A federal judge in New Jersey dismissed the Turnpike Authority’s trademark lawsuit over a lookalike logo from a Florida pizza chain.
Last summer, the New Jersey Turnpike Authority sued the small Florida-based Jersey Boardwalk pizzeria chain over the restaurant’s logo, which looks remarkably similar to that of the Garden State Parkway. Earlier this week, a federal court in New Jersey dismissed the suit saying that the pizza chain didn’t have enough contact with the state to allow for the Turnpike Authority to file a lawsuit there.
The court’s dismissal of the case [PDF] centers on the issue of jurisdiction, i.e., whether the Turnpike Authority could file a trademark infringement lawsuit against a company that does no real business in the state.
Jersey Boardwalk doesn’t operate any stores anywhere in the vicinity of New Jersey and has only sold, via online orders, a handful of merchandise to NJ residents, though it’s likely that many of these customers only made these purchases after hearing of the lawsuit.
“Although Plaintiff may have felt the brunt of harm in New Jersey, it could not be said that New Jersey is the focal point of the offending activity,” explains the judge. “Florida is the focus of the activity. The spread of the allegedly infringing mark via merchandise sales on the internet is random and fortuitous.”
Additionally, the Turnpike Authority argued that when Boardwalk Pizza shipped a truck full of aid materials to areas impacted by Hurricane Sandy, it was a “publicity stunt resulting in purposeful availment,” but the judge said he was “not persuaded” by this contention.
“That contact with New Jersey is still too attenuated to put the Defendants on notice that they would be subject to a trademark infringement suit in New Jersey,” writes the judge.
Finally, the Turnpike folks also Plaintiff’s argument that use of “Jersey” in the restaurant’s name and marketing constitutes purposeful availment of New Jersey, but again the judge was not persuaded.
“While the Defendants are evoking sentimentality with New Jersey natives in Florida for the purposes of winning customers, this appeal to the idea of ‘Jersey’ does not demonstrate purposeful availment of the privileges of doing business in New Jersey,” he concludes. “On the contrary, the Defendants’ use of the idea of ‘Jersey’ or ‘Italian food from Jersey’ bears an element of nostalgia or even exoticism that is clearly directed to consumers outside of New Jersey.”
Given that the judge’s dismissal was based on a jurisdictional issue, it’s possible that the Turnpike Authority could file trademark suit in Florida.
“The ruling relates only to the question of what court should hear the complaint,” a rep for the Turnpike Authority tells the New Jersey Law Journal. “The court did not rule in any way on the merits of the case. The Turnpike Authority will continue to take action to protect its valuable marks… The authority will take some time to consider its options before deciding what step to take next in the civil matter.”
The pizzeria has twice been granted a trademark on its restaurant logos. The company’s attorney says that the U.S. Patent and Trademark Office was aware both times of the similarity to the Garden State Parkway logo but approved it anyway.
The USPTO is currently considering a petition — separate from the lawsuit — from the Turnpike Authority to cancel Jersey Boardwalk’s 2013 trademark. Even if the trademark is cancelled, that wouldn’t necessarily mean the pizzeria couldn’t use the logo; just that it would no longer hold the exclusive trademark to it.
by Chris Morran via Consumerist