Superdawgcomplaint

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Case 1:09-cv-03758

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Filed 06/22/2009

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

v. DANNY OMARI d/b/a SUPERDOG, Defendant.

Civil Action No.

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Plaintiff,

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SUPERDAWG DRIVE-IN, INC.,

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COMPLAINT

NATURE AND STATUTORY BASIS OF ACTION This is an action for [I] infringement of U.S. Trademark Registration

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1.

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No. 1,309,420 under Title 15, United States Code § 1114; [II] dilution of Plaintiff’s famous

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trademark, under the laws of the United States, as provided under Title 15, United States Code, § 1125(c), the State of Illinois, 765 ILCS 1036/65, and the State of New York, New York General Business Law § 360-1; [III] unfair competition/false designation of origin under the laws of the

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United States, as provided under Title 15, United States Code § 1125 (a); [IV] unfair business practices under the laws of the State of Illinois and New York, as provided by the New York General Business Law, the Illinois Consumer Fraud and Deceptive Business Practices Act, and the common law; and [V] deceptive trade practices under the laws of the State of Illinois and New York, as provided by the New York General Business Law, the Illinois Uniform Deceptive Trade Practices Act and , and the common law.

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THE PARTIES 2.

Plaintiff, SUPERDAWG DRIVE-IN, INC. (“Plaintiff”), is an Illinois corporation

having its business address at 3372 N. Avondale Avenue, Chicago, Illinois 60618. 3.

On information and belief, Defendant, DANNY OMARI d/b/a SuperDog

(“Defendant”), is an individual residing in the state of New York and operating a business located at 111 MacDougal Street, New York, New York, under the name “SuperDog.” JURISDICTION AND VENUE 4.

Jurisdiction over Counts I-V is expressly conferred on this Court under 15 U.S.C.

§ 1121 and/or 28 U.S.C. §§ 1331, 1332 and 1338. The Court also has supplemental jurisdiction over the state law claims pursuant to 15 U.S.C. § 1367. Plaintiff alleges damages and injury to its rights which are valued at and total at least $75,000. 5.

Personal jurisdiction over Defendant is vested in this Court since Defendant has

committed one or more of the acts complained of herein within the United States and has caused injury to Plaintiff within this State and District. 6.

Venue is proper in the United States District Court for the Northern District of

Illinois pursuant to 28 U.S.C. § 1391 (b) and (c). At all times material to this Complaint, Defendant has committed one or more of the acts complained of herein within the United States and caused injury within this State and District. BACKGROUND 7.

Plaintiff began using the name SUPERDAWG for its fast food restaurant services

and food products since at least as early as 1948 and has continuously used the SUPERDAWG name for such products and services.

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Plaintiff is the owner of U.S. Trademark Registration No. 1, 309,420, registered

December 11, 1984, for Plaintiff's distinctive SUPERDAWG trademark for fast food restaurant services. A true and accurate copy of this Registration is attached as EXHIBIT A. 9.

This Registration is in full force and effect on the Principal Trademark Register

and, as an incontestable Registration, constitutes conclusive evidence of the validity of the SUPERDAWG trademark and of the registration of the trademark, of Plaintiff's ownership of the SUPERDAWG trademark and of Plaintiff's exclusive right to use the SUPERDAWG trademark in commerce for fast food restaurant services as provided in 15 U.S.C. § 1115. 10.

Since at least 1948, Plaintiff has served a signature menu item identified as its

“Superdawg” hot dog at its restaurant located at 6363 North Milwaukee Avenue, Chicago, Illinois 60646. It also created and prominently features two over-sized hot dog characters, designated “Maurie” and “Flaurie,” on the top of its restaurant building located in Chicago, Illinois. Attached as EXHIBIT B is an image of Plaintiff’s restaurant in Chicago, Illinois which first opened in 1948 and is still serving customers today. 11.

Prior to the opening of Defendant’s business, Plaintiff’s restaurant and food

products have been featured in national media including but not limited to multiple showings on the Food Network, the Travel Channel, Public Television and CBS Morning Show. Plaintiff’s SUPERDAWG restaurant has been featured in national magazines, books and travel guides, including but not limited to Conde Nast, Newsweek, Parade, Smithsonian and Time magazines, as well as the book “A Thousand Places to See Before You Die” (see pp. 628-629), a publication featuring interesting places located throughout the world, published in 2003 by Workman Publishing Co. in New York, New York, as well as in numerous national newspaper articles.

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For the past several years, Plaintiff has a licensed SUPERDAWG carryout

restaurant operating at Chicago’s Midway International Airport. Plaintiff also sells souvenirs including T-shirts, sweatshirts, caps, key chains, magnets, and soft sculpture and figurines featuring its SUPERDAWG trademark and the “Flaurie” and “Maurie” hot dog characters, at its restaurant location and on its superdawg.com website. 13.

As a result of the use of the SUPERDAWG trademark for more than 60 years,

together with its promotional efforts and the national publicity SuperDawg has received throughout the years, SUPERDAWG has become a distinctive name associated with Plaintiff. 14.

On information and belief, Defendant, opened up a fast food restaurant under the

name “SuperDog” at 111 MacDougal Street in New York, New York, and is operating a website at superhotdognyc.com prominently featuring the “SuperDog” name. See EXHIBIT C. In addition to featuring the “SuperDog” name on the signage for his restaurant (EXHIBIT D), Defendant is also using the “SuperDog” name on menus (EXHIBIT E), cash register receipts (EXHIBIT F) and on employee uniforms (EXHIBIT G). 15.

On March 10, 2009, Defendant filed a federal trademark application for the name

“SuperDog” with the words “hot dog concept” shown in EXHIBIT H. This application was assigned Serial Number 77/687, 157. 16. 4,

2009

In further recognition of the fame of Plaintiff’s SUPERDAWG trademark, a June posting

on

the

New

York

magazine

http://nymag.com/daily/food/2009/06/danny_o_hits_the_trifecta_burg.html,

website

at:

announced

the

upcoming opening of Defendant’s “SuperDog” restaurant, stating that “…we’re told he’ll open his hot-dog concept, Super Dog (no relation to Chicago’s iconic Superdawg), next door in days…”. EXHIBIT I.

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On June 4, 2009, counsel for Plaintiff sent a cease and desist letter to Defendant

giving Defendant notice of Plaintiff’s federal trademark rights and that Defendant’s adoption and use of the “SuperDog” name constituted acts of trademark infringement and dilution under the U.S. laws. See, EXHIBIT J. Plaintiff requested that Defendant cease and desist such activities, and to abandon Defendant’s pending trademark application for the infringing “SuperDog” mark. 18.

On June 11, 2009, Defendant’s attorney sent an email to Plaintiff’s counsel

advising that Defendant would abandon his trademark application and expressly stating that Defendant “is not using ‘SuperDawg’ or ‘SuperDog’ for restaurant services or any other services.”

See EXHIBIT K.

Contrary to the email received from Defendant’s counsel,

Defendant continued using the “SuperDog” name, and on June 16, 2009, Plaintiff’s counsel sent a second letter to Defendant requesting that it stop using the “SuperDog” name. See EXHIBIT L. On June 17, 2009, Defendant’s attorney forwarded an email message from Defendant that he “[has] not and do not intend to use ‘superdog’ or any variation.” See, EXHIBIT M. On June 17, 2009, Plaintiff’s counsel sent an email to Defendant’s counsel noting the inconsistencies between Mr. Omari’s email that “…we have not and do no intend to use ‘superdog’ or any variation,” and the images provided by Plaintiff showing Defendant’s use of “SuperDog” on signage and menus. See EXHIBIT N. 19.

Defendant’s continued use of the “SuperDog” name constitutes willful and

contemptuous attempt to intentionally trade on Plaintiff’s valuable reputation and good will in flagrant disregard of Plaintiff’s lawful rights. As such, this case is exceptional within the meaning of 15 U.S. C. § 1117. 20.

Defendant’s infringing and unfair activities are detrimental to the good will and

business reputation symbolized by the SUPERDAWG trademark.

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Defendant’s foregoing

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conduct infringes Plaintiff’s trademark and dilution rights resulting in irreparable harm to Plaintiff. COUNT I TRADEMARK INFRINGEMENT 21.

As a complete and first ground for relief, Plaintiff hereby charges Defendant with

infringement of U.S. Trademark Registration No. 1,309,420 under the trademark laws of the United States and, in particular, 15 U.S.C. § 1114, and realleges Paragraphs 1-20 of this Complaint. 22.

Notwithstanding Plaintiff's well known and prior-established rights in its

SUPERDAWG trademark, and without the authorization of Plaintiff, Defendant adopted, advertised and operated a restaurant, in U.S. commerce, in connection with the mark “SuperDog,” which is confusingly similar to Plaintiff's famous SUPERDAWG trademark. 23.

Defendant's use of the “SuperDog” name in connection with restaurant services

and food products, without authorization from Plaintiff, is likely to cause confusion, mistake, and/or deception as to the affiliation, connection and/or association with Plaintiff and its registered SUPERDAWG trademark, or as to the origin, sponsorship or approval of Defendant’s products and services by Plaintiff, in violation of 15 U.S.C. § 1114, and infringes Plaintiff's trademark rights under U.S. Registration No. 1,309,420. 24.

Defendant's infringement of Plaintiff's registered SUPERDAWG trademark is

detrimental to the good will and business reputation symbolized by Plaintiff's SUPERDAWG mark. All of the foregoing conduct by Defendant infringes Plaintiff's SUPERDAWG mark and causes Plaintiff irreparable harm.

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Defendant’s acts alleged herein were committed willfully and with knowledge

that such unauthorized trademark use would cause confusion, or cause mistake, or deceive purchasers to believe that Plaintiff sponsored, endorsed, or authorized Defendant’s products and services. Thus, a finding of an exceptional case within the meaning of 15 U.S.C. § 1117 is warranted. COUNT II TRADEMARK DILUTION 26.

As a complete and second ground for relief, Plaintiff hereby charges Defendant

with dilution of Plaintiff's proprietary rights under the laws of the United States, 15 U.S.C. §§ 1125(c), the State of Illinois, 765 ILCS 1036/65, and the State of New York, New York General Business Law § 360 et seq., and realleges Paragraphs 1-25 of this Complaint. 27.

As a result of Plaintiff’s advertising, promotion and use of the registered

SUPERDAWG trademark, and the national publicity of Plaintiff and its SUPERDAWG trademark, the SUPERDAWG trademark has become distinctive and famous. 28.

Defendant's use in commerce of the “SuperDog” name erodes the distinctiveness

of Plaintiff's famous and distinctive registered SUPERDAWG trademark as a primary and distinguishing feature of its restaurant services and food products. 29.

Defendant had prior written notice of Plaintiff's rights in its SUPERDAWG

famous mark, and with this prior written notice Defendant willfully intended to trade on Plaintiff's reputation or cause dilution of Plaintiff's famous SUPERDAWG mark which had become famous prior to the actions of Defendant complained of herein. 30.

Unless Defendant's conduct is enjoined immediately, it will erode the distinctive

quality of the SUPERDAWG trademark and will inevitably destroy the advertising value of such

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mark and the good will associated with such mark, which Plaintiff has spent considerable time, energy, and money to develop, resulting in irreparable harm to Plaintiff. COUNT III FEDERAL UNFAIR COMPETITION 31.

As a complete and third ground for relief, Plaintiff hereby charges Defendant with

federal unfair competition under the trademark laws of the United States and, in particular, 15 U.S.C. § 1125(a), for unfair competition, infringement and unlawful appropriation of Plaintiff’s SUPERDAWG trademark, and realleges paragraphs 1-30 above. 32.

Without the consent or authorization of Plaintiff, Defendant has adopted,

promoted and operated a restaurant and website under the “SuperDog” name and in connection with a hot dog character. 33.

Defendant’s adoption and use of the “SuperDog” name that is confusingly similar

to Plaintiff’s SUPERDAWG trademark, in commerce without authorization by Plaintiff, will likely cause confusion, mistake, and/or deception as to the affiliation, connection and/or association with Plaintiff, or as to the origin, sponsorship or approval of Defendant’s restaurant and food products by Plaintiff, in violation of 15 U.S.C. § 1125(a). 34.

Defendant’s conduct has and will continue to injure Plaintiff and diminish and

destroy its goodwill in its SUPERDAWG trademark. The foregoing conduct by Defendant infringes the SUPERDAWG trademark used by Plaintiff and causes Plaintiff irreparable harm. 35.

Upon information and belief, Defendant’s acts as alleged herein have been

committed willfully and with knowledge that such unauthorized use of the “SuperDog” name would cause confusion, mistake, or deceive purchasers to believe that Plaintiff sponsored, endorsed, or authorized Defendant’s restaurant, or that Defendant’s restaurant and products are

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associated with Plaintiff. Thus, a finding of an exceptional case is warranted under 15 U.S.C. § 1117(a). COUNT IV UNFAIR BUSINESS PRACTICES 36.

As a complete and fourth ground for relief, Plaintiff charges Defendant with

unfair business practices in violation of laws of the State of Illinois and New York, as provided by the Illinois Consumer Fraud and Deceptive Business Practices Act 815 ILCS 505/1 et seq. and § 349 of the New York General Business Law, and the common law, and realleges paragraphs 1-35 above. 37.

Defendant has promoted, advertised and operated a restaurant and sold food

products in connection with the “SuperDog” name thereby causing a likelihood of confusion or of misunderstanding as to affiliation, connection or association with or certification by Plaintiff, has passed off its products and services as those of Plaintiff, and/or has engaged in other conduct which similarly creates a likelihood of confusion or misunderstanding. 38.

The foregoing unfair competition and deceptive acts and practices of Defendant

with respect to the advertising, offering for sale, and sale of food products, and operation of a restaurant under the “SuperDog” name, have caused Plaintiff to suffer irreparable harm and constitutes consumer fraud and deceptive trade practices in violation of the laws of the States of New York and Illinois, and the common law, and are subject to the sanctions provided therein.

COUNT V DECEPTIVE TRADE PRACTICES 39.

As a complete and fifth ground for relief, Plaintiff charges Defendant with

deceptive trade practices in violation of laws of the State of Illinois and New York, as provided 9

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by the Illinois Uniform Deceptive Trade Practices Act 815 ILCS 510/1 et seq. and § 350 of the New York General Business Law, and the common law, and realleges paragraphs 1-38 above. 40.

Defendant has promoted, advertised and operated a restaurant and sold food

products in connection with the “SuperDog” name thereby causing a likelihood of confusion or of misunderstanding as to affiliation, connection or association with or certification by Plaintiff, has passed off its products and services as those of Plaintiff, and/or has engaged in other conduct which similarly creates a likelihood of confusion or misunderstanding. 41.

The foregoing unfair competition and deceptive acts and practices of Defendant

with respect to the advertising, offering for sale, and sale of food products, and operation of a restaurant under the “SuperDog” name, have caused Plaintiff to suffer irreparable harm and constitutes consumer fraud and deceptive trade practices in violation of the laws of the States of New York and Illinois, and the common law, and are subject to the sanctions provided therein.

PRAYER FOR RELIEF Plaintiff prays for the following relief: 1.

Judgment confirming that, pursuant to 15 U.S.C. § 1115(b), Plaintiff's U.S.

Trademark Registration No. 1,309,420 is valid, owned by Plaintiff and that Plaintiff has the exclusive right to use the trademark in commerce. 2.

Judgment that Defendant infringed Plaintiff's SUPERDAWG trademark and

Registration. 3.

Judgment that Defendant willfully infringed Plaintiff's SUPERDAWG trademark

and Registration. 4.

Judgment that Defendant diluted Plaintiff's famous SUPERDAWG trademark.

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Judgment that Defendant willfully intended to trade on and dilute Plaintiff's

famous SUPERDAWG trademark. 6.

Judgment that Defendant competed unfairly with Plaintiff by its adoption and use

of the “SuperDog” name. 7.

Judgment that Defendant and its officers, agents, servants, employees, attorneys

and all persons in active concert and/or participation with him who receive notice be preliminarily and permanently enjoined and restrained from: (a)

Using any mark identical or confusingly similar to Plaintiff's SUPERDAWG trademark, or any colorable imitations thereof including but not limited to “SuperDog” and “SuperDog” with the word “hot” above the term “SuperDog,” or any words or representations confusingly similar thereto in connection with the advertising, offering for sale and/or sale of Defendant's products and services;

(b)

Otherwise infringing the Plaintiff's SUPERDAWG trademark and Registration;

(c)

Diluting the distinctiveness of Plaintiff's SUPERDAWG trademark;

(d)

Using the name “SuperDog” in any manner or any similar designations, or otherwise unfairly competing with Plaintiff;

(e)

Causing any misunderstanding as to source, sponsorship, approval or certification or approval with or by Plaintiff or its products and services; and,

(f)

Using the superhotdognyc.com domain name.

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Judgment that Defendant be directed to file in Court, and to serve on Plaintiff,

within thirty (30) days after entry of the above injunction, a report in writing, under oath, setting forth in detail the manner and form in which he has complied with the injunction. 9.

Judgment that Defendant transfer ownership of the superhotdognyc.com domain

name to Plaintiff. 10.

Judgment that Defendant be directed to deliver up to this Court for destruction,

pursuant to 15 U.S.C. § 1118, all prints, advertisements, signage, wallpaper, menus, cash register receipts, uniforms or other clothing, or other articles in its possession bearing “SuperDog”, or any reproduction, counterfeit, copy or colorable imitation thereof, and all plates, molds, matrices, screens or other means of making the same. 11.

Judgment that Defendant be liable: (a)

For all profits received from the sale of products bearing a mark which is confusingly similar to Plaintiff's SUPERDAWG trademark or Registration; and,

(b)

For actual damages sustained by Plaintiff on account of Defendant's infringement, dilution, and due to the flagrant and deliberate nature of such violations, that such damages be trebled and punitive damages be assessed.

12.

Judgment that this case is exceptional and that Plaintiff be awarded its reasonable

attorneys' fees and taxable costs, and such other and further relief to Plaintiff as the Court deems meet and just.

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A trial by jury is requested.

Respectfully submitted, SUPERDAWG DRIVE-IN, INC.

Dated: June 22, 2009

By: /s/ Linda A. Kuczma Linda A. Kuczma [email protected] Bradley F. Rademaker [email protected] Jeffrey M. Cox [email protected] BANNER & WITCOFF, LTD. 10 South Wacker Drive, Suite 3000 Chicago, Illinois 60606 Telephone: (312) 463-5000 Facsimile: (312) 463-5001 Attorneys for Plaintiff

13686886

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