IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISIONSCALA’S ORIGINAL BEEF )& SAUSAGE COMPANY, LLC ))Plaintiff, )) No. 09-cv-7353vs. )) District JudgeMICHAELANGELO ALVAREZ d/b/a )MICHAELANGELO FOODS, ) Magistrate Judgeand MICHAELANGELO FOODS, LLC, ))Defendant. )

MEMORANDUM OF SCALA’S ORIGINALIN SUPPORT OF MOTION FOR TEMPORARY RESTRAINING ORDER

The plaintiff Scala’s Original Beef & Sausage Company, LLC (“Scala’s Original”) seeksimmediate entry of an order temporarily restraining the defendants from: (a) infringing Scala’sOriginal’s two federally registered trademarks for “Scala’s Preferred” (in both plain characterand fanciful script); and (b) displaying content on the defendants’ product labels and website thatdeceptively convey that there is an affiliation between the defendants’ products and those of Scala’s Original’s, which is likely to lead to confusion and mistake between the defendants’products and those of Scala’s Original.

Facts

In 1925, Pasquale Scala founded a business, which he initially operated as a soleproprietorship as “Scala Packing Company,” for the sale of Italian-American style meats andsausages. (See Scala Decl. ¶ 3, attached as Exhibit 1 to this brief.) He gradually added otherrelated food products and incorporated the business in 1949 as Scala Packing Company, Inc.(“SPCI”). (

Id.

¶¶ 2-3.) SPCI’s sold its products to two types of customers: (a) restaurants andbeef-stands, which incorporated the products into sandwich and other food preparations that

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2were then sold on a retail basis; and (b) grocery stores and delicatessens, which sold the productsdirectly to consumers for home preparation purposes. (

Id.

¶ 5.)Pasquale Scala and his successor business, SPCI, used the marks “Scala’s” and “Scala’sPreferred” on their Italian-style food products, selling those products throughout the greaterChicago metropolitan area, as well as in various other locations within the United States. (

Id.

¶¶2-3.) At least since 1940, the business used a fanciful script to depict the “Scala’s” mark, in theform depicted on Exhibit A to the Verified Complaint. (

Id.

¶ 8.)In approximately 1960, SPCI started selling bottled giardiniera under the “Scala’s” and“Scala’s Preferred” marks throughout the greater Chicago metropolitan area and nationally. (

Id.

¶ 6.) Giardiniera is a pickled vegetable salad that is a typical garnish on sandwiches of Italianbeef, sausage, and meatballs. (

Id.

)The marks “Scala’s” and “Scala’s Preferred” have attained widespread and favorablepublic acceptance and recognition throughout the Chicago metropolitan area and the UnitedStates. (

Id.

¶ 7.) These marks have become well-known in association with the various foodproducts sold by SPCI, including giardiniera – both as to the immediate buyers of the products,such as restaurants, beef-stands, grocery stores, and delicatessens, and to the ultimate consumersof the products, who buy from such businesses. (

Id.

) “Scala’s” is one of the leading brands of Italian beef and Italian gravy sold within the Chicago metropolitan area and nationally. (

Id.

¶ 4.)Since September 2008 SPCI has held two federally registered trademarks: (a) “Scala’sPreferred” as a standard character mark, registered as No. 3,500,974 (the ’974 Trademark); and(b) a “design plus” mark for “Scala’s Preferred” in the style of script that SPCI (and before it,Pasquale Scala) had been using since at least 1940, registered as No. 3,503,926 (the ’926Trademark). (See Scala Decl. ¶ 11; Compl. Ex. B & C.)

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3Effective August 25, 2008, SPCI issued a license to “use the ‘Scala’ name [and] logo” inconnection with the sale of “prepared vegetable” products – i.e., giardiniera – in the name of “Michaelangelo Alvarez doing business as Michaelangelo Foods.” (Scala Decl. ¶ 12; Compl.Ex. D.) That license agreement was completely silent as to any durational limits or under whatcircumstances the license would terminate. (

Id.

) On August 12, 2009, SPCI notified Alvarezthat the license to use the “Scala’s” name and logo on vegetable products, like giardiniera, wasterminated. (Scala Decl. ¶ 13; Compl. Ex. E.)After the license terminated, SPCI and Scala’s Original entered into an Asset PurchaseAgreement for Scala’s Original to acquire a variety of SPCI assets, including “all of [SPCI’s]trademarks, trade names, logos, service marks, brand marks, brand names, [and] domain names,”as well the goodwill associated with those assets. (Scala Decl. ¶ 14; Ver. Compl. ¶ 20.) SPCIand Scala’s Original closed on that Asset Purchase Agreement on November 23, 2009. (ScalaDecl. ¶ 15; Ver. Compl. ¶ 20.)Despite the termination of the license agreement, the defendants have continued to sellvegetable products, including giardiniera, under the “Scala’s” name and using a script logo thatis similar to the logo protected under the ’926 Trademark. (Ver. Compl. ¶¶ 22-23.) Exhibit F tothe Verified Complaint is the form of label currently being used by the defendants. (Ver. Compl. ¶ 22.) Exhibit G to the Verified Complaint is a printout from their website that displays a host of giardiniera and vegetable products that currently are being offered for sale by the defendantsusing the “Scala’s” name. (Ver. Compl. ¶ 25.)Moreover, the form of label that the defendants are using to sell its giardiniera and relatedvegetable products further infringes the marks and intellectual property rights acquired byScala’s Original from SPCI by mimicking the overall look of the SPCI label. Compare: