Case 4:15-cv-03484 Document 1 Filed in TXSD on 12/01/15 Page 1 of 25

IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
MAMBO MARKS, LLC and
MAMBO SEAFOOD #1, INC.
Plaintiffs
v.
SAMBA FOOD, LLC and
ALLEN CHUNG

Civil Action No. ________________

DEMAND FOR JURY

Defendants

PLAINTIFFS, MAMBO MARKS, LLC AND MAMBO SEAFOOD #1, INC., ORIGINAL
COMPLAINT, REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIONS,
AND JURY DEMAND

Plaintiffs Mambo Marks, LLC and Mambo Seafood #1, Inc. (hereinafter collectively
referred to as Mambo) file this Original Complaint, Request for Preliminary and Permanent
Injunctions, and Jury Demand against Defendants Samba Food, LLC (Samba) and Allen Chung
(Chung) and, for cause of action, state as follows:
NATURE OF THE ACTION
1.

This is an intellectual property dispute arising under the Trademark Act of 1946, 15

U.S.C. 1051, et seq., as amended (the Lanham Act) and the Copyright Act of 1976, 17 U.S.C.
101, et seq., as amended. Mambo and its affiliate companies own and operate seafood restaurants
in Texas. Defendants recently opened a competitive seafood restaurant and, in so doing, have
infringed and are continuing to infringe upon Mambos legally protected intellectual property
rights.

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2.

Mambo seeks injunctive relief, damages, disgorgement of Defendants profits,

attorney fees, and costs for trademark infringement and unfair competition under the Lanham Act
and for copyright infringement under the Copyright Act.
JURISDICTION
3.

This Court has subject matter jurisdiction over this dispute under 28 U.S.C. 1331

and 1338.
4.

This Court has personal jurisdiction over Defendant Samba Food, LLC because it is

a limited liability company organized and existing under the laws of the State of Texas and
conducts business in the Southern District of Texas.
5.

This Court has personal jurisdiction over Defendant Allen Chung because, upon

information and belief, he is a citizen of the State of Texas. Chung lives and conducts business in
the Southern District of Texas.
VENUE
6.

Venue is proper in this district under 28 U.S.C. 1391(b)(1), (2) because Defendants

reside in this district and because a substantial part of the events or omissions giving rise to
Mambos claims occurred in this district.
PARTIES
7.

Plaintiff Mambo Marks, LLC is a limited liability company organized and existing

under the laws of the State of Texas. Mambos principal place of business is in Houston, Harris
County, Texas. Plaintiff Mambo Seafood #1, Inc. is organized and existing under the laws of the
State of Texas, with a principal place of business being in Houston, Harris County, Texas.
8.

Defendant Samba Food, LLC is a limited liability company organized and existing

under the laws of the State of Texas. Samba may be served through its registered agent, Allen

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Chung, who may be located at 8303 Southwest Freeway, Suite 760, Houston, Texas 77074 or 1217
Tamy Lane, Houston, Texas 77055 or wherever he may lawfully be found.
9.

Defendant Allen Chung is an individual residing in Houston, Harris County, Texas.

Chung may be served personally at 1217 Tamy Lane, Houston, Texas 77055 or wherever he may
lawfully be found.
CONDITIONS PRECEDENT
10.

Mambo has performed all conditions precedent to filing suit or they have occurred.
FACTS

Mambos Intellectual Property

11.

MAMBO SEAFOOD restaurants began operating in Houston in the mid-1990s

under a different name, and in 2001 rebranded as MAMBO SEAFOOD. Mambo has filed for and
obtained trademark registrations for its trademarks and service marks from the United States Patent
and Trademark Office (USPTO), and has registered its original menu with the U.S. Copyright
Office, inclusive of its unique dancing letters design for MAMBO that is prominently displayed in
its signage, menus and promotional materials. Mambo has consistently provided notice of its
registered trademarks by use of the registered trademark symbol, , in connection with
registered marks, applied copyright notice to its menus and promotional materials, and used the
symbol TM with trademarks that were in the process of obtaining registration from the USPTO
and/or considered trademarks and service marks of Mambo. Today, there are eight MAMBO
SEAFOOD restaurants throughout the Houston area, one MAMBO SEAFOOD restaurant in
Dallas, and one MAMBO SEAFOOD restaurant in McAllen, Texas. MAMBO SEAFOOD
restaurants serve a variety of American and Latin seafood dishes.

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12.

Samba and Chung own and operate SAMBA SEAFOOD, a single restaurant located

in Humble, Harris County, Texas that has opened in the past few months. SAMBA SEAFOOD
serves a variety of American and Latin seafood dishes strikingly similar to those served at the
MAMBO SEAFOOD restaurants, and its employees regularly, albeit falsely, tell patrons that
SAMBA SEAFOOD and MAMBO SEAFOOD are related entities.

It appears that, to a

significant degree, SAMBA SEAFOOD has simply copied MAMBO SEAFOODs logo, signage,
menu, and other business and advertising materials which clearly infringes on Mambos intellectual
property rights.
13.

Mambo is the exclusive, legal owner of the rights to the trademark MAMBO

SEAFOOD in connection with restaurant services, including both the words and design, and is the
exclusive legal owner to the MAMBO mark and design for restaurant services and for kitchen
utensils, such as insulated sleeves to hold beverages. Further, Mambo owns copyright in the
associated artwork used in the MAMBO SEAFOOD signage, menus, and corresponding business
materials. Mambo also is the exclusive, legal owner of the rights to the trademarked words
VUELVE a la VIDA in connection with restaurant services and fish-containing food preparations
for consumption on or off the premises.
14.

Mambos rights include, inter alia, ownership of United States Trademark

Registration Number 2,635,236 for the word mark MAMBO SEAFOOD, Registration Number
2,677,416 for the word and design mark MAMBO SEAFOOD, and Registration Number
3,709,148 for the word and design MAMBO. Mambo also owns copyright in its menus, signage,
and other promotional materials. This includes Copyright Registration Certificate VA 1-166-438,
covering original artwork in MAMBO SEAFOOD menus, inclusive of the unique MAMBO in

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dancing letters design.

Mambos rights also include, inter alia, ownership of United States

Trademark Registration Number 2,773,318 for the mark VUELVE a la VIDA.1

15.

Mambo has continuously used the trademark MAMBO SEAFOOD and its

MAMBO word and design mark in connection with operating its restaurants in the Houston
metropolitan area and elsewhere since 2001. Mambo has continuously used the trademark
VUELVE a la VIDA in connection with restaurant services and fish-containing food preparations
for consumption on or off the premises since 1996.
16.

Mambo has used and promoted its MAMBO SEAFOOD and MAMBO word

marks and designs on signage displayed on and around the exterior of its restaurants, in advertising
throughout Texas, and on its restaurants menus, among other means of use and promotion.
Furthermore, MAMBO SEAFOOD restaurants and the products the restaurants sell under the
MAMBO SEAFOOD mark are of the highest quality and are well and favorably known in the
Houston, Dallas, and McAllen metropolitan areas. As a result of extensive use and promotion of
the MAMBO SEAFOOD mark, Mambos MAMBO SEAFOOD mark has acquired a favorable
reputation to consumers as an identifier and symbol of Mambo and its products, services, and
goodwill. MAMBO SEAFOOD restaurants have enjoyed extensive business success, have earned
an excellent reputation, established substantial and favorable goodwill, and have enabled Mambo
and its affiliated companies to earn a substantial profit. Accordingly, the MAMBO SEAFOOD
mark is strong and is entitled to broad protection.

Mambo has attached copies of the trademark and copyright registration certificates referenced herein, and has also
attached menus and other promotional materials produced under Mambos exclusive right under copyright law to make
derivative works of its copyright protected work and/or Mambos exclusive rights to use its trademarks in commerce.
See Exhibits A-F.

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17.

Mambo has used and promoted its VUELVE a la VIDA mark on its restaurants

menus since 1996.2 The products Mambo serves at MAMBO SEAFOOD restaurants under the
VUELVE a la VIDA mark are of the highest quality and are well and favorably known in the
Houston, Dallas, and McAllen metropolitan areas. One of the well and favorably known dishes
prepared and sold under the VUELVE a la VIDA mark at MAMBO SEAFOOD restaurants is the
VUELVE a la VIDA COCKTAIL, a seafood cocktail containing shrimp, oysters, fish, and
octopus.3
18.

As a result of extensive use and promotion of the VUELVE a la VIDA mark,

Mambos VUELVE a la VIDA mark has acquired a favorable reputation among consumers as an
identifier and symbol of MAMBO SEAFOOD restaurants, Mambo and its products, services, and
goodwill. Products and services Mambo sells and provides under the VUELVE a la VIDA mark
at MAMBO SEAFOOD restaurants have enjoyed extensive business success, earned an excellent
reputation, established substantial and favorable goodwill, and enabled Mambo and its affiliated
companies to earn a substantial profit. Accordingly, Mambos VUELVE a la VIDA mark is
strong and is entitled to broad protection.
19.

Mambo has invested, and continues to invest, substantial sums and resources to

promote its products and services offered under the MAMBO SEAFOOD and VUELVE a la
VIDA marks.

The original use of Mambos VUELVE a la VIDA mark was prior to the rebranding to MAMBO SEAFOOD in
2001.

MAMBO SEAFOOD restaurants also serve VUELVE a la VIDA SOUP, VUELVE a la VIDA MAMBO
RANCHERO, and VUELVE a la VIDA SCAMPI.

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Defendants Opened a Competing Seafood Restaurant Infringing on Mambos Marks

20.

On August 18, 2011, Chung filed with the County Clerk of Harris County, Texas a

Certificate of Ownership for Unincorporated Business or Profession whereby Chung registered the
assumed name SAMBA SEAFOOD.4
21.

More than three years later, on December 11, 2014, Chung and others formed a

limited liability company called Samba Food, LLC.5

22.

On or about August 4, 2015, the Texas Alcoholic Beverage Commission (TABC)

issued a license to Samba Food, LLC d/b/a Samba Seafood Restaurant.6 However, neither the
Texas Secretary of State nor the County Clerk of Harris County has any record of Samba Food,
LLC being the owner of the trade name Samba Seafood or Samba Seafood Restaurant.
23.

In August 2015, Samba and Chung opened a Latin seafood restaurant located at

7855 North Sam Houston Parkway East, Humble, Harris County, Texas, 77396, and began
operating the restaurant under the name SAMBA SEAFOOD.7 This SAMBA SEAFOOD
restaurant is less than 10 miles from the MAMBO SEAFOOD restaurant located at 10810 North
Freeway, Houston, Texas, 77037. The SAMBA SEAFOOD restaurant serves American and Latin
style seafood dishes strikingly similar to the American and Latin style seafood dishes MAMBO
SEAFOOD serves.8

Mambo has attached Chungs SAMBA SEAFOOD Assumed Name Certificate as Exhibit G.

Mambo has attached Samba Food, LLCs Certificate of Formation as Exhibit H.

Mambo has attached as Exhibit I a copy of the results from a TABC Public Inquiry conducted on the TABC website
identifying Defendant Samba as the owner of the trade name Samba Seafood Restaurant.
7

Even though there is no record of SAMBA SEAFOOD being a registered mark with the United States Patent and
Trademark Office, the symbol appears next to SAMBA SEAFOOD at the top of the SAMBA SEAFOOD menu.
See Exhibit J.
8

One of MAMBO SEAFOODs most famous and well known dishes is its Mambo Rice, a fried rice dish containing
shrimp, chicken or pork, which is an atypical menu item for a Latin seafood restaurant as it is quite similar to an Asian
fried rice dish. Unable to develop its own, unique menu item, Defendants have copied MAMBO SEAFOODs

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24.

Upon information and belief, before opening the SAMBA SEAFOOD restaurant,

Defendants or their agents visited at least one of the MAMBO SEAFOOD restaurants to gain
information about MAMBO SEAFOODs signage, menus, and operations, and thereafter sought
to infringe upon Mambos trademarks and copyrights by, inter alia, creating and using marks
confusingly similar to the MAMBO SEAFOOD mark displayed on MAMBO SEAFOOD
restaurants signage and menus.
25.

Defendants egregiously copied Mambos logo and signage with the apparent intent

of misleading and confusing customers and to deceive them by creating a false appearance of an
affiliation, connection, or association with MAMBO SEAFOOD. Defendants have infringed on
Mambos marks to inappropriately indicate a connection between Defendants and MAMBO
SEAFOOD. Defendants deliberate efforts to create initial-interest confusion in the marketplace
give Defendants unmerited credibility during the early stages of their business and can cause
consumers not to consider MAMBO SEAFOOD even after the confusion dissipates.
26.

The MAMBO SEAFOOD word mark registration protects against use of any

confusingly similar mark, regardless of color or font. The MAMBO dancing letters word and
design mark registration protects against any confusingly similar mark, regardless of color (i.e., the
registration is not limited to any particular color or colors). Each letter of the word MAMBO is
offset and tilted either to the left or the right to give the appearance that the letters are dancing.9
27.

The MAMBO SEAFOOD word and design registration includes the word

MAMBO in dancing letters with each of the letters being red and having a vertical, wavy, white
line. The letters comprising the word SEAFOOD appear in yellow directly below the term
Mambo Rice by offering a fried rice dish containing shrimp, chicken, or ham, which is identified as Signature Rice
on the SAMBA SEAFOOD menu. See Exhibit J, second page.
9

Mambo has attached representative copies of its MAMBO SEAFOOD mark as Exhibit F.

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MAMBO in dancing letters. A blue background appears behind the word SEAFOOD and
which takes the shape of a horizontally elongated rectangle with hemispherical ends and is
encircled by a light pastel blue border.
28.

Despite limitless other marks Defendants could have chosen, Defendants wrongfully

appropriated a mark confusingly similar to Mambos MAMBO and MAMBO SEAFOOD marks
in name and design without Mambos permission. Defendants mark is comprised of the word
SAMBA, a word that looks and sounds confusingly similar to MAMBO, as the three middle
letters of both words are A-M-B.10 The letters in the word SAMBA appear in red, as do the red
MAMBO letters in the MAMBO SEAFOOD mark. The similarities between Mambos
MAMBO and MAMBO SEAFOOD marks and Defendants infringing business name and logo
are not limited merely to red lettering.
29.

In one version of Defendants infringing business practices, the word SAMBA

appears in red and is presented on a yellow background, while in another version the word
SAMBA appears in red and is outlined in yellow and presented on a red background. In both
versions of Defendants logos, the word SEAFOOD appears directly below the word SAMBA
with the letters comprising the word SEAFOOD appearing in white. Just as the word
SEAFOOD in the MAMBO SEAFOOD mark, the word SEAFOOD in Defendants logo is
presented on a blue background and takes the shape of a horizontally elongated rectangle with
hemispherical ends. And, similar to the letters in the word MAMBO in the MAMBO
SEAFOOD mark, each of the letters in the word SAMBA in Defendants logo is tilted to the left
or right to give the appearance the letters are dancing.
10

Not only are the words MAMBO and SAMBA confusingly similar in sound and appearance, it will not be lost on the
Court that Defendants copied Mambos intellectual property and selected a business name that is a similar Latininspired dance style.

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30.

Defendants have even copied Mambos marks down to the direction of the tilt of

each letter. In addition to tilting its letters from side-to-side, Defendants have copied Mambos
marks so identically that Defendants individual letters tilt in the same direction as Mambos
individual lettering. For example, the first letter in Defendants business name leans to the left, as
does Mambos. The second letter leans to the right. The third letter leans to the left. The fourth
letter leans to the right. And the fifth and final letter leans to the right as well.11
31.

The similarities between Defendants signage and Mambos protectable MAMBO

and MAMBO SEAFOOD marks do not end there. The sides of Mambos MAMBO and
MAMBO SEAFOOD marks are angled and not vertically straight. From bottom to top, the sides
of Mambos MAMBO and MAMBO SEAFOOD marks extend outward, to the right on the righthand side and to the left on the left-hand side. Defendants SAMBA SEAFOOD sign is identical.
Also, the top of Mambos MAMBO and MAMBO SEAFOOD marks is wavy and bordered in
blue. Defendants SAMBA SEAFOOD sign also has a blue border and the top is wavy. Mambo
attaches representative copies of Defendants logos that infringe on Mambos MAMBO and
MAMBO SEAFOOD marks as Exhibit K. A comparison is set forth here for ease of reference:

11

Defendants intentionally copied Mambos marks. The lettering arrangement cannot reasonably be considered
happenstance. Mambos first four letters alternate leaning to the left and then the right left, right, left, right. But the
fifth and final letter in Mambos mark does not alternate back to leaning to the left as one may expect in an ordinary,
repeatable sequence. Instead, the fifth letter duplicates the lean of the fourth letter and leans to the right. Defendants
sign is identical left, right, left, right, right.

10

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32.

Defendants also infringe upon Mambos VUELVE a la VIDA mark by offering a

menu item using Mambos trademarked name.12

33.

Defendants have set up and conducted their business in a manner that is

intentionally calculated to deceive and has deceived the public as to the origin of Defendants
SAMBA SEAFOOD restaurant and the products sold in their restaurant. This is demonstrated by,
inter alia, (i) use of logos, signage, and business materials that are confusingly similar to Mambos
MAMBO and MAMBO SEAFOOD trademarks in terms of both words and design,
(ii) establishing a SAMBA SEAFOOD restaurant in close geographic proximity to a MAMBO
SEAFOOD restaurant, (iii) offering a menu item with the exact same name as Mambos registered
mark, VUELVE a la VIDA, (iv) offering one of Mambos most popular menu items, i.e., fried
rice, which is an atypical menu item for a seafood establishment, and other conduct.13 The
deception has misled and is misleading numerous persons into patronizing Defendants SAMBA
SEAFOOD restaurant in the belief that it is associated with MAMBO SEAFOOD. As a result, the
12

Mambo has attached a copy of Defendants menu as Exhibit J, which lists Vuelve A La Vida under its Appetizers
Cold Cocktails Salads section. Mambo inserts below an excerpt from Defendants menu highlighting Defendants
unauthorized use of Mambos mark.

13

As explained below, Defendants employees are affirmatively misrepresenting the existence of a connection between
Defendants infringing establishment and MAMBO SEAFOOD restaurants.

11

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goodwill attached to the MAMBO SEAFOOD restaurants has been and is being seriously injured.
Mambo has been and is being damaged due to the business and profits that would otherwise belong
to Mambo from its MAMBO SEAFOOD restaurants being diverted to Defendants and their
SAMBA SEAFOOD restaurant.
34.

Not only do Defendants logos, menus, and signage infringe upon Mambos

intellectual property rights and create a likelihood of customer confusion, Defendants employees
have

affirmatively

and

falsely

advertised

Defendants

business

operations.

Mambos

representatives have patronized the SAMBA SEAFOOD restaurant to gather information regarding
Defendants unlawful use of Mambos intellectual property. On at least one of these visits, a
SAMBA SEAFOOD employee told Mambos investigator that SAMBA SEAFOOD is the
same as MAMBO SEAFOOD.
35.

Mambos investigator also spoke to several SAMBA SEAFOOD patrons after they

exited Defendants restaurant. These conversations further reveal actual consumer confusion
between MAMBO SEAFOOD and SAMBA SEAFOOD resulting from Defendants confusingly
similar logos, menus, signage, and, potentially, other affirmative misrepresentations Defendants
employees are making to Defendants customers regarding a supposed affiliation with MAMBO
SEAFOOD.
36.

Defendants wrongful activities are willful for at least the following reasons:
a.

Defendants chose a name and logo confusingly similar to

Mambos MAMBO and MAMBO SEAFOOD marks even
though the most rudimentary trademark search would have
revealed Mambos federal registrations for the practically
identical mark for identical types of products and services;

b.

Defendants chose words to identify one of its seafood dishes

that are the same words Mambo previously trademarked,
VUELVE a la VIDA, even though the most rudimentary
trademark search would have revealed Mambos federal

12

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registration for VUELVE a la VIDA for identical types of

products and services;
c.

A SAMBA SEAFOOD employee told Mambos private

investigator that SAMBA SEAFOOD is the same as
MAMBO SEAFOOD; and

d.

Defendants have continued to use their confusingly similar

logo, SAMBA SEAFOOD, even after Mambo notified
Defendants of Mambos prior rights to the MAMBO
SEAFOOD mark.
CAUSES OF ACTION

COUNT 1 TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT

37.

The Lanham Act is designed to eliminate unfair competition methods and protect

businesses from the unjust erosion of their goodwill and reputation. The Lanham Act is intended to
stop unlawful business activities such as those Defendants have perpetuated with their SAMBA
SEAFOOD restaurant.
38.

Mambos registered MAMBO and MAMBO SEAFOOD marks and the

Defendants logo, signage, menu, and advertisements are confusingly similar to one another in
sound, meaning, and appearance.
39.

Mambos registered MAMBO and MAMBO SEAFOOD marks and the SAMBA

SEAFOOD depictions are used on or in connection with identical services, namely restaurant
services, and both restaurants serve food items that are similar or identical in name or ingredients.
40.

Defendants also are using Mambos registered VUELVE a la VIDA mark on

Defendants menu.
41.

Mambo and Defendants are using the MAMBO, MAMBO SEAFOOD and

VUELVE a la VIDA marks in commerce in connection with their restaurant services. Mambo
uses and displays its marks in the sale and advertising of goods and services in commerce.

13

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42.

Mambos registered trademarks are legally protectable, and Mambo has the

exclusive right to use the marks in commerce. Further, Mambos exclusive right to use its marks in
commerce is conclusive because Mambo registered its marks, has continuously used its marks in
commerce for more than five consecutive years, and for each registration has filed the requisite
Declaration of Use pursuant to 15 U.S.C. 1058 (Section 8), Declaration of Incontestability
pursuant to 15 U.S.C. 1065 (Section 15), and paid the requisite fees with the USPTO.
43.

Defendants unauthorized use of Mambos MAMBO, MAMBO SEAFOOD and

VUELVE a la VIDA marks falsely indicates to consumers that Defendants food products and
services originate from, are approved by, are sponsored by, are licensed by, or are affiliated with
MAMBO SEAFOOD restaurants or are otherwise associated with the food products and services
sold in MAMBO SEAFOOD restaurants.
44.

Defendants unauthorized use of Mambos marks in the manner described above is

likely to cause confusion, to cause mistake, or to deceive customers and potential customers of the
parties by suggesting some affiliation, connection, or association between SAMBA SEAFOOD and
MAMBO SEAFOOD when there is no such connection.
45.

Defendants actions, as described above, constitute trademark infringement in

violation of the Lanham Act, 15 U.S.C. 1114(1).

46.

Defendants unauthorized use of the MAMBO, MAMBO SEAFOOD and

VUELVE a la VIDA marks has been willful and undertaken with constructive and actual
knowledge of Mambos ownership of the registered marks.
COUNT 2 UNFAIR COMPETITION UNDER THE LANHAM ACT
47.

Defendants have, in connection with goods and services, used in commerce words,

terms, names, symbols, devices, false designation of origin, false or misleading description of fact,

14

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or false or misleading representations of fact that are likely to cause confusion, mistake, or deceive
as to Defendants affiliation, connection, or association with MAMBO SEAFOOD restaurants or
to the origin, sponsorship, or approval of Defendants goods or services by MAMBO SEAFOOD
restaurants.
48.

Defendants also have, in connection with goods and services, used in commerce

words, terms, names, symbols, devices, false designation of origin, false or misleading description
of fact, or false or misleading representations of fact in advertisements or promotion to
misrepresent the nature, characteristics, qualities, or geographic origin of Defendants goods,
services, or commercial activities.
49.

Defendants actions constitute unfair competition in violation of the Lanham Act, 15

U.S.C. 1125(a) for which Mambo has been damaged. Accordingly, Mambo seeks recovery under
15 U.S.C. 1117 of Defendants profits, damages sustained by Mambo, the costs of this action, and
any other damages permitted by law.
COUNT 3 COPYRIGHT INFRINGEMENT
50.

Co-plaintiff Mambo Seafood #1, Inc. created original, graphic artwork entitled

Mambo Seafood Menu #1. MAMBO SEAFOOD signage, menus and corresponding business
materials all incorporate and/or are derivative works of that artwork. This graphic artwork is
copyrightable subject matter under the laws of the United States.
51.

Mambo Seafood #1, Inc. complied in all respects with the Copyright Act, 17 U.S.C.

101 et seq., and with all other laws governing copyrights.

Accordingly, the Register of

Copyrights issued a certificate of registration number VA 1-166-438 to Mambo Seafood #1, Inc.
Plaintiffs Mambo Marks, LLC and Mambo Seafood #1, Inc. are related companies, and intellectual
property owned by either is used by all related companies.

15

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52.

Defendants have infringed upon Mambos copyright by publicly displaying graphics

and artwork copied largely and substantially from Mambos copyrighted graphics and artwork, a
right reserved exclusively to Mambo under 17 U.S.C. 106(1) and/or Defendants have infringed
upon Mambos exclusive rights to make derivative work under 17 U.S.C. 106(5).14
53.

Defendants willfully infringed upon Mambos copyrighted work, and are liable to

Mambo for infringement under 17 U.S.C. 501.

54.

Mambo notified Defendants that they had infringed, and are infringing upon,

Mambos copyright, but Defendants have continued to infringe upon the copyright.
REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF
55.

Mambo seeks to enjoin Defendants and their agents and representatives from using

Mambos MAMBO, MAMBO SEAFOOD and VUELVE a la VIDA marks or any confusingly
similarly marks because Defendants activity infringes upon Mambos marks, including both the
words and designs. Examples of the confusingly similar marks Mambo seeks to enjoin Defendants
and their agents and representatives from using include the sign displayed close to the street curb,
next to the driveway at the SAMBA SEAFOOD restaurant and the confusingly similar signage
attached to the exterior of the SAMBA SEAFOOD restaurant.15
56.

Mambo also seeks to enjoin Defendants and their agents and representatives from

publicly displaying any graphics or artwork substantially similar to Mambos copyrighted graphics
and artwork, such as the infringing graphic artwork displayed on the sign located close to the street
curb, next to the driveway on the grounds of the SAMBA SEAFOOD restaurant, as well as the

14

Mambo has attached copies of its copyrighted material as Exhibit F, and copies of Defendants infringing material as
Exhibit K.

15

Photos of these confusingly similar marks Mambo seeks to enjoin Defendants and their agents and representatives
from using are attached hereto as Exhibit K.

16

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infringing graphic artwork affixed to the exterior of the SAMBA SEAFOOD restaurant because
this activity infringes upon Mambos copyrighted graphic artwork. Photos of Defendants
substantially similar graphic artwork Mambo seeks to enjoin Defendants and their agents and
representatives from publicly displaying are attached hereto as Exhibit K. Mambo further seeks to
enjoin Defendants from using Mambos registered marks and copyrighted graphic artwork inside
Defendants restaurant, on Defendants menus, and in any other business advertisements.
57.

A party who seeks a preliminary injunction must establish four elements: (i) a

substantial likelihood of success on the merits, (ii) a substantial threat of irreparable injury if the
injunction is not issued, (iii) the threatened injury, if the injunction is denied, outweighs any harm
that will result if the injunction is granted, and (iv) the grant of an injunction will not disserve the
public interest. Texans for Free Enter. v. Tex. Ethics Commn, 732 F.3d 535, 536-37 (5th Cir.
2013). Mambo can establish each of these elements.
Mambo has a substantial likelihood of success on the merits
58.

There is a substantial likelihood Mambo will prevail on the merits.

59.

Mambo owns legally protectable marks, and Mambo can show Defendants are

infringing on Mambos marks. Defendants are using in commerce a reproduction, counterfeit,

copy, or imitation of Mambos marks without Mambos permission. Defendants use is in
connection with Defendants sale, offering for sale, distribution, and advertising of its goods and
services. Moreover, Defendants infringement is likely to cause confusion, mistake, or deception.
60.

Defendants are using Mambos identical VUELVE a la VIDA mark. A strong risk

of consumer confusion arises when an infringer is using a plaintiffs exact mark. Defendants also
are using confusingly similar signage, logos, menus, and business materials compared to Mambos
MAMBO and MAMBO SEAFOOD marks and copyright protected works.

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61.

Mambos marks and copyrighted works are strong. Mambos marks and copyright

protectable works are registered with the USPTO and the United States Copyright Office,
respectively. Mambos marks and copyrighted material are well known in and around Texas.
62.

Defendants images, logos, menus, and signage are identical to Mambos VUELVE

a la VIDA mark and strikingly similar to Mambos MAMBO and MAMBO SEAFOOD marks
and copyright protected works. Defendants copied Mambos marks and copyright protected works
down to the smallest detail, including positioning the letters on its sign to lean the same directions
as the letters in Mambos marks and copyright protected works.
63.

The similarity of the products and the identity of the consumers also cause

confusion because MAMBO SEAFOOD and SAMBA SEAFOOD are restaurants that serve
American and Latin seafood dishes to the same consumer base. Defendants have copied Mambos
menu items, including atypical dishes similar restaurants ordinarily do not serve. Mambo and
Defendants service the same customers in a close geographic proximity. These facts heighten the
likelihood for confusion.
64.

While evidence of actual confusion need not be present to find a likelihood of

confusion, Mambo has some evidence that SAMBA SEAFOOD customers are actually confused
about the origin, association, and connection of SAMBA SEAFOOD to MAMBO SEAFOOD
restaurants. However, there is no association or connection between the two restaurants. Actual
confusion can be supported by a single instance of actual confusion.

Mambo may rely on

anecdotal instances of customer confusion or customer surveys. Further, while no proof of actual
confusion is necessary, an almost overwhelming amount of proof is needed for Defendants to
refute evidence of actual confusion.

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65.

Because Mambos marks and copyright are legally protectable and Defendants

business practices are likely to cause confusion, Mambo can show a substantial likelihood of
success on the merits of its claims.
There is a substantial threat of irreparable injury if injunction is not issued
66.

If the Court does not grant a preliminary injunction, Defendants will continue their

activities that infringe upon Mambos trademarks and copyright and irreparably and incalculably
impair Mambos goodwill and legitimate use of its own marks and copyright.
67.

Mambo will suffer irreparable injury if the Court does not enjoin Defendants from:

using marks that are confusingly similar to Mambos MAMBO and MAMBO SEAFOOD
marks, which includes both words and design, publicly displaying any graphic artwork
substantially similar to or derived from Mambos copyrighted graphic artwork, using Mambos
identical VUELVE a la VIDA mark, and falsely representing to customers or advertising that
Defendants restaurant is the same as, or affiliated with, MAMBO SEAFOOD.
68.

The requisite injury for an injunction against infringement is presumed when one

proves a likelihood of confusion. Money damages are inadequate to compensate a trademark or

copyright holder for an infringers continuing acts, including Defendants use of Mambos
intellectual property to identify and market Defendants brand.
69.

Irreparable harm results when the holder of a trademark cannot control the quality of

the infringers goods and services. Mambo will suffer irreparable harm in the form of loss of
goodwill and damage to its reputation, both of which can be traced to loss of control over
Defendants goods and services. This loss of control constitutes immediate irreparable harm.
70.

Because a likelihood of confusion exists, Mambos inability to control the quality of

Defendants goods or services constitutes an immediate and irreparable injury, regardless of the

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actual quality of Defendants goods or services. Here though, actual customer reviews from those
who have patronized the SAMBA SEAFOOD restaurant reveal the poor quality associated with
Defendants restaurant. A customers bad experience at SAMBA SEAFOOD may influence the
customer never to visit a MAMBO SEAFOOD restaurant because of his poor experience at
SAMBA SEAFOOD.
71.

Various SAMBA SEAFOOD customers have dined at the restaurant and felt

compelled to notify the public of the poor food and service at Defendants restaurant. For example,
customers have posted the following comments after eating at SAMBA SEAFOOD:

Horrible!! I dont recommend this place at all!!! Bad service and raw food[.]

The food is horrible.

Save your money.I sent my meal back and didnt order anything elseI
wouldnt recommend eating here and we wont be back.

Not so good. . . . Save your stomach And money, dont go.

Not very good. Fried Fish was pretty gross. . . . Wouldnt be a place Id try again!

The food really sucks

Other customer reviews identify further troubling conduct ranging from poor sanitary practices,
bad customer service, and flies entering the dining area from an open kitchen door.
72.

Because Defendants signage, menu, and advertisement create a likelihood of

confusion, irreparable harm is presumed. Nevertheless, the harm to Mambos goodwill is seen
through the poor customer reviews SAMBA SEAFOOD has received. Mambo faces a substantial
threat of irreparable harm if the Court does not issue an injunction.
Injury to Mambo if an injunction is not granted outweighs harm to Defendants
73.

Defendants will not suffer undue hardship or loss as a result of the issuance of a

preliminary injunction.

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74.

When, as here, defendants improperly use a plaintiffs trademark, the threatened

harm to the plaintiff outweighs the threatened harm to the defendants if the injunction is not
granted.
Granting the injunction will not disserve the public interest
75.

Issuing the preliminary injunction will not adversely affect the public interest.

76.

The public interest always is served by requiring compliance with Congressional

statutes such as the Lanham Act and by enjoining the use of infringing marks. Protecting Mambo
in this case from an infringing, junior competitor and preventing consumer confusion in the
marketplace does not disserve the publics interest.
77.

The public interest promotes protecting valuable trademarks and service marks in a

capital-based economy that rewards success through competition. The public also has interest in
not being deceived into believing it is dining at a Mambo or Mambo-affiliated restaurant that is
using Mambos marks without authorization.
78.

Mambo asks the Court to set this request for preliminary injunction for hearing at

the earliest possible time and, after hearing the request, to issue a preliminary injunction against
Defendants.
SEIZURE OF ARTICLES
79.

Defendants logo, signage, menu, and other business and advertising materials are

substantially similar to Mambos marks and copyrighted graphic artwork incorporated into
Mambos signage, menus, and other business materials. Mambo asks the Court to issue a writ of
seizure against Defendants infringing material. See 17 U.S.C. 503.
80.

Mambo will suffer irreparable injury if the Court does not order the seizure of

Defendants infringing articles because Defendants are in violation of Mambos copyrighted works,

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and Defendants continued use causes consumer confusion and tarnishes Mambos and its affiliate
companies goodwill.
81.

Mambo is prepared to prosecute this suit promptly.

82.

Mambo is prepared to return Defendants logo, signage, menu, and other business

and advertising materials if Defendants are found not to be infringing on Mambos intellectual
property.
83.

Mambo is prepared to post a reasonable bond, if necessary.

DAMAGES

84.

As a direct and proximate result of Defendants conduct, Mambo suffered the

following damages:

85.

a.

Actual damages for trademark infringement;

b.

Actual damages for unfair competition;

c.

Actual damages for copyright infringement;

d.

Lost profits for copyright infringement;

e.

Statutory damages for copyright infringement;

f.

Statutory damages for willful copyright infringement; and

g.

Enhanced damages for willful trademark infringement and/or willful unfair

competition.

Defendants knew their unauthorized use of marks confusingly similar to Mambos

would result in a benefit to Defendants.

86.

Defendants unauthorized use of Mambos marks has unjustly enriched Defendants

at the expense of Mambos reputation and goodwill.

ATTORNEY FEES & COSTS
87.

Mambo is entitled to an award of attorney fees and costs under 17 U.S.C. 505 as a

prevailing party.
88.

Mambo is entitled to an award of attorney fees under 15 U.S.C. 1117(a).

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DEMAND FOR JURY TRIAL

89.

Mambo demands a trial by jury on all triable issues.

PRAYER

For these reasons, Plaintiff Mambo asks for judgment against Defendants, jointly and
severally, for the following:
a.

Defendants, their officers, agents, servants, employees, and attorneys, and all
persons in active concert or participation with any of them, be preliminarily
and permanently enjoined from the following:
(1)
Using the MAMBO and MAMBO SEAFOOD marks or any other
confusingly similar mark in connection with the promotion, advertising, or
offering of restaurant services;
(2)
Using the VUELVE a la VIDA mark or any other confusingly
similar mark in connection with the promotion, advertising, or offering of
restaurant services;
(3)
Making any false representations or advertisements to customers or
others that would create a false appearance of an affiliation, connection, or
association with MAMBO SEAFOOD;
(4)
Using or incorporating Mambos copyrighted artwork and color
schemes for Defendants signage, menus, and corresponding business
materials;
(5)
Competing unfairly with Mambo in any manner, including
unlawfully adopting or infringing on Mambos MAMBO and MAMBO
SEAFOOD marks or adopting or using any other marks or designations that
are confusingly similar to Mambos MAMBO and MAMBO SEAFOOD
marks; and
(6)
Conspiring with, aiding, assisting, or abetting any other person or
entity in engaging in any of the enjoined activities.

b.

Defendants, their officers, agents, servants, employees, and attorneys, and all
persons in active concert or participation with any of them, deliver for
destruction, or show proof of destruction of, all products, labels, signs,
menus, prints, packages, wrappers, receptacles, and advertisements, and any
other materials in their possession or control that depict or reference
Mambos MAMBO and MAMBO SEAFOOD marks, VUELVE a la
VIDA mark, or any other confusingly or substantially similar marks, and all
materials or articles used for making or reproducing the same, as provided
by 15 U.S.C. 1118.

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c.

Defendants file with the Court and serve on Mambo, within 30 days after the
entry and service on Defendants of an injunction, a report in writing and
under oath stating in detail the manner and form in which Defendants have
complied with the provisions of subparagraphs (a) and (b) above.

d.

Mambo recover all damages it has sustained as a result of Defendants

trademark infringement and unfair competition.

e.

Mambo be awarded treble damages under 15 U.S.C. 1117(b).

f.

An accounting be directed to determine Defendants profits resulting from

their infringement and unfair competition and that the profits be paid over to
Mambo, increased as the Court determines is appropriate to the
circumstances of this case.

g.

Mambo recover from Defendants Mambos actual damages, plus the amount
of Defendants profits attributable to Defendants copyright infringement, or
in the alternative, Defendants pay Mambo statutory damages, as authorized
by 17 U.S.C. 504(c).

h.

Defendants and their agents and representatives be enjoined during and after
this suit from infringing Mambos copyright in any manner.

i.

Defendants pay Mambo additional damages for willfully infringing upon

Mambos copyright, as authorized by 17 U.S.C. 504(c)(2).

j.

The Court declare this case an exceptional case and award Mambo its
reasonable attorney fees for prosecuting this suit under 15 U.S.C. 1117(a).

k.

Mambo recover its costs of this suit and prejudgment and postjudgment
interest.

l.

Mambo have all other relief the Court deems appropriate.

Respectfully submitted,
By: /s/ William S. Helfand
William S. Helfand
Attorney-in-Charge for Plaintiffs
State Bar No. 09388250
SDTX Bar No. 8791
1200 Smith Street, Suite 1400
Houston, Texas 77002
713-654-9630
713-658-2553 (Fax)
Bill.Helfand@chamberlainlaw.com

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OF COUNSEL:
CHAMBERLAIN, HRDLICKA, WHITE,
WILLIAMS & AUGHTRY
1200 Smith Street, Suite 1400
Houston, Texas 77002
713-654-9630
713-658-2553 (Fax)
1989641.6
009672.000011

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