Name Infringement Patent Violation v. Seasalt & Pepper

6702718
UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION

NANE JAN, LLC, a Florida Corporation,

Plaintiff and Counter-Defendant,

vs. Case No. 2:14-cv-208-FtM-29CM
SEASALT AND PEPPER, LLC,

Defendant and Counter-Plaintiff.
___________________________________/
MOTION FOR PRELIMINARY INJUNCTION
AND SUPPORTING MEMORANDUM OF LAW

Plaintiff, Nane Jan, LLC (Plaintiff or Nane Jan), by and through undersigned counsel
and pursuant to Federal Rule of Civil Procedure 65, respectfully moves for entry of a preliminary
injunction enjoining defendant Seasalt and Pepper, LLC (Defendant or Seasalt and Pepper)
from further use of Nane Jans SEA SALT trademark. In support, Nane Jan submits the
following Memorandum of Law and the attached declarations of Ingrid Aielli, Nathan Webb,
Jason Goddard, and Tanya Buchanan.
I. INTRODUCTION
Nane Jan owns a restaurant and bar in Naples, Florida, that does business under the
service mark
1
SEA SALT. Nane Jan owns both state and federal trademark registrations
ensuring its exclusive right to use the SEA SALT trademark in association with its restaurant
and bar services. Without Nane Jans permission, Defendant recently opened a restaurant and bar
in Miami, Florida, under the trade name Seasalt and Pepper, and attempted to obtain federal

1
For the sake of simplicity, and consistent with common usage, the phrases service mark and
trademark are used interchangeably herein.
Case 2:14-cv-00208-JES-CM Document 24 Filed 08/04/14 Page 1 of 21 PageID 140

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trademark registrations on its business name. Defendants SEASALT AND PEPPER
trademark applications were rejected by the United States Patent and Trademark Office
(USPTO or Trademark Office) because the trademark Examiner concluded that there was a
likelihood of consumer confusion with Plaintiffs registered SEA SALT trademark. The
Examiners finding of likelihood of confusion has since been bolstered by growing evidence of
actual consumer and supplier confusion.
Additionally, the goodwill and excellent reputation that the public has come to associate
with Nane Jans SEA SALT trademark has been damaged by a rash of negative publicity
associated with Defendant, including: 1) poor food and service reviews; 2) Defendants failure to
obtain proper business licenses and permits and pass city inspections; 3) litigation amongst the
owners of Defendants business relating to a management coup; 4) shady advertising tactics
such as issuing fake celebrity sightings to stir up publicity; 5) a warning from the Florida
Environmental Protection Agency after an investigation into the restaurants yacht mooring
system deemed it a navigation hazard; and 6) wrongful termination lawsuits against Defendant
brought by former employees.
There is little doubt that Nane Jan will succeed on the merits of its trademark
infringement claim. The Trademark Offices objective conclusion that Defendants SEASALT
AND PEPPER trademark creates a likelihood of confusion with Plaintiffs SEA SALT
trademark is entitled to substantial weight under the law. Furthermore, it is well-settled that the
existence of a likelihood of confusion constitutes irreparable harm, as a matter of law, sufficient
to satisfy the requirements of Rule 65 of the Federal Rules of Civil Procedure. Because
consumers and suppliers are likely to assume, and have assumed, that Defendants business is
affiliated with Plaintiffs business, all of the confusion as to the source of Defendants services,

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and all of the negative publicity surrounding Defendants restaurant, are irreparably harming
Nane Jans reputation and goodwill in the SEA SALT mark in a manner that can only be
mitigated by way of this Courts entry of a preliminary injunction.
II. FACTS
A. Plaintiffs SEA SALT Trademark
Nane Jan owns and operates Sea Salt, a contemporary seafood cuisine restaurant
located at 1186 Third Street South, Naples, Florida, that opened in November 2008 to both
critical and public acclaim. Declaration of Ingrid Aielli 2 (Aielli Declaration, attached hereto
as Exhibit 1)
2
; Complaint 6 (attached, with exhibits, to the Aielli Declaration).
3
Nane Jans Sea
Salt restaurant has received a number of accolades since opening including, but not limited to,
Wine Spectators Award of Excellence from 2009-2013, Grub Street New Yorks 101 of
Americas Most Delicious Noodle Dishes in 2011, Gulfshore Life Magazines Best VIP Dining
Service in 2011, and Gulfshore Life Magazines Best Overall Restaurant in 2010. Comp.
10. Additionally, Nane Jan has made continuous use of the SEA SALT mark since November
15, 2008, and has expended substantial sums of money and time in the development, advertising,
and promotion of the SEA SALT mark. Id. 15. As a result, the SEA SALT mark has achieved
substantial recognition and good will within the restaurant industry and has come to be

2
The Aielli Declaration: 1) states that Ms. Aielli has reviewed the Complaint (Doc. #1), and all of
the allegations and associated exhibits contained therein; 2) attests that such allegations are true, except as
to those matters alleged upon information and belief, in which case, she believes them to be true; 3)
attests that the Complaints Exhibits are true and correct copies of the various documents; and 4)
incorporates by reference all factual allegations and associated exhibits contained in the Complaint (Doc.
#1) into her Declaration.

3
All facts and/or exhibits which have been verified as true, by way of the Aielli Declaration, are
hereinafter cited only with reference to the Complaint (Doc. #1) and any associated Exhibit, instead of
both the Aielli Declaration and the Complaint.

6702718 4
recognized and relied upon as originating exclusively with the Sea Salt restaurant and being of a
very high quality. Id.
To protect its valuable trademark rights, and associated goodwill, Nane Jan registered its
SEA SALT mark in Florida on December 30, 2008 (Trademark Registration No.
T08000001417). Compl. 12, and Ex. 1 and 2 thereto. Nane Jans SEA SALT trademark was
subsequently registered with the Trademark Office on March 12, 2013 for use in association with
bar and restaurant services (Trademark Registration No. 4,299,923).
4
Id. 13, and Ex. 3
thereto. These trademark registrations remain valid and enforceable, and Nane Jan is the owner
of all right title and interest to the SEA SALT mark in association with restaurant and bar
services.
B. Defendants Willful Infringement of the SEA SALT Trademark
Over five years after Plaintiffs first use of the SEA SALT mark on December 7,
2013 Defendant opened a seafood restaurant and bar, located at 422 NW North River Drive,
Miami, FL 33128, under the name Seasalt and Pepper. Id. 18; Defendants Answer and
Counterclaim (Doc. #19) 18. Defendant uses the SEASALT AND PEPPER name in
association with its two concept business; Seasalt Brasserie is the name for the restaurant,
while Pepper is the name of the attached bar, lounge and members club. Defendant also uses
the SEA SALT mark in advertising its restaurant and bar services on its website,
www.seasaltandpepper.com. Compl. 19; Defendants Answer and Counterclaim 19.
Defendant is situated only 125 miles from Plaintiff, and is in the same media market. Nane Jan
soon discovered the opening of Defendants Seasalt and Pepper restaurant, and the fact that
Defendant had filed two federal trademark applications (one for a standard character mark, the

4
The phrase SEA SALT is hereinafter used to describe Plaintiffs federal, state and common
law trademarks.

6702718 5
other for a stylized version) for SEASALT AND PEPPER in association with restaurant and
bar services. Compl. 16-17, and Ex. 4-5 thereto.
Nane Jan took swift action to prevent Defendant from fully committing to an infringing
business name. On December 16, 2013 only nine days after Seasalt and Pepper restaurant
opened Nane Jan sent Defendants trademark attorney, Jorge Espinoza, correspondence
demanding that Defendant terminate all use of the SEA SALT mark. Id. Compl. 20 and Ex. 6
thereto; Aielli Declaration 7. Specifically, Nane Jan put Defendant on notice of its state and
federal trademark registrations and advised that formal legal action would be pursued if
infringing use of the SEA SALT mark did not cease within 10 days. Compl. 20, and Ex. 6
thereto; Aielli Declaration 7. Mr. Espinoza and Nane Jans trademark attorney subsequently
engaged in settlement talks which resulted in the presentation of a formal offer of settlement.
Aielli Declaration 8. Unfortunately, the parties failed to reach a settlement; on January 30,
2014, Mr. Espinoza advised that Defendant was unwilling to accept all of Nane Jans generous
settlement terms; Nane Jan replied that without a formal settlement agreement on all settlement
issues it was likely that a formal trademark opposition proceeding before the USPTO would be
pursued against Defendants trademark applications. Id. 8-9.
After receiving no additional communications from Defendants trademark attorney,
Nane Jan monitored the scope and effects of Defendants infringing conduct. Id. 10 This
investigation revealed that two of Nane Jans best suppliers of restaurant and bar materials,
Freshpoint and Prime Line Distributors, Inc., were confused about the affiliation, or lack thereof,
between Plaintiffs Sea Salt restaurant in Naples and Defendants Seasalt and Pepper restaurant
in Miami. Declaration of Jason Goddard 8-9 (Goddard Declaration, attached hereto as
Exhibit 2). Written correspondence from Freshpoint and Prime Line Distributors, Inc. requested

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that Nane Jan designate all future orders as Sea Salt Naples. Id., and Attachments A and B
thereto. Freshpoint stated that such specification was to ensure that our customer service team
will not confuse your account with another restaurant named Sea Salt that is in Miami.
Goddard Declaration, 2, and Ex. A. thereto. Even after Plaintiff began designating its food
orders as Sea Salt Naples Plaintiff has encountered supplier confusion, including supply orders
placed by Plaintiff Sea Salt being mistakenly delivered to Defendant Seasalt and Pepper in
Miami. Goddard Declaration 10.
Nane Jan also learned that the USPTO had foreshadowed the actual confusion occurring
in the marketplace: both of Defendants federal trademark applications were rejected on
February 28, 2014, after the trademark Examiner concluded there was a likelihood of
confusion with Nane Jans SEA SALT trademark registration number 4299923. Complaint,
23-24, and Ex. 7 and 8 thereto. Of particular note in the Examiners reasoning were the fact
that both marks contain the dominant terms SEA SALT and that [b]ecause the wording [SEA
SALT] is arbitrary for restaurant services, it is a strong source identifier. Id., at Ex. 7, p. 2 and
Ex. 8, p. 2. In conjunction with the fact that the services are identical, both being restaurant
services, Defendants applications for trademark registration were refused over Nane Jans pre-
existing SEA SALT registration. Id., at Ex. 7, p. 2 and Ex. 8, p. 2.
Remarkablyeven after Nane Jan put Defendant on notice of its federal SEA SALT
trademark registration, and even after the USPTO officially rejected Defendants trademark
applications, concluding there is a likelihood of confusion with Nane Jans SEA SALT mark
Defendant continues, to this date, unabated in its use of the SEA SALT mark to advertise its
restaurant and bar services. Defendants Answer to Complaint and Counterclaim 3 (Doc. #19).


6702718 7
C. The Present Litigation and Mounting Evidence of Irreparable Harm
On April 14, 2014, Nane Jan filed the present lawsuit, alleging infringement of its
federal, state and common law trademark rights. See generally Compl. Instead of immediately
serving the Complaint, however, Nane Jan reached out to Mr. Espinoza in yet another effort to
determine whether the dispute could be resolved. Declaration of Nathan Webb 3 (Webb
Declaration, attached hereto as Exhibit 3). In correspondence dated April 14, 2014, Nane Jan
offered to settle the pending litigation if Defendant would agree to, among other terms, an
orderly transition to a new business name; the deadline to respond to the settlement
correspondence was two weeks. Id. Mr. Espinoza waited eleven days before informing the
undersigned that he no longer represented Defendant. Id. 5. Nane Jan therefore amended the
April 14 correspondence and sent a new settlement correspondence directly to the owners of
Defendant Seasalt and Pepper on April 30, 2014; the deadline to respond to the settlement
correspondence was extended until May 14, 2014. Id. 6. The next day, the undersigned
received a telephone call from Chris Weisman, at attorney at the firm of Defendants current
counsel to discuss potential settlement terms. Id. 7. The undersigned was informed at that time
that Defendant would evaluate the offer and respond in due course. Id. The May 14, 2014
deadline included in Nane Jans settlement correspondence came and went without receiving a
reply from Defendants counsel. Id. 8.
Nane Jan was left with little choice but to serve the Complaint and proceed with the
lawsuit; verification of service of the Complaint was entered with the Court on May 30, 2014
See, Verification of Service (Doc. #4). On June 13, 2014, just days before Defendants Answer
to the Complaint was due, Himanshu Patel, another attorney at the firm of Defendants current
counsel, contacted the undersigned and request a two-week extension of time to file its

6702718 8
responsive pleading; Nane Jan agreed to the extension, and once again broached the subject of
settlement; Mr. Patel advised that he was only recently retained by Defendant, was unsure if he
would be lead counsel in the case, and was otherwise unfamiliar with the settlement terms
offered his client, but would take the matter under advisement and be in contact. Webb
Declaration 10-11. On July 1, 2014, without having first responded to Nane Jans continuing
invitation to discuss settlement, Defendant filed its Answer and Counterclaims (Doc. #19). Webb
Declaration 12.
Nane Jans continuing investigation into the impact of Defendants infringing activities
revealed yet further confusion and damage to Plaintiffs good will and reputation. The General
Manager at Nane Jans Sea Salt restaurant, who routinely interacts with customers about their
dining experience, has personally received approximately thirty (30) inquiries as to whether Sea
Salt has any affiliation with Seasalt and Pepper. Declaration of Tanya Buchanan 6
(Buchanan Declaration, attached hereto as Exhibit 4). Of those approximately thirty (30)
customer inquiries, approximately twenty (20) have concerned questions related to Nane Jans
involvement with negative press accounts associated with Defendants Seasalt and Pepper
restaurant; including, at least, questions about whether Nane Jan was involved in Defendants
numerous pending lawsuits. Id. 7 (and as further detailed below). Numerous customers of
Defendant Seasalt and Pepper have called Plaintiff Nane Jan to make inquiries about their
restaurant bills. Id. 8. Still other customer comments expressed surprise that Nane Jan had
opened another restaurant in Miami. Id. 13.
Additionally, negative press and publicity seemed to be associated with Defendants
every move. One article described how Seasalt and Pepper had been shut down by a City Fire
Marshallonly four days after its openingfor failure to secure a Certificate of Use, Business

6702718 9
Tax Receipt license and pass a routine fire inspection; shortly thereafter, the Florida
Environmental Protection Agency characterized Seasalt and Peppers yacht mooring system as a
navigation hazard in a formal letter of admonishment. Webb Declaration, at Attachment H, pp.
2-5. Other journalists wrote articles describing lawsuits involving Defendant Seasalt and Pepper
and/or its respective owners: 1) a lawsuit between owners of Seasalt and Pepper asserting a
management coup over control of the company (Id. at Attachment D); 2) lawsuits brought by
Seasalt and Pepper against its investors in reaction to a loan dispute that included threats to
foreclose the restaurants loan (Id. at Attachments A and B); 3) lawsuits by former Seasalt and
Pepper employees who alleged wrongful termination (Id. at Attachment F); and 4) lawsuits
involving Seasalt and Peppers owners failure to pay homeowners association fees. Id. at
Attachment I. Still other press accounts of Seasalt and Peppers activities read like a tabloid
page, with one article alleging first-hand knowledge that restaurant management has been known
to issue fake celebrity sightings in an attempt to stir up publicity. Id. at Attachment C. Perhaps
most damaging of all, however, were poor or lukewarm food reviews warning Go to Seasalt and
Pepper for the View, but Not the Food. Id. at Attachment E.
Presented with mounting evidence that Defendants use of Plaintiffs SEA SALT mark
was doing serious and irreparable damage to its reputation, and uncertain of the full extent of
consumer and supplier confusion, Plaintiff was left with no choice but to prepare and file the
present request for entry of a preliminary injunction.
III. ARGUMENT
A. Standard of Review
The purpose of the Lanham Act is [t]o protect trademarksto protect the public from
deceit, to foster fair competition, and to secure to the business community the advantages of

6702718 10
reputation and goodwill by preventing their diversion from those who have created them to those
who have not. See Truck Equip. Serv. Co. v. Fruehaf Corp, 536 F.2d 1210, 1215 (8
th
Cir. 1976).
To meet this purpose, the Lanham Act prohibits infringement of trademarks and specifically
authorizes an injunction according to the principles of equity and upon such terms as the court
may deem reasonable to prevent the violation of any right of the registrant of a mark in the
Patent and Trademark Office. 15 U.S.C. 1051 et seq., 116(a).
To obtain a preliminary injunction, Nane Jan must show: (1) a substantial likelihood of
succeeding on the merits; (2) a substantial threat of irreparable injury if relief is denied; (3) an
injury that outweighs the opponent's potential injury if relief is granted; and (4) that an injunction
would not harm or do a disservice to the public interest. See Suntrust Bank v. Houghton Mifflin
Co., 252 F. 3d 1165, 1166 (11th Cir. 2001); Am. Red Cross v. Palm Beach Blood Bank, 143 F.3d
1407, 1410 (11th Cir. 1998).
B. Nane Jan Demonstrates a Substantial Likelihood of Success on the Merits
Nane Jan has a substantial likelihood of success on its trademark infringement claims.
5

In order to succeed on the merits of a trademark infringement claim [under 15 U.S.C. 1114(1)
or 1125(a)(1)], a plaintiff must show that the defendant used the mark in commerce without its
consent and that the unauthorized use was likely to deceive, cause confusion, or result in
mistake. Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1300-01 (11th Cir. 2001)
(quoting McDonald's Corp. v. Robertson, 147 F.3d 1301, 1307 (11th Cir. 1998)). Essentially,
Nane Jan must show that it owns the mark in question, that the defendant's mark is similar to or

5
For the sake of brevity, Nane Jan cites only to federal trademark law in analyzing the likelihood
of success on its claims, since the elements of state and common law trademark law are not appreciably
different for the purposes of evaluating this motion. See, e.g., Investacorp, Inc. v. Arabian Inv. Banking
Corp., 931 F.2d 1519, 1521 (11
th
Cir. 1991) (analysis of Florida statutory and common law trademark
infringement claims and unfair competition is the same for federal trademark infringement claims); La
Dove, Inc. v. Playtex Jhirmack, Inc., 1991 WL 187473, at *3 (S.D. Fla. 1991) (same).

6702718 11
the same as the plaintiff's mark, and that defendant's use of the mark is likely to cause confusion
among consumers. Dunkin' Donuts Inc. v. Gav-Stra Donuts, Inc., 139 F. Supp. 2d 147, 158 (D.
Mass. 2001).
Notably, the Trademark Office conducts substantially the same analysis, as further
demonstrated below, in determining whether a trademark application should be granted a federal
registration. Where, as here, the Trademark Office has declined to register defendants mark
because of plaintiffs registration, that refusal is entitled to great weight on the issue of
likelihood of confusion in a later trademark action. Syntex Labs., Inc. v. Norwich Pharm. Co.,
437 F.2d 566, 569 (2d Cir. 1971); Carling Brewing Co. v. Philip Morris, Inc., 297 F. Supp.
1330, 1337 (N.D. Ga. 1968) (Trademark Office decisions entitled to the most respectful
consideration); see also Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96,
120 (S.D.N.Y. 1989) (decision by the PTO is entitled to great weight); Natl Customer
Engineering, Inc. v. Lockheed Martin Corp., 1997 WL 363970, at *1 (C.D. Cal. Feb. 14, 1997)
(Trademark Offices determination was entitled to serious consideration). Both Nane Jans
arguments and the legal conclusions of the Trademark Office support the assertion that there is a
strong likelihood of Nane Jan succeeding at trial on the merits of its claims.
1. Nane Jan Owns Valid Federal and State Trademark Registrations
The Lanham Act provides that marks registered on the Principal Register shall be prima
facie evidence of the validity of the registered mark, of its registration, of the registrant's
ownership, and of the registrant's exclusive right to use the mark on the goods or services
specified in the registration. 15 U.S.C.A. 1115(a). Nane Jan is the owner of SEA SALT
trademark registrations in Florida (Trademark Registration No. T08000001417) (Dec. 30, 2008)
and the USPTO (Trademark Registration No. 4,299,923) (March 12, 2013). Compl., at Ex. 1 and

6702718 12
3 thereto. A plaintiff can establish that it possesses valid marks by identifying the registration
numbers of each mark and providing copies of the marks from the Trademark Offices
website. FSC Franchise Co., LLC v. Express Corp. Apparel, LLC, 2011 U.S. Dist. LEXIS
34064 (M.D. Fla. Feb, 28, 2011). Apart from its state and federal trademark registrations, Nane
Jan also owns common law trademark rights by virtue of its earlier use of the SEA SALT mark
as compared to Defendant. Nane Jan has plainly proven that it owns the exclusive right to use
the SEA SALT mark in association with restaurant and bar services.
2. Defendants Mark is the Same As Nane Jans SEA SALT Mark
The Trademark Office concluded that Defendants SEASALT AND PEPPER
trademark was too similar to Plaintiffs SEA SALT mark to be registered with the USPTO.
Compl., at Ex. 7 and 8. This conclusion is entitled to great weight, as a matter of both law and
common sense. See Syntex Labs., 437 F.2d at 569. As the trademark Examiner pointed out,
both marks contain the dominant terms SEA SALT and because [c]onsumers are generally
more inclined to focus on the first word, prefix, or syllable in any trademark or service mark
there is a likelihood of confusion with Nane Jans SEA SALT mark. Compl., at Ex. 7, p. 2 and
Ex. 8, p. 2 (citing to Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F. 3d 1369, 1372 (Fed. Cir. 2005)); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.
2d 1895, 1897 (TTAB 1988) (it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered when making purchasing decisions).
Moreover, Defendants mere addition of the word Pepper to Nane Jans SEA SALT mark is
entirely incapable of avoiding confusion. A defendant in a trademark infringement or unfair
competition case cannot prevail by simply adding a word to one that it shares with the
plaintiff[as] Courts have repeatedly held that the confusion created by use of the same word

6702718 13
as a primary element in a trademark is not counteracted by the addition of another term.
Coherent, Inc. v. Coherent Tech., Inc., 1990 U.S. Dist. LEXIS 5715, at 26 (Colo. 1990); see also
Contl Connector Corp. v. Contl Specialties Corp, 492 F. Supp. 1088, 1095 (D. Conn. 1979).
Defendants use of SEASALT AND PEPPER is identical, or impermissibly similar, to Nane
Jans SEA SALT mark.
3. Defendants Use of SEASALT AND PEPPER is Likely to Be
Confused with Nane Jans SEA SALT Mark

The Eleventh Circuit has consistently referred to the following seven factors when
determining whether a likelihood of confusion exists: (1) the type of mark; (2) the similarity of
the mark; (3) the similarity of services; (4) the identity of purchasers and the similarity of retail
outlets; (5) the similarity of advertising campaigns; (6) the intent of the defendants; and (7)
actual confusion. The Trademark Office concluded that Defendants SEASALT AND
PEPPER trademark applications were not entitled to be registered with the USPTO because of a
likelihood of confusion with Plaintiffs SEA SALT trademark. Compl., at Ex. 7 and 8 thereto.
The Trademark Offices conclusion is entitled to great weight, but an examination of the factors
that are considered in this analysis further demonstrates why the trademark Examiners
conclusion was well-founded. See Syntex Labs., 437 F.2d at 569.
a. The Type of the Mark
The first factor raises the issue whether the marks adopted and used by Nane Jan are
"strong," and therefore deserving of protection, or "weak," and not entitled to protection.
Bellsouth Adver. & Publg Corp. v. The Real Color Pages, Inc., 792 F. Supp. 775, 781 (M.D.
Fla. 1991) (citing University of Georgia Athletic Ass'n. v. Laite, 756 F.2d 1535 (11th Cir. 1985)).
The strength of a trademark is measured in the marketplace by its tendency to identify the source
of the goods; there are essentially four types of marks, ranging in degree of identification, and

6702718 14
hence protection; they are, from strongest to weakest: (1) arbitrary or fanciful; (2) suggestive; (3)
descriptive; and (4) generic. See e.g., Soweco Inc. v. Shell Oil Co., 617 F.2d 1178, 1183-1184
(5th Cir. 1980) (cert. denied, 450 U.S. 981 (1981)).
Regarding the strength of Nane Jans mark, the trademark Examiner afforded it the
greatest strength available on the distinctiveness spectrum by stating that SEA SALT is
arbitrary for restaurant services.[and] is a strong source identifier. Compl., at Ex. 7, p. 2 Ex.
8, p. 2. Since SEA SALT is completely arbitrary for restaurant and bar services, it is a very
strong mark. This factor plainly weighs toward a likelihood of confusion.
b. Similarity of the Marks
As a preliminary observation, it is worth noting that "where the products are closely
related, less similarity in the trademarks is necessary to support a finding of infringement."
Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). Defendants trademark
applications are for restaurant and bar services (Compl., at Ex. 4-5); Plaintiffs trademark
registrations are for restaurant and bar services. Id., at Ex. 1 and 3 thereto. Thus, less
similarity in the trademarks is required. Notwithstanding this fact, for the reasons stated above,
the similarity of the Plaintiffs and Defendants respective marks was deemed by the Trademark
Office to be significant, with the appendage of PEPPER being of no consequence, since the
addition of a word to a registered mark is widely recognized as incapable of avoiding
infringement liability. Contl Connector, 492 F. Supp. at 1095. More importantly, however, is
the fact that evidence of actual consumer and supplier confusion has been well-documented.
Goddard Declaration 5-10; Buchanan Declaration 5-12. This factor indisputably favors a
likelihood of confusion.


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c. Similarity of Services
Defendants trademark applications are for restaurant and bar services (Compl. At Ex.
4-5 thereto); Plaintiffs trademark registrations are for restaurant and bar services (Id. at Ex. 1,
3 thereto); thus, there is no question that the services are identical; a fact the Trademark Office
also acknowledged. Id. at Ex. 7-8 thereto.
d. The Identity of Purchasers and the Similarity of Retail Outlets
Both parties cater to high end consumers of seafood cuisine, and both parties offer their
restaurant and bar services at up-scale venues. Compl. 6-10; Defendants Answer and
Counterclaim 6-9. This factor increases the likelihood of confusion between the two
restaurants. See Contra Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 262 (5th Cir.) (cert.
denied, 449 U.S. 899 (1980)).
e. The Similarity of Advertising Campaigns
Nane Jan has not yet obtained discovery on the scope and nature of Defendants
advertising campaigns. Nonetheless, Nane Jan asserts, broadly, and with reservation of rights to
further supplement this argument when additional discovery becomes available, that two Florida
businesses advertising seafood restaurant and bar services under the SEA SALT mark are by
their very nature similar. This factor weighs in favor of a finding of a likelihood of confusion.
f. Intent of the Defendant
Nane Jan believes that discovery will establish Defendants intention to trade off of the
good will associated with Nane Jans SEA SALT mark in adopting and using the trade name
Seasalt and Pepper. Certainly, after being put on notice of Nane Jans state and federal
trademark registrations, and being admonished by the USPTO that there is a likelihood of
confusion with another federally registered mark (and Florida business), it cannot be disputed

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that Defendant intends to use the SEA SALT mark in a willful and malicious manner. Given
Nane Jans widespread recognition and acclaim, it can be inferred that adoption and continuing
use of the SEA SALT mark was an intentional effort to benefit from the excellent reputation
Nane Jan had already achieved. See generally, Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *20
(citing John H. Harland Co. v. Clarke Checks, Inc., 711 F. 2d 966, 977 (11
th
Cir. 1983)).
g. Evidence of Actual Confusion
"Although evidence of actual confusion is not necessary to a finding of likelihood of
confusion, it is nevertheless the best evidence of likelihood of confusion." Amstar Corp. v.
Domino's Pizza, Inc., 615 F.2d 252, 263 (5
th
Cir. 1980). Evidence of actual confusion can be
established by way of declarations or affidavits. Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *21.
Nane Jan has presented evidence that at least 30 customers have expressed confusion as to
whether there was an affiliation between Nane Jans Sea Salt restaurant in Naples and
Defendants Seasalt and Pepper restaurant in Miami. Buchanan Declaration 7. Nane Jan has
also presented evidence that two of its best suppliers were confused as to an affiliation between
Nane Jans Sea Salt restaurant in Naples and Defendants Seasalt and Pepper restaurant in
Miami; one of the suppliers accidentally sent a food order placed by Nane Jan to the Defendants
restaurant in Miami, thereby disrupting Nane Jans normal business operations. Goddard
Declaration 10. The evidence of actual marketplace confusion is well-established, without the
parties even having conducted any formal discovery. This factor is clearly established by the
presented evidence, and forms the fundamental gravamen of a trademark infringement claim
Nane Jan will succeed on the merits of its trademark infringement claims.


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C. There is a Substantial Threat Of Irreparable Harm if an Injunction is Not
Issued
Once a plaintiff establishes a likelihood of success on the merits of a trademark
infringement claim, a presumption of irreparable harm arises. Fantasia Distrib., Inc. v. S.
Wholesale, LLC, 2014 U.S. Dist. LEXIS 19884, at **3-4 (M.D. Fla. Feb. 18, 2014); see also
Bellsouth Adver. & Publg Corp. v. Real Color Pages, Inc., 792 F. Supp. 775, 784 (M.D. Fla.
1991) (The law is well settled that the existence of a likelihood of confusion constitutes
irreparable injury, as a matter of law, sufficient to satisfy the requirements of Federal Rule of
Civil Procedure 65.). As such, Defendants trademark infringement is an offense that, by its
very nature, causes irreparable injury. See Delta Sigma Theta Corority, Inc. v. Bivens, 2014 WL
1330018 at *2 (M.D. Fla. April 1, 2014); citing Tally-Ho, Inc. v. Coast Cmty. Coll. Dist, 889 F,
2d 1018, 1029 (11
th
Cir. 2989) (It is generally recognized in trademark infringement cases that
(1) there is not [an] adequate remedy at law to redress infringement and (2) infringement by its
nature causes irreparable harm.).
Even without the presumption of irreparable harm, however, the evidence establishes that
irreparable harm can only be mitigated by entry of a preliminary injunction. Nane Jan has no
ability to control the quality of the food and services being offered by Defendant under the SEA
SALT mark. As a result, consumers who have a negative dining experience at Defendants
Seasalt and Pepper restaurant may pass along a negative review of the restaurant to their friends
or families, thereby potentially causing customers to avoid Nane Jans restaurant, and tarnishing
the reputation and goodwill that Nane Jan has invested so heavily to establish. Furthermore, the
evidence establishes that customers are actually confused about an affiliation between Sea Salt
restaurant in Naples and the Seasalt and Pepper restaurant in Miami, and that the majority of
these confused customers are also wrongfully attributing the negative publicity surrounding

6702718 18
Defendants numerous lawsuitsand perhaps even other bad press, ranging from failed
inspections and false advertising to poor food reviews and public hazards to the conduct of
Nane Jan. See Buchanan Declaration 5-7. A negative press article regarding Defendant
particularly where Plaintiff is situated only 125 miles away and in the same media market
poses a high risk of tarnishing the reputation of Nane Jan. It is difficult to quantify the scope or
measure of damages associated with this damage to Nane Jans reputationonly issuance of a
preliminary injunction can mitigate this irreparable harm.
6

D. Nane Jans Injury Outweighs the Defendant's Potential Injury if Relief is
Granted

Defendant will not suffer substantial harm from the Court granting Plaintiff Nane Jans
Motion; Defendant will be able to continue operating its business, offering restaurant and bar
services in Miami, as Nane Jan does not seek to enjoin all sales of Defendants' services, but only
to halt sales of services using Plaintiff's SEA SALT mark. See Delta Sigma, 2014 WL 1330018
at *3. Defendant can advertise and operate its business under any name that does not contain the
SEA SALT mark, or any confusingly similar name.
E. An Injunction Would Not Harm or Do a Disservice to the Public Interest
Protecting consumers from confusion and deception is in the public interest. See Teledyne

6
Defendant has indicated that it will assert that Plaintiffs purported delay in seeking a
preliminary injunction undermines its assertion of irreparable harm. As the facts establish, however, of
the roughly eight months between the opening of Defendants restaurant and the filing of this motion,
Nane Jan has spent nearly four full months in efforts to settle the dispute; the remaining four months have
involved an ongoing investigation into the impact of infringement and the appropriate forum and avenues
for obtaining relief; and it has only been one month since Nane Jans continuing settlement overtures
were finally foreclosed by Defendants commitment to proceeding with litigation by way of its Answer
and Counterclaims. None of these time periods are counted as delay against Plaintiff. See, e.g. Rebel
Debutante, LLC v. Forsythe Cosmetic Group, Ltd, 799 F. Supp. 2d 558, 580 (M.D. N.C. 2011).
Additionally, Plaintiff is entitled to some latitude to assess both the impact of anothers use of an
allegedly infringing trademark as well as the wisdom of pursuing litigation on the issuePlaintiffs delay
of seven to eight months is not an unreasonable amount of delay, and does not necessitate the preclusion
of a finding of irreparable injury. Bellsouth, 1991 U.S. Dist. LEXIS 20124, at *26. Nane Jan reserves
the right to brief this issue further in its reply brief.

6702718 19
Indus., Inc. v. Windmere Prod., Inc., 433 F. Supp. 710, 740 (S.D. Fla. 1977) (stating customer
confusion is by its very nature against the public interest). The Middle District of Florida courts
have long recognized the gravity of protecting the public in trademark infringement cases,
including stating:
[i]n a trademark infringement or unfair competition case, a third party, the
consuming public, is present and its interests are paramount.... When a trademark
is said to have been infringed, what is actually infringed is the right of the public
to be free of confusion and the synonymous right of the trademark owner to
control his products' reputation.

Bellsouth Adver., 792 F. Supp. at 785. The facts of this case present a compelling argument for
protecting consumers against confusion as to both reputation of the parties and as to the
quality of their respective services and this factor weighs heavily in favor of entry of the
injunction.
IV. CONCLUSION
The factors this Court must consider for the issuance of a preliminary injunction are
amply satisfied by Plaintiff Nane Jan, which otherwise has no adequate remedy at law. Nane Jan
respectfully requests that its Motion be granted, that the Court enter an injunctive order enjoining
Defendant Seasalt and Pepper and all those acting in concert with it from infringing upon the
SEA SALT mark. Specifically, Nane Jan requests that the Court issue an order requiring the
immediate termination of any use of the SEA SALT mark in association with the Defendants
services; including advertising or promotion, in any medium, but including at least in print
advertisements, radio and television advertisements, store signage and menus, and internet
advertising (including deactivation of the its website located at www.seasaltandpepper.com in
association with any restaurant or bar services, or other confusingly similar services of

6702718 20
Defendant, and the deactivation of any social media accounts using the SEA SALT mark).
Plaintiff Nane Jan respectfully submits that the facts of the case should not require Nane
Jan to post more than a nominal security bond; Plaintiff requests that the security bond not
exceed $1,000. A nominal security bond is justified by the fact that Defendant will not
encounter any interruptions in its ability to offer its restaurant and bar services if it is enjoined
from using the SEA SALT mark. Defendant merely needs to remove or alter signage and print
new menus, alter its website, and terminate all other infringing advertising. These requirements
should not disrupt normal business operations in the offering of restaurant and bar services.
Additionally, Defendant has been on notice of its infringing conduct for quite some time (by way
of both Nane Jan and Trademark Office notice), has had numerous settlement opportunities
where an orderly transition to a new business name had been proposed by Plaintiff, and could
well have already begun any necessary transition to a new business name. Finally, Plaintiffs
likelihood of succeeding on the merits of its trademark claims is extraordinarily high, so the risk
of erroneously disrupting Defendants marketing and promotion effortsshould trial result in a
finding of no liabilityis exceedingly low, and the security bond should be correspondingly
minimal.
Should the Court grant this motion, Nane Jan requests that Defendant file with the Court,
and serve upon Plaintiff Nane Jan, within fifteen (15) days after service upon Defendant of the
injunction, a written report detailing under oath setting forth in detail the manner and form in
which it has complied with the injunction and award. Still further, Nane Jan asks that the Court
award such other relief it deems just and proper.


6702718 21
HAHN LOESER & PARKS LLP
/s/ Nathan B. Webb
JEANNE L. SEEWALD
Florida Bar No. 175005
MICHAEL C. SHUE
Florida Bar No. 029550
5811 Pelican Bay Blvd., Suite 650
Naples, FL 34108
Telephone: (239) 254-2900
Facsimile: (239)254-7716
E-Mail: jseewald@hahnlaw.com
mshue@hahnlaw.com
AND
NATHAN B. WEBB
(Trial Counsel; admitted pro hac vice)
Ohio Bar No. 0084506
One Gojo Plaza
501 South Main Street, Suite 300
Akron, OH 44311
Telephone: (330) 864-5550
Facsimile: (330) 864-7986
E-Mail: nwebb@hahnlaw.com

Counsel for Plaintiff Nane Jan, LLC

CERTIFICATE OF SERVICE
I HEREBY CERTIFY on this 4th day of August, 2014, I electronically filed the
foregoing document with the Clerk of Court using CM/ECF. I also certify that the foregoing
document is being served this day on all counsel of record in the manner specified, either via
electronic transmission through the CM/ECF filing system or in some other authorized manner
for these counsel or parties who are not authorized to receive electronic notification.

/s/ Nathan B. Webb

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