. 1,646,353 AND

1,918,484.
NO CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE "PIZZA", APART FROM THE

MARK AS SHOWN.

FOR: RESTAURANT SERVICES, IN CLASS

42 (U.S. CL. 100).
FIRST
USE
0-0-1964;
IN
COMMERCE
0-0-1964.

SER. NO. 74-541,825, FILED 6-24-1994.

EDWARD NELSON, EXAMINING ATTORNEY

Int. CI.: 42

Prior U.S. CI.: 100

Reg. No. 1 918 484

United States Patent and Trademark Office Registered sep. u, ms

SERVICE MARK
PRINCIPAL REGISTER

FAMOUS ORIGINAL RAY'S PIZZA

U.S.A. FAMOUS ORIGINAL RAY'S LICENSING

CORPORATION
TION)

(NEW

YORK

CORPORA

USE

0-0-1964;

IN

COMMERCE

OWNER OF U.S. REG. NO. 1,646,353.

740 BROADWAY

NEW YORK, NY 10003 , ASSIGNEE OF MAN-

GANO, ROSOLINO (ITALY CITIZEN), DBA

FAMOUS ORIGINAL
YORK, NY 10017

FIRST
0-0-1964.

RAY'S

PIZZA

NEW

NO CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE "PIZZA", APART FROM THE
MARK AS SHOWN.

SER. NO. 73-615,418, FILED 8-18-1986.

FOR: RESTAURANT SERVICES, IN CLASS

42 (U.S. CL. 100).

EDWARD NELSON, EXAMINING ATTORNEY


Int. CI.: 42

Prior U.S. CI.: 100

United States Patent and Trademark Office *% s^'t*

SERVICE MARK
PRINCIPAL REGISTER

0 4^
f nl

U.S.A. FAMOUS ORIGINAL RAY'S LICENSING

CORPORATION (NEW YORK CORPORA
TION)
740 BROADWAY

NEW YORK, NY 10003 , ASSIGNEE OF MAN-

OWNER OF U.S. REG. NO. 1,646,353.

NO CLAIM IS MADE TO THE EXCLUSIVE
RIGHT TO USE "FAMOUS", "PIZZA" AND

"EST. 1964", APART FROM THE MARK AS

GANO, ROSOLINO (ITALY CITIZEN), DBA

SHOWN.

FAMOUS ORIGINAL RAY'S PIZZA NEW

THE LINING IN THE DRAWING IS FOR

SHADING PURPOSES ONLY AND DOES NOT

YORK, NY 10017

REPRESENT COLOR.

FOR: RESTAURANT SERVICES, IN CLASS

42 (U.S. CL. 100).

FIRST
0-0-1964.

USE

SER. NO. 73-615,252, FILED 8-18-1986.

0-0-1964;

IN

COMMERCE
EDWARD NELSON, EXAMINING ATTORNEY

Ink Cls.: 25 and 43

Prior U.S. Cls.: 22, 39,100 and 101

TT .. j c

United States Patent and Trademark Office

Reg. No. 3,675,202

Registered Sep. i, 2009

TRADEMARK
SERVICE MARK
PRINCIPAL REGISTER

(SftmoubOrymal
U.S.A. FAMOUS ORIGINAL RAY'S LICENSING
CORPORATION (NEW YORK CORPORA
TION)

THE COLOR(S) RED, WHITE AND GREEN IS/

ARE CLAIMED AS A FEATURE OF THE MARK.

58-85 58TH AVENUE

MASPETH, NY 11378

FOR: CLOTHING, NAMELY, T-SHIRTS, POLO

SHIRTS; HATS ANDCAPS, IN CLASS 25(U.S. CLS. 22

AND 39).

FIRST USE 1-1-1979; IN COMMERCE 1-1-1979.

FOR: RESTAURANT SERVICES. IN CLASS 43

(U.S. CLS. 100AND 101).
FIRST USE 1-1-1979; IN COMMERCE 1-1-1979.

OWNER OF U.S. REG. NOS. 1,918,484, 3061.158

AND OTHERS.

NO CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE "PIZZA", APART FROM THE
MARK AS SHOWN.

THE MARK CONSISTS OF THE LITERAL ELE

MENTS "RAY'S FAMOUS ORIGINAL RAY'S PIZ
ZA" AND ASSOCIATED DESIGN. THE FIRST
WORD "RAY'S" APPEARS IN THE COLOR WHITE
AND IS INTEGRATED INTO THE DESIGN OF AN
OPENED TOPPED CROWN. THE CROWN APPEARS

PRIMARILY IN THE COLOR RED, WITH SEVEN

JEWELS ALONG ITS TOP APPEARING IN THE
COLORS WHITE AND RED AND ITS BOTTOM
PORTION APPEARING IN THE COLOR GREEN
WITH A WHITE EDGE. THE WORDS AT "FAMOUS
ORIGINAL" APPEAR IN THE COLOR GREEN AND
THE WORDS "RAY'S PIZZA" APPEAR IN THE
COLOR RED, BORDERED BY WHITE AND OUT
LINED IN GREEN.

SER. NO. 77-498,814,FILED 6-13-2008.

JUDITH HELFMAN, EXAMINING ATTORNEY