Case: 4:11-cv-01328-CEJ Doc.

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IN THE DISTRICT COURT OF THE UNITED STATES OF AMERICA EASTERN DISTRICT OF MISSOURI EASTERN DIVISION EVANTIGROUP, LLC., Plaintiff, v. MANGIA MOBILE, LLC. Defendant. ) ) ) ) ) Case No. 4:11-cv-1328-CEJ ) ) ) )

DEFENDANTS MEMORANDUM IN OPPOSITION TO PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION COMES NOW Defendant Mangia Mobile, LLC, by and through its undersigned attorneys and for its Memorandum in Opposition to Plaintiffs Motion for Preliminary Injunction, states the following: INTRODUCTION Alex, Thomas and Catherine Daake are the siblings three1. Raised in the City of St. Louis, all attended and were graduated from college. In 2010 the siblings found themselves restless, not gainfully employed, and, like many in their young adult years during this difficult economic environment, without meaningful immediate prospects for future career pursuit. Rather than hone their daytime television viewing habits, they collectively conceived, created and implemented a business plan to operate a food truck in the City of St. Louis, a food service alternative to traditional brick and mortar restaurants. Embracing their maternal Italian (Sicilian) heritage, the siblings focused on developing a menu line and brand, incorporating their immigrant maternal grandmothers oft exclaimed admonition of mangia! or eat! into the moniker under which they planned to operate. Combining this most basic of Italian verbs with
1

Not to be confused with Copyrighted childrens book The Siblings Four, authored by counsel for Defendant and available for purchase through Defendants counsels office.

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the non-stationary nature of the food truck concept, the name Mangia Mobile was born. With attention to detail, the siblings created the defendant limited liability company, procured the requisite licenses, retained legal employees, established a back-office for payroll and taxes, established a menu and commenced operations in the City of St. Louis in October of 2010. Contemporaneously with or shortly after the debut of the Mangia Mobile, it is understood Plaintiff commenced negotiations to and due diligence associated with the purchase of the South St. Louis City restaurant, Mangia Italiano (Eat Italian), during which the existence and operation of Mangia Mobile was noted. The transaction involving the purchase by Plaintiff of Mangia Italiano is understood to have been consummated in February of 2011. A cease and desist demand letter was issued to the Defendant by legal counsel for the Plaintiff on the 16th day of March, 2011. On the 20th day of April, 2011, Defendant caused to be communicated to Plaintiff the Defendants rejection of the assertion that Defendant was infringing on the intellectual property rights of Plaintiff and confirmed that Defendants would continue to operate under the moniker Mangia Mobile. Some three (3) months later, the Plaintiff filed its multicount petition comprising Plaintiffs cause of action herein in the Circuit Court of the City of St. Louis. Due to the presence of a federal claim in Plaintiffs petition, the cause was removed in a timely fashion to the U.S. District Court for Eastern District of Missouri, Eastern Division. On the 29th day of July, 2011, Plaintiff filed its application for a preliminary injunction in the Circuit Court of the City of St. Louis and filed a substantively identical Motion in the Eastern District on August 1, 2011. ARGUMENT In deciding whether to enter a preliminary injunction, Courts should consider: (1) the threat of irreparable harm to the movant; (2) the state of balance between this harm and the

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injury that granting the injunction will inflict on other parties litigant; (3) the probability that movant will succeed on the merits; and (4) the public interest. Dataphase Systems, Inc. v. CL Systems, 640 F.2d 109, 112 (8th Cir. 1981) (en banc). No single factor in itself is dispositive; rather, each factor must be considered to determine whether the balance of equities weighs toward granting the injunction. United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1179 (8th Cir. 1998); International Assn of Machinists and Aerospace Workers, AFL-CIA v. Schimmel, 128 F.3d 689, 692 (8th Cir. 1997). Plaintiff EvantiGroup, LLC (Evanti) bears the burden of showing it is entitled to the relief sought. Contrary to the position taken by Plaintiff in its Memorandum, the burden of demonstrating that a preliminary injunction is warranted under the Lanham Act is heavy when granting the preliminary injunction will give [the movant] substantially the relief it would obtain after a trial on the merits. Sanborn Mfg. co., Inc.v. Campbell Hausfeld, 997 F.2d 484, 486 (8th Cir. 1993). Here, the issues to be decided at the hearing of Plaintiffs Motion for a Preliminary Injunction encompass all of the equitable issues that would be decided at a trial on the merits plus those which pertain solely to the timing of procedural prerequisites germane to a preliminary injunction. Accordingly, the hearing of Plaintiffs preliminary injunction will be largely duplicative of the issues to be decided at a full trial on the merits, including the equitable relief requested. This scenario is precisely the one contemplated by FRCP 65(a)(2) governing consolidation of the hearing with the trial on the merits. As more fully detailed below, the Dataphase factors heavily favor the denial of Plaintiffs requested preliminary injunction. I. PLAINTIFF IS SUFFERING NO IRREPARABLE INJURY

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Plaintiff correctly notes that a court may grant a trademark plaintiff a presumption of irreparable injury if such a plaintiff is able to sufficiently demonstrate its likelihood of success on the merits. However, the governing words in that statement are may and presumption. As The word may confers discretion upon the Court. Similarly, the term presumption permits that which is to be presumed to be rebutted. Plaintiff would like the Court to believe that a presumption of irreparable harm should be accorded to it because of the intangible nature of the harm associated with the loss of goodwill that often arises in trademark disputes. However, Plaintiff is being disingenuous in this request and, as evidenced by the timing of its filing of the Complaint herein, is not interested in its goodwill. If Plaintiff was pursuing this lawsuit to preserve its goodwill, Plaintiff would not have sat idle in a litigious sense for nearly one year while Defendant continued to build Mangia Mobile into a viable, thriving commercial entity, committing significant time, energy and resources to its development and growth, while Plaintiff observed and took note. In a pasta sense, Plaintiffs Motion for Preliminary Injunction is not al dente. Chi tace acconsente. (Translation: Silence gives consent.) Plaintiff is suffering no irreparable injury. A review of the sequence of events involved herein supports this proposition. As alleged in Plaintiffs Memorandum in Support of its Motion for Preliminary Injunction (Memorandum), Plaintiff believes the Mangia Mobile began serving customers in or around November of 2010. Plaintiff believes this because it became aware of the Mangia Mobile in or around November 2010 when it was conducting its due diligence on the Mangia Italiano restaurant that it was interested in purchasing. See Declaration of Collier T. Evans at paragraph 3. Also as alleged by Plaintiff, Plaintiff did not purchase Mangia Italiano until February 15, 2011. Thus, Plaintiff and its predecessor in interest were 4

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aware of the existence and operation of the Mangia Mobile at least two and a half months prior to Plaintiffs alleged purchase of the Mangia Italiano restaurant. The prior owner of Mangia Italiano never objected to or issued a cease and desist letter to Defendant. Plaintiff did not issue a cease and desist letter to Defendant in November 2010. Plaintiff did not issue a cease and desist letter to Defendant in December 2010. Plaintiff did not issue a cease and desist letter to Defendant in January 2011. Plaintiff did not issue a cease and desist letter to Defendant in February 2011. Plaintiff did not issue a cease and desist letter to Defendant in February 2011. In fact, Evanti did not issue a cease and desist letter to Defendants members until March 16, 2011. Subsequently, Defendant made it abundantly clear to Plaintiff that Plaintiffs allegations of infringement and unfair competition against Defendants were not well taken and that Defendants would continue to conduct themselves in accordance with the laws of The United States, the laws of the State of Missouri and the fundamental tenets of capitalism. Nonetheless, Plaintiff continued to idle. Plaintiff did not file its Petition against Defendant in March 2011. Plaintiff did not file its Petition against Defendant in April 2011. Plaintiff did not file its Petition against Defendant in May 2011. Plaintiff did not file its Petition against Defendant in June 2011. In fact, Plaintiff did not file its Petition until July 21, 2011, more than four (4) months after it issued a cease and desist demand to Defendant and approximately eight (8) months after Plaintiff became aware of the existence and business activities of Defendant. Then Plaintiff delayed filing its Motion for Preliminary Injunction until July 29, 2011 in the Circuit Court of

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the City of St. Louis and August 1, 2011 in the U.S. District Court for the Eastern District of Missouri. Clearly Plaintiffs own conduct in delaying the filing of its Petition belies its claim of irreparable injury resulting from a loss of goodwill, as it has sat on any rights it claims to have since at least November of 2010 without seeking injunctive relief until July 29, 2011. Any new business owner who has been watching an entity which it believes is unfairly competing with its business would take immediate action to seek and procure equitable relief if the actions of the alleged unfair competitor were truly actionable. Plaintiff, despite its knowledge of Defendants actions and purportedly significant investment in Mangia Italiano, tarried for months. For this reason, Plaintiffs Motion should be denied at the outset. Second, in its Motion for Preliminary Injunction (Motion) and Memorandum filed with this Court, Plaintiff makes clear that its motivation for now pursuing injunctive relief was spawned by Defendant who, through its counsel, has issued a ravioli smackdown challenge through a press release which purports to evidenc[e] a complete disregard of Evantis rights and the confusion caused by The Food Trucks acts, as well as The Food Trucks intent to deceive the public. See Plaintiffs Memorandum at page 19. Plaintiffs Motion states: Heightening the need for Evantis requested relief is the Food Truck owners and counsels efforts to use self-serving statements in the media to trivialize this dispute and portray the MANGIA ITALIANO restaurant as a bad actor for taking the steps necessary to protect its MANGIA ITALIANO MARK and the goodwill associated with the Mark. For example, Mangia Mobiles counsel issued a press release two days ago that was published at www.STLToday.com stating that Mangia Mobile was challenging Evanti to a winner-takes-all toasted ravioli smackdown [ . . . . ] See Plaintiffs Motion at paragraph 5. Plaintiff has further stated that it interprets Defendants attorneys actions as evidence that Defendant and its counsel intend to use this suit to create a media circus and further profit from the confusion. Id. 1. Alternative dispute resolution formats are actively encouraged by 6

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the Courts but apparently are repugnant to the Plaintiff herein. The St. Louis classic, toasted ravioli, was the food item tagged for the basis of the smackdown challenge by virtue of its status as the only menu item concurrently appearing on the list of fare hawked by both the Plaintiff and the Defendant. In fact, Plaintiff sought and procured permission from this Court to file a brief in excess of the page limits prescribed by local rules, in part, so that it could publish more than one (1) page of text from a press release issued on behalf of Defendant. Thusly, Plaintiff is supporting its prayer for a preliminary injunction on the claimed public relations use of the lawsuit itself, a lawsuit Plaintiff filed perhaps without considering the negative public relations it was creating for itself. Curiously, the Plaintiff apparently does not find humor in the fact that it is the owner of a brick and mortar pasta restaurant and late night bar located in South St. Louis City which purchased the erroneously offended restaurant fully cognizant of the existence and operation by the Defendant of its food truck and now is shocked to find gambling going on here. Claude Raines in his role as Louis, French Prefect of Police in Casablanca (1942). Curiously, the Plaintiff apparently does not find levity in the fact that its brick and mortar establishment is claiming to be harmed by the Defendant, operated by the enterprising and youthfully exuberant siblings three, being a food truck, serving a different menu in a different geographic region within the confines of the City of Saint Louis during a significantly different temporal period, under a multi-word moniker employing as part thereof perhaps the most generic of Italian words, mangia or eat. Curiously, the Plaintiff apparently does not find levity in the fact that while objecting with such vigor to the pursuit of capitalism and the American Way by the Defendant, it has

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wholly ignored the fact that a third party food delivery service called Mangia concurrently is and for a protracted period has operated openly and notoriously in the City of Saint Louis. Some litigation, by its very nature, cries out, nay pleads if not begs on all fours, for unique methodologies by which to resolve an underlying matter-in-controversy and spare the courts the misery of being compelled to address and serve as the arbiter of a dispute which, to again paraphrase Humphrey Bogarts signature film of yesteryear, Casablanca, dont amount to a hill of beans or, transposed for local flavor, a Hill of Toasted Ravs. Hence, the ravioli smackdown challenge was borne. The Plaintiff has filed a lawsuit and now appears flummoxed, if not bitter, by the prospect that the very public, and the constitutionally protected media it serves, also finds humorous and coverage-worthy the subject matter, tenor, and text of its initial pleadings filed herein. All that is missing to genuinely emote a three-ring ambience is the proverbial tent. What is this Courts interest in Defendants marketing strategy? It is the activities of publicizing the present lawsuit about which Plaintiff now appears to claim damages to its alleged goodwill. To grant an injunction for the reason that Plaintiff is damaged by the publication of the fact that it filed the present action against Defendant would be a restraint on Defendants First Amendment Rights, as well as the Missouri Constitutional right to free speech, without any connection to trademark law or the claims raised in Plaintiffs Petition. Plaintiffs emphasis on the publicity of the lawsuit as a reason for its injunction begins to transform this case into one more closely resembling Lettuce Entertain You Enterprises, Inc. v. Leila Sophia AR, LLC, 638 F.Supp.2d. 895 (N.D.Ill.2009), where the defendant used the phrase Let Us Be on a banner on his restaurant to protest against Lettuce Entertain You seeking to make a trademark infringement claim against defendants use of Lettuce mix in the name of a

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restaurant. The banner to inform the public about the lawsuit was not the same as the name on the restaurant and not capable of restraint by injunction. Plaintiffs claim also resembles a request for a gag order more than an injunction from unfair competition or trademark infringement. No one is threatened by a lack of a fair trial by Defendant Mangia Mobiles comments and there are no legitimate claims of privacy of any party to be protected. Without these, entering an injunction simply because of Defendant Mangia Mobiles comments about the filing of the lawsuit does not reconcile with fundamental tenets of the First Amendment to the United States Constitution or the concomitant right in Article I, Section 8 of the Missouri Constitution of 1945. In fact, Defendants publicity of the Plaintiffs claims only serves to further publicize the pre-existing obvious, namely that there is no relationship between Evanti and Mangia Mobile. Third, Plaintiff appears also to be seeking a Preliminary Injunction on the strength of a scant few affidavits from (1) parties to this litigation; (2) business associates of parties to this litigation; (3) employees of parties to this litigation and (4) customers and acquaintances of parties to this litigation. There is a passing request for a hearing as quickly as possible should the Court have any hesitation in granting this Motion. See Plaintiffs Memorandum at pp. 2122. Plaintiff is not seeking a temporary restraining order, and a preliminary injunction may only be granted after notice and hearing, as contemplated by FRCP 65(a). At a hearing, affidavits and exhibits not properly introduced by a witness are simply hearsay, and will not support an entry of an injunction. Accordingly, contemporaneously herewith, Defendant has filed a Motion for a Rule 16 Scheduling Conference on Plaintiffs Motion for a Preliminary Injunction. II. THE BALANCE OF HARDSHIPS OVERWHELMINGLY FAVORS DEFENDANTS

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The parties in this case are a limited liability company owned by two men who operate a brick and mortar restaurant and late night bar in south St. Louis City on the one hand and limited liability company operated by the three Daake siblings who, faced with their student loans and a less than idyllic economy and job market, commenced operating a food truck virtually exclusively in the western corridor of St. Louis City during the weekday lunch hours in the warm weather months. Given the current economy, this business is the only steady source of income for the siblings and their lone business endeavor in their pursuit of the American dream. On the other side of the hardship equation is Evanti. The only hardship inuring to the detriment of Plaintiff herein is a direct and proximate result of the Plaintiffs actions. The dilatory pursuit of injunctive relief by the purportedly well-established and presumably resource rich Plaintiff herein evidences the absence of a requisite condition precedent to the injunctive relief sought. Plaintiff delayed for months the filing of its Petition and thereafter waited an additional eight (8) days to file its Motion for Preliminary Injunction once Defendant refused to roll over to Plaintiffs draconian and taste bud restrictive demands. Plaintiff is effectively seeking to strip Defendant of its unique moniker and brand recognition in a heavy handed, and untimely fashion. The success, support and momentum garnered by Mangia Mobile by virtue of the actions of Evanti, actions over which Evanti has at all times maintained control, while nothing short of a boon for Defendants business, hardly serve as a basis upon which injunctive relief can be granted herein. Chi causa del suo male piange se stesso. (Translation: He who creates his own evil cries over the same.) The balance of hardships factor overwhelmingly favors Defendant which stands to lose everything if the preliminary injunction is granted. III. PLAINTIFF IS NOT LIKELY TO SUCCEED ON THE MERITS 10

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Plaintiff herein cannot satisfy the third prong of the Dataphase analyses for the issuance of a preliminary injunction, as Plaintiff is not likely to succeed on the merits of its Complaint. In all circumstances, the burden of proving likelihood of confusion rests with the plaintiff. KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121 (2004). The movant must establish a substantial likelihood of prevailing on the merits of [its] claim. Phelps-Roper v. Nixon, 509 f.3d 480 at 485 (8th Cir. 2007). A. Plaintiff Will Not Prevail On Its Infringement Or Unfair Competition Claims To prevail on its infringement and unfair competition claims under the Lanham Act and corresponding state and common law claims, Plaintiff must prove: (1) It has rights senior to Defendants in the MANGIA ITALIANO trademarks, and (2) there is a likelihood of confusion between MANGIA ITALIANO trademarks and Defendants trademarks as used in the marketplace. Minnesota Mining & Manufacturing Co. v. Rauh Rubber, Inc., 130 F.3d 1305, 1308 (8th Cir. 1997). 1. The MANGIA ITALIANO Trademarks Absent limited focused discovery relating to the ownership of Plaintiffs alleged common law trademarks, Defendants are without information sufficient to form a belief as to either (1) the existence of any such trademarks or (2) the Plaintiffs alleged ownership of same. In fact, Defendant is quite skeptical that Plaintiff has any rights whatsoever, much less any that are superior to Defendants registered Missouri Trademark/Servicemark and/or common law trademarks/servicemarks. Defendant has previously requested the sale/assignment documents evidencing Plaintiffs ownership of any rights to MANGIA ITALIANO or license to use same. However, Plaintiff has failed to produce any such documentation despite the ease with which production of same could be accomplished.

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As correctly noted by Plaintiff in its Memorandum, Defendant disputes that Plaintiffs alleged trademark for MANGIA ITALIANO is trademarkable or that it has attained any secondary meaning. 2. Consumers Are Not Likely to be Confused as to the Source of Defendants Products

Plaintiff correctly recites the factors the Court should consider in evaluating the merits of this matter. The Court shall evaluate: (a) the strength of the Plaintiffs trademark(s); (b) the degree of similarity between the two marks; (c) the competitive proximity of the products; (d) the Defendants intent to confuse; (e) actual confusion; and (f) the degree of care reasonably expected of potential consumers. SquirtCo. V. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). a. Strength of Plaintiffs mark(s) Defendant does not concede that Plaintiff owns any trademark rights to the phrase MANGIA ITALIANO, whether registered or unregistered. In fact, Defendant disputes that Plaintiff has any trademark rights at all. From the pleadings filed to date, it appears Plaintiff is asserting ownership of a common law trademark to the term MANGIA ITALIANO or MANGIA. Plaintiff does not have, and does not claim to have, a federal trademark registration for the word mark MANGIA ITALIANO or MANGIA. In fact, Plaintiff filed its federal trademark application for the word only mark MANGIA ITALIANO with the United States Patent and Trademark Office on March 21, 2011. Plaintiff does not have, and does not claim to have, a state trademark registration for the word mark MANGIA ITALIANO. In fact, it is not entirely clear what type of mark to which Plaintiff asserts any claim. Within Plaintiffs Memorandum it asserts Defendant is causing confusion between MANGIA MOBILE and MANGIA ITALIANO based upon the Mangia 12

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Mobiles logo and coloring. See Plaintiffs Memorandum at page 2. However, nowhere in Plaintiffs Petition does Plaintiff assert any design mark or trade dress rights. Accordingly, even if arguendo Plaintiff had a valid word mark, which it does not, Plaintiff would not have standing to enforce any particular design or trade dress infringement. This is particularly noteworthy when contemplating the curious placement of the MANGIA ITALIANO design mark located on page 16 of Plaintiffs Memorandum. Assuming that rectangular feature of the design located on page 16 of Memorandum is an Italian flag, that particular design mark would not be registrable on the principal register pursuant to 15 U.S.C. 1052(b) even had Plaintiff endeavored to apply for registration. Furthermore, a simple search of the USPTO website reveals hundreds of federal trademark registrations and application utilizing the term MANGIA. Not surprisingly, the vast majority of those registrations and applications are paired with other words and are utilized in connection with restaurants. The term Mangia is translated from Italian to eat. The term Italiano is translated from Italian to mean Italian. Thus, the phrase Mangia Italiano simply means eat Italian. In the field of trademark law, that is a textbook example of a phrase that is merely descriptive when used in connection with the food service industry, not distinctive as claimed by Plaintiff. Plaintiffs Memorandum inadequately seeks to preemptively address this issue by arguing that MANGIA ITALIANO is entitled to protection because, despite is mere descriptiveness, it has acquired secondary meaning. Plaintiff correctly sets forth the standard for secondary meaning when it states secondary meaning is demonstrated where, in the minds of the public, the primary significance of a product feature or term is to identify the source of the produce

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itself. Friexenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 152 (3rd Cir. 1984). However, Plaintiff utterly fails in its attempt to apply this standard to the facts at bar. Plaintiff asserts that when people in St. Louis hear the words Mangia Italiano, they think of the restaurant, not eat Italian (assuming they know the translation). In Defendants view, when the people of St. Louis hear the words Mangia Italiano they think (1) nothing in particular; (2) eat Italian (assuming they know the translation); (3) something Italian (assuming they have a room temperature IQ); (4) Is that related to Mangia, that food service at the Scottrade Center? Defendant would not be so bold as to think an appreciable number of St. Louisans would associate Mangia Italiano with Defendants product and certainly not with the cramped brick and mortar restaurant and late night liquor haunt whose sole location is on south Grand Boulevard. Of course, the burden of demonstrating secondary meaning lies with Plaintiff. Plaintiff cites a trademark treatise for the proposition that secondary meaning may be established through testimony, declarations or consumer surveys. Defendant awaits testimony from Plaintiff at the hearing of this matter. The declarations proffered by Plaintiff to date are rather quickly dismissed based upon the targeted nature and bias of same addressed herein. Of course, absent discovery in this matter, Defendant is not presently in a position to assess the consumer survey(s) which Plaintiff will most assuredly require to meet its high burden on this issue. As Defendants final word on secondary meaning, Defendant notes that Plaintiff again relies on a trademark treatise to support its proposition that evidence of actual confusion is strong evidence of secondary meaning. Of course, the McCarthy treatise on Trademark law is not binding upon this Court. That said, there is scant evidence of actual confusion from the consuming public. Plaintiff has cited Facebook postings from unknown individuals who may or

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may not be affiliated with Plaintiff itself and a self-styled food critic whose chosen profession would necessarily place the mark MANGIA ITALIANO more prominently in her consciousness than that of a typical consumer. As further evidence of Plaintiffs common law trademarks strength, Plaintiff has attached a series of news publications purporting to date back to the 1980s and in large part predating Plaintiffs ownership of the restaurant. While perhaps serving as a self-esteem boost for Evantis owners, these documents do little to support Plaintiffs claim of support for the strength of its mark. That is, none of these documents evidence the association in the mind of a significant cross-section of the relevant universe of the consuming public of the term MANGIA ITALIANO with the south city dining and late night drinking establishment. For these reasons and more to be presented to this court in Defendants pre-hearing brief and at hearing of this matter, Plaintiff does not have a valid trademark. b. Similarity between Plaintiffs mark(s) and Defendants marks Defendants mark is similar to Plaintiffs mark only to the extent they both utilize the word Mangia, which, as discussed above, is merely descriptive insomuch as it is translated from Italian to English to mean eat. Those words are followed by very dissimilar words in sight, sound and meaning. That is, the word mobile looks very different than the word Italiano. The two words are readily distinguishable from an aural perspective. The two words have very different meanings. When placed in the context of Defendants goods and services, the comparison remains favorable to Defendant. The word mobile serves both as a reference to the Defendants vehicle from which it prepares and serves its products and also reminds the consumer of the mobile nature of the Defendants business. Similarly, Italiano presumably alerts the consumer

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that the product it is consuming is to be associated with Italy, assuming the consumer did not know the meaning or genesis of the word mangia. While the Defendants believe a side-by-side comparison renders Plaintiffs Petition fatally flawed, the Plaintiff would have this Court enter a Preliminary Injunction on the strength of the side-by-side comparison found on page 16 of its Motion. Defendants urge the Court to adopt the approach of the Jordache court when it wrote, In evaluating similarity, it is axiomatic in trademark law that side-by-side comparison is not the test. The marks must be compared in the light of what occurs in the marketplace, not in the courtroom. A prospective purchaser does not ordinarily carry a sample or specimen of the article he knows well enough to call by its trade name, he necessarily depends upon the mental picture of that which symbolizes origin and ownership of the thing desired. Therefore, the court must determine whether the alleged infringing mark will be confusing to the pubic when singly presented. Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 at 1487-1488 (10th Cir. 1987). Plaintiff goes to great lengths in its Memorandum to create distance between its products, which it confusingly classifies as high quality and Defendants products which it classifies as not Italian and fast food. Plaintiff cannot have its Cannoli and eat it too. Either the products are similar or they are not. In addition and as noted in Defendants press release quoted by Plaintiff, the only item that is served by both Plaintiff and Defendant is toasted ravioli. In St. Louis, where toasted ravioli was purportedly invented2 and remains popular, this can hardly be considered a similarity of any significance. c. Defendants Products are Competitively Distant From Those of Plaintiff Plaintiff argues that Plaintiffs and Defendants products are in close competitive proximity. Erroneous. Plaintiffs Memorandum inexplicably admits that it has extended its
2

Wikipedia purports to know everything anyone knows. See http://en.wikipedia.org/wiki/Toasted_ravioli

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liquor license to permit Mangia Italiano to remain open until 3:00 a.m. See Plaintiffs Memorandum at page 16 and Exhibit 16 thereto. Defendant does not have a liquor license and, accordingly, it does not sell liquor. More importantly, the Mangia Mobile is not open until 3:00 a.m. In fact, the Mangia Mobile is nestled safely in its parking space before 3:00 p.m. every day that it is in regular operation. The Mangia Mobiles regular zone of operation is not within or near the south St. Louis City neighborhood where Plaintiff operates its brick and mortar business3. The Mangia Mobile is not a brick and mortar business. It is a mobile food business operated from a boxlike truck. The mark MANGIA MOBILE is not used in connection with any brick and mortar, sit down food service and bar operation. The Mangia Mobile roams between designated locations in the central downtown St. Louis through its west end corridor where it has lawful municipal permission to operate. The Mangia Mobile is open between the hours of 11:00 a.m. and 1:30 p.m. on weekdays during the warm weather months. The Plaintiffs restaurant is open from lunch through 3:00 a.m. year round and, upon information and belief, is open every day of the week. Thus, the geographic and temporal proximity of Defendants products to those of the Plaintiff do not intersect. d. Defendants Do Not Intend to Pass Off Their Goods as Those of Plaintiff While Plaintiffs Google based and carefully redacted detective work commencing on page 17 of its Memorandum is amusing, its conclusions are inaccurate. Plaintiff is correct that Catherine Daake is highly sophisticated although her siblings are believed to be possessed of
3

The St. Louis based food publication, Sauce Magazine, recently conceived and initiated a mobile food truck gorgefest conducted in Tower Grove Park in South St. Louis City on five or six nights per year. The event, labeled Food Truck Friday, pays homage to the fine fare of food trucks for the benefit of those consumers who enjoy the prospect of strolling through a park, consuming diverse, inexpensive and collectively situated mobile food purveyor product, and thereafter enjoying the rigors of the ensuing digestive machinations arising therefrom. Defendant acknowledges having been invited to and actually participating in same, but this is not part of the regular zone of Defendants operation.

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some rather unsophisticated stories relating to Catherines awkward teenage years. Sophistication issue aside, the sibling owners of Mangia Mobile had never heard of Plaintiffs restaurant prior to receiving the cease and desist letter issued by Plaintiffs prior counsel of record. Moreover, and relevance issue aside, neither Catherine nor her brothers live in a gated community. Without waiving its Motion to Strike filed contemporaneously herewith, Plaintiff cites to certain settlement negotiations with Defendants counsel in its Memorandum and states, with an otherworldly sense of bewilderment, that Defendant did not execute any of the settlement terms Defendant proposed to settle this dispute. Defendant respectfully suggests to Plaintiff and to the Court that the terms referenced by Plaintiff in its Memorandum were rejected by Plaintiff. Had the subject terms been accepted, Defendant would have honored its agreement. Finally, Plaintiff alleges that certain evidence suggests the Defendant does not sufficiently disclaim any affiliation with the Plaintiffs restaurant when asked. Defendant disagrees with Plaintiffs statement and affirmatively would disclaim any affiliation if they were ever approached at the truck by anyone asking about Mangia Italiano (other than the Plaintiffs owner Collier Evans and Plaintiffs prior counsel who both appeared at Defendants truck on multiple occasions to harass Defendants owners during business hours). Without access to the certain evidence referenced by Plaintiff during discovery, Defendant cannot comment further regarding Plaintiffs allegations in this regard except to state that it is not Defendants intent to confuse the consuming public. It should be noted that the Defendant posts a sign on its truck which disavows any affiliation with any brick and mortar restaurant. e. Plaintiff Cannot Demonstrate Significant Actual Confusion

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Plaintiff hangs its hat primarily on a handful of affidavits from its owners, past owner, its employees, and its patrons alleging actual confusion in the marketplace between the MANGIA ITALIANO mark and the MANGIA MOBILE mark. Of course, all of those individuals have their own interests in signing affidavits that favor the Plaintiff, whether those interests be financial (as in the case of the owner, past owner and current owners employees) or social (as in the case of the current owners patrons). Aside from the obviously flawed affidavits, Plaintiff cites an erroneous blurb which appeared in Alive! magazine asserting affiliation between Plaintiffs business and that of Defendant. Plaintiff fails to set forth any evidence that anyone other than the author of that blurb was actually confused between the two marks as a result of the Alive! article. Plaintiffs Memorandum failed to note to the Court that the subject article was subsequently retracted by Alive! magazine. While there was not likely any actual confusion as a result of the subject article, the same readership that was confused by the misprint would presumably have been informed of the mistake by the retraction. Regarding the author of the inaccurate Alive! blurb, it should be pointed out that the author at issue (aside from not performing industry standard fact checks) is a local food critic whose awareness of the Plaintiffs restaurant would be significantly heightened by the very nature of her work as a St. Louis area food writer and, thus, tend to make far more assumptions about the Plaintiffs business than would a typical consumer in the relevant market. The above is equally true with respect to food blogger Nicki Dwyer. In a last ditch effort to demonstrate any level of actual confusion, Plaintiff has cited the online social network musings of unknown and occasionally anonymous individuals. Without

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conducting further discovery regarding the source of the online postings referenced by the Plaintiff, Defendant cannot comment regarding whether any actual confusion has taken place. Finally, Plaintiff claims that Google is also leading to likely confusion because of its results list when one performs a search for mangia mobile saint Louis. Of course, such a search presumes mangia mobile is the starting point for the Google search (and, presumably, the searcher is more aware of mangia mobile than with mangia italiano or it would perform a different search). Regardless, there is no evidence presented by Plaintiff of any actual confusion occasioned by the good folks at Google. f. Degree of Care by Customers Plaintiff has ignored the proverbial elephant in the room. There is simply no likelihood that a purchaser of Evanti products will be confused or operate under the mistaken belief that they are buying Mangia Mobile products. This fact appears to be conceded when Plaintiff wholly neglects to address the issue concerning the degree of care exercised by customers. Perhaps this is because in order to address this issue, Plaintiff would be compelled to allege that its customers are (1) terrible readers; (2) unfamiliar with basic Italian words; (3) not familiar enough with their products to know that the items served by Defendant are different than those served by Plaintiff; (4) unable to recognize a difference in the quality of the products served by the parties and myriad other unflattering accusations that would cause insult to their clientele. That is not Defendants problem. As this factor has gone unaddressed by Plaintiff, Plaintiff has neglected to carry its burden with respect to this factor and, as such, the Court is urged to find this factor in favor of Defendants. Nonetheless, Defendants position is that the St. Louis market is comprised of a sophisticated population of food consumers. This is particularly true of Italian food. St. Louis is

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the home of The Hill. It is suggested St. Louisans know the difference between Tonys Restaurant downtown, Gian-Tonys on The Hill, Tonys in Bridgeton and Tonys Donuts. Similarly, they know the difference between Lorenzos Trattoria and Trattoria Marcella. With all due respect to Plaintiffs restaurant, the quality of its food, like beauty, lies in the mind of the beholder. St. Louisans are a sophisticated group of Italian food consumers and there is no way they would confuse Mangia Italiano with Mangia Mobile. IV. A PRELIMINARY INJUNCTION IS NOT IN THE PUBLIC INTEREST The entry of a preliminary injunction is not in the public interest in this case. Plaintiff correctly notes that it is in the public interest to grant a preliminary injunction in favor of those who are likely to succeed on the merits because the injunction will benefit the public by ending actual confusion in the marketplace. As more fully explained hereinabove, the success of Plaintiffs claims are, at best, seriously in doubt, and as such, a preliminary injunction should not issue. CONCLUSION The Defendant is a small business run by local siblings who have recently completed their educations and are trying to make a modest living during the good weather months. They have expended significant time, energy and resources to create a successful brand all their own. The Plaintiff is a company that has named its restaurant the Italian translation of eat Italian. Plaintiffs restaurants name is as distinctive as Hunan Wok, which is to say it is not distinctive. Plaintiff has produced scant, if any, evidence of actual confusion in the relevant market. Had Plaintiff filed its Petition in a timely fashion prior to the Defendants extensive business efforts since November 2010, it would still have a weak case against Defendant. However, when Plaintiffs weak case is viewed in conjunction with the delayed filing of its Petition and even

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further delayed filing of the instant Motion for Preliminary Injunction, the balance of the equities is clear that the requested injunction should not issue. WHEREFORE Defendants pray this Honorable Court deny Plaintiffs Motion for Preliminary Injunction and for such other and further relief as the Court may deem necessary and just. KODNER WATKINS KLOECKER, LC

By:______/s/ Albert S. Watkins___________ ALBERT S. WATKINS, LC #34553 MICHAEL D. SCHWADE, #60862 Attorneys for Defendants 7800 Forsyth, Suite 700 St. Louis, Missouri 63105 (314) 727-9111 (314) 727-9110 Facsimile E-mail: Albertswatkins@kwklaw.net MSchwade@kwklaw.net CERTFICATE OF SERVICE Signature above is also certification that a true and correct copy of the above and foregoing document has been filed this 5th day of August, 2011utilizing the CM/ECF system, which will serve a copy upon all counsel of record.

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