Plaintiff Marinos Pizza, Inc. (Plaintiff or Marinos Pizza) brings this action
for trademark infringement, unfair competition and false designation of origin, and
related claims under New Jersey law for common law trademark infringement and unfair
competition against Defendants James Marino, Marinos Bistro To Go, LLC, Marinos
Bistro To Go Franchising, LLC, Marinos Bistro To Go IP, LLC, and Marinos Bistro To
Go Cherry Hill, LLC (collectively Defendants), and alleges as follows:
{00022319}
THE PARTIES
1.
the state of New Jersey with principal offices located at 110 North Black Horse Pike,
Runnemede, New Jersey 08078. Marinos Pizza, Inc. owns the trademark MARINOS
PIZZA used in connection with its restaurant Marinos Pizza located at 110 North Black
Horse Pike, Runnemede, New Jersey 08078.
2.
with an address at 492 Haddon Avenue, Collingswood, New Jersey 08108 and is a citizen
of that state. Upon information and belief, James Marino is part of the team behind the
restaurant services offered in connection with the MARINOS BISTRO TO GO
designation and is the co-applicant for the trademark application for the designation
MARINOS BISTRO TO GO filed with the U.S. Patent & Trademark Office
(USPTO).
3.
privately-held limited liability company organized under the laws of the state of New
Jersey with principal offices located at 492 Haddon Avenue, Collingswood, New Jersey
08108. Upon information and belief, Marinos Bistro To Go, LLC, is part of the team
behind the restaurant services offered in connection with the MARINOS BISTRO TO
GO designation.
4.
Franchising, LLC, is a privately-held limited liability company organized under the laws
of the state of New Jersey with principal offices located at 492 Haddon Avenue,
Collingswood, New Jersey 08108. Upon information and belief, Marinos Bistro To Go
{00022319}
Franchising, LLC, is part of the team behind the restaurant services offered in connection
with the MARINOS BISTRO TO GO designation.
5.
is a privately-held limited liability company organized under the laws of the state of New
Jersey with principal offices located at 492 Haddon Avenue, Collingswood, New Jersey
08108. Upon information and belief, Marinos Bistro To Go IP, LLC, is part of the team
behind the restaurant services offered in connection with the MARINOS BISTRO TO
GO designation.
6.
Hill, LLC, is a privately-held limited liability company organized under the laws of the
state of New Jersey with principal offices located at 492 Haddon Avenue, Collingswood,
New Jersey 08108. Upon information and belief, Marinos Bistro To Go Cherry Hill,
LLC, is part of the team behind the restaurant services offered in connection with the
MARINOS BISTRO TO GO designation.
JURISDICTION AND VENUE
7.
This Court has jurisdiction over the subject matter of this action pursuant
to 15 U.S.C. 1121 (Lanham Act) and 28 U.S.C. 1331 (federal question) and 28 U.S.C.
1338 (trademark and unfair competition). This Court has supplemental jurisdiction
over the claims arising under New Jersey state law pursuant to 28 U.S.C. 1367(a).
8.
and (c) because a substantial part of the events giving rise to Plaintiffs claims occurred
in this District, a substantial part of the property that is the subject of this action is
{00022319}
situated in this District, and the Defendants reside and/or maintain their principal offices
in this District.
9.
This Court has personal jurisdiction over the Defendants because, upon
information and belief, Defendants are present and transacting business within this
District and are incorporated, and/or registered and/or authorized to conduct business in
the State of New Jersey.
10.
Upon information and belief, Defendants advertise, promote, and sell their
1125, and New Jersey state law, seeking injunctive and monetary relief relating to
Defendants use of the designation MARINOS BISTRO TO GO in connection with
the advertising, promotion and sale of its restaurant services.
12.
Plaintiff has adopted and used continuously, since prior to May 20, 2015,
the mark MARINOS PIZZA in connection with its restaurant that has operated in
Runnemede, NJ for over 40 years.
13.
GO designation to identify their competing restaurant services, and offer their restaurant
services to the same consumers through the same channels of trade as Plaintiff offers its
restaurant services.
{00022319}
14.
in connection with their restaurant services is likely to cause consumers and the trade to
wrongly associate Defendants restaurant services with Plaintiffs restaurant services,
causing the purchasing public to be confused or mistaken into believing that Defendants
restaurant services originate with, emanate from, or are approved, licensed, or sponsored
by Plaintiff, or that Defendants and their restaurant services are affiliated with Plaintiff.
15.
was founded in the winter of 1972 using the trademark MOMS PIZZA by Joseph and
Dominic Marino, two brothers from South Philly. The flour salesman and the high
school teacher learned as they went but turned to their mother Carmella for recipes that
became the foundation of this family-run South Jersey landmark.
17.
18.
The underlying concept behind the preparation of their food was to use the
best ingredients and treat their customers like family. Despite the passage of time, this
important concept has remained the same.
{00022319}
19.
offered and promoted their restaurant services in connection with the MARINOS PIZZA
trademark since 1974. Marinos Pizza has developed a unique and well-known brand
through its high quality restaurant services.
20.
For over 40 years, Marinos Pizza has invested and continues to invest
substantial resources in promoting its goods and services in connection with the
MARINOS PIZZA trademarkspecifically including restaurant services.
21.
reviews and recognition for its pizza, cheesesteak and other popular food items.
Marinos Pizza has been locally and nationally recognized for its restaurant services and
food items.
22.
States, 50 Pizzas article highlighting truly standout pies in every state. Annexed
hereto and incorporated herein as Exhibit A is a true and correct copy of the zagat.com
article recognizing Marinos Pizza (http://www.zagat.com/b/50-state-50-pizzas).
23.
Marinos Pizza was recently honored by the New Jersey State Senate and
New Jersey General Assembly in recognition of its fortieth anniversary. Annexed hereto
and incorporated herein as Exhibit B is a true and correct copy of the Joint Legislative
Resolution recognizing and honoring Marinos Pizza.
24.
best cheesesteaks in South Jersey in the 2013 Best of South Jersey publication from the
Courier-Post newspaper. Annexed hereto and incorporated herein as Exhibit C is a true
and correct copy of the 2013 Best of South Jersey publication recognizing Marinos Pizza
{00022319}
(http://www.courierpostonline.com/story/news/2014/11/09/courier-post-best-of-southjersey-2013/18764785/).
25.
PIZZA trademark in conjunction with its high quality goods and services, the
MARINOS PIZZA trademark has acquired a strong and favorable public recognition
and distinctiveness identifying Marinos Pizza as the source of high quality restaurant
services and associated goods, particularly in the area of southern New Jersey and the
greater Philadelphia, Pennsylvania area. Thus, Marinos Pizza enjoys valid and
subsisting trademark rights in its MARINOS PIZZA trademark.
26.
trademark enjoys tremendous goodwill and has become an asset of incalculable value as
a symbol for Marinos Pizzas restaurant services, which has been damaged and shall
continue to be damaged by the tortious actions of Defendants complained of herein.
DEFENDANTS INFRINGING ACTIVITIES
27.
Upon information and belief, long after Marinos Pizza began using its
Upon information and belief, Defendants advertise, promote, and sell their
{00022319}
29.
Bistro To Go, LLC, jointly filed an application to register the trademark MARINOS
BISTRO TO GO & Design with the United States Patent and Trademark Office for
Restaurant franchising in International Class 35 and Cafe-restaurants in International
Class 43, Serial No. 86/097,999 (the MARINOS BISTRO TO GO Application).
31.
2013, based on an intent to use the mark in commerce. Upon information and belief,
Defendants began using the MARINOS BISTRO TO GO designation at their
restaurant Marinos Bistro to Go in early April 2015.
32.
of actual use of the designation MARINOS BISTRO TO GO are both decades after
Marinos Pizzas date of first use of its MARINOS PIZZA trademark. As such,
Marinos Pizza has priority of use over the Defendants based on its prior common law
rights in the MARINOS PIZZA trademark and its use in commerce of the MARINOS
PIZZA trademark prior to October 22, 2013.
33.
through their attorney of record for the MARINOS BISTRO TO GO Application, a letter
alerting Defendants to Marinos Pizzas prior rights in the mark MARINOS PIZZA and
the likelihood of confusion between Defendants MARINOS BISTRO TO GO
designation and Plaintiffs MARINOS PIZZA trademark. On May 27, 2015, Plaintiffs
{00022319}
attorney received a phone call from Defendants attorney making it clear that Defendants
do not intend to change the name of their restaurant.
34.
with the MARINOS PIZZA mark, because the designation and mark are similar in sound,
pronunciation, meaning, and overall commercial impression. The likelihood of confusion
is particularly high in this case as the identical term MARINOS is used prominently in
Plaintiffs mark and in Defendants designation. Defendants adoption and use of the
generic phrase BISTRO TO GO does not obviate the likelihood of confusion with
Plaintiffs MARINOS PIZZA mark.
36.
example, both offer Italian food, salads, pasta, sandwiches, and similar side items such as
French fries and soup. As such, Defendants use is likely to cause confusion, to cause
{00022319}
MARINOS BISTRO TO GO designation are offered and sold in the same channels of
trade and to the same class of consumers as the MARINOS PIZZA restaurant services.
39.
restaurant services with Marinos Pizzas, and assume that restaurant services bearing the
designation MARINOS BISTRO TO GO emanate from, or are approved, licensed or
sponsored by Marinos Pizza, have the same source as Marinos Pizzas restaurant
services, or that Defendants are affiliated with Marinos Pizza.
40.
Defendants actions have been, and unless enjoined will continue to be, in
violation of federal and New Jersey state law governing trademark infringement and
unfair competition, and are causing and will continue to cause damage and immediate
and irreparable harm to Plaintiff, including lost revenues, loss of control over its
reputation and loss of goodwill.
{00022319}
10
COUNT I
FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
(15 U.S.C. 1125(a); Lanham Act 43(a))
42.
designation, Defendants have falsely designated the origin of their products and have
competed unfairly with Plaintiff, in violation of Section 43(a) of the Lanham Act, 15
U.S.C. 1125(a).
45.
irreparable harm in the nature of lost sales and revenue, loss of control over its reputation
and loss of consumer goodwill.
{00022319}
11
48.
remedy at law, unless and until Defendants unlawful conduct is enjoined by this Court.
49.
unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
COUNT II
STATE TRADEMARK INFRINGEMENT
(N.J.S.A. 56:3-13.16)
50.
The foregoing acts of Defendants are intended to cause, have caused, and
are likely to continue to cause confusion, mistake, and deception among consumers as to
whether Defendants restaurant services originate from, or are affiliated with, sponsored
by, or endorsed by Plaintiff.
53.
Plaintiff has been or will be irreparably harmed and damaged. Plaintiffs remedies at law
are inadequate to compensate for this harm and damage.
54.
{00022319}
12
Upon information and belief, Defendants have made and will continue to
make substantial profits and gains to which they are not entitled in law or equity.
59.
irreparable harm in the nature of lost sales and revenue, loss of control over its reputation
and loss of consumer goodwill.
60.
indirect, for the misappropriation of Plaintiffs name, brand, trademark, reputation and
goodwill, which damages are subject to trebling.
61.
Defendants acts have damaged and will continue to damage Plaintiff, and
{00022319}
13
COUNT IV
COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR
COMPETITION
63.
infringement of Plaintiffs common law rights to exclusive use of the MARINOS PIZZA
mark, in that Plaintiffs mark is inherently distinctive, and thus protectable as a trademark
under common law.
65.
{00022319}
14
goodwill. This irreparable harm to Plaintiff will continue, without any adequate remedy
at law, unless and until Defendants unlawful conduct is enjoined by this Court.
68.
Defendants and their officers, directors, agents, servants, attorneys, successors, assigns,
employees, licensees, and all other persons in privity or acting in concert with them from
using orally, in writing, in connection with any product or in any media in the geographic
area of southern New Jersey or greater Philadelphia, PA, the MARINOS BISTRO TO
GO designation or any term, mark, logo, trade name, Internet domain name or any other
source identifier or symbol of origin that is confusingly similar to the MARINOS PIZZA
trademark;
B.
Finding that (1) Defendants have violated Section 43(a) of the Lanham
{00022319}
15
C.
Award Plaintiff its costs and expenses, including its attorneys fees to the
full extent provided by Section 35 of the Lanham Act (15 U.S.C. 1117) and N.J.S.A.
56:3-13.16(d);
F.
Order Defendants to recall and deliver up for destruction any and all goods,
product packaging, promotional materials, advertisements and all other advertising and
promotional materials which bears the MARINOS BISTRO TO GO designation
pursuant to 15 U.S.C. 1117 and N.J.S.A. 56-3.16(d);
H.
attorneys, successors, assigns, employees, licensees, and all other persons in privity or
acting in concert with them take affirmative steps to dispel any actual confusion that
heretofore has been created by the trademark infringement described above;
I.
1116(a), to file with this Court and to serve on Plaintiff within thirty (30) days after
{00022319}
16
service of an injunction, or such period as this Court may order, a report in writing under
oath setting forth the manner and form in which Defendants have complied with the
injunction; and
J.
Grant any such other and further relief as the Court deems just and proper.
DEMAND FOR JURY TRIAL
Respectfully submitted,
Dated: August 19, 2015
/s Firouzeh Nur-Vaccaro_______________
Firouzeh Nur-Vaccaro, Esq.
Chintan Desai, Esq.
KIM WINSTON LLP
1307 White Horse Road, Suite 601
Voorhees, NJ 08043
Tel: (856) 520-8988
firouzehnurvaccaro@kimwinston.com
chintandesai@kimwinston.com
Attorneys for Plaintiff
MARINOS PIZZA, INC.
{00022319}
17
/s Firouzeh Nur-Vaccaro_____________
Firouzeh Nur-Vaccaro, Esq.
Chintan Desai, Esq.
KIM WINSTON LLP
1307 White Horse Road, Suite 601
Voorhees, NJ 08043
Tel: (856) 520-8988
firouzehnurvaccaro@kimwinston.com
chintandesai@kimwinston.com
Attorneys for Plaintiff
MARINOS PIZZA, INC.
{00022319}
18