According to the Authority, the similarity of the two logos — compare them above — is somehow likely to give consumers the impression that the Jersey Boardwalk Pizza is somehow related to a governmental highway-maintenance agency located in a state 1,000 miles away.
New Jersey Law Journal reports that the pizza chain was served with a cease-and-desist notice from the Turnpike Authority on April 16. Two weeks later, Jersey Boardwalk filed a service mark application for its logo, which the pizzeria also puts on merchandise that it sells.
The suit seeks an injunction to stop the allegedly infringing activities, along with compensatory and treble damages. The Authority also wants the pizza chain to hand over all merch branded with the logo in question.
The plaintiffs are also seeking to have the defendants surrender the service mark registration it obtained, since they applied for the mark after the plaintiffs accused them of infringement.
Because the application for the service mark was filed after Jersey Boardwalk had been served with the cease-and-desist, the Authority wants the pizza chain to surrender its registration for the logo.
The chain’s lawyer tells the Journal that it’s “unfortunate that the Turnpike Authority decided to pick on this business. Obviously we would like to see them spending more time being more productive, helping citizens have a good ride.”
He points to a recently dismissed lawsuit in which Union County, NJ, had tried to sue a local activist for trademark infringement because she was using the county logo on a public access TV show.
In that case, the court said that the county didn’t have a trademark on the logo, so there could be no infringement.
But the lawyers for the Authority tell the Journal that this case is different, as the Garden State Parkway logo — which has been around for more than 50 years — is used to promote the highway and, according to the cease-and-desist letter, that the Authority “has invested a substantial amount of time, money and other resources advertising, promoting, marketing and publicizing its services provided under the Garden State Parkway logo mark.”
The defendant maintains that the Parkway logo is “unpoliced” and that its use by businesses is “rampant.” The Authority says it does actually police this logo, but that it doesn’t always make headlines.
As for the pizza chain’s stance that a reasonable consumer would not confuse a restaurant with a highway operator, lawyers for the Authority say it’s not beyond the realm of possibility, as there are numerous rest stops with eateries along the stretch of highway.
“[C]onsumers who encounter your client’s mark as used in connection with its restaurant services will mistakenly assume that your client’s use of the mark is authorized by NJTA and/or that the food items served at your client’s restaurant are associated with the food served at the restaurants located in the services areas on the Garden State Parkway,” reads a letter from the Authority’s legal eagles to attorneys for the pizza chain.
“It’s hysterical,” a co-owner of Jersey Boardwalk, which has used the logo for 10 years, tells the Newark Star-Ledger. “We’re all the way in the Florida Keys. It’s not like people are going to confuse us.”