The opinion of the court was delivered by: Judge Rebecca R. Pallmeyer
MEMORANDUM OPINION AND ORDER
Plaintiff Geisha LLC ("Geisha") operates the restaurant "Japonais" in Chicago, which opened to critical acclaim in 2003. Geisha did not at that time seek to register the stylized version of its restaurant name that is now at the center of this lawsuit. The following year, Defendant Roy Tuccillo did file an application with the United States Patent and Trademark Office ("USPTO"), stating his intent to use a mark, essentially identical to the one used by Plaintiff, when starting his own restaurant and lounge in New York. Plaintiff did not learn of this application until the period to formally oppose it had expired in 2005, but Plaintiff nevertheless went forward with expanding its own restaurant operations by adding a location on the Las Vegas strip and another in Manhattan in 2006. In September 2005, Plaintiff brought this suit against Tuccillo, claiming that Tuccillo has violated its rights in the disputed mark. In 2008, Tuccillo opened a restaurant that employed the mark in question, prompting Plaintiff to seek summary judgment on its claim for false designation of origin under 15 U.S.C. § 1125(a). For the following reasons, Plaintiff's motion is denied.
In December 2001, Geisha LLC was formed to design and operate a "modern European/Japanese fusion restaurant and lounge" in Chicago, Illinois. (Pl.'s 56.1 ¶ 9.) Geisha selected the name "Japonais" (French for "Japanese") as the name for its restaurant.*fn1 (Id.) In early 2003, Geisha adopted a design for its name that presented "JAPONAIS" in all capital letters, with inverted V's substituted for the A's.*fn2 (Id. ¶ 10.) On September 23, 2003, Geisha opened its restaurant in downtown Chicago, using the stylized JAPONAIS mark throughout the restaurant. (Id. ¶ 11.) After the opening, Japonais received extensive press coverage both locally and nationally, including an article in Bon Appetit magazine in January 2004; an article naming Japonais one of the "66 Best New Restaurants in the World" in the May 2004 issue of Conde Nast Traveler; and an article in Time magazine about one of the restaurant's desserts on June 14, 2004. (Id. ¶¶ 15-16.)
Roy Tuccillo operates Anchor Frozen Foods, a frozen seafood supplier in New York. (Id. ¶ 3.) Nine months after Japonais opened its doors in Chicago, and less than two weeks after the article in Time magazine, Tuccillo filed a trademark application with the USPTO on June 25, 2004. (Id. ¶ 19.) Tuccillo's application was an "intent-to-use" ("ITU") application because he had not yet actually used the mark in commerce. Federal trademark law allows an individual to file such an application if he "has a bona fide intention, under circumstances showing the good faith of such person, to use [the] trademark in commerce." 15 U.S.C. § 1051(b). If no party successfully opposes an ITU application in a USPTO proceeding, the applicant will be issued a "notice of allowance." Id. § 1063(b)(2). Before the mark will actually register, however, the individual filing an ITU application must make actual use of the mark in commerce. Id. § 1051(c). Generally, the applicant has six months after receiving the notice of allowance to use the mark in commerce and file a "statement of use" with the USPTO, although the applicant may receive an extension of time for various reasons. Id. § 1051(d); 37 C.F.R. § 2.89. After the mark registers, the registrant will be treated as though he began using the mark on the date he filed the ITU application (the "constructive use" date"); if the registrant had not filed an ITU application and simply registered the trademark after using it in commerce, the registrant would only have nationwide rights to enforce the mark against others as of the date of registration (the "constructive notice" date). 15 U.S.C. §§ 1057(c), 1072.
In his ITU application, Tuccillo claimed a bona fide intent to use the JAPONAIS mark in connection with restaurant and lounge services, swearing that, to the best of his knowledge, "no other person, firm, corporation, or association has the right to use said mark in commerce . . . when applied to [restaurant and lounge] services." (Pl.'s 56.1 ¶ 19.) Of all the references to Japonais that had been made in the media to that point, it appears that only three publications included a depiction of the JAPONAIS mark, and all three of these were advertisements in the Chicago market. (Def.'s 56.1 ¶ 33.) Tuccillo claims that he had been using the JAPONAIS mark-written in the same style, with inverted V's in place of the A's-on the window of a retail store since 2000 in connection with his sale of infused calamari.*fn3 (Tuccillo Dep. 39:19-24, Ex. C to Def.'s 56.1.)
Geisha did not learn of Tuccillo's application until September 2005, after the time period in which Geisha would have been able to oppose the application before the USPTO. (Pl.'s 56.1 ¶ 19.) Upon discovering Tuccillo's application, Geisha immediately notified Tuccillo's attorney of Geisha's interest in the JAPONAIS mark and provided over fifty pages of evidence documenting Geisha's prior use. (Id. ¶ 20.) Tuccillo replied that he intended to pursue his plan to use the JAPONAIS name and mark with a future restaurant and lounge. He received his notice of allowance from the USPTO on August 23, 2005. (Id.; Resp. to Interrogatories ¶ 2, Ex. B to Def.'s 56.1.) Geisha then filed this action on September 26, 2005. (Pl.'s 56.1 ¶ 20.) The following year, Geisha opened two new Japonais restaurants, one in the Flatiron district in New York City, the other in the MGM Mirage Hotel and Casino in Las Vegas.*fn4 (Id. ¶¶ 17-18.) Both new restaurants use the stylized JAPONAIS mark throughout. (Id.)
In its ten-count complaint against Tuccillo, Geisha alleges, as Count I, false designation of origin under 15 U.S.C. § 1125(a). (Compl. ¶¶ 37-46.) Tuccillo initially contended that there was no infringement because he had not actually used the JAPONAIS mark in the restaurant business, as his application only confirmed his intent to use it. (Pl.'s 56.1 ¶ 21.) In 2007, this court denied Geisha's motion for a declaratory judgment that Geisha possessed superior rights in the mark and that Tuccillo's intended use of the mark would constitute infringement. Geisha, LLC, 525 F. Supp. at 1009. The court observed that Tuccillo had not yet employed the mark and was not immediately threatening to do so. Id. at 1013-14. Tuccillo himself then sought summary judgment on Geisha's trademark claim, arguing that he could not have infringed any rights in the mark because he had not used the mark in commerce. On May 2, 2008, however, while that motion was pending, Tuccillo filed a verified "statement of use" with the USPTO, swearing that he was using the mark in commerce in connection with restaurant and lounge services.*fn5 (Pl.'s 56.1 ¶ 22.) In this application, Tuccillo included a menu showing the JAPONAIS mark as well as a photo of the mark etched onto a window, presumably of his own restaurant. (Id.) Following this application, Tuccillo withdrew his summary judgment motion, and Plaintiff moved for summary judgment on Count I, claiming that Tuccillo's conduct in registering and using the mark constituted false designation of origin.
Summary judgment is appropriate if "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). In order to avoid summary judgment, Tuccillo "bears the burden of setting forth specific facts showing that there is a genuine issue for trial." Warren v. Solo Cup Co., 516 F.3d 627, 629 (7th Cir. 2008) (quoting Vanasco v. Nat'l-Louis Univ., 137 F.3d 962, 965 (7th Cir. 1998)) (internal quotation marks omitted). The facts are construed in favor of Tuccillo as the non-moving party, and he is given the benefit of all reasonable inferences. Nagle v. Vill. of Calumet Park, 554 F.3d 1106, 1114 (7th Cir. 2009).
The first claimed use of the JAPONAIS mark was by Tuccillo in 2000, when he claims to have put it on the window of a retail store where his Anchor Frozen Foods products were sold. To support this claim, Tuccillo offers his own deposition testimony and an undated photo showing the mark on an unidentified window. (Tuccillo Dep. 58:14-16, Ex. C to Def.'s 56.1; Ex. D to id.) Though not overwhelming, this evidence at least creates a genuine issue as to whether, as of 2000, Tuccillo possessed some rights to use the stylized JAPONAIS mark in connection with the retail sale of seafood. The next use of the mark occurred in September 2003 in Chicago, when Geisha opened the Japonais restaurant. There is no dispute that Geisha retains the right to use the JAPONAIS mark for restaurant and lounge services in Chicago based on its 2003 use, which predates Tuccillo's filing of his ITU application. See 15 U.S.C. § 1065 (registration of a trademark does not affect the common law rights acquired by one who "use[d] a mark or trade name . . . prior to the date of registration"). It is similarly undisputed that Geisha did not attempt to register the JAPONAIS name or mark with the USPTO. Geisha nevertheless maintains that Tuccillo infringed Geisha's rights in the JAPONAIS mark when Tuccillo opened his restaurant in 2008.
As noted, Geisha refers to its claim as one of trademark infringement, but the action is actually brought under 15 U.S.C. § 1125(a), which prohibits individuals from using in commerce "any false designation of origin, false or misleading description of fact, or false or misleading representation of fact;" the statute does not explicitly state that the plaintiff must possess a protectable mark. Id. Nevertheless, "it is clear that 'the defendants' use of a protected mark or their use of a misleading representation is a prerequisite to the finding of a [§ 1125] violation.'" U-Haul Int'l, Inc. v. Kresch, 943 F. Supp. 802 (E.D. Mich. 1996) (quoting Holiday Inns, Inc. v. 800 Reservation, Inc. 86 F.3d 619, 626 (6th Cir. 1996)); see also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 17:13 (4th ed. 2008) (hereinafter "McCarthy"). Geisha therefore must still establish that it possesses rights in the JAPONAIS mark that Tuccillo has infringed.
I. Geisha's Rights Prior to June 25, 2004
The court first considers whether Geisha already possessed rights in the JAPONAIS mark on June 25, 2004, the date on which Tuccillo filed his application. Geisha did not itself register the trademark, so Geisha is not entitled to the presumption of constructive notice provided by registration and must identify some other grounds for claiming that its rights extended beyond Chicago. See 15 U.S.C. § 1072. Here, as noted above, Geisha clearly had established rights in the JAPONAIS mark in Chicago, where the mark was used exclusively in conjunction with its restaurant; those rights did not, however, necessarily extend to markets that Geisha had not yet entered as of June 2004. See Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). The general rule is that a junior user who is unaware of the senior user's use may adopt a mark in a geographically distinct area, provided that the mark has not been registered. See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 200 (1985); see also Hanover ...