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La Zaza Trattoria, Inc v. Massimilliano Lo Bue

August 10, 2012

LA ZAZA TRATTORIA, INC., PLAINTIFF,
v.
MASSIMILLIANO LO BUE, INDIVIDUALLY AND D/B/A ZA ZA'S TAVOLA ITALIANA, DARYL VOSKA, INDIVIDUALLY AND D/B/A ZA ZA'S TAVOLA ITALIANA AND ZA ZA ENTERPRISES, INC. DEFENDANT.



The opinion of the court was delivered by: Judge Virginia M. Kendall

MEMORANDUM OPINION AND ORDER

Plaintiff La ZaZa Trattoria, Inc., filed suit against Massimilliano Lo Bue, individually and doing business as Za Za's Tavola Italiana, and Daryl Voska, individually and doing business as Za Za's Tavola Italiana, and Za Za Enterprises, Inc. (collectively "the Defendants"). Plaintiff alleges the Defendants committed false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a); common law unfair competition; and deceptive trade practices in violation of the Uniform Deceptive Trade Practices Act of the State of Illinois, 815 ILCS 510. The Defendants moved to dismiss all three counts pursuant to Fed. R. Civ. P. 12(b)(6), or in the alternative for summary judgment. The Defendants also seek sanctions against Plaintiff under Rule 11. For the following reasons, the Court grants in part and denies in part the Defendants' Motion to Dismiss and denies without prejudice the Defendants' Motion for Summary Judgment. The Defendants' Motion for Sanctions is denied without prejudice.

I. BACKGROUND

For the purposes of this Motion to Dismiss, the following facts taken from Plaintiff's Complaint are assumed to be true. See Killingsworth v. HSBC Bank, 507 F.3d 614, 618 (7th Cir. 2007) (citing Savory v. Lyons, 469 F.3d 667, 670 (7th Cir. 2006)). Plaintiff La ZaZa Trattoria is an Illinois corporation using the service mark "ZaZa" in connection with restaurant services. (Doc. 1, Complaint at ¶¶ 1, 5). Plaintiff has used and developed this service mark since 1995. Id. at ¶ 6. Additionally, Plaintiff has invested significant money to establish a positive connection between the service mark and restaurant in the minds of consumers. Id. at¶ 6.

The Defendants' restaurant, Za Za's Tavola Italiana, opened years after the Plaintiff's restaurant and competes directly with the Plaintiff's restaurant, La ZaZa Trattoria. Id. The Plaintiff alleges that the Defendants' use of the term "Za Za" in connection with their restaurant capitalizes on the good name and reputation of the Plaintiff and unfairly misleads the public into the mistaken belief that there is an association between the Plaintiff and the Defendants. Id. at ¶ 12.

The Plaintiff's Complaint alleges false designation of origin, a violation of the Lanham Act, 15 U.S.C. § 1125(a), for misleading prospective customers/purchasers as to the origin, sponsorship or approval of the Defendants' services by the Plaintiff and causing customers/purchasers to rely thereon, (Count I). Id. at ¶ 15. The Plaintiff also alleges common law unfair competition as to the use of the similar service mark enabling the Defendants to obtain the benefit of and trade on the goodwill of the Plaintiff, damaging the goodwill of the Plaintiff, and likely causing confusion, mistake or deception resulting in unjust enrichment for the Defendants, (Count II). Id. at ¶ 20. Plaintiff also alleges deceptive trade practices, in violation of the Uniform Deceptive Trade Practices Act of the State of Illinois, 815 ILCS 510, for the Defendants' use and threatened future use of the service mark, "Za Za," in connection with restaurants unaffiliated with the Plaintiff, (Count III). Id. at ¶ 24. The Plaintiff seeks a permanent injunction barring the Defendants from using the service mark "Za Za" as well as attorneys' fees, profits derived from use of the service mark, damages suffered as a result of the Defendants' actions and punitive damages.

II. STANDARD

For purposes of a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the Court must accept as true all facts alleged in a complaint and construe all reasonable inferences in favor of a plaintiff. See Killingsworth, 507 F.3d at 618. To state a claim upon which relief can be granted, a complaint must contain a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). To survive a motion to dismiss, a complaint must be "plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. v. Twombly, 550 U.S. 554, 570 (2007)). When analyzing whether a complaint has met this standard, the "reviewing court [must] draw on its judicial experience and common sense." Ashcroft, 556 U.S. 662 at 679. A claim has facial plausibility when the factual content in the pleadings allows the court to draw a reasonable inference that the defendant is liable for the misconduct alleged. See Id. at 677-8.

III. DISCUSSION

The Defendants move to dismiss the Plaintiff's Complaint for failure to state a claim and also argue that the equitable doctrine of laches bars the suit. Additionally, the Defendants stated that Plaintiff's corporation La ZaZa Trattoria was "not in good standing" with the State of Illinois at the time of filing this lawsuit, and in the Defendants' Reply argued for the first time that since the suit was commenced, Plaintiff was administratively dissolved April 13, 2012, and therefore lacks standing to pursue it.

A. Notice Pleading

In order to succeed on its Lanham Act claim, Plaintiff must establish that: (1) Plaintiff owns a protectible trademark, and (2) use of this mark by the Defendants is likely to cause confusion among consumers. See Segal v. Geisha NYC LLC, 517 F.3d 501, 506 (7th Cir.2008) (citing 15 U.S.C. § 1125). The Plaintiff pleads that it has been using the service mark "ZaZa" in connection with the operation of restaurant services continuously since 1995. This assertion is sufficient at the motion to dismiss stage to satisfy the protectible trademark prong of the claim. See, e.g., Morningware, Inc. v. Hearthware Home Products, Inc. , 673 F. Supp. 2d 630, 634 (N.D. Ill. 2009) (seven years is sufficient to establish a protectible interest at the motion to dismiss stage); Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 762-6 (N.D. Ill.2008) (plaintiff's allegations that plaintiff owns the "Vulcan Gulf" trademark and the "Vulcan Golf" tradename and that vulcanogolf.com violates plaintiff's trademark sufficient to establish a protectible interest to survive motion to dismiss). To satisfy the use in commerce and consumer confusion prongs, the offending mark must be "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." 15 U.S.C. § 1125(a)(1)(A). The distinct similarities between the Plaintiff's La ZaZa Trattoria and the Defendants' Za Za Tavola Italiana and the alleged confusion, mistake and injury, as stated in the Complaint, is sufficiently pled to state a plausible claim under the Lanham Act.

Plaintiff's second and third claims are common law unfair competition and unfair trade practices pursuant to the Uniform Deceptive Trade Practices Act of the State of Illinois ("UDTPA"), 815 ILCS 510. "Where a plaintiff's factual allegations under the Illinois Uniform Deceptive Trade Practices Act also form the basis for plaintiff's claim under the Lanham Act, the legal inquiry is the same under both statutes. Claims for unfair competition and deceptive business practices brought under Illinois statutes are to be resolved according to the principles set forth under the Lanham Act." See Morningware, Inc., 673 F. Supp. 2d at 639 (citing SB Designs v. Reebok Int'l, Ltd., 338 F. Supp. 2d 904, 914 (N.D. Ill.2004)). Additionally, UDTPA codifies common law unfair competition and does not need to be analyzed separately. See Morningware, Inc., ...


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