Beaver Equities Group, L.P. v. Grgurev et al

Filing 67

CONSENT DECREE, PERMANENT INJUNCTION AND JUDGMENT AGAINST ALL DEFENDANTS NOW, THEREFORE, in view of the pleadings on file in this case and upon stipulation of the Parties, the Court hereby finds the following: 1. This Court has subject matter jurisd iction over this action including, without limitation, the claims of trademark infringement, dilution, unfair competition, and cybersquatting under the Lanham Act. 28 U.S.C. §§ 1331, 1332, and 1338(a). This Court has subject matter jurisdic tion over the substantial and related state and common law claims for trademark disparagement, unfair competition, unlawful deceptive acts and practices, and intentional interference with prospective economic advantage, pursuant to 28 U.S.C. §&# 167;1338(b) and 1367(a). The Court has personal jurisdiction over Defendants as to this matter. Accordingly, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED as follows: 1. Defendants Have No Rights in the Delmonicos Marks. Defendants did not acquire own ership of any trademark rights in connection with operation of the Delmonicos restaurant at 56 Beaver Street in New York, because Defendants were then under contract with Plaintiff, such that all uses of the Delmonicos Marks by Defendants were under license from Plaintiff. 2. Infringement, Dilution, Cybersquatting, Trademark Disparagement, Unfair Competition, Unlawful Deceptive Acts and Practices, and Intentional Interference With Prospective Economic Advantage. The Delmonicos Marks belong to Pl aintiff and are distinctive and famous and are valid trademarks entitled to protection, at least, in connection with restaurant(s) and bar(s), and related goods and services. Defendants uses, that were not authorized by Plaintiff, of the Delmonicos M arks, registration and use of the URL www.delmonicos.com, and Defendants published written statements to the public and the media falsely indicating that Plaintiffs new tenants at the Delmonicos 56 Beaver Street location are imposters who are infring ing Defendants claimed rights in the Delmonicos Marks, have damaged Plaintiffs business, and have infringed Plaintiffs Delmonicos Marks under the Lanham Act and state law including New York law by creating a false designation of origin and misleading description and representation of fact, as well as a likelihood of confusion, mistake, or deception as to the affiliation, connection, or association of Defendants with Plaintiff, have also diluted at least some of Plaintiffs Delmonicos Marks under the Lanham Act and state law including New York law, have committed cybersquatting under the Lanham Act, have committed unfair competition and unlawful deceptive acts and practices against Plaintiff under the Lanham Act and state law including New Yo rk law, and have committed trademark disparagement and intentional interference with prospective economic advantage under state law including New York law. 14. Entry of Judgment. The Court expressly determines that there is no just reason for delay i n entering Judgment and pursuant to Federal Rule of Civil Procedure 54(a), the Court enters Judgment, jointly and severally, against all Defendants on all of Plaintiffs causes of action. The Clerk of Court is respectfully requested to close this case. IT IS SO ORDERED, ADJUDGED, AND DECREED. (Signed by Judge Mary Kay Vyskocil on 2/6/2024) (jca)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #:
DATE FILED: 2/6/2024

Civil Action No. 1:23-cv-02243-MKV

BEAVER EQUITIES GROUP L.P., a New
York Limited Partnership,

CONSENT DECREE, PERMANENT
INJUNCTION
AND
JUDGMENT
AGAINST ALL DEFENDANTS

Plaintiff,
v.
FERDO GRGUREV, OMER GRGUREV,
NATALIA GRGUREV, MICHELLE
GRGUREV, and ROBERT GRGUREV,
individuals, and OCINOMLED, LTD., a
New York Corporation,
Defendants.

WHEREAS, Plaintiff Beaver Equities Group L.P. (herein “Beaver Equities” or “Plaintiff”)
initiated this action against Defendants Ferdo Grgurev, Omer Grgurev, Natalia Grgurev, Michelle
Grgurev, and Robert Grgurev, and Ocinomled, Ltd. (“Ocinomled”) (herein collectively “Defendants”)
(Plaintiff and Defendants collectively “the Parties”), seeking judgment for trademark infringement,
dilution, cybersquatting, trademark disparagement, unfair competition, unlawful deceptive acts and
practices, and intentional interference with prospective economic advantage;
WHEREAS, on July 17, 2023, default was entered against all of the Defendants pursuant to
Federal Rule of Civil Procedure 55(a), and as such all allegations in the First Amended Complaint are
deemed admitted; [MKV]
WHEREAS, Beaver Equities owns various famous Delmonico’s marks, namely the word
“Delmonico’s,” the associated letter “D,” and the tag line “Since 1837” or “Est. 1837,” each standing
alone or as part of one or more logos, regardless of font, capitalization, color, or appearance, in
connection with restaurant and bar related goods and services (hereafter collectively the “Delmonico’s
Marks”);
WHEREAS, Defendants, have infringed upon and diluted the Delmonico’s Marks and
committed cybersquatting, trademark disparagement, unfair competition, and unlawful deceptive acts
1

and practices, against Beaver Equities;
WHEREAS, the Parties stipulate and agree to the entry of a permanent injunction in the form
set forth below;

[MKV]
NOW, THEREFORE, in view of the pleadings on file in this case, the default by defendants

thereby admitting the allegations, and upon stipulation of the Parties, the Court hereby finds the
following:
SUBJECT MATTER JURISDICTION
1. This Court has subject matter jurisdiction over this action including, without limitation,
the claims of trademark infringement, dilution, unfair competition, and cybersquatting under the
Lanham Act. 28 U.S.C. §§ 1331, 1332, and 1338(a). This Court has subject matter jurisdiction
over the substantial and related state and common law claims for trademark disparagement, unfair
competition, unlawful

deceptive

acts

and

practices,

and

intentional

interference

with

prospective economic advantage, pursuant to 28 U.S.C. §§1338(b) and 1367(a). The Court has
personal jurisdiction over Defendants as to this matter.

A. Delmonico’s – A Famous New York Landmark Owned by Plaintiff
2. This case is about Delmonico’s, the legendary and famous fine dining establishment
founded by the Delmonico family almost 200 years ago located at 56 Beaver Street in what is now
Manhattan’s Financial District. A “Findings and Designation” document generated on or about 2004
by the New York Landmarks Preservation Foundation states that “Delmonico's has occupied this site
[56 Beaver Street] since 1835 ….”
3. The New York Landmarks Preservation Foundation awarded Delmonico’s New York City
Designated Landmark Status in 2004, and that a plaque at Delmonico’s, attributed to the New York
Landmarks Preservation Foundation, states that Delmonico’s “was one of the first restaurants in the
United States to serve fine continental fare and was a favorite gathering place for New York society
and visiting dignitaries.”
4. The United States Department of the Interior entered Delmonico’s in the National Register
of Historic Places in 2007, noting in its records that in the words of an 1893 guidebook, Delmonico’s
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was by then already “known all over the world. The name has been a familiar word among the
epicures of two continents for nearly three-quarters of a century.’ This building – the second
Delmonico’s on the site – is a remarkably handsome Renaissance Revival design using orange
iron-spot brick, brownstone and terra cotta, and a corner entrance bay with a semicircular porch with
giant columns – all suggestive of the elegance expected by its Gilded Age patrons.”
5. Delmonico’s elaborate corner entrance at 56 Beaver Street has, both in its original 1837
building and in the current 1891 building, featured two sets of marble columns, reputedly ancient
Roman artifacts brought from Pompeii, Italy by John Delmonico, prominently framing the word
“DELMONICO’S” permanently engraved in the frieze and marble cornice above the entryway, as
shown in the photo below (which was credited to Carl Forster in the February 13, 1996 Delmonico's
Building Report by the New York City Landmarks Preservation Commission):

6. A 1989 Newsday article reported that Delmonico’s has been “considered the premier
restaurant in America. Harper's Weekly called the restaurant an agency of civilization[,]” and that
famous Delmonico’s diners have been reported to include Abraham Lincoln, Theodore Roosevelt,
Franklin Delano Roosevelt, Richard Nixon, Charles Dickens, Mark Twain, Oscar Wilde, Lillian
Russell, “Diamond Jim” Brady, Horace Greeley, Lilly Langtry, Jenny Lind, Chester Arthur, Arthur
Sullivan, J.P. Morgan, James Gordon Bennett, Jr., Nikola Tesla, Commodore Matthew C. Perry,
Edward VII while Prince of Wales, and Napoleon III of France.
7. Mimi Sheraton was quoted in a 1991 New York Times article as stating that "At
Delmonico's, a Culinary Legacy," Mark Twain, the famous American author, was a regular patron of
Delmonico's, and that he once said, "There is no equal to Delmonico's in the world. Its cuisine is the
equal of the cuisine of the world, and its service is the equal of the service of kings."
3

8. In 1998 the New York Times stated, “Delmonico’s, possibly the most famous name in
American restaurant history, is once again in the news”; and “Delmonico’s, in the financial district,
has a proud history, and it looks the part. … [I]t would be easy to believe the restaurant had been
operating without interruption since the turn of the century …”
9. A 2004 article published in Ohio in Restaurant Hospitality stated that the name
Delmonico’s “comes with a lot of built-in brand equity. Still going strong in New York City, the
original Delmonico’s is synonymous with the term ‘steakhouse’ for many people, even those who
may have never eaten there.”
10. Financial Times referred to the restaurant at 56 Beaver Street as “Delmonico’s, the 181year-old fine dining restaurant[,]”in 2010, Esquire, after a summary of the historic restaurant’s twocentury history, said, “the Beaver Street restaurant, with its marble portals from Pompeii, is still
going strong[,]” and Time magazine online referred to the restaurant as “the 170-year-old financial
district institution[.]”
11. Delmonico’s New York location has long been a popular destination for businesspeople,
politicians, and celebrities from all over the United States when visiting New York, and was also
featured on the television shows “Good Morning America” and “Unwrapped.”
12. There have been numerous reviews of Delmonico’s New York location on OpenTable.com
and Zagat.com, some of which refer to the restaurant as an “institution,” an “icon,” and “historic.”

B. Plaintiff Licensed Defendant Ocinomled, Ltd. to Run Delmonico’s
13. Plaintiff Beaver entered into an agreement with Defendant Ocinomled, Ltd. to lease the
restaurant space at 56 Beaver Street and to license the use the Delmonico’s Marks at that location, and
a renewal lease was effective in 2010 (the “License Agreement”).
14. The continued accrual of goodwill associated with the Delmonico’s Marks at 56 Beaver
Street throughout the term of the License Agreement inured to the owner of Delmonico’s—Plaintiff
Beaver—and not to Defendant Ocinomled, Ltd., who was merely operating the restaurant under a
license from Plaintiff Beaver.
15. Defendant Ocinomled, Ltd. gained no ownership rights to Plaintiff Beaver’s property,
4

including the valuable Delmonico’s Marks and associated goodwill, by operating a rented restaurant
under a license from Plaintiff Beaver.
16. Defendants admitted that the Delmonico’s Marks are inextricably linked with the landmark
56 Beaver Street property owned by Plaintiff Beaver. Specifically, in a New York Supreme Court
filing, Defendants stated that “During these decades, the 56 Beaver Street location and the
Delmonico’s name have become inextricably linked.” (The DRG Hospitality Group Inc. v. Grgurev,
et al., Index No. 150755/2023, Defendants Ferdo Grgurev’s, Michelle Grgurev’s, Robert Grgurev’s,
and Ocinomled Ltd.’s Verified Answer to Complaint and Verified Counterclaims, filed 02/07/2023,
para. 30).
C. Defendants Wrongly Claimed Rights to the Delmonico’s Marks
17. Defendants publicizing the false statement that Plaintiff’s new tenants at the actual original
Delmonico’s location, 56 Beaver Street, are imposters who are infringing Defendants’ rights in the
Delmonico’s Marks.

18. Defendants are unlawfully using the dot-com website domain incorporating a verbatim
copy of Plaintiff’s Delmonico’s mark (i.e., www.delmonicos.com) to publicize the following false
statement that is incredibly damaging to Plaintiff’s Delmonico’s landmark and associated trademark
rights.
5

19. Defendants have repeatedly publicized the above or similar false and damaging statements
to its tens of thousands of followers on social media including on Instagram, and via widely
circulating print and digital media including the New York Post, the Daily Mail, and others.
20. Defendants wrongful claim of trademark rights have interfered with DRG’s application to
obtain a liquor license for running Delmonico’s, and have caused disruption to DRG’s liquor license
application.

D. Defendants’ Wrongful Attempts to Register the Delmonico’s Trademarks
21. Defendants’ unlawful campaign to strip the Delmonico’s name from the landmark
Delmonico’s building unless Defendants’ lease is reinstated is clearly demonstrated by Defendants’
filing of dozens of trademark applications to register Plaintiff’s Delmonico’s Marks using false and/or
fraudulent statements.
22. Defendant Ocinomled, Ltd. filed at least each of the following trademark registration
applications with the USPTO for the Delmonico’s Marks, which remain pending or are already
registered with the USPTO (hereafter collectively, “the Live OL Applications and Registrations”):
THE LIVE OL APPLICATIONS AND REGISTRATIONS
Serial No.

Mark

Goods and Services

Reg. No.
76577250

steak sauce

3344644

76577251

restaurant services

2928614

76577252
76577253

DELMONICO'S
DELMONICO'S

steak sauce
restaurant services

6

76586960

77301695

restaurant services

DELMONICO'S

IC 008. US 023 028 044. G & S: cutlery; IC 016. US
002 005 022 023 029 037 038 050. G & S:
Magazines, periodicals, catalogs, and books, all
featuring cooking, lifestyle, interior decoration,
kitchens, photography, recipes, furniture, fashion,
beauty and homemaking subjects; scrapbook albums,
and recipe card albums IC 018. US 001 002 003 022
041. G & S: Umbrellas, all-purpose carrying bags,
totes, luggage, backpacks, duffel bags, wallets,
briefcases, and leather briefcase type note pad
portfolios IC 021. US 002 013 023 029 030 033 040

7

050. G & S: Dinnerware, namely, dishes, plates,
bowls, serving platters, cups, saucers, salad bowls,
salad serving spoons, and serving forks, salt and peper
[sic] shakers, casserole dishes, sugar bowls, cream
pitchers, cake servers and canister sets; crystal and
glass beverage ware, namely, stemware, goblets,
drinking glasses, mugs, pitchers and tumblers,
pitchers, cocktail shakers, decanters, ice buckets, ice
serving tongs, not made of metal; coffee pots and tea
pots, not make of precious metals; crystal and glass
vases; wicker, straw and wood baskets IC 025. US 022
039. G & S: Men's, women's and children's clothing,
namely, t-shirts, caps, aprons, raincoats and jackets IC
029. US 046. G & S: Prepared meat, fish, poultry;
fresh or frozen, prepared or packaged entrees
consisting primarily of meat, fish, poultry or
vegetables; food package combinations consisting
primarily of cheese, meat, fish, poultry, fruits or
vegetables IC 030. US 046. G & S: salad dressings,
sauces IC 034. US 002 008 009
017. G & S: Cigars, cigar boxes (not of precious
metal); smoker's accessories, namely, snuff boxes,
matches, ashtrays, cigarette lighters (not of precious
metals), smoking pipes, cigar cutters, and cigarettes IC
041. US 100 101 107. G & S: Entertainment services
rendered through the medium of television, radio or
the internet in the nature of an on-going series of
shows featuring cooking, lifestyle, interior decoration,
kitches, [sic] photography, recipes, furniture, fashion,
beauty and homemaking
77978342

cutlery; sauces

3732762

77979598

salad dressings

3819765

8

97374908

cutlery

97374934

Magazines, periodicals, catalogs, and books, all
featuring cooking, lifestyle, interior decoration,
kitchens, photography, recipes, furniture, fashion,
beauty and homemaking subjects; scrapbook albums,
and recipe card albums

97374957

umbrellas, all-purpose carrying bags, totes, luggage,
backpacks, duffel bags, wallets, briefcases, and leather
briefcase type note pad portfolios

97374981

dinnerware, namely, dishes, plates, bowls, serving
platters, cups, saucers, salad bowls, salad serving
spoons, and serving forks, salt and pepper shakers,
casserole dishes, sugar bowls, cream pitchers, cake
servers and canister sets; crystal and glass beverage
ware, namely, stemware, goblets, drinking glasses,
mugs, pitchers and tumblers, pitchers, cocktail shakers,
decanters, ice buckets, ice serving tongs, not made of
metal; coffee pots and tea pots, not
make of precious metals; crystal and glass vases;
wicker, straw and wood baskets

97375001

Men's, women's and children's clothing, namely, tshirts, caps, aprons, raincoats and jackets

97375019

steak sauce; steak seasoning; seasoning mixes;
seasoning rubs

97375072

cigars, cigar boxes (not of precious metal); smoker's
accessories, namely, snuff boxes, matches, ashtrays,
cigarette lighters (not of precious metals), smoking
pipes, cigar cutters, and cigarettes

9

97375086

entertainment services rendered through the medium
of television, radio or the internet in the nature of an
on-going series of shows featuring cooking, lifestyle,
interior decoration, kitchens, photography, recipes,
furniture, fashion, beauty and homemaking

97375094

restaurant and bar services

97375395

men's, women's and children's clothing, namely, tshirts, caps, aprons, raincoats and jackets

97375410

dinnerware, namely, dishes, plates, bowls, serving
platters, cups, saucers, salad bowls, salad serving
spoons, and serving forks, salt and pepper shakers,
casserole dishes, sugar bowls, cream pitchers, cake
servers and canister sets; crystal and glass beverage
ware, namely, stemware, goblets, drinking glasses,
mugs, pitchers and tumblers, pitchers, cocktail shakers,
decanters, ice buckets, ice serving tongs, not made of
metal; coffee pots and tea pots, not make of precious
metals; crystal and glass vases;
wicker, straw and wood baskets

97375434

cutlery

97375443

magazines, periodicals, catalogs, and books, all
featuring cooking, lifestyle, interior decoration,
kitchens, photography, recipes, furniture, fashion,
beauty and homemaking subjects; scrapbook albums,
and recipe card albums

97375470

umbrellas, all-purpose carrying bags, totes, luggage,
backpacks, duffel bags, wallets, briefcases, and leather
briefcase type note pad portfolios

97375476

steak sauce; steak seasoning; seasoning mixes;
seasoning rubs

97375479

cigars, cigar boxes (not of precious metal); smoker's
accessories, namely, snuff boxes, matches, ashtrays,
cigarette lighters (not of precious metals), smoking
pipes, cigar cutters, and cigarettes
10

97375482

entertainment services rendered through the medium
of television, radio or the internet in the nature of an
on-going series of shows featuring cooking, lifestyle,
interior decoration, kitchens,
photography, recipes, furniture, fashion, beauty and
homemaking

97375487

restaurant and bar services

97375506

cutlery

97375514

magazines, periodicals, catalogs, and books, all
featuring cooking, lifestyle, interior decoration,
kitchens, photography, recipes, furniture, fashion,
beauty and homemaking subjects; scrapbook albums,
and recipe card albums

97375526

umbrellas, all-purpose carrying bags, totes, luggage,
backpacks, duffel bags, wallets, briefcases, and leather
briefcase type note pad portfolios

97375541

dinnerware, namely, dishes, plates, bowls, serving
platters, cups, saucers, salad bowls, salad serving
spoons, and serving forks, salt and pepper shakers,
casserole dishes, sugar bowls, cream pitchers, cake
servers and canister sets; crystal and glass beverage
ware, namely, stemware, goblets, drinking glasses,
mugs, pitchers and tumblers, pitchers, cocktail shakers,
decanters, ice buckets, ice serving tongs, not made of
metal; coffee pots and tea pots, not
make of precious metals; crystal and glass vases;
wicker, straw and wood baskets

97376182

men's, women's and children's clothing, namely, tshirts, caps, aprons, raincoats and jackets

97376192

steak sauce; steak seasoning; seasoning mixes;
seasoning rubs

97376200

cigars, cigar boxes (not of precious metal); smoker's
accessories, namely, snuff boxes, matches, ashtrays,
cigarette lighters (not of precious metals), smoking
pipes, cigar cutters, and cigarettes
11

97376202

entertainment services rendered through the medium
of television, radio or the internet in the nature of an
on-going series of shows featuring cooking, lifestyle,
interior decoration, kitchens, photography, recipes,
furniture, fashion, beauty and homemaking

97376210

restaurant and bar services

23. Each of the marks listed in the Live OL Applications and Registrations, if and when
used by Defendants in connection with the goods and services listed therein, is, has been, and
would be likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of Defendants with Plaintiff, Plaintiff’s landmark property, and/or
Plaintiff’s new licensee, DRG, as to the origin, sponsorship, or approval of those goods and
services.
24. Plaintiff alleges that use by Defendants of each of the marks listed in the Live OL
Applications and Registrations in connection with the goods and services listed therefore is, has
been, and would be damaging to Plaintiff, the value of Plaintiff’s landmark Delmonico’s building,
and Plaintiff’s ability to do business with new licensees, such as DRG.
25. Defendant, Ocinomled verified that it has used or intends to use each of the marks listed
in the Live OL Applications and Registrations in connection with the goods and services listed
therein.
26. Defendant, Ocinomled has registered as a service mark in New York State a Stylized
Letter D in a wreath design for restaurant services under Registration No. S18914 and renewed as
Registration No. S23037, which registration is extant.
27. Defendant, Ocinomled has registered as a service mark in New York State the Stylized
Words “SINCE 1837”, a Stylized “D” in a Wreath Design, together with the word
“DELMONICO’S” in Stylized Format which appear within a Fanciful Image of a Locomotive
with Scroll Designs, for restaurant services under Registration No. S18923 and renewed as
12

Registration No. S23038, which registration is still extant. The two New York State Service mark
registrations, and their renewals, are referred to as the “NY State Registrations.”
G. Defendants Consent to Judgment Against Them.
28. Defendants’ use of the Delmonico’s Marks in connection with the goods and services
recited in Defendants’ Live OL Applications is likely to deceive consumers as to the origin, source,
sponsorship, or affiliation of Defendants’ goods or services and services, and is likely to cause
consumers to believe, contrary to fact, that Defendants’ goods or services and services are sold,
authorized, endorsed, or sponsored by Plaintiff, or that Defendants are in some way still affiliated
with or sponsored by Plaintiff, and constitutes use of a false designation of origin and misleading
description and representation of fact.
29. Defendants’ conduct constitutes unfair competition in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a).
30. Defendants’ conduct as found herein is causing immediate and irreparable harm and
injury to Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff
and confuse the public unless enjoined by this court. Plaintiff has no adequate remedy at law.
31. Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
damages, Defendants’ profits, enhanced damages and profits, reasonable attorneys' fees, and costs
of the action under Sections 34, 35, and 38 of the Lanham Act, 15 U.S.C. §§ 1116, 1117, 1120,
together with prejudgment and post-judgment interest.
32. Regarding Plaintiff’s New York statutory claim, the Defendants have widely
publicized to consumers false information about the ownership of the Delmonico’s marks in New
York, that is likely to mislead reasonable consumers acting reasonably under the circumstances
into mistakenly avoiding Plaintiff’s authentic Delmonico’s landmark restaurant in favor of some
other competing restaurant that Defendants seek to establish somewhere else, that Defendants’
deceptive acts were directed at consumers of the parties’ restaurant services, and that Plaintiff has
13

been injured as a result of Defendants’ deceptive acts, in the form of lost branding goodwill and
present and future sales revenue for Plaintiff and/or its licensees. Accordingly, Defendants’
actions constitute unlawful deceptive acts and practices under N.Y. Gen. Bus. Law § 349(a).
33. With respect to its cybersquatting claim, Plaintiff has a valid trademark entitled to
protection, namely DELMONICO’S, that Plaintiff’s DELMONICO’S trademark is distinctive
and famous, that Defendants are using an identical copy of Plaintiff’s distinctive and famous
trademark as their dot-com URL, namely DELMONICOS.COM, and that Plaintiff’s
DELMONICO’S

trademark

acquired

its

famous

status

long

before

the

DELMONICOS.COM URL was first registered.
34. Plaintiff’s actions constitute

unlawful

cybersquatting in violation of the

Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d).
35. With respect to its trademark disparagement claim, Defendants have published
numerous false statements regarding the ownership of the Delmonico’s trademarks; namely,
Defendants have been falsely advertising on their website DELMONICOS.COM that Defendants
are the “sole owners” of the Delmonico’s trademark, and that Plaintiff and Plaintiff’s new lessee
at the authentic original Delmonico’s landmark building are “misrepresenting themselves to the
media as owners of Delmonico’s.”
36. Defendants have published these false statements to Plaintiff's / Plaintiff’s licensee’s
customers or potential customers, via not only Defendants’ website DELMONICOS.COM, but
also via Defendants’ tens of thousands of followers on social media including on Instagram, and
via widely circulating print and digital media including the New York Post, the Daily Mail, and
others.
37. Defendants communicated these false statements regarding Plaintiff’s ownership of
the Delmonico’s trademarks to the liquor license authority, which caused them to place an
indefinite hold on the liquor license for Plaintiff’s licensee.
14

38. Defendants’ actions constitute trademark disparagement under the common law.
39. Plaintiff is entitled to, among other relief, injunctive relief.
40. Defendants’ conduct is causing immediate and irreparable harm and injury to Plaintiff,
and to its goodwill and reputation, and will continue to both damage Plaintiff and confuse the
public unless enjoined by this Court, and Plaintiff has no adequate remedy at law.
41. The Parties stipulate and agree to the entry of a permanent injunction in the form set
forth below.
Accordingly, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED as follows:
1. Defendants Have No Rights in the Delmonico’s Marks. Defendants did not acquire
ownership of any trademark rights in connection with operation of the Delmonico’s restaurant at
56 Beaver Street in New York, because Defendants were then under contract with Plaintiff, such
that all uses of the Delmonico’s Marks by Defendants were under license from Plaintiff.
2. Infringement, Dilution, Cybersquatting, Trademark Disparagement, Unfair
Competition, Unlawful Deceptive Acts and Practices, and Intentional Interference With
Prospective Economic Advantage. The Delmonico’s Marks belong to Plaintiff and are distinctive
and famous and are valid trademarks entitled to protection, at least, in connection with restaurant(s)
and bar(s), and related goods and services. Defendants’ uses, that were not authorized by Plaintiff,
of the Delmonico’s Marks, registration and use of the URL www.delmonicos.com, and
Defendants’ published written statements to the public and the media falsely indicating that
Plaintiff’s new tenants at the Delmonico’s 56 Beaver Street location are imposters who are
infringing Defendants’ claimed rights in the Delmonico’s Marks, have damaged Plaintiff’s
business, and have infringed Plaintiff’s Delmonico’s Marks under the Lanham Act and state law
including New York law by creating a false designation of origin and misleading description and
representation of fact, as well as a likelihood of confusion, mistake, or deception as to the
affiliation, connection, or association of Defendants with Plaintiff, have also diluted at least some
15

of Plaintiff’s Delmonico’s Marks under the Lanham Act and state law including New York law,
have committed cybersquatting under the Lanham Act, have committed unfair competition and
unlawful deceptive acts and practices against Plaintiff under the Lanham Act and state law
including New York law, and have committed trademark disparagement and intentional
interference with prospective economic advantage under state law including New York law.
3. Permanent Injunction. Defendants, and each of their affiliates, servants, agents,
employees, subsidiaries, divisions, officers, directors, licensees, suppliers, successors, and
assigns, and all those acting in concert or participation with any of them, are hereby permanently
enjoined and restrained from:

a) Using in any manner any of the Delmonico’s Marks or any confusingly similar marks
or trade dresses or any colorable imitations thereof, including, without limitation, the
marks listed herein in the Live OL Applications and Registrations, on or in connection
with the advertising, offering for sale or sale of any product which is not manufactured,
distributed, or otherwise authorized by or for Plaintiff;
b) Using in any manner any of the Delmonico’s Marks or any confusingly similar marks
or trade dresses or any colorable imitations thereof, including, without limitation, the
marks listed herein in the Live OL Applications and Registrations, on or in connection
with the advertising, offering to render, or rendition of any service not approved by,
sponsored by or otherwise authorized by Plaintiff;
c) Attempting to or actually passing-off, inducing or enabling others to sell or pass-off
any product or service as a product or service affiliated with or sponsored by Plaintiff,
which product is not produced by or service is not rendered under the authorization,
control and supervision of Plaintiff;
d) Copying, making confusingly similar or colorable imitations of, or modifying any of
Plaintiff’s advertising or promotional materials for use in connection with the
16

advertising, promotion or sale of any of Defendants’ goods or services;
e) Obtaining, possessing, shipping, delivering, distributing, returning or otherwise
disposing of, in any manner, advertising materials, goods or inventory bearing any of
the Delmonico’s Marks or any confusingly similar marks or trade dresses, or any
colorable imitations thereof, including, without limitation, restaurant and bar related
goods and packaging and marketing materials therefor, which materials, goods or
inventories were not manufactured by or for Plaintiff or authorized by Plaintiff to be
used, sold or offered for sale in association with or bearing any of such marks or trade
dresses;
f) Obtaining, possessing, manufacturing, or using any digital image files, tools, dies,
stamping, mixing, embossing, printing, labeling, packaging, silk screening, molding
equipment or any other apparatus designed especially for the manufacture or labeling
of unauthorized products bearing Delmonico’s Marks or any marks confusingly similar
thereto, and packaging and advertising or display material relating thereto;
g) Committing any acts calculated or intended to cause purchasers to believe falsely that
any of Defendants’ goods or services are associated with, sponsored by, approved by,
guaranteed by, connected with or produced under the control and supervision or within
the authority of Plaintiff;
h) Further infringing the rights of Plaintiff in and to the Delmonico’s Marks, or otherwise
continuing to perform in any manner whatsoever any infringing acts against the
Delmonico’s Marks;
i) Continuing to perform in any manner whatsoever any further acts likely to cause
dilution of Plaintiff’s trademark rights in and to the Delmonico’s Marks;
j) Continuing to perform in any manner whatsoever any unfair competition or deceptive
trade practices against Plaintiff or Plaintiff’s licensees;
17

k) Making false statements to others regarding Plaintiff’s trademark rights;
l) Otherwise competing unfairly with Plaintiff; and
m) Continuing to perform in any manner whatsoever any further acts likely to interfere in
any way with the business of Beaver or its (or its licensee’s) Delmonico’s restaurant,
including but not limited to its reputation and goodwill, Plaintiff’s relationships with
its licensees, and Plaintiff’s and its licensees’ dealings with their customers and
potential customers, and Plaintiff’s and its licensees’ dealings with vendors and
governmental and regulatory officials.
4. Transfer of Domain Name. Ownership of the DELMONICOS.COM domain name
shall immediately be frozen and then transferred to Plaintiff, who shall have free and full use of
such domain.
5. Delivery of Infringing Materials. Defendants must within thirty (30) days of this Order
deliver to Plaintiff or its attorneys any and all restaurant and bar related items, advertising matter,
promotional, and other items and materials in their possession or control bearing any of the
Delmonico’s Marks, alone or in combination with any other words, or any other words or symbols
which so resemble any of the Delmonico’s Marks as to be likely to cause confusion, mistake or
deception, which is or can be used in connection with the advertising, offering for sale, or sale of
any product or service which is not manufactured, distributed or otherwise authorized by Plaintiff.
Defendants must also within 30 days deliver to Plaintiff or its attorneys any and all disks, tapes,
computer graphic files, molds, plates, screens, graphics, matrixes, patterns and any other means of
making simulations, reproductions, counterfeits, copies or colorable imitations of Delmonico’s
Marks which are for use on items, products, containers, packaging, labeling, advertising, and
display literature or other material not authorized by Plaintiff, or alternatively must within that
timeframe certify the destruction of the above items in writing to Plaintiff’s attorneys.
6. Transfer of New York State Service Mark Registrations.
18

(a) The New York Secretary of State shall transfer ownership of the New York State
Service Mark for a Stylized Letter D in a wreath design for restaurant services under
Registration No. S18914 and renewed as Registration No. S23037 to Plaintiff.
(b) The New York Secretary of State shall transfer ownership of the New York State
Service Mark for the Stylized Words “SINCE 1837”, a Stylized “D” in a Wreath Design,
together with the word “DELMONICO’S” in Stylized Format which appear within a
Fanciful Image of a Locomotive with Scroll Designs, for restaurant services under
Registration No. S18923 and renewed as Registration No. S23038, to Plaintiff.
7. Transfer of Federal Trademark/Service Mark Registrations and Applications. The

United States Patent & Trademark Office shall transfer ownership of the following US
Trademark/Service Mark Registrations and Applications to Plaintiff:
Mark

Appln. No.

Reg. No.

Status

D & Design

77979598

3819765

Registered

D & Design

77978342

3732762

Registered

D & Design

76577250

3344644

Registered

D & Design

76577251

2928614

Registered

Mark

Appln. No.

EST. D 1837 & Design

97375094

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97375086

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97375072

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97375019

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97375001

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97374981

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97374957

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97374934

Pending - No ce of Allowance Issued

EST. D 1837 & Design

97374908

Pending - No ce of Allowance Issued

19

Status

8. Abandonment of United States Trademark/Service Applications. The United
States Patent & Trademark Office shall declare the following trademark applications filed by
Ocinomled as abandoned:

Application Serial Nos. 76/586,960; 76/577,252; 76/577,253; and 77/301,695
9. Future Goods and Services. Except as otherwise specifically set forth herein, the terms
and conditions herein shall apply to all goods and services now or in the future sold by, offered for
sale by, marketed by, licensed by and/or otherwise controlled by any of the Defendants, their
affiliates, officers, directors, shareholders, agents, servants, employees, subsidiaries, divisions,
licensees, successors and assigns, and all persons and entities in active concert or participation
with any of them.
10. Payment of Settlement Sum. Defendants shall pay Plaintiff the sum of money as has
been agreed by the Parties.
11. Non-Interference. Defendants shall not interfere anywhere in the world with Plaintiff’s
use or registration of its Delmonico’s Marks or derivatives thereof, or any composite mark
containing any of the Delmonico’s Marks. In addition, Defendants shall not initiate, prosecute, or
in any way aid in the commencement of, the prosecution or defense of any suit, action, claim,
defense, counterclaim, cross-claim, affirmative defense, administrative proceeding or other
proceeding whatsoever at law or otherwise, anywhere in the world, against Plaintiff’s (or its
successors’ or assigns’) use, registration, or enforcement of:
(a) any Delmonico’s Mark or registrations therefor;
(b) any mark or registration containing a Delmonico’s Mark or any confusing similar mark;
(c) any composite mark containing any Delmonico’s Mark or registration therefor
including any of the Delmonico’s Marks or marks confusingly similar thereto.
12. Service. Service may be made upon Defendants by mail addressed to defendants
as follows:
20

`

Ocinomled, Ltd. c/o Michelle Grgurev
Michelle Grgurev
Omer Grgurev
235 Dorin Court Road
Fort Lee, NJ 07024
FERDO GRGUREV and NATALIA GRGUREV
536 Floyd Street
Englewood Cliffs, NJ 07632
ROBERT GRGUREV
12 West 17th Street, Apt. 12
New York, NY 10011

A copy of this Stipulation for Consent Decree and Permanent Injunction shall be deemed
sufficient notice under Federal Rule of Civil Procedure 65. It shall not be necessary for
Defendants to sign any form of acknowledgment of this service.

[MKV]
13. Retention of Jurisdiction to Enforce Settlement Agreement. The Court retains

jurisdiction to enforce this Consent Decree and the Settlement Agreement between the Parties.
14. Entry of Judgment. The Court expressly determines that there is no just reason for delay
in entering Judgment and pursuant to Federal Rule of Civil Procedure 54(a), the Court enters
Judgment, jointly and severally, against all Defendants on all of Plaintiff’s causes of action.

The Clerk of Court is respectfully requested to close this case. [MKV]
IT IS SO ORDERED, ADJUDGED, AND DECREED:

February 6 2023
Dated: ___________,

_________________________
Hon. Mary Kay Vyskocil
United States District Judge

21

XXXXXXXXXX
January 5, 2024

/s/ Neil D. Greenstein

OocuGIyiDMlOpe D aA1IBMM«1M3MCmEB«ZnaSS

Dated November

,2023

Bv:

■irei*

Name: NATALIA. GRGUREV, Defendant

526 Floyd Street

Englewood Clififs, NJ 07632
Dated November

2023

Bv:
Name: MICHELLE
235 Dorin Court Road

iV, Defendant

Fort Lee, NJ 07024

Dated November

, 2023

Bv:

Name: ROBERT GRGUREV, Defendant

12 WestI7'^ Street, Apt. 12
New York, NY 10011

23