Patsy's Brand, Inc. v. I.O.B. Realty, Inc.

Background

Patsy’s Brand, Inc. owns the registered trademark “PATSY’S PR SINCE 1944” for sauces. An earlier judgment permanently barred the defendants, their attorneys, and people acting with them from applying for or maintaining certain trademarks containing “PATSY’S” or “PATSY’S RESTAURANT” for sauces or other packaged foods, and from opposing or seeking cancellation of Patsy’s Brand’s covered trademarks.

Patsy’s Brand filed two motions seeking civil contempt, which is a court finding that someone violated a court order. The first motion concerned I.O.B. Realty, Frank Brija, Nexhmije Nezaj, Muharrem Memishaj, and Brian Roffe. The second concerned Adem Brija. The alleged violations involved two trademark applications and a counterclaim before the Trademark Trial and Appeal Board seeking cancellation of “PATSY’S PR SINCE 1944.”

Civil Contempt Standard

The court applied a three-part test. Patsy’s Brand had to show that the injunction was clear and definite, that the violation was proved by clear and convincing evidence, and that the alleged violator had not made a reasonably diligent effort to comply. For nonparties, the court also required actual notice of the injunction and proof that the person was legally connected to an enjoined party or intentionally helped violate the injunction.

Findings on the Trademark Applications

The court held that Paragraph 4(d) of the injunction was clear and unambiguous. Frank Brija filed applications for “PATSY’S OF EAST HARLEM” and “PATSY’S OF HARLEM” in the names of Nezaj and Memishaj. The court found by clear and convincing evidence that I.O.B. Realty and Brija violated the injunction. It rejected Brija’s argument that the applications reflected a reasonable interpretation of the injunction, noting that he had previously been found in contempt for violating the same provision and had not sought clarification from the court.

The court did not hold Nezaj or Memishaj in contempt because the record did not show that they had actual notice of the injunction before allowing Brija to use their names. The court also did not hold Adem Brija in contempt. It found insufficient evidence that he was legally identified with his father or that he knowingly helped violate the injunction. His assistance consisted of searching for information about submitting trademark applications and checking spelling and grammar, and the court could not find with reasonable certainty that he knew this assistance supported a violation.

Findings on the Cancellation Counterclaim

The court held that Paragraph 4(e) was clear and unambiguous and prohibited a petition to cancel “PATSY’S PR SINCE 1944” for sauces. Frank Brija, through Brian Roffe, had pursued such a counterclaim before the Trademark Trial and Appeal Board. After receiving a copy of the injunction on March 1, 2024, Roffe continued to argue that the injunction did not cover the trademark and did not withdraw as counsel or advise Brija to withdraw the counterclaim.

The court found by clear and convincing evidence that Brija and Roffe violated Paragraph 4(e), and that neither made a diligent effort to comply. It rejected their interpretation of the injunction and rejected Brija’s reliance-on-counsel defense. The court also rejected Roffe’s laches defense, which argued that Patsy’s Brand waited too long to raise the violation. Although the court found that Patsy’s Brand’s fourteen-month delay was unreasonable, it found that Roffe had not shown prejudice from the delay.

Sanctions and Other Relief

The court granted the contempt motions in part and denied them in part. It imposed a $300,000 coercive sanction on I.O.B. Realty and Frank Brija, payable to the Clerk of Court by September 5, 2025. The sanction was intended to encourage future compliance with the injunction. The court stated that future violations could result in sanctions of $300,000 or more for each violation.

The court also ordered I.O.B. Realty and Brija to reimburse Patsy’s Brand for the reasonable attorneys’ fees and costs attributable to litigating the contempt motions, including the portion concerning Roffe. The amount was to be determined after additional documentation and briefing. The court did not impose monetary coercive sanctions on Roffe, finding that the order requiring him to withdraw from the cancellation counterclaim was sufficient to promote compliance.

By September 5, 2025, I.O.B. Realty and Brija were required to take the necessary steps to abandon the two trademark applications. Brija, I.O.B. Realty, and Roffe were required to withdraw the counterclaim seeking cancellation of “PATSY’S PR SINCE 1944.” The court declined to initiate criminal contempt proceedings at that time and denied Patsy’s Brand’s requests for broader permanent injunctions as overly broad. The order states that all other motions and requests were denied.