False designation action dismissed, but fight for JAPONAIS continues

United States of America
In Geisha LLC v Tuccillo (Case 05-cv-05529, March 13 2009), the owner of the Japonais restaurant has suffered a setback in its long-running battle over the trademark JAPONAIS.
Geisha LLC operates the well-known Japonais restaurant in Chicago. The defendant, an individual named Roy Tuccillo, filed an intent-to-use application to register the mark JAPONAIS for restaurants based on his stated intent to open a restaurant in New York. Tuccillo filed his application nine months after Geisha opened its Chicago restaurant and before Geisha expanded to locations beyond Chicago. 

Geisha had not applied to register its trademark with the US Patent and Trademark Office (USPTO). Additionally, Geisha did not learn of Tuccillo’s application until after the opposition period had passed. Even before Tuccillo had opened his restaurant, Geisha sued Tuccillo for false designation under the Lanham Act. Geisha also continued its planned expansion of Japonais restaurants, opening locations in Las Vegas and Manhattan. Tuccillo then opened a restaurant in New York, prompting Geisha to file a motion for summary judgment.
The US District Court for the Northern District of Illinois denied Geisha’s motion for summary judgment, finding that a question of fact existed as to the extent of Geisha’s reputation in the disputed JAPONAIS mark as of the filing date of Tuccillo’s application. According to the court, “the ability of the restaurant’s reputation to spread that far [from Chicago to New York] is a question of fact that is not conclusively answered by the record”. Relying on well-established precedent, the court noted that a junior user in a remote geographic location may adopt the same mark as the senior user, so long as the senior user has not registered the mark with the USPTO and has not developed a reputation in the junior user’s geographic area. In the present case, Chicago and New York were considered sufficiently far apart so that there was at least an issue of fact as to whether Geisha had developed a reputation in the JAPONAIS mark that reached New York. 
Additionally, the court required that such reputation must have been developed during the nine-month period ending with the June 25 2004 filing of Tuccillo’s application. As of that filing date, Tuccillo was potentially entitled to nationwide constructive use, contingent on his completion of the registration process. The evidence showed that most of Geisha’s publicity by the June 2004 filing date had been in the Chicago media and in trade publications, and was thus insufficient to prove as a matter of law that Geisha had developed a reputation outside of Chicago by the time Tuccillo filed his application. 
The court spent some time distinguishing between the issues of constructive use and constructive notice. The constructive use date afforded to a registration that issued from an intent-to-use-based application is the filing date. However, third parties are not considered to have constructive notice of that registration until the date of registration. This enables senior users that are unaware of the intervening, intent-to-use-based application to continue expanding their use in good faith until the registration issues. Despite spending some time on this technical point, the court noted that Geisha had actual notice of Tuccillo’s application and thus could not claim good-faith expansion of its use.
This dispute is clearly not over, as Tuccillo’s registration was issued on March 17 2009 and Geisha indicated to the court its intention to cancel that registration, thus potentially eviscerating Tuccillo’s constructive first-use date. The case also clearly demonstrates the critical benefits of the constructive nationwide first-use date afforded by intent-to-use applications and the importance of early filing to avoid impediments to business expansion.
Karin Segall, Foley & Lardner LLP, New York 

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