Scala Declaration
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Case 1:09-cv-07353
Document 7-2
Filed 11/23/2009
EXHIBIT 1
Page 1 of 5
Case 1:09-cv-07353
Document 7-2
Filed 11/23/2009
Page 2 of 5
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION SCALA’S ORIGINAL BEEF & SAUSAGE COMPANY, LLC Plaintiff, vs. MICHAELANGELO ALVAREZ d/b/a MICHAELANGELO FOODS, and MICHAELANGELO FOODS, LLC, Defendant.
) ) ) ) ) ) ) ) ) ) ) )
No. District Judge Magistrate Judge
DECLARATION OF PASCAL SCALA Pascal Scala states upon penalty of perjury that he has personal knowledge of the following facts, which are true and correct: 1.
I am currently the President of Scala Packing Company, Inc. (“SPCI”) and have
served in that position since 1970. 2.
From the incorporation of SPCI in 1949 through 2009, SPCI has been in the
business of selling Italian-style food and delicatessen products throughout the greater Chicago metropolitan area, as well as in various other locations within the United States, under the mark “Scala’s” or “Scala’s Preferred.” 3.
The business was founded by my grandfather, Pasquale Scala, in 1925 as a sole
proprietorship doing business as Scala Packing Company. From the beginning, the business sold various Italian-American style meats and sausages under the “Scala’s” name, and gradually added related food products sold under that mark. 4.
“Scala’s” is one of the leading brands of Italian beef and Italian gravy sold within
the Chicago metropolitan area and nationally.
Case 1:09-cv-07353
5.
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Over the years SPCI has distributed its meats and other food products on a
wholesale basis both to: (a) restaurants and beef-stands, which incorporate those products into sandwiches and other food preparations sold at retail; and (b) grocery stores and delicatessens, for resale directly to consumers, for home preparation purposes. 6.
Starting in approximately 1960, SPCI began selling bottled giardiniera under the
“Scala’s” and “Scala’s Preferred” brands throughout the greater Chicago metropolitan area and nationally. Giardiniera is a salad in which various vegetables – such as celery, cauliflower, peppers, olives, and carrots – are pickled in vinegar or a vinegar-oil dressing. Giardiniera is a typical garnish for sandwiches of Italian beef, sausage, or meatballs. 7.
The marks “Scala’s” and “Scala’s Preferred” have attained widespread and
favorable public acceptance, recognition, and goodwill throughout the Chicago metropolitan area and throughout the United States. The marks “Scala’s” and “Scala’s Preferred” have become well-known in association with various Italian-American food items sold by SPCI, including giardiniera, meats, and sausages, both to businesses such as restaurants, beef-stands, grocery stores and delicatessens that resell the products and to the consuming public who buy from those businesses. 8.
At least since 1940, Pasquale Scala and his successor business, SPCI, used a
fanciful script in the form depicted on Complaint Exhibit A, to display its “Scala’s” mark. 9.
Complaint Exhibit A is a true and correct copy of the form of label that SPCI used
for its “Mild Mix” Giardiniera in recent years. Except for the substitution of the words “hot” for “mild,” the label historically used by SPCI on packages of its hot-mix giardiniera was in all material respects identical in appearance to Exhibit A.
2
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10.
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In August 28, 2007, SPCI filed two applications with the United States Patent and
Trademark Office to register “Scala’s Preferred” as a trademark for enumerated Italian style food products – (a) application no. 77265835 to use the words “Scala’s Preferred” as a standard character mark; and (b) application no. 77265928 for a “design plus mark,” to use the word’s “Scala’s” in fanciful script with the word “Preferred” appearing in block letters within a band below, as depicted on Exhibit A. 11.
On September 23, 2008, SPCI received federal registration nos. 3,500,974 (“the
’974 Trademark”) and 3,503,926 (“the ’926 Trademark”), respectively, for the two forms of “Scala’s Preferred” trademark for which it applied. Both trademarks are for use on “cheese; vegetable salads; processed peppers; sausages; beef; beef patties; prepared beef; [and] meatballs.” True and correct copies of those federal registrations are attached as Exhibits B and C to the Verified Complaint in this action. 12.
Effective August 25, 2008, SPCI issued a license in the name of Michaelangelo
Alvarez (“Alvarez”) doing business as Michaelangelo Foods (“MAF”) to use the “Scala’s” trademark in connection with the sale of “prepared vegetables.” A true and correct copy of the license agreement is contained in Exhibit D to the Verified Complaint. 13.
On August 12, 2009, SPCI terminated the license that it had issued in the name of
Alvarez d/b/a MAF to use the “Scala’s” trademark. A true and correct copy of SPCI’s notice of the license termination is attached as Exhibit E to the Verified Complaint. 14.
On November 5, 2009, SPCI and Scala’s Original entered into an Asset Purchase
Agreement for Scala’s Original to acquire, among other assets, “all trademarks, trade names, logos, service marks, brand marks, brand names, [and] domain names” of SPCI’s, as well as all goodwill relating to those assets. Among the trademarks encompassed by the Asset Purchase
3
Case 1:09-cv-07353
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Filed 11/23/2009
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Document 7-2
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EXHIBIT 1
Page 1 of 5
Case 1:09-cv-07353
Document 7-2
Filed 11/23/2009
Page 2 of 5
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION SCALA’S ORIGINAL BEEF & SAUSAGE COMPANY, LLC Plaintiff, vs. MICHAELANGELO ALVAREZ d/b/a MICHAELANGELO FOODS, and MICHAELANGELO FOODS, LLC, Defendant.
) ) ) ) ) ) ) ) ) ) ) )
No. District Judge Magistrate Judge
DECLARATION OF PASCAL SCALA Pascal Scala states upon penalty of perjury that he has personal knowledge of the following facts, which are true and correct: 1.
I am currently the President of Scala Packing Company, Inc. (“SPCI”) and have
served in that position since 1970. 2.
From the incorporation of SPCI in 1949 through 2009, SPCI has been in the
business of selling Italian-style food and delicatessen products throughout the greater Chicago metropolitan area, as well as in various other locations within the United States, under the mark “Scala’s” or “Scala’s Preferred.” 3.
The business was founded by my grandfather, Pasquale Scala, in 1925 as a sole
proprietorship doing business as Scala Packing Company. From the beginning, the business sold various Italian-American style meats and sausages under the “Scala’s” name, and gradually added related food products sold under that mark. 4.
“Scala’s” is one of the leading brands of Italian beef and Italian gravy sold within
the Chicago metropolitan area and nationally.
Case 1:09-cv-07353
5.
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Filed 11/23/2009
Page 3 of 5
Over the years SPCI has distributed its meats and other food products on a
wholesale basis both to: (a) restaurants and beef-stands, which incorporate those products into sandwiches and other food preparations sold at retail; and (b) grocery stores and delicatessens, for resale directly to consumers, for home preparation purposes. 6.
Starting in approximately 1960, SPCI began selling bottled giardiniera under the
“Scala’s” and “Scala’s Preferred” brands throughout the greater Chicago metropolitan area and nationally. Giardiniera is a salad in which various vegetables – such as celery, cauliflower, peppers, olives, and carrots – are pickled in vinegar or a vinegar-oil dressing. Giardiniera is a typical garnish for sandwiches of Italian beef, sausage, or meatballs. 7.
The marks “Scala’s” and “Scala’s Preferred” have attained widespread and
favorable public acceptance, recognition, and goodwill throughout the Chicago metropolitan area and throughout the United States. The marks “Scala’s” and “Scala’s Preferred” have become well-known in association with various Italian-American food items sold by SPCI, including giardiniera, meats, and sausages, both to businesses such as restaurants, beef-stands, grocery stores and delicatessens that resell the products and to the consuming public who buy from those businesses. 8.
At least since 1940, Pasquale Scala and his successor business, SPCI, used a
fanciful script in the form depicted on Complaint Exhibit A, to display its “Scala’s” mark. 9.
Complaint Exhibit A is a true and correct copy of the form of label that SPCI used
for its “Mild Mix” Giardiniera in recent years. Except for the substitution of the words “hot” for “mild,” the label historically used by SPCI on packages of its hot-mix giardiniera was in all material respects identical in appearance to Exhibit A.
2
Case 1:09-cv-07353
10.
Document 7-2
Filed 11/23/2009
Page 4 of 5
In August 28, 2007, SPCI filed two applications with the United States Patent and
Trademark Office to register “Scala’s Preferred” as a trademark for enumerated Italian style food products – (a) application no. 77265835 to use the words “Scala’s Preferred” as a standard character mark; and (b) application no. 77265928 for a “design plus mark,” to use the word’s “Scala’s” in fanciful script with the word “Preferred” appearing in block letters within a band below, as depicted on Exhibit A. 11.
On September 23, 2008, SPCI received federal registration nos. 3,500,974 (“the
’974 Trademark”) and 3,503,926 (“the ’926 Trademark”), respectively, for the two forms of “Scala’s Preferred” trademark for which it applied. Both trademarks are for use on “cheese; vegetable salads; processed peppers; sausages; beef; beef patties; prepared beef; [and] meatballs.” True and correct copies of those federal registrations are attached as Exhibits B and C to the Verified Complaint in this action. 12.
Effective August 25, 2008, SPCI issued a license in the name of Michaelangelo
Alvarez (“Alvarez”) doing business as Michaelangelo Foods (“MAF”) to use the “Scala’s” trademark in connection with the sale of “prepared vegetables.” A true and correct copy of the license agreement is contained in Exhibit D to the Verified Complaint. 13.
On August 12, 2009, SPCI terminated the license that it had issued in the name of
Alvarez d/b/a MAF to use the “Scala’s” trademark. A true and correct copy of SPCI’s notice of the license termination is attached as Exhibit E to the Verified Complaint. 14.
On November 5, 2009, SPCI and Scala’s Original entered into an Asset Purchase
Agreement for Scala’s Original to acquire, among other assets, “all trademarks, trade names, logos, service marks, brand marks, brand names, [and] domain names” of SPCI’s, as well as all goodwill relating to those assets. Among the trademarks encompassed by the Asset Purchase
3
Case 1:09-cv-07353
Document 7-2
Filed 11/23/2009
Page 5 of 5
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