Oct. 2 — Factual issues remain in a trademark infringement case concerning two New England-based “apizza” parlors owned by feuding family members, the U.S. District Court for the District of Connecticut ruled Sept. 29 in a partial grant of summary judgment.
While it dismissed some claims of both parties, the court ruled that it could not determine as a matter of law whether a Vermont pizzeria, created by a family member of the owners of a similarly-named Connecticut pizzeria, infringed the Connecticut pizzeria's trademarks.
The court, however, said that it would not award lost profits or attorneys' fees. Because the defendant has already stopped using the allegedly infringing marks in commerce, injunctive relief is also unattainable, the court said.
Zuppardi's Apizza opened in West Haven, Conn., in 1947. The pizzeria incorporated as Zuppardi's Apizza, Inc. with Robert Zuppardi, the former sole owner, and his two sisters Lori Zuppardi and Cheryl Zuppardi Pearce as joint owners. Robert stopped working due to poor health in 2005, and in 2008 the sisters bought out Robert's share of ownership.
In 2005, Robert's son Anthony Zuppardi III opened his own pizza parlor in Wilmington, Vt., Tony Zuppardi's Apizza (“TZA”). In addition to restaurant operations, TZA's business included the sale of frozen pizzas in Vermont, Massachusetts and Connecticut, where Robert helped sell TZA frozen pizzas to Zuppardi's Apizza customers.
In 2007, Anthony Zuppardi registered the trademark “Tony Zuppardi's Apizza.” In 2009, the owners of Zuppardi's filed to register “Zuppardi's Apizza” and a stylized “Zuppardi's” mark, but these applications were rejected by the Patent and Trademark Office on the grounds that the marks would result in a likelihood of confusion with TZA's registration.
Zuppardi's Apizza filed to cancel TZA's registration three months later, and TZA agreed to surrender the mark.
The PTO then granted Zuppardi's Apizza's two trademark registration applications.
In 2010, Zuppardi's sued TZA and Robert Zuppardi's estate for multiple trademark infringement and unfair competition claims.
The district court ruled on four separate summary judgment motions Sept. 29. It granted the motions in part, but Zuppardi's Apizza's infringement claims remain mostly intact.
The court first dismissed TZA's attempt to cancel Zuppardi's Apizza's registrations under Section 2(c) of the Lanham Act, which prohibits registration of a trademark that identifies a particular living individual. TZA argued that Robert and Anthony Zuppardi were so closely associated with the pizza industry that members of the public would assume that Zuppardi's Apizza's marks identify them.
The court, however, determined that this “publicly connected” standard only applies to recognition within the national public at large, and because Robert and Anthony Zuppardi are not nationally known, TZA's argument failed on this standard.
The court also dismissed Zuppardi's Apizza's claim of infringement on its federal trademark registration on account of the fact that TZA discontinued use of its “Tony Zuppardi's Apizza” mark before the Zuppardi's Apizza marks were registered.
In addition, the court dismissed Zuppardi's Apizza's claims for lost profits and attorneys' fees.
Although the claim for infringement of a federal trademark registration was dismissed, Zuppardi's Apizza could still prevail on its federal and state law infringement claims if it could show that its marks were protectable and that the defendant's activities were likely to cause confusion.
As to the first issue, “There appears to be no dispute that the Zuppardi's marks are valid,” the court said. Indeed, after noting that personal names cannot be protected absent a demonstration of secondary meaning, the court said: “Plaintiff has demonstrated secondary meaning, at least in the area close to its West Haven location.”
The court, however, said that it was a closer question as to whether TZA's activities were likely to cause confusion.
In fact, the court determined that here were a number of remaining questions of fact concerning likelihood of confusion. These included necessary determinations of bad faith and actual confusion, the strength of Zuppardi's marks outside of its home area of southern Connecticut, the sophistication of southern Connecticut establishments that resold TZA frozen pizzas, and whether customers who ordered TZA's frozen pizzas at these establishments would have had reason to know of the pizzas' origin.
The court also denied summary judgment on TZA's claim for laches, and on TZA's request to affirm its common law trademark rights in Massachusetts and Vermont, because factual questions remained as to whether TZA's use of the mark was in bad faith.
Zuppardi's Apizza is represented by Anthony P. DeLio of DeLio & Peterson, New Haven, Conn. TZA is represented by Jamie E. Platkin of McCarter & English LLP, Hartford, Conn.
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