Federal appeals court takes final slice out of Patsy’s trademark case
Check, please.
A decades-long trademark dispute between two iconic Italian eateries in Manhattan laying claim to the “Patsy’s” name has come to a close.
The Second Circuit Court of Appeals ended the legal food fight between Patsy’s Italian Restaurant on W. 56th St. and Patsy’s Pizzeria in Harlem, ruling in favor of the Midtown mainstay while still slamming the red sauce joint over its “frequent gamesmanship.”
The three-member federal appeals panel described the latest chapter — vacating a Manhattan federal judge’s order instructing the U.S. Patent and Trademark Office to award a federal trademark to “Patsy’s Pizzeria” — as a ”puzzling situation at the end of a vexing chapter in the ‘minor legal epic.’ ”
The sauce-y courtroom saga dates all the way back to 1999, but things heated up when the owners of the famed Harlem pizzeria sued the Midtown Patsy’s in 2016, alleging the eatery’s little-used “Patsy’s of New York” trademark was being used to block their own federal trademark, making it hard to establish franchise outposts and other products.
Frank Brija, the owner of the Harlem hotspot, opened in 1933 by the late Pasquale (Patsy) Lanceri, lamented the latest decision.
“It’s not fair that they can use these types of maneuvers to prevent me from expanding and growing a business,” he told the Daily News. “But in the end, it’s only hurting the customers.”
In 2018, U.S. District Judge Louis Stanton, rather than make a straight determination in the case, instructed the U.S. Patent and Trademark Office to award the uptown spot known for its coal oven and Neapolitan-style pies a trademark for “Patsy’s Pizzeria.”
The trademark office had previously shot down the application based on claims from the W. 56th St. restaurant that there would be confusion.
Stanton came to his conclusion after both sides essentially admitted in court documents there really wasn’t much chance of customers mixing up the Midtown eatery and the Harlem pizza joint.
That ruling was appealed and last year the 2nd Circuit initially remanded the case back to Stanton, instructing him to clarify whether he was granting either party’s motion for summary judgment.
Stanton responded by writing that his ruling “granted full relief to the parties, and there was no purpose, even an academic one, in separately addressing the summary judgment motions.”
The appeals court disagreed, choosing to vacate Stanton’s decision because it didn’t comply with the Federal Rules of Civil Procedure and said he defied the panel’s order by choosing to not address the issue of summary judgment.
“Although we do not doubt the practicality of his solution, the fact remains that the district court continues to elide the purpose, if not the plain text requirements,” the judges wrote in their unanimous decision.
The judges also kneaded the Midtown restaurant in a footnote, pointing out its “frequent gamesmanship” and the “stark inconsistency” of opposing the pizzeria’s trademark registration while admitting in court that confusion isn’t an issue.
An attorney for Patsy’s Italian Restaurant, founded in 1944 by the late Pasquale (Patsy) Scognamillo and one of Frank Sinatra’s favorite haunts, told Reuters his clients are “very happy” with the ruling.
“Had the trial court’s decision stood, it would have blown a hole in what summary judgment means for a defendant in a trademark case and the impact that determination has for a plaintiff desiring registration,” attorney Joel MacMull of Mandelbaum Salsburg said.
Both eateries have been chastised by the courts in the past over attempts to use the name “Patsy’s” alone, whether it be on jars of sauce or on additional outposts.
A 2006 trademark lawsuit and a head-scratching jury verdict in a 2008 civil trial led to Brooklyn Magistrate Judge Ramon Reyes to rule almost a decade ago that the 56th St. Patsy’s must call itself Patsy’s Italian Restaurant and the Harlem spot must refer to itself and its outposts across the tri-state area, including one at Citi Field, as Patsy’s Pizzeria.
Brija, meanwhile, said he hopes that the federal trademark office will reconsider his application since multiple courts have determined there is little chance of customers confusing the two spots.
“We hope that... in conjunction with the latest decision from the appeals court (this) will get the (trademark office) to register both of our marks for Patsy’s Pizzeria for restaurants and franchise services,” he said. “It has been a long time coming as we have worked very hard to expand our business without a trademark to over 10 locations.
“But in today’s harsh business climate especially for the restaurant industry it is imperative for us to have our trademarks in order to hopefully expand our business even further,” he added.
