UNITED STATES DISTRICT COURT SOUTHERN ... - Nymag

Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 7 of 24
Dwinell-Wright Co. v. White House Milk Co., 132 F.2d 822 (2d Cir. 1943) (emphasis added).
Similarly, in denying relief for trademark infringement in an action between competing
restaurants, the court in beef & brew, inc. v Beef & Brew, Inc., 389 F. Supp. 179, 187 (D.C. Or.
1974) held that the opening of a second restaurant without objection by a knowing plaintiff
satisfies the requisite prejudice for laches:
Defendant Beef & Brew, however, relied upon Plaintiff’s silence
for far more than promotion. Its principals committed themselves
to personal liability of more than $2.5 million. Defendant opened
one restaurant after Plaintiff, having learned about Defendant's
plans, voiced no warning nor even sent a query from Seattle to
Portland. Defendant opened a second restaurant after Plaintiff had
actually seen the first yet still sent no warning or query. In these
circumstances, Plaintiff’s delay in asserting its claimed rights
should not be permitted to deprive Defendant of the goodwill it has
created . . . .
Here, Philippe has opened not one, not two, not three, but four new Philippe restaurants
(with a fifth restaurant to open later this fall) without so much as a word of objection from
Plaintiffs. Philippe has spent an inordinate amount of time, money, and energy investing in and
growing Philippe’s successful enterprise, and has committed itself to investors, employees and
landlords who all have an interest in the success of Philippe’s business. For Plaintiffs to now
voice their objection for the first time through the filing of this action, as Judge Hand wrote “this
we find impossible to understand.” Plaintiffs, having sat silent for over three and a half years
while Philippe expanded its business, constitutes inexcusable delay that will cause Philippe
undue and severe prejudice. Plaintiffs, as a matter of law, should be estopped under the doctrine
of laches from asserting all of their untimely claims.
III. COUNTS I THROUGH VI AND COUNT VIII SHOULD BE DISMISSED
BECAUSE THERE CAN BE NO LIKELIHOOD OF CONFUSION BETWEEN
PLAINTIFFS’ AND PHILIPPE’S MARKS AS A MATTER OF LAW 1
To prevail on a trademark infringement claim, a plaintiff bears the burden of proving that
the defendant’s mark is likely to cause consumer confusion. Dieter v. B & H Indus. of Sw. Fla.,
1 This argument and the following arguments address the grounds (in addition to laches) upon
which Plaintiffs’ claims should be dismissed.
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RICHMAN GREER, P.A.
Miami • West Palm Beach