A New York-based restaurant operator was entitled to a preliminary injunction barring a competitor from using the mark JAPONAIS for restaurant and lounge services, the federal district court in Brooklyn has ruled. The restaurant operator was likely to succeed on the merits of its claims for trademark infringement and for cancellation of the competitor's registration for the JAPONAIS mark.

The competitor received a federal registration for the JAPONAIS mark on March 17, 2009. The complaining restaurateur presented overwhelming evidence that the competitor had made false statements in filings with the Patent and Trademark Office, specifically a statement in 2004 that he was unaware of anyone else using the JAPONAIS mark and a statement in May 2008 that he had been using the JAPONAIS mark in connection with restaurant and lounge services at a Westbury, New York location since April 1, 2008.

The only indication of the use of the mark at the location at the time of the filings was the purchase of signs, the court said. The location itself --a 1,200-square-foot area with two tables --did not appear to be in operation as a restaurant at all until after the registration was issued. An investigator's photographs of the location on March 23, 2009 showed that the Westbury location was closed, with no employees, food, or customers in sight. On some later date, the competitor opened a fast-food lunch restaurant at the location, operating under the JAPONAIS mark.

The complaining restaurateur submitted compelling evidence that it had created and developed the JAPONAIS mark in 2003 in connection with the opening and operation of a "Japanese fusion" restaurant in Chicago, and subsequently in New York City and Las Vegas in 2006. It was undisputed that the parties' marks were identical.

The restaurateur was likely to succeed in establishing that the competitor copied the JAPONAIS mark and applied for its registration with the bad faith intent to "squat" on the mark in order to capitalize on the restaurateur's failure to register the mark. The competitor's explanation that he used the French word JAPONAIS because he sold french fries was "completely incredible," in the court's view, as was his assertion that he developed and drew by hand the stylized lettering for the mark.

The scope of the injunction was limited geographically only to the areas in which the complaining restaurateur had demonstrated a likelihood of success in demonstrating common-law trademark rights --the New York, Chicago, and Las Vegas metropolitan areas. The competitor was required to remove or cover promotional materials that incorporated the JAPONAIS mark at the Westbury location, including the restaurant's window sign and awning.

Tuccillo, ED N.Y., ¶61,487.