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Geisha, LLC v. Tuccillo

September 4, 2007

GEISHA, LLC, D/B/A JAPONAIS, PLAINTIFF,
v.
ROY TUCCILLO, AN INDIVIDUAL, DEFENDANT.



The opinion of the court was delivered by: Judge Rebecca R. Pallmeyer

MEMORANDUM OPINION AND ORDER

Plaintiff Geisha LLC ("Geisha") owns and operates the restaurant "Japonais" in Chicago, Illinois. Geisha has utilized a stylized rendering of the name "Japonais" in connection with the restaurant since its opening in September 2003, and asserts that it has thus acquired trademark rights in that design. In June 2004, Defendant Roy Tuccillo ("Tuccillo"), a New York resident who runs a frozen seafood company, filed a federal trademark application for a virtually identical design. Tucillo has further expressed his intent to use the mark in connection with a restaurant he plans to open in the New York area. Upon learning of Tuccillo's application in September 2005, Geisha filed a ten-count complaint, alleging trademark infringement under 15 U.S.C. § 1125(a) and asserting common law claims including conversion and unfair competition. Count II of the complaint seeks a declaratory judgment that Tuccillo's intended use of the mark would constitute trademark infringement. Geisha now moves for summary judgment on that count only. For the reasons set forth below, Geisha's motion is denied for lack of jurisdiction.

BACKGROUND*fn1

A. Geisha and Japonais

Geisha, a Delaware limited liability company, was formed in December 2001 for the purpose of opening a Chicago restaurant and lounge under the name "Japonais."*fn2 (Pl.'s 56.1 ¶¶ 1, 9.) The restaurant, which opened in September 2003 in Chicago's River North neighborhood, offers a fusion of modern Japanese and European cuisine. (Id. ¶¶ 9, 11.) Geisha does business as "Japonais" and has registered that name with the State of Illinois, and further owns all intellectual property associated with the Japonais restaurant. (Id. ¶ 1.)

In early 2003, Geisha hired an advertising and marketing firm, Vertis, Inc. ("Vertis"), to create a unique design for Japonais. (Id. ¶ 10.) Vertis subsequently created a design using unique lettering and font ("the Japonais design").*fn3 (Id.) Geisha did not file a trademark registration application for this design with the U.S. Patent and Trademark Office ("PTO"). From the time Japonais opened its doors to the public on September 23, 2003, however, the restaurant has displayed the Japonais design above its entrance and on its website, www.japonaischicago.com. (Id. ¶¶ 11-13.) Geisha further points to advertisements for the restaurant that appeared in September and November 2003 in two magazines, Front Desk and Chicago Social, which have monthly circulations of roughly 50,000 and 75,000 respectively. (Id. ¶ 14.) These advertisements prominently feature the Japonais design. (Ex. 4 to Pl.'s 56.1, at Exs. A, B, & E.)

Since its opening, Japonais has received a good deal of favorable press coverage in local and national newspapers and magazines. (Pl.'s 56.1 ¶ 11.) The Chicago Tribune and the Chicago Sun-Times reviewed the restaurant in October 2003, and lengthy articles about Japonais appeared in December 2003 in CS magazine, which has a monthly circulation of roughly 75,000, and Nation's Restaurant News, which has a monthly circulation of roughly 80,000. (Ex. 4 to Pl.'s 56.1, at Exs. C, D, G, & H.) Japonais also received brief mention in the January 2004 issue of Bon Appetit, which has a monthly circulation of roughly 1,300,000. (Id. at Ex. I.) In May 2004, Chicago magazine (monthly circulation approximately 185,000) named Japonais one of Chicago's "Best New Restaurants," and Conde Nast Traveler magazine (national monthly circulation of approximately 775,000) featured Japonais in a "Hot Tables" survey of 66 new restaurants worldwide. (Id. at Exs. J & K.) The June 14, 2004 issue of Time mentioned a dessert available at Japonais, and an extensive article about Japonais appeared in the June 2005 issue of Culinary Trends magazine. (Id. at Exs. O & R.) Brief mentions also appeared in 2005 in well-known magazines such as Travel & Leisure, Us Weekly, People, and Food & Wine, (id. at Exs. S, U, V, & Y), and a September 25, 2005 article in the New York Times referred to Japonais as an example of one of Chicago's "excellent fusion joints." (Id. at Ex. Z.) Significantly, however, the Japonais design appears in only one of the articles Geisha cites: a feature on the actress Jennifer Aniston, published in the August 29, 2005 issue of People, that displays a picture of the restaurant's entrance accompanied by a caption explaining that Ms. Aniston had been spotted there. (Id. at Ex. X.) People has a weekly circulation of roughly 3,600,000. (Wahlstedt Aff. ¶ 6, Ex. 4 to Pl's 56.1.)

Following the success of the Chicago restaurant, Geisha made plans to open Japonais restaurants in New York and Las Vegas. (Pl.'s 56.1 ¶¶ 16-17.) Geisha executed a lease in March 2005 for property in New York's Flatiron District, and the New York Japonais restaurant opened on July 19, 2006. (Id. ¶ 16.) The Japonais design is prominently displayed throughout the restaurant, including on the menus and on the entrance awning, and on the restaurant's website, www.japonaisnewyork.com.*fn4 (Id.) The New York Japonais has received significant publicity in newspapers and magazines, including the New York Times, the New York Post, and New York magazine. (Id.; Ex. A to Wahlstedt Second Supp. Aff.) As of the time the parties completed their summary judgment filings, a Las Vegas Japonais was under construction at the Mirage Hotel and Casino, and was scheduled to open on September 1, 2006.*fn5 (Pl.'s 56.1 ¶ 17.)

B. Tuccillo's Registration of the Japonais Design

Defendant Tuccillo resides in New York state and operates Anchor Frozen Foods, a supplier of frozen seafood products. (Pl.'s 56.1 ¶ 2.) On June 25, 2004-nine months after the opening of the Chicago Japonais, and nine months before Geisha obtained a lease for its New York restaurant-Tuccillo filed an intent-to-use trademark registration application with the PTO*fn6 (the "ITU Application") for a stylized rendering of the word "Japonais." (Id. ¶ 18; Application for Service Mark Registration, Serial No. 76599761, Ex. 1 to Pl.'s 56.1.) It is undisputed that this mark is "virtually identical" to the Japonais design. (Def.'s 56.1 ¶ 19.) The ITU Application states that Tuccillo has "a bona fide intention to use the mark" in connection with "restaurant and lounge services." (ITU Application, at 1.) The PTO issued a Notice of Allowance to Tuccillo on August 23, 2005. TARR Status for Serial No. 76599761, http://www.uspto.gov/main/trademarks.htm (search performed).

Tuccillo's motivation for filing the ITU Application is unclear. The court notes that in an answer to one of Geisha's interrogatories, Tuccillo stated that he had used the name "Japonais" in connection with his seafood business since early 2000, including using the name as a sign in the window of his "store,"*fn7 and that in late 2000 he hired a company to hang a sign in the store that included a stylized rendering of the word. (Answer to Interrogatory No. 2, Ex. 2 to Pl.'s 56.1.) He further stated that he "decided" to open a Japanese restaurant named "Japonais" in 2002, and that in June 2002 he had purchased an existing Chinese restaurant in Baldwin, New York,*fn8 with the intent of converting it; instead, however, he decided in the summer of 2003 to lease that space to a Dunkin' Donuts and a Quizno's. (Id.; Tuccillo Dep., Ex. 3 to Pl.'s 56.1, at 63.) He then began to look for another location for his planned Japonais restaurant, (Answer to Interrogatory No. 2); his efforts in that regard are described below. According to Tuccillo, he filed the ITU Application in June 2004 "to protect the name and design." (Id.)

Geisha asserts that it was unaware of Tuccillo's ITU Application until September 2005-after the PTO issued its Notice of Allowance to Tuccillo, and after the time period to oppose the application had expired. (Long Aff. ¶ 2, Ex. 5 to Pl.'s 56.1.) On September 9, 2005, Geisha's attorney, Joan Long, sent a letter to Tuccillo's trademark attorney, Stewart Bellus, asserting that Geisha had established trademark rights to the Japonais design through actual use of that design; Long enclosed clippings of press coverage of the Chicago Japonais restaurant with the letter, which Long asserted demonstrated that the restaurant had received "nationwide publicity." (Letter from Long to Bellus of September 9, 2005, Pl.'s Ex. 5, at Ex. A.) Long asked, inter alia, that Tuccillo file a "voluntary abandonment" of his application with the PTO. (Id.) Bellus responded on September 14, 2005, denying that Long's enclosures demonstrated Geisha's first use of the Japonais design at all, nor any reputation outside of Chicago. (Letter from Bellus to Long of September 14, 2005, Pl.'s Ex. 5, at Ex. B.) Bellus further stated that because the PTO had "approved" Tuccillo's application, "a registration ultimately will issue and my client will have nationwide rights in all areas of the United States other than those in which [Geisha] can establish rights that predate [Tuccillo's] filing date." (Id. (emphasis in original); Pl.'s 56.1 ¶ 21.) Geisha responded by filing the present action on September 26, 2005.

C. Tuccillo's Plans for Use of the Japonais Design

Tuccillo has not yet opened a restaurant using the name "Japonais"; indeed, it is undisputed that Tuccillo has never used the name "Japonais" or the Japonais design in connection with the provision of restaurant and lounge services. (Pl.'s 56.1 ¶ 21; Def.'s 56.1 ¶ 26.) It is further undisputed, however, that Tuccillo "has a firm intent" to do so. (Pl.'s 56.1 ¶ 24; Def.'s 56.1 ¶ 24.) Yet the extent of Tuccillo's preparations is in some dispute. In his deposition, Tuccillo testified that he has "played around with the menu" for his planned restaurant and lounge, and that he intends to offer traditional Japanese food as well as "infused-style dishes." (Tuccillo Dep., at 62.) He further identified an exhibit depicting a "design layout" that he had created in 2002 for the space he had purchased in Baldwin, but had leased for other use in 2003. (Id. at 64.) Since leasing that property, he has been "aggressively pursuing" and "very aggressively looking" for other suitable properties, and testified that he is "in the process of finding a location." (Id. at 69.) He confirmed that the purpose of this search was to "open up a restaurant/lounge under the name Japonais." (Id. at 70.) He explained that he has been looking in areas in and around New York City including Manhattan and Long Island. (Id. at 69.) He testified that he is not using a real estate agent, but has "viewed plenty of properties" and has in fact found "suitable locations." (Id. at 70.) When pressed for details, Tuccillo stated, "[s]pecific locations I can't give you," but ultimately testified that he was "continually looking in Manhattan," particularly in the meatpacking district in Manhattan's lower west side.*fn9 (Id. at 69, 71.) When asked directly if he had found a property, however, Tuccillo answered, "Well, we have some properties in mind." (Id. at 82.) Tuccillo has not explained his use of the word "we."

Relying on these portions of Tuccillo's deposition testimony, Geisha asserts that Tuccillo has "made substantial and meaningful preparations" to use the Japonais name and design in connection with "a Japanese-French style restaurant and lounge in or around New York City." (Pl.'s 56.1 ΒΆ 24.) Tuccillo cites to precisely the same material in ...


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