Name Infringement Patent Violation v. Seasalt & Pepper

6702718

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

FORT MYERS DIVISION

NANE JAN, LLC, a Florida Corporation,

Plaintiff and Counter-Defendant,

vs. Case No. 2:14-cv-208-FtM-29CM

SEASALT AND PEPPER, LLC,

Defendant and Counter-Plaintiff.

___________________________________/

MOTION FOR PRELIMINARY INJUNCTION

AND SUPPORTING MEMORANDUM OF LAW

Plaintiff, Nane Jan, LLC (Plaintiff or Nane Jan), by and through undersigned counsel

and pursuant to Federal Rule of Civil Procedure 65, respectfully moves for entry of a preliminary

injunction enjoining defendant Seasalt and Pepper, LLC (Defendant or Seasalt and Pepper)

from further use of Nane Jans SEA SALT trademark. In support, Nane Jan submits the

following Memorandum of Law and the attached declarations of Ingrid Aielli, Nathan Webb,

Jason Goddard, and Tanya Buchanan.

I. INTRODUCTION

Nane Jan owns a restaurant and bar in Naples, Florida, that does business under the

service mark1 SEA SALT. Nane Jan owns both state and federal trademark registrations

ensuring its exclusive right to use the SEA SALT trademark in association with its restaurant

and bar services. Without Nane Jans permission, Defendant recently opened a restaurant and bar

in Miami, Florida, under the trade name Seasalt and Pepper, and attempted to obtain federal

1 For the sake of simplicity, and consistent with common usage, the phrases service mark and

trademark are used interchangeably herein.

Case 2:14-cv-00208-JES-CM Document 24 Filed 08/04/14 Page 1 of 21 PageID 140

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trademark registrations on its business name. Defendants SEASALT AND PEPPER

trademark applications were rejected by the United States Patent and Trademark Office

(USPTO or Trademark Office) because the trademark Examiner concluded that there was a

likelihood of consumer confusion with Plaintiffs registered SEA SALT trademark. The

Examiners finding of likelihood of confusion has since been bolstered by growing evidence of

actual consumer and supplier confusion.

Additionally, the goodwill and excellent reputation that the public has come to associate

with Nane Jans SEA SALT trademark has been damaged by a rash of negative publicity

associated with Defendant, including: 1) poor food and service reviews; 2) Defendants failure to

obtain proper business licenses and permits and pass city inspections; 3) litigation amongst the

owners of Defendants business relating to a management coup; 4) shady advertising tactics

such as issuing fake celebrity sightings to stir up publicity; 5) a warning from the Florida

Environmental Protection Agency after an investigation into the restaurants yacht mooring

system deemed it a navigation hazard; and 6) wrongful termination lawsuits against Defendant

brought by former employees.

There is little doubt that Nane Jan will succeed on the merits of its trademark

infringement claim. The Trademark Offices objective conclusion that Defendants SEASALT

AND PEPPER trademark creates a likelihood of confusion with Plaintiffs SEA SALT

trademark is entitled to substantial weight under the law. Furthermore, it is well-settled that the

existence of a likelihood of confusion constitutes irreparable harm, as a matter of law, sufficient

to satisfy the requirements of Rule 65 of the Federal Rules of Civil Procedure. Because

consumers and suppliers are likely to assume, and have assumed, that Defendants business is

affiliated with Plaintiffs business, all of the confusion as to the source of Defendants services,


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and all of the negative publicity surrounding Defendants restaurant, are irreparably harming

Nane Jans reputation and goodwill in the SEA SALT mark in a manner that can only be

mitigated by way of this Courts entry of a preliminary injunction.

II. FACTS

A. Plaintiffs SEA SALT Trademark

Nane Jan owns and operates Sea Salt, a contemporary seafood cuisine restaurant

located at 1186 Third Street South, Naples, Florida, that opened in November 2008 to both

critical and public acclaim. Declaration of Ingrid Aielli 2 (Aielli Declaration, attached hereto

as Exhibit 1)2; Complaint 6 (attached, with exhibits, to the Aielli Declaration).

3 Nane Jans Sea

Salt restaurant has received a number of accolades since opening including, but not limited to,

Wine Spectators Award of Excellence from 2009-2013, Grub Street New Yorks 101 of

Americas Most Delicious Noodle Dishes in 2011, Gulfshore Life Magazines Best VIP Dining

Service in 2011, and Gulfshore Life Magazines Best Overall Restaurant in 2010. Comp.

10. Additionally, Nane Jan has made continuous use of the SEA SALT mark since November

15, 2008, and has expended substantial sums of money and time in the development, advertising,

and promotion of the SEA SALT mark. Id. 15. As a result, the SEA SALT mark has achieved

substantial recognition and good will within the restaurant industry and has come to be

2 The Aielli Declaration: 1) states that Ms. Aielli has reviewed the Complaint (Doc. #1), and all of

the allegations and associated exhibits contained therein; 2) attests that such allegations are true, except as

to those matters alleged upon information and belief, in which case, she believes them to be true; 3)

attests that the Complaints Exhibits are true and correct copies of the various documents; and 4) incorporates by reference all factual allegations and associated exhibits contained in the Complaint (Doc.

#1) into her Declaration.

3 All facts and/or exhibits which have been verified as true, by way of the Aielli Declaration, are

hereinafter cited only with reference to the Complaint (Doc. #1) and any associated Exhibit, instead of

both the Aielli Declaration and the Complaint.


6702718 4

recognized and relied upon as originating exclusively with the Sea Salt restaurant and being of a

very high quality. Id.

To protect its valuable trademark rights, and associated goodwill, Nane Jan registered its

SEA SALT mark in Florida on December 30, 2008 (Trademark Registration No.

T08000001417). Compl. 12, and Ex. 1 and 2 thereto. Nane Jans SEA SALT trademark was

subsequently registered with the Trademark Office on March 12, 2013 for use in association with

bar and restaurant services (Trademark Registration No. 4,299,923).4 Id. 13, and Ex. 3

thereto. These trademark registrations remain valid and enforceable, and Nane Jan is the owner

of all right title and interest to the SEA SALT mark in association with restaurant and bar

services.

B. Defendants Willful Infringement of the SEA SALT Trademark

Over five years after Plaintiffs first use of the SEA SALT mark on December 7,

2013 Defendant opened a seafood restaurant and bar, located at 422 NW North River Drive,

Miami, FL 33128, under the name Seasalt and Pepper. Id. 18; Defendants Answer and

Counterclaim (Doc. #19) 18. Defendant uses the SEASALT AND PEPPER name in

association with its two concept business; Seasalt Brasserie is the name for the restaurant,

while Pepper is the name of the attached bar, lounge and members club. Defendant also uses

the SEA SALT mark in advertising its restaurant and bar services on its website,

www.seasaltandpepper.com. Compl. 19; Defendants Answer and Counterclaim 19.

Defendant is situated only 125 miles from Plaintiff, and is in the same media market. Nane Jan

soon discovered the opening of Defendants Seasalt and Pepper restaurant, and the fact that

Defendant had filed two federal trademark applications (one for a standard character mark, the

4 The phrase SEA SALT is hereinafter used to describe Plaintiffs federal, state and common

law trademarks.


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other for a stylized version) for SEASALT AND PEPPER in association with restaurant and

bar services. Compl. 16-17, and Ex. 4-5 thereto.

Nane Jan took swift action to prevent Defendant from fully committing to an infringing

business name. On December 16, 2013 only nine days after Seasalt and Pepper restaurant

opened Nane Jan sent Defendants trademark attorney, Jorge Espinoza, correspondence

demanding that Defendant terminate all use of the SEA SALT mark. Id. Compl. 20 and Ex. 6

thereto; Aielli Declaration 7. Specifically, Nane Jan put Defendant on notice of its state and

federal trademark registrations and advised that formal legal action would be pursued if

infringing use of the SEA SALT mark did not cease within 10 days. Compl. 20, and Ex. 6

thereto; Aielli Declaration 7. Mr. Espinoza and Nane Jans trademark attorney subsequently

engaged in settlement talks which resulted in the presentation of a formal offer of settlement.

Aielli Declaration 8. Unfortunately, the parties failed to reach a settlement; on January 30,

2014, Mr. Espinoza advised that Defendant was unwilling to accept all of Nane Jans generous

settlement terms; Nane Jan replied that without a formal settlement agreement on all settlement

issues it was likely that a formal trademark opposition proceeding before the USPTO would be

pursued against Defendants trademark applications. Id. 8-9.

After receiving no additional communications from Defendants trademark attorney,

Nane Jan monitored the scope and effects of Defendants infringing conduct. Id. 10 This

investigation revealed that two of Nane Jans best suppliers of restaurant and bar materials,

Freshpoint and Prime Line Distributors, Inc., were confused about the affiliation, or lack thereof,

between Plaintiffs Sea Salt restaurant in Naples and Defendants Seasalt and Pepper restaurant

in Miami. Declaration of Jason Goddard 8-9 (Goddard Declaration, attached hereto as

Exhibit 2). Written correspondence from Freshpoint and Prime Line Distributors, Inc. requested


6702718 6

that Nane Jan designate all future orders as Sea Salt Naples. Id., and Attachments A and B

thereto. Freshpoint stated that such specification was to ensure that our customer service team

will not confuse your account with another restaurant named Sea Salt that is in Miami.

Goddard Declaration, 2, and Ex. A. thereto. Even after Plaintiff began designating its food

orders as Sea Salt Naples Plaintiff has encountered supplier confusion, including supply orders

placed by Plaintiff Sea Salt being mistakenly delivered to Defendant Seasalt and Pepper in

Miami. Goddard Declaration 10.

Nane Jan also learned that the USPTO had foreshadowed the actual confusion occurring

in the marketplace: both of Defendants federal trademark applications were rejected on

February 28, 2014, after the trademark Examiner concluded there was a likelihood of

confusion with Nane Jans SEA SALT trademark registration number 4299923. Complaint,

23-24, and Ex. 7 and 8 thereto. Of particular note in the Examiners reasoning were the fact

that both marks contain the dominant terms SEA SALT and that [b]ecause the wording [SEA

SALT] is arbitrary for restaurant services, it is a strong source identifier. Id., at Ex. 7, p. 2 and

Ex. 8, p. 2. In conjunction with the fact that the services are identical, both being restaurant

services, Defendants applications for trademark registration were refused over Nane Jans pre-

existing SEA SALT registration. Id., at Ex. 7, p. 2 and Ex. 8, p. 2.

Remarkablyeven after Nane Jan put Defendant on notice of its federal SEA SALT

trademark registration, and even after the USPTO officially rejected Defendants trademark

applications, concluding there is a likelihood of confusion with Nane Jans SEA SALT mark

Defendant continues, to this date, unabated in its use of the SEA SALT mark to advertise its

restaurant and bar services. Defendants Answer to Complaint and Counterclaim 3 (Doc. #19).


6702718 7

C. The Present Litigation and Mounting Evidence of Irreparable Harm

On April 14, 2014, Nane Jan filed the present lawsuit, alleging infringement of its

federal, state and common law trademark rights. See generally Compl. Instead of immediately

serving the Complaint, however, Nane Jan reached out to Mr. Espinoza in yet another effort to

determine whether the dispute could be resolved. Declaration of Nathan Webb 3 (Webb

Declaration, attached hereto as Exhibit 3). In correspondence dated April 14, 2014, Nane Jan

offered to settle the pending litigation if Defendant would agree to, among other terms, an

orderly transition to a new business name; the deadline to respond to the settlement

correspondence was two weeks. Id. Mr. Espinoza waited eleven days before informing the

undersigned that he no longer represented Defendant. Id. 5. Nane Jan therefore amended the

April 14 correspondence and sent a new settlement correspondence directly to the owners of

Defendant Seasalt and Pepper on April 30, 2014; the deadline to respond to the settlement

correspondence was extended until May 14, 2014. Id. 6. The next day, the undersigned

received a telephone call from Chris Weisman, at attorney at the firm of Defendants current

counsel to discuss potential settlement terms. Id. 7. The undersigned was informed at that time

that Defendant would evaluate the offer and respond in due course. Id. The May 14, 2014

deadline included in Nane Jans settlement correspondence came and went without receiving a

reply from Defendants counsel. Id. 8.

Nane Jan was left with little choice but to serve the Complaint and proceed with the

lawsuit; verification of service of the Complaint was entered with the Court on May 30, 2014

See, Verification of Service (Doc. #4). On June 13, 2014, just days before Defendants Answer

to the Complaint was due, Himanshu Patel, another attorney at the firm of Defendants current

counsel, contacted the undersigned and request a two-week extension of time to file its


6702718 8

responsive pleading; Nane Jan agreed to the extension, and once again broached the subject of

settlement; Mr. Patel advised that he was only recently retained by Defendant, was unsure if he

would be lead counsel in the case, and was otherwise unfamiliar with the settlement terms

offered his client, but would take the matter under advisement and be in contact. Webb

Declaration 10-11. On July 1, 2014, without having first responded to Nane Jans continuing

invitation to discuss settlement, Defendant filed its Answer and Counterclaims (Doc. #19). Webb

Declaration 12.

Nane Jans continuing investigation into the impact of Defendants infringing activities

revealed yet further confusion and damage to Plaintiffs good will and reputation. The General

Manager at Nane Jans Sea Salt restaurant, who routinely interacts with customers about their

dining experience, has personally received approximately thirty (30) inquiries as to whether Sea

Salt has any affiliation with Seasalt and Pepper. Declaration of Tanya Buchanan 6

(Buchanan Declaration, attached hereto as Exhibit 4). Of those approximately thirty (30)

customer inquiries, approximately twenty (20) have concerned questions related to Nane Jans

involvement with negative press accounts associated with Defendants Seasalt and Pepper

restaurant; including, at least, questions about whether Nane Jan was involved in Defendants

numerous pending lawsuits. Id. 7 (and as further detailed below). Numerous customers of

Defendant Seasalt and Pepper have called Plaintiff Nane Jan to make inquiries about their

restaurant bills. Id. 8. Still other customer comments expressed surprise that Nane Jan had

opened another restaurant in Miami. Id. 13.

Additionally, negative press and publicity seemed to be associated with Defendants

every move. One article described how Seasalt and Pepper had been shut down by a City Fire

Marshallonly four days after its openingfor failure to secure a Certificate of Use, Business


6702718 9

Tax Receipt license and pass a routine fire inspection; shortly thereafter, the Florida

Environmental Protection Agency characterized Seasalt and Peppers yacht mooring system as a

navigation hazard in a formal letter of admonishment. Webb Declaration, at Attachment H, pp.

2-5. Other journalists wrote articles describing lawsuits involving Defendant Seasalt and Pepper

and/or its respective owners: 1) a lawsuit between owners of Seasalt and Pepper asserting a

management coup over control of the company (Id. at Attachment D); 2) lawsuits brought by

Seasalt and Pepper against its investors in reaction to a loan dispute that included threats to

foreclose the restaurants loan (Id. at Attachments A and B); 3) lawsuits by former Seasalt and

Pepper employees who alleged wrongful termination (Id. at Attachment F); and 4) lawsuits

involving Seasalt and Peppers owners failure to pay homeowners association fees. Id. at

Attachment I. Still other press accounts of Seasalt and Peppers activities read like a tabloid

page, with one article alleging first-hand knowledge that restaurant management has been known

to issue fake celebrity sightings in an attempt to stir up publicity. Id. at Attachment C. Perhaps

most damaging of all, however, were poor or lukewarm food reviews warning Go to Seasalt and

Pepper for the View, but Not the Food. Id. at Attachment E.

Presented with mounting evidence that Defendants use of Plaintiffs SEA SALT mark

was doing serious and irreparable damage to its reputation, and uncertain of the full extent of

consumer and supplier confusion, Plaintiff was left with no choice but to prepare and file the

present request for entry of a preliminary injunction.

III. ARGUMENT

A. Standard of Review

The purpose of the Lanham Act is [t]o protect trademarksto protect the public from

deceit, to foster fair competition, and to secure to the business community the advantages of


6702718 10

reputation and goodwill by preventing their diversion from those who have created them to those

who have not. See Truck Equip. Serv. Co. v. Fruehaf Corp, 536 F.2d 1210, 1215 (8th Cir. 1976).

To meet this purpose, the Lanham Act prohibits infringement of trademarks and specifically

authorizes an injunction according to the principles of equity and upon such terms as the court

may deem reasonable to prevent the violation of any right of the registrant of a mark in the

Patent and Trademark Office. 15 U.S.C. 1051 et seq., 116(a).

To obtain a preliminary injunction, Nane Jan must show: (1) a substantial likelihood of

succeeding on the merits; (2) a substantial threat of irreparable injury if relief is denied; (3) an

injury that outweighs the opponent's potential injury if relief is granted; and (4) that an injunction

would not harm or do a disservice to the public interest. See Suntrust Bank v. Houghton Mifflin

Co., 252 F. 3d 1165, 1166 (11th Cir. 2001); Am. Red Cross v. Palm Beach Blood Bank, 143 F.3d

1407, 1410 (11th Cir. 1998).

B. Nane Jan Demonstrates a Substantial Likelihood of Success on the Merits

Nane Jan has a substantial likelihood of success on its trademark infringement claims.5

In order to succeed on the merits of a trademark infringement claim [under 15 U.S.C. 1114(1)

or 1125(a)(1)], a plaintiff must show that the defendant used the mark in commerce without its

consent and that the unauthorized use was likely to deceive, cause confusion, or result in

mistake. Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1300-01 (11th Cir. 2001)

(quoting McDonald's Corp. v. Robertson, 147 F.3d 1301, 1307 (11th Cir. 1998)). Essentially,

Nane Jan must show that it owns the mark in question, that the defendant's mark is similar to or

5 For the sake of brevity, Nane Jan cites only to federal trademark law in analyzing the likelihood

of success on its claims, since the elements of state and common law trademark law are not appreciably

different for the purposes of evaluating this motion. See, e.g., Investacorp, Inc. v. Arabian Inv. Banking

Corp., 931 F.2d 1519, 1521 (11th Cir. 1991) (analysis of Florida statutory and common law trademark

infringement claims and unfair competition is the same for federal trademark infringement claims); La

Dove, Inc. v. Playtex Jhirmack, Inc., 1991 WL 187473, at *3 (S.D. Fla. 1991) (same).


6702718 11

the same as the plaintiff's mark, and that defendant's use of the mark is likely to cause confusion

among consumers. Dunkin' Donuts Inc. v. Gav-Stra Donuts, Inc., 139 F. Supp. 2d 147, 158 (D.

Mass. 2001).

Notably, the Trademark Office conducts substantially the same analysis, as further

demonstrated below, in determining whether a trademark application should be granted a federal

registration. Where, as here, the Trademark Office has declined to register defendants mark

because of plaintiffs registration, that refusal is entitled to great weight on the issue of

likelihood of confusion in a later trademark action. Syntex Labs., Inc. v. Norwich Pharm. Co.,

437 F.2d 566, 569 (2d Cir. 1971); Carling Brewing Co. v. Philip Morris, Inc., 297 F. Supp.

1330, 1337 (N.D. Ga. 1968) (Trademark Office decisions entitled to the most respectful

consideration); see also Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96,

120 (S.D.N.Y. 1989) (decision by the PTO is entitled to great weight); Natl Customer

Engineering, Inc. v. Lockheed Martin Corp., 1997 WL 363970, at *1 (C.D. Cal. Feb. 14, 1997)

(Trademark Offices determination was entitled to serious consideration). Both Nane Jans

arguments and the legal conclusions of the Trademark Office support the assertion that there is a

strong likelihood of Nane Jan succeeding at trial on the merits of its claims.

1. Nane Jan Owns Valid Federal and State Trademark Registrations

The Lanham Act provides that marks registered on the Principal Register shall be prima

facie evidence of the validity of the registered mark, of its registration, of the registrant's

ownership, and of the registrant's exclusive right to use the mark on the goods or services

specified in the registration. 15 U.S.C.A. 1115(a). Nane Jan is the owner of SEA SALT

trademark registrations in Florida (Trademark Registration No. T08000001417) (Dec. 30, 2008)

and the USPTO (Trademark Registration No. 4,299,923) (March 12, 2013). Compl., at Ex. 1 and


6702718 12

3 thereto. A plaintiff can establish that it possesses valid marks by identifying the registration

numbers of each mark and providing copies of the marks from the Trademark Offices

website. FSC Franchise Co., LLC v. Express Corp. Apparel, LLC, 2011 U.S. Dist. LEXIS

34064 (M.D. Fla. Feb, 28, 2011). Apart from its state and federal trademark registrations, Nane

Jan also owns common law trademark rights by virtue of its earlier use of the SEA SALT mark

as compared to Defendant. Nane Jan has plainly proven that it owns the exclusive right to use

the SEA SALT mark in association with restaurant and bar services.

2. Defendants Mark is the Same As Nane Jans SEA SALT Mark

The Trademark Office concluded that Defendants SEASALT AND PEPPER

trademark was too similar to Plaintiffs SEA SALT mark to be registered with the USPTO.

Compl., at Ex. 7 and 8. This conclusion is entitled to great weight, as a matter of both law and

common sense. See Syntex Labs., 437 F.2d at 569. As the trademark Examiner pointed out,

both marks contain the dominant terms SEA SALT and because [c]onsumers are generally

more inclined to focus on the first word, prefix, or syllable in any trademark or service mark

there is a likelihood of confusion with Nane Jans SEA SALT mark. Compl., at Ex. 7, p. 2 and

Ex. 8, p. 2 (citing to Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,

396 F. 3d 1369, 1372 (Fed. Cir. 2005)); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.

2d 1895, 1897 (TTAB 1988) (it is often the first part of a mark which is most likely to be

impressed upon the mind of a purchaser and remembered when making purchasing decisions).

Moreover, Defendants mere addition of the word Pepper to Nane Jans SEA SALT mark is

entirely incapable of avoiding confusion. A defendant in a trademark infringement or unfair

competition case cannot prevail by simply adding a word to one that it shares with the

plaintiff[as] Courts have repeatedly held that the confusion created by use of the same word


6702718 13

as a primary element in a trademark is not counteracted by the addition of another term.

Coherent, Inc. v. Coherent Tech., Inc., 1990 U.S. Dist. LEXIS 5715, at 26 (Colo. 1990); see also

Contl Connector Corp. v. Contl Specialties Corp, 492 F. Supp. 1088, 1095 (D. Conn. 1979).

Defendants use of SEASALT AND PEPPER is identical, or impermissibly similar, to Nane

Jans SEA SALT mark.

3. Defendants Use of SEASALT AND PEPPER is Likely to Be Confused with Nane Jans SEA SALT Mark

The Eleventh Circuit has consistently referred to the following seven factors when

determining whether a likelihood of confusion exists: (1) the type of mark; (2) the similarity of

the mark; (3) the similarity of services; (4) the identity of purchasers and the similarity of retail

outlets; (5) the similarity of advertising campaigns; (6) the intent of the defendants; and (7)

actual confusion. The Trademark Office concluded that Defendants SEASALT AND

PEPPER trademark applications were not entitled to be registered with the USPTO because of a

likelihood of confusion with Plaintiffs SEA SALT trademark. Compl., at Ex. 7 and 8 thereto.

The Trademark Offices conclusion is entitled to great weight, but an examination of the factors

that are considered in this analysis further demonstrates why the trademark Examiners

conclusion was well-founded. See Syntex Labs., 437 F.2d at 569.

a. The Type of the Mark

The first factor raises the issue whether the marks adopted and used by Nane Jan are

"strong," and therefore deserving of protection, or "weak," and not entitled to protection.

Bellsouth Adver. & Publg Corp. v. The Real Color Pages, Inc., 792 F. Supp. 775, 781 (M.D.

Fla. 1991) (citing University of Georgia Athletic Ass'n. v. Laite, 756 F.2d 1535 (11th Cir. 1985)).

The strength of a trademark is measured in the marketplace by its tendency to identify the source

of the goods; there are essentially four types of marks, ranging in degree of identification, and


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hence protection; they are, from strongest to weakest: (1) arbitrary or fanciful; (2) suggestive; (3)

descriptive; and (4) generic. See e.g., Soweco Inc. v. Shell Oil Co., 617 F.2d 1178, 1183-1184

(5th Cir. 1980) (cert. denied, 450 U.S. 981 (1981)).

Regarding the strength of Nane Jans mark, the trademark Examiner afforded it the

greatest strength available on the distinctiveness spectrum by stating that SEA SALT is

arbitrary for restaurant services.[and] is a strong source identifier. Compl., at Ex. 7, p. 2 Ex.

8, p. 2. Since SEA SALT is completely arbitrary for restaurant and bar services, it is a very

strong mark. This factor plainly weighs toward a likelihood of confusion.

b. Similarity of the Marks

As a preliminary observation, it is worth noting that "where the products are closely

related, less similarity in the trademarks is necessary to support a finding of infringement."

Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). Defendants trademark

applications are for restaurant and bar services (Compl., at Ex. 4-5); Plaintiffs trademark

registrations are for restaurant and bar services. Id., at Ex. 1 and 3 thereto. Thus, less

similarity in the trademarks is required. Notwithstanding this fact, for the reasons stated above,

the similarity of the Plaintiffs and Defendants respective marks was deemed by the Trademark

Office to be significant, with the appendage of PEPPER being of no consequence, since the

addition of a word to a registered mark is widely recognized as incapable of avoiding

infringement liability. Contl Connector, 492 F. Supp. at 1095. More importantly, however, is

the fact that evidence of actual consumer and supplier confusion has been well-documented.

Goddard Declaration 5-10; Buchanan Declaration 5-12. This factor indisputably favors a

likelihood of confusion.


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c. Similarity of Services

Defendants trademark applications are for restaurant and bar services (Compl. At Ex.

4-5 thereto); Plaintiffs trademark registrations are for restaurant and bar services (Id. at Ex. 1,

3 thereto); thus, there is no question that the services are identical; a fact the Trademark Office

also acknowledged. Id. at Ex. 7-8 thereto.

d. The Identity of Purchasers and the Similarity of Retail Outlets

Both parties cater to high end consumers of seafood cuisine, and both parties offer their

restaurant and bar services at up-scale venues. Compl. 6-10; Defendants Answer and

Counterclaim 6-9. This factor increases the likelihood of confusion between the two

restaurants. See Contra Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 262 (5th Cir.) (cert.

denied, 449 U.S. 899 (1980)).

e. The Similarity of Advertising Campaigns

Nane Jan has not yet obtained discovery on the scope and nature of Defendants

advertising campaigns. Nonetheless, Nane Jan asserts, broadly, and with reservation of rights to

further supplement this argument when additional discovery becomes available, that two Florida

businesses advertising seafood restaurant and bar services under the SEA SALT mark are by

their very nature similar. This factor weighs in favor of a finding of a likelihood of confusion.

f. Intent of the Defendant

Nane Jan believes that discovery will establish Defendants intention to trade off of the

good will associated with Nane Jans SEA SALT mark in adopting and using the trade name

Seasalt and Pepper. Certainly, after being put on notice of Nane Jans state and federal

trademark registrations, and being admonished by the USPTO that there is a likelihood of

confusion with another federally registered mark (and Florida business), it cannot be disputed


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that Defendant intends to use the SEA SALT mark in a willful and malicious manner. Given

Nane Jans widespread recognition and acclaim, it can be inferred that adoption and continuing

use of the SEA SALT mark was an intentional effort to benefit from the excellent reputation

Nane Jan had already achieved. See generally, Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *20

(citing John H. Harland Co. v. Clarke Checks, Inc., 711 F. 2d 966, 977 (11th

Cir. 1983)).

g. Evidence of Actual Confusion

"Although evidence of actual confusion is not necessary to a finding of likelihood of

confusion, it is nevertheless the best evidence of likelihood of confusion." Amstar Corp. v.

Domino's Pizza, Inc., 615 F.2d 252, 263 (5th

Cir. 1980). Evidence of actual confusion can be

established by way of declarations or affidavits. Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *21.

Nane Jan has presented evidence that at least 30 customers have expressed confusion as to

whether there was an affiliation between Nane Jans Sea Salt restaurant in Naples and

Defendants Seasalt and Pepper restaurant in Miami. Buchanan Declaration 7. Nane Jan has

also presented evidence that two of its best suppliers were confused as to an affiliation between

Nane Jans Sea Salt restaurant in Naples and Defendants Seasalt and Pepper restaurant in

Miami; one of the suppliers accidentally sent a food order placed by Nane Jan to the Defendants

restaurant in Miami, thereby disrupting Nane Jans normal business operations. Goddard

Declaration 10. The evidence of actual marketplace confusion is well-established, without the

parties even having conducted any formal discovery. This factor is clearly established by the

presented evidence, and forms the fundamental gravamen of a trademark infringement claim

Nane Jan will succeed on the merits of its trademark infringement claims.


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C. There is a Substantial Threat Of Irreparable Harm if an Injunction is Not Issued

Once a plaintiff establishes a likelihood of success on the merits of a trademark

infringement claim, a presumption of irreparable harm arises. Fantasia Distrib., Inc. v. S.

Wholesale, LLC, 2014 U.S. Dist. LEXIS 19884, at **3-4 (M.D. Fla. Feb. 18, 2014); see also

Bellsouth Adver. & Publg Corp. v. Real Color Pages, Inc., 792 F. Supp. 775, 784 (M.D. Fla.

1991) (The law is well settled that the existence of a likelihood of confusion constitutes

irreparable injury, as a matter of law, sufficient to satisfy the requirements of Federal Rule of

Civil Procedure 65.). As such, Defendants trademark infringement is an offense that, by its

very nature, causes irreparable injury. See Delta Sigma Theta Corority, Inc. v. Bivens, 2014 WL

1330018 at *2 (M.D. Fla. April 1, 2014); citing Tally-Ho, Inc. v. Coast Cmty. Coll. Dist, 889 F,

2d 1018, 1029 (11th

Cir. 2989) (It is generally recognized in trademark infringement cases that

(1) there is not [an] adequate remedy at law to redress infringement and (2) infringement by its

nature causes irreparable harm.).

Even without the presumption of irreparable harm, however, the evidence establishes that

irreparable harm can only be mitigated by entry of a preliminary injunction. Nane Jan has no

ability to control the quality of the food and services being offered by Defendant under the SEA

SALT mark. As a result, consumers who have a negative dining experience at Defendants

Seasalt and Pepper restaurant may pass along a negative review of the restaurant to their friends

or families, thereby potentially causing customers to avoid Nane Jans restaurant, and tarnishing

the reputation and goodwill that Nane Jan has invested so heavily to establish. Furthermore, the

evidence establishes that customers are actually confused about an affiliation between Sea Salt

restaurant in Naples and the Seasalt and Pepper restaurant in Miami, and that the majority of

these confused customers are also wrongfully attributing the negative publicity surrounding


6702718 18

Defendants numerous lawsuitsand perhaps even other bad press, ranging from failed

inspections and false advertising to poor food reviews and public hazards to the conduct of

Nane Jan. See Buchanan Declaration 5-7. A negative press article regarding Defendant

particularly where Plaintiff is situated only 125 miles away and in the same media market

poses a high risk of tarnishing the reputation of Nane Jan. It is difficult to quantify the scope or

measure of damages associated with this damage to Nane Jans reputationonly issuance of a

preliminary injunction can mitigate this irreparable harm.6

D. Nane Jans Injury Outweighs the Defendant's Potential Injury if Relief is Granted

Defendant will not suffer substantial harm from the Court granting Plaintiff Nane Jans

Motion; Defendant will be able to continue operating its business, offering restaurant and bar

services in Miami, as Nane Jan does not seek to enjoin all sales of Defendants' services, but only

to halt sales of services using Plaintiff's SEA SALT mark. See Delta Sigma, 2014 WL 1330018

at *3. Defendant can advertise and operate its business under any name that does not contain the

SEA SALT mark, or any confusingly similar name.

E. An Injunction Would Not Harm or Do a Disservice to the Public Interest

Protecting consumers from confusion and deception is in the public interest. See Teledyne

6 Defendant has indicated that it will assert that Plaintiffs purported delay in seeking a

preliminary injunction undermines its assertion of irreparable harm. As the facts establish, however, of

the roughly eight months between the opening of Defendants restaurant and the filing of this motion, Nane Jan has spent nearly four full months in efforts to settle the dispute; the remaining four months have

involved an ongoing investigation into the impact of infringement and the appropriate forum and avenues

for obtaining relief; and it has only been one month since Nane Jans continuing settlement overtures were finally foreclosed by Defendants commitment to proceeding with litigation by way of its Answer and Counterclaims. None of these time periods are counted as delay against Plaintiff. See, e.g. Rebel

Debutante, LLC v. Forsythe Cosmetic Group, Ltd, 799 F. Supp. 2d 558, 580 (M.D. N.C. 2011).

Additionally, Plaintiff is entitled to some latitude to assess both the impact of anothers use of an allegedly infringing trademark as well as the wisdom of pursuing litigation on the issuePlaintiffs delay of seven to eight months is not an unreasonable amount of delay, and does not necessitate the preclusion

of a finding of irreparable injury. Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *26. Nane Jan reserves the right to brief this issue further in its reply brief.


6702718 19

Indus., Inc. v. Windmere Prod., Inc., 433 F. Supp. 710, 740 (S.D. Fla. 1977) (stating customer

confusion is by its very nature against the public interest). The Middle District of Florida courts

have long recognized the gravity of protecting the public in trademark infringement cases,

including stating:

[i]n a trademark infringement or unfair competition case, a third party, the

consuming public, is present and its interests are paramount.... When a trademark

is said to have been infringed, what is actually infringed is the right of the public

to be free of confusion and the synonymous right of the trademark owner to

control his products' reputation.

Bellsouth Adver., 792 F. Supp. at 785. The facts of this case present a compelling argument for

protecting consumers against confusion as to both reputation of the parties and as to the

quality of their respective services and this factor weighs heavily in favor of entry of the

injunction.

IV. CONCLUSION

The factors this Court must consider for the issuance of a preliminary injunction are

amply satisfied by Plaintiff Nane Jan, which otherwise has no adequate remedy at law. Nane Jan

respectfully requests that its Motion be granted, that the Court enter an injunctive order enjoining

Defendant Seasalt and Pepper and all those acting in concert with it from infringing upon the

SEA SALT mark. Specifically, Nane Jan requests that the Court issue an order requiring the

immediate termination of any use of the SEA SALT mark in association with the Defendants

services; including advertising or promotion, in any medium, but including at least in print

advertisements, radio and television advertisements, store signage and menus, and internet

advertising (including deactivation of the its website located at www.seasaltandpepper.com in

association with any restaurant or bar services, or other confusingly similar services of


6702718 20

Defendant, and the deactivation of any social media accounts using the SEA SALT mark).

Plaintiff Nane Jan respectfully submits that the facts of the case should not require Nane

Jan to post more than a nominal security bond; Plaintiff requests that the security bond not

exceed $1,000. A nominal security bond is justified by the fact that Defendant will not

encounter any interruptions in its ability to offer its restaurant and bar services if it is enjoined

from using the SEA SALT mark. Defendant merely needs to remove or alter signage and print

new menus, alter its website, and terminate all other infringing advertising. These requirements

should not disrupt normal business operations in the offering of restaurant and bar services.

Additionally, Defendant has been on notice of its infringing conduct for quite some time (by way

of both Nane Jan and Trademark Office notice), has had numerous settlement opportunities

where an orderly transition to a new business name had been proposed by Plaintiff, and could

well have already begun any necessary transition to a new business name. Finally, Plaintiffs

likelihood of succeeding on the merits of its trademark claims is extraordinarily high, so the risk

of erroneously disrupting Defendants marketing and promotion effortsshould trial result in a

finding of no liabilityis exceedingly low, and the security bond should be correspondingly

minimal.

Should the Court grant this motion, Nane Jan requests that Defendant file with the Court,

and serve upon Plaintiff Nane Jan, within fifteen (15) days after service upon Defendant of the

injunction, a written report detailing under oath setting forth in detail the manner and form in

which it has complied with the injunction and award. Still further, Nane Jan asks that the Court

award such other relief it deems just and proper.


6702718 21

HAHN LOESER & PARKS LLP

/s/ Nathan B. Webb

JEANNE L. SEEWALD

Florida Bar No. 175005

MICHAEL C. SHUE

Florida Bar No. 029550


5811 Pelican Bay Blvd., Suite 650

Naples, FL 34108

Telephone: (239) 254-2900

Facsimile: (239)254-7716

E-Mail: [email protected]

[email protected]

AND

NATHAN B. WEBB

(Trial Counsel; admitted pro hac vice)

Ohio Bar No. 0084506


One Gojo Plaza

501 South Main Street, Suite 300

Akron, OH 44311

Telephone: (330) 864-5550

Facsimile: (330) 864-7986

E-Mail: [email protected]

Counsel for Plaintiff Nane Jan, LLC

CERTIFICATE OF SERVICE

I HEREBY CERTIFY on this 4th day of August, 2014, I electronically filed the

foregoing document with the Clerk of Court using CM/ECF. I also certify that the foregoing

document is being served this day on all counsel of record in the manner specified, either via

electronic transmission through the CM/ECF filing system or in some other authorized manner

for these counsel or parties who are not authorized to receive electronic notification.

/s/ Nathan B. Webb


Documents

Name Infringement Patent Violation v. Seasalt & Pepper