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R.J. Ants, Inc. v. Marinelli Enterprises

February 18, 2011

R.J. ANTS, INC. PLAINTIFF,
v.
MARINELLI ENTERPRISES, LLC, ET AL., DEFENDANTS.



The opinion of the court was delivered by: Tucker, J.

February, 2011

MEMORANDUM

After a bench trial in this matter on February 22, 2010, and pursuant to Fed. R. Civ. P. 52(a), the Court makes the following Findings of Fact:

I. FINDINGS OF FACT

A. Introduction

1. This is an action for trademark infringement brought by Plaintiff, who owns the mark "A Taste of Philadelphia," seeking to enjoin Defendants from using the business name "'A Taste of Philly' Hand Twisted Soft Pretzel Bakery."

2. Plaintiff R. J. Ants, Inc. is a Pennsylvania Corporation with its principal place of business at 1512 Chester Pike, Folcroft, Pennsylvania 19032.

3. Defendant Marinelli Enterprises, LLC is a Delaware Limited Liability Company owned by Defendant Vincent Marinelli, a Pennsylvania resident.

4. Defendant Danielle Marinelli is the spouse of Vincent Marinelli.

5. Defendant Vincent Marinelli is a principal and managing member of Marinelli Enterprises, LLC.

6. Defendant Danielle Marinelli is an officer of Marinelli Enterprises, LLC.

B. Plaintiff's Background

7. Richard Della Barba is the President and owner of Plaintiff R.J. Ants, Inc.

8. Plaintiff owns the United States Trademark Registration No. 1,839,752 for the mark "A Taste of Philadelphia", issued on or about June 14, 1994.

9. Plaintiff is the successor in interest to the above trademark registration, having received it through assignment from Domenic Della Barba, one of Plaintiff's former shareholders and the brother of the present principal owner Richard Della Barba.

10. Domenic DellaBarba obtained rights to the mark from the previous owner of the rights to the mark and the business, an individual named Grant Mazmanian.

11. The mark has been in continuous use by Plaintiff or Plaintiff's predecessors in interest since August 1, 1978.

12. Plaintiff's mark has been granted incontestable status by the filing of a combined Section 8 & Section 15.

13. Plaintiff is in the mail and internet gift order business. It sells and distributes various third-party food products and sundry items native to Philadelphia under the trade name "A Taste of Philadelphia."

14. Richard Della Barba runs the day to day operations of "A Taste of Philadelphia."

15. Plaintiff's mark consists of the words "A Taste of Philadelphia." Plaintiff integrates an image of Ben Franklin and the Liberty Bell with his mark.

16. Plaintiff's telephone number for customers is 1-800-8-HOAGIE.

17. Plaintiff's website URL is www.tasteofphiladelphia.com.

18. Plaintiff sells hoagies, cheese steaks, TastyKakes, pretzels, Frank's Black Cherry Wishniak Soda, Bookbinder's soup, Goldenburg's Peanut Chews, Herr's Chips, scrapple, pork roll, T-shirts and hats combined in different assortments as gift packages via the Internet.

19. Though Plaintiff's business is primarily Internet-based, Plaintiff also sells cheese steaks, hoagies and beverages to walk-up customers out of its principal and only location in Delaware County.

20. Unlike Defendant, Plaintiff does not bake its own pretzels onsite. Rather, Plaintiff resells stamped pre-made pretzels from Federal Pretzel Company.

21. The least expensive of Plaintiff's gift packages is one dozen Amoroso hoagie rolls which costs $46.95. At the midpoint price level of Plaintiff's product offerings is the Standard "original Philly care package" which costs $89.90. The most expensive package Plaintiff offers costs just under $300.00.

22. Plaintiff advertises on radio, on clear channel taxi media and in regional print magazines using the mark "A Taste of Philadelphia."

23. Specifically, Plaintiff has targeted advertisements to local customers in Philadelphia Magazine, philly.com, Delaware Valley Magazine and Town Talk magazine.

24. In addition to radio and print advertisements, Plaintiff has been the lead sponsor in an annual food festival for the city of Philadelphia entitled "A Taste of Philadelphia."*fn1

25. Plaintiff has been the subject of numerous nationally published newspaper articles over the years, including articles published by the Associated Press and other news wire services, providing widespread publicity for its use of the mark "A Taste of Philadelphia" in association with its food distribution services.

26. Plaintiff claims that customers have been confused regarding the contested mark.

27. Plaintiff is unable to identify the names of any specific customers or prospective customers who have experienced confusion.

28. The only evidence of confusion offered by Plaintiff regarding the parties' marks are phone logs from March 1, 2006 through January 22, 2010.

29. The phone logs of Plaintiff were kept on advice of counsel.

30. The phone logs indicate that anonymous individuals have mistakenly called Plaintiff while trying to reach one of Mr. Marinelli's pretzel stores.

31. In addition to calls seeking general information, Plaintiff received calls from irrate customers wanting to know why goods they had purchased from the Defendant was not being delivered, apparently believing that the Plaintiff was the company selling them pretzels they had ordered.

32. Plaintiff has taken action against other users of the mark "A Taste of Philadelphia," though Plaintiff admits that is has not taken action against every infringer located throughout the country.

33. For example, Plaintiff successfully filed an action to oppose a registration application for a caterer in the state of California whose mark included the phrase "Bringing a Taste of Philly to You."*fn2

34. Federal income tax returns show that from 2001 through 2006, Plaintiff has not made a profit.

35. Plaintiff's main competitor is Joe Kubicky who manages a mail order business that ships Philadelphia type foods around the county, in a similar fashion to "A Taste of Philadelphia", under the name "Philly Foods" utilizing the URL website address of www.atasteofphilly.com.

36. Plaintiff is not in the business of franchising "A Taste of Philadelphia."

37. Plaintiff used to license its mark to Welcome America, Inc. until Welcome America, Inc. registered its own mark "Taste of Philadelphia."

38. Mr. Della Barba is unaware of any damages that he sustained due to Defendants' actions.

39. Plaintiff maintains that the use of the mark A Taste of Philly for the Defendants' business establishment is likely to cause confusion among relevant consumers of Philadelphia-style soft pretzels because each party uses their mark in association with, among other foods native to Philadelphia, soft pretzels.

40. Plaintiff believes that when compared together, the term A Taste of Philadelphia, in the minds of the public, will be taken to be identical to the term A Taste of Philly because the slang word Philly is widely known and accepted by the public at large to mean Philadelphia.

41. The Plaintiff itself has used the word "Philly" for the word "Philadelphia" in some advertisements.

42. Some of Plaintiff's customers have referred to the Plaintiff as "A Taste of Philly."

C. Defendant's Background

43. Mr. Marinelli began his retail operations in or about 2005.

44. Mr. Marinelli is in the business of selling hand-made soft pretzels and other pretzel related items, soft drinks and pretzel making kits primarily from store front buildings.

45. Marinelli is also in the business of franchising stores that sells hand-made soft pretzels.

46. Marinelli first used the mark "A Taste of Philly" Hand Twisted Soft Pretzel Bakery in 1999 in connection with its store in Doylestown, Pennsylvania. Marinelli's other pretzel stores and associated franchises continue to use this mark.

47. When Mr. Marinelli began his business, he sometimes referred to his business as "A Taste of Philly", and for several years, he did ...


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