18-2277-cv
I.O.B. Realty, Inc. v. Patsy’s Brand Inc.

                                 UNITED STATES COURT OF APPEALS
                                     FOR THE SECOND CIRCUIT

                                            SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED
BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1.
WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE
NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY
OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.


        At a stated Term of the United States Court of Appeals for the Second Circuit, held at the
Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York on the
6th day of May two thousand twenty.

Present:    JOHN M. WALKER, JR.,
            ROSEMARY S. POOLER,
            GERARD E. LYNCH,
                        Circuit Judges.
_____________________________________________________

I.O.B. REALTY, INC.,
                                     Plaintiff-Appellee,

                           v.                                                 18-2277

PATSY’S BRAND, INC.,

                                     Defendant-Appellant. 1


_____________________________________________________

Appearing for Appellant:             Ronald D. Coleman (Brian M. Block, on the brief), Mandelbaum
                                     Salsburg P.C., Roseland, N.J.

Appearing for Appellee:              Kimberly M. Maynard, Frankfurt Kurnit Klein & Selz,
                                     New York, N.Y.


Appeal from the United States District Court for the Southern District of New York (Stanton, J.).

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    The Clerk of Court is directed to amend the caption as above.
     ON CONSIDERATION WHEREOF, IT IS HEREBY ORDERED, ADJUDGED,
AND DECREED that the order of said District Court be and it hereby is VACATED AND
REMANDED.

         Appellant Patsy’s Brand appeals from the July 2, 2018 judgment of the United States
District Court for the Southern District of New York (Stanton, J.), ordering the Patent and
Trademark Office to grant I.O.B. Realty’s pending trademark applications pursuant to Section 37
of the Lanham Act, 15 U.S.C. § 1119. We assume the parties’ familiarity with the underlying
facts, procedural history, and specification of issues for review.

        Over eighteen years ago, the Honorable John S. Martin of the Southern District of New
York Court wrote that a “relatively mundane trademark litigation” between two restaurants who
called themselves Patsy’s had turned “into a minor legal epic.” Patsy’s Brand, Inc. v. I.O.B.
Realty, Inc., No. 98-cv-10175, 2002 WL 59434, at *1 (S.D.N.Y. Jan. 16, 2002). In 2016, in the
most recent chapter of this epic, I.O.B. Realty sued Patsy’s Brand, asserting that the continued
use and the registration of the mark PATSY’S OF NEW YORK infringed on I.O.B. Realty’s
more senior mark PATSY’S PIZZERIA in violation of Section 43 of the Lanham Act and New
York common law.

       On May 16, 2017, the district court denied Patsy’s Brand’s motion to dismiss in a written
decision. I.O.B. Realty, Inc. v. Patsy's Brand, Inc., No. 16-cv-7682, 2017 WL 2168815
(S.D.N.Y. May 16, 2017). On May 17, 2018, both parties cross-moved for summary judgment.
On July 2, 2018, the district court issued a judgment without an opinion and closed the case. In
the judgment, the district court stated the following:

              The disputes in which the parties and the United States Patent Office
              (“PTO”) are at present entangled have their sources in the
              relationship between the trademark PATSY’S OF NEW YORK for
              restaurant services and the trademark PATSY’S PIZZERIA which
              is being denied registration for pizzeria services and for franchising
              services based on the misconception that it is sufficiently similar to
              PATSY’S OF NEW YORK to produce confusion. In reality

           1. There is no likelihood of confusion between PATSY’S OF NEW
              YORK and PATSY’S PIZZERIA. Except for the name Patsy’s, no
              one word in one appears in the other. It is stipulated that “Neither
              party produced evidence of actual confusion” (Stipulated Fact 40)
              and “Neither party entered or otherwise produced survey evidence
              concerning a likelihood of confusion” (Stipulated Fact 41) between
              the two marks;
           2. At various times all parties have recognized and asserted the
              dissimilarity between the marks and the unlikelihood of confusion;
              and accordingly

              IT IS ORDERED, ADJUDGED, AND DECREED that


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           3. Pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, the
              PTO is directed forthwith to grant Applications numbered
              76/649,149 and 77/086,491 and to register the mark PATSY’S
              PIZZERIA for pizzeria services and for franchising services; and
           4. The Clerk shall certify a copy of this order to the Director of the
              PTO for compliance herewith; and
           5. The Clerk shall close the case.

Special App’x at 3-4.

         Significantly, neither the judgment nor the district court’s docket entries note how the
district court disposed of the cross-motions on summary judgment. Rule 56 requires the court to
"state on the record the reasons for granting or denying the motion" Fed. R. Civ. P. 56(a). “All
that is required is a record sufficient to allow an informed appellate review. . . .” Jackson v. Fed.
Express, 766 F.3d 189, 197 (2d Cir. 2014). In this case, however, the district court did not
explain the basis for its conclusion or provide a sufficient explanation to allow for meaningful
review on appeal. Accordingly, we vacate and remand to the district court with instructions to
explain its disposition. In particular, the district court should state whether it is granting or
denying the motions for summary judgment, and should explain the basis for its authority to
order the PTO to grant I.O.B. Realty’s pending trademark applications and to register the
PATSY’S PIZZERIA marks.

       We have considered the remainder of Patsy’s Brand’s arguments and find them to be
without merit. Accordingly, the order of the district court hereby is VACATED and the matter is
REMANDED.

                                                       FOR THE COURT:
                                                       Catherine O’Hagan Wolfe, Clerk




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