(l to r.) The logo of the Boardwalk Pizza company, based in Florida, and the official insignia of the Garden State Parkway. The N.J. Turnpike Authority is suing Boardwalk Pizza alleging infringement of the logo. ()
The New Jersey Turnpike Authority has filed suit in federal court against a Florida restaurant franchise with a New Jersey theme, claiming its yellow-and-green logo infringes the agency’s service mark for the Garden State Parkway.
Jersey Boardwalk Pizza Co. advertises “‘authentic Italian food from Jersey,’” but its logo is likely to create the impression that its two Florida restaurants are connected to the plaintiff, according to the suit, which was filed July 21 in the U.S. District Court for the District of New Jersey.
The Garden State Parkway’s emblem features an outline of the state against concentric green and yellow circles. The restaurant’s logo has an identical color scheme and includes the same circles and outline of the state, with the addition of the name “Jersey Boardwalk Pizza Co.” and the words “Subs, Cheesesteaks, Pasta,” according to the suit.
Besides using the logo at its restaurants in Islamorada and Tavernier, Fla., the defendants sell merchandise with the logo on its website, the suit says.
And the defendants have advertised the intention to sell franchises up and down the East Coast, including in New Jersey, according to the suit.
The defendants in the suit are Jersey Boardwalk Franchising, Jersey Boardwalk Pizza Corp. and Boardwalk Pizza.
The Turnpike Authority’s lawyer sent a cease-and-desist letter to the restaurant owners April 16, and on April 30, the defendants filed a service mark application for their logo, the suit says.
The Turnpike Authority brings claims for service mark infringement, unfair competition under Section 43(a) of the Lanham Act, federal service mark dilution, common-law service mark infringement and unfair competition, and unfair competition under N.J.S.A. 56:4-1. The suit seeks an injunction against infringing activities, compensatory and treble damages. The plaintiffs also want the defendants to turn over all merchandise printed with the logo, as well as molds or plates used to reproduce the logo.
The plaintiffs are also seeking to have the defendants surrender the service mark registration it obtained, since they applied for the mark after the plaintiffs accused them of infringement.
Counsel for the defendants, Justin Klein of Marks & Klein in Red Bank, N.J., said the restaurant logo is non-infringing. Klein said it’s “unfortunate that the Turnpike Authority decided to pick on this business. Obviously we would like to see them spending more time being more productive, helping citizens have a good ride.”
Klein also said similar suits by government entities seeking to halt use of their intellectual property by private businesses have been dismissed.
On May 29, U.S. District Judge Kevin McNulty of the District of New Jersey ruled in Renna v. County of Union that Union County, N.J., had no trademark rights to the county seal and had no grounds to prevent a local activist from using the seal on her public access cable television show.
Peter Nussbaum and Ronald Israel of Wolff & Samson in West Orange, N.J., who represent the Turnpike Authority, said the present case was different from the one involving Union County because the Parkway logo was used to promote the roadway.
Nussbaum said in the April 16 cease-and-desist letter that the Garden State Parkway logo has been in use since 1956. The New Jersey Turnpike Authority, which operates the Parkway, “has invested a substantial amount of time, money and other resources advertising, promoting, marketing and publicizing its services provided under the Garden State Parkway logo mark,” the letter said.
In an April 24 response, defense counsel JoyAnn Kenny of Marks & Klein said Jersey Boardwalk Pizza’s logo could not be considered infringing because it conducts business 1,300 miles away from New Jersey and because no one would confuse a restaurant with a government agency that maintains roads.
Kenny said the Garden State Parkway mark is “unpoliced” and that use of the mark and variations on the mark by commercial enterprises are “rampant.” She said the authority’s pursuit of the matter was “an unnecessary, fruitless and unwarranted waste of public resources.”
Nussbaum said in a reply letter dated May 15 that infringing uses of the Garden State Parkway logo were in fact policed, although such actions were not reported in the media. He disputed Kenny’s claim that the suit was an improper use of public resources, adding that the defendant’s willful adoption of a logo “designed to trade off our client’s well-established goodwill” left the Turnpike Authority no choice but to enforce its trademark rights.
Also in the letter, Nussbaum disputed the claim that differences between the goods and services offered by the plaintiff and defendants would demonstrate that the similar logos would not confuse the public. Because there are many service areas along the Garden State Parkway that include restaurants, and many of those restaurants serve pizza, “consumers who encounter your client’s mark as used in connection with its restaurant services will mistakenly assume that your client’s use of the mark is authorized by NJTA and/or that the food items served at your client’s restaurant are associated with the food served at the restaurants located in the services areas on the Garden State Parkway.”
Contact the reporter at firstname.lastname@example.org.