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Chickie’s and Pete’s Nails Competitor on Crab Fries

(CN) - A restaurant infringed on the crab fries at Chickie's and Pete's by placing a picture of the crustacean next to the word fries on its menus, a federal judge ruled.

There is no actual crab in the Philadelphia restaurant chain's signature side dish. The crab house and sports bar says it conceived the item soon after its 1977 opening while trying to figure out what to do with leftover crab seasonings in the winter months.

CPC Properties Inc., the chain's Wilmington, Del.-based parent, claims that it has spent millions of dollars marketing and promoting its crab fries trademark.

In a federal complaint last year, which the court noted came in at 85 paragraphs, CPC claimed that the menus and website of Dominic Inc.'s restaurant, Tony's Place, unlawfully show an image of a crab next to the word "fries."

Over the years, CPC has sued several other companies, including Chesapeake Inn, for infringing the crab fries mark.

Indeed CPC's predecessor-in-interest had sued Dominic for trademark infringement and other offenses on 13 years ago, but the parties settled on Oct. 16, 2002, with Dominic agreeing to stop using the terms "crab" and "crab fries" to describe its seasoned French fries.

CPC's complaint said that Dominic achieved the same commercial effect by depicting a crab next to the word fries.

The image of a crab falsely indicates to potential customers that the two restaurants are affiliated somehow or that CPC approved Dominic's advertising, the complaint stated.

CPC asserted claims for trademark infringement, false designation of origin, common law service mark infringement, unfair competition, unjust enrichment and trademark dilution.

A federal judge entered a stipulated preliminary injunction days after CPC filed suit, requiring Dominic to refrain from using the term "crab fries" in its sales or advertising, to remove any image of a crab near "fries" from its menus and website, and to immediately cancel advertisements using the image.

After multiple investigations, CPC alleged that Dominic had violated the injunction, and filed a motion for contempt on Sept. 6. The Eastern District of Philadelphia granted the motion the next month and awarded CPC attorneys' fees.

Once CPC moved for judgment on the pleadings this past May, Dominic responded that it "recognized the validity" of the complaint, but that it inadvertently violated the injunction.

Senior U.S. District Judge Berle Schiller partially granted CPC's motion last week, finding the allegations show a "likelihood of confusion."

"The complaint states that the mark is famous in the city of Philadelphia and throughout Pennsylvania, and that it has acquired this fame in large part due to CPC's extensive advertising efforts," Schiller wrote. "CPC further notes that Chickie's & Pete's was named the 'Best Sports Bar in North America' by ESPN Mobile in 2011, and that all of the Chickie's & Pete's locations that offer crab fries® prominently feature the trademark on signage and menus."

Dominic allegedly began using CPC's 35-year-old mark after it became famous, according to the ruling.

"Finally, CPC alleges that Dominic wrongfully and intentionally implied an affiliation between Dominic and CPC and lessened the capacity of the mark to identify and distinguish Chickie's & Pete's seasoned fries," Schiller wrote. This fact, accepted as true by the court, establishes both likely and actual trademark dilution."

The judge threw out CPC's unjust enrichment claim, however, finding that Dominic was not allegedly aware of any increased profits or other benefits, which it would not be "an unconscionable injustice" to let Dominic retain.

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