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Case 1:09-cv-07353 Document 7 Filed 11/23/2009 Page 1 of 16

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION

SCALA’S ORIGINAL BEEF )


& SAUSAGE COMPANY, LLC )
)
Plaintiff, )
) No. 09-cv-7353
vs. )
) District Judge
MICHAELANGELO ALVAREZ d/b/a )
MICHAELANGELO FOODS, ) Magistrate Judge
and MICHAELANGELO FOODS, LLC, )
)
Defendant. )

MEMORANDUM OF SCALA’S ORIGINAL


IN SUPPORT OF MOTION FOR TEMPORARY RESTRAINING ORDER

The plaintiff Scala’s Original Beef & Sausage Company, LLC (“Scala’s Original”) seeks

immediate entry of an order temporarily restraining the defendants from: (a) infringing Scala’s

Original’s two federally registered trademarks for “Scala’s Preferred” (in both plain character

and fanciful script); and (b) displaying content on the defendants’ product labels and website that

deceptively 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 sole

proprietorship as “Scala Packing Company,” for the sale of Italian-American style meats and

sausages. (See Scala Decl. ¶ 3, attached as Exhibit 1 to this brief.) He gradually added other

related 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 and

beef-stands, which incorporated the products into sandwich and other food preparations that
Case 1:09-cv-07353 Document 7 Filed 11/23/2009 Page 2 of 16

were then sold on a retail basis; and (b) grocery stores and delicatessens, which sold the products

directly to consumers for home preparation purposes. (Id. ¶ 5.)

Pasquale Scala and his successor business, SPCI, used the marks “Scala’s” and “Scala’s

Preferred” on their Italian-style food products, selling those products throughout the greater

Chicago 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 the

form 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 Italian

beef, sausage, and meatballs. (Id.)

The marks “Scala’s” and “Scala’s Preferred” have attained widespread and favorable

public acceptance and recognition throughout the Chicago metropolitan area and the United

States. (Id. ¶ 7.) These marks have become well-known in association with the various food

products 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 consumers

of 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’s

Preferred” 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 ’926

Trademark). (See Scala Decl. ¶ 11; Compl. Ex. B & C.)

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Effective August 25, 2008, SPCI issued a license to “use the ‘Scala’ name [and] logo” in

connection 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 what

circumstances the license would terminate. (Id.) On August 12, 2009, SPCI notified Alvarez

that the license to use the “Scala’s” name and logo on vegetable products, like giardiniera, was

terminated. (Scala Decl. ¶ 13; Compl. Ex. E.)

After the license terminated, SPCI and Scala’s Original entered into an Asset Purchase

Agreement 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.) SPCI

and Scala’s Original closed on that Asset Purchase Agreement on November 23, 2009. (Scala

Decl. ¶ 15; Ver. Compl. ¶ 20.)

Despite the termination of the license agreement, the defendants have continued to sell

vegetable products, including giardiniera, under the “Scala’s” name and using a script logo that

is similar to the logo protected under the ’926 Trademark. (Ver. Compl. ¶¶ 22-23.) Exhibit F to

the 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 defendants

using the “Scala’s” name. (Ver. Compl. ¶ 25.)

Moreover, the form of label that the defendants are using to sell its giardiniera and related

vegetable products further infringes the marks and intellectual property rights acquired by

Scala’s Original from SPCI by mimicking the overall look of the SPCI label. Compare:

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SPCI’s Label Defendants’ Label

As this side-by-side comparison reflects, the following distinctive features of SPCI’s

label are imitated by the defendants’:

• Across the upper portion of the label, above the name “Scala’s” the defendants have

inserted the words “Ahh… That’s Italian,” in direct imitation of the words

“Ahh…talian” that appears on the SPCI label.

• The defendants’ label prints the word “Scala’s” in red, just like SPCI’s.

• Just like SPCI’s label, defendants’ label has the following text appearing immediately

above the “Nutrition Facts” box:

Scala’s Giardiniera is an old Italian Pepper Salad recipe made famous in


Chicago. Served with Scala’s Italian Beef, Italian Sausage & Italian
Meatball Sandwiches.

• Just like SPCI’s label, defendants’ label has six identically worded lines of text,

beginning with the words, “Mild Mix Giardiniera,” displayed in the virtually identical

font, substituting only the name “MichaelAngelo Foods” for “Scala Packing Co.” and

“www.scalasgiardiniera.com” (defendants’ domain name) for SPCI’s

www.scalasbeef.com.

(Compare Compl. Ex. A & F.)

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The defendants’ website, which likewise infringes the SPCI marks now held by Scala’s

Original, falsely suggests that the defendants are the successors to the business founded by

Pasquale Scala:

• The defendants’ domain names of www.scalasgiardiniera.com,

www.scalasitalianbeef.com, and www.scalasitaliansausage.com infringe the Scala’s

Original’s marks, “Scala’s Preferred” and “Scala’s.” (See Ver. Compl. ¶ 25.)

• The website displays the words “Ahh… That’s Italian” across each page in a manner

calculated to imitate the “Ahh…talian” slogan associated with the SPCI products.

(Compl. Ex. G.)

• The name Scala’s appears on each page of the website in a shade of red similar to the

color in which the name is depicted on the SPCI label, and using a script similar to

the script protected by the ’926 Trademark. (Id..)

• There are two paragraphs of narrative content on the “homepage” that recite historical

facts relating to the role of SPCI’s founder, Pasquale Scala, and the assumed name of

his business, Scala Packing Company, both in popularizing Italian Beef and Sausage

products and in creating “Scala’s Giardiniera.” (Id.)

• The website pervasively refers to the defendants’ product as “Scala’s Giardiniera.”

(Id.)

• The website depicts images of the defendants’ packaged products that reproduce the

infringing features of those labels. (Id.)

On October 27, 2009, Scala’s Original demanded in writing that the defendants cease

their infringing and deceptive practices. (Ver. Compl. ¶ 28; Compl. Ex. H.) Defendants refused

to do so by letter dated November 9, 2009. (Ver. Compl. ¶ 29; Compl. Ex. I.)

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Scala’s Original is Entitled to a Temporary Restraining Order

The Lanham Act prohibits the defendants’ unauthorized use of the “Scala’s” name in a

manner that infringes Scala’s Original’s federally registered ’926 and ’974 Trademarks. See 15

U.S.C. § 1114(a). So too, the Lanham Act bars those aspects of the defendants’ labels and

website that falsely imply an affiliation between their products and those of Scala’s Original’s or

SPCI’s, and/or are likely to cause confusion between Scala’s Original’s and defendants’

products. See 15 U.S.C. § 1125(a)(1). Scala’s Original brings this motion for a temporary

restraining order to prevent the irreparable injury that it has and will suffer from the defendants’

ongoing violations of these federal statutes.1

On this motion for a temporary restraining order, Scala’s Original must satisfy the same

five-factor test that is applied in preliminary injunction motions:

(1) that it stands a reasonable likelihood of success on the merits; (2) that it has no
adequate remedy at law; (3) that it will suffer irreparable harm without injunctive
relief; (4) that the irreparable harm it will suffer absent injunctive relief outweighs
the irreparable harm ... [defendants] will suffer if the injunctive relief is granted;
and (5) that the injunctive relief will not disserve the public interest.

See P.P. & K., Inc. v. McCumber, No. 94 C 988, 1994 WL 69417 at *2 (N.D. Ill. Feb. 25, 1994)

(entering TRO against terminated licensee prohibiting use of licensed marks post-termination),

rev’d on other grounds, 46 F.3d 1134 (7th Cir. 1995) (mem.) (District Court should also have

preliminarily enjoined defendant to surrender premises, pursuant to terms of franchise

agreement). See also, e.g., Ty, Inc. v. Jones, Inc., 237 F.3d 891, 895 (7th Cir. 2001) (same five-

factor test applied to affirm grant of preliminary injunction on trademark infringement claims).

1
Because the claims arising under federal law more than suffice to warrant entry of a TRO, we
do not discuss Scala Original’s state law claims, pled in Counts III and IV.

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In applying this five-factor test, the Court uses a “sliding scale.” “[T]he more likely the

plaintiff will succeed on the merits, the less the balance of irreparable harms need favor the

plaintiff's position.” Ty, 237 F.3d at 895.

Scala’s Original satisfies all five factors.

A. Scala’s Original is Likely to Prevail on the Merits.

At this juncture of the litigation, Scala’s Original need only show that it “has a ‘better

than negligible’ chance of succeeding on the merits,” in order to meet the first criteria for

awarding a TRO. See, e.g., Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111,

1114-15 (7th Cir. 1997) (and cases cited therein).

Scala’s Original stands a very high likelihood of success as to both its federal trademark

infringement claim, under section 1125, and its unfair competition claim under section 1114.

This case is directly analogous to P.P. & K., in which the District Court held that a terminated

licensee’s continued use of the plaintiffs’ federally-registered mark, “Convenient Food Mart,”

stood “a very high likelihood of success on the merits,” and warranted entry of a TRO:

• “to cease using names, marks, signs … [, or] advertising … which are identified or

associated with Convenient Food Mart”;

• “cease making any statements or representations that Defendants … are in any way

approved, endorsed or licensed by … or identified with Convenient Food Mart”; and

• cease “from directly or indirectly using the name ‘Convenient’ or the service mark

‘Convenient Food Mart’ and logos, or any Name or Marks” in connection with their

business.

1994 WL 69417 at *9-*11 (emphasis added).

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In this last regard, it is notable that P.P. & K. forbade the terminated licensee from using

the dominant component of the registered mark, “Convenient,” and not just the full registered

mark, “Convenient Food Mark.” Id. So here, the defendants’ misappropriation of “Scala’s”

should be prohibited, even though it omits the “Preferred” component of the registered marks.

1. Scala’s Original is Likely to Prevail on Count I for Infringement of a


Federally Registered Trademark.

A claim for trademark infringement against a former licensee entails showing:

(1) that [the plaintiff] has a protectable mark; (2) that the [license] agreement was
legally terminated thereby showing use of its mark without consent; and (3) that
the unauthorized use of its mark creates a likelihood of consumer confusion.

Dunkin’ Donuts, Inc. v. Benita Corp., No. 97 C 2934, 1998 WL 67613 at *2 (N.D. Ill. Feb. 2,

1998). Scala’s Original can satisfy each of these elements.

a. Scala’s Original stands a better than negligible likelihood of showing


that it owns the federally-registered marks.

As set out in the Verified Complaint and attested by Pascal Scala, SPCI obtained federal

registrations for the mark “Scala’s Preferred,” as both a standard character mark and a design-

plus mark, via the ’974 and the ’926 Trademarks in September 2008. (See Ver. Compl. ¶ 6;

Compl. Ex. B & C; Scala Decl. ¶ 14.) Scala’s Original acquired those federally-registered

trademarks as part of the Asset Purchase Agreement on November 23, 2009. (See Ver. Compl. ¶

20; Scala Decl. ¶¶ 14-15.) As such, Scala’s Original plainly owns these marks.

b. Scala’s Original has a better than negligible likelihood of showing that


the defendants’ license terminated.

Under Illinois law, “contracts of indefinite duration are generally deemed terminable at

will by either party.” See, e.g., A.T.N., Inc. v. McAirlaid’s Vliesstoffe GMBH, 557 F.3d 483, 486

(7th Cir. 2009), following Jesperson v. Minnesota Mining & Mfg. Co., 183 Ill. 2d 290, 294-95,

700 N.E.2d 1014, 1016-17 (1998). The only exception is when the agreement identifies one or

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more “objective events” that will result in termination, from which the courts infer that those are

the exclusive grounds that will result in termination. A.T.N., 557 F.3d at 487, citing Jesperson,

183 Ill. 2d at , 700 N.E.2d at 1017.

The license agreement here contained neither an express durational limit nor any other

objective event that would result in termination. (See Compl. Ex. D.) As such, it was terminable

at will and SPCI’s letter of August 12, 2009 that the license was “terminated effective

immediately” had precisely that effect.

c. Scala’s Original stands a better than negligible likelihood of showing


that the defendants’ use of the marks is likely to cause confusion.

In assessing the likelihood of confusion, the Seventh Circuit considers seven factors:

(1) similarity between the marks in appearance and suggestion; (2) similarity of
the products; (3) the area and manner of concurrent use; (4) the degree of care
likely to be exercised by consumers; (5) the strength of the plaintiff's mark; (6)
whether actual confusion exists; and (7) whether the defendant intended to “palm
off” his product as that of the plaintiff.

CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 677-78 (7th Cir. 2001).

Here, as discussed in the paragraphs that follow, six of the seven factors weigh strongly

in favor of a finding of a likelihood of confusion. The only exception is the question of “actual

confusion,” for which the evidence is neutral because of the early stage of this litigation.

“[R]eliable evidence of confusion is difficult to obtain,” however, and for that reason especially,

a “showing of actual confusion is not necessary to establish infringement.” Pride Commun. Ltd.

Partnership v. WCKG, Inc., 851 F. Supp. 895, 902 (N.D. Ill. 1994), citing Tisch Hotels, Inc. v.

Americana, Inc., 350 F.2d 609, 611-12 (7th Cir. 1965).

(1) The marks themselves are very similar: The dominant component of the federally-

registered marks is the word “Scala’s.” (See Compl. Ex. B & C.) This is identical to the

defendants’ “Scala’s” mark. Moreover, both the federally-registered ’926 mark and defendants’

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mark appear in a script font, and in an upward sloping line from the initial to final letter. (See

Compl. Ex. C & Ex. F.) In short, the similarity in the marks here is analogous to the similarity

found by the Seventh Circuit in comparing the plaintiff’s “Auto Zone” and defendant’s “Oil

Zone” and “Wash Zone” marks, where all the marks shared the word “Zone,” appeared in the

“same font,” and were “slanted in the same direction.” AutoZone, Inc. v. Strick, 543 F.3d 923,

930 (7th Cir. 2008). See also Pride, 851 F. Supp. at 902 (defendant radio station’s “‘Star 107.9’

[mark] is similar in form, spelling, and sound to Plaintiff's ‘Star 105.5’”).

Moreover, just as in AutoZone, it is immaterial that, viewed side-by-side, there are some

differences in the appearance of the marks. “[T]he test is not whether the public would confuse

the marks, but whether the viewer of an accused mark would be likely to associate the product or

service with which it is connected with the source of products or services with which an earlier

mark is connected.” AutoZone, 543 F.3d at 930 (emphasis in original).

(2) The marks are both used to sell Italian-American food products, including

giardiniera and other vegetable products. Scala’s Original’s federal registrations apply to a

variety of food products, including “vegetable salads” and “processed peppers.” (See Compl.

Ex. B & Ex. C.) The products sold by the defendants under the Scala’s marks compete directly

with the food products encompassed by the federal registration – i.e., giardinieras, other

vegetable salads, and processed peppers. (See Compl. Ex. F & Ex. G.)

(3) Both parties sell and promote their products in concurrent geographic markets

and for concurrent use. Since closing on the Asset Purchase Agreement, Scala’s Original has

been selling Italian food products to the same types of customers previously served by SPCI –

i.e., restaurants, beef-stands, grocery stores, and delicatessens. (Ver. Compl. ¶ 21.) This market

intersects with the wholesale customers to whom defendants sell their products. (Id. ¶ 22; Ex.

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G.) Both promote their giardiniera products for use as an accompaniment to “Scala’s Italian

Beef, Italian Sausage & Italian Meatball Sandwiches.” (Compare Compl. Ex. A & Ex. F;

Compl. Ex. G at 1.) Their geographic markets are also virtually identical given the Chicago-

centric market for both Italian beef sandwiches and giardiniera. (Compl. Ex. A, Ex. F., & Ex. G

at 1.) Moreover, both parties promote their products on the Internet, rendering it highly likely

that consumers will mistake the defendants’ domain names www.scalasgiardiniera.com,

www.scalasitalianbeef.com,and www.scalasitaliansausage.com and their website as the source

for Scala’s Original’s products. (Ver. Compl. ¶¶ 21, 25; Compl. Ex. G.)

(4) The inexpensive price and manner in which consumers purchase the parties’

competing products are not characterized by a high degree of care. The giardiniera

products and other vegetable salads at issue in this action are sold at retail on a per-jar basis at

prices ranging from $4.50 to $7.00 apiece, or to food service establishments as toppings for

Italian-style sandwiches. (See Compl. Ex. G; Scala Decl. ¶¶ 6-7.) As the Seventh Circuit has

observed, consumers are “more likely” to “exercise a lesser degree of care and discrimination in

their purchases” when buying products that are “widely accessible and inexpensive,” as is the

case here. AutoZone, 543 F.3d at 933 (automotive parts sold at retail). As held in AutoZone,

especially when coupled with the “physical similarity of the marks and the degree of affiliation

confusion,” it is reasonable to infer that consumers do not exercise a high degree of care in

purchasing the food products at issue here. Id.

(5) Scala’s Original’s federally registered marks are strong. Federal registration of

the plaintiff’s marks per se imbues the marks with a “great deal of strength,” and creates a

presumption of secondary meaning. Meridian, 128 F.3d at 1118; 15 U.S.C. § 1057(b). The

strength of the marks is further enhanced by the decades in which they have been associated with

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SPCI’s products – for at least 60 years as to Italian-style food products in general and

approximately 50 years as to giardiniera. (Compl. Ex. B & C; Scala Decl. ¶ 6.) Indeed, the

defendants’ own label and website confirm the lengthy public association of SPCI’s marks with

giardiniera. (Ex. F: “Scala’s Giardiniera is an old Italian Pepper Salad recipe made famous in

Chicago”; Ex. G: “Scala’s Giardiniera has long been a Chicago favorite.”) In short, the

defendants’ own conduct in palming off their products as descendants of SPCI’s recognizes the

strength of the SPCI’s marks, now owned by Scala’s Original.

(6) Actual Confusion. Scala’s Original is confident that it will be able to produce

evidence that customers and potential customers are confused by the defendants’ use of the

“Scala’s” mark and its own of “Scala’s Preferred.” However a plaintiff is not required to show

actual confusion to establish likelihood of confusion. See, e.g., CAE, 267 F.3d at 686 (affirming

judgment of trademark infringement despite scant evidence of actual confusion). Especially at

the stage of a motion for temporary restraining order, where there has been no opportunity to

take discovery of the defendants, it is hardly surprising that Scala’s Own currently lacks

evidence of actual confusion.

(7) The defendants’ intent to “palm off” their products weighs heavily in favor of a

TRO. There can be little doubt that the defendants intend for consumers to associate their

products with SPCI’s and misappropriate to the defendants the goodwill of SPCI that Scala’s

Original has purchased. Both the legend above the nutrition facts on the defendants’ label and

the historical narrative on the defendants’ website falsely give the impression that the

defendants’ giardiniera bears an affiliation with or sponsorship by the company founded by

Pasquale Scala. (See Compl. Ex. F & Ex. G.) Similar to the situation in Club Gene & Georgetti,

Ltd Partnership. v. Club Luna Enterprises, Inc., 889 F. Supp. 324, 326-27 (N.D. Ill. 1986), the

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defendants’ label and website are calculated to create the false impression that their products and

Scala’s Originals share a common heritage, descended from a famous Chicago institution, when,

in fact, only Scala’s Original is entitled to make that representation, as the lawful purchaser of

SPCI’s marks and good will.

Moreover, the overall appearance of the defendants’ product label, compared to SPCI’s,

is so strikingly similar in appearance and content to SPCI’s label that this cannot be the result

mere happenstance. This similarity goes beyond use of the registered trademarks to encompass

mimicry of non-registered, distinctive features of SPCI’s label. (See pp. , supra, describing

similarities and depicting labels side-by-side.) This obviously deliberate effort by defendants to

reproduce the entirety of the look of SPCI’s label – i.e., to palm off their products – weighs

heavily in favor of finding a “likelihood of confusion.”

2. Scala’s Original is Likely to Prevail on Count II that Defendants Violated the


Prohibitions of 15 U.S.C. § 1125 Against Unfair Competition.

The Lanham Act, 15 U.S.C. § 1125, bars “false designations of origin” that are likely to

cause confusion or mistake, or imply an “affiliation, connection, or association” or sponsorship

between goods. In particular, the defendants’ use of a label that in overall appearance

incorporates many of the distinctive features of the SPCI label is actionable under 15 U.S.C. §

1125 as a species of trade dress infringement. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 768 (1992) (this section includes protection for unregistered trademarks, including

trade dress, applying same general principles developed under section 1114).

So too, the text of the defendants’ label and website – implying that they are the

commercial heirs to the business founded by Pasquale Scala d/b/a Scala Packing Co., the

inventor and long-time purveyor of Scala’s Italian Beef, Sausage, and Meatballs – is actionable

under 15 U.S.C. § 1114 as constituting a false designation of origin likely to cause confusion or

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mistake, or implying falsely an affiliation, approval, association, or sponsorship. See, e.g., Club

Gene & Georgetti, 889 F. Supp. at 327 (preliminarily enjoining defendants from advertising their

“start-up” restaurant in a manner falsely implying an affiliation with “one of the oldest and most

widely-recognized restaurants in Chicago”).

The likelihood of confusion under section 1125 is assessed using the same seven-factor

test that is used from section 1114 claims. See Roulo v. Russ Berrie, Inc., 886 F.2d 931, 937 (7th

Cir. 1989). Thus, for all of the reasons addressed with respect to the section 1114 claim, Scala’s

Original also stands a more than negligible likelihood of succeeding on the merits in its claims

arising under 15 U.S.C. § 1125.

B. Scala’s Original Has No Adequate Remedy at Law and Will Suffer


Irreparable Harm.

“The lack of an adequate remedy at law and irreparable injury are generally presumed in

trademark infringement cases.” Club Gene & Georgetti, 889 F. Supp. at 327. This is so because

the confusion in the market and damage to reputation and goodwill are by their nature irreparable

and not susceptible to monetary measurement. Meridian, 128 F.3d at 1120.

C. The Balance of Relative Harms Favors Entry of a TRO.

Given the very strong likelihood of success on the merits, this Circuit’s “sliding scale”

standard entitles Scala’s Original to TRO so long as the balance of irreparable harm weighs even

slightly in favor of Scala’s Original. See Dunkin’ Donuts, 1998 WL 67613 at *6.

Even without the sliding scale, the balance of harms favors Scala’s Original, just as it

favored the plaintiff in Dunkin Donuts. Id. Without a TRO, Scala’s Original will sustain:

• harm from the “very high” likelihood of “confusion of the public” arising from the

defendants’ continued use of the federally-registered marks owned by Scala’s;

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• harm from Scala’s Originals “lack of control … over the quality of the products” sold

by the defendants’ under those marks; and

• the “potential dilution of’ Scala’s Original’s marks.”

P.P. & K., 1994 WL 69417 at *10. Just as in P.P. & K., all of these concerns “lead to the

conclusion that [Scala’s Original] will be irreparably harmed” if the TRO does not issue. Id.

On the other side, the defendants will merely be deprived of selling their products under a

trademark to which they have no right. Id.. They still may sell giardiniera so long as they do so

under a different mark and remove the content on their label and website that confusingly

suggests an affiliation with Scala’s, Pasquale Scala, or Scala Packing Company. Compare

Dunkin’ Donuts, at 1998 WL 67613 *6 (“Benita may still operate a business, including a

doughnut shop, using a different mark, trade name, and trade dress.”).

D. The Public Interest Supports Entry of a TRO.

The public has a strong interest in the enforcement of trademark law:

Trademarks help consumers to select goods. By identifying the source of the


goods, they convey valuable information to consumers at lower costs. Easily
identified trademarks reduce the costs consumers incur in searching for what they
desire, and the lower the costs of search the more competitive the market.

Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429 (7th Cir. 1985). A TRO is in the

public interest by preventing consumer confusion between Scala’s Original’s goods and the

defendants’. See Club Gene & Georgetti, 889 F. Supp. at 327 (“the public interest will be best

served by avoiding confusion created by the advertisements” falsely implying an affiliation

between defendant’s start-up restaurant and the plaintiff’s established restaurant).

Conclusion

WHEREFORE Scala’s Original Beef & Sausage Company, LLC requests that the Court

enter an order temporarily restraining the defendants from using the word “Scala’s” in the name

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of their product or domain names, eliminating all features of their product label and website that

are imitative of the look of the SPCI label, and removing all content from their label and website

referring to Pasquale Scala, Scala Packing Company, or “Scala’s” products.

Respectfully submitted,

Scala’s Original Beef & Sausage Company, LLC

/s/ Marion B. Adler


Marion B. Adler (madler@rddlaw.net)
Michael Rachlis (mrachlis@rddlaw.net)
RACHLIS DURHAM DUFF & ADLER, LLC
542 South Dearborn Street, Suite 900
Chicago, Illinois 60605
312-733-3950
Dated: November 23, 2009

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