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CPC Props. v. Dominic, Inc.

United States District Court for the Eastern District of Pennsylvania

October 9, 2013, Decided; October 9, 2013, Filed

CIVIL ACTION No. 12-4405

Opinion

MEMORANDUM

Schiller, J.

CPC Properties, Inc. ("CPC") sued Dominic, Inc. ("Dominic"), d/b/a Tony's Place, for trademark infringement and other related claims based on Dominic's placement of a crab image next to the word "fries" in an advertisement for its seasoned fries, on its menus, and on its website. CPC sells seasoned fries under the trademark CRAB FRIES®. The Court entered judgment in favor of CPC on a number of its claims. Now before the Court is CPC's Application for Damages and Other Relief, and Motion for Attorneys' Fees. For the following reasons, the Court denies CPC's requests for damages and attorneys' fees.

I. BACKGROUND

The Court previously recited the factual and procedural history of this case. See CPC Props., Inc. v. Dominic, Inc., Civ. A. No. 12-4405, 2013 U.S. Dist. LEXIS 118482, 2013 WL 4457338, at *1-2 (E.D. Pa. Aug. 21, 2013). As such, the Court will only set forth the facts necessary to decide this motion.

CPC owns and operates  [*2] the CHICKIE'S AND PETE'S chain of sports bars and kiosks that operate in and around the Philadelphia area. CHICKIE'S AND PETE'S owns the trademark CRAB FRIES®, under which it markets and sells its seasoned french fries. Dominic owns and operates a family-style Italian restaurant in Northeast Philadelphia called Tony's Place. In 2000, CPC's predecessor-in-interest sued Dominic for using the words "CRAB FRIES" in marketing its seasoned french fries. The parties settled that dispute in 2002, and Dominic ceased using the terms "CRAB" or "CRAB FRIES" to describe its fries.

On August 3, 2012, CPC sued Dominic, asserting that Dominic engaged in trademark infringement, false designation of origin, common law service mark infringement, unfair competition, unjust enrichment, and trademark dilution by using a crab image next to the word "FRIES" in an advertisement, on its menus, and on its website. Less than a week after CPC filed the Complaint, the Court entered a preliminary injunction, to which the parties stipulated ("Stipulated Preliminary Injunction"), which ordered Dominic to cease using the crab image in connection with its fries. However, subsequent investigation by CPC revealed that  [*3] Dominic had not fully removed the crab image from its website, some menus, and the receipts given to customers, though it had made some effort to obscure the crab images on its menus and had not used the image in advertisements. The Court held Dominic in contempt of the Stipulated Preliminary Injunction and awarded attorneys' fees to CPC for litigating that issue.

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2013 U.S. Dist. LEXIS 145907 *; 2013 WL 5567584

CPC PROPERTIES, INC., Plaintiff, v. DOMINIC, INC., Defendant.

Prior History: CPC Props. v. Dominic, Inc., 2013 U.S. Dist. LEXIS 25168 (E.D. Pa., Feb. 25, 2013)

CORE TERMS

crab, profits, fries, damages, sales, infringement, injunction, attorney's fees, disgorging, trademark infringement, Lanham Act, trademark, seasoned, preliminary injunction, award damages, unprofitable, culpable conduct, asserts, weighs, menus, appropriate remedy, advertisement, culpable, dilution, diverted, public interest, actual damage, designation, misconduct, courts