District Judge Louis L. Stanton
Plaintiff and its predecessors have used the PATSY’S PIZZERIA mark since 1933. It licenses the mark to its Patsy’s Pizzeria franchisees. Patsy’s Brand Inc. uses and licenses the PATSY’S OF NEW YORK and PATSY’S OF NEW YORK ITALIAN RESTAURANT marks. Plaintiff asserted that the continued use and registration of the PATSY’S OF NEW YORK mark in light of prior litigation promotes consumer confusion and infringes its senior PATSY’S PIZZERIA mark contrary to Lanham Act §43. The court denied dismissal of plaintiff’s complaint. Because plaintiff alleged it acquired rights to the PATSY’S PIZZERIA mark under state law continuing since before publication of the registration for the PATSY’S OF NEW YORK mark, its complaint state a claim for relief. Further, the conceded fact that Patsy’s Brand’s mark has been registered for five years, is insufficient to establish incontestability. Patsy’s Brand must show that its registered mark has been in continuous use for five consecutive years after the date of registration and is still in use in commerce, a factual issue for trial. Nor was Patsy’s Brand’s assertion that it used the PATSY’S OF NEW YORK mark for the past 10 years sufficient to show prejudice for purposes of the affirmative defense of laches.