Case 0:14-cv-62394-JEM Document 33 Entered on FLSD Docket 01/12/2015 Page 1 of 9

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
FT. LAUDERDALE DIVISION
CASE NO. 0:14-CV-62394-JEM
PARAGON EMINEM, LLC AND
MY PI, LLC
Plaintiff,
vs.
MY PIE INTERNATIONAL, INC.
Defendant.
_____________________________________/

FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
PARAGON EMINEM, LLC AND My Pi, LLC, Plaintiffs in the above styled cause, for their
Complaint for Declaratory Judgment against Defendant My Pie International, Inc. allege as follows:
THE PARTIES
1.

Paragon Eminem, LLC (“Paragon”) is a Florida Limited Liability Company in good

standing having a principle place of business at 3984 W. Hillsboro Blvd., Deerfield Beach, FL 33442.
2.

My Pi, LLC (“My Pi”) is a Florida Limited Liability Company in good standing having a

principle place of business at 3984 W. Hillsboro Blvd., Deerfield Beach, FL 33442. My Pi is a wholly
owned subsidiary of Paragon.
3.

My Pie International, Inc. (“MPI”) is, upon information and belief, an Illinois based

corporation having a principle place of business at 2010 N Damen Avenue, Chicago, IL 60647.
JURISDICTION AND VENUE
4.

This Court has jurisdiction over the subject matter of this suit, because it arises under

Federal Law, namely, 15 U.S.C. §1051 et seq (Lanham Act), 28 U.S.C. §1331 (Federal Question), 28
Complaint for Declaratory Judgment

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U.S.C. §1338 (Designs, Copyrights, Trademarks and Unfair Competition) and 28 U.S.C. §2201
(Declaratory Judgment Act). MPI has created a real and reasonable apprehension that it will be sued
based upon alleged liability on the part of Plaintiffs. See Exhibit A.
5.

Venue is proper under 28 U.S.C. §1391 because MPI intentionally directs advertising

toward the residents of the State of Florida, intentionally asserts legal rights in Florida based upon its
commercial activities in Florida, and this action arises from facts and events that took place in Florida.
MPI's website explicitly offers and claims to serve clients in Florida, including multiple customers in
Broward County, alleges that it purposely directs advertising toward Florida, alleges that it conducts
business in Florida, and alleges that MPI's business activities are “especially concentrated” in Florida.
MPI thus affirmatively represents publicly and privately that it extensively and purposefully avails itself
of the privilege of conducting business in Florida. See Exhibits A and Exhibit B.
FACTUAL BACKGROUND
6.

MPI is the owner of U.S. Trademark Registration No. 1,003,505, registered on January

28, 1975 for the stylized words “MY Π” as shown here:

(hereinafter the “MPI Mark”) See Exhibit C.
7.

During prosecution of the trademark application, the Trademark Office initially requested

a disclaimer the Greek letter Π because it is phonetically equivalent to the word “pie.” See Exhibit C,
page 97.
8.

On July 26, 1974, MPI requested reconsideration of the disclaimer request and

affirmatively argued and represented to the Trademark Office that despite the phonetic similarity, the
MPI Mark, and specifically the Greek letter “Π,” was not confusingly similar to the word “pi” or the

Complaint for Declaratory Judgment

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word “pie,” and stating that the mark “is so inherently distinctive that it distinguishes [MPI's] goods and
services from all those of a similar nature.” MPI elaborated by explaining that the Greek letter Π is
“known to anyone who has studied elementary mathematics,” and is distinct from and not similar to the
words “pi” and “pie” which both mean “to spill or throw (type or type matter) into disorder.” See Exhibit
C, pages 103-105.
9.

As a direct result of MPI's arguments and representations, the Trademark Office

determined that the Greek letter “Π” was not similar to the words “pi” or “pie,” withdrew the disclaimer
request, and allowed MPI to register the MPI Mark.
10.

MPI also argued that the Greek letter Π of the MPI Mark, as well as the Roman alphabet

words “pi” and “pie” are not descriptive of its goods or services because the MPI Mark “is used for
restaurant and carry-out services of a general nature, rather than being limited to a particular specialty,
such as assorted pies.”
11.

On or about June 13, 2013, My Pi, a wholly owned subsidiary of Paragon Entertainment

Group, LLC (“PEG”), began operating restaurants specializing in pizza under the distinctive trademark:

(hereinafter “the My Pi Mark”).
12.

On September 3, 2013, PEG filed U.S. Trademark Application Serial No. 86/054,548 for

the My Pi Mark, for goods and services described as “restaurant services featuring pizza.” See Exhibit
D.
13.

On December 16, 2013, the Trademark Office determined that the My Pi Mark was

distinctive and not likely to be confused with any registered trademark, stating “[t]he trademark

Complaint for Declaratory Judgment

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examining attorney has searched the Office’s database of registered and pending marks and has found no
conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15
U.S.C. §1052(d).” See Exhibit D, page 33.
14.

On January 4, 2014, PEG assigned ownership of both My Pi and the My Pi Mark to

Paragon.
15.

My Pi operates under an exclusive license granted by Paragon for use of the My Pi Mark

in commerce for restaurant services featuring in pizza and is directly controlled by its parent company,
Paragon.
16.

On March 27, 2014, MPI’s attorney contacted counsel for PEG, Paragon and My Pi,

alleging that the My Pi Mark was “conceptually and phonetically identical” to MPI's Mark. See Exhibit
E.
17.

Subsequent to the March 27, 2014 letter, counsels for the partiescorresponded by email

and telephone in an attempt to resolve this matter. The parties consented to MPI's filing of Extensions
of Time to file an Opposition in the hopes of reaching an amicable settlement.
18.

Despite good faith attempts by counsel, MPI sent a demand letter on October 10, 2014,

alleging liability for trademark infringement, thereby creating an actual, present and justiciable
controversy between Paragon, My Pi and MPI. See Exhibit A.
19.

The Plaintiff has retained the undersigned counsel to represent it in this matter and is

obligated to pay said counsel a reasonable fee for such representation.
COUNT I - Declaratory Judgment of Non-Infringement Under 28 U.S.C. §2201 and 15 U.S.C.
§1051 et seq.
20.

Paragon and My Pi hereby incorporate by reference the allegations of paragraphs 1 – 18

21.

This is an action for Declaratory Judgment of Non-Infringement based upon claims of

above.

Complaint for Declaratory Judgment

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infringement asserted by the Defendant MPI.
22.

By asserting claims of trademark infringement against Plaintiff My Pi in a letter dated

October 10, 2014, Defendant MPI placed Paragon and its subsidiary My Pi in the position of having to
choose between abandoning its rights in the My Pi Mark and risking prosecution, thus creating an actual,
present and justiciable controversy between the parties. See Exhibit A.
23.

MPI obtained its Federal Registration for the MPI Mark based in part upon MPI's

assertions that its use of the Greek letter “Π” is not likely to be confused with the Roman alphabet words
“pi” and “pie.” MPI is therefore estopped from now asserting that use of the word “pi” in the My Pi Mark
is likely to be confused with the Greek letter “Π” used in MPI's Mark.
24.

The Greek letter “Π” is the dominant feature of the MPI Mark.

25.

The differences in sight and meaning of this dominant feature, the Greek letter Π, and the

word “pi” outweigh their phonetic similarities. MPI is equitably estopped from arguing otherwise.
26.

The word “MY” is ubiquitous and, according to the search performed by the examining

attorney reviewing My Pi's trademark application, has been used in over 50,000 trademarks. See Exhibit
D, page 65. As such, the word “MY,” including its use in MPI's Mark, is extremely weak and entitled to
little or no protection.
27.

For all of the reasons set forth above, confusion is not likely between MPI's Mark

consisting of a stylized “MY Π” and My Pi's Mark consisting of a stylized “my pi” plus design elements.
28.

MPI obtained its Federal Registration for the MPI Mark based in part upon MPI's

assertions that its goods and services are distinct from the restaurants “limited to a particular specialty,
such as assorted pies.” MPI is therefore judicially estopped from now asserting that My Pi's goods and
services, specifically those of a restaurant limited to the specialty of pizzas, is likely to be confused with
MPI's goods and services.

Complaint for Declaratory Judgment

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29.

MPI's goods and services are distinct from and not likely to be confused with those of My

Pi's. MPI is equitably and judicially estopped from arguing otherwise.
30.

The Patent and Trademark Office has determined that no existing registrations, of which

MPI's Mark is one, are likely to be confused with My Pi's Mark.
31.

For all of these reasons, confusion is not likely between MPI's Mark and My Pi's Mark.

32.

MPI has knowingly asserted claims against My Pi that directly contradict the

representations MPI made to the Trademark Office in order to obtain its Federal Registration. As a result,
this case is exceptional for purposes of Plaintiff's recovery of attorneys fees and costs pursuant to 15
U.S.C. §1117.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for relief as follows:
33.

That this Court adjudge, decree and declare that Plaintiffs’ use of the My Pi Mark applied

for in Trademark Application Serial No. 86/054,548 does not infringe any valid trademark owned by
MPI;
34.

That this Court declare that this is an exceptional case and enter judgment in favor of

Plaintiff for its costs and reasonable attorneys' fees to the extent permitted by law pursuant to 15 U.S.C.
§1117;
35.

That Plaintiff be awarded such further relief as this Court may deem proper and just.
JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38, My Pi, LLC hereby demands a Trial by Jury.
Respectfully Submitted,
s/Allen F. Bennett
Allen F. Bennett
FL Bar No. 88,183
email: Allen@afbip.com
Complaint for Declaratory Judgment

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Bennett Intellectual Property
524 Orton Avenue, Ste 201
Fort Lauderdale, FL 33304
Ph: 561-860-0654
ATTORNEY FOR PLAINTIFF

Complaint for Declaratory Judgment

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CERTIFICATE OF SERVICE
I hereby certify that on January 12, 2014, I electronically filed the foregoing with the Clerk of the
Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel
of record or pro se parties identified on the attached Service List in the manner specified, either via
transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner
for those counsel or parties who are not authorized to receive electronically Notices of Electronic Filing.
/s/Allen F. Bennett
Allen F. Bennett
FL Bar No. 88,183
email: Allen@afbip.com
Bennett Intellectual Property
524 Orton Avenue, Ste 201
Fort Lauderdale, FL 33304
Ph: 561-860-0654

Attorneys for Defendant
Benjamine Reid
Florida Bar Number 183522
Email: breid@cfjblaw.com
Joshua Roberts
Florida Bar Number 84613
Email; jroberts@cfjblaw.com
CARLTON FIELDS JORDEN BURT, P.A.
100 S.E. 2°d Street, Suite 4200
Miami, FL 33131
Charles Laff
Admitted Pro Hac Vice
calaff@michaelbest.com
Paul R. Coble
Admitted Pro Hac Vice
pcoble@michaelbest.com
MICHAEL BEST & FRIEDRICH LLP
Two Prudential Plaza
180 North Stetson Avenue, Suite 2000
Chicago, IL 60601 CERTIFICATE OF SERVICE
I hereby certify that on December 29, 2014, I electronically filed the foregoing with the Clerk of
Complaint for Declaratory Judgment

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the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel
of record or pro se parties identified on the attached Service List in the manner specified, either via
transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner
for those counsel or parties who are not authorized to receive electronically Notices of Electronic Filing.
/s/Allen F. Bennett
Allen F. Bennett
FL Bar No. 88,183
email: Allen@afbip.com
Bennett Intellectual Property
524 Orton Avenue, Ste 201
Fort Lauderdale, FL 33304
Ph: 561-860-0654

Attorneys for Defendant
Benjamine Reid
Florida Bar Number 183522
Email: breid@cfjblaw.com
Joshua Roberts
Florida Bar Number 84613
Email; jroberts@cfjblaw.com
CARLTON FIELDS JORDEN BURT, P.A.
100 S.E. 2°d Street, Suite 4200
Miami, FL 33131
Charles Laff
Admitted Pro Hac Vice
calaff@michaelbest.com
Paul R. Coble
Admitted Pro Hac Vice
pcoble@michaelbest.com
MICHAEL BEST & FRIEDRICH LLP
Two Prudential Plaza
180 North Stetson Avenue, Suite 2000
Chicago, IL 60601

Complaint for Declaratory Judgment

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