No Trademark for the Patsy’s of New York

(CN) - Neither of the Italian eateries in a long-running trademark dispute can lay claim to the "Patsy's" name, the 2nd Circuit ruled.

The three-judge panel upheld the injunction of U.S. District Judge Ramon Reyes, barring Patsy's Italian Restaurant and Patsy's Pizzeria from using the "Patsy's" name alone.

The Manhattan-based federal appeals court described the resolution as the "latest, longest, and perhaps even the last chapter in a long legal struggle involving a host of trademark and unfair competition claims over the name 'Patsy's.'"

Both eateries were opposed to an injunction because it "represented a compromise between their respective positions, an anathema to both," Judge Ralph Winter wrote for the unanimous panel.

"The considerations pro and con are rehashes of years of arguments that need to come to an end," he added. "We are completely confident that a remand would be unilluminating, delay the termination of this litigation needlessly, and merely lead to more fruitless, overlitigated proceedings."

An injunction barring use of the name would "minimize confusion," according to the 46-page decision.

"Having allowed the consumer confusion to develop, no party can now complain about the district court's attempt to minimize the confusion," Winter wrote. "This is particularly true given our earlier admonition to the parties that 'both sides ... would be well advised to minimize the risk of confusion by identifying their restaurants by the complete names: 'Patsy's Italian Restaurant' and 'Patsy's Pizzeria.'"

Both eateries have been in business for decades. Patsy's Italian Restaurant opened for business in 1944 on W. 56th Street, while Patsy's Pizzeria opened the first of its pizzerias on E. 118th Street in 1933.

According to the court's opinion, the businesses "coexisted without litigation" until both eateries decided to sell packaged sauce under the Patsy's name, "causing considerable consumer confusion."

In 2006, Patsy's Italian Restaurant and Patsy's Brand accused Patsy's Pizzeria and its associates of trademark infringement in connection with a pizzeria in Staten Island, which closed later that year, and another eatery in Syosset, N.Y.

After a jury trial, Judge Reyes made Patsy's Pizzeria in Syosset maintain a disclaimer stating that it was not affiliated with Patsy's Italian Restaurant.

The court affirmed all other challenges on appeal, including the District Court's "refusal to grant a new trial on the issue of whether Patsy's Pizzeria made fraudulent statements to the Patent and Trademark Office, as well as its refusal to vacate the jury's verdict that Patsy's Italian Restaurant did not fraudulently obtain its trademark registrations."

"We further affirm the District Court's refusal to reinstate Patsy's Pizzeria's trademark registration and its cancellation of Patsy's Italian Restaurant's trademark registrations," Winter wrote.

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