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New Jersey v. Jersey Boardwalk Pizza

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The state of New Jersey's lawsuit against a Florida pizza shop over their parody Garden State Parkway logo.

Text of New Jersey v. Jersey Boardwalk Pizza

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    RONALD L. ISRAEL PETER E. NUSSBAUM WOLFF & SAMSON PC One Boland Drive West Orange, New Jersey 07052 Telephone: (973) 530-2045 Facsimile: (973) 530-2245 Attorneys for Plaintiff

    IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY

    NEW JERSEY TURNPIKE AUTHORITY,

    Plaintiff,

    v.

    JERSEY BOARDWALK FRANCHISING CO., INC.; JERSEY BOARDWALK PIZZA CORP.; and BOARDWALK PIZZA, INC.

    Defendants.

    Case No.:

    COMPLAINT ALLEGING SERVICE MARK INFRINGEMENT, SERVICE MARK

    DILUTION, COMMON LAW SERVICE MARK INFRINGEMENT AND UNFAIR

    COMPETITION

    Jury Trial Demanded

    The Plaintiff, New Jersey Turnpike Authority (hereinafter Plaintiff), located at 581 Main Street, Woodbridge, New Jersey 07095, by and through its undersigned

    attorneys, for its complaint against the defendants, alleges as follows:

    NATURE OF ACTION

    1. This is an action for service mark infringement, service mark dilution, unfair

    competition and other relief arising under the trademark and service mark laws of the

    United States, specifically 15 U.S.C. 1051 et seq. (hereinafter Lanham Act) and the common law of the State of New Jersey. Defendants have willfully and blatantly

    misappropriated Plaintiffs registered service mark in an effort to trade upon the fame and

    Case 2:14-cv-04589-WJM-MF Document 1 Filed 07/21/14 Page 1 of 19 PageID: 1

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    goodwill associated with Plaintiffs mark and to attract customers and potential

    franchisees from the State of New Jersey.

    THE PARTIES

    2. Plaintiff exists under the laws of the State of New Jersey with its principal

    place of business located at 581 Main Street, Woodbridge, New Jersey 07095.

    3. Upon information and belief, the defendant Jersey Boardwalk Franchising

    Co., Inc. (Boardwalk Franchising) is a corporation organized and existing under the laws of the state of Florida with a principal place of business located at 701 South

    Homestead Blvd., Homestead, FL 33030.

    4. Upon information and belief, the defendant Jersey Boardwalk Pizza Corp.

    (Jersey Boardwalk) is a corporation organized and existing under the laws of the state of Florida with a principal place of business located at 20 Highpoint Road, Tavernier, FL

    33070.

    5. Upon information and belief, the defendant Boardwalk Pizza, Inc.

    (Boardwalk Pizza) is a corporation organized and existing under the laws of the state of Florida with a principal place of business located at 20 Highpoint Road, Tavernier, FL

    33070. Boardwalk Franchising, Jersey Boardwalk and Boardwalk Pizza shall

    hereinafter be collectively referred to as Defendants.

    JURISDICTION AND VENUE

    6. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 1331 and 1338 because Plaintiffs claims arise under the trademark and service mark laws of the United States. This Court also has supplemental jurisdiction pursuant to 28 U.S.C. 1338(b) and 1367 over Plaintiffs claims that arise under the laws of the State of New Jersey.

    Case 2:14-cv-04589-WJM-MF Document 1 Filed 07/21/14 Page 2 of 19 PageID: 2

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    7. Defendants utilize an interactive website, www.jerseyboardwalkpizza.com, that advertises authentic Italian food from Jersey and allows for the purchase of

    merchandise bearing the infringing marks online. Screen shots of Defendant Jersey

    Boardwalks website as of July 17, 2014 and an example of available merchandise

    advertising authentic Italian food from Jersey are attached hereto at Tab A. Upon

    information and belief, such merchandise is available for sale nationwide, including to

    citizens of the State of New Jersey.

    8. Defendants utilize an interactive website, www.boardwalkfranchising.com,

    to advertise franchising opportunities for Jersey Boardwalk, which franchising

    opportunities, upon information and belief, are available to citizens of the State of New

    Jersey. The website invites potential franchisees to Take a Walk with us on the Jersey

    Boardwalk and states that Defendants are committed to bringing the New Jersey

    boardwalk experience to each and every one of our customers. The website also states

    as we expand our franchise company we will be moving up and along the coast to the

    northeast of the United States. We will be continuing to expand nationally. Screen shots

    of Defendant Boardwalk Franchisings website as of July 17, 2014 are attached hereto at

    Tab B.

    9. Upon information and belief, food sold in Defendants restaurants and

    franchise locations is made in or derived from the State of New Jersey. At the very least,

    Defendants prominently advertise, market and promote this fact, whether or not it is true,

    on their websites, promotional, marketing and advertising materials and on their

    merchandise. Indeed, the tagline authentic Italian food from Jersey is featured in large

    and prominent wording on every single page of Defendants websites, in most cases,

    multiple times per page.

    Case 2:14-cv-04589-WJM-MF Document 1 Filed 07/21/14 Page 3 of 19 PageID: 3

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    10. Defendants utilize various social media outlets, including Facebook, to

    promote their businesses and merchandise by publicizing their ties to the State of New

    Jersey and to appeal directly to New Jersey consumers.

    11. Defendants have targeted their business to New Jersey citizens by offering

    products and marketing in a way that appeals directly to New Jersey citizens who are

    travelling near Defendants locations or who are interested in opening franchises.

    12. Defendants, in advertising their goods and services, have directed

    numerous public relations efforts to consumers in the State of New Jersey, including by

    hosting and participating in events that have either taken place in the State of New

    Jersey or are directly tied to individuals, towns and organizations within the State of New

    Jersey.

    13. Defendants have publicized their intention to open franchises and expand

    their business in the Northeast, including in the State of New Jersey, as well as

    throughout the country.

    14. Upon information and belief, Defendants principals, Paul DiMatteo,

    George Parratt and Lauren Parratt are from the State of New Jersey.

    15. As such, this Court has personal jurisdiction over the parties to this action because (i) Plaintiffs claims arise in this judicial district; (ii) Plaintiffs claims are related to Defendants contacts with this judicial district; (iii) the Defendants have intentionally interacted with individuals, municipalities and organizations in this judicial district; (iv) the Defendants have purposefully availed themselves of the privilege of conducting activities

    within the State of New Jersey and in this judicial district; and (v) in light of the foregoing, the exercise of personal jurisdiction over Defendants in this judicial district comports with traditional notions of fair play and substantial justice.

    Case 2:14-cv-04589-WJM-MF Document 1 Filed 07/21/14 Page 4 of 19 PageID: 4

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    16. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391 because (i) Plaintiffs claims arise in this judicial district and as a result of Defendants purposefully availing themselves of the privilege of conducting activities within this judicial district; (ii) Plaintiff does business in this judicial district; (iii) upon information and belief, Defendants conduct business in this judicial district; (iv) witnesses and evidence are located within this judicial district; and (v) the Defendants are subject to this judicial districts personal jurisdiction with respect to this action.

    PLAINTIFFS GARDEN STATE PARKWAY LOGO

    17. Plaintiff is the owner of the iconic Garden State Parkway Logo, which

    mark it has been using in connection with its highway management and maintenance

    services and travel information services since at least as early as 1956. Plaintiffs

    Garden State Parkway Logo is depicted below:

    18. Plaintiffs Garden State Parkway Logo is utilized in connection with

    Plaintiffs operation of one of the most iconic and well known highways in the United

    States, the Garden State Parkway. The Garden State Parkway is travelled by many

    millions of people each year and Plaintiffs roadway has become one of the most

    symbolic fixtures within the State of New Jersey. The Garden State Parkway opened

    in 1954 and stretches from the New York State line down to the end of the New Jersey

    Shore.

    Case 2:14-cv-04589-WJM-MF Document 1 Filed 07/21/14 Page 5 of 19 PageID: 5

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    19. Plaintiff is the owner of United States Service Mark Registration No.

    2,452,349 for its Garden State Parkway Logo in International Class 37 for highway

    management and maintenance services; and in Class 39 for travel information

    services. A printout from the United States Patent & Trademark Offices Online

    Database of Plaintiffs registration is attached hereto as Tab C. In addition to the

    provision of its highway related services, Plaintiff is the owner of several pending

    United States Trademark applications covering various categories of goods. One of

    the most well-known aspects of the Garden State Parkway is its service areas, which

    include restaurants, many of which feature pizza.

    20. Plaintiff has invested a substantial amount of time, money and other

    resources advertising, promo

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