Decision Japonais

UNITED STATES DISTRICT COURTEASTERN DISTRICT OF NEW YORK

_____________________N

o

09-CV-2022 (JFB) (WDW)_____________________

R

OY

T

UCCILLO

,

an individual

,

Plaintiff

,

VERSUS

G

EISHA

NYC,

LLC,

doing business as

J

APONAIS

and

OSSS

H

OSPITALITY

NYC

LLC,

Defendants.

___________________MEMORANDUM AND ORDERJuly 22, 2009___________________

J

OSEPH

F.

B

IANCO

,

District Judge:Plaintiff Roy Tuccillo brought the instantaction against defendants Geisha NYC, LLC,doing business as Japonais (“Geisha NYC”),and OSSS Hospitality NYC, LLC (“OSS”),under the Lanham Act for trademark infringement regarding defendants’ use of aregistered trademark in connection with itsrestaurants, described in detail

infra

(hereinafter, the “JAPONAIS mark”). GeishaNYC, OSS, and additional counterclaimplaintiff Geisha, LLC (collectively, “Geisha”)have asserted counterclaims for,

inter alia

,cancellation of plaintiff’s registration of theJAPONAIS mark that is the subject of thislitigation, pursuant to 15 U.S.C. § 1119,trademark infringement pursuant to 15 U.S.C. §1125(a), trademark dilution pursuant to 15U.S.C. § 1125(c), and unfair competitionunder New York common law. Geisha seeksa preliminary injunction that would enjoinTuccillo from using the JAPONAIS mark inconnection with restaurant and loungeservices until a final determination is made onthe merits of their counterclaims.The Court held an evidentiary hearing onthe motion for a preliminary injunction onJuly 7, 2009, which was continued to July 8,2009, and after which the parties submittedwritten briefing. At the preliminaryinjunction hearing, the parties had theopportunity to examine witnesses and presentdocumentary evidence. Following thehearing, Geisha NYC and OSS made a motion

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to add Geisha LLC as a necessary counterclaimplaintiff, as well as additional counterclaims.The Court granted those motions on the record,following oral argument on July 16, 2009. Theparties subsequently agreed on the record that itwas not necessary to re-open the preliminaryinjunction hearing, and consented to the Courtadjudicating the preliminary injunction hearingupon the record of the hearing and submissionsmade to date. The parties submitted additionalbriefing by letters dated July 20, 2009, whichwere also considered by the Court.Having carefully reviewed the evidence andassessed the credibility of the witnesses, theCourt makes the following Findings of Fact andConclusions of Law, pursuant to Rules 52(a)and 65 of the Federal Rules of Procedure, andgrants the motion for a preliminary injunction,according to the specifications dictated at theconclusion of this Memorandum and Order.The lawsuit centers around Tuccillo’spurported use of the JAPONAIS mark at whathe claims to have been a restaurant and loungelocated at 28 Urban Avenue in Westbury, NewYork. In particular, although Tuccillo claimsthat his statements to the United States Patentand Trademark Office – namely: (1) in June2004, that he was unaware of anyone else usingthe JAPONAIS trademark; and (2) in May2008, that he had been using the JAPONAIStrademark in connection with restaurant andlounge services at 28 Urban Avenue since April1, 2008 – were both true, the Court finds thatTuccillo’s evasive testimony and other evidenceon these issues was completely lacking incredibility and that Geisha has demonstrated inoverwhelming fashion that these statementswere patently false. In particular, as set forth inmore detail below, the Court's conclusion isbased upon, among other things, the following:(1) Tuccillo’s explanation as to why he decidedto use “Japonais” (the French word for“Japanese”) to describe his infused calamariand other food items in a restaurant, includinghis statement that he used the French wordbecause he sells “french fries,” wascompletely incredible; (2) Tuccillo’sexplanation as to how he developed theunique letter styling for the JAPONAIS mark,including that he drew it by hand, was utterlylacking in credibility and undermined bydefendants’ compelling expert testimony; and(3) Tuccillo’s explanation, in connection withhis attempt to register an unrelated mark, thathe did not knowingly copy the unique logo forthe Fulton Street Lobster & Fish Company,was simply absurd.Moreover, although Tuccillo claims thathe was running this restaurant and lounge atthe 28 Urban Avenue location in the 1,200foot area that had two tables (which was alsothe same location of an independent sandwichbusiness called the “Sandwich Spot”) from 11a.m. to 3 p.m. on Monday through Fridayssince April 1, 2008, that claim is completelyundermined by, among other things, thefollowing: (1) the lack of any advertising orbusiness directory listing for this purportedrestaurant; (2) the lack of any sales recordsthat can be directly attributable to thisrestaurant, as opposed to plaintiff’s manyother businesses; (3) the lack of any permitfrom the Nassau County Board of Health untilMarch 19, 2009; (4) the telephone numberlisted on the paper menus, which Tuccilloclaims is “proof” that the restaurant existed, isanswered “frozen foods” (which is related toplaintiff’s other companies); and (5) on March23, 2009, at a time that plaintiff claims therestaurant was open for lunch (between 11:45a.m. and 12:15 p.m.), an investigator forGeisha took photographs of the “restaurant”which had a “closed” sign, no employees inthe store, and no food or customers anywherein sight. Tuccillo’s only indicia of use of the2

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word “Japonais” is the purchase of signs, whichis hardly indicative of a functioning restaurantutilizing the mark in commerce, and the lack of a

bona fide

restaurant under the JAPONAIStrademark was clear from the other evidence inthe record. In short, Tuccillo’s incredibletestimony regarding the restaurant’s purportedoperation under the JAPONAIS trademark (andthe testimony of his other witness) is completelyundermined, not only by the testimony’s owninternal inconsistencies and facially incredibleexplanations, but also by the complete lack of the basic indicia of a functioning,

bona fide

restaurant operating under the JAPONAISname, as well as the compelling evidencesubmitted by Geisha that credibly contradictsTuccillo’s testimony on the critical issuesrelated to defendant's counterclaims.In contrast to the testimony and evidencesubmitted by Tuccillo, Geisha submittedcompelling evidence as to its creation anddevelopment of the JAPONAIS mark in 2003 inconnection with the opening and operation of aJapanese fusion restaurant in Chicago, and itssubsequent opening of restaurants in New York City and Las Vegas in 2006. Moreover, Geishademonstrated at the evidentiary hearing in anoverwhelming fashion that Tuccillo’sstatements to the USPTO were false and that hesubmitted the registration with the JAPONAISmark copied from the defendants in a bad faitheffort to “squat” on the mark in order tocapitalize on Geisha’s failure to register themark. Thus, Geisha demonstrated a likelihoodof success on its counterclaims for cancellationof Tuccillo’s registration of the JAPONAISmark because of the false statements to theUSPTO by Tuccillo and on its trademark infringement claim as the senior user of themark. Geisha also showed that irreparable harmwill occur to its restaurant business in theabsence of a preliminary injunction.Accordingly, as discussed in detail below,Geisha has satisfied all of the requirements fora preliminary injunction and such aninjunction is warranted under thecircumstances of the instant case.I. B

ACKGROUND

Before proceeding to delineate the Court’sFindings of Fact for the purposes of Rule52(a), the Court begins by providingasummary of the instant matter and thefoundation of the factual dispute between theParties.A.

The Mark The controversy in the instant caseinvolves a dispute over the rightful owner of the “JAPONAIS mark,” within the New York metropolitan market. The JAPONAIS mark iscomprised of a stylized version of the word“Japonais”–which is the French-languageword for Japanese–in which the twooccurrences of the letter “A” have theircrossbars removed, such that they appear to beupside down versions of the letter “V.” Theparties do not dispute that the stylizedJAPONAIS includes the initial letter “J” asextending below the bottom reaches of theother letters in the word.The parties also do not dispute that theJAPONAIS mark as used by counterclaimplaintiffs and used and registered by Tuccillowith the United States Patent & Trademark Office (“USPTO”) are identical. However,their stories regarding their respective allegedcreation and uses of the mark diverge, and arethe foundation of the instant litigation. TheCourt proceeds to describe the basicallegations in the parties’ respective pleadingsand other submissions in order to frame thedispute.3

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