Competing trademarks

A three-judge panel of the U.S. Patent and Trademark Office ruled a South Florida Florida pizzeria chain may register and use a logo that closely resembles the green-and-yellow signs of New Jersey’s Garden State Parkway.

The ruling by the USPTO’s Trademark Trial and Appeal Board denied the New Jersey Turnpike Authority’s application to halt trademark registration of a circular logo by Jersey Boardwalk Pizza Co. The two signs are similar, but confusion between them is unlikely because the goods and services are so different, the Trademark Trial and Appeal Board ruled Tuesday.

The board rejected the highway authority’s claim that its logo was associated with restaurant services because the Turnpike Authority leases rest-area space to food vendors, including McDonald’s, Starbucks and Pizza Hut.

Administrative Judges Thomas Wellington, Angela Lykos and Cynthia Lynch noted the Turnpike Authority is essentially a landlord for it food vendors, rejecting the authority’s assertion that those companies are licensees of the Garden State Parkway trademark.

“We cannot conclude that plaintiff has proven common law rights in its mark for restaurant services. We lack proof that consumers of these restaurants would have encountered plaintiff’s mark in connection with these services,” the panel said.

The judges also rejected the Turnpike Authority’s claim that the pizzeria with restaurants in Homestead, Tavernier and Key Largo acted in bad faith by moving ahead with its plans even after receiving a cease-and-desist letter from the Turnpike Authority, which operates the public toll road.

“We infer no bad faith from defendants’ creation of a New Jersey-themed motif for its restaurants, or from submission of the application even after plaintiff’s cease-and-desist letter, because as defendants expressed in their response to the letter, and as we find here, the applied-for mark is not likely to cause consumer confusion,” the judges said.

The board found in favor of the Turnpike Authority on some other issues. It granted the authority’s request to cancel an earlier version of the pizzeria’s trademark, which is no longer in use. It also denied Jersey Boardwalk’s counterclaim seeking to cancel the Turnpike Authority’s registration of its own logo.

“The Turnpike Authority took a position that nobody could have a mark that was similar to theirs. The decision is novel because, if you read the opinion, the New Jersey Turnpike Authority has been sending cease-and-desist letters to companies around New Jersey, forcing them to stop using a logo similar to the Garden State Parkway logo. This is the first company that stood up to them and ultimately got a determination in their favor,” said Justin Klein of Marks & Klein in Red Bank, New Jersey, who represented Jersey Boardwalk along with the firm’s JoyAnn Kenny.

“It’s been four long years, there have been a lot of resources spent on this, on both sides,” Klein said. The pizzeria owners “are relieved that it’s over. They just want to sell pizza.”

Klein noted the outcome does not prevent the Turnpike Authority from licensing its intellectual property, including the Garden State Parkway logo, and collect royalties for its use on items such as T-shirts and mugs.

The Turnpike Authority was represented by Ronald Israel of Chiesa, Shahinian & Giantomasi in West Orange, New Jersey. He did not respond to calls for comment.

Turnpike Authority spokesman Thomas Feeney said in a statement: “We are pleased that the board upheld the validity of our trademark, and we’re pleased that they canceled Boardwalk Pizza’s existing logo registration. We are disappointed and obviously disagree with the board’s decision regarding Boardwalk Pizza’s pending logo application, and we are exploring our appeal options.”

The decision is subject to appeal in U.S. District Court or the U.S. Court of Appeals for the Federal Circuit.

Jersey Boardwalk Pizza, operated by former New Jersey residents, has three locations and in Florida and will soon open a fourth in Kendall. Playing up its connections to New Jersey, the company seeks franchisees for additional locations.

The Turnpike Authority sued the pizzeria over the lookalike logos in 2014. U.S. District Judge William Martini dismissed that case in 2015, finding the Florida eateries lacked sufficient contacts with New Jersey to make it subject to personal jurisdiction in the state. The Turnpike Authority filed its case with the USPTO in 2014.

The pizzeria dispute is not the only one over businesses adopting logos similar to that of the Garden State Parkway. A settlement conference is set in June in a lawsuit by DW Vineyards against the  Turnpike Authority over its What Exit yellow-and-green wine label, which features a silhouette of New Jersey and a star for its Ringoes, New Jersey, home.