Cipriani Group v. Cipriani Pasta

8/11/2019 Cipriani Group v. Cipriani Pasta

1/22

JS

44C/SDNY

REV.

4/2014

JUDGE SCHOFIELD

14

69>4

CIVIL COVER

SHEET

The

JS-44

civil

cover

sheet

and

the information contained herein neither replace nor supplement the filing

and

service of

pleadings or other papers as required by law,

except

as provided by local rules of court . This form,

approved

by the

Judicial

Conference

of the United States in September 1974, is required for use of th e Clerk of Court for the

purpose

of

initiating the civil

docket sheet.

2 14

PLAINTIFFS

CIPRIANI

GROUP, INC.

DEFENDANTS

CIPRIANI 'S

PASTA

&

SAUCE

INC.

an d ANNETTE JOHNSON

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER ATTORNEYS (IF KNOWN)

George

Gottlieb and

Jonathan

M. Purow; Gottlieb,

Rackman

&

Reisman

PC --

270 Mad ison Avenue , 8 th Fir

New

York,

NY 10016

Phone-2120684-3900

CAUSE

OF ACTION (CITETHEU.S.

CIVIL

STATUTEUNDER

WHICH

YOUARE

FILING

ANDWRITEA BRIEF

STATEMENT

OF

CAUSE)

(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

15U.S.C.

1051 etseq.

Has this action, case,orproceeding, or

one essentially

thesame

been

previously

filed in SDNY

at

any time?

Nctj'esUjudge

Previously Assigned

If

yes,was

this

case Vol.Q

Invol.

[~J Dismissed.

No

Q] Yes | | If yes, give date &Case

No.

IS THIS AN INTERNATIONAL

ARBITRATION CASE?

No

[x]

Yes

I J

(PLACE

AN[x]INONEBOXONLY)

TORTS

NATURE OF SUIT

CONTRACT PERSONAL INJURY PERSONAL

INJURY

[ ] 367 HEALTHCARE/

PHARMACEUTICAL PERSONAL , , 625 DRUGRELATED

INJURY/PRODUCT

LIABILITY

[ ] 365 PERSONAL INJURY

PRODUCT

LIABILITY

[ ] 368 ASBESTOS PERSONAL

INJURY

PRODUCT

LIABILITY

PERSONALPROPERTY

[ ] 370 OTHER FRAUD

[ ] 371 TRUTH INLENDING

[ ] 310 AIRPLANE

[ ] 315 AIRPLANEPRODUCT

LIABILITY

[ ] 320 ASSAULT, LIBEL&

SLANDER

[ ]

330

FEDERAL

EMPLOYERS'

LIABILITY

[ ] 340 MARINE

[ ] 345 MARINE PRODUCT

LIABILITY

[ ] 350 MOTOR VEHICLE

[ ] 355 MOTOR VEHICLE

PRODUCT

LIABILITY

[ ] 3 60 OTHER PERSONAL

INJURY

[ ] 3 62

PERSONAL

INJURY -

ME D

MALPRACTICE

[ ] 110 INSURANCE

[ ] 120 MARINE

[ ] 130 MILLER ACT

[ ] 140 NEGOTIABLE

INSTRUMENT

[ ] 150 RECOVERY OF

OVERPAYMENT &

ENFORCEMENT

OF JUDGMENT

[ ] 151 MEDICARE ACT

[ ] 152 RECOVERY OF

DEFAULTED

STUDENT LOANS

(EXCL VETERANS)

[ ] 153 RECOVERY OF

OVERPAYMENT

OF VETERAN'S

BENEFITS

[ ] 1 60

STOCKHOLDERS

SUITS

[ ] 1 90 OTHER

CONTRACT

[ ] 195 CONTRACT

PRODUCT

LIABILITY

[ ] 196 FRANCHISE

ACTIONSUNDER STATUTES

CIVIL RIGHTS

[ ] 440

OTHER

CIVILRIGHTS

(Non-Prisoner)

[

]441

VOTING

( ]442 EMPLOYMENT

[ )443 HOUSING/

ACCOMMODATIONS

[ ] 445 AMERICANS WITH

DISABILITIES -

EMPLOYMENT

[ ] 446 AMERICANS WITH

DISABILITIES -OTHER

[ ] 448 EDUCATION

REAL PROPERTY

[ 1210

[ )220

[

)230

[ ] 3 80

OTHER PERSONAL

PROPERTY

DAMAGE

[ ] 3 85

PROPERTY

DAMAGE

PRODUCT

LIABILITY

PRISONER

PETITIONS

[ ] 463 ALIEN DETAINEE

[ ] 510 MOTIONS TO

VACATE

SENTENCE

2 8 U SC 2 25 5

( ] 530 HABEAS CORPUS

[ ] 535 DEATH PENALTY

[ ] 540 MANDAMUS &

OTHER

PRISONER CIVIL RIGHTS

[ ] 550 CIVILRIGHTS

[ j555 PRISON

CONDITION

[

)560

CIVIL DETAINEE

FORFEITURE/PENALTY

SEIZURE OF PROPERTY

21

US C

881

[ ]

690 OTHER

LABOR

[ ]

710

FAIR

LABOR

STANDARDS ACT

[ ]

720

LABOR/MGMT

RELATIONS

[ ] 740 RAILWAY LABOR ACT

[ ] 751 FAMILYMEDICAL

LEAVE ACT (FMLA)

[ ] 790

OTHER

LABOR

LITIGATION

[ ] 7 91 EMPL RET INC

SECURITY ACT

IMMIGRATION

[ ]

462

NATURALIZATION

APPLICATION

[ ]

465 OTHER

IMMIGRATION

ACTIONS

[ )240

[ 1245

LAND

CONDEMNATION

FORECLOSURE

RENT LEASE &

EJECTMENT

TORT S TO LAND

TORT PRODUCT

LIABILITY

ALL OTHER

REAL

PROPERTY

CONDITIONS OF CONFINEMENT

[

]290

Checkifdemanded incomplaint

CHECK IF THIS IS ACLASS

ACTION

UNDER

F R C P 23

ACTIONS UNDER STATUTES

BANKRUPTCY

OTHER

STATUTES

I 1375 FALSE CLAIMS

[ ] 4 22 APPEAL f J400

STATE

2 8 U S C

15 8

REAPPORTIONMENT

[ ] 423 WITHDRAWAL

[ ]

410

ANTITRUST

28

US C

15 7 [ ] 430 BANKS &BANKING

[ ] 450 COMMERCE

[ ] 460 DEPORTATION

PROPERTY RIGHTS [ ]470 RACKETEER INFLU

ENCED & CORRUPT

[ ]

820 COPYRIGHTS

ORGANIZATION

ACT

[

]830

PATENT

(RICO)

iC

840 TRADEMARK

[

]480 CONSUMER

CREDIT

[ ] 490 CABLE/SATELLITE TV

SOCIAL

SECURITY

[ ] 850

SECURITIES/

COMMODITIES/

[ ]861 HIA(1395ff)

EXCHANGE

[ ] 862 BLACKLUNG(923)

[ ] 863 DIWC/DIWW

(405(g))

[ ] 864 SSID TITLEXVI

[ ] 865 RSI (405(g) )

[ ] 890

OTHER

STATUTORY

ACTIONS

[ ) 891 AGRICULTURALACTS

FEDERAL TAX SUITS

[ ] 870 TAXES (U.S. Plaintiff or

Defendant)

[ ] 871 IRS-THIRD PARTY

2 6 U S C 7 60 9

[ ] 893 ENVIRONMENTAL

MATTERS

[ ] 895 FREEDOM OF

INFORMATION ACT

[ ] 896 ARBITRATION

[ ] 899 ADMINISTRATIVE

PROCEDURE

ACT/REVIEW

APPEAL OF AGENCY

DECI

[ J950 CONSTITUTIONALIT

STATE STATUTES

DEMAND $_ OTHER

DO YOyCLAJM THIS

CASE

ISRELATED TOA

CIVIL CASE

NOW PENDING

IN S.D.N.Y.'

JUDGE DOCKET NUMBER

CheckY onlyif demanded incomplaint

JURY

DEMAND:

YES Q\IO

NOTE: You must also submit at the time of filingthe Statement of Relatedness form (Form IH-


2/22

(PLACEAN

x INONEBOXONLY

ORIGIN

S 1 Original 2 Removed from Ll 3 Remanded 4 Reinstated

or

Proceeding StateCourt from

Reopened

a.

all

parties

represented Court 3 6

| | b. At least one

party

is

prose .

(PLACEAN

x INONEBOXONLY)

BASIS

OF

JURISDICTION

1 U S

PLAINTIFF

2 U S DEFENDANT

[x]

3 FEDERAL QUESTION

Q4

DIVERSITY

(U.S. NOT A PARTY)

I I 5

Transferred

from Q 6 Multidistrict

(Specify District) Litigation

I I 7 Appeal toDistric

Judge

from

Magistrate Judg

Judgment

IFDIVERSITY, INDICATE

CITIZENSHIP

BELOW.

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

(Place an [X] in

one

box for Plaintiffand

one

box for Defendant)

PT F DE F

CITIZEN OF THIS STATE [ ] 1 [ ] 1

CITIZEN OF ANOTHER

STATE

[ ] 2 [ ] 2

CITIZEN OR

SUBJECT

OF

A

FORE IGN COUNTRY

PT F DEF

[]3[]3

INCORPORATED or PRINCIPAL PLACE [ ] 4 [ ] 4

OF

BUSINESS

IN

THIS STATE

PLAINTIFF(S) ADDRESS(ES) ANDCOUNTY(IES)

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)

PT F DE F

INCORPORATED and PRINCIPAL PLACE [ ] 5 [ ] 5

OF BUSINESS

IN

ANOTHER STATE

FOREIGN NATION [ J6 [ ]6

DEFENDANT(S)

ADDRESS

UNKNOWN

REPRESENTATION

IS

HEREBY

MADE THAT, AT THIS TIME, I HAVE

BEEN

UNABLE, WITH REASONABLE

DILIGENCE,

TO

ASCERTAIN

RESILIENCE

ADDRESSES OF

THE FOLLOWING

DEFENDANTS:

Check

one:

THIS ACTION SHOULD

BE

ASSIGNED TO: Q WHITE PLAINS

[x]

MANHATTAN

(DO NOT check either box ifthis a PRISONER PETITION/PRISONER CIVILRIGHTS

. .COMPLAINT.)

DATE

\

Ji N SIGNATURE OF ATTORNEY

QFRECORD/^

ADMITTED TO

PRACTICE

THIS DISTRICT

7

, (A. JUcA\ ^ ^~~^ [Xj YES (DATE ADMITTED

Mo.

July Yr. 1963 )

RECEIPT*

y>X-^-**

V*-~

Vi Attorney

Bar

Code

Magistrate Judge is

to be

designated

by

the Clerk of the Cj^|g( JHf} MAA^

Magistrate

Judge

Ruby J. Krajick, Clerk of Court by .

Deputy Clerk, DATED

UNITED STATES DISTRICT

COURT

(NEW YORK SOUTHERN)

is so Designated.

C le ar F orm

Sav e

Prin t


3/22

JUDGE SCHOFIELD

14 6917

UNITED STATES

DISTRICT

COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK

CIPRIANI GROUP, INC.,

Plaintiff,

-against-

CIPRIANI 'S PASTA

& SAUCE

INC.

and

ANNETTE JOHNSON,

Defendants.

ECF CASE

Civi l Action

No.

COMPLAINT

FOR

TRADEMARK

INFRINGEMENT

CO

JURY TRIAL

DEMANDJED ro

c

CO

o

C )

PlaintiffCipriani

Group, Inc.,

( Plaintiff or Cipriani Group ) for its complaint

against the defendants Cipriani's Pasta &Sauce Inc. ( CP&S ) and

Annette

Johnson ( Johnson )

(collectively Defendants ),

herein

states as follows onknowledge astoPlaintiff

and

otherwise on

information

and

belief:

INTRODUCTION

1. Plaintiff is the owner of the world-famous Cipriani restaurants and the

Cipriani Food line of food and beverage products. Plaintiffowns a family of

associated

federally

registered trademarks that incorporate the termCIPRIANI in relation to restaurants and food and

beverage products.

2. Defendants have been manufacturing, distributing, marketing, promoting,

offering forsaleandselling

food

products suchaspastasand

sauces

bearing theconfusingly similar

mark

Cipriani's, on their ownwebsite and through the stores and websites of major national


4/22

retailers; Defendants' actionsblatantlyinfringe Plaintiffs federal trademarkregistrations andwill

continue to cause irreparable harm to Plaintiffs goodwill and reputation.

THE

PARTIES

3. PlaintiffCiprianiGroup, Inc.isa corporation organizedandexistingunderthe

lawsof theStateofNewYorkwithanoffice andprincipal placeofbusiness at

110

East

42n Street,

3rd

Floor,

New York, New

York,

10017.

4. Upon information and belief, defendant Cipriani's Pasta & Sauce Inc. is a

corporation organized under the lawsof theStateof Illinois, with a principal placeof business at

1025West End Avenue, Chicago Heights, Illinois, 60411.

5. Upon information and belief, defendant Annette Johnson is the principal,

ownerandcontrollingentityof defendantCP&S,andis thereforeresponsiblefor thetortiousactsof

CP S.

6. Upon information and belief, Johnson has a full ownership interest in,

operates and/or manages the business of corporate defendant CP&S.

7. Upon information andbelief, there exists, and at all times herein mentioned

there existed, a unity

of

interests between and among Johnson and CP&S vis-a-vis the ownership,

operation and/or management

of

the business

of

CP&S.

8. Upon information and belief, CP&S is so dominated and controlled by

Johnson, such that Defendants may be considered interchangeable with one another.

JURISDICTION

AND VENUE

9.

This action

arises under

the

trademark laws of

the

United States,

the

Lanham

TrademarkAct

of

the United States, 15 U.S.C. 1051 et seq., and under the statutory and common


5/22

laws

of

th e State

of

New York.

10. This Court has jurisdiction over the subject matter

of

this action pursuant to

28 U.S.C. 1338(a).

11. This Court also has supplemental jurisdiction over the state law and unfair

competition claims pursuant to 28 U.S.C. 1367 (a).

12. CP&S (i) operates awebsite at through which it

sellsits foodproducts to consumers, including consumers in thisDistrict, (ii)sellsits foodproducts

online and in the retail locations of third party vendors such asWalmart and Amazon,throughwhich

consumers in this District can purchase Defendants' products, and (iii) is otherwise within the

jurisdiction of this Court.

13. Johnson (i) does business in this district through CP&S and the website

including selling products into this District, (ii) has committed tortious acts

outside New York that have caused an injury to PlaintiffinNew York, and (iii) is otherwise within

the jurisdiction

of

this Court.

14. Venue is properlyplaced in this judicial district pursuantto 28 U.S.C. 1391.

BACKGROUND

A. The Popularity, Fame and Trademark Registrations

of

Cipriani Group

15. In 1930, Giuseppe Cipriani opened Harry's Bar in Venice, Italy. The bar

soonbecame the place where Cipriani elegance, good taste, impeccable service and fine food were

used to cater to the elite. As a result, it quickly became a landmark known for luxury and world-

c l ass se rv i ce .

16. Harry's Bar featured signature menu items such as carpaccio, ruby red


6/22

slices of raw beefnamed after the Venetian masters, and bellini, a peach nectar cocktail. These

items became international delicacies, and even today the definition

of

carpaccio often makes

reference to its Cipriani origin.

17. AfterWorldWar II,Harry's Bar becamecelebratedworldwideandservedas

a veritable secondhome for famous jetsetters aroundtheworld, includingNoel Coward, Charlie

Chaplin, Queen Elizabeth II of England, Truman Capote, Orson Welles, the Aga Khan, George

Braque, Peggy

Guggenheim and Aristotle

Onassis.

A special martini, the

Montgomery,

was

invented in honorof the restaurant's most frequentandcelebratedguest, Ernest Hemingway. The

nameCipriani is known worldwide for elegance, styleand elitism in theVenetian tradition.

18. In 1985,Cipriani's son,Arrigo CiprianiopenedHarryCiprianiFifthAvenue

in the exclusive, high-profile Sherry-Netherland Hotel on 5th Avenue in New York

City.

This

establishment is not only a restaurant in the traditional style, but also provides services to the

occupants oftheSherry-Netherland.

Like

Harry's BarinVenice, Harry Cipriani FifthAvenue has

attracted thousands of upscale patrons.

19. Based on the success of Harry Cipriani Fifth Avenue, the Cipriani Group

continued in the U.S. by opening several other successful restaurant locations, includingCipriani

Downtown

in

1996,

Cipriani Wall Street in 1997, Cipriani Dolci in

2002,

Cipriani 42nd Street in

1998, Cipriani 23rd Streetin 2004,Cipriani ClubResidences in 2007, andthe gourmetfood store

Cipriani Le Specialita in

2001.

Eachof

these

locations bears the CIPRIANI nameas its dominant

designation, whichservesas an indicatoroforiginto identify anddistinguish Plaintiffs services in

commerce

20. Additionally, Cipriani Group imports, distributes, promotes, offers for sale


7/22

and sells food items, such as pasta, olive oil, drink concentrates, wine, deserts, etc. with the

CIPRIANIname at the Cipriani Restaurants cafes and gourmet food store Cipriani Le Specialita,

located at 110 East 42nd Street,

New

York, New York, under the CIPRIANI FOOD trademark.

Cipriani Groupdistributes its foodstuffs throughnational independent gourmet food distributors

such as Balducci's, Dean &

Deluca and

Williams Sonoma.

21. Cipriani Group's activities under the CIPRIANI name have received and

continue to receive widespread press attention. Plaintiffhas been featured in articles in Gourmet

Magazine, Bon Appetit Magazine, The New York Times and New York Magazine.

22. Plaintiffs restaurants regularly attract celebrities such as Kim Kardashian,

Leonardo DiCaprio, Derek Jeter, Bradley Cooper and Robert DeNiro to movie premiere after-

parties,celebrity fundraisersandother star-studdedevents. A collection ofprintouts from theNew

York Magazine website featuring descriptions of these events are attached as Exhibit A

International businesspeople, movie, music and sports stars, super models, nobility, and other

luminaries make it a point to patronize and be observed at Cipriani restaurants. The high society

events organized and catered by Cipriani Group are famous worldwide for their elegance,

impeccable style and good taste in food, decor, and entertainment.

23. In the U.S. alone, Cipriani Group has derived substantial revenues from its

restaurant and catering business, and food itemsmarketed under the CIPRIANI marks. This revenue

and the success of Cipriani Group is due to the goodwill and fame fostered by the style, luxury,

reputation, and image that the Cipriani Group has developed and maintains in the goods and services

offered

under

the

CIPRIANI

marks.

24. Plaintiff is the owner

of

the following federally registered trademarks that


8/22

incorporate the termCIPRIANI

(collectively,

the CIPRIANI Trademarks ), ofwhich copies of

the

registration certificates are

attached

asExhibit B:

Mar k

HARRY

CIPRIANI

CIPRIANI

FOOD

CIPRIANI

DOLCI

F7LT

CIPRIANI 42

STREET

CIPR IANI

WALL ST T

CIPRIANI

WALL

STREET

Registration

Date and

Numb e r

March

21 ,

2000

Reg

No.

2,330,449

November

30, 1999

Reg.

No.

2,297,069

July 23, 2002

Reg. No.

2,598,197

June

9,

2009

Reg. No.

3,633,745

May 25,

2004

Reg. No.

2,844,146

June 6, 2009

Reg. No.

3,633,746

Firs t

Use Date

November

8,

1985

June

1997

February 2,

2002

November 12,

1998

December,

1997

December 16,

2004

Goods and/ or

Services

r e s ta u r an t s e r v ic e s

meat extracts; preserved dried and cooked fruits

andvegetables; jellies; jams; eggs;milk, and

other dairy products (excluding ice cream, ice

milk and frozen yogurt), edible oils and fats;

fruit preserves, pickles; coffee; tea; cocoa;

sugar; rice; coffee substitutes;flour and

preparationsmade from cereals, namely, pasta,

spaghetti, bread, biscuits, cakes and pastry;

confectionery, namely, chocolate, candy,

sweets, honey; mustard; pepper; vinegar; sauces;

spices;wines, aperitifs, spiritsmade fromcorn,

rice

and fruit,

and

liqueurs.

r e s ta u r an t s e r v ic e s

catering services; provision

of

conference,

exhibition and meeting facilities; providing

banquet and social function facilities for

special occasions

restaurant and catering services

catering services; provision

of

conference,

exhibition and meeting facilities; providing

banquet and social function facilities for

special occasions


9/22

OPBIANI CLUB

REOSENCX t

November

22,2011

U.S. Reg.

No.

4,060,246

2007

restaurant, bar and cocktail lounge services

CIPRIANI

CLUB

RESIDENCES

August 20,

2013

U.S. Reg.

No

4,387,342

November 9,

2005

restaurant, bar and cocktail lounge services;

apartment, home and condominium services,

namely, promoting the interests

of

renters and

owners that reside in a community; leasing and

rental of apartments, homes and condominiums;

real estate brokerage services for apartments,

homes and condominiums; real estate

development services, namely, the development

of residential communities, namely, apartments,

homes and

condominiums

and ho te l s and

commercial properties, namely, industrial

building, office and retail space.

CARPACCIO

ALLA

CIPRIANI

March 20 ,

2007

U.S. Reg No.

3,219,820

November 1,

1985

Italian beef dish consisting mainly of thin

slices of raw

beef

and garnish

CIPRIANI

DOWNTOWN

July 19, 2011

U.S. Reg.

No

3,996,511

March

1, 1996

r e s taurant se rv ices

B.

Defendants '

Unlawful

Acts

an d Willful Infringement

25. Defendants have been manufacturing, distributing, marketing, promoting,

offering for sale and selling their food products to unlawfully capitalize on the fame of the

CIPRIANI Trademarks. Defendants have beenoffering for sale and selling their products online and

in the retail locations

of

national and regional chains such as Walmart, Price Chopper and Giant

Eagle. Copiesof listings for Defendants' foodproducts on thewebsites

of

Walmart andGiantEagle

supermarket are attached as Exhibit C


10/22

26. Defendants operate a website at through which

consumers can order their products for shipment anywhere in the United States. A copy of the

product listingpageforDefendants' website,whichstates OrderOnline repeatedly, is attachedas

Exh ib i t

P

27. Upon information and belief, Defendants have made a concerted effort to

associate their inferior products with Plaintiffs products.

28 .

Defendants have established a website

that

sells

customized foodproducts online ( Editable Eatables ). The following is a true andcorrect clipping

from the WHOis database record for , a copy

of

which is attached in its

entirey asExhibit E, with the contact information forthe registrant

of

thewebsite. The registrantis

defendant Johnson, who lists her email address as :

Registrant

Name:

nnette ohnson

Registrant Organization: 1

Registrant Street: 1050

Northfield

Drive

Registrant

City: urora

Registrant State/Province: IL

Registrant Postal

Code: 0505

Registrant

Country: US

Registrant Phone: 1 6307814548

Registrant;

Phone

Ext:

Registrant: Fax:

Registrant; Fax Ext:

Regist rant

Email: salesciprianispasta com

29. The following is a true and correct clipping from Defendants' Editable

Eatables' webpage for Pasta and Sauce Dinner, a copy

of

which is attached in its entirety as

Exhibit F. The product description features a photo

of

Defendants' infringing pasta product next to

Plaintiffs Cipriani Food pasta sauce, under Defendants' Cipriani's Pasta and Sauce banner and

above the text Est. 1929. Plaintiffs product features its registered trademark CIPRIANI FOOD

and the bartender design that is the central feature

of

many of Plaintiffs CIPRIANI Trademarks.

8


11/22

The product name Cipriani's on Defendants' pasta

is angled

such

that

it

is

partially blocked by

Plaintiffs

product, so that Plaintiffs CIPRIANI marks are featured. The product package

is on

sale

for

3.00,

a

fraction

ofthe

actual

price

ofPlaintiffs

authentic product:

Pasta

and Sau ce

Dinner

iv;

In

SKU

Availability:

In Stock

Quantity:

1000000 pes

Qty:

|1

3.00

Add To Compare | Add To Wishlist

Feed a Family of Three

30. This webpage demonstrates Defendants' knowing

and

willful efforts to

infringe onPlaintiffs superior products and

name.

C. The

Irreparable

Harm

31. It has taken decades of dedication, hard work and consistent customer

satisfaction forPlaintiffs CIPRIANI Trademarksto become famous. Defendants' blatanteffortsto

appropriate Plaintiffs business goodwill,

name

and mark have resulted in

Plaintiff

being associated

with foodproductsoverwhichPlaintiffhas no control.

32. Plaintiffs CIPRIANI Trademarks are associated with elegance and

sophistication, and Defendants' products

are

deliberately undermining this reputation and


12/22

undercutting

Plaintiffs

prices

to

unjustly profit

offof Plaintiffs

good name.

33. There is evidence that the unlawful activities

of

Defendants have resulted in

actual confusion

amongst

consumers

astothe

source and

origin

of

Defendants' products.

34. The

following

is a trueandcorrect clipping from Amazon, thepredominant

online

retailer,

ofthe

product

page for

Defendants'

Cipriani's Pasta Vermicelli Egg Spaghetti Fine,

11.5 Ounce (Pack

of

12),

a

copy

of

which

is

attached

initsentirety as

ExhibitG

The

clipping

features

Amazon's customary Frequently

Bought

Together section, which shows thatconsumers

have

frequently bought

Defendants'

product in conjunction

with Plaintiffs

authentic Cipriani

Food

Tagliolini Extra Thin

Egg

Pasta product.

The

clipping

also shows

in

the

Customers

Who

Viewed

ThisItemAlsoViewed sectionthat consumersareviewingthePlaintiffs authentic CiprianiFood

products at the sametime as Defendants' product:

Frequently

Bought Together

Price for

both:

49.26

^jji

y+adf (^ftAUKJL tatJIAdd

both

to Wish list j

These itemsare shipped fromand soldby differentsellers. Show details

*

This

item: Cipriani's

Pasta

Vermacelli Egg

Spaghetti

Fine,

11.5-Ounce (Pack

of12)$40.06 ($0.29 / oz)

Cipriani

Food Tagliolini Extra

Thin Egg

Pasta8.82 Oz. $9.20 ($3.68 / 100 g) fBBIMIHBIg

Special Offers

and

Product

Promotions

Get a 75 Amazon.com Gift Card: Get the Discover it Cardand get a 75 00 Amazon.com GiftCard

more

Customers Who V iewed This

I tem

Also Viewed

Cipriani

Food

Pappardelle

Cipriani

Food

Tagliolini Cipriani

Food Tagliarelle

Cipriani

Food Tagliarelle

Extra

Thin

EggPasta, 8.82 Extra Thin EggPasta 8.82 Extra

Thin

Egg Pasta, 8.82 Extra

Thin

Egg Pasta8.82

oz Oz.

oz

oz

d2> 9.20

rww

-10.

\

$7.99 $7.99 $16.20

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35. Theaforesaid unlawful activities ofDefendantshaveresulted inconfusion in

the

marketplace

and have

already caused irreparable harm to

the

reputation and goodwill of

the

Plaintiff.

D.

Defendants' Notice of

Plaintiff s

Rights

36.

Plaintiff

filed

to register

the aforementioned HARRY CIPRIANI mark with

the United StatesPatentandTrademarkOffice ( U.S.P.T.O. ) on January 11, 1994.

37. Plaintiff filed to register the aforementioned CIPRIANI DOLCI and

CIPRIANI FOOD marks with the U.S.P.T.O. on May 5, 1997.

38.

Subsequent

to

these filings

byPlaintiff, Defendants' predecessor-in-interest

Cipriani Spaghetti

&Sauce Co., Inc. filed

to federally

register atrademark in CIPRIANI'S for pasta,

spaghetti, pasta

sauce

and spaghetti sauce

on

June

11,

1997,

but failed to respond to an Office

Actionfrom theU.S.P.T.Oand consequentlyabandonedthe application.

39.

Moreover,

Defendants would be on notice of Plaintiffs

rights

due to

Plaintiffs

international fame.

40.

Inanattempt to resolve thismatter, Plaintiff

sent

a

cease

and desist

letter

to

Defendants on May 28,2014, which put Defendants on

further

notice ofPlaintiff s

trademark

rights.

COUNT I

VIOLAT ION OF

15 U.S .C . 1114

(Trademark Infringement)

41. Plaintiff repeats and

realleges

each

allegation

inparagraphs 1to40hereofas

if fully set forth herein.

42. Plaintiffis the owner of all right,title and interest in and to theCIPRIANI

Trademarks heretofore alleged.

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43. Plaintiffput Defendants on notice

of

the

CIPRIANI

Trademarks and despite

such noticeDefendantshave continuedtheir infringing activities.

44.

The foregoing activities

of

Defendants

violate 15 U.S.C. 1114

(a).

Customers, prospective

customers and the trade are likely to be confused, deceived andmisled by

Defendants' actions, and to believe that there isan

association,

sponsorship or endorsement as a

consequence ofthose activities between Defendants

and

Plaintiff,

when

in fact

there

isnone.

45. The foregoing activities ofDefendants

infringe

the valuable

trademark

rights

of

Plaintiff in the CIPRIANITrademarks, for the improperbenefit

of

Defendants.

46. The acts

of

Defendants described herein were undertaken without the

permission, license or consent of Plaintiff.

47. Defendants'

foregoing activities

have irreparably damaged

Plaintiff

and have

further caused

Plaintiff

monetary

damages in an amount as yet unknown, but if Defendants'

foregoing

activities

continue, it

is

believed that the damage

to

Plaintiff will exceed 1,000,000.

Defendants' wrongful acts have caused and

will continue to

cause Plaintiffto

suffer irreparable

harm

for which it has no adequate remedy at law.

COUNT II

VIOLATION OF 15 U.S.C. 1125(a)

(False Designation

of

Origin)

48.

Plaintiff

repeats and realleges each allegation

in

paragraphs

1to

47

hereofas

if

fully set forth herein.

49.

The

foregoing activities

ofDefendants

infringe

the

CIPRIANI Trademarks,

creating the

impression

that

Defendants'

products

originate

from, are

sponsored or

endorsed by,

or

are associated

with

Plaintiff.

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50. The foregoing activities ofDefendants have caused and will continue to

causethepublicto believe that Defendants' productsoriginate

from,

are sponsored or endorsed

by, or are associatedwith Plaintiff.

51. The foregoing activities

of

Defendants are intended tomislead the public to

think that there is an association, sponsorshipor endorsement fromPlaintiff, and said activities take

control of the reputation and goodwill of the CIPRIANI Trademarks away from Plaintiff, the

proprietor of thegoodwill of theCIPRIANI Trademarks in theUnitedStatesand elsewhere in the

world.

52. The foregoingactivitiesofDefendantsconstitutea falsedesignation

of

origin,

with the intent to cause confusion and mistake, to deceive and mislead the public, and to improperly

benefit from Plaintiffs valuable trademark rights.

53. Plaintiffput Defendants on notice of the CIPRIANI Trademarks and despite

said notice Defendants have continued their infringing activities.

54. Defendants' said acts violate Section 43(a) of the Lanham Act, 15 U.S.C.

1125(a).

55. Defendants' foregoing activities have irreparably damaged Plaintiffand have

further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'

foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.

Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm


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COUNT

II I

VIOLATION

OF 15 U.S.C. 1125(c)

(Trademark Dilution)

56.

Plaintiff repeats and

realleges

each

allegation inparagraphs 1to

55

as iffully

set forth herein .

57. This cause of action arises under the Federal Trademark Dilution Act,

15

U.S.C. 1125(c).

58. Plaintiffs

CIPRIANI

Trademarks are famous as that term is defined in 15

U.S.C.

1125(c).

Defendants' said

acts in infringing

the CIPRIANI

Trademarks

for

its business

have diluted, or

are

likely to,

dilute the

distinctive

quality

of the CIPRIANI

Trademarks.

59. Defendants' use of a mark that is substantially similar to the CIPRIANI

Trademarks dilutes

the

distinctive quality of

said marks

by tarnishing orblurring, and is thereby

likelyto injurePlaintiff.

60.

Defendants'

foregoing

activities

have irreparably damaged Plaintiff

and

have

further caused

Plaintiff

monetary damages

in

an

amount

as

yet unknown,

but

if

Defendants'

foregoing activities continue, it

is

believed

that the

damage

to Plaintiff

will exceed 1,000,000.

Defendants' wrongful acts

have

caused and will continue to cause

Plaintiffto

suffer irreparable harm


COUNT IV

VIOLATION OF

15

U.S.C. 1125(a)

(Unfair Competition)

61. Plaintiff

repeats

and

realleges each

allegation in

paragraphs

1to 60

hereof

as

if

fully set forth herein.

62. Thiscauseofaction forunfaircompetition arisesunder 15

U.S.C.

1125(a).

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63. Defendants' acts alleged herein constitute unfair competition and will injure

the business reputation and business

of

Plaintiff.

64. Defendants' foregoingactivitieshave irreparablydamaged Plaintiffandhave


foregoing activities continue, it is believedthat the damage to Plaintiff will exceed $

1,000,000.

Defendants'wrongful actshavecausedandwillcontinueto causePlaintiffto sufferirreparableharm


COUNT

V

VIOLATION OF 15 U.S.C.

1125(d)

(Cybersquatting)

65. Plaintiffrepeats andreallegeseach allegation inparagraphs 1to 64hereofas


66. This cause of action for federal trademark cybersquatting arises under 15

U.S.C. 1125(d).

67. Defendants registered and have maintained a website at the domain name

with knowledge of Plaintiffs rights in the CIPRIANI Trademarks.

68. Defendants registered and have maintained the said domain name with the

intent to d ive rt cu stomer s f rom Plaintiff.

69. Defendants registered and have maintainedthis domain name with the intent

to profit from the fame and notoriety of the CIPRIANI Trademarks.

70. Defendants registered and have maintained this domain name despite the fact

that they own no intellectual property rights in any portion of the domain name.

71.

Fo r

the

reasons described herein

and to

be

discovered in this case, Defendants

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has acted in bad faith in registering and operating a website at the domain name

.


further caused Plaintiff monetary damages in an amount as yet unknown, but

if

Defendants'


Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm


COUNT

V I

VIOLATION OF NEW YORK GEN . BUS . LAW

360-1

(Injury to Business Reputation)

73. Plaintiffrepeats and realleges each allegationin paragraphs 1 to 72 hereofas


74. By reason

of

the practices and acts set forth above, Defendants have injured

Plaintiffs business reputation.

75. The foregoing activities

of

Defendants are without the permission, license or

consent

of

Plaintiffand, unless enjoined by this Court, Defendants will continue these practices and

acts, thereby harming Plaintiffs business reputation and causing Plaintiffimmediate and irreparable

injury.

76. Defendants' wrongful acts violate Section 360-1

of

the New York General

Busines s Law.




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Defendants' wrongful actshave caused andwill continue tocausePlaintiffto suffer irreparable

harm


COUNT

VII

UNFAIR

COMPETITION

AND

MISAPPROPRIATION

UNDER THE COMMON LAW

78. Plaintiffrepeatsandreallegeseachallegation inparagraphs1 to 77hereofas


79. The aforesaid activities ofDefendants misappropriate andtrade upon the fine

reputation and goodwill of Plaintiff, thereby injuring that reputation and goodwill, and unjustly

divert from Plaintiff to Defendants the benefits rightfully belonging to Plaintiff.

80. The aforesaid activities

of

Defendants constitute unfair competition, false

advertising and misappropriation as proscribed by the common law.

81. The

aforesaid activities

of

Defendants

have

resulted

in a

likelihood

of

confusion between Defendants' products and Plaintiffs products and services.

82.

The

aforesaid

activities

of

Defendants

have caused P la in ti ff

to

sustain

monetary damage, loss and injury.

83. The aforesaid activities ofDefendants have been

undertaken

in bad faith.

84. Defendants have engaged in and continues to engage in the foregoing

activities knowingly and willfully.



foregoing activities continue, it is believed that the damageto Plaintiffwill exceed $1,000,000.

Defendants'wrongfulactshavecausedandwillcontinueto causePlaintiffto sufferirreparable harm

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WHEREFORE,

Plaintiffprays for a judgment against Defendants as follows:

A. Finding that Defendants have infringed Plaintiffs trademarks in violation

of the Lanham Act, 15 U.S.C. 1114 and 15 U.S.C. 1125 (a) and Defendants are liable

therefor;

B. Finding that Defendants' actions constitute dilution of the CIPRIANI

Trademarks in violation of the Lanham Act, 15 U.S.C. 1125(c) and Defendants are liable

therefor .

C. Finding that Defendants' actions constitute a violation of New York

General Business Law 360-1and Defendants are liable therefor;

D. Finding that Defendants' actions constitute unfair competition and

misappropriation under the common law and Defendants are liable therefor;

E. Enjoining Defendants, preliminarily during the pendency

of

this action,

and permanently hereafter, from:

i. Infringing the CIPRIANI Trademarks in any manner;

ii. Misleading the public to think Defendants' products are associated

with, sponsored or endorsed by the Plaintiff;

iii. Selling their products under the name Cipriani or any other name

that is likely to cause confusion with Plaintiffs CIPRIANI Trademarks;

iv. Registering or operating any domain names that incorporate the

CIPRIANI Trademarks or are confusingly similar to the CIPRIANI Trademarks;

F. Directing Defendants to deliver to Plaintiff for destruction all promotional

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or advertising items in their possession that infringe the CIPRIANI Trademarks;

G. Finding that Defendants' actions constitute a violation of the Lanham Act,

15U.S.C. 1125 (d) and directing Defendants to transfer to Plaintiff any and all domain name

registrations that include the words ciprianis includingbut not limited to the

domain name registration;

H. Directing Defendants to account to Plaintiff for all profits resulting from

Defendants' infringing activities;

I. Awarding Plaintiff its damages from Defendants' wrongful acts;

J. Awarding Plaintiff three times the amount

of

Plaintiffs damages or

Defendants' profits, whichever is greater;

K. Awarding Plaint iff s tatutory damages;

L. Awarding Plaintiffs attorneys' fees and costs; and

M. Awarding Plaintiffsuch other and further rel iefas the Court may deem

just

and proper.

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JURY

DEMAND

Plaintiff demands a trial by jury on all facts so triable.

Dated: New York, New York

August 25, 2014

GOTTLIEB, RACKMAN & REISMAN, P.C.

AttornevAfor

Plaintiff

By:.

brgeA^ttlieb

(GG-5761)

[email protected]

Jonathan M. Purow (JP-0052)

[email protected]

270 Mad ison

Avenue

New York,

New

York 10016

Phone:(212)684-3900

Fax:

(212)684-3999

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Cipriani Group v. Cipriani Pasta

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