Zuppardi's Apizza, Inc v. Tony Zuppardi's Apizza, LLC et al

Filing 194

ORDER granting 94 Motion for Summary Judgment; granting in part and denying in part 96 Motion for Summary Judgment; denying 102 Motion for Summary Judgment; granting 158 Motion for Partial Summary Judgment. Signed by Judge Robert N. Chatigny on 9/29/2014. (Reardon, C)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
ZUPPARDI'S APIZZA, INC.,

:
:
Plaintiff,
:
:
v.
:
:
TONY ZUPPARDI'S APIZZA, LLC
:
d/b/a TONY ZUPPARDI'S APIZZA, :
:
and
:
:
THE ESTATE OF
:
ROBERT ZUPPARDI,
:
:
Defendants.
:

Case No. 3:10-CV-01363 (RNC)

RULING AND ORDER
This is a trademark case in which the parties have filed
motions for summary judgment.

For reasons that follow,

plaintiff's motion for partial summary judgment on defendants’
counterclaims [ECF No. 94] is granted, and its motion for
summary judgment on the issue of infringement [ECF No. 102] is
denied.

Defendants’ first motion for summary judgment [ECF No.

96] is granted in part and denied in part and the motion for
summary judgment on count four [ECF 158] is granted.
I. Background
The trademarks at issue in this case relate to a family
pizza business.

Dominick Zuppardi came to the United States in

1934, settled in West Haven, Connecticut, and opened a bakery.
1

In 1947 Dominick and his son, Anthony Zuppardi Sr., began
serving pizza out of a shop on Union Avenue.

They called their

establishment "Zuppardi's Apizza" ("Zuppardi's").

The business

has since moved two doors down on Union Avenue but otherwise
endures today.
Anthony Sr. and his wife, Frances, had four children.
son, Robert, began working at Zuppardi's in the 1960s.

A

Though

Anthony Sr. continued to have a hand in managing the business,
Robert became its sole owner in 1978 and its president in 1987.
Robert's sisters, Cheryl Zuppardi Pearce and Lori Zuppardi,
joined him as owners in 1988.
corporate structure in 2000.

Zuppardi's assumed its present
Zuppardi's Apizza, Inc. thereby

acceded to all right, title, and interest of its predecessors in
the marks "Zuppardi's" and "Zuppardi's Apizza," under which the
business had sold pizzas since 1947.

In its corporate form,

Zuppardi's continued in the two lines of business it had carried
on for decades: selling fresh pizzas to customers in its Union
Avenue location and selling frozen pizzas to restaurants and
shops in southern Connecticut.
The present dispute can be traced to 2002, when Robert's
poor health compelled him to reduce his role at the restaurant.
By 2005 he stopped working at Zuppardi's altogether.

In 2008,

his sisters bought his entire interest in the family business.
2

In 2005, as Robert's involvement in Zuppardi’s was coming to an
end, his son, Anthony Zuppardi III, who had once worked at
Zuppardi's, opened a pizza parlor in Wilmington, Vermont.
called it "Tony Zuppardi's Apizza" ("TZA").

He

In addition to

serving customers at its Wilmington location, TZA sold frozen
pizzas to restaurants and shops in Vermont, Massachusetts, and
Connecticut.

Robert helped his son by soliciting business from

Connecticut establishments, some of them old customers of
Zuppardi's.

TZA's pizza boxes and frozen pizza labels used

marks and trade dress quite similar to the ones Zuppardi's has
been using since the 1940s.

That similarity is the root of this

controversy. 1
In 2007, TZA filed a trademark application for the mark
"Tony Zuppardi's Apizza" and became the owner of U.S. Trademark
Registration No. 3549074.

Eventually Zuppardi's filed its own

applications, one for the mark "Zuppardi's Apizza" and one for
the stylized mark "Zuppardi's."

The United States Patent and

Trademark Office ("PTO") rejected the applications in September
2009, on the ground that the requested marks would too easily be
confused with the registered TZA mark.

Three months later

Zuppardi's filed a petition to cancel TZA's registered mark.

It

argued that it had been serving pizza under the requested marks
1

The boxes, labels and marks are reproduced in the Appendix.
3

since 1947.

TZA responded by surrendering its registered mark,

and the PTO granted the petition for cancellation.

As a result,

Zuppardi's now owns U.S. Trademark Registration Nos. 3888558
(for "Zuppardi's Apizza") and 3888782 (for the stylized mark
"Zuppardi's"). 2
Despite its victory before the PTO, plaintiff filed suit
against TZA and Robert Zuppardi in August 2010.

The amended

complaint – which reflects several changes in circumstances
since 2010, including the death of Robert Zuppardi and the
cessation of TZA's business – recites four counts against TZA
and Robert Zuppardi's estate.

The first alleges trademark

infringement and unfair competition in violation of section 43
of the Lanham Act, 15 U.S.C. § 1125; the second, violation of
the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen.
Stat. § 42-110a; the third, common law trademark infringement
and unfair competition; and the fourth, infringement of the
plaintiff's federally registered mark in violation of section 32
of the Lanham Act, 15 U.S.C. § 1114.

Plaintiff seeks

compensatory and punitive damages, attorneys' fees and an
injunction prohibiting TZA from further infringement.

2

TZA has

Plaintiff also owns Connecticut State Registration Nos. 23328
(for the trademark "Zuppardi's Apizza") and 23329 (for the
service mark "Zuppardi's Apizza").
4

counterclaimed for cancellation of plaintiff’s registered
trademarks.
Pending for decision are four motions for summary judgment.
The first, ECF No. 94, is the plaintiff's motion for summary
judgment on the counterclaims.

The second, ECF No. 96, is the

defendants’ motion for summary judgment on all four counts based
on laches.

The defendants also move for partial summary

judgment on the grounds that the plaintiff cannot prove damages,
plaintiff's registered marks should be cancelled, TZA enjoys
common law rights in the "Tony Zuppardi's Apizza" mark in
Vermont and Massachusetts, and plaintiff is not entitled to
attorneys' fees.

The third motion, ECF No. 102, is the

plaintiff's motion for summary judgment on the issue of
trademark infringement.

Finally, in the fourth motion, ECF No.

158, TZA argues that it has not infringed the plaintiff's
federally registered marks as a matter of law.
II. Discussion
The Court's role on a motion for summary judgment is to
determine whether the record presents triable issues of fact,
not to try them.

Summary judgment is properly granted only if

"the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter
of law."

Fed. R. Civ. P. 56(a).

A fact is "material" if it
5

influences the case's outcome under governing substantive law,
and a dispute is "genuine" if the evidence would permit a
reasonable jury to return a verdict for the party opposing the
motion.

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48

(1986).

In reviewing the record, the Court must view the

evidence in a manner most favorable to the nonmovant, resolving
all ambiguities and drawing all inferences in favor of the
nonmovant.

Gallo v. Prudential Residential Servs. Ltd. P'ship,

22 F.3d 1219, 1223 (2d Cir. 1994).
A. Plaintiff's Motion for Summary Judgment on the Counterclaims
In its answer to the amended complaint, TZA counterclaims
for cancellation of the plaintiff's registered trademarks.

It

argues that the "Zuppardi's Apizza" and stylized "Zuppardi's"
marks should never have been registered and should now be
cancelled.

Its argument rests on section 2(c) of the Lanham

Act, 15 U.S.C. § 1052(c), which provides that "[n]o trademark by
which the goods of the applicant may be distinguished from the
goods of others shall be refused registration . . . unless it .
. . [c]onsists of or comprises a name, portrait, or signature
identifying a particular living individual except by his written
consent . . . ."

TZA argues that the registered Zuppardi's

marks identify Anthony Zuppardi III, who is now living, and
Robert Zuppardi, who was alive when the marks were registered.
6

Plaintiff resists this argument on four grounds.

First, it

argues that Robert Zuppardi's estate lacks standing to assert a
claim under § 1052(c).

Second, it urges that to the extent the

counterclaim is based on the marks' identification of Robert
Zuppardi, the claim does not survive his death because the
statutory language refers only to "particular living
individual(s)."

Next, it argues that Robert consented to

registration of the marks.

Finally, it argues that neither

Robert nor Anthony III was sufficiently associated with
Zuppardi's Apizza to be "identif[ied]" by the marks as the term
is used in § 1052(c).

I agree with regard to the last ground.

1. Standing: Robert Zuppardi's Estate
A party lacks standing to bring an action under § 1052(c)
unless it shows, first, that it engages in commercial activity,
and, second, that it will suffer damages by association with the
contested trademark.

Rick v. Buchansky, 609 F. Supp. 1522, 1539

(S.D.N.Y. 1985); Societe Civile Des Domaines Dourthe Freres &
Philippe Dourthe v. S.A. Consortium Vinicole De Bordeaux Et De
La Gironde, 6 U.S.P.Q.2d 1205, 1207–08 (T.T.A.B. 1988).
According to the plaintiff, Robert Zuppardi never engaged in any
commercial activity of his own.

He simply worked for Zuppardi's

and, later, helped Anthony III at TZA.

7

Plaintiff argues that

Robert therefore lacked standing at the time he asserted his
counterclaims and his estate lacks standing now.
The defendants do not argue that Robert engaged in the sort
of commercial activity that confers standing under the twopronged test.

Rather, they argue that, as a defendant in this

action and counterclaim plaintiff, Robert's standing under §
1052(c) was "inherent."

I agree.

See Finanz St. Honore, B.V.

v. Johnson & Johnson, 85 U.S.P.Q.2d 1478, 1479 (T.T.A.B. 2007)
("As a counterclaim plaintiff, [defendant] need not allege its
standing to challenge the pleaded registrations because its
standing is inherent.").

Standing doctrine attempts to ensure

that a litigant has a legally sufficient interest in a case.
Robert Zuppardi had a sufficient stake in this case to satisfy
standing requirements by virtue of his status as a defendant.
2. Survival of the Counterclaims
Plaintiff argues that even if Robert was a proper
counterclaim plaintiff, his counterclaims do not survive his
death.

Section 1052(c) and Conn. Gen. Stat. § 35-11b(4) both

prohibit registration of a trademark that identifies a
"particular living individual."

According to the plaintiff,

this plain language settles the issue of survival and precludes
Robert's estate from maintaining his counterclaims.

Moreover,

plaintiff points out, cancelling the registered marks would
8

serve no useful purpose because Robert’s death removes any
barrier to plaintiff’s registering the marks again.

TZA does

not dispute this last point.
Plaintiff's argument is really two arguments, one based on
principles that govern the survival of actions and the other
based on standing.

With regard to the first, federal and state

common law govern survival unless "a statute directly addresses
the issue."

United States ex rel Colucci v. Beth Israel Med.

Ctr., 603 F. Supp. 2d 677, 680 (S.D.N.Y. 2009).

That the

statutes in question prohibit registration only of marks that
identify "living individual[s]" does not settle the issue of
survivability.

The quoted statutory language speaks to

requirements concerning registration, not requirements
concerning the maintenance of an action.

Because neither §

1052(c) nor Conn. Gen. Stat. § 35-11b(4) "directly addresses"
survivability, the question is governed by common law.
Plaintiff does not contest the defendants' argument that the
counterclaims survive under common law principles.
The second part of plaintiff's argument recognizes that the
limitation on the defendants' remedy – only cancellation is
available as a remedy – creates an oddity.

Even if the

plaintiff's registered marks are cancelled because they refer to
Robert Zuppardi, plaintiff can immediately re-register them
9

because Robert is deceased and therefore outside the protections
of § 1052(c) and § 35-11b(4).

This argument in essence raises

an issue of standing: it asserts that a favorable decision will
not redress the defendants' injury.
I think plaintiff’s ability to re-register the marks does
not entitle it to dismissal of the counterclaims for two
reasons.

First, as just discussed, Robert Zuppardi's estate is

a defendant in this action.

Plaintiff has alleged that Robert

infringed its registered marks.

Though the estate is a

plaintiff on the counterclaims, the counterclaims function in
the context of the overall action as defenses to the charge of
infringement.

Even though Zuppardi’s can re-register its marks,

the argument for cancellation nonetheless serves as a defense to
claims against the estate.
Second, plaintiff's ability to re-register the marks does
not vitiate the Court's power to grant defendants the relief
they seek.

The counterclaims seek cancellation of U.S.

Trademark Registration Nos. 3888558 and 3888782, along with
Connecticut Trademark Registration Nos. 23328 and 23329.
Court has the authority to cancel those marks.

This

That plaintiff

would be able to re-register the marks does not deprive the
estate of standing.

10

On this point Sprint Communications Co., L.P. v. APCC
Servs., Inc., 554 U.S. 269 (2008), is instructive.

In Sprint

Communications, assignees for collection brought suit on a debt.
An agreement with the assignor compelled them to remit to the
assignor the entire amount of their recovery.
Communications, 554 U.S. at 287.

Sprint

The defendant argued that the

assignees lacked standing because a favorable decision would not
redress any injury they suffered: the assignees would simply
turn over the money as required by their agreement.
held otherwise.

The Court

"What does it matter," asked the majority,

"what the [assignees] do with the money afterward?

The injuries

would be redressed whether the [assignees] remit the litigation
proceeds . . . donate them to charity, or use them to build new
corporate headquarters."

Id.

In Sprint Communications, the plaintiffs had no legal right
to retain (or even to control the disposition of) their
recovery.

Here the defendants' relief is subject to plaintiff’s

right to re-register its marks.

I read Sprint Communications to

stand for the proposition that in the redressability inquiry, a
court's horizon-line should be its own disposition of the case.
Because this Court has the authority to cancel the marks that
the defendants claim were improperly registered, the
requirements of standing are satisfied.
11

3. Consent
Plaintiff next argues that Robert Zuppardi consented to
registration of the marks.
observations.

It supports this argument with two

First, in 2003, Robert filed an application for

the mark "Zuppardi's Apizza, Inc." on behalf of Zuppardi's.
(This application was later abandoned.)

Second, in 2008, Robert

left the business and signed an agreement not to "interfere"
with its operations.

In doing so, plaintiff argues, Robert

impliedly consented to the registration of the marks Zuppardi's
was then using.

I am not persuaded that Robert should be deemed

to have consented on either ground.
With respect to the 2003 application, some cases hold that
consent to one application for registration applies as well to
later applications.

But in each of these cases, the consent of

the individual identified in the mark resulted in a successful
registration and a record of his consent.

The question was

whether the person who owned the registered mark was later
required to obtain consent for a second time when seeking to
register another mark identifying the same person.

See, e.g.,

In re McKee Baking Co., 218 U.S.P.Q. 287, 287 (T.T.A.B. 1983)
("[I]nasmuch as there is a valid and subsisting registration of
the portrait, in fact two such registrations, which clearly
state on their face that the required consent is of record, all
12

that is necessary to make the instant application complete is a
claim of ownership of those prior registrations.").

This case

is distinguishable because the 2003 application never resulted
in registration or a record of Robert's consent.

Plaintiff

points to no case law suggesting that Robert's 2003 filing
qualifies as consent with respect to the 2010 registration, and
I am aware of none.

Thus, plaintiff has not shown consent on

this ground.
I also think that consent should not be inferred from the
2008 agreement.

It is one thing to permit another to use one's

name as a mark, quite another to "relinquish all ownership
rights in one's name and agree to allow another to register
one's name."

In re D.B. Kaplan Delicatessen, 225 U.S.P.Q. 342,

344 (T.T.A.B. 1985).

Though Robert's agreement with the

plaintiff might fairly be taken to imply consent to use of the
marks in question, nothing in the contract suggests that Robert
thereby ceded to the plaintiff all ownership rights in his name.
See id. (finding consent to registration because the defendant,
Donald Kaplan, "ha[d] indicated in writing that the trade name
and service mark 'D.B. Kaplan Delicatessen' and any name or mark
confusingly similar thereto is the property of D.B.
Delicatessen, Inc., the applicant therein, and that Donald
Kaplan cannot use it in any subsequent business").
13

I conclude,

therefore, that Robert did not consent to registration of the
Zuppardi's marks.
4. Identification of Defendants in the Registered Marks
A person cannot oppose registration under § 1052(c) (or
under § 35-11b(4)) merely because he shares the name used in the
mark.

The statute’s protection extends only to persons who

would naturally be identified with a mark.

To that end, the

Trademark Manual of Examining Procedure provides:
A consent is required only if the individual bearing
the name in the mark will be associated with the mark
as used on the goods or services, either because: (1)
the person is so well known that the public would
reasonably assume a connection between the person and
the goods or services; or (2) the individual is
publicly connected with the business in which the mark
is used.
TMEP § 1206.02 (5th ed. Sept. 2007).

The first test, called the

"famous-person standard," protects those who might be falsely
associated with a mark because they have achieved general fame
or notoriety.

The second, the "publicly connected standard,"

concerns itself with persons who might be identified with a mark
because members of the public associate them with the field in
which the mark will be used.

The defendants focus on the

latter, arguing that both Robert and Anthony III are so
connected with the pizza trade that members of the public would
naturally assume they are identified in the Zuppardi's marks.

14

Whether the defendants are "publicly connected with the
business in which the mark is used" depends on what is meant by
"publicly connected" and "the business in which the mark is
used."

Plaintiff argues that the standard refers to the public

at large and to a general trade or field; defendants argue that
the standard is satisfied provided the people of West Haven
associate either Robert or Anthony III with Zuppardi's Apizza. 3
I think plaintiff has the better of the argument.
Though no case expressly holds that the "publicly
connected" standard refers to national reputation and general
field of business, the language of the cases and their results
are consistent with that interpretation.

In Martin v. Carter

Hawley Hale Stores, Inc., 206 U.S.P.Q. 931 (T.T.A.B. 1979), the
Trademark Trial and Appeal Board dismissed an opposition because
"no evidence ha[d] been offered to indicate that opposer enjoys
a reputation of such fame or notoriety as to be recognizable by
the public at large or that he is or ever was publicly connected
or associated with the clothing field."
933 (emphasis added).

Martin, 206 U.S.P.Q. at

Similarly, in Ross v. Analytical Tech.,

Inc., 51 U.S.P.Q.2d 1269 (T.T.A.B. 1999), the Board stated that

3

Plaintiff also argues that even Zuppardi's customers would not
identify the marks with Robert or Anthony III, the more natural
association being the patriarch Dominick. The intensely factual
inquiry is not properly resolved on a motion for summary
judgment.
15

"the issue narrows down to whether a public association of
opposer with the field of electrochemical analysis remains, so
that he may invoke the provisions of Section 2(c)."

Ross, 51

U.S.P.Q.2d at 1274 (emphasis added).
The plaintiff's best support comes from Krause v. Krause
Publ'ns, Inc., 76 U.S.P.Q.2d 1904 (T.T.A.B. 2005).

The

petitioner in that case claimed to be publicly connected with a
wide range of businesses, among them numismatics (the study or
collection of currency) and the collecting of both cars and
cutlery.

The Board found that the petitioner, who had once been

named the American Numismatics Association's Numismatist of the
Year, was publicly connected with the fields of numismatics and
car collecting.

But he was not publicly connected with “the

field of cutlery" because there was "no evidence that [he] ha[d]
authored or lectured in the field or that he ha[d] made
significant contributions to the field."
at 1911.

Krause, 76 U.S.P.Q.2d

The analysis in Krause demonstrates the difficult

showing required by § 1052(c).
Defendants argue that a "publicly connected" standard
construed as the plaintiff urges merely repeats, and thereby
renders superfluous, the "famous-person" test.

In other words,

any person with a truly national reputation within a certain
field is by definition "so well known that the public would
16

reasonably assume a connection between the person and the goods
or services."

TMEP § 1206.02 (5th ed. Sept. 2007).

I disagree.

The first route to protection under § 1052(c) is to achieve
general fame or notoriety.

The second is to acquire a national

reputation within a particular field.

The set of persons who

answer to the first description is not coextensive with the set
of persons who answer to the second.
the master numismatist in Krause.

An example is provided by

See Krause, 76 U.S.P.Q.2d at

1908 ("In the present case, the record fails to establish that
petitioner is so well known by the public in general that a
connection between petitioner and the mark KRAUSE PUBLICATIONS
would be presumed. . . . [T]he fields of numismatics, car
collecting, and publishing of hobby magazines are niche markets
and there is insufficient evidence to establish that
petitioner's activities in these fields are well known to the
general public.").

Under the law as applied in Krause, the

"famous-person" and "publicly connected" standards retain
independent meaning.
This interpretation of § 1052(c) settles the issue in favor
of the plaintiff.

The defendants do not argue that the public

at large ever associated Robert or Anthony III with the general
field of pizza-making.
argument.

Nor does the record support such an

Accordingly, the plaintiff's motion for summary
17

judgment with regard to the defendants' counterclaims is
granted.
B. Defendants' Motions for Summary Judgment
The defendants argue that they are entitled to partial
summary judgment on a number of issues for a variety of reasons.
They assert that the doctrine of laches bars plaintiff's entire
action, plaintiff cannot prove actual damages, plaintiff's
registered marks should be cancelled, TZA acquired common-law
rights in the "Tony Zuppardi's Apizza" mark in Vermont and
Massachusetts, and plaintiff cannot recover attorneys' fees.
Defendants also seek a judgment that they have not infringed
plaintiff's federally registered trademarks on the ground that
TZA closed its doors before the marks were registered.

Each

argument is addressed in turn below.
1. Laches
The equitable defense of laches operates to bar suit by a
plaintiff who sleeps on her legal rights.

In an action for

trademark infringement, laches requires proof that the plaintiff
had knowledge of defendant's use of its marks, that the
plaintiff inexcusably delayed taking action, and that permitting
the plaintiff to assert its rights would cause unfair prejudice
to the defendant.

Saratoga Vichy Spring Co., Inc. v. Lehman,

625 F.2d 1037, 1040 (2d Cir. 1980).
18

Laches presumptively

applies if a plaintiff fails to sue within the applicable
statute of limitations, Conopco, Inc. v. Campbell Soup Co., 95
F.3d 187, 191 (2d Cir. 1996), which in this case is
Connecticut's three-year statute for fraud actions, RBC Nice
Bearings, Inc. v. Peer Bearing Co., 410 Fed. Appx. 362, 367 (2d
Cir. 2010).

The defense of laches is equitable and as such will

not protect the defendant who infringes a mark in bad faith.
Black Diamond Sportswear, Inc. v. Black Diamond Equipment, Ltd.,
No. 06 Civ. 3508, 2007 WL 2914452, at *3 (2d Cir. 2007).
Defendants argue that plaintiff should have known about
TZA's use of the "Tony Zuppardi's Apizza" mark by January 2006.
Plaintiff has admitted that before that time, customers began to
ask whether Zuppardi's had opened a location in Vermont.
No. 97, Ex. O at 37–38.

ECF

TZA argues that if Zuppardi's had

bothered to look into the matter, it would have learned that
Anthony III was using the marks.

See RBC Nice Bearings, Inc.,

410 Fed. Appx. at 365 (plaintiff resisting a laches defense is
charged with knowledge of facts reasonable investigation would
have revealed).

Plaintiff responds that a few stray questions

from customers did not put it on inquiry notice of TZA's
infringement, that the doctrine of "progressive encroachment"
provided it a measure of latitude in determining when to defend
its rights, and that the defendants cannot obtain equitable
19

relief because they infringed in bad faith.

I agree that

genuine issues of material fact on this final point preclude
summary judgment.
In the Second Circuit, a party who uses a mark knowing
another is using it does not necessarily act in bad faith.
Rather, "[i]n the trademark context, bad faith requires a
showing that the junior user 'inten[ded] to promote confusion or
exploit [the senior user's] good will or reputation.'"

RBC Nice

Bearings, Inc., 410 Fed. Appx. at 366 (quoting Star Indus., Inc.
v. Bacardi & Co., 412 F.3d 373, 388 (2d Cir. 2005)).

Defendants

submit that no reasonable juror could infer that TZA acted with
intent to confuse the public or exploit the plaintiff's
reputation when it adopted the "Tony Zuppardi's Apizza" mark in
Vermont.

However, they have not demonstrated that they are

entitled to prevail on this point as a matter of law.
"Subjective issues such as good faith are singularly
inappropriate for determination on summary judgment," American
Int'l Group, Inc. v. London Am. Int'l Corp., 664 F.2d 348, 353
(2d Cir. 1981), and plaintiff has adduced sufficient evidence to
raise a genuine dispute about whether Robert Zuppardi and TZA
acted in good faith.

Robert’s deposition testimony shows that

he arranged to obtain TZA's pizza boxes and frozen pizza labels
by calling the same printer who produced the plaintiff's
20

materials and asking the printer "to do me up a label like I
used to use for the frozen pizzas [made by Zuppardi's]."
No. 90, Ex. 1 at 120–121.

ECF

As a result, TZA's boxes and labels

were very similar to the ones used by Zuppardi's.

Moreover,

Robert admitted during his deposition that he participated in
TZA's business by selling frozen pizzas to some of the same
Connecticut establishments that had previously ordered from
Zuppardi's.

Id. at 75.

Evidence in the record indicates that

in dealing with these establishments, Robert did not disclose
that he was no longer affiliated with Zuppardi's of West Haven.
ECF No. 90, Ex. 6 at 16.

Finally, plaintiff has produced

evidence tending to show that Anthony III endeavored to inform
his Vermont customers of an association between TZA and
Zuppardi's.

ECF No. 90-22, Ex. 21 (stating on a menu, "Tony has

dreamed of bringing Zuppardi's Apizza to the area.").
Viewing the evidence in a manner most favorable to the
plaintiff, as the Court must, a jury could infer that by
adopting the "Tony Zuppardi's Apizza" mark and trade dress,
defendants sought to exploit customer confusion and trade on the
plaintiff's goodwill.

Thus, defendants' motion for summary

judgment on the ground of laches will be denied.
2. Lost Profits

21

A plaintiff who makes out a claim of trademark infringement
is not necessarily entitled to a damages award.

Liability for

infringement is premised on the likelihood of confusion, but
likelihood of confusion does not by itself support an award of
damages. 4 Instead, a plaintiff seeking damages for infringement
must show the amount of profits it lost due to customer
confusion so that the damages award is not too speculative. 5
Victoria Cruises v. Changjiang Cruise Overseas, 630 F. Supp. 2d
255, 261–62 (E.D.N.Y. 2008).
Plaintiff alleges that when TZA began to do business in
Connecticut, seven establishments that had formerly purchased
its frozen pizzas started ordering them from TZA instead.

ECF

No. 90-27 at 3. 6 According to the plaintiff, its sales to these

4

The same principle applies to the plaintiff's common law and
CUTPA claims. The question of lost profit damages is therefore
addressed the same way with respect to each count. See Nabisco
Brands, Inc. v. Kaye, 760 F. Supp. 25, 29 (D. Conn. 1991);
Engdall v. Wadsworth, No. 4103913, 2007 WL 2756968, at *4 n.3
(Conn. Super. 2007) ("Since the Model Bill is patterned after
the Lanham Act, it is appropriate for a court in interpreting .
. . state law to rely upon federal case law interpreting the
Lanham Act.") (quoting J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition (4th ed. § 22:7)).
5
Section 35 of the Lanham Act, 15 U.S.C. § 1117, also permits a
prevailing party to recover "profits acquired by the defendant
through its infringing use," costs, and "in exceptional cases,
reasonable attorneys' fees." The question of attorneys' fees is
addressed below. The plaintiff's theory of damages premised on
TZA's profits was precluded by this Court in ECF No. 137.
6
The establishments (all restaurants or bars in southern
Connecticut) are Michael's Café, Mama Dells, Lake View,
Stonehouse, Country Tavern, Sheppards, and Pete's Place.
22

customers ceased entirely around 2007, entitling it to the
profits it would have made on the accounts between 2007 and 2010
if it had not lost them to TZA.

The defendants argue that

plaintiff has not adequately proven lost profits with respect to
any of the seven accounts.

I agree.

a. Actual Confusion
A plaintiff seeking damages for trademark infringement
ordinarily must prove actual confusion.

Int'l Star Class Yacht

Racing Ass'n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753
(2d Cir. 1996). 7

This case is no exception.

To survive the

defendants' motion, then, plaintiff must produce evidence
sufficient to permit the inference that the customers who
switched to TZA were confused about the source of their frozen
pizzas.
Plaintiff has carried this burden with regard to one
customer but not the others.

Plaintiff offers three pieces of

evidence to show that its former customers were actually
confused by TZA's use of the "Tony Zuppardi's Apizza" mark.

The

first is that TZA's boxes and labels were almost identical to
the ones used by Zuppardi's.
7

ECF No. 90-1 at 28.

The second is

Some Second Circuit precedent stands for the proposition that
proof of a defendant's intentionally deceptive conduct creates a
rebuttable presumption of actual confusion. See, e.g., Boosey &
Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481,
493 (2d Cir. 1998). Plaintiff does not make this argument and
relies instead on proof of actual confusion.
23

Robert Zuppardi's admission that he did not personally notify
TZA's customers that he no longer worked for Zuppardi's.

Id.

The third concerns testimony from an owner of Country Tavern,
William Richards O'Neill, indicating that he was unsure about
the relationship between TZA and Zuppardi's at the time he was
ordering frozen pizzas from TZA.

ECF No. 90 at 22–24.

The first two items of evidence, which relate to likelihood
of confusion, do not prove actual confusion.

In a trademark

infringement case, the basic distinction between the proof
required for liability and the proof required for damages is
that the latter demands a showing of actual confusion.

The

similarity of the marks and Robert's admission do not prove that
any of the customers who switched to TXA were actually misled.
The evidence of O'Neill's confusion requires further
analysis.

In his deposition O'Neill stated that when he began

working at Country Tavern in 2009, a company called "Zuppardi's"
supplied the restaurant with frozen pizzas.
at 14.

ECF No. 90, Ex. 6

O'Neill regularly took telephone calls from a person who

would say, "Hi this is Tony, wondering if you have a pizza
order."

Id. at 15.

At the time he "didn't know one way or the

other" whether the "Tony" from whom he was ordering frozen
pizzas was affiliated with Zuppardi's of West Haven.

Id. at 16.

He did know, however, that his pizzas were coming from Vermont
24

and not Connecticut.

The calls from "Tony" ceased abruptly when

TZA stopped doing business in 2010.

At that time O'Neill placed

a call to Zuppardi's in West Haven to "inquire[] if that
Zuppardi's Pizzeria did a frozen pizza."

ECF No. 101-12, Ex. L

at 54.
According to the plaintiff, O'Neill's deposition testimony
shows that he was confused about the relationship between TZA
and Zuppardi's when he was placing orders with TZA.

It

characterizes O'Neill's phone call to Zuppardi's as an inquiry
into why the calls from "Tony" had stopped and reasons that he
would not have contacted Zuppardi's with this question unless he
had thought that "Tony" and Zuppardi's were connected.

The

defendants counter that O'Neill knew all along that his pizzas
were coming from Vermont and that he contacted Zuppardi's merely
to find a new source of frozen pizza after TZA stopped calling.
On this record, whether O’Neill was confused about the
source of his pizzas cannot be resolved as a matter of law.

The

purpose of his phone call to Zuppardi's bears heavily on the
issue of his confusion, and there is a genuine dispute about why
he placed the call.

Viewing the evidence in a manner most

favorable to the plaintiff, a jury could reasonably infer that
O’Neill called to find a new vendor.

25

But it could also infer

that he called because he wanted to know why Zuppardi's had
stopped soliciting his pizza orders.
Though the evidence permits an inference of actual
confusion on the part of O’Neill, it does not support such an
inference as to any of the other accounts.
purchasing agent only for Country Tavern.

O'Neill was the
With respect to the

six other accounts, plaintiff has offered no evidence of actual
confusion.

Even if a jury found that O'Neill was confused about

the relationship between TZA and Zuppardi's, it could not
reasonably infer that purchasing agents at the other
establishments, about whom Zuppardi's offers no information at
all, were similarly misled.

See Savin Corp. v. Savin Group, 391

F.3d 439, 459 (2d Cir. 2004) ("A single 'anecdote[] of confusion
over the entire course of competition,' however, 'constitute[s]
de minimis evidence insufficient to raise triable issues.'")
(quoting Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269
F.3d 114, 124 (2d Cir. 2001)). 8

8

The record evidence offered by the defendants points in the
opposite direction. The plaintiff's Rule 30(b)(6) witness
testified that Stone House was not confused about the source of
its pizzas. ECF No. 101-15, Ex. O at 172. A report offered by
the defendants (the admissibility of which is unchallenged by
Zuppardi's) indicates that Lake View and Sheppards ordered
pizzas from Robert knowing that he had left Zuppardi's. ECF No.
101-7, Ex. G at 2. Finally, the plaintiff admits that it never
did business with Pete's Place. ECF No. 90-1 at ¶ 75.
26

In sum, the evidence regarding O'Neill's alleged confusion
presents a triable issue.

However, the lack of evidence of

actual confusion as to the other accounts entitles the
defendants to summary judgment on plaintiff’s claim for lost
profits with regard to those accounts.
c. Proof of Lost Profits
A plaintiff seeking lost profits in a trademark
infringement case must prove the amount of the loss.

The amount

of loss is "calculated by estimating the revenue lost due to the
infringing conduct and subtracting what it would have cost to
generate that revenue."
262.

Victoria Cruises, 630 F. Supp. 2d at

This requires the plaintiff to establish a "pre-

infringement 'base line' . . . to predict what revenue plaintiff
would have generated absent the infringement."

Id.

Such proof

generally takes the form of an account of sales over some period
of years before the alleged infringement began.

See Lindy Pen

Co. v. Bic Pen Corp., 14 U.S.P.Q.2d 1528, 1532 (C.D. Cal. 1989)
(denying the plaintiff's damages claim because it failed to
establish an adequate sales baseline).

A plaintiff need not

prove lost profits with precision, but must identify "an
evidentiary basis on which to rest such an award."

Vuitton Et

Fils S.A. v. Crown Handbags, 492 F. Supp. 1071, 1077 (S.D.N.Y.
1979), aff'd mem., 622 F.2d 577 (2d Cir. 1980).
27

There is no sound basis in the summary judgment record in
this case to support an award of lost profits.

Plaintiff has

arguably carried its burden of establishing a pre-infringement
sales baseline by providing Cheryl Zuppardi Pearce's "best
estimate" of its monthly sales on the seven accounts prior to
TZA's alleged infringement.
No. 90-27, Ex. 28 at 4.

See ECF No. 90-25, Ex. 24 at 6; ECF

But plaintiff is not entitled to

recover for lost sales; it is entitled to recover lost profits.
On this record, a jury would have to engage in speculation in
order to make such an award.
Plaintiff seems to implicitly concede that it is unable to
establish lost profits with satisfactory proof.

It explains its

predicament by pointing out that Robert Zuppardi was responsible
for keeping its books between 2003 and 2005.

ECF No. 90 at 26.

Plaintiff offers no authority to support the proposition that
Robert's performance while still an agent of Zuppardi's should
relieve it of its burden to produce evidence supporting its
damages claim.

In the absence of such authority, plaintiff's

inability to adduce sufficient evidence of lost profits provides
a final ground on which to grant defendants' motion for summary
judgment.

Plaintiff has not shown that it is entitled to

recover the profits it claims to have lost even with regard to
Country Tavern.
28

3. Cancellation Under 15 U.S.C. § 1052(c)
For reasons discussed above, plaintiff is entitled to
summary judgment on defendants' cancellation counterclaims. For
those same reasons, defendants' motion for summary judgment on
the counterclaims is denied.
4. TZA's Common-Law Rights in Massachusetts and Vermont
Defendants next argue that summary judgment should enter on
TZA's common law rights in the "Tony Zuppardi's Apizza" mark in
Massachusetts and Vermont.

TZA's argument rests on the Tea Rose

- Rectanus doctrine, which holds that federal registration of a
mark does not impair the preexisting common law rights of junior
users.

Under Tea Rose - Rectanus, plaintiff holds its

registered marks subject to the rights TZA acquired prior to
plaintiff’s federal filing if TZA used the marks in
geographically remote areas and in good faith.

Tuccillo v.

Geisha NYC, LLC, 635 F. Supp. 2d 227, 245 (E.D.N.Y. 2009). 9
Plaintiff offers no argument that at the time TZA began to
use the marks in question, Massachusetts and Vermont were not
remote areas.

(Remoteness, under Tea Rose -Rectanus, is a

question not of geographic distance but of a mark's strength.
If the senior user's mark has not achieved secondary meaning in

9

It is undisputed that TZA was using the "Tony Zuppardi's Apizza"
mark in Massachusetts and Vermont before Zuppardi's filed on
June 23, 2009.
29

the area where the junior user operates, the area is remote.
McCarthy, McCarthy on Trademarks § 26:25.)
that TZA acted in bad faith.

But it does contend

Defendants respond that TZA did

not act in bad faith when it used the "Tony Zuppardi's Apizza"
mark in a remote area, for in Massachusetts and Vermont there
were no Zuppardi's customers to confuse and no Zuppardi's
goodwill to exploit.
Defendants’ argument tends to write the good faith
requirement out of the Tea Rose - Rectanus test.

Because the

doctrine defines remoteness according to the unlikelihood of
confusion, no junior user in a remote area can act in bad faith
as long as bad faith requires the intent to confuse.

That

holds, anyway, if the lack of intent to confuse can be inferred
from the unlikelihood of confusion – an inference the defendants
urge.

See ECF No. 97 at 33 ("Further, Tony Zuppardi

indisputably adopted such mark and initiated its use in
Wilmington, Vermont which was geographically remote with respect
to Plaintiff's pizzeria . . . . Tony Zuppardi therefore
indisputably adopted his mark in good faith.").)

I decline to

collapse the two prongs of Tea Rose -Rectanus into one, which
other courts in the Second Circuit also have declined to do.
See Tuccillo, 635 F. Supp. 2d at 246–47 ("Because the Court has
made the factual finding that Tuccillo was aware of Geisha's use
30

of the mark when he copied it, he did not have the requisite
good faith when he adopted the mark . . . .").

If good faith is

defined as lack of knowledge of the senior user's mark, TZA
admittedly did not act in good faith.
Moreover, even assuming bad faith requires a showing of
intent to confuse or exploit, genuine factual disputes preclude
summary judgment on this point.

As discussed above, a jury

could reasonably find that TZA set out to exploit the
plaintiff's goodwill.

TZA reached into Connecticut to do

business with plaintiff's former customers and did so using very
similar marks and trade dress.

ECF No. 90, Ex. 1 at 120–21.

Its dealings in Vermont and Massachusetts, viewed most favorably
to plaintiff, are consistent with an intent to capitalize on the
Zuppardi's name.

TZA's Wilmington menu proclaimed Tony's

"dream[] of bringing Zuppardi's Apizza to the area," and after
Robert left Zuppardi's he told his Vermont distributor that he
had a restaurant in West Haven.
90-8, Ex. 7 at 69–70.

ECF No. 90-22, Ex. 21; ECF No.

This evidence supports an inference of

bad faith as the defendants define the phrase.

Other evidence,

including the unlikelihood that Vermont or Massachusetts
customers would have known of Zuppardi's of West Haven, points
in the other direction.
Court.

The question is for a jury, not the

Defendants' motion for summary judgment concerning TZA's
31

common law rights in Massachusetts and Vermont is therefore
denied.
5. Attorneys' Fees
Defendants next argue that they are entitled to summary
judgment concerning plaintiff's claim for attorneys' fees.
Plaintiff seeks fees on its Lanham Act and CUTPA claims. 10

Fees

are not available for its claims under the common law. 11
Bernhard-Thomas Bldg. Sys., LLC v. Weitz Co., LLC, 2011 U.S.
Dist. LEXIS 125924, at *9 (D. Conn. Oct. 31, 2011).
Section 35 of the Lanham Act permits an award of attorneys'
fees to the prevailing party in "exceptional" cases.
§ 1117(a).

15 U.S.C.

In the Second Circuit, a case is "exceptional" and a

fee award proper if the prevailing party proves "fraud or bad
faith."

Conopco, Inc., 95 F.3d at 194 (quoting Twin Peaks

Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1383
(2d Cir. 1993)).

Exceptionality is a necessary condition for a

fee award, but it is not always sufficient.

10

An award of fees

The claims are, again, assessed under the same standard.
Engdall, 2007 WL 2756968, at *4 n.3.
11
The plaintiff also seeks fees for the proceeding before the
PTO. This claim finds no support in law. CUTPA does not
authorize fees based a fraudulent submission to the PTO. The
Argus Research Group, Inc. v. Argus Media, Inc., 562 F. Supp. 2d
260, 279 n.9 (D. Conn. 2008). As for the Lanham Act claims, the
inability of a claimant to petition the PTO for fees, see 37
C.F.R. § 2.127(f), strongly suggests that litigants should not
be able to obtain them in a roundabout manner by using a
different federal law.
32

rests in the court's discretion in any case.

Fifty-Six Hope

Road Music, Ltd. v. A.V.E.L.A., Inc., 915 F. Supp. 2d 1179, 1186
(D. Nev. 2013).

In determining whether to grant fees, the court

may consider a host of non-exclusive factors, including "the
nature and extent of the relief obtained, the unlawfulness of
each defendant's conduct, whether the relevant area of law is
unclear, whether infringement or willfulness was a close
question, whether each defendant intended to deceive or confuse
the public . . . whether the plaintiff suffered actual damage,"
and the culpability of the defendant's behavior.

Id.

On this record, issues of fact germane to the fees inquiry
remain to be settled.

Most prominent among these is the

threshold question of the case's exceptional nature.

But even

if these factual disputes were settled in the plaintiff's favor,
this Court would in its discretion decline to award fees.
As just mentioned, courts determining whether to award
attorneys' fees can look to the culpability of the alleged
infringer's conduct.

This is so even if the threshold showing

of bad faith has been made.

Courts have decided against

awarding fees in cases involving defendants who acted with a
great deal more culpability than Robert or Anthony III.

In

Fifty-Six Hope Road, for instance, one defendant continued to
infringe the plaintiff's trademark even after the plaintiff
33

advised him of the violation and sent him a cease-and-desist
letter.

Id.

Yet the court determined that it would be improper

to charge the defendant with the plaintiff's legal fees.

Id.

Here, there is no evidence to indicate that TZA continued in its
course of conduct after learning about the plaintiff's
objections.

In fact, the opposite is true.

TZA voluntarily

surrendered its registered mark after Zuppardi's initiated a
cancellation proceeding and it stopped doing business soon after
Zuppardi's filed this lawsuit.
The close nature of the legal issues presented by this case
also weighs heavily against an award of attorneys’ fees.

With

regard to the issue of bad faith, plaintiff has presented
evidence showing that TZA adopted a mark similar to its own and
used that mark in Connecticut, but TZA has countered with
evidence that Robert did so owing more to inertia than to an
intent to deceive anyone.

Similarly, plaintiff has shown that

Robert solicited frozen pizza orders from its former customers,
but the defendants have adduced evidence tending to demonstrate
that Robert attracted these customers by appealing to old
loyalties instead of by sowing confusion.

Moreover, TZA did the

lion's share of its business in Massachusetts and Vermont,
where, the parties agree, Zuppardi's was not well-known.

The

question of bad faith affects several of the legal inquiries in
34

this case, among them the issue of infringement (as well as the
question of the availability vel non of attorneys' fees).
this record a jury might find bad faith.

On

But it might find

otherwise and do so with eminent reasonableness.

The closeness

of this question, relevant on several doctrinal fronts, augurs
against a fee award.
Another factor weighing against an award of attorneys’ fees
is plaintiff’s inability to recover significant relief.

As

discussed above, plaintiff has not provided sufficient evidence
to support an award of lost profits.

Plaintiff also seeks to

enjoin TZA from using its marks, but TZA has not done business
since 2010.
In light of these considerations, even if a jury were to
find that TZA acted in bad faith, I would decline to award
attorneys' fees.

Accordingly, the defendants’ motion for

summary judgment with regard to attorneys’ fees will be granted.
6.

Infringement of the Federally Registered Marks
Count four of the amended complaint alleges that TZA

infringed plaintiff’s federally registered marks, U.S. Trademark
Registration Nos. 3888782 and 3888558, and seeks relief under 15
U.S.C. § 1114.

Plaintiff obtained these registrations in

December 2010.

Plaintiff admits that TZA discontinued its use

of the "Tony Zuppardi's Apizza" mark in October 2010.
35

ECF No.

102-1 at ¶ 48.

Noting that a party cannot infringe a federally

registered mark until it is registered, TZA argues that
plaintiff cannot obtain relief under § 1114.

Plaintiff counters

that even if TZA has not infringed its registered marks, it is
likely to do so in the future.

Citing Polo Fashions, Inc. v.

Dick Bruhn, et al., 793 F.2d 1132 (9th Cir. 1986), it argues
that "future infringement of a registered trademark . . . [is]
actionable and remedied by injunctive relief."

ECF No. 162 at

4.
In Polo Fashions, there was no dispute that the defendant
had infringed the plaintiff's registered mark in violation of §
1114.

See Polo Fashions, 793 F.2d at 1135 ("The defendants had

willfully violated Polo's trademark rights.").

The question was

whether the defendant's cessation of unlawful conduct precluded
injunctive relief, and it was on this point that the court held
that the possibility of future infringement warranted an
equitable remedy.

In this case, the precondition of

infringement is absent.

A plaintiff has no cause of action

under § 1114 until the defendant "use[s]" its registered mark in
commerce, and there is no evidence that TZA has so used the
plaintiff's registered marks.

See 15 U.S.C. § 1114(a).

a cause of action, plaintiff is entitled to no relief,

36

Without

injunctive or otherwise.

Thus, summary judgment will enter on

count four.
C. The Plaintiff's Motion for Summary Judgment on Trademark
Infringement
To prevail on its claims under section 43 of the Lanham
Act, CUTPA and the common law, plaintiff has to show that "it
has a valid mark entitled to protection and that defendant's use
of it is likely to cause confusion."

Gruner + Jahr USA Pub. v.

Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993); Nabisco
Brands, Inc., 760 F. Supp. at 29.

There appears to be no

dispute that the Zuppardi's marks are valid.

As personal names,

the marks are descriptive, and therefore not protected absent a
showing of secondary meaning.
§ 13:2.

McCarthy, McCarthy on Trademarks

Plaintiff has demonstrated secondary meaning, at least

in the area close to its West Haven location.

See Jewish

Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F. Supp. 2d
340, 344 (E.D.N.Y. 2007); ECF No. 102, Exs. 3 at 92, 15, & 22.
Defendants apparently concede this point.
The issue is whether on the undisputed facts, this Court
can say as a matter of law that TZA's use of the plaintiff's
mark was likely to cause confusion.

This inquiry is governed by

the eight-factor test set out in Polaroid Corp. v. Polarad
Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).

Under the Polaroid

test, a court must consider "the strength of [the senior user's]
37

mark, the degree of similarity between the two marks, the
proximity of the products, the likelihood the prior owner will
bridge the gap, actual confusion . . . defendant's good faith in
adopting its own mark, the quality of defendant's product, and
the sophistication of the buyers." 12
495.

Polaroid Corp., 287 F.2d at

Review of these eight factors is not mechanical, and a

plaintiff may prevail without proving all or even most of them.
Among the eight, the first three – the strength of the mark, the
similarity of the marks, and the proximity of the products – are
usually the most important.

Mobil Oil Corp. v. Pegasus

Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987).
I think plaintiff has demonstrated that the marks are
confusingly similar.

However, analysis of the Polaroid factors

requires resolution of factual issues that cannot be determined
as a matter of law on the present record.

Accordingly,

plaintiff’s motion will be denied. 13
1. The Strength of the Zuppardi's Marks

12

The parties do not address the quality of TZA's product, and
they agree that the question of TZA's "bridging the gap" (that
is, the likelihood it will expand its operation to compete with
Zuppardi's) is inapplicable on this record.
13
Defendants' filing on infringement is styled as an opposition
to plaintiff's motion, not a cross-motion for summary judgment.
But it argues that the undisputed facts show that it did not
infringe the plaintiff's marks as a matter of law. Factual
disputes defeat that argument, just as they defeat the
plaintiff's.
38

A mark's strength is its "tendency to identify the goods
sold under the mark as emanating from a particular, although
possibly anonymous, source."

McGregor-Doniger, Inc. v. Drizzle,

Inc., 599 F.2d 1126, 1131 (2d Cir. 1979).

When a mark is

descriptive, as in this case, its strength depends on the reach
and degree of its secondary meaning.

Brennan's, Inc. v.

Brennan's Rest., L.L.C., 360 F.3d 125, 132 (2d Cir. 2004). 14
Secondary meaning must be assessed within the relevant market,
which for a restaurant such as Zuppardi's is its "pool of actual
and potential customers."

Id.

Courts assessing the existence

of secondary meaning typically consider the senior user's
advertising expenditures, consumer studies, sales success,
unsolicited media coverage, attempts to plagiarize the mark and
the length and exclusivity of the mark's use.
Yellow Pages, 478 F. Supp. 2d at 344.

Jewish Sephardic

These factors should be

assessed with an eye toward the ultimate inquiry: whether, for
actual and potential customers across southern Connecticut, the
Zuppardi's marks chiefly signify a producer rather than a
14

Plaintiff argues that its marks are arbitrary, not descriptive.
(An arbitrary mark is inherently distinctive and stronger than a
descriptive mark because it makes "no reference to the nature of
the goods it designates." Virgin Enterprises, Ltd. v. Nawab,
335 F.3d 141, 148 (2d Cir. 2003). The law does not support the
plaintiff's position. McCarthy, McCarthy on Trademarks § 13:2
("Personal names are placed by the common law into that category
of noninherently distinctive terms which require proof of
secondary meaning for protection."); see also Abraham Zion Corp.
v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985) (same).
39

product.

See Centaur Commc'ns v. A/S/M Commc'ns, 830 F.2d 1217,

1221 (2d Cir. 1987).
The record supports the conclusion that the plaintiff's
marks were strong in the area close to its Union Avenue
storefront.

The defendants admit as much.

ECF No. 153 at 2.

But TZA sold mostly to establishments located at some remove
from West Haven, and those establishments presumably drew many
of their customers from towns other than West Haven.

This case

therefore requires a determination of whether the plaintiff's
marks were strong across a wider swath of southern Connecticut.
The parties have submitted a great deal of evidence
relevant to this inquiry.

Some of the evidence conflicts, and

even the undisputed facts permit a range of inferences.

For

instance, plaintiff offers deposition testimony indicating that
Zuppardi's advertised on the Internet and in local magazines.
ECF No. 102-2, Ex. 3 at 92–93.

Defendants counter with

testimony from the same witness suggesting that Zuppardi's
relies almost entirely on word of mouth to bring in business
because Anthony Zuppardi Jr. disliked print advertising.
No. 153, Ex. C at 96.

ECF

Plaintiff emphasizes that it enjoyed

unsolicited coverage in Connecticut Magazine when it received an
award for its food.

ECF No. 102-2, Ex. 3 at 93.

Defendants

respond that no evidence of consumer studies links that coverage
40

to public awareness about Zuppardi's.

Plaintiff argues that

TZA's copying of its mark is the sort of plagiarism that
indicates secondary meaning.

Defendants admit the copying but

assert that Robert adopted the mark for the sake of ease alone.
Plaintiff asserts that the sale of frozen pizzas to
establishments along the Connecticut coast extended the reach of
its name.

Defendants respond that, because those establishments

removed the labels from frozen pizzas before serving them, there
is no evidence that frozen pizza sales exposed the public to the
Zuppardi's marks.

ECF No. 153 at 23.

There is no reason to provide a longer list of the disputed
facts and competing inferences presented by the record.

The

strength of the Zuppardi's marks depends on what they signify in
the minds of Connecticut residents, and the evidence permits a
range of reasonable determinations and inferences on this score.
When "there are factual disputes with respect to some of the
factors . . . and a finding of secondary meaning can only be
made by a careful consideration of all six factors, with no
single factor being determinative, the question cannot be
decided as a matter of law, but is properly to be decided by a
jury."

New Colt Holding Corp. v. RJG Holdings of Florida, Inc.,

312 F. Supp. 2d 195, 209 (D. Conn. 2004).

Only by resolving

factual disputes and rejecting reasonable inferences can I find
41

that the plaintiff's marks were strong in the relevant market,
and the question is therefore not well-suited for resolution on
summary judgment.
2. The Degree of Similarity Between the Two Marks
The marks, which are reproduced in the Appendix, are
essentially identical in sound, meaning, and appearance.

See

Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
1570 (Fed. Cir. 1983).

The chief difference between the labels

used by plaintiff and the labels used by TZA is TZA's insertion
of the word "Tony" over the northwest corner of "Zuppardi's."
The defendants argue that this differentiates the two, but the
essential similarity of the marks far outweighs this
distinction.

See Edison Bros. Stores, Inc. v. Cosmair, Inc.,

651 F. Supp. 1547, 1555 (S.D.N.Y. 1987).

That TZA's design

incorporates the plaintiff's design in its entirety further
supports the conclusion that the marks are quite similar.

See,

e.g., Girls Clubs of America, Inc. v. Boys Clubs of America,
Inc., 683 F. Supp. 50, 53 (S.D.N.Y. 1988).

This factor favors

the plaintiff.
3. Proximity of the Products
This factor "concerns whether and to what extent the two
products compete with each other."

Cadbury Beverages, Inc. v.

Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996).
42

The plaintiff

points out that both parties dealt in frozen pizza in
Connecticut and argues that this clinches this factor in its
favor.

But the question is not so simple.

Analysis of product

proximity requires inquiry into "the nature of the products
themselves and the structure of the relevant market," Vitarroz
v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981), and the
market's structure depends on such factors as "the class of
customers to whom the goods are sold, the manner in which the
products are advertised, and the channels through which the
goods are sold," Cadbury Beverages, Inc., 73 F.3d at 480.
Appropriately subtle treatment of this factor calls for the
Court to consider the types of consumers who bought the parties'
frozen pizzas and the circumstances of their purchases.
With that in mind, I conclude that questions of fact
preclude a determination that this factor favors the plaintiff.
To be sure, plaintiff has adduced evidence showing that TZA sold
frozen pizzas to bars and restaurants in southern Connecticut,
just as plaintiff has done for years.

But defendants' evidence

shows that some of the purchasing agents at these establishments
knew Robert Zuppardi well and were aware that he had stopped
working at Zuppardi's.

ECF No. 101-7, Ex. G.

To the extent

that purchasing agents knew about Robert's shift in allegiance,
it cannot be said that Zuppardi's and TZA sold their goods
43

through the same channels: it would have been obvious to these
buyers that Robert was not selling as a representative of
Zuppardi's.

See Cadbury Beverages, Inc., 73 F.3d at 480.

Moreover, the parties dispute whether a customer who ordered a
frozen pizza at one of these establishments would ever have had
occasion to view the pizza's label or otherwise learn about its
origin.

See, e.g., id. at 480–81 (holding that the question of

proximity could not be resolved on summary judgment because of
fact questions about whether end-user customers regularly viewed
the defendant's logo when they purchased its product).

The

question of proximity is properly resolved by a jury.
4. Actual Confusion and Good Faith
For reasons previously discussed, issues of fact preclude a
determination with regard to these factors.
5. Sophistication of the Buyers
The more sophisticated a purchaser, the less likely she is
to be confused by the similarities between two competing
products.

Cadbury Beverages, Inc., 73 F.3d at 480.

The parties

address this factor only in passing, but it merits brief
consideration.

Nothing indicates that the consumers of

Zuppardi's fresh or frozen pizzas were overly sophisticated
buyers, but the parties dispute whether people who ordered
frozen pizzas ever saw their labels.
44

As for the establishments

that purchased frozen pies for resale, common sense suggests a
level of expertise beyond that of the end consumer.

More

importantly, though, those purchasers who knew about Robert's
departure from Zuppardi's should be considered quite
sophisticated, because their knowledge about personnel changes
on the part of other market participants would have made it
clear that TZA and Zuppardi's were distinct entities.

As has

been discussed, I decline to resolve the factual dispute on this
point.
III. Conclusion
Accordingly, it is hereby ordered:
-Plaintiff's motion for summary judgment on defendants'
counterclaims, ECF No. 94, is granted.
-Defendants' motion for summary judgment, ECF No. 96, is
granted on the issues of lost profits and attorneys' fees and
denied on the issues of laches, cancellation of the plaintiff's
registered marks, and TZA's common law rights in Massachusetts
and Vermont.
-Plaintiff's motion for summary judgment on infringement,
ECF No. 102, is denied.
-Defendants' motion for partial summary judgment as to
Count Four, ECF No. 158, is granted.
So ordered this 29th day of September 2014.
45

___________/s/______________
Robert N. Chatigny
United States District Judge

46

APPENDIX

PLAINTIFF

DEFENDANTS
Pizza Box Labels

Frozen Pizza Labels

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Marks

48